Ex parte Quist

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MAGNUS QUIST,
PETER MILLER, and JAN ERICSSON1
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Appeal 2008-001183
Application 10/471,865
Technology Center 1700
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Decided: June 2, 2010
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE and ALLEN R. MACDONALD,
Vice Chief Administrative Patent Judges, LINDA E. HORNER,
CHARLES F. WARREN, JEFFREY T. SMITH, and LINDA M. GAUDETTE,
Administrative Patent Judges.
PER CURIAM
DECISION ON REQUEST FOR REHEARING
1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown
on the PTOL-90A cover letter attached to this decision.

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I. Procedural Background
A panel consisting of Judges Warren, Smith and Gaudette entered a decision
on appeal on April 30, 2008. The panel affirmed a non-final § 103 rejection made
by the Examiner.
The Appellants filed a Request for Rehearing pursuant to 37 C.F.R. § 41.52
(2008) on June 30, 2008. The Request included a request for an expanded panel to
reconsider the appeal. In view of issues raised in the rehearing request, an
expanded panel has been designated to decide the request for rehearing.
II. Principles of Law
A. Rehearing Requests
Requests for rehearing must comply with 37 C.F.R. § 41.52(a)(1), and “must
state with particularity the points believed to have been misapprehended or
overlooked by the Board.” Moreover, requests must specifically recite “the points
of law or fact which appellant feels were overlooked or misapprehended by the
Board.” (MPEP § 1214.03.) Arguments raised by Appellants for the first time in a
Request for Reconsideration are waived if the arguments were required to have
been made in the Briefs, unless good cause is shown. Cf. Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008).
B. Standard of Review
The examiner has an initial burden to set forth the basis for a
rejection, so as to put a patent applicant on notice of the reasons why the applicant
is not entitled to a patent on the claim scope sought. This “prima facie case” is a
procedural mechanism that shifts the burden of going forward to the applicant, who
must then produce argument, with or without evidence, rebutting the initial case of

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unpatentability. The applicant’s rebuttal evidence may relate to any of the
Graham2 factors including the so-called secondary considerations. “The examiner
then determines patentability ‘on the totality of the record, by a preponderance of
the evidence with due consideration to the persuasiveness of argument.’” Ex Parte
Frye, Appeal 2009-006013, 2010 WL 889747 *3-4 (BPAI Feb. 26, 2010)
(Precedential).
An appellant may attempt to overcome an examiner’s obviousness rejection
on appeal to the Board by submitting arguments and/or evidence to show that the
examiner made an error in either (1) an underlying finding of fact upon which the
final conclusion of obviousness was based, or (2) the reasoning used to reach the
legal conclusion of obviousness. Similarly, the appellant may also submit evidence
of secondary considerations of nonobviousness. The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant, and
the particular findings and conclusions in light of the arguments and evidence
presented. 	See id.
III. Issues Raised
A. The issues presented on rehearing are:
(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
2 Graham v. John Deere Co., 383 U.S. 1 (1966).

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(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? 	(Req. for Reh’g 2.)
IV. Discussion
A. Arguments Raised Concerning the Claimed Invention and the Prior Art
Additional Findings of Fact
FF 1. Claim 1 reads as follows:
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.
FF 2. Claim 1 recites the transitional term “comprising.”
FF 3. Claim 1 recites a first step of cutting a “carrier board.”
FF 4. The term “carrier board” is not defined in the claim.
FF 5. The term “carrier board” is not defined in the Specification.
FF 6. The term “carrier board” is not defined as including only uncoated
wood.
FF 7. Any board, including a coated board, can be a “carrier board.”

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Arguments Raised
The Appellants argue that “[t]he Board misapprehended the subject matter
sought to be patented vis-à-vis the teachings of the prior art.” (Req. for Reh’g at
8:12-13.)
The Appellants urge that the Board did not distinguish between the various
claimed steps, specifically, “cutting a carrier board having an upper surface to the
desired dimension”; “making edges with at least one joining element”; and
“thereafter,” “applying radiation curable dry acrylic lacquer powder” (claim 1,
steps a) and b)). (Req. for Reh’g at 4, 8.)
The Appellants further argue that “[w]hat the claimed process has, as an
advantage over all the applied prior art, is that the coating material, and hence the
costs of material, is not needlessly wasted, by subsequently milling it away to form
the joining elements.” (Req. for Reh’g at 8:18-20.)
Issue
Did the Board misapprehend the subject matter of the claim?
Discussion
First, we observe that the Appellants make a new argument on rehearing
concerning the advantages of the claimed process. The Appellants have not
pointed out where the argument above concerning the asserted advantage was
made in the Appeal Brief or the Reply Brief, and we have not found the argument
in our review of the record. Accordingly, the Board could not have overlooked or
misapprehended an argument which was not before it. As such, the argument
relating to the advantage of the process is improper and untimely when made for
the first time in a request for reconsideration. See Hyatt, 551 F.3d at 1313-14.

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Second, the argument is without persuasive effect. The Appellants seek a
broad process claim. The Board’s initial decision noted that the claims encompass
a process where the carrier board may already have a coating on its upper surface
at the time it is milled. When the carrier board of claim 1 step a) is a pre-finished
board, the claimed process offers no advantage as described.
We observe that the previous panel’s claim construction in this regard is not
unreasonable. The claim is written in open-ended “comprising” language and
recites, generally speaking, two complete steps – cutting a board to form a joining
element, and then coating the board in a particular way. The claim does not
exclude other coating or processing steps at any point in the process or restrict the
starting material to uncoated wood. In sum, we agree with the initial panel that the
claim as written includes the cited prior art combination of Moriau and Biller.
The Appellants have not persuaded us by this first argument that the initial
panel overlooked or misapprehended the scope of the claim.
B. The Applied References
Arguments Raised
The Appellants urge that the Board interpreted the references incorrectly and
at odds with the interpretation of the Examiner. (Req. for Reh’g 4-6.) They argue
that the references, especially Biller, do not solve the problem of the
disadvantageous process of removing costly coating material from a coated product
in order to later form a joining functionality. (Req. for Reh’g 6.)
Issue
Did the panel err in its findings as to the prior art and the differences
between the claimed subject matter and the prior art?

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Discussion
As noted above, the Appellants’ arguments focus on their narrow reading of
the claims as excluding a milling step which would remove a finish or coating from
a pre-finished piece being processed. Although the combination of Biller and
Moriau teaches a step of removing finish, Appellants’ argument is unpersuasive
because claim 1 does not exclude removal of finish. 	Moreover, the argument
regarding wasted coating material is again made by the Appellants for the first time
in the Request for Rehearing, which is untimely.
The Appellants interpret claim 1 as requiring raw or unfinished wood, but no
such limitation is present. Consequently, the instant claims cover processes which
do not cure the disadvantageous process.
C. The Eriksson Declaration
Argument Raised
The Appellants urge that the initial panel decision also misconstrued the
evidence submitted in the Eriksson declaration. (Req. for Reh’g 6-7.)
Issue
Did the panel misconstrue the Eriksson declaration?
Discussion
The declaration must have a sufficient nexus to the claimed subject matter to
be given substantial weight.
“All evidence bearing on the issue of obviousness, as with any other issue
raised in the conduct of the judicial process, must be considered and evaluated
before the required legal conclusion is reached.” Simmons Fastener Corp. v.
Illinois Tool Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984). However, “[a]

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nexus between the merits of the claimed invention and evidence of secondary
considerations is required in order for the evidence to be given substantial weight
in an obviousness decision.” Id.
Put another way, commercial success or other secondary considerations may
presumptively be attributed to the patented invention only where “the marketed
product embodies the claimed features, and is coextensive with them.”
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008) (citing
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) and
quoting Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120,
1130 (Fed. Cir. 2000)).
In the declaration, Declarant Eriksson attests, in pertinent part:
6. No commercial laminate flooring manufacturer, today or at any
time, has manufactured laminate flooring elements by forming joining
elements on boards prior to applying coatings.
7. Thus, it is neither “recognized” nor “conventional” to form joining
elements on laminate floor board prior to applying coatings.
Upon our expanded panel consideration, we conclude that these statements,
and the broad conclusions reached, are not coextensive with the elements of the
claim as written. In other words, the evidence is not entitled to substantial weight
because the Appellants have not established a sufficient nexus between the merits
of the claimed invention and the objective evidence of nonobviousness, i.e.
Declarant Eriksson’s statements. As noted above, the claim, construed reasonably
broadly, does not exclude forming joining elements on boards either after applying
coatings or before applying coatings.
The testimony of Declarant Eriksson is therefore not particularly probative
of nonobviousness of the claimed subject matter as a whole.

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Reweighing the evidence as a whole, and taking into account that the
evidence of nonobviousness is not given substantial weight, we conclude that a
preponderance of the evidence of record supports the Examiner’s conclusion that
one of ordinary skill in this art would have found in Moriau the suggestion to apply
a decorative layer to the board, then mill the board to form the joining elements,
and thereafter coat the formed board and joining elements with a protective top
lacquer layer using Biller’s process for applying a radiation curable dry acrylic
lacquer powder. (Dec. 6-7 and 8-9.)
D. Reviewing Evidence Relevant to Obviousness
Arguments Raised
Appellants submit that the prior panel “utilized an improper legal standard in
considering whether to affirm the Examiner” because the panel did not reach the
final determination of patentability under 35 U.S.C. § 103(a) based on the entire
record by a preponderance of the evidence by weighing “evidence supporting
patentability . . . against evidence supporting [the] prima facie case.” (Req. for
Reh’g 2-3.) Appellants specifically identify two statements in the Decision for
their contention:
(1) The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case of obviousness in the
grounds of rejection advanced on appeal.
(2) Upon further reconsideration of the record as a whole in light of
Appellants’ contentions, we are of the opinion that Appellants have
not successfully rebutted the prima facie case based on the combined
teachings of Moriau, Biller, and Iverson.
(Req. for Reh’g at 2-3.)

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Appellants argue that these statements hold the “Appellants to an improper
standard which is neither supported by the courts, nor by the PTO’s own
instruction manual to the examining core [sic] (MPEP). While Appellants do not
clearly specify the “improper standard” applied by the panel, their argument
appears to be that the panel improperly weighed the rebuttal arguments/evidence
for its ability to “knock down” the prima facie case, instead of considering the
record as a whole. (Req. for Reh’g 3, quoting MPEP §716.01(d)).
Issue
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?
Discussion
The recently published precedential Frye decision specifically describes the
role of the Board as that of “[reviewing] the obviousness rejection for error based
upon the issues identified by appellant, and in light of the arguments and evidence
thereon.” (Slip. Op. 9. ) “Specifically, the Board reviews the particular finding(s)
contested by an appellant anew in light of all the evidence and argument on that
issue.” (Id. at 10.)
Secondary considerations, including objective evidence relevant to the issue
of obviousness, must be considered by the Examiner. Graham at 17-18. The
Graham factors (determining the scope and content of the prior art, ascertaining
the differences between the prior art and the claims at issue, and resolving the level
of ordinary skill), including secondary considerations when present, are the
controlling inquiries in any obviousness analysis. KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 406-7 (2007). “[P]atentability is determined on the totality of the

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record, by a preponderance of evidence with due consideration to persuasiveness of
argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
On Board review, if the appellant raises the issue as to whether the
examiner’s conclusion of obviousness was in error, based in part on the proffered
evidence of secondary considerations, the panel must consider if the examiner
erred in determining patentability, based upon the totality of the record. In such
instances, the Board panel must consider anew all the relevant evidence of
obviousness, both for and against, in view of the argument on the issue. One such
instance requiring a reweighing is seen in the present appeal – if the Appellants
argue that the Examiner erred in determining that the weight of the evidence
supports a conclusion of obviousness, the Board must review that conclusion of
obviousness anew to see if the preponderance of relevant evidence properly before
the Office supports that conclusion.
Measured against this background, Appellants’ allegation that the panel
applied an improper standard fails. The panel addressed arguments reasonably
raised by Appellant on the obviousness rejection, and, as applicable, evidence
relied thereon. The panel Decision’s analysis of these issues reflects application of
the correct standard and procedure, as recently reiterated in Frye and summarized
above.
For example, a review of the full analysis underlying the second statement
relied upon by Appellants for the allegedly incorrect standard - the Board’s
observation “Appellants have not successfully rebutted the prima facie case based
on the combined teachings of Moriau, Biller, and Iverson” - demonstrates that the
panel properly weighed the relevant arguments for and against the obviousness of
claim 5. Regarding claim 5, Appellants argued 1) that the Iverson reference taught

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away from the claimed invention, that one of ordinary skill in this art would not
have been led to this claimed invention by the teachings of Moriau and Iverson,
and 2) that the combination of references would not have suggested the claimed
invention reflected in claim 5. (Dec. 10-11(citing App. Br. 5)).
The panel considered evidence demonstrating obviousness (Dec. 10) in
conjunction with these countervailing arguments (Dec. 11), ultimately concluding
that the obviousness rejection should be affirmed based upon the “record as a
whole”: “Upon further reconsideration of the record as a whole in light of
Appellants’ contentions, we are of the opinion that Appellants have not
successfully rebutted the prima facie case based on the combined teachings of
Moriau, Biller, and Iverson.” (Dec. at 11; emphasis added); see Frye, 2010 WL
889747, at *4 (“[T]he Board reviews the particular finding(s) contested by an
appellant anew in light of all the evidence and argument on that issue.”).
The panel’s analysis of Appellants’ Eriksson declaration further
demonstrates application of the proper standard. Appellants offered that evidence
to establish that no commercial manufacturer formed, and that it was neither
“recognized” nor “conventional” to form, joining elements on laminate floor board
prior to applying coatings. (Decl., ¶¶ 4, 6, and 7). The panel weighed the evidence
in the Eriksson Declaration as presented by the Appellants’ briefing arguments, in
conjunction with contrary evidence in the record, including Moriau. Based “[o]n
this record,” the panel gave the declaration very little weight. (Dec. 9).
Ultimately, the panel made eminently clear that it had utilized the correct
procedure in its summation of the patentability of Appellants’ claims:
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in
the combined teachings of Moriau and Biller alone and as further

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combined with each of Buckley, Iverson, Chen, Duffy, Krebsbach,
and Mårtensson with Appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 1 through 28 and 30
through 34 would have been obvious as a matter of law under 35
U.S.C. § 103(a).
(Dec. 13; emphasis added.) Appellants’ allegations that a different and improper
procedure was applied, based upon piecing together isolated sound-bites from the
Decision, are not evidence to the contrary. See Black v. Cutter Labs., 351 U.S.
292, 297 (1956) (“This Court, however reviews judgments, not statements in
opinions.”); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir.
1983) (“We sit to review judgments, not opinions.”).
Accordingly, we conclude that the panel utilized the proper standard in its
ultimate conclusion of patentability of the claimed invention encompassed by the
appealed claims.
We have granted Appellants’ request to the extent that we have reconsidered
our decision entered April 30, 2008, but we deny the request with respect to making
any changes therein.
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)(v)(2009).
DENIED

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WARREN, Administrative Patent Judge, Concurring:
I concur with the decision of the majority of this panel to grant Appellants’
request to the extent of reconsidering the decision of the original merits panel and
to deny the request with respect to making any changes therein. I do so for the
following reasons.
Appellants principally contend that the original panel (I) “misconstrued the
evidence submitted in the declaration found in the Evidence Appendix based on the
Examiner’s newly minted arguments in the Examiner’s Answer,” and (II) “utilized
an improper legal standard in considering whether to affirm the Examiner.” Req.
2.3
I.
Appellants submit that the original panel did not consider the evidence in the
Eriksson Declaration on the basis of the Examiner’s position in the Office Action
mailed January 27, 2006 (Office Action), to which the evidence in the Eriksson
Declaration is addressed, because of the Examiner’s different position in the
Answer. Req. 4 and 7-8. Appellants point out that the Examiner stated, with
respect to Moriau, that “one of ordinary skill would have reasonably gleaned that
the board panel is shaped PRIOR to coating, a first step followed by treating,
coating, and curing the upper
3 Appellants also submit that the original panel “misapprehended the subject
matter sought to be patented vis-a-vis [sic] the teachings of the prior art.” Req. 2.
Appellants’ contentions with respect to the advantages of the claimed process over
the applied prior art, and that the claimed process does not involve coating milled
joining elements or the wood product as a whole, were not submitted in the Briefs
and thus are deemed waived. Req. 8-10. 37 C.F.R. § 41.52(a)(1) (2006).

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surface of the floor panel.” Req. 7-8, citing Office Action 6:14-16. Appellants
argue that in the appealed claims, “the coating claimed is not for the joining
elements, but for the ‘upper surface of the board,” and “Declaration Ericsson’s
[sic] evidence is to this exact point.” Req. 7, citing Eriksson Decl. ¶ 2. Appellants
contend that in the Answer, the Examiner “successfully [misled] the Board in the
Examiner’s Answer” with respect to Declarant Eriksson’s intention, arguing “the
[Office Action] has nothing to do with ‘coating joining elements.’” Req. 7, citing
Office Action 14:1-3. I note here that in the Office Action, the Examiner stated
that “[w]hat is significant is they claim no one else had made laminate flooring by
forming joining elements prior to applying coatings because Moriau in 1997
clearly formed tongue and groove coupling parts which are then coated (figure 22
and col. ,13, [sic] 15-25.), i.e. forming followed by coating. Hence the Declaration
is not persuasive.” Office Action 13:20 to 14:3.
Thus, Appellants argue that the original panel was misled by the Examiner’s
different position in the Answer and thus made the “assertion that the Ericsson
[sic] evidence is limited to ‘coating the joining elements’,” which is “contrary to
Moriau” and “taken out of context with the statements of the Examiner in the
[Office Action] to which [the Eriksson evidence] was addressed.” Req. 8.
Appellants further submit, in these respects, that the original panel
misconstrued the claimed invention encompassed by claim 1, thus misapplying the
combined teachings of Moriau and Biller. Req. 4-8. Appellants also argue that the
Eriksson Declaration contains “uncontroverted evidence [that] carries the burden
of preponderance of the evidence that no one has done, indeed, no one has even
recognized the need to do, what Appellants have done.” Req. 7.

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In my view, contrary to Appellants’ arguments, the original panel properly
interpreted claim 1, properly applied the teachings of Moriau and Biller thereto,
and properly considered the evidence in the Eriksson Declaration. Indeed, the
original panel interpreted claim 1 as specifying a process for manufacturing
decorative boards that requires the step of milling a carrier board, which includes
both cutting the board and making edges with at least one joining element in the
board, before the steps of applying a radiation curable dry acrylic lacquer powder
coating to an upper surface of the board. Original Dec. 3-4. The original panel
also recognized that, as claimed, the carrier board can have a decorative coating on
its upper surface when it is milled by cutting and forming the joining element on an
edge, and that the subsequent acrylic lacquer coating steps can top coat the
decorative upper surface of the board as well as coat the joining element(s) on the
edges of the board. Original Dec. 4. Appellants do not argue that the disclosure in
the Specification requires a different interpretation of claim 1. See, e.g., In re
Suitco Surface, Inc., 2010 WL 1462294, at *3 (Fed. Cir. 2010) (“During
reexamination, as with original examination, the PTO must give claims their
broadest reasonable construction consistent with the specification.”) (quoting In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re
Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
The original panel considered the teachings of Moriau and Biller with
respect to the claimed process encompassed by claim 1 as so interpreted.
I find no inconsistency between the Examiner’s factual findings in the Answer
considered by the original panel and the limitations of claim 1. Original Dec. 6-7.
Contrary to Appellants’ contentions, the Examiner’s consideration of Moriau was
not limited to the statement at page 6 of the Answer quoted by Appellants at page 5

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of the Request, wherein the Examiner recognized that the specific disclosure at
column 9, lines 10-28, of Moriau “appears” to teach a process in which a board,
with the decorative layer directed downward, was milled to form joining
functionality. Req. 5. See Original Dec. 4-5. Indeed, the Examiner recognized
that Moriau teaches a floor panel that can have a protective transparent resinous
top layer, such as melamine resin, over a decorative layer as well as a coating, such
as a lacquer or resins, on the joining functionality. Ans. 4; see Original Dec. 4-5
and 6-7. On this basis, the Examiner found that one of ordinary skill in this art
would have made this inference:
It is noted top surfaces are coated with decorative, protective and
intermediate layers 55-57. Col. 9, 5 teaches a “protective top layer”
(emphasis added); edges and joining elements are not so coated.
Therefore, one of ordinary skill would have reasonably gleaned that
the board panel is shaped PRIOR to coating, a first step followed by
treating, coating, and curing the upper surface of the floor panel.
Ans. 12 (emphasis original). The Examiner further found that “Moriau in 1997
clearly formed tongue and groove coupling parts which are then coated (figure 22
and col., 13, 15-25.), i.e. forming followed by coating.” Ans. 13-14.
Appellants did not dispute these findings and inferences by the Examiner in
the Reply Brief. See generally Reply Br. Appellants also did not argue that
Biller’s methods of applying a top coating to wood products “still require[s]
removing portions of the coated surface previously coated by Biller in order to
form the joining functionality” in the Briefs. Req. 6; see App. Br., e.g., 3, 4, and 5;
see Reply Br., e.g., 4. Thus, Appellants’ arguments in the Request in these two
respects are also deemed waived. 37 C.F.R. § 41.52(a)(1) (2006). I note that
Appellants do not submit specific arguments with respect to Iverson and Chen.
Req. 6.

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The difficulty I have with Appellants’ position is that the portion of Moriau
asserted by Appellants as controlling sets forth a process in which the board to be
milled has a decorative layer on its upper surface, and claim 1 encompasses
processes in which the carrier board can have a decorative layer applied to its
upper surface before milling. Thus, as the Examiner pointed out, one of ordinary
skill in this art would have found in the combined teachings of Moriau and Biller
the suggestion to apply a protective top coat layer to the decorative layer on the
upper surface of the board as well as the joining functionality on the edges of the
board using Biller’s process for applying a radiation curable dry acrylic lacquer
powder as the top coat layer. See Original Dec. 6-7 and 8-9.
I have reconsidered the Eriksson Declaration along with claim 1 as
interpreted and the facts in Moriau in light of Appellants’ arguments in the
Request. Appellants submitted the Eriksson Declaration as “evidence that no one
has done, indeed, no one has even recognized the need to do, what Appellants have
done.” Req. 7. Appellants argue that the evidence in the Eriksson Declaration is
“factual, not opinion,” pointing out the original panel accorded “‘little, if any,
weight’” to the factual evidence, and that “[e]ven opinion evidence is entitled to
some weight.” Req. 7. Appellants further argue that the Eriksson Declaration was
submitted in response to the Examiner’s position in an Office Action that forming
joining elements prior to coating a board would have been “conventional” to one of
ordinary skill in the art. Req. 7-8, citing Eriksson Decl. ¶ 2. 4 Appellants argue the
4 2. I am aware of the statement made in the Office Action of January
27, 2006 that “one of ordinary skill would have formed the joining
elements prior to applying the coating because the level of ordinary
skill is such that such a step would have been recognized to be
conventional.”

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original panel misconstrued the evidence in the Eriksson Declaration with respect
to the “coating on the board,” pointing out that “the coating claimed is not for the
joining elements, but for the ‘upper surface of the board.’” Req. 7.
I am not persuaded by Appellants’ position that the original panel was
mislead by the Examiner’s different position in the Answer to make the “assertion
that the Eriksson evidence is limited to ‘coating the joining elements.’” Req. 8.
The original panel considered the evidence in the Eriksson Declaration in
light of Appellants’ arguments in the Briefs that it is not “‘common sense or
‘common knowledge to do what no commercial manufacturer has done.’” Original
Dec. 9. See, e.g., In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (quoting
W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983)
(proceeding “contrary to the accepted wisdom . . . is ‘strong evidence of
unobviousness.’”). The original panel found the testimonial evidence in the
Eriksson Declaration to be entitled to little, if any, weight for several reasons.
First, Declarant Eriksson’s opinion in paragraph 6 that “[n]o commercial laminate
flooring manufacturer” ever formed “joining elements on boards prior to applying
coatings,” is unsupported by testimonial or documentary evidence. Original Dec.
10. Second, Declarant Eriksson’s description of the commercial process lacked
specificity with respect to “applying coatings” on a board. Original Dec. 10;
Eriksson Decl. ¶ 6. Third, with respect to “applying coatings,” as the Examiner
pointed out, Moriau established that at least coating joining elements with a
lacquer after formation on a board having a decorative coating was known in the
art. Original Dec. 10.
Thus, the original panel found that the evidence in the Eriksson Declaration
does not establish that the claimed process is contrary to the “conventional”

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wisdom with respect to every commercial manufacturing process. The original
panel further found Declarant Eriksson’s description of every commercial
manufacturing process practiced in the laminate flooring industry inadequate with
respect to “applying coatings,” particularly in light of the teachings of Moriau.
Indeed, contrary to Appellants’ position, the record does not support interpreting
“applying coatings” as the absence of any “coating” prior to milling. This is
because claim 1, as interpreted, does not exclude a “coating” on the board prior to
milling, and Moriau would have established as much.
Accordingly, in my view, and contrary to Appellants’ position, the original
panel weighed the evidence in the Eriksson Declaration in light of the testimony
therein, Appellants’ arguments in the Briefs, and the prior art, without being led in
a particular direction with respect thereto by the Examiner’s position in the
Answer. See, e.g., Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1368 (“[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the declarations.”)
(citations omitted); In re Etter,
756 F.2d 852, 859-60 (Fed. Cir. 1985) (en banc) (opinion affidavit asserting the
reference disclosed obsolete technology was correctly characterized by the board
“as merely representing opinion[] unsupported by facts and thus entitled to little or
no weight.”) (citing In re Piasecki, 745 F.2d 1468,
1472-73 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)).
Further, in my view, the issues raised by the Eriksson Declaration and
considered by the original panel did not include whether “nexus” issues are raised
by Declarant Eriksson’s inadequate description of the commercial manufacturing
processes practiced in the laminate flooring industry vis-à-vis the claimed process

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encompassed by claim 1. See generally Original Dec., Ans., Briefs, and Req. See
majority opinion at p. 7-9. Indeed, the evidence in the Eriksson Declaration is not
directed to a showing of commercial success or other secondary consideration of a
marketed invention falling within appealed claim 1, requiring that the weight
accorded the evidence depends on the extent to which the features of the claimed
invention effected the commercial success or other secondary consideration. Cf.,
e.g., Ruiz v. A.B. Chance Co., 234 F.3d 654, 669 (Fed. Cir. 2000) (quoting In re
Hedges, 783 F.2d at 1041) (“nexus” established by evidence of commercial
success of claimed method, and “expressed skepticism” of claimed method was
evidence of “‘proceeding contrary to the accepted wisdom.’”).
II.
Appellants submit that the original panel “utilized an improper legal
standard in considering whether to affirm the Examiner” because that panel did not
reach the final determination of patentability under 35 U.S.C.
§ 103(a) based on the entire record by a preponderance of the evidence by
weighing “evidence supporting patentability . . . against evidence supporting [sic]
prima facie case.” Req. 2-3, quoting a portion of MPEP
§ 716.01(d), Weighing Objective Evidence (8th ed., Rev. 6, Sept. 2007). In this
respect, Appellants quote these two statements in the Decision. Req. 2.
The issues in this appeal are whether the Examiner has carried
the burden of establishing a prima facie case of obviousness in the
grounds of rejection advanced on appeal.
Original Dec. 3.
Upon further reconsideration of the record as a whole in light of
Appellants’ contentions, we are of the opinion that Appellants have
not successfully rebutted the prima facie case based on the combined
teachings of Moriau, Biller, and Iverson.

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Original Dec. 11.
Appellants emphasize the word “successfully” in the second statement and
argue that the same “holds Appellants to an improper standard which is neither
supported by the courts, nor by the PTO’s own instruction manual to the
examining core [sic] (MPEP),” and thus, “the Boards’ [sic] approach in affirming
the rejection of the Examiner is legally flawed and cannot withstand scrutiny and
thus the decision should be vacated on this point alone.” Req. 3.
Appellants’ contention thus raises the issues of whether the original panel
held Appellants to an improper legal standard, and whether that panel’s ultimate
determination of patentability was based on consideration of the entire record, by a
preponderance of evidence, with due consideration to the persuasiveness of any
arguments and any secondary evidence. Req. 2-3 (citing MPEP § 716.01(d) which
cites to, among other things, In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). In
other words, Appellants contend that the original panel erred by evaluating
Appellants’ rebuttal evidence for its ability to “knock down” the Examiner’s prima
facie case, rather than evaluating each piece of rebuttal evidence along with the
facts upon which the conclusion of a prima face case was based to reach the
determination of obviousness. Req. 3 (citing MPEP § 716.01(d) which cites to,
among other things, In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984)).
Appellants do not explain why the statements cited from pages 3 and 11 of
the Original Decision support their position. Apparently, it was the use of the
phrase “prima facie case of obviousness” in both statements and the further use of
the term “sufficiently” in the second statement. However, the original panel’s use
of this language in the context of each of the two statements relied upon by
Appellants is not improper. This is because the statements reflect language used

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by our reviewing court and its predecessor court, and the original panel made the
ultimate determination of patentability on the entire record. Original Dec. 13. See,
e.g., Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(“[W]e turn to Muniauction’s attempt to rebut this prima facie case with secondary
considerations of nonobviousness.”); In re Sullivan, 498 F.3d 1345, 1353 (Fed.
Cir. 2007) (“The claimed composition cannot be held to have been obvious if
competent evidence rebuts the prima facie case of obviousness.”); In re Kahn, 441
F.3d 977, 985-86 (“‘On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 2006)); In re Oetiker, 977
F.2d at 1445 (“An observation by the Board that the examiner made a prima facie
case is not improper, as long as the ultimate determination of patentability is made
on the entire record.”) (citing In re Piasecki, 745 F.2d at 1472; In re Rinehart, 531
F.2d at 1052).
Appellants also do not point to particular portions of the Original Decision
in support of their position with respect to the statements cited from pages 3 and 11
of the Original Decision. The record is clear that the original panel made the first
statement with respect to all grounds of rejection on appeal, and made the second
statement in considering the ground of rejection of claim 5, dependent on
independent claim 1, over the combined teachings of Moriau, Biller, and Iverson.
Original Dec. 3 and 10-11. With respect to claim 5, the Examiner’s evidence
supporting the conclusion that the claimed invention would have been prima facie
obvious was first considered, and then the record as a whole was reconsidered in
light of Appellants’ two contentions in the Brief. Original Dec. 10-11; App. Br. 5.

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The original panel disagreed with Appellants’ arguments that Iverson contained
disclosure which would have taught away from the claimed invention encompassed
by claim 5, and that one of ordinary skill in this art would not have been led to this
claimed invention by the teachings of Moriau and Iverson. Original Dec. 11.
The original panel recognized that consideration of the claimed invention
encompassed by dependent claim 5 includes consideration of Appellants’
contentions submitted in the Briefs with respect to the ground of rejection of
independent claim 1 over the combined teachings of Moriau and Biller alone,
including the evidence presented in the Eriksson Declaration. The Examiner’s
evidence supporting the conclusion the claimed invention encompassed by claim 1
would have been prima facie obvious was also considered. Original Dec. 6-8.
Upon reconsideration of the record as a whole in light of Appellants’ contentions
in the Briefs, the original panel disagreed with Appellants that the combination of
references would not have suggested the claimed invention encompassed by claim
1 to one of ordinary skill in the art. Original Dec. 8-9; App. Br. 3; Reply Br.
3-4. The original panel considered the evidence in the Eriksson Declaration in light
of Appellants’ arguments in the Briefs in the manner discussed above, prefacing
consideration of Appellants’ contentions and evidence with respect to claim 1 on
page 8 of the Original Decision with essentially the same language Appellants
criticize with respect to consideration of claim 5 on page 11 of that Decision.
The original panel then reached a final determination with respect to the
patentability of the claimed invention encompassed by the appealed claims vis-à-
vis the applied prior art by consideration of the totality of the record in the manner
reflected in the statement:
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the

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combined teachings of Moriau and Biller alone and as further
combined with each of Buckley, Iverson, Chen, Duffy, Krebsbach,
and Mårtensson with Appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 1 through 28 and 30 through 34
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
Original Dec. 13.
Indeed, Appellants do not acknowledge and contest the original panel’s
statement at page 13 of the Original Decision. See Req. 2-3.
Accordingly, in my view, the record does not establish that the original
panel held Appellants to an improper legal standard, and indeed, ultimately
determined the patentability of the claimed invention encompassed by the appealed
claims based on consideration of the entire record, by a preponderance of evidence,
with due consideration to the persuasiveness of any arguments and any secondary
evidence.
bim
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