Ex parte HALLMAN et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08143384 (B.P.A.I. Feb. 26, 1998)

Application for patent filed October 29, 1993. According to1
applicants, this application is a continuation-in-part of Application
07/813,669, filed December 27, 1991.
1
Paper No. 29
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROBERT A. HALLMAN, ROBERT D. HENSEL
EUGENE M. KIRCHNER, JEFFREY S. ROSS
AND JEROME D. WISNOSKY

______________
Appeal No. 96-3822
Application 08/143,384 1
_______________
ON BRIEF
_______________
Before RONALD H. SMITH, METZ and HANLON, Administrative Patent
Judges.
RONALD H. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-13,
21, 22, 24, 26 and 27, all the pending claims in the application.
Appeal No. 96-3822
Application 08/143,384
2
The subject matter of the appealed claims relates to a
surface covering composite comprising a substrate and a non-
particulate inorganic wear layer. Claim 1 is illustrative of
the appealed claims and reads as follows:
1. A surface covering composite comprising a substrate and
a non-particulate inorganic wear layer, the wear layer being
deposited on the substrate by a reduced pressure environment
technique and then the composite being embossed, the deposited
and embossed wear layer having a plurality of cracks on the
exposed surface, a majority of the cracks forming a non-random
pattern.
Appellants indicate on page 4 of their brief that the claims
stand or fall together. Accordingly, we will limit our
consideration to claim 1 in considering the rejection of the
appealed claims. 37 CFR § 1.192(c).
The references relied on by the examiner are:
Lewicke, Jr. (Lewicke) 3,953,639 April 27, 1976
Hensel et al. (Hensel) 5,077,112 Dec. 31, 1991
Hensel et al. (Hensel) 5,188,876 Feb. 23, 1993
Appellants’ admissions, Section 18 of the Ross declaration.
Appeal No. 96-3822
Application 08/143,384
3
Claim 1-13, 21, 22, 24, 26 and 27 stand rejected under
35 U.S.C. § 103 as unpatentable over either Hensel `876 or Hensel
`112 in view of Lewicki and applicants’ admissions. We will not
sustain this rejection.
As noted by the examiner and disclosed in the background
section of appellants’ specification, the Hensel references
disclose the use of an inorganic wear layer on floor covering
composites. Lewicki teaches the embossing of a floor material
after the application of a wear layer. The examiner urges that
it would have been obvious to one of ordinary skill in the art to
emboss the non-particulate inorganic wear layer disclosed by
Hensel in view of the teaching of post coating embossing by
Lewicki “with the expectation of cracking and some loss of
function of the wear layer by applicants’ admissions.”
We disagree with the examiner’s characterization of the
alleged admission and with the examiner’s conclusion that the
claimed invention would have been obvious. It is well settled
that, in order to support a conclusion of obviousness, it must be
shown that the prior art would have suggested to one of ordinary
skill in the art that the process be carried out and “ would have
a reasonable likelihood of success” (emphasis added). In re Dow
Appeal No. 96-3822
Application 08/143,384
4
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). The evidence relied on by the examiner as an admission,
paragraph 18 of a Ross declaration, reads as follows:
18. In numerous conversations with experts as well
as those of ordinary skill in the art, the opinion was
expressed that embossing a reduced pressure environment
technique deposited wear layer, particularly a thick layer,
would create cracking which would destroy the desired properties
of the wear layer. Therefore embossing a reduced pressure
environment technique deposited wear layer, particularly a
thick layer, was not obvious to those of skill in the art.
We agree with appellants that the Ross declaration does
not support the examiner’s conclusion of obviousness, rather,
it supports appellants’ position that those of ordinary skill
in the art believed that embossing the reduced pressure
environment technique deposited wear layer would “destroy the
desired properties of the wear layer.” See also page 5 of the
specification. As noted by appellants, a belief in the
destruction of the properties needed for a wear layer is the
antithesis of an expectation of success. Accordingly, we agree
with appellants that the claimed invention would not have been
obvious to one of ordinary skill in the art.
Appeal No. 96-3822
Application 08/143,384
5
The decision of the examiner is reversed.
REVERSED
RONALD H. SMITH )
Administrative Patent Judge ) BOARD OF PATENT
)
) APPEALS AND
)
ADRIENE LEPIANE HANLON ) INTERFERENCES
Administrative Patent Judge )
)
Appeal No. 96-3822
Application 08/143,384
6
Andrew H. Metz, Administrative Patent Judge, Concurring.
While I agree with the conclusion of the majority that
Hallman et al.'s claims here on appeal are not unpatentable under
35 U.S.C. § 103, my reasons for so-concluding are distinct from
the reasons expressed by the majority. Accordingly, I write
separately.
As correctly noted by the majority, the patentability of
Hallman et al.'s claims on appeal stand or fall with the
patentability of claim 1. Claim 1 embraces a surface covering
comprising a substrate and a non-particulate inorganic wear
layer. Claim 1 also requires that the wear layer be deposited by
a particular technique and that the composite is embossed such
that the wear layer is embossed and has "a plurality of cracks on
the exposed surface, a majority of the cracks forming a non-
random pattern."
The Hensel references disclose that in a surface covering
composite comprising a substrate and a non-particulate inorganic
wear layer the substrate layer may be embossed before applying
the ceramic film (wear layer). There is no disclosure or
suggestion of embossing the wear layer which is a thin hard film
Appeal No. 96-3822
Application 08/143,384
7
of an inorganic oxide or nitride after deposition on the
substrate (see '112, column 5, lines 59 through 61; '876, column
7, lines 57 through 59). Lewicki, Jr. teaches embossing the wear
layer of a composite comprising a substrate and a wear layer
after the wear layer is affixed to the substrate. The wear layer
is describe as "vinyl or like wear layer" (column 1, lines 59 and
60).
In my opinion, the prior art relied on (excluding the so-
called admissions) does not raise a prima facie case of
obviousness. The primary references do not emboss the entire
composite but only the substrate before laying down the wear
layer. While the so-called secondary art embosses a composite
after the wear layer is deposited on the substrate, the wear
layer is not inorganic let alone a non-particulate inorganic.
There is no prior art which teaches embossing in any manner a
substrate comprising a non-particulate inorganic oxide film
deposited by a reduced pressure environment technique. There-
fore, I do not see that any prima facie case of obviousness is
raised by the prior art patents on which the examiner relies to
reject appellants' claims.
Appeal No. 96-3822
Application 08/143,384
¶ 18. of the Ross declaration is reproduced at page 3 of the 2
Examiner's Answer.
8
To the extent the examiner relies on the so-called
admissions from ¶ 18. of the Ross declaration as evidence in2
support of the rejection under 35 U.S.C. § 103, I enter the
following comments. In the first instance, the paragraph is
gross hearsay! What experts? What persons of ordinary skill in
the art? How did declarant distinguish between "an expert" and a
person "of ordinary skill in the art"? While I recognize that
hearsay is admissible in ex parte practice before the office,
¶18. is entitled to little or no weight because there is
absolutely no foundation for the statements made therein.
Assuming the declarant is an expert, even the opinions of experts
must find some foundation or basis in some evidence in the
record. Moreover, while ¶ 18. makes reference to the thickness
of the layer, claim 1 has no recitation or requirement for a
thick layer! Therefore, I strongly disagree with the appellants'
conclusion and, accordingly, the majority's as well, that the
Ross declaration "supports the position that experts in the field
and those of ordinary skill in the art believe that embossing a
reduced pressure environment technique wear layer would destroy
Appeal No. 96-3822
Application 08/143,384
9
the desired properties of the wear layer" (page 7 of appellants'
main brief). In my view, ¶ 18. of the Ross declaration is
neither an admission nor evidence of either obviousness or non-
obviousness. It is gross hearsay unsupported by any underlying
facts.
The majority also directs attention to page 5 of the
specification, an apparent reference to lines 12 through 15 of
said page, as evidence that there was a belief as of appellants'
filing date that embossing an inorganic wear layer would destroy
the properties of the wear layer. Therein it is stated:
It was believed that flexing or embossing would create
unacceptable cracking, i.e. cracks which would be
noticeable, reduce gloss level, or lead to unacceptable
staining.
Nonetheless, this self-serving disclosure by appellants in their
specification suffers from the same shortcomings as ¶ 18. of the
Ross declaration: it is unsupported by any underlying facts.
In conclusion, I would reverse the examiner's rejection of
the claims of the grounds that the examiner has failed to
Appeal No. 96-3822
Application 08/143,384
10
establish that the invention claimed by appellants would have
been prima facie obvious at the time appellants' invention was
made.
) BOARD OF PATENT
ANDREW H. METZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES

Appeal No. 96-3822
Application 08/143,384
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Douglas E. Winters
Armstrong World Industries, Inc.
Patent Department
P. O. Box 3001
Lancaster, PA 17604
RHS/cam