Ex Parte Walsh

Patent Trial and Appeal Board

Sep 24, 2012

10797572 (P.T.A.B. Sep. 24, 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.
10/797,572 03/11/2004 John Peter Walsh 16240.M293 4803
7590 09/24/2012
Joseph W Berenato III
Liniak, Berenato & White, LLC
Suite 240
6550 Rock Spring Drive
Bethesda, MD 20817
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
09/24/2012 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 JOHN PETER WALSH
____________________

Appeal 2010-009397
Application 10/797,572
Technology Center 3600
____________________

Before: EDWARD A. BROWN, MICHELLE R. OSINSKI, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009397
Application 10/797,572

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-14 and 27-33 under 35 U.S.C. § 103(a) for unpatentability over Moyes
(US 6,312,540 B1; iss. Nov. 6, 2001) in view of Phillips (US 2,675,338; iss.
Apr. 13, 1954). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claims are directed to methods of forming a molded plywood
door skin. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of forming a molded plywood
door skin, comprising:
conditioning a plywood board comprising at
least one ply of solid wood with water;
disposing the conditioned plywood board in
a mold press having a contoured mold cavity; and
deforming the plywood board in the mold
press using sufficient heat and pressure to form a
molded plywood door skin having a substantially
uniform thickness and a substantially uniform
density and contoured portions corresponding to
said mold cavity.

ANALYSIS
1. Claims 1, 2, 9, 10, 12, 13, and 27
Appellant argues these claims as a group (App. Br. 4-11); we select
claim 1 as representative; see 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner found that Moyes discloses all steps of the method
recited in claim 1 but does not expressly disclose use of a plywood board
Appeal 2010-009397
Application 10/797,572

3
having at least one ply of solid wood. Ans. 3. Rather, the Examiner found,
Moyes discloses wood composite blanks as the preferred but not exclusive
type of blank suitable for molding. Ans. 4. The Examiner further found that
Phillips discloses molding of plywood boards using heat and pressure. Ans.
3-4. The Examiner concluded that it would have been obvious to try
Moyes’s molding process on Phillips’s boards because “a person with
ordinary skill has good reason to pursue the known options within his or her
technical grasp.” Ans. 5.
Appellant argues that (a) the Examiner’s finding of “good reason” to
combine Moyes and Phillips is a conclusory statement insufficient to meet
the burden to establish prima facie unpatentability; (b) that Moyes’s
expression of “preference” for wood composite does not open Moyes to a
“boundless interpretation” of suitable materials; and (c) one of ordinary skill
in the art would have understood plywood and wood composite to have
sufficiently distinct properties such that (1) one would not have had a
reasonable expectation of success in using plywood in Moyes’s method; and
(2) Moyes teaches away from use of plywood. App. Br. 4-11.
The Examiner, in response, finds that (a) it would have been obvious
to try the materials disclosed by Phillips in Moyes’s method because Phillips
discloses that they are susceptible to molding processes similar to that of
Moyes; (b) plywood is one example of a wood composite and therefore
within the category of materials Moyes contemplates; and (c) Appellant’s
contentions regarding the unsuitability of plywood to Moyes’s method are
unsubstantiated by evidence showing their unsuitability. Ans. 9-11.
Appeal 2010-009397
Application 10/797,572

4
Appellant replies by continuing to emphasize the differences between
plywood and wood composite that one of ordinary skill in the art would
readily appreciate. Reply Br. 4-7.
None of Appellant’s arguments concerning claim 1 convinces us of
error in the Examiner’s findings or conclusion, principally because they are
not commensurate in scope with claim 1. The claim requires that the
“plywood board” comprise “at least one ply of solid wood.” Appellant’s
arguments in distinguishing plywood from wood composite are all
predicated on the presence of multiple layers of solid wood in the plywood.
See, e.g., App. Br. 6 (“Plywood is made from thin sheets of solid wood
called [plies] that are bound together”)(emphasis added). The “plywood
board” recited in claim 1 does not require such multiple sheets, nor does it
exclude other materials. Appellant’s arguments thus do not address the full
scope of the term “plywood board” contemplated by the language of claim 1
and consequently cannot be persuasive as to the unobviousness of all the
subject matter encompassed by the claim. Appellant’s arguments as to how
one of ordinary skill in the art would interpret “plywood” compared to
“wood composite” are unsubstantiated by evidence and are therefore not
persuasive. For these reasons, Appellant has not identified reversible error
in the Examiner’s rejection of claim 1.
2. Claim 3
Appellant’s argument regarding the unsuitability of Moyes’s closure
rate for plywood (App. Br. 12) does not convince us of error for the reasons
given above with respect to claim 1, and because it is unsubstantiated by
evidence.
Appeal 2010-009397
Application 10/797,572

5
3. Claims 4-8, 11, and 14
Appellant’s separate arguments for each of these claims regarding
silence of Moyes as to various treatment parameters are non-responsive to
the Examiner’s conclusion that such treatment modifications are well known
and therefore obvious, absent evidence of unexpected results. We are not
convinced of error.
4. Claim 28
Appellant’s arguments are unconvincing for reasons analogous to
those given above with respect to claim 1 and claims 4-8, 11, and 14.
5. Claims 29-33
Appellant’s separate arguments for each of these claims are
unconvincing for reasons analogous to those given above with respect to
claims 4-8, 11, and 14.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-14 and
27-33 is 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)(iv).

AFFIRMED

Klh