Ex Parte Sjoberg et al

Patent Trial and Appeal Board

May 30, 2013

11129497 (P.T.A.B. May. 30, 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.
11/129,497 05/16/2005 Ake Sjoberg 8688.023.US0001 9550
74217 7590 05/31/2013
NOVAK DRUCE CONNOLLY BOVE + QUIGG L.L.P. - PERGO
1875 Eye Street
Eleventh Floor
Washington, DC 20006
EXAMINER
GOFF II, JOHN L
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
05/31/2013 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 AKE SJOBERG and ANN-CHARLOTT JOHANSSON
____________

Appeal 2013-000249
Application 11/129,497
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, 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 1, 2, 5-7, 12-23, and 25. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Appellants’ claimed invention is drawn to a process for manufacturing
a decorative laminate including a pressing step that is conducted so as to join
a thermosetting laminate with an elastomer and a carrying core.1
Claim 1 is illustrative and reproduced below:
1. A process for the manufacturing of a decorative
laminate, which laminate comprises an upper decorative and
abrasion resistant thermosetting laminate layer and a carrying
core, wherein the carrying core is particle board or fiber board,
the upper side of the core is provided with the abrasion resistant
thermosetting laminate and with a dampening foil of a
thermoplastic elastomer comprising an expanded, physically
cross-linked polyolefin with closed cells having a density prior
to compression of 150-400 kg/m3 and an elasticity compression
coefficient of 0.5-2.7MPa, and a thickness of 0.1-0.7mm,
arranged between the upper side of the core and the abrasion
resistant thermosetting laminate, pressing the elastomer and
thermosetting laminate to join each with the other and with the
core thereby compressing the elastomer to increase its density
and to reduce its thickness.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Isaacson US 3,551,283 Dec. 29, 1970
Lindgren EP 0 329 154 Aug. 23, 1989
Baba (as translated) JP 01-310058 Dec. 14, 1989
Park US 5,288,762 Feb. 22, 1994

American Heritage Dictionary definition of “elastomer” 2000

Claims 1, 2, 5-7, 12-23, and 25 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.

1 This is the second appeal involving the subject Application. In the earlier
appeal No. 2010-000263, a Board Decision affirming the Examiner’s
rejections was mailed on June 15, 2010.
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Claims 1, 12, 19-21, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lindgren in view of Babu (JP ‘058), and Park, as further
evidenced by the American Heritage Dictionary (first stated base
obviousness rejection). Claims 2, 5-7, 13-18, 22, and 23 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Lindgren in view of
Baba (JP ‘058), Park, as further evidenced by the American Heritage
Dictionary, and Isaacson.
We reverse the Examiner’s lack of written description rejection under
the first paragraph of 35 U.S.C. § 112 as the Examiner has not carried the
burden to establish a lack of written description for the claimed process in
the Specification, as filed. On the other hand, the evidence adduced by the
Examiner supports the Examiner’s obviousness determination substantially
as indicated by the fact findings and reasons set forth in the Answer.
Accordingly, we affirm the Examiner’s obviousness rejections under 35
U.S.C. § 103(a). Our reasoning in support of the aforementioned
determinations follows.

Written Description Rejection
As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983)2:
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. . . . The

2 See also Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F. 3d 1336, 1351 (Fed.
Cir. 2010) (en banc).
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content of the drawings may also be considered in determining
compliance with the written description requirement. [Citations
omitted.]
It is the Examiner’s burden to establish a prima facie case of non-
patentability based on the written description requirement by presenting
evidence or reasons establishing why persons skilled in the art would not
recognize in the original disclosure a description of the invention defined by
the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
It is well settled that whether a specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, is a question of
fact. Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.
1998).
The Examiner finds that the application disclosure as originally filed
does not provide adequate written descriptive support for (1) the recitation
“compressing the elastomer to increase its density and to reduce its
thickness” as it is recited as a result of the claim 1 pressing step, and (2) for
the recitation “prior to compression” as recited in conjunction with the claim
1 dampening foil (elastomer) density limitation (Ans. 4-5 and 12-13).
However, there is no dispute that the Specification, as originally filed,
describes the use of pressure together with heat for joining the dampening
foil (elastomer) and the thermosetting laminate to a carrying core (Spec. 2,
3rd para.; see generally App. Br. and the Ans.).
Based on the applied joining pressure and the intrinsic compressibility
(expressly disclosed as an elastic compression coefficient) of the elastomeric
dampening foil, we determine that the recited pressing step for joining the
elastomer, thermosetting laminate, and carrying core would have involved
some compressing effect on the elastomer with concomitantly some increase
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in density and some reduction in thickness of the elastomer during the
pressing step regardless how small those changes in density and thickness
values during pressing may be, which is all that claim 1 requires. In this
regard, no particular amount of compressing, increase in density, and
decrease in thickness during the pressing step is required by claim 1. Nor
does claim 1 require that any density increase or any thickness decrease of
the elastomeric foil imparted during pressing persist in the foil as it exists
after completion of the pressing step.
Moreover, the Examiner has not established that disclosed and
claimed dampening foil (elastomer) density and thickness values reported in
the Specification are values that are not associated with the dampening foil
(elastomer) itself under conditions prior to the pressing step (Spec. 2). In
this regard, the Specification does not report the thickness and density values
as values obtained while the elastomer is being subjected to a particular
pressure load during pressing.
Hence, the claim 1 language “prior to compression” and “compressing
the elastomer to increase its density and reduce its thickness” has not been
established as involving a new concept by the Examiner’s assertion that
contact pressure may be all that is required to join the laminate and
dampening foil to each other and the core (Ans. 13).
It follows that we agree with Appellants’ arguments as to the lack of
merit in the Examiner’s written description rejection in so far as the
Examiner has not carried the burden to establish that the rejected claims are
in violation of the written description requirement of 35 U.S.C. § 112, on
this appeal record (App. Br. 3-4).
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Accordingly, we reverse the Examiner’s lack of written description
rejection.

Obviousness Rejections
Concerning the Examiner’s base obviousness rejection, Appellants do
not argue the rejected claims separately (App. Br. 4-6). Accordingly, we
select claim 1 as the representative claim on which we decide this appeal as
to the Examiner’s obviousness rejection of claims 1, 12, 19-21, and 25.
Appellants do not contest the Examiner’s findings with respect to the
explicit teachings of Lindgren, Baba (JP ‘058), and Park or the dictionary
definition of elastomer provided by the Examiner (FOA3 4-8; Ans. 4-9; App.
Br. 4-6; see generally Reply Br.). In particular, Appellants do not dispute
the Examiner’s factual determination that Lindgren, like Appellants,
discloses a process for making a decorative laminate, such as floor material,
comprising an upper decorative and abrasion resistant thermosetting
laminate layer and a core comprising particle board or fiber board, wherein
the upper decorative layer and the core are joined by pressing (App. Br. 4-6;
Ans. 6; Lindgren col. 1, ll. 4-7 and col. 2, ll. 31-35). Nor do Appellants
contest the Examiner’s determination that Baba (JP’058) discloses a process
of manufacturing a pressure-resistant composite floor material wherein a
cushioning, or dampening member 4 comprising rubber, foam or ethylene
foam material is placed between a base core 1 and a decorative laminate 2
and joining these components by means of pressing, wherein the dampening
member can have a thickness of 0.5 mm (App. Br. 4-6; Ans. 6; Baba,
abstract, p. 4, l. 16-p. 5, l. 18; see Fig. 2). Accordingly, we concur with the

3 Final Office Action dated October 28, 2011.
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Examiner that it would have been obvious for one of ordinary skill in the art
to employ a cushioning or dampening foil of the type disclosed by Baba
(JP’058) in the flooring laminate of Lindgren to form a cushioned floor
laminate as suggested by Baba.
Likewise, Appellants do not disagree with the Examiner’s
determination that (see App. Br. 4-6; Ans. 7):
Park teaches a foam or ethylene foam having enhanced
processability and physical properties such as high strength and
resiliency useful in cushioning applications comprising an
expanded, physically cross-linked (e.g. via irradiation)
polyethylene with closed cells having a density (prior to
pressing) of less than 500 kg/m3 such as about 250 kg/m3
(Column 1, lines 10- 14 and 49-54 and Column 2, lines 8-27
and line 38 and Column 5, lines 3-28 and Column 14, lines 5-
28 and Column 17, lines 5-14).

Therefore, we further find no reversible error in the Examiner’s
position that it would have been obvious for an ordinarily skilled artisan at
the time of the invention “to use as the foam and/or ethylene foam in
Lindgren as modified by JP 01310058 the foam taught by Park having
enhanced processability and physical properties such as high strength and
resiliency useful in cushioning applications” (Ans. 7).
However, Appellants do argue that the Examiner confuses inherency
with obviousness in asserting that “the pressing must also result in
compressing the elastomer to increase its density and to reduce its thickness”
in the Examiner’s proposed modification of Lundgren based on the
teachings of Babu and Park (App. Br. 5).
This argument is not found to be persuasive of reversible error in the
Examiner’s base obviousness rejection. In this regard, it is reasonable to
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expect that the pressing employed in forming the prior art laminate of
Lindgren utilizing an elastomeric cushioning layer as taught by Baba and
Park would have resulted in some compressing of the elastomer layer and
correspondingly increasing of density and decreasing of the thickness of the
elastomer layer during the pressing based on the combined prior art
teachings of the applied references even though none of the applied
references expressly disclose such compression and changes in density and
thickness of the elastomeric layer arising during pressing. See In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995) (inherency arises both in the context of
anticipation and obviousness). Indeed, Appellants seemingly acknowledge
that such compression would more likely than not result by stating that “[i]t
is clear to one skilled in the art that application of heat and pressure to bond
the claimed elements, as the Examiner alleges would have been performed
by combining Lindgren, Park, and JP 0131058 (in view of dictionary
definition) would have compressed the claimed dampening foil” in
responding to the Examiner’s written description rejection (Reply Br. 6).4
As indicated by the Examiner, Baba teaches the use of a 0.5 mm to 10
mm thick cushioning member which overlaps the claimed dampening foil
thickness of 0.1 to 0.7 mm and Park teaches that the closed cell cross-linked
elastomeric polyethylene polymer foam can have a density of less than 500
kg /m3, which density range overlaps the claimed elastomer density range
(Ans. 6 and 7). In light of the above and for reasons stated in the Answer,
the Examiner has reasonably determined that the dampening foil of the
modified Lundgren in light of the combined teachings of Lundgren, Baba

4 Claim 1 require the use of a pressing step however, claim 1 does not
require the application of heat.
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and Park would have been expected to result in forming a
cushioning/dampening foil member having an elasticity compression
coefficient corresponding to the required range for that parameter given the
correspondence of the density and thickness of the cushioning foam
suggested by Baba and Park, and the corresponding purpose of this layer for
reducing the impact from walking on a floor and improving the feel of
walking on a flooring laminate containing such a cushioning layer as taught
by Baba (Ans. 7 and 8).
Appellants’ arguments concerning a lack of inherency and
impermissible burden shifting on the part of the Examiner as to the claimed
elasticity compression coefficient of the dampening foil elastomer are not
persuasive as the Examiner has reasonably explained why one of ordinary
skill in the art armed with the teachings of the applied references would have
reasonably arrived at the use of an elastomer with a suitable elasticity
compression coefficient for its use as a manufactured floor cushioning layer
(Reply Br. 2-4). As the Court has explained, “[i]f a person of ordinary skill
can implement a predictable variation, §103 likely bars its patentability.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, as indicated
by the Examiner, Baba (JP’058) teaches that “the impact from walking is
reduced by the inserted cushion, and a feel of walking on is further
improved” (page 5 of Translation, ll. 6-8). Just as unexpected results are
evidence of nonobviousness, expected results, as demonstrated here, are
evidence of obviousness.
On this record, we shall sustain the Examiner’s first stated
obviousness rejection.
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Concerning the Examiner’s second stated obviousness rejection,
Appellants present additional arguments with respect to dependent claims 7
and 13 and do not contest the Examiner’s application of Isaacson as to the
other rejected claims (App. Br. 6 and 7).
Concerning the thermosetting laminate density range recited in claim
7, the Examiner reasonably maintains that one of ordinary skill in the art
would have arrived at a suitable density for the laminate, including a density
within the claimed range, upon the exercise of routine skill in forming the
flooring of Lundgren, as modified by Baba, Park, and Isaacson (Ans. 11 and
12). Appellants’ argument to the effect that the Examiner has engaged in
improper burden shifting fails to indicate any substantive error—e.g., an
erroneous finding or factual conclusion—in the Examiner’s reasoned
obviousness position (App. Br. 6).
Concerning dependent claim 13 requiring the use of melt glue, heat
and pressure, the Examiner relies on Isaacson for teaching the use of a low
cost glue or binder, such as a hot-melt adhesive (Ans. 10; Isaacson, col. 2, ll.
68-72 and Example 1). Here, Appellants have not argued that melt glues
were not an available option for one of ordinary skill in the art to select for
assembling a laminate, as suggested by the applied prior art. Lundgren
discloses the use of glue, heat and pressure in forming a laminate (Col. 2, ll.
34-35). On this record, Appellants’ conclusory argument respecting the
applied references not specifying a melt glue for bonding (joining) a
dampening foil as required by dependent claim 13 falls short of identifying
reversible error in the Examiner’s obviousness rejection of dependent claim
13.
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On this appeal record, we shall sustain the Examiner’s second stated
obviousness rejection pertaining to certain dependent claims.

CONCLUSION/ORDER
The Examiner’s decision to reject claims 1, 2, 5-7, 12-23, and 25
under 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject the appealed claims under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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