Ex Parte Schmitt et al

Patent Trial and Appeal BoardApr 26, 2018

14432531 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/432,531 03/31/2015 123223 7590 04/30/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Wilfried Schmitt 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. 074008-1642-US-52451 l 7769 EXAMINER VO,HAI ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 04/30/2018 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILFRIED SCHMITT and UWE KEPPELER Appeal2017-007494 Application 14/432,531 Technology Center 1700 Before BEYERL YA. FRANKLIN, CHRISTOPHER L. OGDEN, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1, 14, 16-19, and 22-24. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In this Decision, we refer to Appellant's Specification filed March 31, 2015 ("Spec."), the Final Office Action dated August 18, 2016 ("Final Act."), the Appeal Brief filed December 13, 2016 ("Appeal Br."), the Examiner's Answer dated March 21, 2017 ("Ans."), and the Reply Brief filed April 13, 2017 ("Reply Br."). 2 Appellant is the Applicant, BASF SE, which, according to the Appeal Brief, is the real party in interest. Appeal Br. 1. 3 Claims 20 and 21 are withdrawn from consideration by the Examiner. Appeal2017-007494 Application 14/432,531 The subject matter of the claims on appeal relates to a stall floorcovering made of expanded thermoplastic polyurethane-bead foam. Spec. 1, 11. 5-7. According to Appellant's Specification, a "stall floorcovering" includes floorcoverings in the sector represented by the actual stalls, i.e., the actual housings which provide long-term accommodation for animals, but also coverings for any of the floors on which animals are present for short or long periods, including, for example, floorcoverings in the sector represented by cubicles, cubicle-access passageways, other passageways, and walkers for animals. Id. at 1, 11. 11- 16. Claim 1, reproduced below from Appendix A of the Appeal Brief, is illustrative of the claims on appeal. 1. A stall floorcovering comprising a foam mat compnsmg expanded thermoplastic polyurethane-bead foam, wherein the thermoplastic polyurethane-bead foam has a Shore hardness in the range from 50 Shore A to 75 Shore D, measured in accordance with DIN ISO 7619-1 DE on test specimens made of non-expanded thermoplastic polyurethane of thickness 6 mm, and the foam mat has a density in the range from 3 5 to 300 kg/m3, and a thickness in the range from 20 to 150 mm. Appeal Br. 10 (App. A). DISCUSSION The Examiner maintains the rejection of claims 1, 16-19,4 and 22-24 under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Prissok et al. 4 Appellant erroneously lists claim 19 as withdrawn from consideration in their Appeal Brief. Appeal Br. 19 (App. A). Claim 19, however, depends from claim 1, and recites a stall floorcovering. Thus, we include claim 19 in the present appeal. 2 Appeal2017-007494 Application 14/432,531 (US 2010/0222442 Al, published September 2, 2010) ("Prissok") in view of Maurer et al. (US 2006/0148919 Al, published July 6, 2006) ("Maurer"). Ans. 2-5. The Examiner also maintains the rejection of claim 14 under pre- AIA 35 U.S.C. Â§ I03(a) as unpatentable over Prissok and Maurer, further in view of Marc (US 2011/0206926 Al, published August 25, 2011) ("Marc"). Id. at 5. Appellant does not present separate arguments specifically directed to the dependent claims under rejection, including separately rejected claim 14. See Appeal Br. 3-8. Therefore, we select claim 1 as representative and claims 14, 16-19, and 22-24 will stand or fall with that claim. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We sustain the Examiner'sÂ§ I03(a) rejections for the reasons given in the Final Office Action, the Answer, and below. In rejecting claim 1, the Examiner finds, and Appellant does not dispute, that Prissok discloses claim 1 's foam mat except for the foam mat having a thickness ranging from 20 mm to 150 mm. Compare Final Act. 3- 4 (citing Prissok ,r,r 1, 9, 77, 79, 80, 86 (Table 1), 89, 90 (Table 2), with Appeal Br. 3-8. According to Prissok, its foams are preferably used in energy-absorbing moldings. Prissok ,r 84. As to the foam mat's thickness, the Examiner finds that Maurer discloses a member for impact absorbing applications, including for use as a load floor, comprising a polyurethane bead foam material, where the member has a thickness of 25 mm. Final Act. 4 ( citing Maurer ,r,r 14, 22, 59, and 61 ). The Examiner finds that one of ordinary skill in the art would have been led to use Prissok's thermoplastic polyurethane-bead foam as a 3 Appeal2017-007494 Application 14/432,531 load floor with a thickness of 25 mm, as taught by Maurer, "to provide sufficient impact-absorbing performance." Final Act. 4. Appellant argues that the recitation "stall" in claim 1 's preamble "gives life to the claim," and thus, must be given patentable weight. See Appeal Br. 3-7. Appellant further argues that "there is no teaching in the art of record of. . . a stall floorcovering having a foam mat with the recited properties of hardness and density." Id. at 6. The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. See Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). In general, a preamble is construed as a limitation "if it recites essential structure or steps, or if it is 'necessary to give life, meaning, and vitality' to the claim." Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble is not regarded as limiting, however, "when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Catalina, 289 F.3d at 809. We agree with the Examiner that claim 1 's preamble recites an intended use of claim 1 's foam mat. See Ans. 3--4. Appellant does not dispute that a load floor with a thickness of 25 mm, as taught by Maurer, prepared using Prissok' s thermoplastic polyurethane-bead foam "is structurally the same" as claim 1 's stall floorcovering. Final Act. 4; Ans. 4. That is, the resulting load floor produced using the teachings of Prissok and Maurer includes expanded thermoplastic polyurethane-bead foam having a hardness ranging from 50 Shore A to 82 Shore A, measured as specified in 4 Appeal2017-007494 Application 14/432,531 Appellants' claim 1, a density of 170 kg/m3, and a thickness of 25 mm. Id. Because the structure of the load floor resulting from the combined teachings of Prissok and Maurer is the same as claim 1 's foam mat, we agree with the Examiner that the resulting load floor would necessarily function as a stall floorcovering. Final Act. 5; see In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition."); see also In re Papesch, 315 F .2d 381, 391 (CCP A 1963) ("From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing."). Additionally, according to Appellant's Specification, a "stall floorcovering" is not limited to the floorcoverings in animal stalls, "but also includes any of the floors on which animals are present for short or long periods, including, for example, floorcoverings in the sector represented by cubicles, cubicle-access passageways, other passageways, and walkers for animals." Spec. 1, 11. 11-16. Thus, even if we claim 1 's preamble is considered limiting, as Appellant contends, we are not persuaded that a load floor, as described in Maurer, would not encompass a stall floorcovering as recited in claim 1. Appellant raises new arguments in the Reply Brief that were not raised in the opening Appeal Brief, and are not responsive to an argument raised in the Examiner's Answer. See Reply Br. 1--4. These new arguments are untimely. Because Appellant did not establish good cause for raising the arguments for the first time in Reply, the arguments are waived. See 5 Appeal2017-007494 Application 14/432,531 37 C.F .R. Â§ 41.41 (b )(2) (requiring showing of good cause for Board to entertain new arguments in a Reply). DECISION For the above reasons, the rejections of claims 1, 14, 16-19, and 22- 24 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6