Ex Parte Nilsson et al

Patent Trial and Appeal Board

Jul 17, 2013

12349349 (P.T.A.B. Jul. 17, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/349,349 01/06/2009 Magnus N. Nilsson 8688.017.USCN00 4858
74217 7590 07/17/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG L.L.P. - PERGO
1875 Eye Street
Eleventh Floor
Washington, DC 20006
EXAMINER
WATKINS III, WILLIAM P
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
07/17/2013 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 MAGNUS N. NILSSON, LARS OHLSSON,
MAGDALENA CHRISTIANSSON,
KRISTER HANNSON, and JAN ERICSSON
____________

Appeal 2012-008853
Application 12/349,349
Technology Center 1700
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, 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 57-62, and 65. We have jurisdiction
pursuant to 35 U.S.C. § 6. Oral arguments were presented on July 11, 2013.

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Application 12/349,349

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Appellants’ claimed invention is directed to a decorative laminate
product. Claim 57, the sole independent claim on appeal, is illustrative and
reproduced below:
57. A decorative laminate product having a surface
simulating a structure enhancing a décor, said simulated surface
structure selected from the group consisting of rough planed
stone, smooth stone with pits or micro-cracks and wood with
pores;
the laminate comprising:
a base layer comprising particle board or fiberboard:
a décor layer comprising a décor representing at least one
of rough planed stone, smooth stone with pits or micro-cracks
and wood with pores;
at least one mechanically embossed structured wear layer to
enhance the visual aspects of the décor and make it appear more
realistic;
the wear layer comprising a UV or electron beam curing acrylic
or maleamide lacquer comprising hard particles;
the structure of the mechanically embossed wear layer
enhancing the visual characteristics of the décor to make the
décor appear more realistic; the laminate further comprising a
top coat of maleamide lacquer on the structured wear layer;
and,
an elastic layer.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Hall US 3,899,611 Aug. 12, 1975
Lane et al. US Re 30,233 Mar. 18, 1980
Wang et al. US 5,458,953 Oct. 17, 1995
Eby et al. US 5,961,903 Oct. 5, 1999
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Velin et al. US 6,106,654 Aug. 22, 2000

The Examiner maintains the following grounds of rejection:
Claims 57-59, 61 and 65 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Eby in view of Velin and Hall. Claim 60 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Eby in view of
Velin, Hall, and Wang. Claim 62 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Eby in view of Velin, Hall, and Lane.
We reverse all of the stated rejections. Our reasoning follows.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of
establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d
1468, 1471-72 (Fed. Cir. 1984). Here, the Examiner’s efforts at meeting this
burden fall short.
In this regard, all of the claims on appeal require a decorative laminate
product including (1) a specified base layer, (2) a specified décor layer,
(3) an elastic layer, (4) a mechanically embossed structured wear layer
comprising a UV or electron beam curing acrylic or maleamide lacquer
comprising hard particles, and (5) a top coat of maleamide lacquer located
on the structured wear layer (see claim 57).
For each of the stated rejections1, as set forth in the first stated
rejection, the Examiner relies on a combination of Eby and Velin for
allegedly establishing the obviousness of modifying the surface covering of

1 For each of the separate second and third stated rejections, each pertaining
to separate dependent claims, the Examiner further relies on a different prior
art reference in addition to the references as applied in the first stated
rejection for allegedly teaching other details corresponding to additional
limitation(s) as to the claimed laminate that these separately rejected
dependent claims require (Ans. 8-10).
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Eby so as to allegedly result in a decorative laminate product corresponding
to the laminate of independent claim 57 and certain other dependent claims
subject to the first stated rejection but for a top coat of maleamide lacquer on
the structured wear layer (Ans. 5-7).
For this latter claimed feature, the Examiner turns to Hall for allegedly
teaching “the use of maleic amide based polymers and acrylic polymers to
form a hard durable top coating on a floor tile”, which top coating the
Examiner maintains would have been obvious to employ as a top coating for
Eby; that is, for the product of Eby as it would be after the Examiner’s
proposed modifications thereof in view of Velin. (para. bridging Ans. 7-8;
Hall, abstract; col. 3, ll. 55-60). The Examiner further maintains that the
maleamide lacquer of Appellants’ claim 57 can be construed “as a lacquer
that contains a maleamide monomer (maleic amide) that has been reacted
and cured to form a hard polymer” as “there is no definition of what a
‘maleamide lacquer’ is in the specification” and a search conducted by the
Examiner “did not reveal any art recognized definition for a ‘maleamide
lacquer’” (Ans.12).
In addition, the Examiner relies on the notion that “polymers are
frequently named based on the monomers from which they are formed” (id.).
The Examiner notes that giving the afore-discussed claim construction
as a broadest reasonable construction to the claim term “maleamide lacquer”
“allows for the maleamide lacquer to contain reacted and cured maleamide
monomer that has been reacted with other components” such as the
maleamide in component A of Hall (id. at 12-13).
Appellants, in effect, argue, inter alia, that the maleamide lacquer top
coat of claim 57 requires a top coat that is or contains maleamide whereas
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Application 12/349,349

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Hall teaches a pre-polymer which can be made using “reaction components
necessary to form maleamide”; however, “Hall further chemically reacts this
component [intermediate reaction product] to form an epoxy, not a
maleamide” (App. Br. 5-9).
Like Appellants, a dispositive weakness we see in the Examiner’s first
stated obviousness rejection (which carries over to the second and third
stated obviousness rejections involving several dependent claims) stems
from the Examiner’s assertions with respect to the correspondence of certain
aspects of precursors of component A of the coating of Hall with the
specifics of the rejected claims’ maleamide lacquer topcoat.
In particular, the Examiner has not reasonably established that the
maleamide lacquer topcoat of independent claim 57 encompasses the
radiation curable coating of Hall that employs a component A in forming
same, which latter component may possibly be a reaction product of glycidyl
acrylate with the reaction product (maleamide (FOA2 8)) of ethylene
diamine and maleic anhydride based on the Examiner’s generally expressed
notion that “polymers are frequently named based on the monomers from
which they are formed” (Ans. 12; Hall, col. 3, ll. 54-60). In other words, the
Examiner has failed to reasonably establish that the claim 57 topcoat of
maleamide lacquer, given its broadest reasonable construction when read in
light of the subject Specification as it would be understood by one of
ordinary skill in the art, is consonant with the Examiner’s rejection position
rather than being in accord with Appellants’ argued position (“the claimed
top coat is maleamide” not the multi-component reaction product coating as
taught by Hall (App. Br. 5)). In this regard and in tendering the rejection,

2 Final Office Action dated April 26, 2011.
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the Examiner appears to attach an unreasonably broad construction to claim
57 based, in part, on the asserted notion about polymer naming that is
applied to Applicants’ claimed maleamide lacquer without supplying any
evidence supporting such construction while also coupling that notion to
Hall’s coating in an attenuated manner with a forced reading of a possible
precursor of a single component of the several components used in forming
the coating of Hall.
Thus, we agree with Appellants that the Examiner has not carried the
burden to establish that this argued top coat requirement of all of the
appealed claims fails to differentiate the claimed laminate from the laminate
product that would be expected to result if we otherwise agree with the
Examiner’s proposed modifications of Ely based on Vein and Hall.
After all, the Examiner’s claim construction, on its face, appears
inconsistent with the plain language requirement of claim 57 which requires
a topcoat made of a maleamide lacquer. The Examiner has not pointed to
any language in the Specification that supports the Examiner’s claim
construction when the claims are read in light of the subject Specification as
they would be understood by one of ordinary skill in the art. Nor has the
Examiner supplied external evidence to substantiate the Examiner’s
viewpoint as to how one of ordinary skill in the art would have construed
this contested claim language to read on Hall’s coating absent specific
guidance in the subject Specification.
In this latter regard, it is instructive to note that the Examiner has not
identified any of the cited references as evidence in a manner to buttress the
Examiner’s case as to why an ordinarily skilled artisan would view this
claim term and the disclosure of Hall in the manner the Examiner proffers.
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In sum, as part of meeting the Examiner’s initial burden of
establishing the prima facie obviousness of the claimed subject matter, the
Examiner should have articulated a reasoned basis for the stated rejection
after correctly determining the differences between the subject matter of the
claims and the prior art and explained how “the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art.” 35 U.S.C. § 103(a). Here, the record
reflects that the Examiner’s efforts fall a little short in accomplishing this
task.
Accordingly, we reverse all of the Examiner’s obviousness rejections
for failure to present a prima facie case of obviousness for the claimed
subject matter.
ORDER
The decision of the Examiner to reject the appealed claims is reversed.

REVERSED

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