Ex Parte PERVAN et al

Patent Trial and Appeal Board

Sep 24, 2018

14050597 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/050,597 10/10/2013
21839 7590 09/26/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
DARKO PERV AN
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.
1033462-000328 1208
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARKO PERVAN and TONY PERVAN
Appeal2017-000975
Application 14/050,597 1
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
Opinion for the Board filed by LANEY, Administrative Patent Judge
Opinion Concurring filed by CAPP, Administrative Patent Judge
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darko Pervan and Tony Pervan (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision (entered August 21, 2015, hereinafter
"Final Act.") to reject claims 10-34. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). An oral hearing was conducted on September 4, 2018.
We AFFIRM.
1 According to Appellants, the real party in interest is Valinge Innovation
AB. Appeal Br. 2.
2 Claims 1-9 have been canceled. Final Act. 2.
Appeal2017-000975
Application 14/050,597
CLAIMED SUBJECT MATTER
The subject matter of Appellants' claimed invention "relates to
moisture-proof locking systems for floors of the type having a core and a
decorative surface layer on the upper side of the core." Spec. 1. Claims 10,
22, and 33 are independent. Claim 10, reproduced below, is illustrative of
the claimed subject matter.
10. A floor panel, comprising a body having a core,
wherein in said floor panel at least two opposite parallel joint
edge portions are provided with connectors for mechanical
joining of the floor panel in the horizontal direction with similar
floor panels, said connectors having active locking surfaces for
cooperation with corresponding active locking surfaces of
adjacent floor panels after the floor panel has been joined
therewith,
the core having an upper surface layer, wherein a
material seal of a resilient surface layer is disposed above
the upper swface layer of the core, the resilient swface
layer consists of plastic, and a surface layer is provided
over the plastic.
Appeal Br. (Claims App. 1) (emphasis added). Appellants' arguments
focus on the above highlighted language from claim 10.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 10-12, 14--21, 33, and 34 under
35 U.S.C. § 103(a) as unpatentable over Moriau (US 6,006,486,
iss. Dec. 28, 1999) and Baker (GB 2256023 A, pub. Nov. 25,
1992).
II. The Examiner rejected claims 13 and 22-32 under 35 U.S.C.
§ 103(a) as unpatentable over Moriau, Baker, and Wetterau (US
2,769,726 iss. Nov. 6, 1956).
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Application 14/050,597
ANALYSIS
Rejection I
The Examiner determines the combined disclosures of Moriau and
Baker provide evidence that the combination of elements independent
claims 10 and 33 recite would have been an obvious application of what was
known at the time of the invention. Final Act. 3-5. To reach this
determination, the Examiner finds, inter alia, that Moriau's disclosure of
"intermediate layer" 57 is equal to a resilient surface layer, which is
disposed above the upper surface layer of the core. Id. at 4 ( citing Moriau
col. 9, 11. 5-10). Although Moriau does not specify a particular material for
the intermediate layer, the Examiner finds Moriau suggests the protective
top layer 56 above the intermediate layer 57 (and the decorative layer 55)
can consist of plastic (i.e., a melamine resin) and, from this, the Examiner
reasons that selecting a material consisting of plastic would have been an
obvious choice of material for the intermediate layer 57 because it "would
aid in strengthening and sealing the panel." Id.; see also, Moriau col. 8, 1.
55---col. 9, 1. 9, Fig. 2.
Appellants do not dispute Moriau leaves the material for the
intermediate layer unspecified, but contends the Examiner has failed to
establish a reason with a rational underpinning that would have led a skilled
artisan to select a material consisting of plastic. Appeal Br. 7-8. Appellants
argue that the Examiner's findings based on Moriau to support selecting a
material consisting of plastic for the intermediate layer 57 are erroneous. Id.
at 8-10. Specifically, Appellants assert "there is no factual evidence that
the intermediate layer 57 would consist only of plastic (i.e., without other
materials) as claimed." Id. at 8. According to Appellants, "other materials
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Application 14/050,597
are present in Moriau's protective top layer 56 besides the resin" because
"Moriau expressly states that the 'protective top layer 56 preferably also
consists of a layer saturated with resin, for example, melamine resin, which
in the final product is transparent."' Id. at 8-9 ( citing Moriau col. 9, 11. 4---6).
Appellants contend "a layer saturated with resin has other materials present
in the layer" and, thus, "the intermediate layer would not consist only of
plastic (i.e., without other materials)." Appeal Br. 10. Therefore,
Appellants conclude, "there is insufficient factual evidence supported by
clear articulated reasoning and any rational underpinning that the Moriau' s
intermediate layer 57 would consist only of plastic (i.e., without other
materials)." Id.
Appellants' argument is not persuasive of Examiner error. A
preponderance of the evidence supports the Examiner's finding that Moriau
discloses the protective top layer 56 may consist of plastic. Although
Appellants argue an alternative interpretation of Moriau's disclosure, it is
not the only reasonable interpretation. More specifically, we are not
persuaded it was unreasonable for the Examiner to find Moriau's
representation of a protective top layer 56 that may consist of a layer
saturated with melamine resin would be understood by a skilled artisan to
describe a layer consisting of plastic alone.
Appellants do no dispute that melamine resin is a type of plastic.
Notably, when a layer includes the melamine resin and another material,
such as paper, Moriau indicates the other material is "impregnated" with the
resin. See Moriau col. 8, 1. 67---col. 9, 1. 4, col. 9, 11. 13-15. On the other
hand, when Moriau describes the protective top layer 56, it states the layer
may be "saturated" with melamine resin and does not identify any other
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Application 14/050,597
material is used or "impregnated." Furthermore, the additional material in
the decorative layer appears to be for just that purpose -to provide a
desired visual appearance, rather than serving any structural purpose. Of
course, as the name "protective layer" itself suggests, this layer is intended
to have strengthening and sealing properties to provide protection to the
floor paneling against user traffic. Given this context, it was reasonable for
the Examiner to find that a skilled artisan would have understood the
protective top layer 56 of Moriau may consist solely of plastic.
Turning now to whether the Examiner has properly established that it
would have been obvious for a skilled artisan to have made the intermediate
layer 57 consist of plastic similar that used for the protective layer,
Appellants have not shown persuasively the Examiner's rationale is
deficient. The Examiner finds Moriau broadly describes the intermediate
layer 57 without describing its composition and a skilled artisan would have
been led to making this layer consist of plastic, like the protective layer,
because it would aid in strengthening and sealing the panel. Appellants,
however, do not apprise us of any error with the Examiner's underlying
factual finding that a layer consisting of plastic at the intermediate layer 57
would have been known to aid in strengthening and sealing the panel. This
reasoning has a rational underpinning because, if a layer consisting of plastic
has sufficient sealing and strength characteristics to withstand the demands
of the protective top layer, which is exposed directly to user traffic, then it is
likely to provide the same characteristics at the intermediate layer to further
protect the core of the panel.
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Application 14/050,597
Therefore, because Appellants do not argue separately for the
patentability of dependent claims 11, 12, 14--21, and 34 (see Appeal Br. 15),
we sustain the Examiner's rejection of claims 10-12, 14--21, 33, and 34.
Rejection II
For independent claim 22, the Examiner determines the recited
combination of elements would have been obvious in view of Moriau,
Baker, and Wetterau. Final Act. 7-9. Appellants again contend the
arguments raised against the Examiner's reliance on Moriau to show the
obviousness of having an intermediate layer that consists of plastic are
"equally applicable" to claim 22. Appeal Br. 12. We remain unpersuaded,
however. Nevertheless, Appellants also contend the Examiner erred in
determining it would have been obvious to further modify the Moriau floor
panel to have an outermost surface layer comprising an elastic material, as
claim 22 recites. Id. at 12-14. We disagree for the following reasons.
The Examiner finds Moriau teaches a resinous material for the surface
layer, but fails to disclose this material comprises an elastic material. Final
Act. 9. The Examiner finds Wetterau discloses it was known to incorporate
an elastic material into the resin used with layers of a floor panel, although
not in the outermost surface layer. Id.; Ans. 15. In view ofWetterau's
disclosure that a floor panel layer may include a resin with an elastic
material, the Examiner reasons it would have been obvious for a skilled
artisan to modify the resin of the surface layer in Mariau to have elastic
material "in order to provide a walking surface which is quieter and more
comfortable to walk [on]." Final Act. 9.
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Appellants do not dispute that Wetterau discloses it was known to use
a resin with an elastic material as a layer in a floor panel or that a skilled
artisan would have recognized that an outermost surface layer with this resin
composition would contribute to the quietness and comfort of the walking
surface. Instead, Appellants only argue that the Examiner's reasoning is
flawed because it does not provide any specific reference within the prior art
where a resin with an elastic material is used for the outermost surface layer
of a floor panel and W etterau only describes using such material in the
intermediate layers. Appeal Br. 12-14. Appellants' argument is tantamount
to faulting the Examiner for not identifying a precise teaching from the prior
art reference that describes the proposed modification. The Supreme Court
has made it clear, however, that holding the Examiner to such a strict
standard is inappropriate. KSR Int'! Co. Teleflex Inc., 550 U.S. 398,415
(2007). An obviousness analysis does not need to identify precise teachings
directed to the specific subject matter of the challenged claim because the
analysis is broad enough to account for the inferences and creative steps that
a person of ordinary skill in the art would employ. Id. at 418.
In this case, a preponderance of the evidence supports the Examiner's
finding that skilled artisans knew to use a resin with elastic material in the
layering of floor panels and a rational underpinning supports the Examiner
reasoning that the beneficial qualities (i.e., regarding comfort and sound)
inherent in such a material would lead a skilled artisan to use it as a surface
layer on which people walk. In other words, an ordinarily skilled artisan
would have recognized the structural characteristics of the resinous material
that Wetterau uses in the intermediate flooring panel layer would also
provide some known benefits to the outermost layer in a predictable way.
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Simply pointing out that the Examiner did not identify a precise
teaching of the proposed combination is not sufficient to apprise us of how
or why this reasoning that the Examiner does provide is improper. For
example, Appellants do not provide any evidence or argument to explain
why a skilled artisan would have viewed the application of the resin with
elastic material in Wetterau to be limited to the intermediate layers. Nor do
Appellants explain how the Examiner's reasoning is undermined by the fact
that Wetterau only discloses the resin with elastic material in the
intermediate layers.
Therefore, because Appellants do not argue separately for the
patentability of dependent claims 13 and 23-32 (see Appeal Br. 15), we
sustain the Examiner's rejection of claims 13 and 22-32.
DECISION
We affirm the Examiner's decision to reject claims 10-34 as
unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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OPINION CONCURRING
CAPP, Administrative Patent Judge
I concur in the result reached by the majority. I write separately to
express my concern about Appellants use of the term "consists of plastic" in
claim 10. The phrase "consists of' is a closed transition phrase that is
"understood to exclude any elements, steps, or ingredients not specified in
the claim." AFG Indus., Inc. v. Cardinal JG Co., 239 F.3d 1239, 1244-45
(Fed. Cir. 2001).
"Plastic" is a material that includes a wide range of organic
compounds. Plastics are typically organic polymers derived from
petrochemicals, but may also be made from other substances. Of particular
concern here is that plastics are widely known to contain other substances
besides the polymer.
For example, plasticizers, such as dioctyl phthalate, may be added to
make the material soft and less brittle. Plastics may contain fillers, such as
chalk and zinc oxide. Stabilizers may be added to protect against ultraviolet
light degradation and for fire protection. Colorants may be added to give
aesthetic properties.
Thus, using the transition phrase "consisting of' in conjunction with
"plastic" is ambiguous, if not outright confusing. In short, "plastic" is
frequently a mixture of materials. The Specification and the claims give
little, if any, guidance as to what additives are excluded from the mixture so
that it "consists of' - "plastic." Thus, the claim language is entitled to a
broad construction and I concur that the claim language, as properly
construed, is met by the prior art.
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