Ex Parte Smith

Patent Trial and Appeal Board

Dec 3, 2012

11223127 (P.T.A.B. Dec. 3, 2012)

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.
11/223,127 09/12/2005 Patrick Smith TPP 31746A 6665
74217 7590 12/03/2012
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
12/03/2012 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 PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte PATRICK SMITH
____________

Appeal 2011-010167
Application 11/223,127
Technology Center 1700
____________

Before RICHARD E. SCHAFER, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, and 4-28. We have jurisdiction under 35 U.S.C. § 6.
An oral hearing was held on November 8, 2012.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal, and is set
forth below:
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1. A decorative laminate board having edges, a decorative upper layer
and a rear layer, the decorative laminate board comprising at least
a base layer, an intermediate decor layer and a wear layer wherein
at least one of said layers comprises polymers, and further wherein
predetermined portions of the decorative upper layer are removed
by laser beam to provide the decorative laminate with an embossed
surface exhibiting at least one of scorched or charred residue on
the decorative upper layer adjacent the removed portions.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Scher ‘137 3,732,137 Oct. 26, 1970
Labrec 2003/0234286 A1 Dec. 25, 2003
Simon 6,746,756 B2 Jun. 8, 2004
Safta 6,436,159 B1 Aug. 20, 2002
Scher ‘480 4,255,480 Mar. 10, 1981
Hiller 2002/0136969 A1 Sep. 26, 2002

THE REJECTIONS
1. Claims 1-2 and 4-28 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement.

2. Claims 4, 8-15, and 27 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite.

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3. Claims 1, 4, 6-12, 16, 18-19, 21, 23-24, 27-28 are rejected under 35
U.S.C. §103(a) as being unpatentable over Scher ‘137 in view of Labrec.
4. Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scher ‘137 in view of Labrec, and further in view of
Simon.
5. Claims 13-15, 22, and 25 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Scher ‘137 in view of Labrec, and further in view of
Safta.
6. Claims 17 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Scher ‘137 in view of Labrec, and further in view of Scher
‘480.
7. Claim 26 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Scher ‘137 in view of Labrec and Safta, and further in view of Scher
‘480.
ANALYSIS

As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Rather, Appellant’s arguments are principally
directed to independent claim 1. Any claim not separately argued will stand
or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii). Our determinations made with respect to Rejection 3 are
dispositive for Rejections 4-7.
We essentially adopt the Examiner’s findings pertinent to the issues
raised by Appellant, except for the §112 rejections. We therefore
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incorporate the Examiner’s position as set forth in the Answer (except for
the §112 rejections) herein. We add the following for emphasis only.

Rejection 1
It is the Examiner’s position that the word “residue” in claim 1, and
the subject matter recited in claim 4 regarding “charred remnants adjacent
removed portions”, are not supported by the original Specification. Ans. 3-
4, and 14. However, we agree with Appellant’s position (for the reasons
provided by Appellant in the Brief (Br. 3-6) and Reply Brief (Reply Br. 2-
3)) that “residue” and “remnants” are reciprocal for the reasons provided
therein. We therefore reverse the Examiner’s rejection of claims 1-2 and 4-
28 under 35 U.S.C. §112, first paragraph, as failing to comply with the
written description requirement.

Rejection 2
It is the Examiner’s position that the recitation of “the charred
remnants” found in claims 4, 8-10, and 27 is indefinite because there is
insufficient antecedent basis for this phrase. Ans. 4, and 14-15. However,
because we agree with Appellant that the words “residue” and “remnants”
are reciprocal, it follows that there is antecedent basis for this recitation.
We therefore reverse the rejection of claims 4, 8-15, and 27 under 35 U.S.C.
§112, second paragraph, as being indefinite.

Rejections 3-7
It is the Examiner’s position that Scher ‘137 teaches the claimed
invention, but fails to teach that predetermined portions are removed by laser
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beam to provide the laminate with an embossed surface exhibiting at least
one of scorched or charred residue. Ans. 4. The Examiner relies upon
Labrec for teaching that portions of the decorative laminate can be removed
by laser beam. Ans. 5.
Appellant argues that Scher ‘137’s product has no scorched or charred
residue; rather “mere depressions caused by consolidation”. Br. 7. Reply
Br. 4. The Examiner recognizes this aspect of Scher ‘137 by stating that
Scher ‘137 fails to teach that predetermined portions are removed by laser
beam to provide the laminate with an embossed surface exhibiting at least
one of scorched or charred residue, as discussed, supra. The Examiner relies
upon Labrec for teaching the concept of using a laser to remove portions of
an upper surface, leaving a scorched or charred residue. It is the Examiner’s
position that the scorched or charred residue will “intrinsically occur” with
the use of Labrec’s laser beam as implemented in Scher ‘137. Ans. 5, 16.
Appellant then argues that Labrec provides no description of any
“removed portions” or “scorched or charred residue adjacent such removed
portion”. Br. 8. However, it is the Examiner’s position, as stated, supra,
that use of the laser would inherently provide such results. Appellant argues
that this is speculation on the Examiner’s part because Labrec teaches the
formation of “marks”, including “gray scale” images. Br. 9. However, the
Examiner indicated in this record that Labrec teaches the use of a laser beam
to remove portions on articles not limited to I.D. documents, and refers to
Labrec’s para. [0069] in this regard. Ans. 5, 17. Labrec’s para. [0069] is
reproduced below:
[0069] For purposes of illustration, the following description will
proceed with reference to ID document structures (e.g., TESLIN-core,
multi-layered ID documents) and fused polycarbonate structures. It
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should be appreciated, however, that the present invention is not so
limited. Indeed, as those skilled in the art will appreciate, the
inventive techniques can be applied to many other structures formed
in many different ways to improve their laser engraving
characteristics. Generally, the invention has applicability for virtually
any product which is to be laser engraved, especially products being
engraved with grayscale images. For example, in at least some
embodiments, the invention is usable with virtually any product which
is to be laser engraved or marked, especially articles to which a
laminate and/or coating is applied, including articles formed from
paper, wood, cardboard, paperboard, glass, metal, plastic, fabric,
ceramic, rubber, along with many man-made materials, such as
microporous materials, single phase materials, two phase materials,
coated paper, synthetic paper (e.g., TYVEC, manufactured by Dupont
Corp of Wilmington, Del.), foamed polypropylene film (including
calcium carbonate foamed polypropylene film), plastic, polyolefin,
polyester, polyethylenetelphthalate (PET), PET-G, PET-F, and
polyvinyl chloride (PVC), and combinations thereof.

As such, we are not persuaded by Appellant’s arguments directed to the
position that the Examiner’s inherency position is mere speculation because
Labrec is limited to formation of “marks” and “gray scale” images. That is,
Appellant has not convinced us that Labrec’s aforementioned teachings of
the use of a laser on the kinds of articles described above would not
necessarily result in a laminate having an embossed surface exhibiting at
least one of scorched or charred residue. As such, Appellants have not
convinced us of error in the Examiner’s position that use of Labrec’s method
of laser treatment in Scher ‘137 would not necessarily provide such results.
Notably (and as important, if not more so), Appellant does not address the
combination of teachings of Scher ‘137 and Labrec in this regard.
In a similar manner, we are also unpersuaded by Appellant’s
argument directed to nonanalogous art (see, e.g., Reply Br. 3-5) for the
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reasons explained by the Examiner on page 17 of the Answer, wherein the
Examiner points out that Labrec is not limited to laser beam treatment of
articles such as I.D. documents. Ans. 17.
In view of the above, we affirm Rejection 3. For the same reasons
that we affirmed Rejection 3, we also affirm Rejections 4-7 (Appellant
offers no additional arguments directed to the other applied references in the
other rejections).

CONCLUSIONS OF LAW AND DECISION
Rejections 1 and 2 are reversed.
Rejections 3-7 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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