Ex Parte Morgan et al

Patent Trial and Appeal Board

Apr 28, 2016

12830953 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/830,953 07/06/2010 Cinttya L. Morgan
52145 7590 04/28/2016
FLETCHER YODER (ILLINOIS TOOL WORKS INC)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
22540(ITW00287)YOD 1539
EXAMINER
NGUYEN, HAS
ART UNIT PAPER NUMBER
1766
MAILDATE DELIVERY MODE
04/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CINTTY AL. MORGAN and PAUL H. ANDERSON
Appeal2014-006118
Application 12/830,953 1
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and MICHAEL P. COLAIANNI,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action2 rejecting
claims 1through17, 21, and 24 through 28. We have jurisdiction pursuant to
35 U.S.C. § 6. We REVERSE.
1 Application 12/830,953 (Application'953), filed July 06, 2010, which claims the
benefit of Provisional Application 61/230,010, filed on July 30, 2009.
2 Final Action mailed May 15, 2013 ("Final Act."). Co-pending claims 22 and 23
have been withdrawn from consideration. Remaining co-pending claims 18
through 20 were not rejected in the Final Action.
Appeal2014-006118
Application 12/830,953
INTRODUCTION
The appealed subject matter relates to a self-leveling flooring underlayment
comprising an epoxy based resin component, a curing agent component, and an
aggregate component. '953 Specification ("Spec.") iJ [0005]. According to the
'953 Specification, iJ [0003], "underlayments may be applied underneath a flooring
material ... [or] may be used to smooth surfaces and/or to slope a surface toward
to drain." In describing Fig. 1, illustrated below, the '953 Specification, iJ [0014],
discloses that "[t]he underlayment 12 may have a viscosity that promotes self-
leveling of the underlayment 12. That is, before hardening, the underlayment 12
may generally flow along the substrate 14 to fill in surface irregularities, forming a
substantially seamless, level surface" (emphasis added).
FIG. 1
Fig. 1 illustrates a cross-sectional view of a portion of a flooring system
employing an embodiment of a flooring underlayment. The flooring system 10
includes the underlayment 12 applied to the substrate 14 and an optional surface
coating 16. Spec. at iii! [0014] and [0015].
Details of the appealed subject matter are recited in representative
independent claims 1, 13, and 24 of Application'953, which are reproduced below
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Application 12/830,953
from the Listing of Claims3 (indentations added and key disputed limitations
highlighted in italicized text):
1. A self-leveling flooring underlayment kit, comprising:
an epoxy resin component comprising one or more Bisphenol F
based epoxy resins, or one or more Bisphenol A based epoxy resins,
or combinations thereof;
a curing agent component comprising one or more amine based
curing agents configured to cure the epoxy resin component upon
mixing; and
an aggregate component comprising expanded glass granules
and hollow glass microspheres,
wherein the hollow glass microspheres comprise alumino-
silicate microspheres, and
wherein a majority of the expanded glass granules have a
largest cross-sectional diameter greater than or equal to
approximately 0.1 mm and less than or equal to
approximately 2.0 mm,
wherein a majority of the hollow glass microspheres have a
largest cross-sectional diameter greater than or equal to
approximately 5 microns and less than or equal to
approximately 500 microns, and
wherein the expanded glass granules and the hollow glass
microspheres are configured to be suspended within the epoxy resin
component and the curing agent upon mixing to form the self-leveling
flooring underlayment.
13 A flooring comprising:
a substrate; and
a self-leveled underlayment disposed on the substrate, the
underlayment comprising a mixture of:
3 Listing of Claims filed on January 30, 2013. The claims listed in the Claim
Appendix in the Appeal Brief filed on November 18, 2013 ("App. Br.") do not
correspond to the previously entered listing of claims.
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Application 12/830,953
an epoxy resin component;
a curing agent component; and
an aggregate component;
wherein the underlayment has a weight of less than
approximately 1.6 lb/ft2 when applied at a nominal thickness
of 0.25 inches and complies with International Maritime Organization
Resolution MSC.61 ( 67).
24. A method of making a self-leveling underlayment kit,
compnsmg:
mixing one or more epoxidized Bisphenol F resins, one or more
glycidyl ether diluents, one or more flame retardants, and one or more
additives to form an epoxy resin component;
mixing one or more amine based and/or waterborne curing
agents to form a curing agent component;
mixing expanded glass granules with a largest cross-sectional
diameter greater than or equal to approximately 0.1 mm and less than
or equal to approximately 2.0 mm and hollow glass microspheres with
a largest cross-sectional diameter greater than or equal to
approximately 5 microns and less than or equal to
approximately 500 microns to form an aggregate component,
wherein the hollow glass microspheres comprise alumino-
silicate microspheres; and
packaging the epoxy resin component, the curing agent
component, and the aggregate component together to form the self-
leveling underlayment kit.
The Examiner maintains the following grounds of rejection in the
Examiner's Answer,4 which are before us on appeal:
4 Examiner's Answer mailed on February 25, 2014 ("Ans."), 2 through 37.
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Application 12/830,953
1. Claims 13, 14, 16, 17, 21, and 28 under 35 U.S.C. § 102(b) as
being anticipated by Khorasani5, as evidenced by International Maritime
Organization Resolution MSC.61(67) (IMO);
2. Claim 15 under 35 U.S.C. § 102(b) as being anticipated by
Khorasani, as evidenced by Military Specification MIL-PRF-3135H (MS-
MIL);
3. Claims 1 through 4, 7, 9 through 12, and 24 through 27 under
35 U.S.C. § 103(a) as being unpatentable over the collective teachings of
Khorasani, Liu6, and Jin; 7 and
4. Claims 5, 6, and 8 under 35 U.S.C. § 103(a) as being unpatentable
over the collective teachings of Khorasani, Lin, Jin, and Xu8.
DISCUSSION
Rejections 1 and 2, Anticipation by Khorasani
In rejecting independent claim 13 and claim 15, ,~1hich depends from
claim 13, as anticipated by Khorasani, the Examiner finds that Khorasani teaches a
flooring comprising a leveling material used as an underlay, where the leveling
material is "substantially identical" to the underlayment of the claimed invention.
Ans. 4, 6. Khorasani teaches a leveling material that comprises one or more
resins, such as an epoxy resin, one or more hardeners, and a "plurality of hollow
5 PCT Published Application WO 03/091325 Al by Manny Khorasani et al.,
published on November 06, 2003.
6 United States Patent Application Publication No. 2005/0090626 Al by Wen-Feng
Liu et al., published on April 28, 2005.
7 United States Patent Application Publication No. 2003/0153643 Al by Pei Wen
Jin et al., published on August 14, 2003.
8 United States Patent Application Publication No. 2005/0209357 Al by Jigeng Xu
et al., published on September 22, 2005.
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Application 12/830,953
filler components." Ans. 2, 3, citing Khorasani, p. 3, 11. 22-23 (for one or more
resins and the plurality of hollow filler components), p. 4, 11. 4-5 (for the epoxy
resin), and p. 5, 11. 11-12 (for the hardener). In the words ofKhorasani, p. 5,
11. 11-12, "[o]ptionally the material may also contain one or more hardeners." The
Examiner finds that Khorasani teaches that the leveling material "may comprise a
diluent such as water or a solvent." Id. at 5, citing Khorasani, p. 5, 11. 8-9. In the
words ofKhorasani, p. 5, 11. 8-9, "[o]ptionally the material may comprise a diluent
such as water or a solvent." The Examiner finds that '953 Specification discloses
that the underlayment "can further include diluents ... wherein the diluents may be
used to achieve viscosity that allows for self-leveling." Id., citing the US
publication of the '953 Application, ii [0018], which corresponds to Spec. ii [0018].
According to the '953 Specification, ii [0018], "[i]n certain embodiments, the
diluents may be intended to achieve a viscosity for the underlayment ... that
allows the underlayment ... to be self-leveling." Based on these findings, the
Examiner finds that "it is apparent that the composition in Khorasani is inherently
self-leveling with the addition of the diluent since Applicant discloses that the self-
leveling property is directly caused by the addition of diluents." Ans. 5.
According to Appellants, "self-leveled underlayments ... may flow along a
substrate to fill in surface irregularities and form a substantially seamless leveled
surface without the need of tools." App. Br. 6, citing Spec. ii [0014]. According
to the '953 Specification, ii [0014], "[t]he underlayment ... may have a viscosity
that promotes self-leveling of the underlayment ... That is, before hardening, the
underlayment ... may generally flow along the substrate ... to fill in surface
irregularities, forming a substantially seamless, level surface." In contrast,
Appellants urge that "the disclosure of Khorasani is directed towards a non-self-
leveled underlayment" (emphasis in original). Id. at 7, citing Khorasani, p. 5,
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Application 12/830,953
11. 23-28, p. 6, 1. 32, top. 7, 1.1, and p. 7, 11. 26-29. According to Khorasani, p. 5,
11. 23-24, "[t]ypically the [leveling] material will have the texture of a wet
powder." Khorasani, p. 6, 1. 32, top. 7, 1. 1, discloses that "[w]hilst the compound
is a leveling compound, it is not necessarily self-leveling." Khorasani, p. 7,
11. 26-29, further discloses that "[t]he material typically has a consistency similar to
a wet powder and can be applied to the surface, where [it] is to be levelled using a
towel or roller or other hand application[.]"
In response to Appellants' arguments, the Examiner determines that the
Khorasani "leveling material would inherently be self-leveling" for the reasons
discussed in the rejection supra. Ans. 38, 39. The Examiner further finds that
"[h ]igher concentrations of water, diluent or solvent (Khorasani, page 5, ln 8-9)
and lower density compositions within the Khorasani's disclosure will behave in a
more self-leveling fashion than lower concentration water, diluent, or solvent and
higher density compositions." Id. at 39.
Our reviewing court has held that "[a] reference may anticipate inherently if
a claim limitation that is not expressly disclosed is 'necessarily present, or
inherent, in a single anticipating reference."' In re Montgomery, 677 F.3d 1375,
1379, 1380, (Fed. Cir. 2012). The court also held that "[i]nherency, however, may
not be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).
The preponderance of the evidence of record does not support the
Examiner's finding that the leveling material taught by Khorasani "is inherently
self-leveling." As indicated supra, Khorasani does not disclose that its leveling
material is "self-leveling." Rather, as indicated supra, Khorasani teaches that
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Application 12/830,953
leveling material, e.g., "typically a wet powder," is "not necessarily self-leveling."
Although the Examiner finds that Khorasani teaches that the leveling material
"may comprise a diluent such as water or a solvent" as indicated supra, the
Examiner does not direct us to any teaching in Khorasani that the amount of the
diluent used is sufficient to form a leveling material that is inherently or
necessarily "self-leveling" as recited in claim 13. Given these circumstances, a
person having ordinary skill in the art would not have concluded reasonably that
the leveling material taught by Khorasani would necessarily or inherently provide a
"self-leveled" underlayment as recited in claim 13. The Examiner's statement that
Khorasani leveling material "is inherently self-leveling with the addition of the
diluent" is merely a statement of what may result when and if a sufficient amount
of the diluent is added to the Khorasani leveling material. As indicated supra,
"inherency ... may not be established by probabilities or possibilities."
Appellants further urge "the underlay material disclosed by Khorasani does
not anticipate the self-leveling underlayment" recited in claim 13. App. Br. 9, 10.
Appellants urge that claim 13 requires that the self-leveled underlayment
comprises an "aggregate component." Id. at 9. Appellant urges that Khorasani is
"completely silent with regard to the hollow fillers being an aggregate." Id.
Appellants urge that "the hollow fillers of Khorasani would be understood by a
person having ordinary skill in the art to be discrete particles of glass, ceramic, or a
polymeric material and not an 'aggregate' as one skilled in the art would
understand this term" (emphasis added in original). Id.
In response to Appellants' arguments, the Examiner finds that Appellants
have "defined the aggregate component of include expanded glass beads and
hollow glass spheres . .. which the hollow glass fillers in Khorasani clearly
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Application 12/830,953
qualify as" (emphasis added in original). Ans. 40, citing the US publication of the
'953 Application, ii [0022], corresponding to Spec. ii [0022].
In the Reply Brief9, Appellants "contend that a person having ordinary skill
in the art would recognize an 'aggregate' to be a cluster or clump of particles and
not discrete particles." Reply 3. Appellants urge that Khorasani "hollow filler
components are not in aggregate form." Id.
The '953 Specification does not provide an express definition of the term
"aggregate component." However, "[t]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's specification." In
re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). According to Webster's
Third New International Dictionary (1981), Merriam-Webster Inc., p. 41, the term
"aggregate" may be defined as "a mass or body of units or parts somewhat loosely
associated with one another." Thus, given the ordinary meaning of this term, a
person having ordinary skill in the art would have understood that the "aggregate
component" recited in claim 13 refers a mass or body, e.g., cluster, of discrete
particles that are associated with one another. This interpretation is consistent with
the disclosure in the '953 Specification, e.g., ii [0023], indicated by Appellants
(App. Br. 9). The '953 Specification, ii [0023], describes that in a certain
embodiment, the aggregate component includes porous granules and microspheres,
where "[t]he microspheres may be relatively small when compared to the porous
granules within the aggregate component . .. allowing the microspheres to fill
9 Reply Brief filed on April 25, 2014 ("Reply").
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Application 12/830,953
spaces between the larger porous granules" (emphasis added). Put in another
way, the aggregate component comprises an agglomeration of large-sized porous
granules and small-sized microspheres, where the small-sized microcapsules are
interspersed in the spaces created by the large-sized porous granules in the
aggregate component.
In contrast, as urged by Appellants, Khorasani does not describe the hollow
fillers as "an aggregate component" as recited in claim 13. The Examiner has not
directed our attention to any disclosure in the '953 Specification, which defines the
term "aggregate component" so broadly as to encompass the hollow fillers
disclosed by Khorasani. Contrary to the Examiner's finding, the '953
Specification iJ [0022] describes that the aggregate component "may include
granules, such as expanded glass beads, pretreated expanded glass beads, water
treated expanded glass beads, expanded clay, hollow glass spheres, or
combinations thereof, among others." The '952 Specification does not define the
term "aggregate component" in a way that differs from the ordinary meaning of the
term discussed supra.
Accordingly, we find that Appellants have shown reversible error in
the Examiner's findings that Khorasani discloses a flooring comprising a
self-leveled underlayment as recited in claims 13 and 15.
Rejections 1 and 2 are reversed.
Rejection 3, Obviousness over the collective teachings of
Khorasani, Liu, and Jin
In rejecting independent claims 1 and 24, the Examiner finds that Khorasani
does not teach that the hollow fillers comprise "expanded glass particles and
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Application 12/830,953
hollow microspheres," where the hollow microspheres comprise alumino-silicate
microspheres, and the expanded glass particles have the particle size distribution,
as recited in claims 1 and 24. Ans. 15, 25. However, the Examiner finds that Liu
teaches that hollow glass beads having an average particle size of 300 microns or
larger, or preferably 50 microns or larger, can be used as fillers in curable adhesive
compositions. Id. at 15, 26, citing Liu, iii! [0055] and [0057]. The Examiner
further finds that Jin teaches that glass microspheres and ceramic microspheres,
e.g., aluminosilicate ceramic microspheres, can be used as inorganic fillers in
curable compositions useful as a coating for flooring. Id. at 17, 26, citing Jin,
iii! [0007], [0017], [0031 ], and [0065].
However, the Examiner makes no findings that Liu and Jin cure the
deficiencies of Khorasani regarding the "aggregate component" recited in claims 1
and 24, as described supra. As urged by Appellants, Liu and Jin, like Khorasani,
"merely disclose fillers having discrete particles of glass, ceramic, or microspheres,
but are completely silent with regard to mixing the glass and the microspheres to
form any kind of aggregate, as generally recited in claim 24" (emphasis added in
the original). App. Br. 17. Appellants urge that "with regard to independent
claims 1 and 24, Khorasani, Liu, and Jin, fail to disclose an aggregate of any kind"
(emphasis added in the original). Id. at 22. In the Reply Brief, Appellants urge
that "the hollow fillers of Khorasani, Liu, and Jin would be understood by a person
having ordinary skill in the art to be discrete particles and not an 'aggregate' (e.g.,
a cluster or clump of particles), as one skilled in the art would have understand the
term." Reply 7.
Accordingly, for the reasons as discussed supra regarding Rejections 1
and 2, we find that Appellants have shown reversible error in the Examiner's
determination that the collective teachings of Khorasani, Liu, and Jin would have
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prompted a person having ordinary skill in the art to arrive at the subject matter
recited in the claims on appeal within the meaning of 35 U.S.C. § 103(a).
Rejection 3 is reversed.
Rejection 4, Obviousness over the collective teachings of
Khorasani, Liu, Jin, and Xu
The additional prior art reference used in rejecting some of the dependent
claims on appeal in Rejection 4 was not relied upon by the Examiner to remedy
the deficiencies of Khorasani, Liu, and Jin, discussed supra. Accordingly,
Rejection 4 is also reversed.
ORDER
In view of the foregoing, we REVERSE the rejections of
claims 13 through 17, 21, and28 under 35 U.S.C. § 102(b), and of claims 1
through 12 and 24 through 27 under 35 U.S.C. § 103(a).
REVERSED
12