ARMSTRONG WORLD INDUSTRIES, INC.

Patent Trials and Appeals Board

Mar 27, 2020

14678163 - (D) (P.T.A.B. Mar. 27, 2020)

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.
14/678,163 04/03/2015 DONG TIAN 1456-00-US-01-AFP 8411
138961 7590 03/27/2020
Budzyn IP Law, LLC
Christina Geerlof
120 Eagle Rock Ave, Suite 328
East Hanover, NJ 07936
EXAMINER
SAWDON, ALICIA JANE
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
afp_patents@armstrongflooring.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONG TIAN and JEFFREY S. ROSS

Appeal 2019-001085
Application 14/678,163
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MICHAEL G. McMANUS, and
SHELDON M. McGEE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8 and 11–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as AFI
Licensing LLC. Appeal Br. 3.
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Application 14/678,163

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Appellant’s invention is directed to flooring systems comprising an
abrasion resistant coating (Spec. ¶ 1; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A floor covering comprising
a substrate, and
a coating layer comprising:
a coating matrix formed from a curable coating composition
comprising a binder, wherein the coating matrix has an average coating
matrix thickness; and
diamond particles that have an average particle size and a
narrow distribution of particle sizes, wherein the average particle size
is about 2 μm to about 50 μm and the narrow distribution of particle
sizes has a standard deviation less than 35% of the average particle
size;
wherein a ratio of the average coating matrix thickness to average particle
size ranges from 0.6:1 to 2:1.

Appellant appeals the following rejections:
1. Claims 1–8 and 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Pryor (US 5,492,769, issued Feb. 20, 1996) in
view of Chen (US 6,291,078 B1, issued Sept. 18, 2001).
2. Claims 11–17 are rejected under 35 U.S.C. § 103 as unpatentable
over Pryor in view of Chen and Sung (US 2012/0260582 A1,
published Oct. 18, 2012).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the rejection of
claims 1 and 18 over Pryor in view of Chen are located on pages 2 to 5 and 8
to 11 of the Final Action. The Examiner’s findings and conclusions
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regarding the rejection of claim 11 over Pryor in view of Chen and Sung are
located on pages 12 to 15.
Appellant argues that claims 1, 11, and 18 require a substrate and a
coating layer (Appeal Br. 8). Appellant contends that Pryor teaches away
from using a coating layer (Appeal Br. 8). Appellant argues that Pryor
teaches that applying coatings to a substrate to provide scratch resistance has
been problematic because the coating may not adhere well to the substrate
and the films may craze over time (Appeal Br. 11). Appellant argues that
Pryor teaches to embed diamond particles into the surface of a substrate to
overcome these shortcomings with coatings and to provide wear resistant
articles without significantly increasing the weight or external dimensions of
the plastic material or articles (Appeal Br. 10–11). Appellant contends that
Pryor disavows the use of a coating to impart scratch or wear resistance to a
substrate (Appeal Br. 12). Appellant argues that Pryor’s method of
thermally or chemically softening the substrate to embed diamond particles
into the softened substrate cannot form a coating layer formed from a
curable coating composition on the substrate (Appeal Br. 14–15). Appellant
argues that treating Pryor’s diamond particle embedded substrate as a
coating layer which may be applied to another substrate is contrary to
Pryor’s teachings and would render Pryor unsatisfactory for its intended
purpose (Appeal. Br. 18–19).
The Examiner finds that the broadest reasonable interpretation of
coating layer includes “a layer or covering of something else” (Ans. 19).
Based on this claim construction, the Examiner finds that a substrate, when
combined with other layers, is a coating layer (Ans. 19). The Examiner
finds that Pryor’s use of the diamond-embedded substrate in windows,
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headlights and taillights, optical components, viewing screens, etc. would
have met the claim (Ans. 19). The Examiner finds that the articles disclosed
by Pryor are known to include several layers of components such that adding
another substrate layer would not have changed Pryor’s principle of
operation (Ans. 19). The Examiner maintains that the outer layer would still
have the diamond-particles embedded therein (Ans. 19). The Examiner
finds that Appellant has not argued that the substrate needs to be a different
material than the curable coating composition of the coating layer (Ans. 20).
The Examiner finds that Pryor’s final product includes abrasion resistant
particles embedded into the surface of a thermoplastic substrate (Ans. 19–
20). The Examiner does not find a structural difference between Pryor’s
product that has the diamond-particles embedded in the surface of a
thermoplastic material and coating layer of curable coating composition and
particles applied to substrate in a separate step (Ans. 20).
Based on the findings of the Examiner and Appellant’s contentions,
the primary issue in the case is claim interpretation. Claim 1 recites a floor
covering comprising a substrate and a coating layer. The coating layer in
claim 1 further comprises a coating matrix of curable coating composition
comprising a binder and diamond particles. By the limitations in the claim,
a coating layer and substrate are required. The Specification describes that
the floor covering has a substrate 2 and coating layer 3 (Spec. ¶ 47). The
floor covering (i.e., the end product) has a coating layer where the bottom
surface of the coating layer 12 abuts the top surface 4 of the substrate 2 or
the top surface of an underlying coating layer (Spec. ¶ 47, Fig. 1). In other
words, the claims and Specification are clear that two distinct layers are
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required wherein one layer is a coating layer made of a curable coating
composition and diamond particles and a substrate.
With this claim construction in mind, we find that the Examiner has
not shown that Pryor’s diamond particle-embedded substrate is structurally
the same as the claimed floor covering. Pryor’s layer of diamond particles
embedded in the surface of the substrate does not include a layer of curable
coating composition in addition to the substrate material. Pryor teaches the
colloid or sol used to apply the diamond particles preferably is
polymethylmethacrylate and water (col. 8, ll. 3–5). Pryor further teaches
that it is preferred to have the carrier evaporate or otherwise be removed
from the substrate surface prior to embedding the diamond particles into the
surface layer of the substrate (col. 8, ll. 5–10). In other words, no coating
layer composed of curable coating composition and diamond particles is
formed in Pryor.
The Examiner posits that Pryor’s diamond embedded substrate
constitutes a coating because it is part of the articles (e.g., windows,
headlights, etc.) made by Pryor which are known to be multilayer (Ans. 19).
Pryor teaches:
Thus, the present invention is especially useful in the manufacture of
scratch resistant and transparent plastic and glass articles for use as
windows, lenses, automotive headlights and taillights, optical
components, viewing screens (i.e., computer and television screens
and conventional or microwave oven windows) and like articles.

(Pryor, col. 9, ll. 24–30) (emphasis added).
In the context of Pryor’s disclosure, this portion teaches that the
particle-embedded plastic or glass material may be used as the articles (e.g.,
windows, lenses, automotive headlights, etc.). In other words, Pryor’s
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article, itself, would be used as part of the article. Although the Examiner
finds that Pryor is capable of functioning as a floor covering (i.e., an
intended use), the Examiner’s rejection based on Pryor, alone, is based on
structural similarities (Final Act. 3). As noted above, Pryor differs from the
claimed invention in that it does not include both a substrate and a coating
layer having a curable coating composition with diamond particles therein.
Stated differently, if Pryor’s article is considered to be a coating with
embedded particles then it is missing a substrate. If Pryor’s article is
considered to be a substrate then it is missing a coating layer composed of a
curable coating composition and diamond particles.
The Examiner alternatively finds that Chen would have suggested
using Pryor’s particle-embedded plastic or glass as a coating in Chen’s floor
covering (Final Act. 3). The Examiner finds that Chen teaches forming a
wear resistant coating on a resilient support surface used as a floor covering
(Final Act. 3 to 4). The Examiner concludes that it would have been
obvious for “the scratch resistant coating of Pryor to be applied to a resilient
support surface of a floor covering, as taught by Chen, in order to achieve a
durable and abrasion resistant product as taught by Chen (Final Act. 4).
As noted above, Pryor’s particle-embedded substrate is not a coating
as the Examiner erroneously finds. Rather, Pryor’s particle-embedded
substrate is used as other articles such as windows. Pryor’s column 2, lines
10–22 cited by the Examiner as suggesting the use of the particle-embedded
plastic or glass as a coating for a substrate is taken out of context. That
portion of Pryor teaches the goal of Pryor is to form new protective surfaces
or coatings for plastic, glass, metal and composite materials. In other words,
Pryor’s column 2 disclosure teaches that coatings (i.e., the embedded
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particles) are formed on a substrate to protect the substrate. That does not
suggest that Pryor’s particle embedded glass or plastic is considered to be a
coating that should be applied to another substrate.
Based on Pryor’s disclosures, we find that the Examiner has not
established that a person of ordinary skill in the art would have combined
Pryor’s particle-embedded glass or plastic with a resilient support surface as
taught by Chen. On this record, we reverse the Examiner’s § 103 rejection
of claims 1–8 and 18–20 over Pryor in view of Chen.
Regarding the § 103 rejection over Pryor in view of Chen and Sung,
the Examiner relies on the same faulty combination of Pryor and Chen. We,
therefore, reverse the § 103 rejection of claims 11–17 over Pryor in view of
Chen and Sung for the same reasons.

CONCLUSION
In summary:
Claims
Rejected
Basis References Affirmed Reversed
1–8, 18–20 § 103 Pryor, Chen 1–8, 18–20
11–17 § 103 Pryor, Chen, Sung 11–17
1–8, 11–20

REVERSED