Henrik JENSEN et al.

Patent Trials and Appeals Board

Dec 11, 2020

2020000886 (P.T.A.B. Dec. 11, 2020)

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.
13/529,254 06/21/2012 Henrik JENSEN 0079846-000006 5961
21839 7590 12/11/2020
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/11/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENRIK JENSEN and THEIS REENBERG
____________

Appeal 2020-000886
Application 13/529,254
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 14–17, 19–28, and 30–36. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Valinge Photocatalytic AB as the real party in
interest. Appeal Br. 2.
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BACKGROUND
The invention relates to wood products, such as floor panels. Spec. 1.
The Specification describes coating lacquered boards or panels with
photocatalytic nanoparticles to achieve a product capable of reducing
volatile organic compounds in indoor air. Id. at 3. Barrier particles separate
the photocatalytic particles from the underlying lacquer layer. Id. at 5.
Claim 14 is the sole independent claim and reads as follows:
14. A method of manufacturing a photocatalytic lacquered
wood product, wherein the method comprises:
lacquering an underlying wood product to obtain a
base coat comprising at least one lacquer layer;
coating said base coat with a barrier coating fluid
comprising barrier particles, to obtain a transparent
barrier layer;
spraying said transparent barrier layer with a
photocatalytic coating fluid comprising photocatalytic
nanoparticles to obtain a transparent photocatalytic layer
disposed on said transparent barrier layer, said
photocatalytic nanoparticles being embedded and
homogenously distributed in said transparent
photocatalytic layer; and then
curing said wood product such that at least the
base coat is cured.
Appeal Br. (Claims Appendix 1) (emphasis added).
REJECTIONS
I. Claims 14, 15, 19, 21, 22, 27, 28, and 30–34 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Toida2 and Hansson.3

2 Toida et al. (JP 2001038858 (A); publ. Feb. 13, 2001) (as translated)
(“Toida”).
3 Hansson et al. (US 2003/0207083 A1; publ. Nov. 6, 2003) (“Hansson”).
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II. Claims 16, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toida, Hansson, and Akarsu.4
III. Claims 17, 20, 23, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Toida, Hansson, and Iversen.5
IV. Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Toida, Hansson, Akarsu, Schmidt,6 and Okada.7
V. Claim 36 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Toida, Hansson, Schmidt, and Okada.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. 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.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,

4 Akarsu et al. (US 2005/0191505 A1; publ. Sept. 1, 2005) (“Akarsu”).
5 Iversen et al. (US 2010/0297434 A1; publ. Nov. 25, 2010) (“Iversen”).
6 H. Schmidt et al., Application of spray techniques for new photocatalytic
gradient coatings on plastics, 502 Thin Solid Films, 132–137 (Apr. 2006)
(“Schmidt”).
7 Okada et al. (US 2005/0145939 A1; publ. July 7, 2005) (“Okada”).
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837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Independent claim 14 includes a step of “lacquering an underlying
wood product to obtain a base coat comprising at least one lacquer layer.”
In rejecting that claim, the Examiner finds Toida discloses a “laminated
body” having a wood base material, a primer layer, a protective layer, and a
photocatalyst layer. Final Act. 2–3 (citing Toida Figs. 1, 2). The Examiner
equates Toida’s base material, protective layer, and photocatalyst layer with
the recited underlying wood product, barrier layer, and photocatalytic
coating, respectively. Id. at 3–6. The Examiner finds Toida teaches
providing a particular cross-linked acrylic copolymer primer layer designed
to resist degradation by ultraviolet light, id. at 3, but that “Toida does not
expressly disclose that the coating of the varnish and/or primer layers is a
lacquering,” id. at 6. For that claim feature, the Examiner finds Hansson
teaches lacquering a wood product with multiple lacquer layers with partial
curing in a manner that achieves simulated wood grain. Id. at 7. The
Examiner finds Hansson therefore would have provided one of ordinary skill
in the art with a reason to apply Hansson’s lacquer to Toida’s laminated
product to achieve a wood grain simulation. Ans. 10–11.
Appellant argues, inter alia, the prior art relied upon does not support
the Examiner’s finding of a reason to combine the teachings of Toida and
Hansson. Appeal Br. 10–11. We agree.
The Examiner states the obviousness rationale as follows:
[F]rom Hanson [sic] the UV curing acrylate of Toida is an UV
curing acrylic lacquered to the wood or lacquered in a base
lacquer layer, main lacquer layer and top lacquer layer with
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partial curing motivated to obtain wood grain and cross-grained
wood simulation.
Final Act. 7.
As the Examiner acknowledges, Final Act. 6, Hansson discloses
applying a UV-curing lacquer in multiple steps with intermediate curing.
Hansson ¶ 42. Particularly, Hansson teaches applying particle-containing
lacquer layers which are then semi-cured to yield a soft lacquer. Id. The
resulting soft lacquer is subjected to alternately rolling with two different
structured rollers to form elongated recesses simulating wood pores. Id.
Thus, contrary to the Examiner’s characterization, modifying Toida’s primer
layer to include multiple semi-cured lacquer layers would not have resulted
in formation of simulated wood grain. Rather, according to Hansson, the
grain simulation is achieved by patterned rolling. Moreover, Hansson
discloses the grain simulation technique in connection with manufacture of
flooring panels, Hansson ¶ 2, whereas Toida is concerned with manufacture
of weather-resistant textiles, Toida ¶¶ 1, 2. The Examiner does not provide
evidence or reasoning to support a finding that one of ordinary skill would
have sought simulated wood grain in Toida’s textile product. Nor does the
Examiner adequately address whether Hansson’s patterned rolling technique
applied to flooring panels would have reasonably been expected to have
been suitable for fabricating textiles.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claim 14. Because each of the remaining claims on appeal depends from
claim 14, and the Examiner does not rely on any of the additionally cited
prior art to cure the deficiency discussed above, we do not sustain the
remaining rejections for the same reasons given in connection with claim 14.
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CONCLUSION
The Examiner’s decision rejecting claims 14–17, 19–28, and 30–36 is
reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
14, 15, 19,
21, 22, 27,
28, 30–34
103(a) Toida, Hansson 14, 15, 19,
21, 22, 27,
28, 30–34
16, 24, 25 103(a) Toida, Hansson,
Akarsu
16, 24, 25
17, 20, 23,
35
103(a) Toida, Hansson,
Iversen
17, 20, 23,
35
26 103(a) Toida, Hansson,
Akarsu, Schmidt,
Okada
26
36 103(a) Toida, Hansson,
Schmidt, Okada
36
Overall
Outcome
14–17, 19–
28, 30–36
REVERSED