Ex Parte Bushey et al

Patent Trial and Appeal Board

Mar 15, 2017

13032932 (P.T.A.B. Mar. 15, 2017)

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;
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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”).
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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.
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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
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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)).
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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.
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Application 13/032,932
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3—10, and
12—20 is reversed.
REVERSED
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