Trending publication

On June 2, 2010, the Board of Patent Appeals and Interferences (BPAI) at the United States Patent and Trademark Office issued Ex Parte Quist, a decision on a request for rehearing regarding the panel’s affirmation of a non-final §103 rejection on April 30, 2008.  

The application was directed to methods for manufacturing decorative boards. Claim 1 recited:

1. A process for the manufacturing of decorative boards with an abrasion resistant surface and edges with joining functionality, the process comprising the steps:

a) in a first step, cutting a carrier board having an upper surface to the desired dimension and making edges with at least one joining element, thereafter
b) applying radiation curable dry acrylic lacquer powder to the upper surface of the board,
c) heating the acrylic lacquer so that it melts,
d) curing the acrylic lacquer by means of radiation, the radiation being selected from the group consisting of UV-radiation and electron beam radiation

The Board found that the term “carrier board” was not defined in the claim or the specification, and that it was not defined as including only uncoated boards. In addition, the Board found that any board, coated or uncoated, could be a “carrier board” as claimed.

There were three items at issue:
(1) Did the Board misapprehend the subject matter sought to be patented?
(2) Did the Board misconstrue the evidence submitted in the declaration found in the Evidence Appendix?
and
(3) Did the panel properly evaluate the evidence supporting the prima facie case with any rebuttal argument and/or evidence in reaching the final conclusion of obviousness and affirming the obviousness rejection?

Regarding the issue of misapprehending the subject matter, the Appellants argued that the Board did not distinguish between all of the steps of the claims. Specifically, the Appellants argues that the Board did not distinguish between the steps of cutting the board, making edges with a joining element, and then applying a lacquer powder. Looking at the claim construction, the Board concluded that the claims include the steps of cutting the board to form a joining element and applying a coating to the board. The Board explained that the claim does not limit the board to one that is without a coating prior to being cut.  

In addition, the Appellants put emphasis on the advantage of their claimed invention over the prior art concerning the fact that the coating material is not wasted after it is applied by milling it away to form joints, as it is applied before the joints are milled. In response, the Board concluded that this argument is improper as this is a new argument not previously heard. Thus, this argument by the Appellant is improper and untimely as it was not made prior to the request for reconsideration.

Appellants also argued that the prior art references do not solve the problem of the costly removal of coating material when forming the joints. The Board found this unpersuasive as well, reiterating that this argument is untimely as this advantage of the claimed invention was only first argued during this request for rehearing, and the fact that the Board interpreted the claims to include uncoated and coated boards as carrier boards.

Regarding the issue of misconstruing the declaration evidence, the declaration contained statements that no current manufacturer of laminate flooring forms the joints before applying the coatings, and that this would not be a conventional way to create the boards. The Board notes that secondary considerations are only relevant if the actual product includes the claimed features, and only in these circumstances will they be given substantial weight. As the Board concluded that the claims at issue are broader than boards that are joined before a coating is applied, these statements in the declaration are not particularly relevant to the issue of non-obviousness.

Regarding the issue of properly evaluating the evidence supporting the prima facie case, the Appellants argued that the Board used an improper legal standard in their decision as they did not base their decision on the entire record by a preponderance of the evidence. The precedent in the Frye decision stated that the Board should review contested findings in light of all the evidence on those particular issues. While the Board agreed that this standard was applicable in the present case, they found that the correct standard and procedure was applied. Specifically, they found that the Board’s analysis of the rebuttal evidence regarding the prima facie case showed that all the proper evidence was weighed. In addition, the decision included statements that the whole record was reviewed and considered.

Thus, the Board reconsidered the decision that was entered on April 30, 2008, but did not make any changes to the decision.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.