Ex Parte Yu et al

Patent Trial and Appeal BoardMar 25, 2016

12893179 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/893, 179 09/29/2010 QingYu 89462 7590 03/29/2016 Pearne & Gordon LLP 1801 East Ninth Street Suite 1200 Cleveland, OH 44114-3108 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. DPC-46769 3633 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): dpeterlin@pearne.com patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte QING YU and GREGORY PALM Appeal2014-007408 Application 12/893, 179 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and BRIAND. RANGE Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-007408 Application 12/893, 179 SUMMARY Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1--4 and 7-16. Claims 5 and 6 have been cancelled. Appeal Br. 5. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. STATEMENT OF CASE Appellants describe the present invention as concerning "an interior surface panel configured to be employed as a building component for a wall or ceiling of a room of a building structure." Appeal Br. 7. Appellants primarily focus on "facing material" for the panel. Appeal Br. 11-16. Claim 1, reproduced below, is the only independent claim and is illustrative of the claimed subject matter: 1. An interior surface panel configured to be employed as a building component for a wall or ceiling of a room of a building structure, the interior surface panel including: a base mat having two sides, at least one of the two sides of the base mat being adapted to face the interior of the room; and a facing material comprising a polymer that is free of polyvinyl chlorides, and is bonded to at least the side of the base mat arranged to face the interior of the room, the facing material having a non-embossed thickness in the range of two to ten microns with the surface of the facing material that is exposed to the interior of the room having a textured pattern of a roughness in the range of two to ten microns, the non-embossed thickness of the facing material and the roughness of the textured pattern being such in relation to one another that the textured pattern substantially masks the roughness of the surface of the underlying base mat but is not sufficiently accentuated so as to 1 According to the Appellants, the Real Party in Interest is USG Interiors, LLC. Appeal Br. 3. 2 Appeal2014-007408 Application 12/893, 179 create uptumings in the facing material at which are present open spaces between the bottom surface of the facing material and the upper surface of the underlying base mat. Appeal Br. 20 (Claim Appendix). REFERENCES The Examiner relied upon the prior art below when rejecting the claims on appeal: Luszczak Belmares et al. (hereinafter, "Belmares") Levit et al. (hereinafter, "Levit") US 4,941,949 July 17, 1990 US 2003/0087103 Al May 8, 2003 US 2009/0173570 Al July 9, 2009 REJECTIONS The Examiner withdrew the rejection of claim 13 under 35 U.S.C. Â§ 112. Ans. 6. The Examiner made the following rejections which remain on appeal: Rejection 1. The Examiner rejected claims 1--4, 8, and 9 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Levit and Belmares. Final Act. 3; Ans. 2. Rejection 2. The Examiner rejected claims 7 and 10-16 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Levit, Belmares, and Luszczak. Final Act. 5; Ans. 4. ANALYSIS Appellants' arguments with respect to each of the Examiner's rejections are discussed below. Rejection 1. The Examiner rejects claims 1--4, 8, and 9 as obvious based on Levit and Belmares. The Appellants do not separately argue claims 3 Appeal2014-007408 Application 12/893, 179 2--4, 8, or 9. We therefore limit our discussion to claim 1. Claims 2--4, 8, or 9 stand or fall with that claim. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). Levit discloses, for example, ceiling tile having a facing comprised of polymers free of polyvinyl chlorides. Final Act. 3; Levit Abstract, i-f 38. Belmares teaches, for example, fluorpolymer coatings with a thickness from 0.8 to 10 microns. Final Act. 4; Belmares i-f 4. Appellants do not persuasively dispute the teachings of Levit and Belmares. We agree with and adopt the Examiner's findings of fact regarding these references set out at pages 3-5 of the October 28, 2013, Final Action. We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citation omitted). Appellants present three arguments as to why Levit and Belmares should not be combined and/or do not teach all elements of claim 1. Appeal Br. 11-16. We address each argument below. First, Appellants argue that Belmares discloses "panels to which are applied coatings in the nature of paints and not facings" such that combining the ceiling tiles of Levit with the coatings of Belmares would not include a "facing material" as recited in claim 1. Appeal Br. 11-12. Resolution of this issue requires construction of the term "facing material." It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims 4 Appeal2014-007408 Application 12/893, 179 to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. Neither Appellants nor the Examiner explicitly propose a construction for "facing material." The Specification explains that "facing material typically comprises the surface of the panel that is exposed to the environment of the room in which the panel is installed." Spec. i-f 3. This explanation is sufficiently broad to cover all embodiments described in the Specification. For example, the Specification explains that the facing material can be "thin sheets or films .... " Ans. 7; Spec. i-f 7; see also i-f 15 ("The facing material 14 is sometimes referred to as a film or a scrim."). Indeed, claim 1 is directed to very thin facing material (two to ten microns thick); at this thickness, the facing is more akin to a paint-like film then a thicker veneer-like material. Thus, we construe "facing material" broadly enough to encompass, for example, films formed by paint coatings. Appellants cite portions of the Specification stating, for example, that "the facing material is manufactured as an imperforate sheet or web" to argue, at least indirectly, that a film of paint cannot be facing material. Appeal Br. 11 (citing Spec. i-f 17). Applicant, however, does not provide a complete quotation. The Specification states: "Typically, the facing material is manufactured as an imperforate sheet or web using conventional processes." Spec. i-f 17 (emphasis added). Thus, sheets and webs are merely typical examples of the invention's facings. The Specification does not exclude films formed by paint coatings from being a "facing" from all embodiments of the invention. We decline to narrow the term facing based upon examples in the Specification. See, e.g., In re Van Geuns, 988 F.2d 5 Appeal2014-007408 Application 12/893, 179 1181, 1184 (Fed. Cir. 1993) ("limitations are not to be read into the claims from the specification") (citation omitted). Appellants also emphasize that Levit refers to "facing" in describing a sheet that is applied to a ceiling tile whereas Belmares does not identify its material as a "facing." Reply Br. 2-3. Nothing in Levit or Belmares, however, undermine the Specification's broad view of "facing." We therefore decline to narrow the construction of "facing" based on these references. Because "facing" as recited in claim 1 may include a film of paint and because Belmares teaches such films (see, e.g., Ans. 7-8, Belmares i-fi-f 13- 14, 17), we agree with the Examiner that the combination of Levit and Belmares includes a facing. Second, Appellants argue that it would not be obvious to a person of skill in the art to "modify Levit by substituting for the facing materials of Levit the coatings of Belmares" and that Levit and Belmares "present[] entirely different kinds of considerations .... " Appeal Br. 12-13. We disagree. Both Levit and Belmares are related to the same field of endeavor. Levit discloses, for example, ceiling tiles, and Belmares discloses useful coatings for such tiles. Final Act. 3--4. Belmares's coatings impart "resistance to staining, washability, scrubbability, and soiling, as well as long durability." Belmares Abstract. A person of ordinary skill in the art would recognize that Belmares' s coatings would improve Levit' s panels in the same way as taught in Belmares. Improvement of Levit in this fashion is no more than predictable use of prior art elements according to established functions. Cf KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). 6 Appeal2014-007408 Application 12/893, 179 Thus, we agree with the Examiner's conclusion that claim 1 is an obvious combination of Levit and Belmares. Final Act. 4. Appellants argue that a person of skill in the art would not combine Levit and Belmares because Levit is interested in thick materials with "a high degree of isotropic strength" whereas Belmares has thin coatings. Appeal Br. 11-12. Levit, however, teaches thickness between 20 to 400 micrometers while Belmares teaches films as thick as 50 micrometers. Levit i-f 32, Belmares i-f 10. Thus, Belmares' s thicknesses fall within the range Levit expressly considers acceptable. Moreover, even if Belmares' s relative thinness were a disadvantage, it would not dissuade a person of ordinary skill in the art from pursuing the combination given the advantages ofBelmares explained above. Cf Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine"). Third, Appellants argue that the combination of Levit and Belmares would not teach "this claimed interrelationship between the thickness of the facing material, the roughness of the textured pattern and the roughness of the surface of the underlying base mat being such as not to create open spaces between the bottom surface of the facing material and the upper surface of the base .... " Appeal Br. 13-14. As explained below, we agree with the Examiner that this aspect is obvious in light of the combination of Levit and Belmares. Final Act. 4--5; Ans. 9-11. Claim 1 requires that the facing material have both a non-embossed thickness and textured pattern in the range of two to ten microns. Belmares teaches a thickness of about 0.01 to about 50 microns. Belmares i-fi-1 10-11. 7 Appeal2014-007408 Application 12/893, 179 This overlaps with the range of 2 to 10 microns in claim 1. Also, for the reasons explained below, we agree with the examiner that having textured pattern in this range would have been an obvious and routine design choice to maximize desired properties. Final Act. 4--5. Belmares teaches, with supporting test data, that it has good scrubbability. See, e.g., Belmares Abstract, i-fi-15, 51-55. The Specification teaches that the "open spaces" referenced by claim 1 create poor scrubbability. Spec. i120. Therefore, the technique of Belmares does not create the open spaces that claim 1 seeks to avoid. Belmares also teaches that a good "appearance" is desired for acoustical panels, and that its technique can impart porosity, smoothness, or an irregular surface to the panels. Belmares i-fi-f 14 and 44; see also Levit i1 66 ("[t]he wide range of Parker surface smoothness allows the production of aesthetically pleasing surfaces"). Belmares could be embossed or non- embossed because it is applied using any coating process. Ans. 10, Belmares i-f 19. Thus, it would have been obvious to a person of ordinary skill in the art to apply the coating and texturing in Belmares in a manner that is aesthetically pleasing including, for example, masking roughness of the base mat if such a masking were desired. Ans. 11; cf KSR Intern. Co., 550 U.S. at 421 ("[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp"). Appellants argue that Belmares would not mask surface roughness because its coatings can be applied "in a uniform way reproducing the surface very closely .... " Appeal Br. 11. Belmares, however, teaches that 8 Appeal2014-007408 Application 12/893, 179 reproducing the surface is optional. Belmares if 14 ("coating may cover the . . . surface in a uniform way" (emphasis added)). This option does not negate or outweigh the desire for aesthetically pleasing surfaces or Belmares' s teaching of techniques to achieve such surfaces. Thus, for the reasons explained above and the reasons expressed in the Examiner's Final Rejection and Answer, we sustain the Examiner's rejection of claims 1--4, 8, and 9. Rejection 2. The Examiner rejected claims 7 and 10-16 as obvious over Levit, Belmares, and Luszczak. Appellants argue non-obviousness for the reasons raised with respect to claim 1 (Appeal Br. 17), and we disagree with those arguments for the reasons discussed above. Appellants also argue that one of skill in the art would not apply Luszczak's textured pattern to a combination of Levit and Belmares because of differences in the technique of Luszczak. Id. We disagree. Luszczak teaches how to apply a "wide variety of textures" to tile. Luszczak, Title, Abstract. Levit, Belmares, and Luszczak are all directed to the same field of endeavor. All three references recognize the need for good surface appearance in these building materials. See, e.g., Belmares if 14 and 44; Levit if 66; Luszczak 1 :39--41 ("It is often desirable to impart a pleasing texture to such product for aesthetic reasons ... ). Luszczak's techniques provide the benefit of "natural appearance and randomness of the screeding procedure yet providing infinitely variable number of three-dimensional texture patterns." Luszczak 2:4--9; see also Final Act. 6. A person of ordinary skill in the art would recognize that the Luszczak's technique could improve Belmares' s in the same manner as taught in Luszczak. Improvement of Levit in this fashion is no more than predictable use of prior 9 Appeal2014-007408 Application 12/893, 179 art elements according to established functions. Thus, we agree with the Examiner that it would have been obvious to combine the ceiling tile of Levit as modified by Belmares with the texturing of Luszczak. Final Act. 6; cf KSR Intern. Co., 550 U.S. at 417, 421. Appellants make no other arguments with respect to claims 7 and 10- 12, and we therefore sustain the Examiner's rejection of those claims. Appellants separately argue that claims 13-16 are patentable because the cited references do not teach elements of those claims. Appeal Br. 17- 18. The Examiner explains how the references teach these elements. Final Act. 6. Appellants provide no reasoning or argument to the contrary. Weighing as a whole the Appellants' arguments, which are not supported by further explanation, that the elements are missing and the Examiner's specific and detailed findings, we determine that Appellants have not shown error. Thus, we adopt the Examiner's reasoning and sustain the Examiner's rejection of claims 13-16. Cf Ex parte Belinne, No. 2009-004693 (BPAI 2009) (informative). DECISION For the above reasons, we affirm the Examiner's rejections. In particular, we affirm the Examiner's rejection of claims 1--4, 8, and 9 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Levit and Belmares and affirm the Examiner's rejection of claims 7 and 10-16 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Levit, Belmares, and Luszczak. 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). 10 Appeal2014-007408 Application 12/893, 179 AFFIRMED 11