Ex Parte Lunsford et al

Patent Trial and Appeal Board

Mar 13, 2013

10875849 (P.T.A.B. Mar. 13, 2013)

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.
10/875,849 06/24/2004 David J. Lunsford 3104.VIN 1283
40256 7590 03/14/2013
FERRELLS, PLLC
P. O. BOX 312
CLIFTON, VA 20124-1706
EXAMINER
JUSKA, CHERYL ANN
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID J. LUNSFORD,
RAJEEV FARWAHA,
and JAMES WALKER
____________

Appeal 2012-001364
Application 10/875,849
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 4, 6 through 11, and 13
through 30, all of the pending claims in the above-identified application.1
We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

1 See Appeal Brief filed April 6, 2011 (“App. Br.”) at 2 and Examiner’s
Answer mailed June 17, 2011 (“Ans.”) at 3.

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STATEMENT OF THE CASE
The subject matter on appeal is directed to “carpet coating
compositions which contain an ethylene/vinyl ester-based emulsion binder
. . .” (Spec. 1, ll. 1-4). These compositions are said to “exhibit improved
adhesion to polyvinylbutyral substrates” (id).
This subject matter is identical or substantially identical to the one
that was considered in the Decision dated November 26, 2008 on Appeal
No. 2008-4023 (Application 10/875,849), except for limiting the functional
monomers used in forming an interpolymer employed in carpet coating
compositions and making the optional comparatively or functionally defined
adhesion property of some of the coating compositions mandatory. The
carpet coating compositions may still require a specific amount of polyvinyl
alcohol (independent claims 1, 26 and 28), any amount (including a tolerable
amount) of polyvinyl alcohol (independent claims 19), or no amount of
polyvinyl alcohol (independent claims 23, 27 and 30).
Details of the appealed subject matter are recited in illustrative claims
1, 19, and 23 reproduced below2:
1. A carpet coating composition, comprising:

2 The claims not separately argued stand or fall with the argued claims. See 37
C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same ground
of rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis of
the selected claim alone.”).

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a) an interpolymer having a Tg in the range of about 0 to about
-40°C present in amounts effective to function as a binder in the
carpet coating composition, said interpolymer prepared by an
emulsion polymerization process, and which interpolymer
comprises:
(i) one or more vinyl ester monomers;
(ii) ethylene;
(iii) from about 1 pphm to 10 pphm of at least one carboxylic
acid3 functional monomer selected from the group consisting of
acrylic acid, methacrylic acid, half esters of maleic acid, beta
carboxy ethyl acrylate, acrylamide, N,N-dimethyl acrylamide,
hydroxyl alkyl acrylate, hydroxyl alkyl methacrylate, N-
vinyl formamide, N-methylol (meth)acrylamide, and N-vinyl
pyrrolidinone;
(iv) water; and
(v) a stabilizing system comprising polyvinyl alcohol and one
or more surfactants, where the polyvinyl alcohol is present in
amounts of from about 2 to about 5 pphm;
wherein the vinyl ester monomer(s), ethylene and carboxylic
acid functional monomer(s) are selected and present in amounts
such that the carpet coating composition exhibits increased
adhesion to a polyvinyl butyral substrate, as compared to a like
coating prepared with a like interpolymer which does not
contain carboxylic acid functional monomer.
19. A carpet product, comprising:
(a) a primary carpet backing;
(b) carpet fibers attached to the primary carpet backing;

3 The functional monomers recited include those which are not carboxylic
acid functional monomers.
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(c) an adhesive carpet coating composition in contact with the
primary carpet backing, wherein the carpet coating composition
includes polyvinyl alcohol, one or more surfactants, and an
interpolymer comprising:
i) one or more vinyl ester monomers;
ii) ethylene; and
iii) from about 1 pphm to 10 pphm of at least one functional
monomer selected from the group consisting of acrylic acid,
methacrylic acid, half esters of maleic acid, beta carboxy ethyl
acrylate, acrylamide, N,N-dimethyl acrylamide, hydroxyl alkyl
acrylate, hydroxyl alkyl methacrylate, N-vinyl formamide, N-
methylol (meth)acrylamide, and N-vinyl pyrrolidinone; and
(d) a secondary carpet backing comprising at least one
polyvinyl butyral (PVB) layer, wherein the PVB layer is affixed
to the primary carpet backing with the adhesive carpet coating
composition.
23. A carpet product which includes:
a) a primary backing;
b) a binder coating in contact with the primary backing,
wherein the binder coating includes an aqueous adhesive
emulsion composition including an interpolymer and a
stabilizing system which has one or more protective
colloids and one or more surfactants; wherein the interpolymer
comprises vinyl ester, ethylene, and from about 1 pphm to
about 10 pphm of carboxylic acid functional monomer4 selected
from the group consisting of acrylic acid, methacrylic acid, half
esters of maleic acid, beta carboxy ethyl acrylate, acrylamide,
N,N-dimethyl acrylamide, hydroxyl alkyl acrylate, hydroxyl

4 The functional monomers recited include those which are not carboxylic
acid functional monomers.
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alkyl methacrylate, N-vinyl formamide, N-methylol
(meth)acrylamide, and N-vinyl pyrrolidinone; and
c) a secondary backing comprising at least one polyvinyl
butyral layer affixed to the primary backing such that the binder
coating is between the primary backing and the secondary
backing.
As evidence of unpatentability of the appealed subject matter, the
Examiner has proffered the following prior art references:
Anderson 4,010,301 Mar. 1, 1977
Lunsford 5,849,389 Dec. 15, 1998
Bell 2004/0175535 A1 Sep. 9, 2004

Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Examiner’s Answer:
1) Claims 1 through 4, 6 through 11, 24, 26, and 27 under 35
U.S.C. § 102(b) as anticipated by, or under 35 U.S.C. § 103(a) as
unpatentable over, the disclosure of Lunsford;
2) Claims 28 through 29 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Lunsford; and
3) Claims 13 through 23, 25, and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Lunsford, Bell, and
Anderson. (App. Br. 7-8 and Ans. 4-14.)

PRINCIPLES OF LAW

Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
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v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been prima facie obvious] 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’l Co.,
v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007)); see also DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself . . .”).
Moreover, “there is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Yet, choosing to
define a component functionally, i.e., by what it does, carries with it a risk.
Schreiber, 128 F.3d at 1477.
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . .
any other argument or presentation of evidence that is pertinent.” In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc).
DISCUSSION
I. PRIMA FACIE CASES
A. CLAIMS 1-4, 6-11, 24, AND 26-29
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As correctly found by the Examiner at pages 5-6 of the Answer,
Lunsford teaches carpet coating compositions comprising an interpolymer
prepared by emulsion polymerization of about 10pphm to about 30pphm of
ethylene, about 60 pphm to about 90 pphm of a vinyl ester monomer, about
1 pphm to 10 pphm of a non-reactive monomer, and less than 5 pphm of
one or more comonomers, including functional comonomers (comonomers
comprising reactive moieties), such as those recited in the claims on appeal,
an emulsifying surfactant, water, and a protective colloid, including
optionally low levels of PVA (poly vinyl alcohol). (See also Lunsford, col.
2, ll. 22-33, col. 4, ll. 4-36. Col. 5, ll. 18-20, col. 6, ll. 9-30 and col. 7, ll. 45-
50.).)
Appellants contend that Lunsford does not disclose the amounts of
PVA and particular functional comonomers recited in claims 1 through 4, 6
through 11, 24, 26 and 27 with sufficient specificity to constitute
anticipation within the meaning of 35 U.S.C. §102(b). (App. Br. 13-22.)
Appellants also contend that Lunsford would not have suggested the
amounts of PVA and particular functional comonomers recited in claims 1
through 4, 6 through 11, and 26 through 29 within the meaning of 35 U.S.C.
§103(a). (App. Br. 13-22 and 24)
Thus, the first critical question is: Has the Examiner reversibly erred
in determining that Lunsford teaches the amounts of PVA and particular
functional comonomers recited in claims 1 through 4, 6 through 11, 24, 26
and 27 with sufficient specificity to constitute anticipation within the
meaning of 35 U.S.C. §102(b) or would have suggested the amounts of PVA
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and particular functional comonomers recited in claims 1 through 4, 6
through 11, and 26 through 29 within the meaning of 35 U.S.C. §103(a)?.
On this record, we answer this question in the negative only with respect to
the Examiner’s determination relating to Lunsford’s suggestion of the
claimed amounts of PVA and the claimed particular functional comonomers
within the meaning of 35 U.S.C. 103(a).
As indicated in the earlier Decision dated November 26, 2008 on
Appeal No. 2008-4023 in the above-identified application (Application
10/875,849), the interpolymers exemplified in Table 1 of Lunsford, namely
B1 and B3 used in carpet coating compositions, have Tgs of -1.8o C. and
-0.8o C, respectively and are prepared with 12 pphm of ethylene, 84 pphm
of vinyl acetate and 4.3 pphm or 4 pphm of at least one comonomer, such as
p-carboxy ethylacrylate and butyl acrylate, or 2-ethyl hexylacrylate. (See
Lunsford, col. 8, ll. 51-61, Table 1.) Lunsford also teaches that other
functional comonomers, such those claimed, can be used in lieu of the
comonomers or functional comonomer used in forming the exemplified
interpolymers, which according claims 1 and 26 on appeal, provide the
claimed functionally defined adhesion property.5 (Compare Lunsford, col.
3, l. 60 to col. 4, l. 36 with claims 1 and 26 on appeal.) The other functional

5 See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior
art of record explicitly discusses the [limitation], [applicants’] application
itself instruct that [the limitation] is not an additional requirement imposed
by the claims on the [claimed invention], but rather a property necessarily
present in [the claimed invention]”) ; In re Papesch, 315 F.2d 381, 391
(CCPA 1963) (“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.”).
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comonomers taught by Lunsford, most of which are included in the claims
on appeal, are shown below (Lunsford, col. 4, ll. 4-18):
It may also be desired to incorporate in the interpolymer
minor amounts of one of more functional comonomers
[corresponding to the claimed at least one carboxylic acid
functional monomer]. Suitable copolymerizable comonomers
include, for example, acrylic and methacylic acid or the half
esters of maleic acid such as monoethyl, monobutyl or
monoctylmaleate acrylamide, tertiary octylacrylamide, N-
methylol(meth)acrylamide, N-vinylpyrrolidinone, diallyl
adipate, tri-allyl cyanurate,butanediol diacrylate, allyl
methacrylate, etc., as well as C2-C3 hydroxyalkyl esters such as
hydroxyethyl acrylate, hydroxyl propyl acrylate and
corresponding methacrylates. The latter comonomers generally
are used at levels of less than 5 pphm, preferably less than 2.5
pphm, depending upon the nature of the specific comonomer.
Preferably, the emulsion binders are prepared without the use of
such monomers. [(Emphasis added.)]

Notwithstanding Appellants’ arguments to the contrary at pages 20 and 21 of
the Appeal Brief, the above passage of Lunsford clearly indicates that the
latter “comonomers” are the second and later mentioned suitable
copolymerizable (functional) “comonomers” and “the specific comonomer”
of the latter comonomers is those individual comonomers listed as the
suitable copolymerizable (functional) comonomers.
Similarly, as correctly found by the Examiner at page 6 of the
Answer,
Lunsford teaches various protective colloids are used at levels
of 0.05-4% by weight based upon the total emulsion weight
(col. 6, lines 9-15). Lunsford also discloses PVOH [(poly vinyl
alcohol or PVA)], as a protective colloid, is not a preferred
embodiment but may be tolerated [(col. 6, ll. 15-17.)].
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However ambiguous the language relating to tolerable amounts of poly vinyl
alcohol may appear in Lunsford, Appellants are presumed to know the
meaning of such language since one of Appellants (Mr. Lunsford
(declarant)) prepared the disclosure of Lunsford and signed an oath
declaring his understanding of such disclosure.6 Thus, it is not unreasonable
for the Examiner to shift the burden to Appellants to show that the claimed
amount of polyvinyl alcohol defined in a functional or relative manner (part
per hundred monomer used) excludes Lunsford’s tolerable amounts of
polyvinyl alcohol colloids in its carpet coating compositions. Yet,
Appellants still have not proffered any averment and/or evidence regarding
what amount was intended by the language used in Lunsford in spite of the
concern raised in the earlier Decision dated November 26, 2008 on Appeal
No. 2008-4023 in the above-identified application (Application
10/875,849).7
Regardless the meaning of the tolerable amounts of PVA, Lunsford
would have at least suggested employing the amount of polyvinyl alcohol as
a protective colloid, inclusive of the amounts of poly vinyl alcohol recited in
clam 1, in its carpet coating compositions even though the use of such
amount of polyvinyl alcohol is not preferred. As correctly stated by the

6 Appellants have not shown that In re Turlay, 304 F.2d 893, 899 (CCPA
1962) relating to the treatment of ambiguous language in prior art for the
anticipation purpose is controlling in this circumstance.
7 Rather than stating what he meant by the tolerable levels of PVA in the
Lunsford prior art patent at the time of its filing, Mr. Lunsford, the declarant,
merely opined how one skilled in the art may interpret such language
without any supporting or corroborating evidence. (See page 2, paragraphs
5-6, of the first Declaration executed by Lunsford on September 18, 2006.)
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Examiner, Lunsford’s non-preferred embodiment (i.e., employing the
claimed amount of a non-preferred polyvinyl alcohol (PVA) protective
colloid) cannot be ignored. See, e.g., Merck & Co., Inc. v. Biocraft Labs.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“But in a section 103 inquiry, ‘the fact
that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered.’”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). This is especially true in this case since Lunsford shows that its
composition still has excellent or very good adhesion even when it employed
non-preferred comonomers, such as p-carboxy ethylacrylate, butyl acrylate,
and/or 2-ethyl hexylacrylate, in amounts within those claimed in its carpet
coating compositions. (Compare Lunsford, col. 3, ll. 60-66 and col. 4, ll. 4-
18, with Lunsford, cols. 8 and 9,Tables 1 and 2.) This showing reasonably
conveys to one of ordinary skill in the art that Lunsford’s carpet coating
compositions are still useful even when non-preferred ingredients are
employed in its carpet coating compositions. Thus, one of ordinary skill in
the art, upon reading such disclosure of Lunsford, would have been led to
employ the claimed amount of a non-preferred polyvinyl alcohol (PVA)
protective colloid in the carpet coating compositions taught by Lunsford.
As can be seen from the above teachings of Lunsford, however, some
picking and choosing of the amounts of PVA and the particular functional
comonomer from those listed in Lunsford are necessary to arrive at the
claimed carpet coating compositions. As stated in In re Arkley, 455 F.2d
586, 587-88 (CCPA 1972):
[F]or the instant rejection under 35 U.S.C. § 102…to
have been proper, the [prior art] reference must clearly and
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unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures…. Such picking
and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness…, but it has no place in the making of a 102,
anticipation rejection.

See also Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir.
2006) (explaining that the description of the limitations recited in a claim
must be done with sufficient specificity to establish anticipation within the
meaning of 35 U.S.C. § 102(b)).
Under these circumstances, we concur with the Examiner only to the
extent that Lunsford, as a whole, would have suggested employing PVA
and/or other protective colloids and the claimed functional comonomers in
amounts within those claimed to arrive at the claimed carpet coating
compositions within the meaning of 35 U.S.C. §103(a). See also Merck &
Co., Inc. v. Biocraft Labs, 874 F.2d at 807) (“That the ‘813 patent discloses
a multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.”); In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.”); In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure
of the prior art was “huge, but it undeniably include[d] at least some of the
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compounds recited in appellant's generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant's additives”).
Accordingly, we find reversible error in the Examiner’s prima facie
case of anticipation of the subject matter recited in claims1 through 4, 6
through 11, 24, 26, and 27 within the meaning of 35 U.S.C. §102(b), but
find no reversible error in the Examiner’s prima facie case of obviousness of
the subject matter recited in claims 1 through 4, 6 through 11, and 26
through 29 within the meaning of 35 U.S.C. §103(a).
B. CLAIMS 13 THROUGH 23, 25, AND 30
Notwithstanding Appellants’ arguments to the contrary at pages 22
through 25 of the Appeal Brief, Lunsford would have suggested the carpet
coating compositions recited in claims 13 through 23, 25, and 30 as
indicated above. Lunsford also teaches that such carpet coating
compositions are useful as “superior binders for use in [any conventional]
carpet backings, particularly for use in carpet backed with PVC plastisol
(emphasis added).” (Lunsford, col. 2, ll. 33-47.) Lunsford further teaches
using such coating compositions in “conventional tufted carpet, non-tufted
carpet and needle-punched carpet” products comprising a primary backing
having yarned tufted or needled into its front side, a coating composition
affixing a secondary backing made of suitable foam polymer or copolymer,
such as polymers or copolymers of ethylene, propylene, isobutylene, and
vinyl chloride, on the backside of the primary backing to provide
dimensional stability. (See Lunsford, col. 2, l. 42 to col. 3, l. 15 and col. 6, l.
55 to col. 7, l. 14.)
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Appellants contend that one of ordinary skill in the art would not
have been led to employ a PVB foam secondary backing as the secondary
backing of the carpet product taught by Lunsford. (App. Br. 22--25 and
Reply Br. 13-15.)
Thus, the first critical question for claims 13 through 23, 25, and 30 is:
Has the Examiner reversibly erred in determining that one of ordinary skill
in the art would have been led to employ a conventional PVB secondary
backing as the secondary backing of the carpet product taught by Lunsford,
with a reasonable expectation of successfully binding such conventional
PVB secondary backing with its suggested carpet coating composition? On
this record, we answer this question in the negative.
As discussed above, Lunsford teaches that its carpet coating
compositions are useful as a superior binder for conventional carpet backing
materials. Although Lunsford does not specifically indicate that such
conventional carpet backing materials includes a PVB secondary backing
materials, both Bell and Anderson teach that the PVB secondary backing is
conventionally used in a conventional carpet product. (Bell, p. 1, para.
[0001], p. 3, para. [0022], and pp. 4-5, paras. [0040] and [0041] and
Anderson, col. 2, l. 66 to col. 5, l. 17, particularly col. 3, l. 60 to col. 4, l. 67,
and the drawing.) Anderson also teaches that its PVB secondary foam
backing is interchangeable with other conventional secondary foam
backings, some of which are taught by Lunsford. (Compare Anderson, col.
3, l. 60 to col. 4, l. 67 with Lunsford, col. 6, l. 55 to col. 7, l. 14.) Thus, we
concur with the Examiner that one of ordinary skill in the art would have
been led to employ the conventional PVB secondary backing taught by Bell
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and/or Anderson as the secondary backing of the carpet product suggested
by Lunsford, with a reasonable expectation of successfully binding such
conventional PVB secondary backing with the carpet coating compositions
suggested by Lunsford. In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985)
(“[A] reasonable expectation of success, not absolute predictability”
supports a conclusion of obviousness.)
Accordingly, we find no reversible error in the Examiner’s prima
facie case of obviousness of the subject matter recited in claims 13 through
23, 25, and 30 based on the collective teachings of within the meaning of 35
U.S.C. § 103(a).
II. NEGATIVE TEACHINGS AND SUPERIOR RESULTS
As a rebuttal to the prima facie case established by the Examiner,
Appellants contend that the claimed subject matter is taught away by the
teachings of Lunsford and imparts surprisingly superior results relative to
that shown in Lunsford (App. Br. 6-27 and Reply Br. 18-13). In support of
this contention, Appellants rely on the first and second Rule 132
Declarations executed by one of the inventors (Mr. Lunsford) on September
18, 2006 and May 14, 2009 (hereinafter referred to as “first and second
Declarations”) and Tables 1 and 2 at page 19 of the Specification. (See, e.g.,
App. Br, 25-27.).
Thus, the second critical question for claims 1 through 4, 6 through
11, and 13 through 30 (all the claims on appeal) is: Have Appellants
demonstrated that the first and second Declarations and Tables 1 and 2 at
page 19 of the Specification are sufficient to establish that the claimed
subject matter is taught away by the teachings of Lunsford and/or imparts
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unexpected results relative to Lunsford relied upon by the Examiner? On
this record, we answer this question in the negative.
As argued by Appellants, the Declarations state that the carpet
coating compositions taught or suggested by Lunsford relied upon by the
Examiner are not relevant or related to carpet products which have a PVB
backing. (App. Br. 6 and 23, Reply Br. 14, and the first Declaration, paras.
4 and 6 and the second Declaration, paras. 3 and 4.) However, Lunsford
(prior art), which is authored by Mr. Lunsford, the declarant in the first and
second Declarations, does not foreclose one of ordinary skill in the art from
using its carpet coating compositions to bind other conventional backing
materials, such as those made of PVB backings as indicated supra. While
Lunsford focuses on a PVC backing, it teaches that its carpet coating
compositions can be used for the production of any conventional tufted
carpets, including those having a backing material made of any suitable
polymer or copolymer foam as indicated supra. Moreover, as indicated
above, Bell and/or Anderson further explain that the conventional backing
materials taught by Lunsford include PVB backing materials. However
different are the adhesive strengths of Lunsford’s carpet coating
compositions toward different conventional backing materials, the fact
remains that Lunsford teaches that they are all sufficient for the purpose of
binding conventional secondary backing materials to form conventional
carpet products. (Lunsford, col. 6, l. 55 to col. 7, l. 14). On this record,
Appellants have not demonstrated that one of ordinary skill in the art, in
light of the teachings of Lunsford, would have been taught away from
employing or would have had no reasonable expectation of successfully
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using Lunsford’s carpet coating compositions as a binder for, for example,
PVB foam backing materials. See, e.g., In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”); Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279,
1284 (Fed. Cir. 2010) (Board has discretion to give more weight to one item
of evidence over another “unless no reasonable trier of fact could have done
so”).
Appellants further rely on the statements at paragraph 5 of the first
Declaration again to show that one of ordinary skill in the art would not have
been led to employ the claimed amount of polyvinyl alcohol (PVA) colloids
in Lunsford’s carpet coating compositions. (App. Br. 14-16 and Reply Br.6-
8.). However, as indicated supra, Lunsford (prior art patent) teaches
employing tolerable amounts of polyvinyl alcohol colloids. Mr. Lunsford,
the declarant, is in the best position to know what he really meant by
tolerable amounts of PVA in Lunsford’s carpet coating compositions since
Mr. Lunsford (declarant) prepared the disclosure of Lunsford (prior art
patent) and signed an oath declaring his understanding of such disclosure.
Thus, it is not unreasonable for the Examiner to shift the burden to
Appellants to show that the claimed amount of polyvinyl alcohol defined in
an unusual functional or relative manner (part per hundred monomer used)
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excludes Lunsford’s tolerable amounts of polyvinyl alcohol colloids in its
carpet coating composition.
To the extent that the range of the preferred tolerable amounts taught
by Lunsford is outside of the claimed amount of polyvinyl alcohol, we still
find that Lunsford does not preclude one of ordinary skill in the art from
employing the amount of polyvinyl alcohol recited in clam 1 as indicated
supra. As correctly stated by the Examiner, Lunsford’s non-preferred
embodiment (i.e., employing the claimed amount of a non-preferred
polyvinyl alcohol (PVC) protective colloid) cannot be ignored. See, e.g.,
Merck & Co., Inc. v. Biocraft Labs., 874 F.2d at 807 (quoting In re
Lamberti, 545 F.2d at 750). This is especially true since Lunsford
reasonably conveys to one of ordinary skill in the art that Lunsford’s carpet
coating composition is still useful even when non-preferred ingredients are
employed in its carpet coating compositions as indicated supra. Thus, one
of ordinary skill in the art, upon reading such disclosure of Lunsford, would
not be discouraged from employing the claimed amount of non-preferred
polyvinyl alcohol (PVA) protective colloids in the carpet coating
compositions taught by Lunsford contrary to Appellants’ arguments at pages
14 through 17 of the Appeal Brief. See In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d at 1368; Velander v. Garner, 348 F.3d at 1359; Yorkey v. Diab,
601 F.3d at 1284.
Finally, Appellants assert that “[t]he data in the specification as filed,
the [first] 2006 Declaration as well as the [second] 2009 Declaration Under
37 CFR 1.132 of David Lunsford, paragraphs 7 and 8 show that…the
incorporation of functional monomers in combination with a
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surfactant/PVOH stabilizing system and increased levels of ethylene
produce superior results.” (App. Br. 25, emphasis in original.) In support
of this assertion, Appellants, at page 26 of the Appeal Brief, again rely on
Table 1 at page 19 of the Specification referred to in the first (2006) and
second (2009) Declarations, as well as Table 2 at page 19 of the
Specification, which are shown below:

TABLE 1
___________________________________________________
Binder VA E PVOH S1 AA 2 Avg3
Control5 80 20 3.5 x 0 7
Control6 84 16 4.2 x 3 9
A 72 28 3.5 1.1 0 12
B 72 28 3.5 1.1 0.5 16
C 72 28 3.5 1.1 1.0 17
D 72 28 3.5 1.1 2.0 19
E 72 28 3.5 1.1 3.5 22
___F 72 28 3.5 1.1 3.0 22
1S = Surfactant (anionic)
2AA = Acrylic Acid
3Avg = Delamination Average Load (lbs.)
5Commercial PVOH stabilized EVA adhesive base

TABLE 2
___________________________________________________
Binder VA E PVOH S1 Monomer2 Avg3
G 72 28 3.5 1.1 1 HPA 11
H 72 28 3.5 1.1 1 AM 16
I 72 28 3.5 1.1 1 NVF 17
1S = Surfactant (anionic)
2Functional Monomer (1 HPA=1 wt% hydroxypropyl acrylate;
1 AM=1 wt% acrylamide; 1 NVF = 1 wt% N-vinyl formamide)
3Avg = Delamination Average Load (lbs)
5According to page 27 of the Appeal Brief, Binders G, H, and I also
contain the same amounts of VA, E, PVOH, and S1 as Binders A through
F.

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According to pages 14 through 19 of the Specification, binders A, B, C, D,
E, F, G, H, and I referred to at Tables 1 and 2 in the Declaration are formed
from specific amounts of specific ingredients, including those which are not
mentioned in Tables 1 and 2, at specific mixing and reaction conditions.
(See particularly Spec. 15-16.) These binders are said to have specific Tgs
from -15 to -22 oC, a solids content of 63%, a viscosity (20 rpm, RVT#3) of
1610 cps to 5000 cps, and a pH of 4.3-4.5. (Spec. 16-18.)
Appellants bear the burden of showing that the claimed invention
imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In re
Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants
to submit clear and convincing evidence to support their allegation of
unexpected property."). Such burden requires that the showing relied upon
must be derived from a comparison between the claimed subject matter and
the closest prior art (In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)) and must
be reasonably commensurate with the scope of protection sought by the
claims on appeal (In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980)); See also In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005)).
As correctly found by the Examiner at pages 17 through 19 and 23
through 27 of the Answer, Appellants' contention that the Specification data
relied upon by the first and second declaration establishes unexpected results
over the closest prior art reference, namely the coating compositions
exemplified in Lunsford, is without merit. While the first and second
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Declarations state that the claimed invention provides superior results
compared to the coating compositions exemplified in Lunsford, the closest
prior art, Appellants failed to direct us to any meaningful side-by-side
comparison in which the inventive experiment was identical to Lunsford’s
exemplified compositions except for the novel features of the claimed
invention. Thus, it is not clear from the comparative experiments in Tables
1 and 2 at page 19 of the Specification and the carpet coating compositions
exemplified at columns 9 and 8 of Lunsford whether the alleged unexpected
results are due to the novel features actually recited in the claims on appeal,
or different amounts of specific VA, specific E, and specific comonomers
used to form interpolymers, or the presence or absence of the specific
amount of a specific anionic surfactant, the specific amounts of water, a
specific dispersant, specific fillers, and acrylate thickeners, the specific
amounts of specific ingredients listed at page 15 of the Specification, or the
specific mixing and reaction conditions stated at page 16 of the
Specification. In re Dunn, 349 F.2d 433, 439 (CCPA 1965)(“While we do
not intend to slight the alleged improvements, we do not feel it an
unreasonable burden on appellants to require comparative examples relied
on for non-obviousness to be truly comparative. The cause and effect sought
to be proven is lost here in the welter of unfixed variables.”) On this record,
Appellants have not shown that those unclaimed variables used in the
showing relied upon have no or insignificant effect on the performance of
the coating compositions involved.
As also correctly found by the Examiner at pages 17 through 19 and
23 through 27 of the Answer, Appellants have not established that the
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showing in Tables 1 and 2 relied upon is reasonably commensurate with the
degree of protection sought by claim 1 on appeal. While carpet coating
compositions A, B, C, D, E, F, G, H, and I representative of the claimed
subject matter are limited to coating compositions containing specific
proportions of a specific anionic surfactant, PVOH, specific fillers, the other
ingredients listed at page 15 of the Specification, and an interpolymer having
specific properties, including a Tg of about -15 to -22 oC, derived from
employing specific amounts of specific vinyl acetate, specific ethylene and
four different specific functional comonomers and produced under specific
mixing and reaction conditions, the claims on appeal are not so limited.
(Compare coating compositions in Tables 1 and 2 described at pages 15
through 19 of the Specification with representative claims 1, 6, 9, 13, 25, and
26 through 30.) On this record, Appellants have not demonstrated that the
results applicable to a limited number of carpet coating formulations would
be applicable to the myriad of carpet coating formulations encompassed by
the claims on appeal, some of which are materially different from the
formulations shown in Tables 1 and 2 at page 19 of the Specification. See,
e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming
that the results were unexpected, Harris needed to show results covering the
scope of the claimed range. Alternatively Harris needed to narrow the
claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(“Establishing that one (or a small number of) species gives unexpected
results is inadequate proof, for ‘it is the view of this court that objective
evidence of non-obviousness must be commensurate in scope with the
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claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971).
Appellants’ reliance on In re Chupp, 816 F.2d 643, 646 (Fed. Cir.
1987) and In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980) at page 26 of
the Appeal Brief to support their position regarding the sufficiency of their
limited showing is misplaced. Like Harris and Greenfield, both Chupp8 and
Clemens9 require that a showing of unexpected results be reasonably
commensurate in scope with the claimed subject matter. Appellants are
reminded that their reliance on such and other case law does not remedy the
factual deficiencies discussed above and in the Answer. In other words,
Appellants’ reliance on Tables 1 and 2 at page 19 of the Specification
(which are both based on the examples described at pages 15 through 19 of
the Specification) and the first and second Declarations of Mr. Lunsford
does not overcome the prima facie case of obviousness established by the
Examiner, when considered in light of the evidence in the totality of the
record. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After
evidence or argument is submitted by the applicant in response, patentability

8 In Chupp, the Federal Circuit held that evidence that the claimed
compound has at least one unexpected property, i.e., “unexpectedly superior
in one of a spectrum of common properties,” can be enough to rebut a prima
facie case of obviousness since the evidence of unexpected superiority on
the claimed compound “‘pertain[e]d to the full extent of subject matter being
claimed.’” Chupp, 816 F.2d at 646, citing In re Ackermann, 444 F.2d 1172,
1176 (CCPA1971).
9 In Clemens, the CCPA held that Appellants fail to demonstrate that
“objective evidence of non-obviousness” is “commensurate in scope with
the claims which the evidence is offered to support.” Clemens, 622 F.2d at
1035-36.
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24
is determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments and evidence in light of the evidence
relied upon by the Examiner, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
matter recited in claims 1 through 4, 6 through 11, and 13 through 30 within
the meaning of 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner to reject claims 1
through 4, 6 through 11, 24, 26, and 27 under 35 U.S.C. § 102(b) is
REVERSED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 1 through 4, 6 through 11, and 13 through 30 within the meaning of
35 U.S.C. § 103(a) is AFFIRMED; and,
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED
tc