MP Global Products, L.L.C.

Patent Trials and Appeals Board

Jan 25, 2022

2022001027 (P.T.A.B. Jan. 25, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 17/086,231 10/30/2020 Alan B. COLLISON 5094-000022-US 1728 27572 7590 01/25/2022 HARNESS DICKEY (TROY) 5445 Corporate Dr. Suite 200 Troy, MI 48098 EXAMINER PLESZCZYNSKA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 01/25/2022 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): sto-ptomail@hdp.com troymailroom@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN B. COLLISON Appeal 2022-001027 Application 17/086,231 Technology Center 1700 Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 I. BACKGROUND Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-20, which constitute all the claims 1 In our Decision, we refer to the Specification (“Spec.”) of Application 17/086,231 filed Oct. 30, 2020 (“the ’231 App.”); the Final Office Action dated Mar. 25, 2021 (“Final Act.”); the Appeal Brief filed Aug. 24, 2021 (“Appeal Br.”); the Examiner’s Answer dated Sept. 30, 2021 (“Ans.”); and the Reply Brief filed Nov. 30, 2021 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies MP Global Products, L.L.C. as the real party in interest. Appeal Br. 3. Appeal 2022-001027 Application 17/086,231 2 pending in this application. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The invention relates to a floor underlayment comprising a fiber pad and a vapor barrier having a matrix of holes extending through the top and bottom surfaces. Claim 1, reproduced below from the Claims Appendix, illustrates the claimed subject matter: 1. A floor underlayment comprising: a fiber pad including reinforcement fibers and thermoplastic binder fibers binding the reinforcement fibers together; and a vapor barrier layer having a bottom surface attached to the fiber pad, a top surface opposite of the bottom surface, and a matrix of holes extending through the top and bottom surfaces thereof, wherein the holes are configured to allow moisture to flow through the holes in a downward direction from the top surface of the vapor barrier layer to the bottom surface of the vapor barrier layer while inhibiting water flow through the holes in an upward direction opposite of the downward direction. II. REFERENCES The Examiner relies on the following prior art in rejecting the claims: Name Reference Date Grah et al. (“Grah”) US 2006/0216471 A1 Sept. 28, 2006 Mehta et al. (“Mehta”) US 2006/0286347 A1 Dec. 21, 2006 Collison et al. (“Collison”) US 2011/0154762 A1 June 30, 2011 Orologio US 2019/0134941 A1 May 9, 2019 Appeal 2022-001027 Application 17/086,231 3 III. REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103: 1. Claims 1-6, 8, 11-20 over Collison in view of Grah; 2. Claim 7 over Collison in view of Grah, and further in view of Orologio; and 3. Claims 9 and 10 over Collison in view of Grah, and further in view of Mehta. IV. DISCUSSION A. Obviousness of claim1-6, 8, and 11-20 over Collison in view of Grah Appellant argues the claims in this rejection as a group. Appeal Br. 8- 13. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Examiner finds that Collison discloses most of the limitations of claim 1, including a vapor barrier layer having a bottom surface attached to a fiber pad, but is silent with respect to a matrix of holes extending through the top and bottom surfaces of the vapor barrier layer. Final Act. 2. The Examiner finds that Grah discloses a floor underlayment that includes a vapor barrier layer (element 14) having a top surface and a bottom surface, a top surface opposite the bottom surface, a bottom surface attached to a backing layer, the vapor barrier layer having a matrix of holes extending through the top and bottom surfaces, wherein the holes are configured to allow moisture to flow through the holes while inhibiting water condensation within the laminate. Id. at 2-3. The Examiner finds that the references imply that the holes inhibit water flow through the holes in an upward direction opposite the downward direction. Id. at 3. The Examiner Appeal 2022-001027 Application 17/086,231 4 concludes that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the vapor barrier layer of Collison with a matrix of holes as disclosed in Grah to provide for transmission of water vapor through the underlayment. Id. (citing Grah ¶ 33). Appellant disputes the Examiner’s finding that the vapor barrier layer of claim 1 reads on Grah’s element 14. Appeal Br. 9-11. Appellant argues that element 14 of Grah is an acoustic layer that is part of the floor laminate, which further includes a core layer, a decorative layer, and a wear layer. Id. at 9-10. Appellant argues that the floor underlayment disclosed in Grah is separate from the laminate-and therefore the acoustic layer-and lies between the floor laminate and the subfloor. Id. at 10. Appellant argues that Grah does not teach forming holes or apertures in a vapor barrier layer of a floor underlayment. Id. Appellant argues that were one of ordinary skill in the art to have modified Collison’s disclosure with Grah’s acoustic layer, the result would have been an acoustic layer with apertures in Collison’s floor surface layer, and not part of the insulative floor pad (underlayment). Id. at 11. Appellant contends that Grah does not teach modifying a vapor barrier layer of Collison’s underlayment to include holes. Id. Appellant’s arguments are persuasive of reversible error in the obviousness rejections. Representative figures from Collison and Grah, reproduced below: Appeal 2022-001027 Application 17/086,231 5 Collison FIG. 4 shows a cross section view of floor structure 212 formed of subfloor 214, surface layer 216, and insulative floor pad 90 disposed between subfloor 214 and surface layer 216. Collison ¶ 37. Insulative floor pad 90 can have a dependent vapor barrier layer 206 that is adjacent to subfloor 214. Id., ¶¶ 33, 37, claims 1-18. Grah FIG. 4 is a representational side elevation cross section view of floor system 40. Grah ¶ 9. Laminate 30 comprises wear layer 18, decorative layer 16, acoustic layer 14, core layer 12, and backing layer 20. Id., ¶ 11. Laminate 30 rests on top of underlayment 44, which rests on top of subfloor 46. Id., ¶ 133. Acoustic layer 14 may include apertures 28. Id., ¶ 11. Appeal 2022-001027 Application 17/086,231 6 Collison discloses a vapor barrier layer that is between the insulative floor pad and the subfloor, i.e., adjacent to the subfloor that prevents travel of water vapor through the textile pads. Collison FIG. 4, ¶¶ 33, 37, claims 1- 18. This is not consistent with the Examiner’s finding that Collison includes a vapor barrier layer having a bottom surface attached to a fiber pad. See Final Act. 2. Grah discloses backing layer 20, which may be adhered to the bottom side of core layer 12. Id., FIG. 20, ¶ 113. Grah teaches that backing layer 20 helps seal core layer 12 to reduce the negative effects from moisture absorption into core layer. Id. Therefore, Grah’s backing layer 20 prevents travel of water vapor upwards toward the surface. Grah’s backing layer 20 has a bottom surface adjacent underlayment 44. Id. Grah’s backing layer 20, although not part of floor underlayment 44, is adjacent to it. Grah discloses acoustic layer 14 is part of the laminate structure, located superficial to underlayment 44. Grah, FIG. 4, ¶¶ 11, 33, 133. Acoustic layer 14 may have a thickness and composition effective to reduce the intensity of the reflective impact sound in certain ranges in comparison to the impact sound pitch of a similar laminate lacking the acoustic layer or layers. Id., ¶ 15. The laminate comprising the one or more acoustic layers may better mimic the reflective impact sound of a solid oak hardwood floor compared to a similar laminate lacking the acoustic layer or layers. Id. Acoustic layer 14 may also facilitate the transmission of water vapor through the apertures so that water vapor may transmit through laminate 30 comprising the acoustic layer rather than accumulate or condense within the laminate and possibly deteriorate the performance and integrity of the laminate. Id., ¶ 33. Appeal 2022-001027 Application 17/086,231 7 “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Neither will mere conclusory statements sustain an obviousness rejection; “instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Examiner must provide an adequate reason for a person of ordinary skill in the art at the time the invention to have modified the reference or combination of references to arrive at the claimed invention. See KSR, 550 U.S. at 418 (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). In the absence of such an explanation, the rejection must be reversed. Kahn, 441 F.3d at 988. Contrary to the Examiner’s finding, Grah’s acoustic layer 14 is not part of floor underlayment 44, or even near to it. See FinalAct. 2. Core layer 12 and backing layer 20 are between acoustic layer 14 and underlayment 44. One of ordinary skill in the art would have considered Grah’s backing layer 20, not acoustic layer 14, as applying to Collision’s vapor barrier layer. Thus, the Examiner provides no motivation for a skilled artisan to substitute Grah’s acoustic layer 14 for Collison’s vapor barrier layer. The requisite “articulated reasoning with some rational underpinning” (see Kahn, 441 F.3d at 988) fails, as it is based on an incorrect interpretation of Grah’s disclosures. The reasoning for substituting Grah’s acoustic layer into Collison’s structure appears to be proposed out of hindsight. See Metalcraft of Appeal 2022-001027 Application 17/086,231 8 Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). A preponderance of the evidence supports Appellant’s position of nonobviousness. Therefore, we do not sustain the Examiner’s rejection of claim 1 as obvious over Collison in view of Grah. We also do not sustain the rejection of claims 2-6, 8, and 11-20 based on the same evidence. See 37 C.F.R. § 42.37(c)(1)(iv) (2019). B. Obviousness of claim 7 over Collison in view of Grah, and further in view of Orologio The Examiner relies on the combination of Collison and Grah for the rejection of claim 7, which depends from claim 1. Because we find, supra, that the combined references do not render claim 1 obvious, we do not sustain the rejection of claim 7 over the same references and Orologio. C. Obviousness of Claims 9 and 10 over Collison in view of Grah, and further in view of Mehta The Examiner relies on the combination of Collison and Grah for the rejection of claims 9 and 10, which depend directly or indirectly from claim 1. Because we find, supra, that the combined references do not render claim 1 obvious, we do not sustain the rejection of claims 9 and 10 7 over the same references and Mehta. CONCLUSION The Examiner’s decision to reject claims 1-20 is not sustained. More specifically, Appeal 2022-001027 Application 17/086,231 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 8, 11-20 103 Collison, Grah 1-6, 8, 11- 20 7 103 Collison, Grah, Orologio 7 9, 10 103 Collison, Grah Mehta 9, 10 Overall Outcome 1-20 REVERSED