Ex parte Larson
| Decision Date | 29 January 2016 |
| Docket Number | Appeal 2014-000554 |
| Parties | Ex parte BRENT K. LARSON, MATT D. BREEN, and TERRY PUGH[1] Application 12/052, 827 Technology Center 1700 |
| Court | Patent Trial and Appeal Board |
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and N. WHITNEY WILSON Administrative Patent Judges.
PAK Administrative Patent Judge.
This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's decision[2] finally rejecting claims 1-7 9-29, 37, and 38.[3] We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to "multi-layer laminates having improved dimensional stability[.]" Spec. 1 ¶ 2. This dimensional stable laminate is said to have a reinforcement layer, a substrate layer, and an optional decorative layer. Spec. 2 ¶ 7 and 4 ¶ 15. The reinforcement layer "contains, by weight, from about 20% to about 80% reinforcement fiber[s]" and "from about 20%) to about 80% thermoset polymer selected from polyester, phenolic, epoxy, and mixtures thereof." Spec. 2 ¶ 7 and 4-5 ¶¶ 16-17. The substrate layer includes "from about 20% to about 80% reinforcement fiber[s]" and "from about 20% to about 80% polymer selected from polyvinyl chloride, polyester, phenolic, epoxy, and mixtures thereof." Spec. 2 ¶ 7 and 5 ¶ 19. The fiber materials used in the reinforcement and substrate layers "can include, for example, glass, aramids, carbon, polyvinyl alcohol (PVA), hemp, jute, organic materials, and rayon." Spec. 5 ¶ 20. An adhesive can be disposed between the reinforcement layer and the substrate layer and an adhesive primer can be disposed between the reinforcement layer and the adhesive. Spec. 6 ¶ 21 and 7 ¶ 24.
Details of the appealed subject matter are recited in illustrative claims 1, 3, and 37, [4] which are reproduced below from the Claims Appendix of the Appeal Brief:
App. Br. 19 and 25 (emphasis added).
The Examiner has maintained the following grounds[5] of rejection:
1. Claims 1-7, 9-22, 37, and 38 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement;
2. Claims 1-7, 9-22, and 37 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention;
3. Claims 1-7, 9, 11-22, and 37 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Shiraishi, [6] Pierson, [7] and Zhang[8]; and
4. Claims 4, 10, 11, 23-29 and 38 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of Shiraishi, Pierson, Zhang, and Summers.[9] Final Act. 2-23 and Ans. 3-13.
Upon consideration of the evidence in this appeal in light of the arguments and responses advanced by Appellants and the Examiner, respectively, we find that Appellants do not identify reversible error in the Examiner's decision rejecting claims 1-7, 9-22, 37, and 38 under 35 U.S.C. § 112, first paragraph, claims 1-7, 9-22, and 37 under 35 U.S.C. § 112, second paragraph, and claims 1-7, 9-29 and 38 under 35 U.S.C. § 103(a) only. Accordingly, we affirm the Examiner's §§112 and 103(a) rejections of the above claims for the reasons set forth in the Final Action and the Answer, bur reverse the Examiner's § 103(a) rejection of claim 37 for the reasons set forth in the Appeal Brief. We add the following primarily for emphasis.
To satisfy the written description requirement of the first paragraph of 35 U.S.C § 112, "the applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the claimed invention." Carnegie Mellon University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (internal quotations omitted). "If the applicant claims embodiments of the invention that are completely outside the scope of the specification then the examiner or Board need only establish this fact to make out a prima facie case [of failure to comply with the written description requirement]." In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996); see also In re Wertheim, 541 F.2d 257, 263-264 (CCPA 1976) , ' as that limitation appears in claim 1."). Our reviewing court has Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)(en banc). A "description that merely renders the invention obvious does not satisfy the [written description] requirement." Id. (citing Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997)). "Written description is a question of fact, judged from the perspective of one of ordinary skill in the art as of the relevant filing date." Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).
Applying the above principles of law to the present facts, we find no reversible error in the Examiner's finding that the application disclosure, as originally filed, does not have written descriptive support for the limitation "less than [0].5% material distortion" in claim 1 and the limitation "a maximum thickness of approximately 3.7 mm" recited in claims 37 and 38. Although Appellants rely upon paragraph 31 and Table 1 at pages 9 and 15 of the Specification and the corresponding disclosures in the priority documents, as supporting the limitations "less than [0].5% material distortion" and "a maximum thickness of approximately 3.7 mm" in claims 1, 37, and 38, respectively, there is no indication that paragraph 31 and Table 1 relied upon by Appellants impliedly or expressly describe such limitations. Ans. 3 and App. Br. 13.
As recognized by the Examiner, paragraph 31 of the Specification states that "the laminate structure herein, for example[, ] laminate structures 10 and 30, are dimensionally stable, having less than 0.5% change after 168 hours at 70°C, . . ., and in another embodiment, less than 0.1% dimensional change after 168 hours at 70°C." Ans. 3. Nowhere does this paragraph define "material distortion" or equate "material distortion" only with the dimensional change associated with heating the final laminate structure at this particular temperature for a particular period as found by the Examiner. Id. The term "distortion" is mentioned in paragraph 5 of the Specification in the context of "permanent distortion" occurring "along the x or y axis, or both, when the laminate is heated and stretched in one or more directions as a result of forces applied in a mechanical lamination process." See, e.g., App. Br. 14. However, there is nothing in paragraphs 5 and/or 31 of the Specification indicating that less than 0.5% permanent or material distortion occurs when Appellants' laminate is heated and stretched during the mechanical lamination process. Although Appellants argue for the first time at page 8 of the Reply Brief that "[i]t is well accepted in the art that variation and change in a material is what causes [material] distortion, "[10] they proffer no evidence to support this proposition. Nor do Appellants proffer any evidence to show that Appellants' laminate structure having less than 0.5% change after 168 hours at 70°C is equal to or corresponds to less than 0.5% material distortion occurring at any heating condition with or without any specific stretching. Id.
As also recognized by the Examiner, Table 1 at page 15 of the Specification indicates that the maximum thickness of Appellants' laminate structure is 3.7 mm. Ans. 4. The maximum thickness described in the Specification implies or indicates that the thickness of Appellants' laminate structure cannot be higher than 3.7 mm as found by the Examiner. Id. However, there is no dispute that the limitation "approximately 3.7 mm" newly recited in claims 37 and 38 is inclusive of those which are higher than 3.7 mm. Compare Ans. 4 with App. Br. 13 and Reply Br. 8. Although Appellants argue for the first time at page 8 of the Reply Brief,...
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