Ex Parte Erasmus

Patent Trial and Appeal Board

Dec 7, 2018

13811146 (P.T.A.B. Dec. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/811,146 03/22/2013
51414 7590 12/11/2018
GOODWIN PROCTER LLP
PATENT ADMINISTRATOR
100 Northern A venue
BOSTON, MA 02210
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Duonne Erasmus
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.
MJP-002 2902
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
12/11/2018 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):
PA TENTBOS@GOODWINPROCTER.COM
PSOUSA-ATWOOD@GOODWINPROCTER.COM
GLENN .WILLIAMS@GOODWINPROCTER.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DUONNE ERASMUS
Appeal2017-002789
Application 13/811, 146
Technology Center 1700
Before, KAREN M. HASTINGS, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 1-7 under 35 U.S.C. § 103(a) over the
combined prior art of Higgins2 and Sieber3. The Examiner also
provisionally rejects various claims on the grounds of obviousness type
double patenting (Final Act. 3-7).
1 The real party in interest is stated to be Instafibre Ltd. (Appeal Br. 3).
Appellant also identifies a related case on appeal, U.S. Application No.
13/811,116 (Appeal 2017-002787) (id.)
2U.S. Pat. Pub. No. 2007/0275207 Al, published November 29, 2007.
("Higgins").
3 U.S. Pat. Pub. No. 2005/0252132 Al, published November 17, 2005.
("Sieber").
Appeal2017-002789
Application 13/811, 146
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight key limitation in dispute):
1. A product, generally in sheet form, and suitable for use as an
underlay for a floor covering intended for permanent
installation, the product comprising:
a layer comprising crumb-rubber material, and having a
first side and a second side;
scrim material bonded to at least one of said first and
second sides; and
a coating of a high-grab pressure sensitive adhesive
applied to at least part of an exposed surf ace of the scrim
material,
wherein the high-grab adhesive comprises an adhesive
having, after 24 hours adhesive binding dwell-time, a 90° peel
adhesion at 300 mm/minute, as measured by FINAT Test
Method No: 2, of between 4.35 and 21.76Newtons/25 mm
width at room temperature (23 °C ± 1 °C) and at a relative
humidity of 50% ± 5%.
Appeal Br. 4 (Claims Appendix).
At the outset, we note that the Examiner's provisional nonstatutory
double patenting rejections based on Application Nos. 14/514,034 and
14/514,091 (Ans. 3---6) are moot, as these applications have been abandoned.
The Examiner's provisional rejection of claims 1, 2, 4, and 5 on the
ground of nonstatutory double patenting as being unpatentable over claims
1--4 of copending Application No. 13/811,116 (which is the subject matter of
related Appeal 2017-002787) will be addressed below.
2
Appeal2017-002789
Application 13/811, 146
ANALYSIS
Upon consideration of the evidence of record and each of Appellant's
contentions as set forth in the Appeal Brief, we determine that Appellant has
not demonstrated reversible error in the Examiner's rejections. We sustain
the rejection for essentially the reasons expressed by the Examiner in the
Final Office Action and the Answer. We add the following for emphasis.
"[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398,418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--65 (Fed.
Cir. 1992) (a reference stands for all of the specific teachings thereof as well
as the inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
Appellant's arguments are mainly directed to the lack of any explicit
disclosure in Higgins or Sieber for the specific peel adhesion property
recited (Appeal Br. 8-12). A preponderance of the evidence supports the
Examiner's finding that Sieber teaches and suggests a wide range of peel
adhesion properties is applicable for securing carpet (or underlay) to a floor
substrate (e.g. Ans. 7, 11, 13), thus Sieber demonstrates that peel adhesion is
a result effective variable (Ans. 15; e.g., Sieber ,r,r 22-28, claim 19). A
"recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective." In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012).
Indeed, Appellant also admits it was known in the prior art to have a
crumb rubber underlay with scrim material and a pressure sensitive
3
Appeal2017-002789
Application 13/811, 146
adhesive, albeit that the prior art underlay had a "problem" "in the choice of
adhesive" (Spec. 2, 1. 20; also Spec. 2:4--20; Spec. 5:28-30 ("Crumb rubber
underlays bonded to scrim are well known")). 4 One of ordinary skill in the
art would have inferred from the teachings of Sieber that peel adhesion
would have been a result effective variable for securing the admitted prior
art underlay as well as carpet per se to flooring.
Appellant's argument that a different standard was used to test the
peel adhesion property of the pressure sensitive adhesive in Sieber (DIN
1939 versus the claimed FIN AT test method) is not persuasive of error in the
Examiner's obviousness determination. As indicated by the prior art and the
Examiner, it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for result-effective parameters,
such as the peel adhesion property exemplified in Sieber. In re Boesch, 617
F.2d 272,276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (where the difference between the claimed invention and the prior art
is some range, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results).
Thus, the use of as little as a small amount of adhesive having the claimed
property ( claim 1 merely requires the low grab adhesive "comprises an
adhesive" having the claimed property) or, even all of the adhesive having
4 See, Constant v. Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570 (Fed.
Cir. 1988) ("A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness."); In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes). Thus even assuming Appellant's
arguments regarding any deficiencies of the structure of Higgins had any
merit, these arguments are moot in light of the admitted prior art product.
4
Appeal2017-002789
Application 13/811, 146
the claimed property, on the carpet tile product of Higgins and/or the
admitted prior art underlay material, is deemed within the level of ordinary
skill in the art. Notably, Appellant admits that adhesives useful in the
invention are "commercially available" (Spec. 7:23-25).
In summary, on this record, Appellant has not shown reversible error
in the Examiner's determination that one of ordinary skill in the art, using no
more than ordinary creativity, would have used commercially known
pressure sensitive adhesives having the recited peel adhesion property as
Sieber suggests that this property is a result effective variable for securing
carpet and/or underlay to a floor. KSR, 550 U.S. at 417 (2007) (the
predictable use of known prior art elements performing the same functions
they have been known to perform is normally obvious; the combination of
familiar elements is likely to be obvious when it does no more than yield
predictable results); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ).
As pointed out by the Examiner, when claimed ranges overlap or lie
inside ranges disclosed by the prior art, as here for the adhesion peel
property, a prima facie case of obviousness is established (Ans. 15). See In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). It is well established
that the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results. Woodruff, 919
F.2d at 1578. The burden of showing unexpected results rests on the person
who asserts them by establishing that the difference between the claimed
5
Appeal2017-002789
Application 13/811, 146
invention and the closest prior art was an unexpected difference. See In re
Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Further, a showing of unexpected result
supported by factual evidence must be reasonably commensurate in scope
with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983).
Appellant has not relied upon any showing of unexpected results.
Accordingly, the Examiner's§ 103 rejection on appeal is affirmed.
The Examiner's provisional rejection of claims 1, 2, 4, and 5 on the
ground of nonstatutory double patenting as being unpatentable over claims
1--4 of copending Application No. 13/811,116 (Appeal 2017-002787) in
view of Sieber is also affirmed for reasons as explained by the Examiner and
similar to the reasons above; that is, that Sieber exemplifies that peel
adhesion is a result effective variable applicable for securing carpet and/or
underlay to flooring.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
6