2020006711 (P.T.A.B. Oct. 7, 2021)

STAKLITE IP, LLC

Patent Trials and Appeals BoardOct 7, 2021

2020006711 (P.T.A.B. Oct. 7, 2021)

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. 15/647,634 07/12/2017 Antonio Manuel PEREIRA DA CUNHA RIBEIRO VALENTE 3000-005-CON 3388 113648 7590 10/07/2021 Patent Portfolio Builders, PLLC 754 Warrenton Road Suite 113-314 Fredericksburg, VA 22406 EXAMINER PLESZCZYNSKA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 10/07/2021 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTONIO MANUEL PEREIRA DA CUNHA RIBEIRO VALENTE ____________ Appeal 2020-006711 Application 15/647,634 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies Staklite IP, LLC as the real party in interest. Appeal Brief filed February 7, 2020 (“Appeal Br.”), 2. 2 Final Office Action entered August 13, 2019 (“Final Act.”), 1. Appeal 2020-006711 Application 15/647,634 2 CLAIMED SUBJECT MATTER The Appellant claims a panel. Appeal Br. 3–7. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A panel comprising: a base layer configured to have plural first protuberances; a core layer disposed on the base layer and comprising plural second protuberances, wherein one or more of the plural second protuberances have first slots in a top portion; inserts provided on the base layer and inside the one or more of the plural second protuberances of the core layer; and a top layer in direct contact with the plural first protuberances and the plural second protuberances and comprising second slots that correspond to the first slots, wherein the inserts are exposed to ambient through the first slots and the second slots. Appeal Br. 22 (Claims Appendix) (emphasis added). Like claim 1, the remaining independent claims on appeal— claims 6, 9, and 14—recite, in part, a panel comprising a base layer comprising plural first protuberances, a core layer disposed on the base layer, and a top layer in direct contact with the plural first protuberances. Appeal Br. 23–25. REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered April 2, 2020 (“Ans.”): I. claims 1–5 for nonstatutory double patenting over claims 1, 2, 19, and 20 of U.S. patent 9,731,474 in view of Belanger (US 5,612,117, issued March 18, 1997) and Danko (US 4,429,012, issued January 31, 1984); Appeal 2020-006711 Application 15/647,634 3 II. claims 6–8 for nonstatutory double patenting over claims 1, 2, 19, and 20 of U.S. patent 9,731,474 in view of Belanger; III. claims 9–13 for nonstatutory double patenting over claims 1, 2, 19, and 20 of U.S. patent 9,731,474 in view of Belanger and Hellander (US 5,657,602, issued August 19, 1997); IV. claims 14–20 for nonstatutory double patenting over claims 1, 2, 5, 7, 19, and 20 of U.S. patent 9,731,474 in view of Belanger, Hellander, and Doppler (US 6,718,720 B1, issued April 13, 2004); V. claim 20 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that the Applicant regards as the invention; VI. claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over Clark (US 2002/0028318 A1, published March 7, 2002) in view of Gosselin (US 2003/0041547 A1, published March 6, 2003), Hellander, Belanger, and Danko; VII. claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, and Belanger; VIII. claims 9 and 11–13 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, and Belanger; IX. claims 7 and 10 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, Belanger, and Danko; X. claims 14–16 and 20 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, Belanger, Danko, and Doppler; and Appeal 2020-006711 Application 15/647,634 4 XI. claims 17–19 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, Belanger, Danko, Doppler, and Palumbo (US 2008/0128202 A1, published June 5, 2008). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a) for reasons set forth in the Appeal Brief and below. We affirm the Examiner’s rejections of claims 1–20 for nonstatutory double patenting, and rejection of claim 20 under 35 U.S.C. § 112, second paragraph, because the Appellant does not contest these rejections. Rejections I–IV We summarily sustain the Examiner’s rejections of claims 1–20 for nonstatutory double patenting over claims 1, 2, 19, and 20 of U.S. patent 9,731,474 in view of numerous additional prior art references because the Appellant does not contest these rejections. 37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Rejection V We summarily sustain the Examiner’s rejection of claim 20 under 35 U.S.C. § 112, second paragraph as being indefinite because the Appellant does not contest this rejection. Id. Appeal 2020-006711 Application 15/647,634 5 Rejections VI–XI We turn now to the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over Clark in view of Gosselin, Hellander, and numerous additional prior art references. We need address only independent claims 1, 6, 9, and 14, which each recite, in part, a panel comprising a base layer comprising plural first protuberances, a core layer disposed on the base layer, and a top layer in direct contact with the plural first protuberances. Clark discloses a light-weight structural panel including at least one compliant layer having dimples extending from one or both of its sides (“dimple layer”), connected to at least one reinforcing layer to form a cavity between the dimple and reinforcing layers that can be used to transport or hold fluids and/or liquids. Clark Abstr.; ¶¶ 2, 4, 5, 32, 35; Figs. 1A–1C. Clark discloses that “[t]he reinforcing layers and dimple layers can have complementary connections to connect to other dimple layers or reinforcing layers” to form complex, multilayer panels that include “many combinations of dimple layers and reinforcing layers.” Clark ¶¶ 35, 54; see also ¶ 32. Clark exemplifies several panels formed of a double-sided dimple layer connected to two reinforcing layers on opposing sides of the dimple layer. Clark ¶¶ 38, 44, 56, 57; Figs. 2B, 10A, 21A, 22A. Clark discloses that due to its compliant nature, the dimple layer distributes stresses placed on the panel, and “the space between dimples is engineered to absorb or dissipate loads, the dimples and spaces between dimples are configured to resist fatigue, failure and rupture by the absorption, displacement or distribution of loads.” Clark ¶ 32; claim 1 (“the Appeal 2020-006711 Application 15/647,634 6 compliance of said dimple layer accommodating loading of said panel to distribute stresses”). Gosselin discloses a framing member used in building construction as an alternative to conventional framing studs for carrying wall board, ceiling board, and floor board. Gosselin ¶¶ 9, 13, 31. Gosselin discloses that the framing member comprises a rigid, corrugated fiberboard panel defining alternate longitudinally extending ridges and grooves, in which each ridge has a planar surface to which wall board, flooring board, or ceiling board can be mounted. Gosselin ¶¶ 13, 15, 32, 36; claim 1; Figs. 2 and 4. The Examiner determines that it would have been obvious to one of ordinary skill in the art to dispose a corrugated fiberboard panel (core layer having second protuberances) as disclosed in Gosselin on Clark’s dimple layer (base layer having first protuberances) “to provide the panel of Clark with additional strength.” Final Act. 6. The Examiner finds, however, that “Gosselin does not include openings accommodating the” dimples of Clark’s dimple layer (first protuberances of base layer), such that Gosselin’s corrugated fiberboard panel (core layer) “could be disposed on” Clark’s dimple layer (base layer). Id. The Examiner consequently turns to Hellander, which discloses an exterior facade structure for a building that includes a plurality of prefabricated composite panels attached to the building’s side wall. Hellander Abstr.; col. 1, ll. 7–10; col. 2, ll. 12–18; Figs. 1 and 2. Hellander discloses that “the composite panels are cut to accommodate windows, doors and other openings in or protuberances extending outwardly of the side wall.” Hellander col. 3, ll. 23–25. In view of these disclosures in Hellander, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to provide Appeal 2020-006711 Application 15/647,634 7 Gosselin’s corrugated fiberboard panel (core layer having second protuberances) “with openings to accommodate” the dimples of Clark’s dimple layer (first protuberances of base layer) and disposing Gosselin’s corrugated fiberboard panel (core layer) on Clark’s dimple layer (base layer), to form a panel as recited in claims 1, 6, 9, and 14 comprising a dimple layer (base layer) comprising dimples (plural first protuberances), a fiberboard panel (core layer) disposed on the dimple layer (base layer), and a reinforcing layer (top layer) in direct contact with the dimples (plural first protuberances). Final Act. 6–7. As Appellant argues, however, the Examiner does not provide reasoning having rational underpinning that explains why one of ordinary skill in the art seeking to increase the strength of Clark’s panel would have disposed a rigid fiberboard panel as disclosed in Gosselin on the compliant dimple layer of Clark’s panel. Appeal Br. 11–13. As discussed above, Clark discloses connecting multiple dimple layers and reinforcing layers to form multilayer panels that include many combinations of dimple and reinforcing layers. In view of this disclosure, the Examiner does not provide sound technical reasoning that explains why one of ordinary skill in the art seeking to increase the strength of Clark’s panel would have been led to dispose Gosselin’s fiberboard panel used as a building framing member on Clark’s dimple layer, and introduce holes into the fiberboard panel to accommodate the dimples on Clark’s dimple layer, rather than simply adding additional reinforcing and/or dimple layers to Clark’s panel, as Clark discloses. Nor does the Examiner explain why one of ordinary skill in the art reasonably would have expected that disposing a rigid fiberboard panel as Appeal 2020-006711 Application 15/647,634 8 disclosed in Gosselin on Clark’s compliant dimple layer would be beneficial, or even useful, in Clark’s panel. As discussed above, Clark explicitly discloses that Clark’s dimple layer is purposefully designed to be compliant to enable the dimple layer to distribute stresses placed on Clark’s panel, allowing the panel to resist fatigue, failure, and rupture when loads are applied to the panel. The Examiner does not explain why and how disposing a rigid fiberboard panel on Clark’s compliant dimple layer would not negatively impact the intended compliance of Clark’s dimple layer. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (explaining that no motivation exists to make a proposed modification if doing so would render the prior art invention being modified inoperable for its intended purpose); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“[T]he ‘predictable result’ discussed in [KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007)] refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose.”). Simply because Clark’s panel could be modified as proposed by the Examiner, in the absence of reasoning having rational underpinning that explains why one of ordinary skill in the art actually would have so modified the panel, the proposed modification would not have been obvious under section 103, because “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted); see also Gordon, 733 F.2d at 902 (“The mere fact Appeal 2020-006711 Application 15/647,634 9 that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification.”). We, accordingly, do not sustain the Examiner’s rejections of independent claims 1, 6, 9, and 14, and claims 2–5, 7, 8, 10–13, and 15–20, which each depend from either claim 1, 6, 9, or 14, under 35 U.S.C. § 103(a). DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5 Nonstatutory Double Patenting U.S. 9,731,474, Belanger, Danko 1–5 6–8 Nonstatutory Double Patenting U.S. 9,731,474, Belanger 6–8 9–13 Nonstatutory Double Patenting 9,731,474, Belanger, Hellander 9–13 14–20 Nonstatutory Double Patenting 9,731,474, Belanger, Hellander, Doppler 14–20 20 112, second paragraph Indefiniteness 20 1–5 103(a) Clark, Gosselin, Hellander, Belanger, Danko 1–5 Appeal 2020-006711 Application 15/647,634 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6, 8 103(a) Clark, Gosselin, Hellander, Belanger 6, 8 9, 11–13 103(a) Clark, Gosselin, Hellander, Belanger 9, 11–13 7, 10 103(a) Clark, Gosselin, Hellander, Belanger, Danko 7, 10 14–16, 20 103(a) Clark, Gosselin, Hellander, Belanger, Danko, Doppler 14–16, 20 17–19 103(a) Clark, Gosselin, Hellander, Belanger, Danko, Doppler, Palumbo 17–19 Overall Outcome 1–20 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