Dal-Tile Corporation

Patent Trials and Appeals Board

Nov 19, 2020

2020002261 (P.T.A.B. Nov. 19, 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.
15/825,309 11/29/2017 Lai Ning 019662/506567 4948
826 7590 11/19/2020
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET
SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
HERRING, BRENT W
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAI NING
____________

Appeal 2020-002261
Application 15/825,3091
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–9 and 11–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Dal-Tile
Corporation. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to mosaic tiles which may be usable for
wall applications, but also for applications on other surfaces, such as floors
or worktops.” (Spec. ¶ 3.)
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A mosaic tile comprising:
a continuous backing material sheet, wherein the
continuous backing material sheet comprises one of: a mat, a
film, a mesh, a net, a scrim, or a maze; and
a plurality of subunits each secured to the continuous
backing material sheet and spaced relative to one another to
accommodate a grouting material between the plurality of
subunits, wherein the plurality of subunits comprise:
a plurality of plastic subunits; and
a plurality of non-plastic subunits.

REJECTIONS
Claims 1, 5, 8, and 11 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Glass (US 2007/0250197 A1, pub. Oct. 25, 2007)
and Mosaic Art Supply, Frequently Asked Questions
(https://web.archive.org/web/20151012020613/http://www.mosaicartsupply.
com/frequently-asked-questions/ screen captured Oct. 12, 2015 (hereinafter
“MAS”)).2
Claims 2, 3, 7, 9, 13, 14, and 17–19 are rejected under 35 U.S.C.
§ 103 as unpatentable in view of Glass, MAS, and Eusemann (US 3,875,716,
iss. Apr. 8, 1975).

2 As used herein, citations to page numbers of MAS refer to page numbers
on the copy of MAS of record.
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Claims 4, 15, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable in view of Glass, Eusemann, MAS, and Miller (US 4,689,259,
iss. Aug. 15, 1987).
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable in view of
Glass, MAS, and Calapkulu (US 2011/0239572 A1, pub. Oct. 6, 2011).
Claims 12 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
in view of Glass, Eusemann, MAS, and Plummer (US 2014/0373472 A1,
pub. Dec. 25, 2014).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that “Glass discloses wherein different materials and colors can be
used for the tiles (para. 0026 and 0032)” (Non-Final Action 3), and that
“MAS discloses mosaic flooring wherein a plurality of materials can be used
in combination (webpage question ‘Can I mix glass and ceramic tiles?’) for
mosaic work” (id.). Additionally, the Examiner determines that
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it would have been obvious to a person of ordinary skill in the
art to use ceramic tiles and plastic tiles in combination for the
mosaic tile of Glass as combining various materials is
suggested by MAS in order to provide interest to the design.
Such an effect is desirable in Glass – “place tiles of as many as
possible colors, shapes, or patterns” (para. 0008 of Glass).

(Id.)
Appellant argues that “[n]othing in Glass suggests that tile subunits of
differing materials . . . can be combined for attachment to a single,
continuous backing material sheet.” (Appeal Br. 8.) Appellant argues that
“[t]he MAS reference simply discusses the prospect of mixing glass and
ceramic tiles or mixing stone and glass tiles within a single mosaic. Nothing
in the entirety of the MAS reference discusses the prospect of utilizing
plastic tile subunits at all.” (Id. at 9.) Rather, Appellant argues, “the MAS
reference teaches away from providing different materials on a single
continuous backing material sheet. MAS specifically indicates that tile
subunits of differing materials may be characterized by different thicknesses,
which should be accommodated by pressing the tile subunits directly into
wet concrete or thinset to different depths . . . .” (Id.) Thus, Appellant
argues, there is a lack of relevant references and this “is telling, as those of
skill in the art would recognize that tiles of different materials are often
characterized by difference in thickness and/or other material characteristics
that render those materials unsuitable for attachment to a single continuous
backing material sheet.” (Id. at 11.)
Glass teaches:
Mosaic is the art of decoration with small pieces of glass,
ceramic, stone, wood, plastic, coconut shells or other material,
having one or more colors and placed on a surface in an
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arrangement such as a design, a required image, a pattern, an
abstract image, or any other tile combination.

(Glass ¶ 4.) Specifically, Glass teaches a method and machine “for
constructing a mosaic from a given image.” (Id. ¶ 2.) Glass’s machine
“generat[es] a mosaic from a mosaic description.” (Id. ¶ 32.) The input to
Glass’s machine “is preferably in a table, a tab-delimited text file, a
spreadsheet or any other format which preferably designates for each tile a
tile type or color, a location expressed in X and Y coordinates, and a rotation
angle.” (Id.) Glass teaches that the tile placement may be “an adhesive
surface, a mesh or any other surface that enables the mosaic to be
transported to its destination and placed there in the designated location.”
(Id. ¶ 6.)
MAS relates to frequently asked questions regarding mosaics.
(MAS 1.) In response to the question “[c]an I mix glass and ceramic tiles?”
MAS teaches that “[a]s long as the colors look right, you can mix any
materials, except that you need to make sure they are close to being the same
thickness. You don’t have to wory [sic] about thickness if you are pressing
them into wet concrete of course.” (Id. at 18.)
With regard to Appellant’s argument that MAS teaches away from
providing different materials on a single backing sheet (Appeal Br. 9), we
note as a starting point that “[a] reference may be said to teach away when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “Under the proper legal
standard, a reference will teach away when it suggests that the developments
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flowing from its disclosures are unlikely to produce the objective of the
applicant’s invention.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371,
1380 (Fed. Cir. 2005).
Appellant’s teaching away argument is based on the different
materials have different thicknesses, and that different thicknesses are
accommodated by pressing the material into “wet concrete or thinset” such
that the tile surfaces “are generally aligned.” (Appeal Br. 9.) But MAS
addresses this by teaching that when mixing materials, “you need to make
sure they are close to being the same thickness.” (MAS 18.) In view of this,
we are not persuaded that one of ordinary skill reading MAS would be
discouraged from mixing materials when the materials are of similar
thickness.
Appellant argues that “neither Glass nor MAS teaches the use of
plastic and non-plastic tile subunits within a single tile,” i.e., within a single
mosaic. (Appeal Br. 10.)
We do not find this argument persuasive. “[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). A reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In short, obviousness
is more than what is specifically disclosed in the cited references. “If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” KSR Int’l Co., 550 U.S. at 417.
In determining that “it would have been obvious to a person of
ordinary skill in the art to use ceramic tiles and plastic tiles in combination
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for the mosaic tile of Glass as combining various materials is suggested by
MAS” (Non-Final Action 3), the Examiner has made a prima facie case of
obviousness.
One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of “unexpected results,” i.e.,
to show that the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the
relevant art would have found surprising or unexpected. The
basic principle behind this rule is straightforward—that which
would have been surprising to a person of ordinary skill in a
particular art would not have been obvious.

In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Appellant does not present
persuasive evidence of unexpected results, or of secondary considerations
such as commercial success, long felt but unsolved needs, or failure of
others. Appellant does not persuasively argue why using plastic and non-
plastic subunits would not have been a predictable variation.3
Appellant argues that “those of skill in the art would recognize that
tiles of different materials are often characterized by difference in thickness
and/or other material characteristics that render those materials unsuitable
for attachment to a single continuous backing material sheet.” (Appeal
Br. 11.) But this is only attorney argument. It is not supported by evidence
of record. And, as discussed above, MAS teaches mixing materials but
“mak[ing] sure they are close to being the same thickness.” (MAS 18.)

3 Appellant argues that the “BACKGROUND” section of the Specification
supports an argument regarding the “criticality of this combination of
different material [(plastic and non-plastic)] subunits.” (Reply Br. 3–4
(citing Spec. ¶ 5).) But paragraph 5 merely provides a general discussion of
benefits of mosaic tiles. (See Spec. ¶ 5.) Paragraph 5 makes no mention of
the criticality of the combination of plastic and non-plastic subunits. (See
id.)
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Appellant also argues that the discussions regarding Glass and MAS
“for generating a complete mosaic are entirely irrelevant for providing a
mosaic tile” as claimed. (Reply Br. 2.) Specifically, Appellant argues:
A mosaic tile having the claimed configuration facilitates
the installation of individual tile subunits, as a plurality of these
individual tile subunits are secured relative to a continuous
backing material sheet comprising one or more of a mat, a film,
a mesh, a net, a scrim, or a maze. Neither of the cited references,
whether considered alone or in combination, provide any
indication that a plurality of tile subunits comprising both plastic
and non-plastic subunits may be secured relative to a continuous
backing material sheet as recited in independent claim 1 to
provide a mosaic tile.

(Id. at 3.) We do not find this argument persuasive.
As discussed above, Glass teaches placing tiles, i.e., tile subunits, on
“an adhesive surface, a mesh or any other surface that enables the mosaic to
be transported.” (Glass ¶ 6.) And MAS teaches that the tiles may be “any
materials, except that you need to make sure they are close to being the same
thickness.” (MAS 18.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1.
Independent claim 13 recites, in relevant part, “wherein the plurality
of tile subunits comprise: a plurality of thermoplastic subunits; and a
plurality of ceramic subunits.”
The Examiner finds that “Eusemann discloses mosaic tiling wherein
the tiling can be of PVC or ceramic.” (Non-Final Action 4; see also
Eusemann, col. 1, ll. 6–10.) Additionally, the Examiner determines that “it
would have been obvious to a person of ordinary skill in the art to use
ceramic tiles and heterogeneous PVC tiles in combination for the mosaic tile
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of Glass in order to provide complexity to the design” (Non-Final Action 4),
and that “Eusemann suggests [that] PVC, ceramic and textiles may be
interchanged without yielding any extraordinary or unexpected results” (id.
(citing Eusemann, col. 4, ll. 7–16)).
Appellant argues that “Eusemann’s disclosure is entirely devoid of
any suggestion for creating a single, continuous mosaic tile comprising
subunits of differing materials. Instead, Eusemann merely suggests that
either PVC or ceramic materials may be used in the alternative for creating
a tile mosaic.” (Appeal Br. 12–13.)
We do not find this argument persuasive. As discussed above, “one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.” In re Keller,
642 F.2d at 426. Moreover, Appellant does not persuasively argue why the
Examiner erred in determining that “Eusemann suggests [that] PVC, ceramic
and textiles may be interchanged without yielding any extraordinary or
unexpected results.” (Non-Final Action 4.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 13.
Appellant does not present separate arguments for dependent claims
2–9, 11, 12, and 14–20. Therefore, these claims fall with their respective
parent claims 1 and 13. See 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
The Examiner’s rejections of claims 1–9 and 11–20 under 35 U.S.C.
§ 103 are affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 8, 11 103 Glass, MAS 1, 5, 8, 11
2, 3, 7, 9,
13, 14,
17–19
103 Glass, MAS,
Eusemann
2, 3, 7, 9, 13,
14, 17–19

4, 15, 16 103 Glass, Eusemann,
MAS, Miller
4, 15, 16
6 103 Glass, MAS,
Calapkulu
6
12, 20 103 Glass, Eusemann,
MAS, Plummer
12, 20
Overall
Outcome
1–9, 11–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED