Ex Parte Socha

Patent Trial and Appeal Board

Dec 6, 2018

12564204 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/564,204 09/22/2009
45455 7590 12/10/2018
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Dennis Albert Socha
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.
2033.82058/4234 7881
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
docket@gbclaw.net
verify@gbclaw.net
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS ALBERT SOCHA
Appeal 2018-004416
Application 12/564,204 1
Technology Center 3600
Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
LISA M. GUIJT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Dennis Albert Socha ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Mar. 29,
2017, hereinafter "Final Act.") rejecting claims 1-7, 9-18, 20, and 21. 2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 United States Gypsum Company is identified as the real party in interest in
Appellant's Appeal Brief 4 (filed Oct. 1, 2017, hereinafter "Appeal Br.").
2 Claims 8 and 19 are cancelled. See Appeal Br. 16, 18 (Claims App.).
Appeal 2018-004416
Application 12/564,204
INVENTION
Appellant's invention is directed "to flooring systems designed to
reduce sound transmission." Spec. 1, 11. 8-9.
Claims 1, 13, and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An acoustic isolation mat comprising:
a bottom layer of space-defining supporting material
including a plurality of tangled fibers and space between said
fibers that defines an air layer for decreasing sound
transmission through said bottom layer; and
a top layer bonded to said bottom layer, said top layer
formed by two separate material layers made of different
materials that are bonded to each other.
REJECTION
The Examiner rejects claims 1-7, 9-18, 20, and 21 under 35 U.S.C.
§ I03(a) as being unpatentable over Keene et al. (US 7,096,630 Bl, iss. Aug.
29, 2006, hereinafter "Keene"), Dellinger et al. (US 2009/0242325 Al, pub.
Oct. 1, 2009, hereinafter "Dellinger"), and Gaffigan (US 6,077,613, iss. June
20, 2000).
ANALYSIS
Claims 1-7, 9-12, 20, and 21
Appellant does not present arguments for the patentability of claims
2-7, 9-12, 20, and 21 apart from claim 1. See Appeal Br. 11-12. Therefore,
in accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2-7, 9-12, 20, and 21 standing or falling with claim 1.
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Application 12/564,204
The Examiner finds that Keene discloses, inter alia, an acoustic
isolation mat including a bottom layer 14, having a plurality of entangled
fibers with space between the fibers to form an air layer that decreases sound
transmission, bonded to a top layer 16. Final Act. 2-3 ( citing Keene, col. 2,
11. 31-32, col. 4, 11. 7-11, 24--26, col. 5, 11. 54--67). The Examiner further
finds that Keene fails to disclose the "top layer [ 16] is formed by two
separate ... layers made of different materials that are bonded to each
other." Id. at 3. Nonetheless, the Examiner finds Dellinger discloses an
acoustic insulation structure formed from two separate material layers,
namely, wear resistant fabric 40 and non-woven polymeric fabric 14, which
are made from different materials. Id. Thus, the Examiner concludes that
It would have been obvious to one of ordinary skill in the art
at the time the invention was made to have provided an
additional water resistant material to the system of Keene ...
as taught by Dellinger so to enhance the water resistance of the
mat as well as the acoustic properties of the mat.
Id. at 4. The Examiner further determines that as Gaffigan discloses
bonding two nonwoven layers 10, 30 as a laminate,
It would have been obvious to [ the same] one of ordinary skill
in the art ... to have laminated the layers of Keene ... in view
of Dellinger as taught by Gaffigan so to ensure the layers stay
attached to one another and do not move relative one another
when the acoustic isolation system is installed.
Id. at 3, 4.
Appellant notes that Dellinger illustrates an embodiment in Figure 4
where non-woven material layer 14, entangled net material layer 12, non-
woven fabric layer 40, and entangled net material 34 are bonded in a
sandwich or a laminate. Appeal Br. 9-10 (citing Dellinger, para. 36).
However, Appellant argues that Dellinger "does not disclose that the
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Application 12/564,204
nonwoven material layers 14 and 40 can be or are bonded to each other,"
because in the embodiment illustrated in Figure 4 non-woven material layer
14 and non-woven fabric layer 40 "are clearly not adjacent to each other," as
they "are separated by net material layer 12." Reply Brief 3--4 (filed Mar.
22, 2018, hereinafter "Reply Br.") ( emphasis added).
Nonetheless, Appellant notes that in contrast to the Figure 4
embodiment of Dellinger, the embodiment illustrated in Figure 5 has non-
woven material layer 14 and non-woven fabric layer 40 adjacent to each
other. Id. at 4. However, Appellant argues that there is no disclosure "that
nonwoven material layers 14 and 40 can be bonded together or that all of the
material layers may be bonded together in a sandwich or laminate." Id.
Hence, according to Appellant, a skilled artisan "cannot conclude that the
nonwoven material layers 14 and 40 can be bonded together where Dellinger
does not [disclose] or suggest that these layers can be bonded together in a
sandwich type configuration or otherwise." Id. at 5; see also Appeal Br. 9--
10.
Furthermore, Appellant argues that "Dellinger teaches away from
bonding/laminating the nonwoven material layers 14 and 40 shown in FIG. 5
together" because Dellinger discloses bonding entangled net material layer
12 to non-woven material layer 14 and separately bonding non-woven fabric
layer 40 to entangled net material 34, but does not disclose bonding non-
woven layers 14 and 40. See Appeal Br. 10-11 (citing Dellinger, para. 36).
Appellant explains that because layers 12 and 34 shown in Figure 5 "must be
oriented at ninety degree angles relative to each other," non-woven layers 14
and 40 cannot be bonded to layers 12 and 34 "and to each other." Id. at 11
( citing Dellinger, paras. 36, 37).
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Application 12/564,204
Although we appreciate Appellant's arguments in regards to
Dellinger's disclosure of the embodiments illustrated in Figures 4 and 5, we
are not persuaded by such arguments because they are not commensurate
with the Examiner's rejection. As the Examiner specifically states,
"Dellinger is used purely to teach [that] the top layer may be formed from
two fabric layers." Examiner's Answer 5 (dated Jan. 23, 2018, hereinafter
"Ans."). The Examiner is not using the disclosure of Dellinger as a teaching
of bonding non-woven layers to each other, as Appellant argues. 3 Rather,
we agree with the Examiner that "Gaffigan provides the teaching of ...
securing adjacent non-woven layers together." Ans. 4. 4
Further, we do not agree with Appellant that because Dellinger does
not explicitly disclose bonding non-woven layers 14 and 40 means that a
skilled artisan would not know how to bond such layers. The lack of an
express disclosure of a particular claim element does not defeat a rejection
under 35 U.S.C. § 103(a), and such a requirement would essentially defeat
the purpose of 35 U.S.C. § 103(a). We must attribute skill to the
hypothetical person described in 35 U.S.C. § 103(a). In re Sovish, 769 F.2d
738, 742 (Fed. Cir. 1985). Moreover, in this case, Appellant specifically
recognizes that "bonding/laminating ... nonwoven material layers ...
would be well within the knowledge of a person of ordinary skill in the art
3 "Providing [Dellinger's] layer formed from a fabric atop the water resistant
material [ of Keene] will enhance the water resistance of [Keene's] acoustic
isolation mat and protect the isolation mat and the nonwoven fabric, as well
as enhance the sound deadening properties of the acoustic isolation mat."
Final Act. 3--4.
4 "Laminating adjacent fabric layers will ensure the layers [ of Keene,
as modified by Dellinger,] are secured to one another and are not able
to slide or bunch relative to one another." Final Act. 4.
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Application 12/564,204
regardless of the teachings in Gaffigan." Appeal Br. 10. Hence, a skilled
artisan would have the judgment and mechanical skills to bond Dellinger' s
non-woven layers 14, 40.
Furthermore, we do not agree that Dellinger teaches away from the
claimed invention because Dellinger does not "criticize, discredit or
otherwise discourage" bonding non-woven layers 14 and 40. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Examiner is correct that
"[ n ]owhere in the disclosure does Dellinger state that bonding layer 14 to 40
would have a negative impact on the overall product." Final Act. 13. We
also agree with the Examiner that even if layers 14 and 12 are bonded as a
mat and layers 40 and 34 are bonded as another mat, as layers are separately
laid before bonding, "the layers 14 and 40 can [then] still be bonded to one
another and keep the 90 degree orientation between layers 12 and 34." Id. at
14.
Lastly, although we appreciate Appellant's position that Gaffigan
discloses bonding non-woven layers 10, 30 via intermediate polymer matrix
20, we note that claim 1 does not require that the "two separate materials"
forming the "top layer" be "adjacent"5 to each other. See Reply Br. 6-7.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), "the name of the game is the claim." It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case,
claim 1 merely requires that the "two separate materials" forming the "top
5 An ordinary and customary meaning of the term "adjacent" is "having a
common endpoint or border." See https://www.merriam-
webster.com/dictionary/adjacent (last visited November 28, 2018).
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layer" be "bonded to each other." Appeal Br. 15 (Claims App.). As
Gaffigan discloses non-woven layers 10, 30 and intermediate polymer
matrix 20 form a laminate structure as a "single sheet," Gaffigan discloses
that non-woven layers 10, 30 are bonded to each other, as called for by claim
1. See Gaffigan, col. 3, 11. 22-26, Fig. 1.
Moreover, we note that a construction of the limitation "bonded to
each other" to include an intermediate layer (such as Gaffigan's polymer
matrix 20) is consistent with Appellant's Specification, which describes
layers 24 and 36 of top layer 34 as "laminated together ... with an
adhesive." Spec. 12, 11. 17-19 (emphasis added), Fig. 2. Accordingly,
Appellant's Specification does not compel a reading of claim 1 where the
"two separate materials" forming the "top layer" are "adjacent," that is, have
a common border, to each other.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Keene, Dellinger,
and Gaffigan. Claims 2-7, 9-12, 20, and 21 fall with claim 1.
Claims 13-15
Appellant relies on the arguments discussed supra in the rejection of
claim 1. See Appeal Br. 12-13; Reply Br. 7-8. Appellant's mere recitation
of the limitations of claim 13 is insufficient to apprise us of error in the
Examiner's rejection. See In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011).
Accordingly, for the same reasons discussed above, we also sustain the
rejection of claims 13-15 over the combined teachings of Keene, Dellinger,
and Gaffigan.
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Application 12/564,204
Claims 16-18
Appellant notes that the preamble of independent claim 16 "recites
that the acoustic isolation flooring system 'consisting of different
elements." Appeal Br. 13 ( citing In re Gray, 53 F .2d 520 (CCP A 1931 ).
According to Appellant, the use of the transitional phrase "consisting of'
limits the claim only to the elements recited. In contrast, Dellinger
discloses embodiments having the material layers 14, 40 and
two tangled fiber layers (FIGs. 4 and 5); and an embodiment
having two layers 14 made with the same material (FIG. 6).
Dellinger also does not disclose or suggest that the material
layers 14 and 40 are bonded to each other.
Id. Thus, according to Appellant, "the cited references, whether taken alone
or in combination, do not disclose the exact combination of elements of the
sound reduction mat of claim 16." Id.
In response, the Examiner takes the position that "the combination of
Keene, Dellinger, and Gaffigan do in fact teach the 'exact' combination of
elements." Ans. 5. According to the Examiner, "Keene teaches the
entangled net material as a lower layer and a water and wear resistant fabric
as the top layer," and Dellinger is used purely to teach the top layer may be
formed from two fabric layers." Id.
As discussed supra in the rejection of claim 1, Gaffigan discloses
bonding non-woven layers 10, 30 and intermediate polymer matrix 20 to
form a laminate structure of a "single sheet." Gaffigan, col. 3, 11. 22-26, Fig.
1. Hence, because Gaffigan discloses that polymer matrix 20 is bonded to
non-woven layers 10, 30 to form a laminate, the resulting acoustic isolation
mat of Keene, as modified by Dellinger and Gaffigan, includes an entangled
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Application 12/564,204
net material as a bottom layer and two bonded fabric layers with a polymer
matrix in between as the top layer.
Accordingly, we agree with Appellant that "the cited references ... do
not disclose the exact combination of elements of the sound reduction mat of
claim 16." Appeal Br. 13. In other words, the resulting acoustic isolation
mat of Keene, as modified by Dellinger and Gaffigan, includes an additional
polymer matrix between the claimed "first layer of water and wear-resistant
fabric" and "second layer of non woven polymeric fabric." See id. at 18.
Therefore, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 16-18 as unpatentable over Keene,
Dellinger, and Gaffigan.
SUMMARY
The Examiner's decision to reject claims 1-7, 9-18, 20, and 21 under
35 U.S.C. § 103(a) is affirmed as to claims 1-7, 9-15, 20, and 21 and reversed
as to claims 16-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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