Ex Parte PFAU et al

Patent Trial and Appeal Board

Jan 31, 2018

13828614 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/828,614 03/14/2013 James PFAU 16240.M335 DIV 8355
28410 7590 02/02/2018
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
EXAMINER
AD AMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto.filings@bw-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PFAU and STEPHEN HART1
Appeal 2016-003709
Application 13/828,614
Technology Center 3600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
JON M. JURGOVAN Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 20—27. Claims 1—19 and 28 are canceled. Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Invention
Appellants disclose a “method of surface sealing a porous fibrous
substrate” in which a “sealant composition is applied to a surface of the
1 Appellants include Applicant Masonite Corporation, which the Appeal
Brief identifies as the real party in interest. App. Br. 3.
Appeal 2016-003709
Application 13/828,614
porous fibrous substrate and permitted to penetrate the surface pores of the
porous fibrous substrate and undergo cure while participating in a foaming
reaction with the moisture content to establish a water-resistant polymeric
foam sealant impregnated into the porous fibrous substrate.” Abstract.
Exemplary Claim
Claim 20, reproduced below with key limitations emphasized, is
illustrative:
20. A door, comprising:
a door frame having a first frame side and an opposite second
frame side;
a first door skin comprising a porous fibrous substrate having
an exterior surface possessing surface pores and an interior
surface, the first door skin being attached to the first frame side;
a water-resistant polymeric foam sealant comprising a member
selected from the group consisting of a polyurethane and
polyurea impregnated in the surface pores of the porous fibrous
substrate; and
a second door skin attached to the second frame side.
App. Br. 23 (Claims Appendix).
Rejections
The Examiner rejects claims 20, 24, 25, and 27 under 35 U.S.C.
§ 102(b) as being anticipated by Colvin et al. (US 2004/0063891 Al;
published Apr. 1, 2004). Final Act. 3—5.
The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Colvin and the Examiner’s taking of Official Notice.
Final Act. 6.
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The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Colvin and Rauterkus et al. (US 5,270,412; issued Dec.
14, 1993). Final Act. 7-8.
The Examiner rejects claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Colvin. Final Act. 6—7.
The Examiner rejects claim 26, and alternatively rejects claims 20, 23,
25, and 27, under 35 U.S.C. § 103(a) as being unpatentable over Colvin and
Roberts (GB 856,389; published Dec. 14, 1960). Final Act. 4—9.
The Examiner alternatively rejects claim 21 under 35 U.S.C. § 103(a)
as being unpatentable over Colvin, Roberts, and the Examiner’s taking of
Official Notice. Final Act. 6.
The Examiner alternatively rejects claim 22 under 35 U.S.C. § 103(a)
as being unpatentable over Colvin, Roberts, and Rauterkus. Final Act. 7—8.
The Examiner alternatively rejects claim 24 under 35 U.S.C. § 103(a)
as being unpatentable over Colvin, Roberts, and the Examiner’s taking of
Official Notice. Final Act. 4—5.
ANALYSIS
35 U.S.C. § 102(b)—Claims 20, 24, 25, and27
In rejecting claim 20 under 35 U.S.C. § 102(b), the Examiner finds
Colvin’s “use of a polyurethane or polyurea resin in order to impregnate the
surface pores of the fiberboard” discloses the claimed use of a water-
resistant polymeric foam sealant because “the moisture content present
within the fiberboard would cause the polyurethane resin to foam once the
two contact one another.” Final Act. 4 (citing Colvin 129; Spec. 129). The
Examiner finds the Specification “teaches the use of temperatures ‘in a range
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of about 300° to about 500°’ for the curing process and the porous fibrous
substrate has ‘a moisture content sufficient to foam the sealant composition,
but preferably less than about 10 weight percent.’” Ans. 10 (citing Spec.
H 24, 29). The Examiner finds that Colvin’s moisture content of “less than
7% by weight” overlaps with the Specification’s disclosed moisture content
range of “less than about 10 percent weight” while Colvin also discloses
heating the resin to a temperature of 240—300°, thus overlapping the
Specification’s disclosed range starting at “about 300°.” Adv. Act. 2 (June
5, 2015); see also Ans. 10 (citing Colvin || 15, 24; Spec. 24, 29). That
is, the Examiner finds that Colvin discloses the same conditions that the
Specification discloses for making a polymeric sealant form.
Appellants contend the Examiner erred in finding Colvin’s
polyurethane or polyurea resin necessarily foams because Colvin’s moisture
content level of “7% by weight” (and more preferably about 0.1—2.5% by
weight) has not been shown to be sufficient to cause the resin to foam to
form a polymeric sealant foam. See App. Br. 7—8 (citing Colvin 115; Adv.
Act. 2—3 (June 5, 2015)). Appellants argue that Colvin instead “teaches a
very low preferable moisture content, one too low for foam formation
because Colvin does not contemplate foam formation.” App. Br. 11; see
also Reply Br. 2 (Colvin “goes out of its way to achieve conditions that do
not produce foam”).
The Examiner finds that Colvin’s moisture content maximum level is
sufficient to show Colvin uses sufficient water content to produce foam
because “[a]t no point has Appellant provided evidence or any argument as
to what value constitutes the lower limit of the moisture content for the
porous fibrous substrate which is required to foam the polymeric sealant and
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argues the lower limit must be a ‘sufficient moisture to produce foam.’”
Ans. 12; see also App. Br. 10-11 (citing Spec. 129). However, we agree
with Appellants that the Specification’s disclosure that the moisture content
in consolidated cellulosic board 51 “is preferably characterized by a
moisture content sufficient to foam the sealant composition, but preferably
less than about 10 weight percent” (Spec. 129 (emphasis added)) illustrates
that Colvin’s moisture content level range (with an upper limit of 7%) is
insufficient to show that Colvin inherently discloses the claimed water-
resistant polymeric foam sealant.
We further note that, although Colvin discloses a dehydration step that
“results in lignocellulosic substrate 1 [having] a moisture content of less than
7% by weight” (Colvin 115), Colvin also discloses that “an even lower
moisture content” than the ordinary lignocellulosic substrate moisture
content of 3—8% by weight “is important for achieving maximum strength
and penetration by the isocyanate resin material” (id.). A moisture content
“even lower than” 3—8% by weight would be less than 3%, not 7%. While
not dispositive in isolation, this discrepancy in Colvin further support
Appellants’ contention that Colvin’s moisture content level is very low such
that foaming would not occur. See App. Br. 11.
For these reasons, we agree with Appellants that the Examiner’s
findings do not show that Colvin discloses the claimed use of “a water-
resistant polymeric foam sealant,” as recited in claim 20. Accordingly, we
do not sustain the Examiner’s 35 U.S.C. § 102(b) rejection of claim 20, and
dependent claims 24, 25, and 27, which the Examiner similarly rejects.
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35 U.S.C. § 103(a)—Claims 20—27
In alternatively rejecting claim 20 under 35 U.S.C. § 103(a), the
Examiner finds “it would have been obvious to a person of ordinary skill in
the art at the time the invention was made to have used a polyurethane foam,
as taught in Roberts, to impregnate the fiberboard of Colvin.” Final Act. 4;
see also Ans. 15 (citing Roberts 3,11. 47—65).
Appellants contend the Examiner erred because “Roberts is directed
to a process for impregnating fibrous sheets by applying a foam on one
surface of the sheet and ‘applying suction to the opposite surface ... to suck
the impregnant into said fibrous sheet materials.’” App. Br. 13 (citing
Roberts 1,11. 17—24; omission in original); see also Roberts 8,11. 120-27
(claiming a “process for manufacturing impregnated woven or non-woven
fibrous sheet material [by] applying an impregnant in the form of a foam on
to one surface of a fibrous sheet material and [by] applying suction to the
opposite surface”). Appellants submit “that the door skin of Colvin is not a
porous material contemplated by Roberts” and thus “applying a sealant on
one surface and applying suction to the other surface of the door skin of
Colvin would accomplish nothing.” App. Br. 13—14; see also Reply Br. 8.
The Examiner responds that “the suction process teaching of Roberts
was not used as a teaching to modify the invention of Colvin.” Ans. 14.
“Rather, the teaching of a final product comprising ... a foamed sealant
impregnated within a porous fibrous substrate was used to modify the
invention of Colvin et al. to similarly comprise ... a foamed sealant
impregnated within the porous fibrous substrate.” Id. However, we agree
with Appellants that Robert’s teaching of how a fibrous substrate is
impregnated with a foamed sealant is relevant to whether it would have been
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obvious to an artisan of ordinary skill to modify Colvin to use a foamed
sealant rather than an unfoamed sealant.
The Examiner further responds that—like Roberts’ fibrous
substrate—Colvin’s fibrous boards “are made of fibers and are porous such
that they are capable of being impregnated by a [foamed] sealant material.”
Ans. 15 (citing Roberts 3,11. 47—65). However, the examples of fibrous
material in Roberts are materials such as felt, curled hair, glass fibers, and
woven fibrous materials such as carpeting, hessian, and fabric. Roberts 3,
11. 47—59. In contrast, Colvin’s exemplar material is a 0.125 inches thick
high-density fiberboard {id. 134; see also App. Br. 13—14). Colvin discloses
a number of other substrate materials, including “wood particles, wood
fibers, straw, hemp, sisal, cotton stalk, wheat, bamboo, jute, salt water reeds,
palm fronds, flax, groundnut shells, hard woods, [and] soft wood .... [but]
preferably medium density or high density fiberboard.” Colvin 113.
However, the Examiner’s findings do not show that Colvin’s materials, as
used in Colvin’s process, are comparable to the materials in Roberts such
that the use of Roberts’ foamed sealant teachings and suggestions as part of
Colvin’s process would have been an obvious modification.
For these reasons, the Examiner’s findings do not show that Roberts
cures the noted deficiency of Colvin with respect to the recited use of “a
water-resistant polymeric foam sealant.” The Examiner’s findings also do
not persuasively show that Colvin alone renders obvious the disputed
recitation. Nor do the Examiner’s findings show that the Examiner’s taking
of Official Notice or Rauterkus cure the noted deficiency of Colvin or
Colvin as combined with Roberts. Therefore, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejections of claims 20—27.
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DECISION
We reverse the Examiner’s decision rejecting claims 20—27.
REVERSED
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