Dennis G. Schlisner

Patent Trials and Appeals Board

Sep 23, 2019

13865627 - (D) (P.T.A.B. Sep. 23, 2019)

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.
13/865,627 04/18/2013 Dennis G. Schlisner 66337.D1 4815
408 7590 09/23/2019
LUEDEKA NEELY GROUP, P.C.
P O BOX 1871
KNOXVILLE, TN 37901
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
LNG.PATENT@gmail.com
docketing@luedeka.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DENNIS G. SCHLISNER
____________

Appeal 2017-011688
Application 13/865,627
Technology Center 1700
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 10–12 under 35 U.S.C. § 103(a) as unpatentable

1 We cite to the Specification (“Spec.”), filed April 18, 2013; Non-Final
Office Action (“Non-Final Act.”), dated November 28, 2016; Appellant’s
Appeal Brief (“Appeal Br.”), filed April 11, 2017; Examiner’s Answer
(“Ans.”) dated July 21, 2017, and Appellant’s Reply Brief (“Reply Br.”),
filed September 21, 2017.
2 Appellant is the applicant, Base King, LLC. The inventor, Dennis G.
Schlisner, is identified as the real party in interest. Appeal Br. 2.
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over Hahn,3 Giles,4 and Whelan.5 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
BACKGROUND
The subject matter on appeal relates to a method for producing
polyvinyl chloride (PVC) free decorative flooring. Spec. ¶¶ 7, 8. Claim 12
is illustrative:
12. A method of making a polyvinyl chloride free
flexible sheet flooring without the use of adhesive, consisting
essentially of the steps of:
providing an uppermost layer of the flooring consisting
essentially of a decorative nonwoven fabric layer consisting
essentially of a fabric having a decorative pattern printed on the
fabric to provide a decorative finish and appearance;
extruding an intermediate polymeric layer using a first
sheet die and joining the upper decorative nonwoven fabric
layer to the extruded polymeric layer to bond the intermediate
polymeric layer to the upper decorative fabric layer without the
use of adhesive by passing the extruded polymeric layer and the
nonwoven fabric layer through a first nip to provide a first
composite;
extruding a lower base layer using a second sheet die
having a die temperature and joining the intermediate polymeric
layer of the first composite to a surface of the base layer to
bond the lower base layer to the intermediate polymeric layer
without the use of adhesive by passing the extruded base layer
and the first composite with the decorative pattern exposed
through a second nip comprising a first roller having a roller
temperature lower than the die temperature, and a second roller

3 US 2011/0268933 A1, published November 3, 2011.
4 Giles Jr. Harold F., John R. Wagner Jr., and Eldridge M. Mount III.
Extrusion: The Definitive Processing Guide and Handbook, William
Andrew Publishing, pp. 465–468.
5 US 3,616,020, issued October 26, 1971.
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having a roller temperature greater than the temperature of the
first roller, but less than the die temperature; and
selecting and maintaining the die temperature, the
temperature of the first roller, and the temperature of the second
roller to enable bonding of the base layer and the intermediate
polymeric layer without the use of adhesive, without disrupting
the bond between the decorative layer and the intermediate
polymeric layer, and without causing heat degradation of the
decorative finish and appearance of the decorative layer.

Appeal Br. 18–19 (Claims Appendix).
OPINION
Appellant argues claims 10–12 as a group, directing the arguments to
recitations found in each of independent claims 10 and 12. See Appeal Br.
9–16. We select claim 12 as representative of the group. Claims 10 and 11
stand or fall with claim 12.
Relevant to Appellant’s arguments on appeal, the Examiner finds that
Hahn discloses a method for producing sheet flooring that includes
laminating a decorative layer to an extruded intermediate polymer layer, and
laminating an extruded base polymer layer to the intermediate polymer
layer. Non-Final Act. 3–4. The Examiner finds that Whelan provides a
reason why one of ordinary skill in the art would have performed Hahn’s
base layer/intermediate layer lamination using paired chill and nip rollers
maintained at different temperatures—namely, to optimize melt-bonding
between the intermediate and base polymer layers. Id. at 5 (“As taught by
Whelan, proper selection of the chill roll and the nip roll temperatures allows
for the heat of the extruded polymeric layer to melt a thin layer of the
substrate so that bonding occurs.” (citing Whelan 1:69–72)).
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Appellant argues that Hahn requires provision of a wear layer over the
decorative layer, and that such a wear layer is precluded by the transitional
phrase “consisting essentially of” in the claims. Appeal Br. 11–12.
According to Appellant, Hahn’s wear layer “would protect the decorative
layer and eliminate the need to maintain process conditions as required by
Applicant.” Reply Br. 2.
The “phrase ‘consisting essentially of’ limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551–52
(CCPA 1976); see also PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d
1351, 1354 (Fed. Cir. 1998) (“By using the term ‘consisting essentially of,’
the drafter signals that the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not materially affect
the basic and novel properties of the invention”). Appellant has the burden
of showing the basic and novel characteristics of their claimed invention. In
re DeLajarte, 337 F.2d 870, 873–74 (CCPA 1964).
Here, Appellant does not expressly identify the basic and novel
characteristics of the invention. According to the Specification, “the present
disclosure advantageously enables the provision of flooring that is free of
polyvinyl chloride.” Spec. ¶ 3. Similarly, each of independent claims 10
and 12 is directed to “A method of making a polyvinyl chloride free flexible
sheet flooring.” Appellant does not contend that Hahn’s wear layer would
materially affect the ability to produce flooring that is free of polyvinyl
chloride. Even if we were to infer from Appellant’s argument that the
recited differential roller temperature is a basic and novel characteristic of
the claimed invention, Appellant does not point to evidence of record to
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support the argument that Hahn’s wear layer would eliminate any need for
maintaining such roller temperatures. Attorney’s arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Moreover, Hahn expressly teaches that “the respective layers
can be connected to each other in sequential or non-sequential order.” Hahn
¶ 54. “[N]o particular order of operative steps for product formation is
required to practice the present invention.” Id. Thus, Hahn’s disclosure
contemplates performing the steps of laminating a decorative layer,
intermediate layer, and base layer prior to addition of any wear layer.
For the foregoing reasons, Appellant has not met its evidentiary
burden of showing Hahn’s disclosed wear layer would have materially
affected the basic and novel characteristic of the claimed invention.
Appellant also argues Hahn discloses use of a fiberglass mat layer in
conjunction with the primary backing layer which the Examiner relies upon
as the recited intermediate layer. Appeal Br. 12. However, Appellant does
not point to any language in the claims that would preclude fiberglass from
the recited intermediate layer. Moreover, as the Examiner finds (Ans. 4),
Hahn identifies the disclosed fiberglass layer as optional. See Hahn Fig. 2.
Appellant contends that the Examiner improperly dismissed the claim
recitation regarding bonding of the base and intermediate layers without
disrupting the bond between the decorative layer and the intermediate layer.
Appeal Br. 15. We disagree. The Examiner finds that Whelan teaches
selecting differential roller temperatures to achieve enhanced bonding by
melting a thin layer of the substrate to which extruded polymer is to be
laminated. Non-Final Act. 5. The Examiner also reasons that one skilled in
the art would have selected differential roller temperatures in Hahn’s process
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that would achieve the above-mentioned bonding of intermediate and base
layers without damaging the decorative fabric layer because “Hahn intends
to produce a useful and undamaged flooring material.” Id. at 5–6.
Appellant argues that “Applicant did not initially believe it would be
possible to make such a flooring.” Appeal Br. 10 (citing the inventor’s
Declaration, filed September 10, 2015). Appellant does not state the
relevance of this argument. To the extent Appellant alleges secondary
considerations of nonobviousness, the Declaration is insufficient when
viewed together with the remaining evidence of record. For example, the
Declaration does not relate the inventor’s belief to the scope of the claims.
See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“Evidence of
secondary considerations must be reasonably commensurate with the scope
of the claims.”). Nor does the Declaration present persuasive evidence in
support of the inventor’s stated initial belief. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (“It is well settled that unexpected results must be
established by factual evidence.”). A party asserting unexpected results as
evidence of nonobviousness has the burden of proving that the results are
unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). Such
burden requires Appellant to proffer factual evidence that actually shows
unexpected results relative to the closest prior art, see In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
For the foregoing reasons, Appellant does not persuade us of
reversible error. The rejection of claims 10–12 is sustained.

DECISION
The Examiner’s decision rejecting claims 10–12 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED