Ex Parte Przybylinski et al

Patent Trial and Appeal Board

Sep 1, 2016

12023575 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/023,575 0113112008
51414 7590 09/06/2016
GOODWIN PROCTER LLP
PATENT ADMINISTRATOR
100 Northern A venue
BOSTON, MA 02210
FIRST NAMED INVENTOR
James P. Przybylinski
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.
FBR-OOlCPl 7643
EXAMINER
CHEV ALIER, ALICIA ANN
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
PA TENTBOS@GOODWINPROCTER.COM
PSOUSA-ATWOOD@GOODWINPROCTER.COM
GLENN .WILLIAMS@GOODWINPROCTER.COM
PTOL-90A (Rev. 04/07)
NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. PRZYBYLINSKI,
DOUGLAS MANCOSH, and DAVID E. MURDOCK
Appeal2014-003530
Application 12/023,575
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4--8, 13-25, and 28-61. We have jurisdiction.
35 U.S.C. § 6(b). An oral hearing was held on August 25, 2016.2
We AFFIRM.
1 According to the Appellants, the real party in interest is Material
Innovations LLC. Appeal Br. 2.
2 A written transcript of the oral hearing will be entered into the record once
it is available. The panel appreciates Appellants' well-prepared oral
argument.
Appeal2014-003530
Application 12/023,575
STATEMENT OF THE CASE
Appellants describe the present invention as relating to manufacturing
wood or natural fiber-plastic composite extrusions that employ recycled
carpet waste as part of the extrusion. Spec. i-f 2. Such wood-plastic
composites are said to be useful as outdoor decking and railing, siding,
roofing, etc. Id. at i-fi-11-3. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of manufacturing an extruded composite
building material, the method comprising the steps of:
providing a carpet waste comprising a single type of
polymer face fiber, the single type of polymer face fiber
consisting essentially of a single material selected from the group
consisting of polyester, nylon, and polypropylene;
adding about 18% to about 80% by weight natural fiber
filler comprising at least one of wood fibers and rice hulls;
mixing and heating the carpet waste and the natural fiber
filler in an extruder, to produce a substantially homogeneous
mixture; and
extruding the mixture to obtain the extruded composite
building material comprising a modulus of elasticity of at least
177,510 psi.
Appeal Br. 3 1 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Costello et al. US 5,722,603 March 3, 1998
(hereinafter "Costello '603 ")
3 In this decision, we refer to the Final Office Action mailed April 11, 2013
("Final Act."), the Appeal Brief filed October 18, 2013 ("Appeal Br."), the
Examiner's Answer mailed December 2, 2013 ("Ans."), and the Reply Brief
filed January 30, 2014 ("Reply Br.").
2
Appeal2014-003530
Application 12/023,575
Costello et al. us 6,059,207 May 9, 2000
(hereinafter "Costello '207")
Zhang et al US 7,022,751 B2 April 4, 2006
(hereinafter "Zhang '7 51 ")
Desai et al. US 2002/0025414 Al Feb.28,2002
(hereinafter "Desai")
Rohatgi et al. US 2003/0021915 Al Jan.30,2003
(hereinafter "Rohatgi")
Moore et al. US 2003/0075824 Al April 24, 2003
(hereinafter "Moore")
Zhang et al. US 2003/0125399 Al July 3, 2003
(hereinafter "Zhang '399")
Vijayendran et al. WO 2005/021656 Al March 10, 2005
(hereinafter Vijayendran)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 5-7, 13, 17, 24, 25, 32-34, 36, 38--40, 44--46,
50-52, 55-58, and 60 under 35 U.S.C. § 103 as unpatentable over Moore in
view of Zhang '7 51 in further view of Rohatgi and Vijayendran. Final Act.
4.4
Rejection 2. Claims 4, 8, 14--16, 18, 19, 28, 29, and 59 under 35
U.S.C. § 103 as unpatentable over Moore in view of Zhang '751 in further
view of Rohatgi and Vijayendran as set forth for claim 1 in view of Costello
'603 and further in view of Costello '207. Id. at 13.
Rejection 3. Claims 20, 23, 31, 41--43, 53, and 54 under 35 U.S.C.
§ 103 as unpatentable over Zhang '399 in view of Rohatgi and Vijayendran.
4 The Examiner's heading at page 4 of the Final Office Action does not
reference claims 44--46, but the claims are addressed at page 10 in
conjunction with claim 24.
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Appeal2014-003530
Application 12/023,575
Rejection 4. Claims 21, 22, 30, 37, 47--49, and 61under35 U.S.C.
§ 103 as unpatentable over Zhang '399 in view of Rohatgi and Vijayendran
as set forth for claim 20 and in further view of Moore.
Rejection 5. Claim 35 under 35 U.S.C. § 103 as unpatentable over
Moore in view of Zhang '7 51 in further view of Rohatgi and Vij ayendran as
set forth for claim 1 in view of Desai.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in Jn re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
carefully considered the evidence presented in this Appeal, each of
Appellants' contentions, and oral argument, we are not persuaded that
Appellants identify reversible error, and we affirm the Examiner's§ 103
rejections for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Rejection 1. Appellants do not separately argue claims 5-7, 13, 17,
24, 25, 32-34, 36, 38--40, 44--46, 50-52, 55-58, or 60. We therefore limit
our discussion to claim 1. Claims 5-7, 13, 17, 24, 25, 32-34, 36, 38--40, 44--
46, 50-52, 55-58, and 60 stand or fall with that claim. 37 C.F.R. §
41.37(c)(l)(iv) (2013).
The Examiner finds that Moore discloses a method for recycling and
making articles from carpet and discloses or suggests many of the recitations
of claim 1 (for example, providing carpet waste comprising a single type of
polymer face fiber and use of an extruder). Final Act. 4--5.
4
Appeal2014-003530
Application 12/023,575
The Examiner cites Zhang '7 51 as disclosing fiber reinforced
composite plastic building materials produced from carpet and natural fiber
wood fiber. Id. at 5; see also Zhang '751 3:30-35 (referencing
"incorporation in the composite material of property modifying organic
fillers, eg. [sic] ... organic reinforcing materials such as wood fiber .... ),
5:13-32 (setting out example for "use such as molded frames and shed
floors" having 10% sawdust by weight). Although Zhang '751 states that its
finished products have "high internal strength or integrity" (Zhang '751
4:65-5:3) and could have 10% sawdust filler by weight (id. at 5: 13-32), the
Examiner acknowledges that Moore modified by Zhang '751 does not
specifically disclose "about 18% to about 55% [ sic5] by weight natural fiber
filler" (Final Act. 5---6).
The Examiner finds that Rohatgi discloses an extruded cellulose-
polymer composite for wood-like decking materials. Final Act. 6; see also
Rohatgi Abstract, i-fi-f l, 31, 17. Rohatgi' s compositions are at least 50
percent by weight cellulosic fiber component. Final Act. 6; see also Rohatgi
i167. Rohatgi's materials are said to have "high strength (i.e., high modulus
of elasticity) in part because the cellulose fibers are completely encapsulated
by the polymer materials .... " Final Act. 6; Rohatgi i1 51. The Examiner
explains that Rohatgi and modified Moore are analogous art because they
both are directed to obtaining extruded composite materials, and a person of
skill would have utilized Rohatgi' s range of filler to provide a composite
having high strength and suitable for wood-like decking. Final Act. 6-7; see
also Rohatgi Abstract, i1 51. The Examiner also provides a similarly
5 Claim 1 recites "about 18% to about 80% by weight natural fiber filler."
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Appeal2014-003530
Application 12/023,575
adequate rationale for reliance on Vijayendran in combination with the other
three references. Final Act. 8-9; Ans. 9.
Appellants argue that the Examiner engages "in impermissible
hindsight reconstruction" to arrive at the claimed invention. Appeal Br. 11.
But as explained above, the Examiner provides rationales to combine the
cited reference well-supported by factual underpinnings. A preponderance
of the evidence supports that a person of ordinary skill starting with Moore's
process and desiring a strong wood-like product would have modified
Moore with Zhang '751 to add wood fiber and would have used an increased
amount of wood fiber for strength as taught by Rohatgi. The preponderance
of the evidence establishes that the teachings of Zhang '7 51 and Rohatgi
concerning fiber content would have predictably improved Moore in the
same manner they improve Zhang '751 and Rohatgi. Appellants' briefing
provides no argument that attacks the Examiner's reasons for combining the
references. 6 As such, Appellants identify no error in the combination. See
KSR Int 'l Co. v. Telej1ex Inc., 550 U.S. 398, 417 (2007).
As a primary position, Appellants also argue that claim 1 's recited
modulus of elasticity ("extruded composite building material comprising a
modulus of elasticity of at least 177 ,510 psi") is not necessarily present in
the prior art and that "it was not obvious to one or ordinary skill in the art, at
the time of the invention, how to achieve the claimed MOE in a carpet waste
composite." Reply Br. 2; see also Appeal Br. 8-11. Rohatgi, however,
teaches that its relatively high cellulose content results in a strong product
6 To the extent Appellants made such arguments for the first time in oral
argument, such argument is not properly presented because "[a]t the oral
hearing, appellant may only ... present argument that has been relied upon in
the brief or reply brief .... " 37 C.F.R. § 41.47(e)(l) (2015).
6
Appeal2014-003530
Application 12/023,575
with high elastic moduli that is suitable as a wood-like decking product.
Final Act. 6; Rohatgi i-f 44, 51. Indeed, Rohatgi establishes that its Sample A
and Sample B products with 60% wood fiber content have modulus of
elasticity above 177 ,510 psi. Rohatgi Fig. 7, i-f 42, 57.
Vijayendran further supports that the "very hard" wood-like decking
product with "higher elastic moduli" that would have resulted from
modifying Moore with Zhang and Rohatgi would have had a modulus of
elasticity above 177 ,510 psi and that achieving such a modulus of elasticity
would have been within the ordinary skill in the art. Vijayendran discloses
fibrous composites that could be used as substitutes for lumber. Ans. 7-8;
see also Vijayendran Abstract, 4:27-29, 5:29-31. Consistent with the
teachings of Rohatgi, Vijayendran explains that a higher biomaterial aspect
ratio "provides for better mechanical properties such as higher tensile
strength, impact strength and modulus." Vijayendran 5:7-8. Vijayendran
discloses that a "typical current wood product composite" has a modulus of
elasticity of about 538,000 psi and discloses material with much higher
modulus of elasticity. Id. at 15:20-30. One of skill in the art desiring to
make wood-like decking thus would have followed the teachings of Rohatgi
and Vijayendran with the goal of trying to achieve a modulus of elasticity
well above claim 1 's recited 177,510 psi. Ans. 4--5.
A preponderance of the evidence supports that a person of ordinary
skill desiring to create a strong wood-like decking product by modifying
Moore based upon the teachings of Zhang '7 51, Rohatgi, and Vij ayendran
would have achieved a product having modulus of elasticity above 177 ,510
psi. Appellants present no countervailing evidence or argument as to why
achieving such a modulus of elasticity (as taught by Rohatgi) would have
been beyond the ordinary skill in the art.
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Appeal2014-003530
Application 12/023,575
Modulus of elasticity measures how a material responds to certain
forces. Claim 1 's recitation of "a modulus of elasticity of at least 177 ,510
psi" thus provides a functional characteristic of the end composite building
material achieved via claim 1 's method. Where functional characteristics
are described or suggested in the prior art, the burden shifts to the applicant
to demonstrate that the prior art does not possess the claimed functionality.
In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Here, Appellants have set
forth no persuasive reasoning or argument as to why a person of ordinary
skill desiring to create a strong wood-like decking product by modifying
Moore based upon the teachings of Zhang '7 51, Rohatgi, and Vij ayendran
would have not achieved a product having modulus of elasticity above
177 ,510 psi. Thus, we discern no Examiner error with respect to this issue.
At oral argument, Appellants place some emphasis on their invention
incorporating carpet fibers into the end product. Appellants' brief, however,
does not clearly argue this as a point of distinction as compared to the cited
art. ivioreover, as Appellants acknowledged during oral argument, Zhang
'751 teaches carpet fiber in the final composite. See, e.g., Zhang '751 4:14--
18; see also, e.g., Final Act. 18-19.
We therefore sustain the Examiner's rejection of claims 1, 5-7, 13,
17,24,25,32-34,36,38--40,44-46,50-52,55-58,and60.
Rejection 2. Appellants do not raise any substantively distinct
arguments with respect to this rejection. Appeal Br. 12. We therefore
sustain the rejection for the reasons explained above.
Rejection 3. The Examiner rejects claims 20, 23, 31, 41--43, 53, and
54 under 35 U.S.C. § 103 as unpatentable over Zhang '399 in view of
Rohatgi and Vijayendran. The Examiner's rejection is therefore based upon
modifying Zhang '399 with the higher fiber density suggested by Rohatgi
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Appeal2014-003530
Application 12/023,575
and/or Vijayendran. Final Act. 18-22. The Zhang '399 reference is the
patent application publication for the Zhang '751 patent addressed above.
Id. at 18. Appellants' arguments with respect to this rejection are
substantially the same as those addressed above. Appeal Br. 12-16. We
therefore sustain the rejection for the reasons explained above.
Rejection 4. Appellants do not raise any substantively distinct
arguments with respect to this rejections. Appeal Br. 16-20. We therefore
sustain the rejection for the reasons explained above.
Rejection 5. Appellants again do not raise any substantively distinct
arguments with respect to this rejection. Appeal Br. 21. We therefore
sustain the rejection for the reasons explained above.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims 1,
4--8, 13-25, and 28---61.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
9