Ex Parte Döhring et al

Patent Trial and Appeal Board

May 7, 2018

12991829 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/991,829 07 /29/2011
23908 7590 05/09/2018
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Dieter Dohring
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BARDP0172US 1988
EXAMINER
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER DOHRING, DAVID MACHER, and
GERHARD KREMER
Appeal2017-005208
Application 12/991,829
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dieter Dohring et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 16-24 and 26-38. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Kronoplus Technical AG is identified as the real party in interest. Appeal
Br. 2.
Appeal2017-005208
Application 12/991,829
THE CLAIMED SUBJECT MATTER
Appellants' "invention relates to a heatable covering system for
floors, ceilings and walls." Spec. 1. Claim 16, reproduced below, is
illustrative of the claimed subject matter.
16. A heatable covering system for floors, ceilings and walls,
compnsmg:
covering panels each having a decorative top side and a
bottom side; wherein
the decorative top side includes a decor layer having the
appearance of real wood,
the covering panels each have at longitudinal edges
thereof corresponding couplings in order to be able to join the
covering panels to each other,
the covering panels each comprise an electric heater and
electric contacts in order to be able to electrically connect the
covering panels with each other,
the electric heater comprises an electrically conductive dry
layer formed by an electrically conductive fluid which is applied
onto the covering panels as a liquid and then dried or hardened,
and
the covering panels further comprise at least one
reinforcement layer wherein the at least one reinforcement layer
is at least partially embedded in the electrically conductive dry
layer.
REJECTIONS 2
1) Claims 16, 17, 19-24, 28, 31, 36, and 38 are rejected under 35
U.S.C. § 103(a) as unpatentable over Oppitz (US 4,616,125, issued
Oct. 7, 1986), Depco (DE 20 2007 008 360 Ul, published Sept. 27,
2 A rejection of claims 16-24 and 26-38 under 35 U.S.C. § 112, second
paragraph (Final Act. 2) was cured by amendment entered in an Advisory
Action. See September 19, 2016 Advisory Action.
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Application 12/991,829
2007), and Olson (US 3,659,077, issued April 25, 1972) and
alternatively over Oppitz, Nollet (US 2006/0144004 Al, published
July 6, 2006), and Olson.
2) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Oppitz, Olson, Depco, Stirzenbecher (US 3,697,728, issued Oct.
10, 1972), and Raidt (US 2008/0210679 Al, published Sept. 4,
2008) and alternatively over Oppitz, Olson, Nollet, Stirzenbecher,
and Raidt.
3) Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Oppitz, Olson, Depco, Scoles (US 5,916,469, issued June 29,
1999), and Stirzenbecher and alternatively over Oppitz, Olson,
Nollet, Scoles, and Stirzenbecher.
4) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Oppitz, Olson, Depco, and Fukai (US 2004/0175163 Al, published
Sept. 9, 2004) and alternatively over Oppitz, Olson, Nollet, and
Fukai.
5) Claims 32 and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oppitz, Olson, Depco, and Raidt and
alternatively over Oppitz, Olson, Nollet, and Raidt.
6) Claims 29, 30, 33, 34, and 37 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Oppitz, Depco, Stirzenbecher, Raidt, and
Olson and alternatively over Oppitz, Nollet, Stirzenbecher, Raidt,
and Olson.
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Application 12/991,829
DISCUSSION
Rejection 1
The Examiner finds that Oppitz discloses most of the limitations of
claim 16 except for the limitation "wherein the reinforcement layer is only
partially embedded in the electrically conductive dry layer" and "the
decorative top side includes a decor layer having the appearance of real
wood." Final Act. 3--4. The Examiner finds that Olson "teaches 'the
covering panels' (jig. 1 and fig. 2 show panels 48 and 21 with layers) further
comprise 'at least one reinforcement layer' (33)." Id. at 4. The Examiner
further finds that Olson's reinforcing layer (33) "is at least partially
embedded in 'the electrically conductive dry layer' ( 40 and 38 forms an
electrically conductive dry layer)." Id. at 4. The Examiner finds that Depco
discloses a decorative top side including a decor layer having the appearance
of real wood. Id. The Examiner determines that it would have been obvious
"to incorporate [Olson's] heat conductive wire mesh reinforcement layer and
heating device" into Oppitz's device "in order to provide additional heating
for faster and uniform heating or warming." Id. The Examiner then
concludes that it would have been obvious to further modify Oppitz "by
adding the decor layer to Oppitz's covering panel, to provide decoration to
the covering panel." Id. at 5. 3
Appellants contend that "[n]owhere has it been found ... that
[Oppitz's] heating element 20 (or 1) or the insulating resistive layer 21 (or 4)
3 In the alternative rejection, the Examiner makes the same findings based on
Olson and Oppitz, substitutes Nollet's disclosure of a decorative top side
layer having the appearance of real wood, and makes the same
determinations. Final Act. 15-17.
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Application 12/991,829
are formed by being applied onto the alleged covering panel." Appeal Br.
12 (emphasis added). Appellants next contend that the Examiner's finding
that Olson's elements 40 and 38 form an electrically conductive dry layer is
erroneous because Olson's "heat-insulating material 38 is asbestos ... which
is electrically resistive, not electrically conductive" and one of ordinary skill
in the art "would not equate a staple 40 with an 'electrically conductive dry
layer.' Simply put, a staple is not a layer and does not function as a layer."
Id. at 15-16.
In response to Appellants' first contention, the Examiner reiterates the
position from the rejection that "the limitation 'electrically conductive fluid .
. . is applied onto the covering panels ... ' is considered as process of
making" and "[t]he patentability of a product does not depend on its method
of production." Ans. 30. In response to Appellants' second contention, the
Examiner asserts that under the broadest reasonable interpretation, "[t]he
electrically conductive dry layer does not require entire layer to be
electrically conductive. In this case, the element 40 includes wire element
34." Ans. 39. For the following reasons, we do not sustain the rejection of
claim 16.
The Examiner identifies the device identified as element 20, including
element 33, in Oppitz's Figure 4 as corresponding to the "covering panel"
recited in claim 16. Final Act. 3; Ans. 29. Oppitz's heating element 1
shown in Oppitz's Figure 1 is disposed in the center of Oppitz's element 20.
Compare Oppitz Figure 1 and Figure 4. The Examiner identifies the entirety
of Oppitz' s heating element 1 as the recited "electric heater" comprising "an
electrically conductive dry layer." See Final Act. 3--4. While we note the
Examiner's assertion that the limitation relating to the electrically
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Application 12/991,829
conductive dry layer is a product by process claim, the Examiner does not
adequately explain how Oppitz's heating element 1, which is situated in the
center of covering panel 20 under element 33, is disposed "onto" the
covering panel 20 as required by claim 16.
Olson is directed "to an apparatus for the curing of concrete." Olson
1:5---6. Olson discloses that "a T-shaped casting 21 of pre-stressed concrete"
is molded on form 20. Id. 2:21-22. Form 20 includes "upright panels 22
and 23." Id. 2:22-23. Olson's "heat conductive wire mesh 33" which the
Examiner finds corresponds to the recited "reinforcement layer" is "affixed
directly to the exposed exterior surface" of form 20. Id. 2:50-51, Fig. 2.
The Examiner's finding that Olson's concrete casting 21 is part of a
covering panel comprising at least one reinforcing layer 33 (Final Act. 4) is
not supported by Olson because Olson's heat conducting mesh 33 is not part
of 0 ls on' s casting 21.
In addition, as shown in Olson's Figure 2, Olson's reinforcing mesh
33 is surrounded by a layer of asbestos 38. The Examiner does not dispute
Appellants' assertion that asbestos is not electrically conductive. Appeal Br.
15-16; Ans. 39. However, even if we were to accept the Examiner's
construction of "electrically conductive layer" set forth in the Answer, the
Examiner does not adequately explain how Olson's reinforcing mesh
surrounded by asbestos would be incorporated into Oppitz's covering panel
20. Further, the Examiner does not explain why one of ordinary skill in the
art would also incorporate Olson's heating device into Oppitz's device
which already includes a heating device. The Examiner suggests it would
"provide additional heating for faster and uniform heating or warming," but
the Examiner does not provide any technical reasoning or citation to
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Application 12/991,829
evidence to support that conclusion, and no such support is readily apparent
to us from the record presently before us. Final Act. 4.
We do not sustain the rejection of claim 16 because it is not supported
by a rational underpinning. The Examiner's alternative rejection based on
Nollett's disclosure of a decorative top side with a decor layer having the
appearance of real wood in place of substantially similar disclosure from
Depco does not cure the deficiencies in the combination of Oppitz and
Olson. See Final Act. 15-17. Claims 17, 19-24, 28, 31, 36, and 38 depend
directly or indirectly from claim 16. Appeal Br. 48-51 (Claims App.). We
do not sustain the rejection of these dependent claims for the same reasons.
Rejections 2-6
Claims 18, 26, 27, 32 and 35 depend directly or indirectly from claim
16. Appeal Br. 48-51 (Claims App.). The Examiner rejects these claims
based on the combination of Oppitz, Olson, and Depco or alternatively
Oppitz, Olson, and Nollet with additional disclosure from Stirzenbecher,
Raidt, Scoles, and Fukai. Final Act. 8-11. The Examiner does not rely on
the additional disclosure from Stirzenbecher, Raidt, Scoles, and Fukai to
cure the deficiencies in the combinations of Oppitz, Olson, and Depco or
Oppitz, Olson, and Nollet discussed above in connection with claim 16. We,
therefore, do not sustain the rejections of claims 18, 26, 27, 32 and 35.
Rejection 7
Claim 29 recites, inter alia, "[a] method for producing a heatable
covering system ... wherein the reinforcement layer is at least partially
embedded in the electrically conductive dry layer." Appeal Br. 50 (Claims
App.). The Examiner relies on substantially the same findings and reasoning
based on Oppitz and Olson as for claim 16 to establish obviousness as to this
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limitation. Final Act. 11-14. We do not sustain the rejection of claim 29 for
the same reasons stated above in connection with claim 16. Claims 30, 33,
34, and 37 depend directly or indirectly from claim 29. We do not sustain
the rejection of these dependent claims for the same reasons.
DECISION
The Examiner's decision rejecting claims 16-24 and 26-38 is
reversed.
REVERSED
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