Ex Parte Scobie

Board of Patent Appeals and Interferences

Feb 29, 2012

12606277 (B.P.A.I. Feb. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/606,277 10/27/2009 Michael A.N. Scobie 95788-1512DIV 2457
20736 7590 02/29/2012
Manelli Selter PLLC
2000 M STREET NW SUITE 700
WASHINGTON, DC 20036-3307
EXAMINER
HALPERN, MARK
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
02/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. N. SCOBIE
____________

Appeal 2011-000916
Application 12/606,277
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000916
Application 12/606,277

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 27-44. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method of making a
formed, dried, rigid lignocellulose fiber material. Claim 27 is illustrative:
27. A method of making a formed, dried, rigid
lignocellulose fiber material, the method consisting essentially
of:
(a) providing an aqueous lignocellulose fiber pulp slurry
having an effective consistency;
(b) de-watering said slurry by applying a compression
pressure to provide a dewatered material at an effective de-
watering rate under an effective pressure to prevent or reduce
the formation of fissures and voids within said material;
and
(c) drying an effective amount of said de-watered
material at an effective temperature and period of time to
provide said formed, dried, rigid lignocellulose fiber material of
a shape having a thickness of at least 5mm.
Appellant requests review of the following rejections from the
Examiner’s final office action (App. Br. 3):
1. Claims 27-37, 39 and 41-44 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Betzner, U.S. 6,068,804 issued May 30, 2000.

2. Claims 38 and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Betzner.

OPINION
The dispositive issue on appeal for these rejections is: Did the
Examiner err in determining that Betzner describes a method of making a
Appeal 2011-000916
Application 12/606,277

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formed, dried, rigid lignocellulose fiber material as required by the subject
matter of independent claim 27? 1
We answer this question in the affirmative and we REVERSE.
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. Anticipation under 35 U.S.C. § 102 requires that “each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999).
The Examiner found that Betzner describes a method of making a
formed, dried, lignocellulose fiber material (fiberboard) utilizing the process
required by the claimed invention. With respect to the dispositive issue, the
Examiner states:
[T]he fiberboard product of Betzner is a rigid product even
though it is used as an expansion joint. The present
Specification does not define or specify criteria as to what is
considered “rigid”. The product of Betzner is of claimed
thickness greater than 5 mm. How the invention formed
material is used is not claimed. How the fiberboard product of
Betzner is used is not of consideration.
…
[T]he fiberboard disclosed by Betzner is a rigid product as per
above. The additional materials in the product of Betzner do
not change the rigid quality of the product; the term “rigid” is
not defined in the present Specification.
Ans. 6.
We agree with Appellant that the subject matter on appeal is directed
to a method that provides a rigid lignocellulose fiber material. (App. Br. 5).

1 We will focus our discussion on independent claim 27.
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Application 12/606,277

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Specifically, Betzner describes a method for producing “improved expansion
joints for use as durable resilient connections between various types of
structural members.” (col. 2, ll. 1-4). Appellant further argues that Betzner
also discloses the inclusion of additional robbery components to ensure that
the resulting product can expand and compress. (App. Br. 5-6).
The Examiner is relying on the fact that the term “rigid” has not been
defined in the present Specification. (Ans. 6). However, the Examiner does
not adequately explain why the product produced by the method of Betzner
would necessarily meet the common definition for the term “rigid”, which
common meaning is argued to be consonant with Appellant’s use of this
term (App. Br. 5 and 6; Spec. 2, ll. 3-5 and 13, ll. 27-29). The Examiner
has not directed us to specific properties or characteristics of Betzner’s
resulting product to support the allegation of anticipation. Thus, the
Examiner’s conclusion that Betzner describes a method of making a formed,
dried, rigid lignocellulose fiber material is unsupported by adequate
evidence, analysis or explanation. Absent such supporting evidence, the
rejection of claims 27-37, 39 and 41-44 under 35 U.S.C. § 102(b) as
anticipated by Betzner is reversed.
We also reverse the rejection of dependent claims 38 and 40 under
35 U.S.C. § 103(a) as unpatentable over Betzner. The Examiner’s rejection
does not address the distinction discussed above. Accordingly, we reverse
this rejection as well.
ORDER
The Examiner’s decision to reject claims 27-44 as unpatentable over
Betzner is reversed.
REVERSED
Appeal 2011-000916
Application 12/606,277

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