Ex Parte Caldas et al

Patent Trial and Appeal Board

Jun 15, 2018

14449824 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/449,824 08/01/2014
53609 7590 06/19/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Victor Caldas
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.
507427-CON 4005
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR CALDAS, DANIEL TREMBLAY, MARCUS HYDE,
and JEAN-FRANCOIS COURTOY
Appeal2017-007730
Application 14/449,824
Technology Center 1700
Before MARK NAGUMO, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 2-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed Aug. 1, 2014
("Spec."), the Final Office Action entered Oct. 16, 2015 ("Final Act."), the
Appeal Brief filed Mar. 15, 2016 ("Br."), and the Examiner's Answer
entered Sept. 23, 2016 ("Ans.").
Appeal2017-007730
Application 14/449,824
BACKGROUND
The subject matter on appeal relates to a method of producing a
polymeric surface covering or sheet, for example a floor covering. Spec.
,r 2. Claim 15 is illustrative and reproduced below from page 26 (Claims
Appendix) of the Appeal Brief ( disputed limitations italicized):
15. A method to produce a polymeric surface covering,
said method comprising the steps:
-providing an acid-based polymer, said acid-based
polymer being a resin having a melt flow index, measured at
190°C under 2.16 kg load, of between 10 and 60 g/10 min;
- providing a neutralizing agent selected from the group
consisting of an organic metallic compound, a metallic salt of a
fatty acid, and an ionomer, or a mixture thereof;
- providing a processing additive;
- mixing said acid-based polymer, said neutralizing agent
and said processing additive, to obtain a polymeric
composition;
- processing said polymeric composition to form a
polymeric sheet;
- granulating said polymeric sheet into polymeric
particles;
- depositing said polymeric particles directly on a band-
shape moving carrier of a belt press device;
- heating the polymeric particles on said band-shape
. .
movmg earner;
- pressing under heat the polymeric particles to form the
polymeric surface covering.
Claim 16 is the other independent claim in this Appeal and similar to
claim 15 in that it also includes the disputed steps of providing a resin
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Application 14/449,824
having the same melt flow index and providing a processing additive. Id. at
26-27.
REJECTIONS ON APPEAL
1. Claims 2-25 stand rejected on the ground of non-statutory double
patenting over claim 1 of Caldas (US 8,945,337 B2, issued Feb. 3, 2015) in
view of Smith (US 3,039,137, issued June 19, 1962) and Oshilaja (US
7,175,904 B2, issued Feb. 13, 2007) and in further view of Wood (US
5,985,772, issued Nov. 16, 1999).
2. Claims 8, 9, 13, 15, 16, 23, and 24 stand rejected under 35 U.S.C.
§ I03(a) over Smith and Oshilaja, in further view of Wood.
3. Claims 2, 4, 17, and 19 stand rejected under 35 U.S.C. § I03(a)
over Smith, Oshilaja, and Wood as applied to the rejection of claims 15 and
16 above, and in further view of Nieminen (US 7,052,771 B2, issued May
30, 2006).
4. Claims 3, 5, 18, and 20 stand rejected under 35 U.S.C. § I03(a)
over Smith, Oshilaja, and Wood as applied to the rejection of claims 15 and
16 above, and in further view of Schenck (US 4,379,190, issued Apr. 5,
1983).
5. Claims 6, 7, 21, and 22 stand rejected under 35 U.S.C. § I03(a)
over Smith, Oshilaja, and Wood as applied to the rejection of claims 15 and
16 above, and in further view of Tian (US 2008/0081882 Al, published Apr.
3, 2008).
6. Claims 10 and 25 stand rejected under 35 U.S.C. § I03(a) over
Smith, Oshilaja, and Wood as applied to the rejection of claims 15 and 16
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Application 14/449,824
above, and in further view of Wehrli (US 3,767,344, issued Oct. 23, 1973)
and Vandevijver (US 5,650,468, issued July 22, 1997).
7. Claims 10 and 25 stand rejected under 35 U.S.C. § I03(a) over
Smith, Oshilaja, and Wood as applied to the rejection of claims 15 and 16
above, and in further view of Slosberg (US 3,161,556, issued Dec. 15,
1964).
8. Claim 12 stands rejected under 35 U.S.C. § I03(a) over Smith,
Oshilaja, and Wood as applied to the rejection of claims 15 and 16 above,
and in further view of Harwood (US 5,728,476, issued Mar. 17, 1998).
9. Claim 14 stands rejected under 35 U.S.C. § I03(a) over Smith,
Oshilaja, and Wood as applied to the rejection of claims 15 and 16 above,
and in further view of Reisdorf (US 2004/0197522 Al, published Oct. 7,
2004).
10. Claims 8, 9, 13, 15, 16, 23, and 24 stand rejected under 35 U.S.C.
§ I03(a) over Oshilaja, in view of Smith, and in further view of Wood.
11. Claims 2, 4, 17, and 19 stand rejected under 35 U.S.C. § I03(a)
over Oshilaja, in view of Smith and Wood as applied to the rejection of
claims 15 and 16 above, and in further view of Nieminen.
12. Claims 3, 5, 18, and 20 stand rejected under 35 U.S.C. § I03(a)
over Oshilaja, in view of Smith and Wood as applied to the rejection of
claims 15 and 16 above, and in further view of Schenck.
13. Claims 6, 7, 21, and 22 stand rejected under 35 U.S.C. § I03(a)
over Oshilaja, in view of Smith and Wood as applied to the rejection of
claims 15 and 16 above, and in further view of Tian.
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Application 14/449,824
14. Claims 10 and 25 stand rejected under 35 U.S.C. § 103(a) over
Oshilaja, in view of Smith and Wood as applied to the rejection of claims 15
and 16 above, and in further view of Wehrli and Vandevijver.
15. Claims 10 and 25 stand rejected under 35 U.S.C. § 103(a) over
Oshilaja, in view of Smith and Wood as applied to the rejection of claims 15
and 16 above, and in further view of Slosberg.
16. Claim 12 stands rejected under 35 U.S.C. § 103(a) over Oshilaja,
in view of Smith and Wood as applied to the rejection of claims 15 and 16
above, and in further view of Harwood.
17. Claim 14 stands rejected under 35 U.S.C. § 103(a) over Oshilaja,
in view of Smith and Wood as applied to the rejection of claims 15 and 16
above, and in further view of Reisdorf.
ANALYSIS
Appellants2 present arguments concerning Rejections 1, 2, 5, 10, and
13 and argue independent claims 15 and 16 together. Br. 7-22. Their
arguments are directed principally towards the Examiner's reliance on Smith
for disclosing an acid-based polymer, Wood for disclosing tailoring a melt
index for thermoplastic processing, Oshilaja for disclosing a processing
additive during the formation of a floor covering, and Tien for disclosing
linseed oil, or other natural oils as processing additives.
In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), claims 2-14 and 16-
25 will stand or fall together with claim 15 under the obviousness-type
double patenting rejection and, in view of the lack of arguments directed to
2 Tarkett, Inc. is identified in the Appeal Brief as the real party in interest.
Br. 2.
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subsidiary rejections under 35 U.S.C. § 103(a); claims 2-5, 8-10, 12-14,
16-20, and 23-25 will stand or fall together with independent claim 15; and
claims 7, 21, and 22 will stand or fall together with claim 6.
After review of the cited evidence in the appeal record and the
opposing positions of Appellants and the Examiner, we determine that
Appellants have not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-11;
Ans. 2-7.
Rejections 1, 2, and 10
The Examiner's rejections of independent claims 15 and 16 under
both 35 U.S.C. § 103(a) and obviousness-type double patenting are based on
the Examiner's findings that ( 1) Smith teaches making plastic flooring
where granular vinyl material is deposited on a band moving carrier of a belt
press and pressed under heat to form flooring, (2) Oshilaja teaches replacing
vinyl based flooring materials with an acid-based polymer and producing a
polymeric surface covering by providing a terpolymer comprising an acid-
based polymer, a co-polymer comprising a metallic salt, and a processing
additive, and (3) Wood teaches melt index is used to tailor polymers for
thermoplastic processing. Final Act. 3-9; Ans. 2-9. The Examiner
determines that it would have been obvious to modify Smith and Oshilaja
such that the acid-based polymer has the claimed melt flow index because
doing so would allow the user to tailor the product to the user needs as
taught by Wood and create successful barrier coatings. Final Act. 5, 7; Ans.
5.
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Appellants contend that the Examiner's rejections of claims 15 and 16
are in error because "none of Smith, Oshilaja, or Wood disclose or suggest
an acid-based polymer having the claimed melt flow index properties." Br.
22 (Rejection 1); see also Br. 12-13 (Rejection 2); Br. 18 (Rejection 10).
Appellants additionally argue that the Examiner's combination of Oshilaja
with Smith is in error because Oshilaja discloses an additive that is a binder
or adhesive in the context of an embodiment that uses a backing, and,
therefore, there is no motivation to use a binder or adhesive processing
additive where the backing substrate is absent and polymeric particles are
deposited "directly on a band-shape moving carrier of a belt press device" as
recited in claim 15. Br. 7-11 (Rejection 2), 17 (Rejection 10).
We are not persuaded by Appellants that the Examiner reversibly
erred in rejecting independent claims 15 and 16. The Examiner's finding
(Ans. 25) that Oshilaja discloses optional additives other than binders, i.e.
stabilizers or plasticizers, for use in its embodiment that does not include a
substrate is supported by the record (Oshilaja 4: 18-22). The Examiner's
finding (Ans. 25) that Smith teaches adding the polymeric composition
directly to the band-shape moving carrier in granular form is also supported
by the record (Smith 1:10-17, 2:59-3:18, 4:44--46, Figs. 1, 3).
Regarding the Examiner's finding (Final Act. 7) that melt flow index
of thermoplastic polymers generally can be tailored, the full text of the cited
portion of Wood follows:
The characteristics in the polymer thermoplastics that lead to
successful barrier film formation are as follows. Skilled
artisans manufacturing thermoplastic polymers have learned to
tailor the polymer material for thermoplastic processing and
particular end use application by controlling molecular weight
( the melt index has been selected by the thermoplastic industry
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Application 14/449,824
as a measure of molecular weight-melt index is inversely
proportional to molecular weight, density and crystallinity).
Wood 15:6-15. The Examiner determines that it would have been obvious
to modify the acid based polymer of Smith and Oshilaja to tailor the melt
flow index to allow the user to create successful barrier coatings as taught by
Wood. Final Act. 7. In response to Appellants' arguments, the Examiner
further explains that melt flow index is a result-effective variable and that
the claimed range would have been optimizable by one having ordinary skill
in the art depending on the desired properties. Ans. 26.
In In re Aller, 220 F.2d 454, 456 (CCPA 1955), the court set forth the
rule that the discovery of an optimum value of a variable in a known process
is normally obvious ( experimentation to find optimum conditions was "no
more than the application of the expected skill of the chemical engineer.").
See also In re Boesch, 617 F.2d 272,276 (CCPA 1980). Exceptions to this
general rule are (1) where the results of optimizing a variable were
unexpectedly good and (2) where the parameter optimized was not
recognized to be a result effective variable. In re Antonie, 559 F.2d 618, 620
(CCPA 1977). A variable has been held not a result-effective variable where
there was no teaching of the relationship claimed and "no evidence of this
relationship in the prior art." In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (quoting In re Yates, 663 F.2d 1054, 1056-57 (CCPA
1981)). However, "the prior art need not provide the exact method of
optimization for the variable to be result-effective. A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective." Id. (holding groove dimensions of a polishing pad
result-effective variables rendering their optimization within the grasp of one
of ordinary skill in the art.).
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Applying the principles set forth in Aller and its progeny to the cited
record in this appeal, we find the preponderance of the evidence supports the
Examiner's rejection of claim 15. Appellants do not direct us to any
objective evidence of non-obviousness nor do Appellants assert criticality of
the melt flow index range claimed. Paragraph 34 of the Specification simply
describes the melt flow index of the resin in the same terms recited in claim
15 and further includes a preferred range of "around 10 to around 3 5 g/ 10
min at 190 QC" without any discussion of criticality of the ranges. Spec.
,r 34. Although Appellants assert that the teachings of Wood are limited to
polyolefins, Appellants do not direct us to any evidence to support their
position that acid-based polymers differ in any relevant manner from other
thermoplastic polymers such as polyolefins and, thus, do not persuade us
that the Examiner's determining it would have been obvious to modify the
melt flow index to achieve the desired properties would not also reasonably
be expected to be within the claimed range.
It is noteworthy that, even though it specifies polyolefins without the
temperature and load conditions under which the measurement is made,
Wood discloses a melt flow index range of O .3 to 20 grams/IO mins. that
overlaps the range recited in claim 15. Wood 15 :22-23. In addition, Wood
teaches that "[a] variety of thermoplastic materials are used in making film
and sheet products" (Wood 15: 3 5-3 6) and lists poly( ethylene-co-acrylic
acid) as a useful material for making film and sheet products (Wood 15:39).
For the above reasons, and in view of the arguments presented, we
discern no reversible error in the Examiner's conclusion that the subject
matter of claims 15 and 16 is unpatentable under 35 U.S.C. § 103(a) and
under the judicial doctrine of obviousness-type double patenting.
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Re} ections 5 and 13
The Examiner finds that claims 6, 7, 21, and 22 would have been
obvious in view of the combination of Smith, Oshilaja, and Wood and
further in view of Tian's teaching of processing additives for flooring
products including linseed and other natural oils would result in dynamic
vulcanization. Final Act. 11-12, 20 (citing Tian ,r,r 31-32).
Appellants do not dispute that Tian discloses linseed and other natural
oils as processing additives for flooring products or that such processing
additives results in dynamic vulcanization. Instead, Appellants argue that
the Examiner erred because "a mineral oil, a vegetable oil or a synthetic oil"
as recited in claims 6 and 21 or a processing additive "selected from the
group consisting of ... linseed oil" as recited in claims 7 and 22 would not
be substitutable for the additive of Oshilaja because the claimed additives do
not include an additive for holding polymer flakes on a backing substrate as
taught by Oshilaja. Br. 15, 20. Appellants additionally argue that
[t]he presently-claimed methods do not ... recite an epoxidized
oil, which is an oil that has been modified to include one or
more cyclic ethers in a three-atom ring. Thus, the epoxidized
oils disclosed by Tian are distinct from the materials recited ...
and do not disclose or suggest the recited materials.
Id. at 20.
Appellants' arguments do not persuade us of reversible error in the
rejection of claims 6, 7, 21, and 22. As discussed above in connection with
the rejection of claim 15, Oshilaja's disclosure is not limited to additives that
function as binders. Ans. 25; Oshilaja 4: 18-22. Regarding the additives
specified in dependent claims 6, 7, 21, and 22, Appellants do not adequately
explain why epoxidized linseed or other vegetable oils are excluded by the
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claims. In the absence of any meaningful distinction over the teachings of
Tian, we are not persuaded of reversible error by the Examiner.
For the above reasons, and in view of the arguments presented, we
discern no reversible error in the Examiner's conclusion that the subject
matter of claims 6, 7, 21, and 22 would have been obvious in view of the
cited prior art. We affirm the Examiner's rejections of claims 6, 7, 21, and
22 under the rationales set forth in Rejections 5 and 13.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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