Ex Parte Pelosi

Board of Patent Appeals and Interferences

Jan 30, 2004

09395270 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANK PELOSI, JR.
_____________
Appeal No. 2002-1749
Application No. 09/395,270
______________
ON BRIEF
_______________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Frank Pelosi, Jr. appeals from the examiner’s final
rejection of claims 1-10, all the claims currently pending in the
application.
Appellant’s invention pertains to a method of applying a
carpet to a subfloor. Claim 1, the sole independent claim on
appeal, is exemplary of the appealed subject matter and reads as
follows:
1. A method of applying a carpet to a subfloor
comprising the steps of:
Appeal No. 2002-1749
Application No. 09/395,270
1In the final rejection, claims 1-8 and 10 were also
rejected under 35 U.S.C. § 103 as being unpatentable over Wyman
and claim 8 was also rejected under 35 U.S.C. § 103 as being
unpatentable over Wyman in view of Shaw, however, these
rejections have since been withdrawn. See page 3, lines 15 to
18, and page 4, last two lines, of the answer.
2
providing a dimensionally stable sheet having a backing
with a top side and a bottom side, said backing being made
from a material and having adhesive applied to at least one
of said top or bottom sides;
placing said sheet on an existing subfloor;
providing a carpet; and
placing said carpet on said sheet.
The references applied by the examiner in the final
rejection are:
Murphy et al. (Murphy) 5,601,910 Feb. 11, 1997
Wyman 5,902,658 May 11, 1999
SIGA, Installation Instructions Tips & Tricks, pages unnumbered,
no date available.
Shaw Indus. (Shaw), Technical Bulletin, Nos. 78, 82, 83, pages
unnumbered (Shaw Indus., December 1995).
The following rejections are before us for review:
(1) claims 1-8 and 10, rejected under 35 U.S.C. § 103 as
being unpatentable over Wyman in view SIGA;1
(2) claim 9, rejected under 35 U.S.C. § 103 as being
unpatentable over Wyman in view of SIGA and further in view of
Murphy;
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Application No. 09/395,270
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(3) claims 1-4 and 6-8, rejected under 35 U.S.C. § 102(b)
as being anticipated by Shaw;
(4) claims 5 and 10, rejected under 35 U.S.C. § 103 as
being unpatentable over Shaw in view of Wyman; and
(5) claim 9, rejected under 35 U.S.C. § 103 as being
unpatentable over Shaw in view of Murphy.
Reference is made to appellant’s brief (Paper No. 11) and to
the examiner’s final rejection and answer (Paper Nos. 9 and 12)
for the respective positions of appellant and the examiner
regarding the merits of these rejections.
Grouping of Claims
Appellant states on page 4 of the brief that claims 1-4, 6-8
and 10 stand or fall together as a first group, that claim 5
stands or falls alone as a second group, and that claim 9 stands
or falls alone as a third group. We note that these groups do
not correspond to the claims as grouped according to the various
grounds of rejections, and that appellant has provided separate
arguments with respect to only a few of the claims. Accordingly,
for each of the above noted grounds of rejections (1) through
(5), the claims will stand or fall in accordance with the success
or failure of appellant’s arguments. See In re Hellsund, 474
F.2d 1307, 1309-10, 177 USPQ 170, 172 (CCPA 1973); In re Wood,
Appeal No. 2002-1749
Application No. 09/395,270
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582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978); and In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987).
Rejection (1)
Wyman discloses a dimensionally stable water impervious rug
underlay used for adhering a rug to a carpet to prevent the rug
from slipping relative to the carpet. The underlay comprises a
woven backing 7 made of flat, monofilament polypropylene yarns
(column 3, lines 46 to 49), with non-aggressive adhesive 10 and
11 applied to each side of the backing, to which is applied a
release film 12 and 13 (column 4, lines 7 to 11). Wyman
describes a method of using the underlay at column 2, lines 36 to
51. Basically, the adhesive on the top side of the underlay is
exposed and the underlay is adhered to the back of a rug,
whereafter the adhesive on the bottom side of the underlay is
exposed so that the underlay may be adhered to an existing
carpet. SIGA pertains to a pressure sensitive mesh material for
applying new carpeting to existing flooring or carpeting. In
SIGA, the mesh material is first adhered to the existing flooring
or carpeting, whereafter the new carpeting is adhered to the mesh
material.
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Application No. 09/395,270
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Independent claim 1 is directed to a method of applying a
carpet to a subfloor and calls for the steps of providing a
dimensionally stable sheet, placing the sheet on an existing
subfloor, providing a carpet, and placing the carpet on the
sheet.
As framed by appellant (see pages 4 to 7 of the answer), the
dispositive issue with respect to the standing rejection of claim
1 as being unpatentable over the combined teachings of Wyman and
SIGA is whether the applied prior art teaches or suggests the
order or sequence of steps called for in the claim. More
particularly, appellant argues as follows:
The method disclosed in Wyman does not disclose the
steps of providing a dimensionally stable sheet,
placing the sheet on an existing subfloor, and then
placing a carpet on the sheet as recited by the
Appellant . . . . Appellant strenuously disagrees with
the Examiner’s conclusion [that the sequence of steps
is an obvious matter of choice] . . . . [T]he sequence
of Appellant’s steps are critical and are not merely an
obvious design choice. [Brief, page 5; emphasis
added.]
Unless the steps of a method claim actually recite an order,
the steps are not ordinarily construed to require one. Altiris
Inc. v. Symantec Corp., 318 F.3d 1363, 1369, 65 USPQ2d 1865, 1869
(Fed. Cir. 2003); Interactive Gift Express, Inc. v. CompuServe
Inc., 256 F.3d 1323, 1342-43, 59 USPQ2d 1401, 1416 (Fed. Cir.
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Application No. 09/395,270
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2000). See also Loral Fairchild Corp. v. Sony Corp., 181 F.3d
1313, 1322, 50 USPQ2d 1865, 1870 (Fed. Cir. 1999). However, such
a result can ensue when the method steps implicitly require that
they be in the order written. Interactive Gift Express, Inc. v.
CompuServe Inc., 256 F.3d at 1342-43, 59 USPQ2d at 1416.
In the present case, nothing in the claim language requires
as a matter of logic or grammar that the step of placing the
sheet on an existing subfloor to be performed before the step of
placing the carpet on the sheet. Moreover, nowhere in the
specification is there any statement that the order of steps as
written in the claim is important, or any disclaimer of any other
order of steps. In this regard, while we appreciate that the
method of installation described in the paragraph spanning pages
6 and 7 of the specification calls for a particular order of
steps, there is no indication that this is the only order of
steps that will achieve appellant’s objective of providing
dimensionally stability to the new carpeting. Thus, we conclude
that appellant’s claim 1 does not require the step of placing the
sheet on an existing subfloor to be performed before the step of
placing the carpet on the sheet. It follows that appellant’s
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Application No. 09/395,270
21 mm = 39.37 mils.
7
position that the method recited in claim 1 distinguishes over
the method disclosed by Wyman by virtue of performing the steps
in the order written in the claim is not persuasive.
We therefore shall sustain the standing 35 U.S.C. § 103
rejection of claim 1 as being unpatentable over Wyman in view of
SIGA. We shall also sustain the standing 35 U.S.C. § 103
rejection of claims 2-8 as being unpatentable over Wyman in view
of SIGA since appellant has not separately argued these claims
with any reasonable degree of specificity.
Claim 10 depends from claim 1 and adds, among other things,
that the thickness of the backing is approximately 1 mil to
approximately 2 mils. With respect to claim 10, appellant argues
(brief, page 5, lines 20 to 21, that the claimed thickness is not
an obvious variant depending on the application surface. We
agree.
Wyman discloses (column 3, lines 2-4) that the thickness of
the underlay is approximately 1 mm, which is about 20 to 40 times
the claimed thickness of approximately 1 to 2 mils.2 SIGA, the
other reference relied upon in the rejection, is silent as the
thickness of the mesh material used as a carpet underlay. In
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addition, appellant’s specification at page 6, lines 5 to 10,
indicates that the claimed thickness range is selected to be
thick enough to be dimensionally stable yet not so thick that it
functions to add additional padding. Under these circumstances,
the claimed range cannot be dismissed as a matter of design
choice, as the examiner appears to have done. Compare In re
Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975), where the
use of particular connection in lieu of those used in the prior
art was held to be an obvious matter of design choice within the
skill in the art where the particular connection solves no stated
problem. Here, the claimed thickness range is described in the
specification as solving a stated problem (i.e., providing a
degree of dimensional stability without providing additional
padding) and therefore cannot be dismissed as a matter of design
choice.
In light of the foregoing, we shall not sustain the
rejection of claim 10 as being unpatentable over Wyman in view of
SIGA.
Rejection (2)
Claim 9 depends from claim 1 and adds that the backing is
made from a spun-bonded, non-woven fabric having a thickness of
approximately 8 mils.
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In rejecting this claim, the examiner relies on Murphy for
its showing of a rug underlay made of a non-woven material.
Concerning the thickness range called for in the claim, the
examiner states (answer, page 5) that “[i]f one were experiencing
a lack of stability of the backing, merely increasing the
thickness of the backing would have been well within the purview
of one of ordinary skill in the art.” Appellant counters (brief,
page 8) that none of the cited references teaches a spun-bonded,
non-woven fabric with a thickness of approximately 8 mils, that
such a fabric is not an obvious design choice, and that the
particular fabric and thickness are important to appellant’s
invention.
The appellant’s position is well taken. First, the underlay
of Wyman would have to be made thinner, rather than thicker as
implied by the examiner, in order to conform to the thickness of
approximately 8 mils called for in the claim. In any event, the
applied prior art does not disclose, suggest or teach the claimed
fabric with the claimed thickness, and, for the reasons explained
above in our treatment of claim 10, the claimed thickness cannot
be dismissed as a matter of design choice.
Accordingly, we shall not sustain the rejection of claim 9
as being unpatentable over Wyman in view of SIGA and Murphy.
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Rejections (3) to (5)
Fundamental to each of these rejections is the examiner’s
position that claim term “dimensionally stable” is broad and
“virtually meaningless since even the most loosely woven or no
woven [sic, non-woven] material has at least some degree of
dimensional stability” (answer, page 4). Based on this
interpretation, the examiner concluded that the mesh material
underlay of Shaw is dimensionally stable at least to some degree,
such that the method of Shaw includes the step of providing a
dimensionally stable sheet.
In proceedings before it, the PTO applies to the verbiage of
claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by
way of definitions or otherwise that may be afforded by the
written description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997). In the present case, appellant’s specification does
not contain a precise definition of the term “dimensionally
stable.” However, in the “Background of the Invention” section
of the specification it is explained on page 1 that laying
broadloom carpet is often a difficult process because the carpet
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itself “is not completely dimensionally stable. That is, when
one walks across broadloam carpet that has been installed, it can
shift in lateral directions or stretch” (emphasis added). In
keeping with this statement, we consider that the one of ordinary
skill in the art would understand the term “dimensionally stable”
as used in appellant’s claims to denote that the sheet of backing
material would not shift or stretch in lateral directions to any
significant degree when one walks across it.
Returning to Shaw, the description of the underlay used
therein is rather meager. The only enlightenment as to its
nature is found in the description in several places (see, for
example, Shaw #78, left column under the heading “General
Information”) that the carpet is secured to the floor by a dry
sheet bonding process which uses “a pressure sensitive mesh
material.” Based on the sparse disclosure of Shaw regarding the
nature of the underlay sheet, we consider that the examiner has
not made out a prima facie case that the underlay sheet of Shaw
is “dimensionally stable” as that term would be understood by one
of ordinary skill in the art. See In re Turlay, 304 F.2d 893,
899, 134 USPQ 355, 360 (CCPA 1962) (it is well settled that an
anticipation rejection cannot be predicated on an ambiguous
reference).
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For this reason, we shall not sustain the anticipation
rejection of claims 1-4 and 6-8 based on Shaw. We also shall not
sustain the Section 103 rejection of claims 5 and 10 based on
Shaw in view of Wyman, or the Section 103 rejection of claim
9 based on Shaw in view of Murphy, since, for the reasons stated
above, Shaw’s underlay cannot be said to be “dimensionally
stable,” and the examiner does not propose that it would have
been obvious to modify Shaw such that the underlay thereof is a
“dimensionally stable” material.
Summary
The rejection of claims 1-8 as being unpatentable over Wyman
in view of SIGA is affirmed.
All other rejections are reversed.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS/hh
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