Ex Parte Schlisner

Patent Trial and Appeal Board

Mar 23, 2016

12774955 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121774,955 05/06/2010 Dennis G. Schlisner
408 7590 03/25/2016
LUEDEKA NEELY GROUP, P.C.
P 0 BOX 1871
KNOXVILLE, TN 37901
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.
65331.US 9123
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
docketing@luedeka.com
LNG.PA TENT@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENIS G. SCHLISNER
Appeal2014-006637
Application 12/774,955
Technology Center 1700
Before BEYERL YA. FRANKLIN, RICHARD M. LEBOVITZ, and
WESLEY B. DERRICK, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a dry adhesive backed flooring
for being installed in a flat orientation on a subfloor. The Examiner has
finally rejected the claims as obvious under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 134. The Examiner's rejections are reversed.
STATEMENT OF CASE
Appellant appeals the Examiner's final rejection of claims 1-4 and 9-
16. There are three independent claims on appeal, claims 1, 9, and 12. Each
of the claims is directed to a dry adhesive backed flooring. The flooring
Appeal2014-006637
Application 12/774,955
comprises "a double-side dry sheet adhesive" having "first and second dry
adhesive surfaces, the first dry adhesive surface being adhesively secured as
a dry surface to the under surface of the sheet flooring material to marry the
double-sided dry sheet adhesive to the sheet flooring material." Claims 1, 9,
12. In claim 1, the sheet adhesive is "substantially free of volatile organic
compounds."
The claims stand finally rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious in view of Japanese Patent Application JP 2000-117863
(published April 25, 2000) ("JP '863") in combination with additional prior
art publications, depending on the claim limitations in the dependent claims.
Appeal Br. 4. There are three separate obviousness rejections, but the
propriety of all depends on the issue of whether JP '083 describes "a double-
sided dry sheet adhesive" having "first and second dry adhesive surfaces" as
recited in all the rejected claims.
Claim 1 is representative and reads as follows (emphasis added):
1. A dry adhesive backed flooring for being installed in a flat
orientation on a subfloor, the flooring, comprising:
a sheet flooring material having a first length, a first
width, a decorative upper surface, and an opposite under
surface; and
a double-sided dry sheet adhesive married to the sheet
flooring material, the sheet adhesive being substantially free of
volatile organic compounds and having a second length
substantially corresponding to the first length, a second width
slightly less than but substantially corresponding to the first
width, and first and second dry adhesive surfaces, the first dry
adhesive surface being adhesively secured as a dry surface to
the under surface of the sheet flooring material to marry the
double-sided dry sheet adhesive to the sheet flooring material to
yield a dry adhesive backed flooring;
2
Appeal2014-006637
Application 12/774,955
wherein the dry adhesive backed flooring is installable on
a subfloor by contacting the second dry adhesive surface to the
subfloor to yield an installed dry adhesive backed flooring that
is substantially free of bubbles and wrinkles and the second dry
adhesive surface of the sheet adhesive will substantially
permanently maintain the installed dry adhesive backed
flooring adhered to the subfloor such that the installed dry
adhesive backed flooring will remain substantially flat as
initially installed and not significantly rise from the subfloor,
bubble or otherwise detach from the subfloor under nomlal use
conditions for the dry adhesive backed flooring.
The Examiner found that JP '863 teaches adhesive sheets for adhering
decorative adhesive sheets to walls, floors, and ceilings. Answer 2. Citing
Fig. 2 of JP '863, the Examiner found that JP '863 teaches a dry adhesive
sheet 4 with one side for adhering a sheet floor material to a floor and the
other side "necessarily adhesive" because the sheet floor material is adhered
to it. Id. at 3. Appellant contends that the Examiner erred in finding that JP
'863 describes "a double-side dry sheet adhesive" having "first and second
dry adhesive surfaces" as required by rejected claims 1, 9, and 12.
JP '863 is a Japanese language patent publication. There are two
different English translations: 1) a translation prepared by the McElroy
Translation Company for the USPTO ("McElroy translation"); and 2) a
translation prepared by Morningside Translation for Applicant ("Applicant's
translation"). The Examiner finds that paragraph 18 of the McElroy
translation of JP '863 describes a double-sided adhesive sheet. Non-final
Office Action 7. The Examiner stated that Applicant's translation is
inconsistent with the McElroy translation of paragraph 18. Id. It was
unnecessary for us to address the stated inconsistency with Applicant's
3
Appeal2014-006637
Application 12/774,955
translation because the Examiner's findings about the McElroy translation
are not supported by a preponderance of the evidence.
We begin with Fig. 2 of JP '863. The figure is reproduced below.
[IB!2]
Fig. 2 shows adhesive layer 4 with a peel-away layer 7 on top of it,
and a base sheet 1 underneath the adhesive layer The base sheet 1 has "warp
2 and weft 3" derived from the base material sheet when made of woven
fabric. McElroy trans. ,-i 16. When the woven fabric is "coated with
adhesive, the adhesive layer 4 that is formed has raised sections 5 and
recesses 6 that are derived from the aforementioned warp and weft." Id.
Warp and weft refer to the threads of a woven fabric. 1 Layer 7 is peel-away
layer laminated on the adhesive layer 4. Id. Layer 9 is a surface sheet. Id.
at ,-i 18. The sheet 9 can be decorative. Id. at ,-i 1.
Paragraph 16 of the McElroy translation explains that a "base sheet 1
made of woven fabric ... is coated with adhesive" to form adhesive layer 4.
As shown above, Fig. 2 of JP '863 shows adhesive layer 4 coated on top of
base sheet 1. The adhesive layer 4 is topped with a peel-away layer 7. After
the layer 7 is peeled off, the adhesive layer 4 is adhered to a wall, displaying
1 httQ://www.oxforddictionaries.com/us/definition/american english/weft
Accessed March 7, 2016.
4
Appeal2014-006637
Application 12/774,955
the surface sheet 9 on the opposite side. McElroy trans. iJ 24. The key issue
in this appeal is whether the side of the base layer opposite the peel-away
layer, and to which the surface sheet 9 is attached, has a dry adhesive surface
as required by the claims.
The description of Fig. 2 in paragraph 18 of the McElroy translation is
reproduced below:
[0018] With second adhesive sheet 8 according to the present
invention, as shown in Figure 2, base material sheet 1 made of
the woven fabric, nonwoven or mesh sheet described above is
adhered on a surface sheet 9, and adhesive layer 4 and peel-
away layer 7 are formed on top of it. In this adhesive sheet, too,
adhesive layer 4 has raised sections 5 and recesses 6 that are
derived from warp 2 and weft 3, the same way as in the first
adhesive sheet.
Paragraph 18 states that the "base material sheet 1 ... is adhered on a
surface sheet 9." However, unlike paragraph 16 which refers to the base
sheet 1 as "being coated with adhesive," paragraph 18 does not describe how
the base sheet 1 is adhered to the surface sheet 9. Paragraph 18 expressly
describes one adhesive surface, namely adhesive layer 4, but it does not
expressly describe a second adhesive surface as required by the claims.
The Examiner states that the sheet is "necessarily adhesive on both
side ... so the decorative sheet can be installed by pressing onto a floor."
Answer 7. The Examiner takes the position that the entire structure between
the peel-away layer 7 and surface sheet 9 is a double-coated adhesive sheet
because the thickness of the adhesive layer can be adjusted depending on the
base sheet 1. Id. at 8. However, Fig. 2 shows only the adhesive layer on top
of the base layer 1, but not on both sides.
5
Appeal2014-006637
Application 12/774,955
The Examiner states that Appellant "completely ignores the express
teaching that the adhesive layer 4 has the thickness of the base material sheet
1, and duplicates the profile of the base material sheet l." Answer 8-9. The
Examiner did not identify the disclosure in JP '863 where this teaching can
be found. The following disclosure from JP '863 discusses the thickness of
the adhesive layer.
With the first adhesive sheet according to the present invention,
a woven fabric, a nonwoven or a mesh such as this is used as
the base material sheet, and an adhesive layer is formed on it.
The adhesive is not specifically limited as long as it is one that
is traditionally used for adhesive sheets. While any adhesive be
used, it is normally preferable to use an acrylic adhesive. The
dry thickness of the adhesive layer depends on the thickness
and weight of the base material sheet, and it also depends on the
diameter of the yam that constitutes the base material sheet or
the diameter of the mesh material that constitutes the mesh
sheet, but normally a range of 5-300 µmis preferred, and more
preferably 10-200 µm.
McElroy Trans. ,-i 14 (underlining added).
We do not find a teaching in paragraph 14 of an adhesive layer that
duplicates the profile of the base material sheet.
The Examiner also takes the position that claims 3 and 4 of JP '863
"expressly state that the formed adhesive layer 4 has the thickness and
profile of the base material sheet." Answer 8. Claims 3 and 4 are
reproduced below with the Examiner's underlining.
3. An adhesive sheet manufacturing method that is
characterized in that a base material sheet made of a woven
fabric, a nonwoven or a mesh sheet is coated with adhesive to
form an adhesive layer that has recesses and raised sections
derived from said woven fabric, nonwoven or mesh sheet in the
surface.
6
Appeal2014-006637
Application 12/774,955
4. An adhesive sheet manufacturing method that is
characterized in that a base material sheet made of a woven
fabric, a nonwoven or a mesh sheet on a surface sheet is coated
with adhesive to form an adhesive layer that has recesses and
raised sections derived from said woven fabric, nonwoven or
mesh sheet in the surface.
Claims 3 and 4 refer to the base material as being coated with
adhesive to form an adhesive layer. We do not see an "express" statement
that "the formed adhesive layer 4 has the thickness and profile of the base
material sheet." The Examiner's finding is not supported by a
preponderance of the evidence.
Claim 4, on the hand, supports Appellant's arguments. Claim 4
describes "a base material sheet ... on a surface sheet is coated with
adhesive to form an adhesive layer." In other words, the "base material
sheet [ 1] is "on" the "surface sheet [9]" and the base material sheet is coated
with adhesive to form the "adhesive layer 4." The most reasonable
interpretation of this disclosure is that the adhesive layer is on one side and
the surface sheet is on the other side - fully consistent with Fig. 2.
Because the Examiner's findings are not supported by a
preponderance of the evidence, we reverse the obviousness rejections of
claims 1, 9, and 12, and claims 2-4, 10, 11, and 13-16 which depend from
them.
REVERSED
7