Ex Parte Schmidt et al

Patent Trial and Appeal Board

Jan 8, 2015

12446248 (P.T.A.B. Jan. 8, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL SCHMIDT, MICHAEL FINKENAUER, GUNTER
SCHERR, FRANK BRAUN, STEPHAN WEINKOTZ, JURGEN VON
AUENMULLER, OLIVER RICHTER, and MAXIM PERETOLCHIN

Appeal 2013-001302
Application 12/446,248
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the February 21, 2012,
decision of the Primary Examiner finally rejecting claims 14-17, 20, 22, 24,
26, 27, and 31. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is BASF SE (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a light wood-containing material
having a specified average density made of a composition made from
(a) wood particles, (b) a filler having a specified density and made from
foamable (or foamed) plastic particles, and (c) a binder (Spec. 1). The claim
requires a specific relationship between the d’ values (as defined in the
Specification) of the wood particles and the filler particles, as set forth in the
claim. Claim 14 is representative of the claims on appeal and is reproduced
below from the Claims Appendix to the Brief (key claim limitation in
italics):

14. A light wood-containing material having an average density
in the range from 200 to 600 kg/m3, comprising a composition
made from, based in each case on the wood-containing
material:
A) from 30 to 95% by weight of wood particles;
B) from 1 to 25% by weight of a filler having a bulk density in
the range from 10 to 150 kg/m3, selected from the group
consisting of foamable plastic particles and already foamed
plastic particles;
C) from 0.1 to 50% by weight of a binder and, optionally,
D) additives,
wherein the following relationship is true for the d’ values
according to Rosin-Rammler-Sperling-Bennet of the wood
particles A) and of the particles of the filler B):
d’ of the particles A) ≤ 2.5 x d’ of the particles B).
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DISCUSSION
Claims 14–17, 20, 22, 24, 24, 26, 27, and 31 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Symons.2 These same claims
were also originally rejected under 35 U.S.C. § 102(b) as anticipated by
Symons, but the Examiner withdrew that rejection (Ans. 3).
The Examiner finds that Symons teaches each of the limitations of claim
1, except that Symons is silent about (1) the density of the claimed product and
(2) the relationship between the d’ values of the wood particles and plastic
particles (Ans. 4). The Examiner also finds that because Symons “teaches
generally the same product, made by the same process form the same raw
material components, and for the same end uses as the claimed invention,
workable density range of the finished product is deemed to be an obvious
routine optimization” (Ans. 4–5). The Examiner makes essentially the same
findings with respect to the limitation regarding the relationship between the d’
values of the wood and plastic particles (id.).
Appellants argue that (a) nothing in Symons teaches or suggests the
claimed density of the final product, and (b) nothing in Symons teaches or
suggests the claimed relationship between the d’ values of the wood and plastic
particles (Appeal Br. 5–8).
With regards to argument regarding the density of the final product,
Appellants argue that the only specific product density disclosed in Symons is
1.2 g/cm3, which corresponds to a density of 1,200 kg/m3 (Appeal Br. 5–6).
Such a density is more than twice the claimed maximum density of 600 kg/m3.
Appellants argue that the Symons process, which requires melting of the

2 Symons, WO 02/38676 A1, published May 16, 2002.
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Application 12/446,248

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foamed polystyrene particles, necessarily results in a high density product
(Appeal Br. 6).
It is well understood that “rejections on obviousness cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The fact that a
reference may be modified to reflect features of the claimed invention does not
make the modification, and hence the claimed invention, obvious unless the
prior art suggested the desirability of such modification. In re Mills, 916 F.2d
680, 682 (Fed. Cir. 1990).
The Examiner’s articulated rationale for modifying Symons to meet the
claimed density limitation, that selecting the claimed density would have been a
matter of routine optimization, is not supported by the disclosure of Symons. In
particular, as noted by Appellants, Symons discloses only a single example with a
density which is much higher than the claimed range. Moreover, Appellants have
explained why the Symons process would be expected to produce a high density
product, namely using pressure and temperature conditions to ensure that the
polystyrene particles are melted (see, e.g. Appeal Br. 5–6; Reply Br. 2–3).
The Examiner’s response to this argument – that Symons
discloses that its process can be used to create medium density fiber board
(MDF), which has a density of from 500-1000 kg/m3, which overlaps the
claimed density range – is not supported by the reference. As noted by
Appellants, Symons does not disclose that its process can be used to create
MDF, but merely states that MDF is a known type of finished board product
(Reply Br. 3, citing Symons 1). As noted above, consistent with the Symons
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disclosure above, Appellants have also explained why the Symons process
would be expected to produce a high density product. In view of the details
of the Symons process discussed above and Appellants’ technical
explanation of why it produces a high density product, the Examiner, on the
present record, has not demonstrated why one of ordinary skill in the art
would have reasonably expected that the Symons process would be useful
for producing a medium density fiber board (MDF) having the claimed
densities or why modifying the Symons process for producing a high density
product to achieve the claimed substantially lower density products would
have been a matter of routine optimization. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A
rejection based on section 103 clearly must rest on a factual basis, and these
facts must be interpreted without hindsight reconstruction of the invention
from the prior art”).
Therefore, we determine that the Examiner has not shown that it would
have been obvious to modify the product produced by the Symons process to
meet the claimed density limitations.3 Because each of the rejected claims
contains the pertinent density limitation, we reverse the rejection with respect to
all of the claims.

3We need not, and do not, address the other arguments made by Appellants
in support of the patentability of the claims.
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CONCLUSION
We REVERSE the rejection of claims 14–17, 20, 22, 24, 24, 26, 27,
and 31 under 35 U.S.C. § 103(a) as being unpatentable over Symons.

REVERSED

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