Ex Parte Wirycz et al

Board of Patent Appeals and Interferences

Jan 2, 2009

09996454 (B.P.A.I. Jan. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS WIRYCZ, PER EDLUND, and
KRISTER DRAXO
____________

Appeal 2008-4916
Application 09/996,454
Technology Center 1700
____________

Decided: January 2, 2009
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
THOMAS A. WALTZ, Administrative Patent Judges.

PAK, 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 through 3, 5 through 20, and 24
through 26, all of the claims pending in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

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STATEMENT OF THE CASE
The subject matter on appeal is directed to a process of manufacturing
a fiberglass wall covering. (Spec. 4). Further details of the appealed subject
matter are recited in claims 1, 24, and 25, which are reproduced below:
1. A process of manufacturing a designed fiberglass wall covering
comprising;

(a) providing a fiberglass fabric;

(b) impregnating the glass fabric by applying a chemical dispersion to
the glass fabric wherein said chemical dispersion is provided as a water
based dispersion comprising starch and a polymeric binder;

(c) drying the treated glass fabric;

(d) subsequently forming a first image coating on one side of said
treated glass fiber fabric by selectively applying a hydrophobic primary
image coating to a portion of the treated glass fabric;

(e) subsequently forming a second image coating on said first image
coating by selectively applying the coating to a portion of the treated glass
fabric, said coating applied from a chemical mixture consisting essentially of
a polymeric binder and expandable chemicals, with said second coating
being capable of creating distinct image pattern upon heating; and

(f) heating the glass fabric to expand the expandable chemicals and
thereby create a three-dimensional image pattern.

24. A process of manufacturing a designed glass fiber wall covering
comprising:

(a) applying a chemical dispersion comprising a starch, a polymeric
binder and optionally a pigment and/or a cross-linking agent to a glass fiber
fabric;
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(b) subsequently applying to selected areas on one side of the treated
fabric of step (a) above, a first image layer comprising a hydrophobic
coating selected from a hydrophobic binder or varnish;

(c) subsequently applying a second image coating to selected areas of
the first image layer applied in step (b) above, said second image coating
consisting essentially of a polymeric binder and expandable microspheres;
and

(d) subjecting the coated glass fiber fabric obtained in step (c) above
to an elevated temperature to expand the microspheres and create a three-
dimensional image pattern.

25. The process according to claim 24, wherein the second image
coating consists essentially of 20% to 80% of a polymeric latex binder and
5% to 40% of expandable microspheres, the percentages based on the dry
weight of the coating.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Schwartz 4,433,022 Feb. 21, 1984
Melber 4,902,722 Feb. 20, 1990
Edlund 6,291,011 B1 Sep. 18, 2001

The Examiner rejects the claims on appeal as follows:
1) Claims 1-3, 5-20, and 24-26 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Edlund and Melber; and
2) Claims 1-3, 5-20, and 24-26 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Edlund and Schwartz.
Appellants appeal from the Examiner’s decision rejecting the claims
on appeal under § 103(a).

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ISSUES
With respect to claims 1 and 24 in rejection (1), Appellants do not
dispute the Examiner’s finding that Edlund teaches steps (a) through (d)
recited in claim 1 and steps (a) and (b) recited in claim 24. (FF 1). Nor do
Appellants dispute the Examiner’s finding that Melber teaches heating a
syntactic foamable print medium on a fiberglass fabric to expand expandable
microspheres containing expandable chemicals to create a distinct three-
dimensional image pattern. (FF 3). Instead, Appellants argue that there is
“no disclosure in the cited [prior] art [references] which would have
motivated those of ordinary skill in the art to modify the process of Edlund
to include the step of Melber.” (App. Br. 6). Appellants also argue that
Melber does not teach the claimed second image coating "consisting
essentially of a polymeric binder and expandable chemicals" as recited in
claim 1 or "consist[s] essentially of a polymeric binder and expandable
microspheres" as recited in claim 24. (App. Br. 8).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that one having ordinary skill in the art would
have been led to apply and heat the claimed second image coating consisting
essentially of a polymeric binder and expandable chemicals on top of
Edlund’s treated fiber glass wall covering having an image (first
hydrophobic image coating) to create a three-dimensional image pattern in
the manner recited in claims 1 and 24 within the meaning of § 103?
With respect to claim 25 in rejection (1), Appellants do not dispute the
Examiner’s finding that Melber's thermosetting acrylic latex corresponds to
the claimed polymeric latex binder. (FF 4). Instead, Appellants argue that
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“no polymeric binders are present in the expandable formulations of . . .
Melber, let alone in the amount set forth in claim 25.” (App. Br. 9).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that Melber teaches or would have suggested 20%
to 80% of a polymeric binder and 5% to 40% of expandable microspheres
based on a dry weight of the coating as required by claim 25 within the
meaning of § 103?
With respect to rejection (2), Appellants do not dispute the
Examiner’s finding that Edlund teaches steps (a) through (d) recited in claim
1 and steps (a) and (b) recited in claim 24. (FF 1). Nor do Appellants
dispute the Examiner’s finding that Schwartz teaches heating fiberglass
coated with an expandable print paste, which comprises expandable
microspheres filled with, inter alia, expandable chemicals, to create a three-
dimensional image pattern. (FF 12). Appellants argue that “there is no
disclosure in the cited art which would have motivated those of ordinary
skill in the art to modify the process of Edlund to include the step of
Schwartz.” (App. Br. 1).
Thus, the issue is: Have Appellants shown reversible error in the
Examiner’s determination that one having ordinary skill in the art would
have been led to apply and heat the claimed second image coating consisting
essentially of a polymeric binder and expandable chemicals on top of
Edlund’s treated fiber glass wall covering having an image (first
hydrophobic image coating) to create a three-dimensional image pattern in
the manner recited in claims 1 and 24 within the meaning of § 103?

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FINDINGS OF FACT (FF)
1. Appellants do not dispute the Examiner’s finding that Edlund teaches
steps (a) through (d) recited in claim 1 and steps (a) and (b) recited in
claim 24. (Compare Ans. 3-5 with App. Br. 3-14 and Reply Br. 1-2;
see Edlund, col. 1, ll. 20-21, col. 2, ll. 9-26, and col. 3, ll. 50-67). In
this regard, Edlund at col. 2, ll. 23-36 and col. 3, ll. 50-67 teaches a
method of manufacturing a designed fiberglass wall covering
comprising forming an image pattern (first image coating) on one
side of a treated fiberglass fabric via selectively applying a
hydrophobic varnish with or without color pigments (hydrophobic
image coating).
2. Edlund at col. 2, ll. 9-14 states that “[i]t is much desired in the art to
provide a feasible and economic process to produce an intermediate
rolled good product, which when applied to a wall and painted by a
consumer, will display a distinct and decorative image effect.”
3. Appellants do not dispute the Examiner’s finding that Melber teaches
applying and heating a syntactic foamable print medium on a
fiberglass fabric to expand expandable microspheres containing
expandable chemicals to create a distinct three-dimensional image
pattern. (Compare Ans. 3-4 and 5-8 with App. Br. 3-14 and Reply
Br. 1-2; see Melber, cols. 1-8).
4. Appellants do not dispute the Examiner’s finding that Melber's
thermosetting acrylic latex binder corresponds to the claimed
polymeric latex binder. (Compare Ans. 3 and 7 with App. Br. 3-9
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and Reply Br. 1-2; see Melber, col. 3, ll. 9-44 and col. 9, ll. 3-16 and
Spec. 11).
5. Melber at col. 1, ll. 20-21 and col. 7, ll. 30-36 teaches using a
syntactic foamable print medium corresponding to the claimed
second image coating to print two and three-dimensional graphic
designs in order to form “a permanent, good quality graphic
representation or decorative pattern” having good reproducibility.
6. Melber at col. 2, ll. 38-41 and col. 7, ll. 15-30 teaches that the
syntactic foamable print medium may be printed on “any known
substrate” including wall coverings and fiberglass fabrics.
7. Melber at col. 3, ll. 57-65 teaches that the pre-expanded microspheres
in its syntactic foamable print medium are formed from expandable
microspheres having blowing agents encapsulated therein. Melber at
col. 5, ll. 1-29 also teaches heating the expandable microspheres after
their application on a substrate in an air oven to expand the
microspheres.
8. Melber at col. 6, ll. 35-44 states that:
The foamed graphic media formulated in accordance with the
present invention may be applied to a substrate by any of the known
and conventional techniques appropriate thereto . . . All these
techniques share in common the selective application of a graphic
medium to a substrate, and all techniques are contemplated herein.

9. Melber at col. 7. l. 45 to 8, l. 26 states that:

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. . . .

It is also within the scope of the present invention to substitute a
minor amount of pre-expanded microspheres for a portion of the
expandable microspheres present within foamable formulations used
to produce a raised or three-dimensional graphic effect on paper or
textile substrates. One such formulation is commercially available
under the name FOAMCOAT. The partial substitution of pre-
expanded spheres renders such formulations more economical to
produce. One of the potential benefits exhibited by such a system is
the ability to print, dry, expand[,] and cure the foam on a rotary screen
press at increased line speeds.
The ratio of pre-expanded microspheres to expandable
microspheres may, of course, vary within wide limits depending upon
end use, method of application, etc. However, with a combination of
1 percent pre-expanded with 16 percent expandable microspheres, the
mileage obtained is substantially better than that obtained with
FOAMCOAT not enhanced with pre-expanded spheres. In general, it
is anticipated that the range of pre-expanded spheres to be added to
the FOAMCOAT should be in the range of about 0.1 percent up to
about 5 percent.

10. Appellants have not shown that any of Melber's additional,
unclaimed ingredients (i.e., a pigment, a thickener, water, or pre-
expanded microspheres) detrimentally affect the formation of a three
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dimensional pattern. In fact, there is nothing in the record, which
indicates that Melber’s additional ingredients are detrimental to the
formation of a three-dimensional decorative pattern or adversely
affect the expansion of expandable microspheres upon heating.
11. The Specification at pages 4 and 10 states that claimed second image
coating is used to produce a three-dimensional decorative pattern via
expanding its microspheres.
12. Appellants do not dispute the Examiner’s finding that Schwartz
teaches heating fiberglass coated with an expandable print paste,
which comprises expandable microspheres filled with, inter alia,
expandable chemicals, to create a three-dimensional image pattern.
(Compare Ans. 4-5 and 10 with App. Br. 3-14 and Reply Br. 1-2; see
Schwartz, cols. 1-6).
13. Schwartz teaches selectively forming a three dimensional decorative
architectural pattern (second image coating) on a fiberglass wall
covering to obtain “various effects . . . both visually and spacially” by
printing an expandable print paste comprising a polymeric binder and
expandable microspheres containing expandable chemicals; and
subsequently heating the fiberglass wall covering coated with the
expandable print paste in order to expand the expandable microspheres
to create a three-dimensional decorative architectural pattern. (Schwartz,
cols. 1-7).

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PRINCIPLES OF LAW
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim would have been obvious] need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007).
"[T]he phrase 'consisting essentially of' limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52
(CCPA 1976)(emphasis omitted)(citing In re Janakirama-Rao, 317 F.2d 951
(CCPA 1963)).
It is well settled that Appellants have the burden of showing that the
additional ingredients taught by the prior art references affect the basic and
novel characteristic of a claimed chemical mixture and/or second image
coating. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
A specific example of in the prior art reference that is within the
claimed range reads on that claimed range. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).

ANALYSES
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Rejection (1): The 103(a) rejection over the combined disclosures of Edlund
and Melber1
Claims 1 and 24
As stated above, Edlund teaches a method of manufacturing a
designed fiberglass wall covering comprising forming an image (first image
coating) on one side of a treated fiberglass fabric via selectively applying a
hydrophobic varnish with or without color pigments (hydrophobic image
coating). (FF 1). Although Edlund teaches (FF 2) that its treated fiberglass
wall covering (having a hydrophobic image coating) may be painted to
provide an additional decorative image, Edlund does not mention forming a
three-dimensional image pattern by applying and heating a second image
coating consisting essentially of a polymeric binder and expandable
chemicals to its treated fiberglass fabric as required by claims 1 and 24.
Melber teaches selectively printing a three dimensional decorative
pattern on “any known substrate” including wall coverings and fiberglass
fabrics (inclusive of Edlund’s treated fiberglass fabric wall covering) via
applying and heating a syntactic foamable print medium corresponding to
the claimed second image coating comprising a pigment, a polymeric binder,
a thickener, water, pre-expanded microspheres, and expandable
microspheres containing expandable chemicals on the fiberglass wall
covering substrate to expand the microspheres containing the expandable
chemicals and create a three-dimensional decorative (image) pattern. (FF 5-

1 Appellants’ arguments for patentability are based solely on the limitations
of claims 1, 24, and 25. Therefore, we select claims 1, 24, and 25 as the
representative claims consistent with 37 C.F.R. § 41.37(c)(1)(vii).

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9). Melber teaches that its syntactic foamable print medium corresponding
to the claimed second image coating can be selectively applied to any wall
covering substrate, inclusive of Edlund’s treated fiber glass wall covering,
to form “a permanent, good quality graphic representation or decorative
pattern” having good reproducibility. (FF 5-6).
Given the advantage of forming a permanent, reproducible good
quality decorative image upon using Melber’s selective printing technique,
one having ordinary skill in the art would have been led to use Melber’s
syntactic foamable print medium corresponding to the claimed second image
coating on top of Edlund’s treated fiberglass wall covering (having a first
hydrophobic image coating) to create a three-dimensional decorative image
pattern in the manner required by claims 1 and 24 within the meaning of §
103. This is especially true in this case since Edlund’s treated fiberglass
wall covering is an intermediate rolled good product for applying additional
decorative images. (FF 2).
Accordingly, we determine that it would have been obvious to one
of ordinary skill in the art to apply the claimed second image coating on top
of Edlund’s treated fiberglass wall covering (having a first hydrophobic
image coating) and heating the resulting fiberglass fabric to create a three-
dimensional decorative pattern with a reasonable expectation of successfully
enhancing the appearance and reproducibility of Edlund’s fiberglass wall
covering.
In reaching this determination, we have considered Appellants'
argument that “claims 1 and 24, which recite ‘consisting essentially of’ a
polymeric binder and expandable chemicals or microspheres, exclude the
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presence of pre-expanded microspheres in the second image coating, as pre-
expanded microspheres would materially affect the basic and novel
characteristics of the presently claimed processes of manufacturing a
designed glass fiber wall covering.” (App. Br. 8). According to the
Specification, the claimed second image coating is used to produce a three-
dimensional decorative pattern via expanding its microspheres. (FF 11).
Thus, any additional ingredients not recited in claims 1 and 24 that do not
materially affect such basic and novel function (property) cannot be said to
be precluded by the language “consisting essentially of.” However,
Appellants have not shown that Melber’s additional ingredients (i.e., a
pigment, a thickener, water, and pre-expanded microspheres) materially
affect such basic and novel characteristics of the claimed second image
coating. (FF 10). In fact, there is nothing in the record, which indicates that
Melber’s additional ingredients are detrimental to the formation of a three-
dimensional decorative pattern or adversely affect the expansion of
expandable microspheres upon heating (FF 10).
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 1-3, 5-20, 24, and
26 under 35 U.S.C. § 103(a).

Claim 25
As stated above, Melber teaches a syntactic foamable print medium
having a pigment, a thermosetting acrylic latex binder, pre-expanded
microspheres, and expandable microspheres. Appellants do not dispute the
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Examiner’s finding that Melber's thermosetting acrylic latex binder
corresponds to the claimed polymeric latex binder. (FF 4).
Melber teaches that the syntactic foamable print medium comprises
22.4% binder and 2.5% microspheres based on a wet weight, which
corresponds to 52.4% of a binder and 5.8% microspheres based on a dry
weight (in the absence of water). (FF 9). These microspheres comprise pre-
expanded microspheres and expandable microspheres in a ratio of 1 to 16,
which corresponds to 6.25% pre-expanded microspheres and 93.75%
expandable microspheres. Id. In other words, Melber teaches a foamable
print medium comprising 52.4% of a binder and 5.43% of expandable
microspheres (calculated by multiplying 5.8 microspheres with 0.9375
expandable microspheres/microsphere) based on the dry weight, which read
on the claimed ranges of 20% to 80% of a polymeric latex binder and 5% to
40% of expandable microspheres based on dry weight.
Therefore, we determine that it would have been obvious to one of
ordinary skill in the art to employ a second image coating having a
polymeric binder and expandable microspheres in the claimed ranges within
the meaning of § 103(a).
Appellants also repeat the same arguments directed to independent
claims 1 and 24 in connection with claim 25. (App. Br. 9). These
arguments are not convincing for the reasons set forth above.
Thus, based on the same Factual Findings and conclusions set forth
above, we concur with the Examiner that Edlund and Melber would have
rendered the subject matter recited in claim 25 obvious to one of ordinary
skill in the art within the meaning of 35 U.S.C. § 103(a).
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Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claim 25 under 35 U.S.C.
§ 103(a).

Rejection (2): The 103(a) rejection over the combined disclosures of Edlund
and Schwartz2
As stated above, Edlund teaches a method of manufacturing a
designed fiberglass wall covering comprising forming an image (first image
coating) on one side of a treated fiberglass fabric via selectively applying a
hydrophobic varnish with or without color pigments (hydrophobic image
coating). (FF 1). Although Edlund teaches (FF 2) that its treated fiberglass
wall covering (having a hydrophobic image coating) may be painted to
provide an additional decorative image, Edlund does not mention forming a
three-dimensional image pattern by applying and heating a second image
coating consisting essentially of a polymeric binder and expandable
chemicals to its treated fiberglass fabric as required by claims 1 and 24.
Schwartz teaches selectively forming a three dimensional decorative
architectural image pattern on a fiberglass wall covering to obtain “various
effects . . . both visually and spacially” by printing an expandable print paste
corresponding to the claimed second image coating comprising a polymeric
binder and expandable microspheres containing expandable chemicals; and
subsequently heating the fiberglass wall covering coated with the

2 Appellants’ arguments for patentability are based solely on the limitations
of claims 1 and 24. Therefore, we select claims 1 and 24 as the
representative claim consistent with 37 C.F.R. § 41.37(c)(1)(vii).

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expandable print paste in order to expand the expandable microspheres to
create a three-dimensional decorative architectural image pattern. (FF 12-
13).
Given the advantage of obtaining various visual and spacial effects on
a fiberglass wall covering via Schwartz’s selective printing technique, one
having ordinary skill in the art would have been led to use Schwartz’s
expandable print paste corresponding to the claimed second image coating
on top of Edlund’s treated fiberglass wall covering (having a first
hydrophobic image coating) to create a three-dimensional architectural
image pattern in the manner required by claims 1 and 24 within the meaning
of § 103. This is especially true in this case since Edlund’s treated fiberglass
wall covering is said to be an intermediate rolled good product for applying
additional decorative images (FF 2).
Accordingly, we determine that it would have been obvious to one
of ordinary skill in the art to apply the claimed second image coating on top
of Edlund’s treated fiberglass wall covering (having a first hydrophobic
image coating) and heating the resulting fiberglass fabric to create a three-
dimensional decorative image pattern with a reasonable expectation of
successfully enhancing the appearance or visual and spacial effects of
Edlund’s fiberglass wall covering.
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 1-3, 5-20, and 24-
26 under 35 U.S.C. § 103(a).

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ORDER
The decision of the Examiner is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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