Ex Parte Price

Patent Trials and Appeals Board

May 24, 2019

13885937 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/885,937 05/16/2013 David Elwyn Price
23552 7590 05/29/2019
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13353.0l l 7FPWO 9686
EXAMINER
SALVA TORE, LYNDA
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
USPT023552@merchantgould.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID EL WYN PRICE 1
Appeal2017-009088
Application 13/885,937
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 44, 46-48, 64, 66, 67, 69, and 70. An oral hearing
was held on May 15, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to laminates comprising
melamine cyanurate. E.g., Spec. 2: 14--19; Claim 69. Claim 69 is
reproduced below from page 34 (Claims Appendix) of the Appeal Brief:
1 The real party in interest is identified as Depco-TRH PTY LTD. App.
Br. 3.
Appeal2017-009088
Application 13/885,937
69. A decorative or building laminate having a substrate and a resin-
impregnated paper on the substrate, in which the resin-
impregnated paper includes melamine cyanurate in an amount
effective to provide or enhance opacity of the resin-impregnated
paper.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 44, 47, 64, 66, 67, 69, and 70 under 35 U.S.C. § I02(b) as
anticipated by Shin (JP 2006289942 A, published Oct. 26, 2006);
2. Claims 46 and 48 under 35 U.S.C. § I03(a) as unpatentable over
Shin and Drews-Nicolai (US 2004/0025749 Al, published Feb. 12, 2004).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for the reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-5;
Ans. 2---6.
Rejection 1
Claim 69 is the only independent claim at issue in this case. In the
Appeal Brief, the Appellant includes separate section headers for claims 69,
44, 66, and 67. We address those claims below. The remaining claims
subject to Rejection 1 will stand or fall with claim 69, from which they
depend.
Claim 69. The Examiner finds that Shin anticipates claim 69. Final
Act. 4. In particular, the Examiner relies on Shin's disclosure of a
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Application 13/885,937
decorative building material comprising a water-soluble paint composition
that includes a metal paint powder, a glass powder, a melamine cyanurate
powder, and an acrylate bonding agent. Shin at Abstract. Shin teaches that
its composition may be applied to a "base material" such as "wall paper."
Id. The Examiner finds that Shin "teach[ es] including melamine cyanurate
in amount ranging from 2-7%," which "clearly falls within Applicant's
broad range [ of 1-100% or when used with other additives 1-99%, as
disclosed in the Specification]," and "thus is considered sufficient to meet
Applicant's limitation of 'an amount effective."' Final Act. 2-3. In the
Answer, the Examiner further explains:
With specific regard to the limitation pertaining to 'resin-
impregnated' paper, the Examiner is of the position that once the
metallic resin containing paint is coated onto the substrate it
would naturally penetrate into the surface of the paper. . . .
Because paper is thin, fibrous and porous in nature it would
follow that once the metallic resin containing paint is brushed
onto the surface of the paper, the paint would not sit on the
surface of the paper, but rather will penetrate or seep into the
interstices between the fibers that make up the paper layer
thereby effectively impregnating the paper.
Ans. 3. In view of those and other findings less material to the issues raised
in this appeal, the Examiner determines that Shin anticipates claim 69. Final
Act. 4.
The Appellant first argues that Shin does not disclose a "resin-
impregnated paper" that "includes melamine cyanurate" as required by
claim 69. App. Br. 15. In the Reply Brief, the Appellant cites various
dictionaries and argues that impregnation requires "saturat[ion] throughout"
the paper material rather than a coating. Reply Br. 2-3.
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Application 13/885,937
We reject that argument. Shin discloses mixing a water-soluble paint
composition that comprises metal powder, glass powder, melamine
cyanurate powder, and an acrylate bonding agent (i.e., a resin), and
"applying" that composition to paper. E.g., Shin at Abstract. The Appellant
does not persuasively dispute the Examiner's findings that paper is thin and
that the coating composition would permeate into the interstices of the fibers
that make up the paper. Additionally, the Appellant's Specification
describes a process that, at least in relevant regards, appears to be similar to
Shin's:
A method for producing MC [melamine cyanurate] in situ in an
embodiment where MC is added downstream to paper or non-
woven materials, entails dissolving melamine and cyanuric acid
in water and later combining and stirring the two solutions to
allow for the formation of MC in situ. The MC does not need to
be fully de-watered as it can be added to a watery impregnating
resin, or a watery coating resin and applied to a paper or non-
woven.
Spec. 6:20-24 (emphasis added).
On this record, and particularly under the claim construction standard
applicable to this proceeding (broadest reasonable construction consistent
with the specification, see In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007)), we are not persuaded that Shin fails to disclose
a "resin-impregnated paper" that "includes melamine cyanurate" as required
by claim 69. 2
2 At the oral hearing, the Appellant argued that the specific methods
disclosed by the Specification for including melamine cyanurate and resin in
the paper, e.g., Spec. 2-6, limit the scope of the term "resin-impregnated
paper." That argument is untimely because it was not presented in the
Appeal Brief, see App. Br. 12-20, or the Reply Brief, see Reply Br. 2-3.
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Application 13/885,937
The Appellant also argues that Shin's melamine cyanurate "will not
modify the opacity effect" of Shin's composition because Shin's
composition is dominated by metal powder. App. Br. 18-20.
That argument is not persuasive because it is attorney argument
unsupported by evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) ("Attorney's argument in a brief cannot take the place of evidence.").
In that regard, we observe that there is no dispute that Shin discloses 2-7%
melamine cyanurate, and that the Appellant's Specification discloses
suitable amounts of 1-99% melamine cyanurate if used in combination with
other opacifying agents such as Ti02. Spec. 11:10-11. Claim 69 does not
require any particular amount by which the melamine cyanurate must
"provide or enhance opacity," and it does not require, for example, that any
such effect be visually detectable. On this record, we are not persuaded that
Shin's compositions comprising up to 7% melamine cyanurate do not fall
within the scope of the "amount effective" limitation of claim 69,
particularly given that the Appellant's Specification indicates that as little as
1 % melamine cyanurate is suitable.
See 37 C.F.R. 4I.47(e) ("At the oral hearing, appellant may only ... present
argument that has been relied upon in the brief or reply brief except" under
limited circumstances not present here.). Even if it were timely, it would not
be persuasive because the Appellant identifies no aspect of the Specification
or the claims that might limit the scope of the term "resin-impregnated
paper," in any way, on the basis of the manufacturing method. Of itself, the
fact that the Specification discloses certain methods of manufacturing does
not indicate that other methods of manufacturing would fail to produce a
"resin-impregnated paper."
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Application 13/885,937
We are not persuaded of reversible error in the Examiner's rejection
of claim 69. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections .... ").
Claims 44, 66, and 67. 3 The Appellant includes separate headers in
the Appeal Brief for claims 44, 66, and 67. App. Br. 20-22. However, the
Appellant's discussion of those claims is unpersuasive because it is
essentially a recitation of the claim language followed by a naked assertion
that the prior art does not teach it, accompanied by a repetition of an
argument concerning claim 69 discussed and found unpersuasive above (i.e.,
that "Shin does not teach or disclose that a resin impregnates the paper.").
See id.; see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
For example, as to claim 44 (which the Appellant specifically
mentioned at the oral hearing as being separately argued), the entirety of the
Appellant's argument is reproduced below:
3 The Examiner's failure to list claim 67 in the header setting forth the
rejection, see Final Act. 4, is harmless error because the Examiner's analysis
appears to address the requirements of claim 67, see id. (finding that Shin's
"paper layer [is] coated with a paint layer comprising melamine cyanurate
powder."). The Appellant acknowledges that claim 67 stands rejected, App.
Br. 5, 22, but does not meaningfully address the Examiner's findings that are
relevant to claim 67 or otherwise explain why Shin's coating that includes
melamine cyanurate does not fall within the scope of the coating recited by
claim 67.
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In contrast, Shin discloses that a MELAMINE CY ANURATE
powder is combined with glass powder and metal powder to form
a water-soluble metal content coating composition. See, Shin, p.
2, section [0005], first para. While Shin discloses that the water-
soluble metal content coating composition can be used to coat
paper (See, Id., p. 4, section [00014], first para.), Shin does not
teach or disclose that the MELAMINE CY ANURA TE powder
is added to a matrix of the resin-impregnated paper. Further,
Shin does not teach or disclose that the coating or the resin
impregnates the paper.
App. Br. 20-21. The Appellant provides no elaboration on the assertion that
"Shin does not teach or disclose that the MELAMINE CY ANURATE
powder is added to a matrix of the resin-impregnated paper." Id. The
Appellant does not attempt to identify the scope of the term "matrix," and
the Appellant does not attempt to explain why a melamine cyanurate and
resin coating on a paper (as in Shin) would not result in melamine cyanurate
being in the paper matrix. See id. Thus, the Appellant's argument amounts
to little more than a naked assertion that the prior art does not fall within the
scope of the claim.
In any event, the Examiner includes additional analysis relevant to
claims 44, 66, and 67 in the Answer. See Ans. 3--4. As to claim 44, the
Examiner explains:
Further, with specific regard to claim 44, the process of brushing
the metallic resin containing paint onto the paper would also
meet the meet the limitation of "wherein the melamine cyanurate
is included in the matrix of the resin-impregnated paper". In
other words, since the melamine cyanurate powder is included in
the metallic resin containing paint, once the paint is brushed onto
the surface of the paper, the melamine cyanurate would naturally
be included within the matrix of the resin-impregnated paper.
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Id. The Appellant does not persuasively address or otherwise show error in
that analysis in the Appellant's Reply Brief, and, on this record, we discern
no reason to reject it. See Jung, 637 F.3d at 1365.
We are not persuaded of reversible error in the Examiner's rejection
of claims 44, 66, and 67.
Rejection 2
The Appellant argues that Rejection 2 should be reversed only
because claims 46 and 48 depend from claim 69. Because we are not
persuaded of reversible error in the Examiner's rejection of claim 69, we are
likewise unpersuaded of reversible error in the Examiner's rejection of
claims 46 and 48. See Jung, 637 F.3d at 1365.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 44, 46-48, 64, 66,
67, 69, and 70.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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