Ex Parte Bushey et alDownload PDFPatent Trial and Appeal BoardMar 15, 201713032932 (P.T.A.B. Mar. 15, 2017) Copy Citation 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. 13/032,932 02/23/2011 Richard D. Bushey 286.096 7880 23598 7590 03/17/2017 BOYLE FREDRICKSON S.C. 840 North Plankinton Avenue MILWAUKEE, WI 53203 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/17/2017 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): docketing @boylefred.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD D. BUSHEY and BRET L. BUSHEY1 Appeal 2016-000201 Application 13/032,932 Technology Center 1700 Before: DONNA M. PRAISS, AVELYN M. ROSS, and BRIAN D. RANGE, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 3—10, and 12—20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as Expanded Technologies Corp. Appeal Br. 3. 2 In our Decision below we refer to the Specification filed February 23, 2011 (Spec.), the Final Office Action mailed December 18, 2014 (Final Act.), the Appeal Brief filed April 20, 2015 (Appeal Br.), the Examiner’s Answer mailed July 27, 2015 (Ans.), and the Reply Brief filed September 28, 2015 (Reply Br.). Appeal 2016-000201 Application 13/032,932 STATEMENT OF CASE The claims are directed to a flexible, multiple layer surface covering, e.g., flooring products. Spec. 1—2. Claim 1, reproduced below with the relevant claim language emphasized, is illustrative of the claimed subject matter: 1. A surface covering material, comprising: a first layer having first and second ends, a first surface, a second surface, and a density; and a second layer having a first end generally co-planar with the first end of the first layer, a second end generally co-planar with the second end of the first layer, a length defined between the first and second ends of the second layer, a first surface bonded to the second surface of the first layer, a second surface at least partly abraded, and a density, the second layer having: a first sidewall formed therein, the first sidewall extending between and being perpendicular to the first and second surfaces of the second layer; a second sidewall formed in the second layer at a location spaced from the first sidewall, the second sidewall extending between and being perpendicular to the first and second surfaces of the second layer; a third sidewall formed therein, the third sidewall extending between and being perpendicular to the first and second surfaces of the second layer; and a fourth sidewall formed in the second layer at a location spaced from the third sidewall, the fourth sidewall extending between and being perpendicular to the first and second surfaces of the second layer; wherein: a first groove is defined by the first and second sidewalls formed in the second layer, the first groove extending along a first axis from the first end of the second layer to the second end of the second layer along the entirety of the length of the second layer; 2 Appeal 2016-000201 Application 13/032,932 a second groove is defined by the third and fourth sidewalls formed in the second layer, the [second]3 groove extending along a second axis generally parallel to the first axis from the first end of the second layer to the second end of the second layer along the entirety of the length of the second layer; the second surface of the first layer is exposed and communicates with the first and second grooves; the first and second sidewalls in the second layer lie in parallel planes; the density of the first layer differs from the density of the second layer; and the bonded first and second layers are configured to be movable between a first rolled configuration wherein the bonded first and second layers are rolled upon themselves and a second flat configuration. Claims Appendix at Appeal Br. 15—16 (emphasis added). REJECTIONS The Examiner maintains the following rejections: A. Claims 1, 3, and 5—8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergtold4 in view of Mollinger5 and Keller.6 Final Act. 3. 3 The Examiner’s rejection below describes the second groove as “extending along a second axis generally parallel to the first axis . . . [and] along the entirety of the length of the second layer.” See e.g., Final Act. 4 and 6; Ans. 16—20. Appellants do not dispute the Examiner’s understanding of the claim and similarly describe the second groove as extending along a second axis and the entire length of the second layer. See Appeal Br. 6 and 7—8; Reply Br. 2. 4 Bergtold et al., US 2009/0098357 Al, published April 16, 2009 (“Bergtold”). 5 Mollinger et al., US 2009/0056257 Al, published March 5, 2009 (“Mollinger”). 6 William A. Keller, US 4,257,540, issued June 30, 1981 (“Keller”). 3 Appeal 2016-000201 Application 13/032,932 B. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergtold, Mollinger, Keller, and further in view of Khandpur.7 Id. at 9. C. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergtold in view of Mollinger and Keller. Id. D. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergtold in view of Mollinger, Keller, and further in view of Khandpur. Id. at 15. Appellants seek our review of Rejections A through D. See generally Appeal Br. Because each of the claims requires the same “rolled configuration” as recited in claim 1 and because all of the rejections are based on the same error as to this claim element, we need only address claim 1 below.8 OPINION The Examiner rejects claim 1 as obvious in view of Bergtold, Mollinger, and Keller. Final Act. 3. The Examiner finds that Bergtold teaches a surface covering material that includes a first layer having a density and a second layer having a different density. Id. According to the Examiner, Bergtold does not teach the additional structural limitations requiring sidewalls and grooves. Id. But, the Examiner finds that Mollinger teaches a simulated stone structure having first and second sidewalls 7 Khandpur et al., US 2004/0229000 Al, published November 18, 2004 (“Khandpur”). 8 Claim 9, the only other independent claim in this appeal, recites the same “rolled configuration” as claim 1 and is therefore reversed for the same reasons. 4 Appeal 2016-000201 Application 13/032,932 extending between and being perpendicular to the second layer and third and fourth sidewalls also extending between and being perpendicular to the second layer. Id. at 4. The Examiner also finds that Mollinger teaches “a first groove is defined by the first and second sidewalls”, “a second groove is defined by the third and fourth sidewalls”, and “wherein, the first layer is exposed and communicates with the first and second grooves.” Id. at 5. The Examiner reasons that a person having ordinary skill in the art would have had reason to modify the surface covering material of Bergtold with the stone look of Mollinger for aesthetics and to “replicate some of the physical properties of stone, masonry, and brick.” Id. at 5—6. Additionally, the Examiner finds that Keller, as shown in Figure 2, teaches plastic simulated brick walls having a first and second layer with a first and second groove extending along a first and second axis, respectively, and along the entirety of the length of the second layer. Id. at 6—7. The Examiner also finds that Keller teaches “end sections designed to terminate the end of the brick structure.” Id. at 6. The Examiner reasons that the skilled artisan would have had motive to combine the teachings of Bergtold and Mollinger with Keller to provide end sections “to terminate the end of the structure.” Id. at 7. Appellants present several arguments in opposition to the Examiner’s rejections. See e.g., Appeal Br. 7—11. Appellants’ principle argument is that none of the references teach or suggest a structure where “the bonded first and second layers are configured to be movable between a first rolled configuration wherein the bonded first and second layers are rolled upon themselves and a second flat configuration” as required by claim 1. Appeal Br. 8—11. Appellants contend that each of the references teaches rigid 5 Appeal 2016-000201 Application 13/032,932 structures and does not suggest any capability or desirability to having a rolled configuration. Id. at 10-11 (describing Bergtold as “a rigid panel,” Mollinger as “specifically intended to provide improved rigidity,” and Keller as a “rigid plastic brick sections”). We find Appellants’ argument persuasive and dispositive of the rejections on appeal, therefore, we need not address the remainder of Appellants’ arguments. “The PTO bears the initial burden of showing a prima facie case of obviousness. In re Sullivan, 498 F.3d 1345, 1351 (Fed. Cir. 2007). In the present case, Appellants have met the required showing necessary to rebut the Examiner’s rejections. As explained by Appellants, each of Bergtold, Mollinger, and Keller teach a rigid panel structure that is not “configured to” or capable of being rolled.9 Bergtold describes a structural composite panel that comprises a structural facer and foam insulation sheet. Bergtold 122. The insulation component is composed of rigid or semi-rigid materials. Id. 44 and 67—68. Mollinger teaches simulated stone and brick products that are molded into panels. See generally, Mollinger, Figures. The Mollinger panels include a foam backer that improves rigidity and dimensional stability. Id. H 3, 8 (building materials may include “siding panels, fence panels, fence posts, roofing panels, or stand-alone walls”), and 114 (“foam backer . . . increase[s] rigidity, and improve[s] dimensional stability”). Keller discloses modular rigid plastic simulated brick walls or panels. Keller, col. 1,11. 18—21, col. 4., 11. 57—58 and claims 1 and 3 (“a flat rigid 9 Our reviewing court has stated that the claim term “adapted to” “is frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ . . . [a] 1 though the phrase can also mean ‘capable of or ‘suitable for.’” In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). 6 Appeal 2016-000201 Application 13/032,932 panel”). Notably, each of the references describe rigid panel structures. The Examiner’s explanation that “one of ordinary skill in the art would surmise that any material comprising two layers is configured to be movable between a first rolled configuration wherein the bonded first and second layers are rolled upon themselves and a second flat configuration given a roll of large enough diameter and with enough force applied'1'’ (Ans. 21 (emphasis added)), is conclusory and unsupported by the record. And while, as the Examiner explains, “rigid” may be a relative term and that rigidity and ability to be rolled are not mutually exclusive properties, as in rolled sheets of aluminum and steel (Ans. 22), the references do not suggest the disclosed rigid panels possess this capability. Thus, the Examiner does not adequately explain how the Bergtold/ Mollinger/Keller combination is capable of being “rolled upon themselves” as required by claim 1. Moreover, the Examiner has supplied no reason why one having ordinary skill in the art would have modified the teaching of the prior art so as to have the functional capability as recited in claim 1. On this record, we cannot sustain the Examiner’s rejection of claim 1. Because the Examiner relies on the same combination of Bergtold, Mollinger, and Keller to reject independent claim 9 and the additional secondary references cited by the Examiner also do not cure this deficiency, we cannot sustain any of the rejections under 35 U.S.C. § 103(a). CONCLUSION The Examiner reversibly erred in rejecting claims 1, 3—10, and 12—20 under 35 U.S.C. § 103(a) as being unpatentable over Bergtold in view of Mollinger and Keller, among others. 7 Appeal 2016-000201 Application 13/032,932 DECISION For the above reasons, the Examiner’s rejection of claims 1, 3—10, and 12—20 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation