GFH Enterprises, Inc.

Patent Trials and Appeals Board

Jul 13, 2020

15714689 - (D) (P.T.A.B. Jul. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/714,689 09/25/2017 David A. Moons GFH 2293.US 9938
321 7590 07/13/2020
STINSON LLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
EXAMINER
JUSKA, CHERYL ANN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
07/13/2020 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. MOONS and TARIK CHHABRA

Appeal 2019-005308
Application 15/714,689
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–24. We have jurisdiction under
35 U.S.C. § 6(b). Oral argument for this matter was held on June 30, 2020,
and a transcript of the hearing will be added to the record in due course.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as GFH
Enterprises, Inc. Appeal Br. 2.
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Application 15/714,689

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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a chair mat surface
that a roller chair may roll across. Spec. ¶¶ 1–2. Appellant explains that
roller chairs may have difficulty rolling when placed on a rug or carpet and
that rigid chair mats may scuff or damage hard floors. Id. ¶ 2. Appellant
discloses adding a strength layer to the chair mat to address these concerns.
Id. ¶ 20. Claim 1 is illustrative:
1. A chair mat providing a rolling surface for a wheeled chair
comprising:
a rigid layer having an upper surface and a lower surface and
including at least two rigid layer members arranged for folding one
onto the other about a hinge;
a strength layer attached to the rigid layer and covering the
upper surface of the rigid layer to hold the rigid layer members
together for folding about the hinge;
a fabric floor covering fixedly attached to the strength layer,
wherein the fabric floor covering is adhered to the strength
layer and the strength layer is adhered to the rigid layer, the adherence
of the fabric floor covering to the strength layer and adherence of the
strength layer to the rigid layer rigidifying the fabric floor covering so
that as casters of a wheeled chair move over an upper surface of the
fabric floor covering, the combined fabric floor covering and strength
layer resists wrinkling and bunching.

Appeal Br. 22 (Claims Appendix).

2 In this Decision, we refer to the Final Office Action dated September 17,
2018 (“Final Act.”), the Appeal Brief filed January 29, 2019 (“Appeal Br.”),
the Examiner’s Answer dated May 2, 2019 (“Ans.”), and the Reply Brief
filed July 2, 2019 (“Reply Br.”).
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Application 15/714,689

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REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Calkins US 6,022,617 Feb. 8, 2000
Horian US 8,075,971 B1 Dec. 13, 2011
Gold US 2011/0183136 A1 July 28, 2011
Robbins, III US 2014/0154474 A1 June 5, 2014
Von Behren US 2018/0161226 A1 June 14, 2018
Zheng CN 204181405 U Mar. 4, 2015

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claim 17 under 35 U.S.C. § 112 as failing to comply with the written
description requirement. Ans. 4.
B. Claims 1–5, 7–12, 14, 18–22, and 24 under 35 U.S.C. § 103 as
obvious over Horian and Gold. Id. at 4.
C. Claim 6 under 35 U.S.C. § 103 as obvious over Horian, Gold, and
Calkins. Id. at 10.
D. Claim 13 under 35 U.S.C. § 103 as obvious over Horian, Gold, and
Robbins, III. Id.
E. Claim 15 under 35 U.S.C. § 103 as obvious over Horian, Gold, and
Zheng. Id. at 11.
F. Claim 16 under 35 U.S.C. § 103 as obvious over Horian, Gold, Zheng,
and Von Behren. Id.
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G. Claim 23 under 35 U.S.C. § 103 as obvious over Horian, Gold, and
Von Behren. Id. at 11.

OPINION
Rejection A, written description. The Examiner rejects claim 17 under
35 U.S.C. § 112 as failing to comply with the written description
requirement. Ans. 4. To determine whether the written description
requirement is met, we consider whether disclosure of the earlier application
relied upon “conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, [the inventor] was in possession of the
invention.” In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).
Claim 17 recites, “[t]he chair mat as set forth in claim 16 wherein the
floor covering has corners which are truncated, and the rigid layer has
corners of a different shape than the corners of the fabric floor covering.”
Appeal Br. 24 (Claims App). Appellant argues that Figures 8–10 illustrate
corners of the rigid layers being distinct in shape from the corners of the
fabric covering layer. Id. at 20. We agree. Figure 8 shows combined fabric
and strength layers, 17, and 19, cut into a shape with forty-five degree
triangle corners. Figure 9 shows the combined fabric and strength layer
being laid on top of rigid sheets 21A and 21B having ninety degree corners.
The Examiner does not persuasively explain why these figures do not
demonstrate possession of claim 17’s recitations. Ans. 3. We, therefore, do
not sustain the Examiner’s rejection.
Rejections B–G, obviousness. The Examiner rejects independent
claims 1 and 20 as obvious over Horian in view of Gold. Appeal Br. 4. The
Examiner also rejects dependent claims 2–5, 7–12, 14, 18, 19, 21, 22, and 24
Appeal 2019-005308
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as obvious over Horian in view of Gold and rejects other dependent claims
as obvious over Horian in view of Gold and in view of additional references.
Id. at 4–12.
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). To resolve the issues before us on appeal, we focus
on the Examiner’s findings and determinations that relate to the error
Appellant identifies.
The Examiner finds that Horian discloses a chair mat having rigid flat
panels and a flexible fabric. Ans. 4–5. The Examiner finds that Horian has a
reinforcing material strip 26 and strength filaments 28 that “read on
[A]ppellant’s strength layer.” Id. at 5. The Examiner finds that Horian does
not teach that the strength layer covers the upper surface of the rigid layer or
bottom surface of the rug layer. Id. The Examiner finds that Gold teaches a
foldable chair pad comprising panels of bamboo planks and a mesh sheet
206 extending over the entirety of the chair pad. Id. at 6. The Examiner
determines that it would have been obvious to modify the material strip 26
and strength filaments 28 of Horian to extend over the entirety of the chair
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mat layers as suggested by Gold “to reinforce the entire chair mat” and “to
enable the use of more panels for folding into a small package for consumer
purchase or storage.” Id. at 7.
Appellant argues that the Examiner has not adequately established
that a person of skill in the art would have modified Horian according to
Gold to reinforce the entire chair mat as required by independent claims 1
and 20. Appeal Br. 9–10. We agree.
We first address claim construction. Both Appellant and the Examiner
interpret independent claim 1 as requiring that the strength layer cover
substantially all of the upper surface of the rigid layer (as opposed to
covering only a relatively small portion of the upper surface of the rigid
layer) and interpret claim 20 as requiring that the strength layer be
“intimately bonded” to substantially the entire rug layer (as opposed to being
bonded to only a relatively small portion of the rug layer). See, e.g., Appeal
Br. 9–10 (9–10); Ans. 6 (stating that Horian does not teach that “the strength
layer covers the upper surface of rigid layer or the bottom surface of the rug
layer”). Appellant further confirmed this position during oral argument. June
30, 2020, Hearing Tr. (transcript to be added to record when available). The
position of Appellant and the Examiner is consistent with Appellant’s
Specification (see, e.g., Spec. Fig. 5, ¶ 20), and we agree with this
construction. We, therefore, consider Appellant’s argument with this claim
construction in mind.
With respect to the obviousness rejection, the preponderance of the
evidence supports that Horian uses material strip 26 and strength filaments
28 “under certain circumstances” where the panel edges come together. See,
e.g., Horian Fig. 3, 3:18–25. The material strip and filaments provide “added
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strength for repeated folding” if frequently folding and moving of the chair
mat is expected. Id. at 4:43–63. Horian does not suggest that the strip and
filament would be usefully extended to cover the entire rigid or rug layer.
Indeed, Horian teaches bonding the rug layer directly to the rigid layer. Id.
at 3:5–7.
Gold, meanwhile, does not have an upper rug layer. Rather, its upper
layer comprises many bamboo planks. Gold Fig. 1, 2. Gold uses fiber mesh
sheet 206 to hold the many bamboo planks in place. Id. ¶ 30 (“The mesh
sheet further bonds the bamboo planks together.”). Thus, neither Horian nor
Gold teach or suggest use of a strength layer that covers a rigid layer or
bonds with a rug layer for the purpose of adding strength, adding more
foldability, or, as Appellant discloses, to prevent wrinkling and bunching.
Spec. ¶ 20.
The Examiner nonetheless determines that a person of skill in the art
would have modified Horian according to Gold for two reasons: (1) “to
reinforce the entire chair mat” and (2) “to enable the use of more panels for
folding into a smaller package for consumer purchase or storage.” Ans. 7.
The Examiner, however, does not cite evidence or other persuasive rationale
as to why a person of skill would have had these motivations. As we explain
below, the preponderance of the evidence in the present record does not
adequately support these rationales to combine.
With respect to reinforcement, adding more layers to any structure
could add strength, but this does not make every such modification obvious.
Reply Br. 3 (arguing that adding strength as rationale for adding a strength
layer is circular logic). Here, Horian teaches that its chair mat, unmodified,
is “rigid and strong” and makes use of an “unbelievably strong and durable”
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fabric material. Horian 1:57–62, 3:48–58. Although not dispositive, these
teachings weigh against the Examiner’s determination that a person of skill
in the art would have had reason to modify Horian for further strength.
With respect to enabling more panels, such a modification would not
necessarily lead to a strength layer meeting the claims’ covering or bonding
requirements. Rather, Appellant persuasively argues that a person of skill in
the art would have employed multiple material strips 26 (as taught by
Horian) if multiple panels were desired (i.e., if frequent folding of the mat
was expected). Reply Br. 3–4.
In sum, the preponderance of the evidence does not adequately
support that a person of skill in the art would have had reason to combine the
teachings of Horian and Gold in order to reach the strength layer recitations
of independent claims 1 and 20. See, e.g., Belden Inc. v. Berk-Tek LLC, 805
F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” (emphasis in original)). We, thus, do not sustain the rejection of
those claims. Because the Examiner’s treatment of dependent claims
(including the introduction of additional references for some claims) does
not cure this error, we also do not sustain the Examiner’s rejection of the
dependent claims.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17 112 written description 17
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Application 15/714,689

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–12,
14, 18–22,
24
103 Horian, Gold 1–5, 7–12,
14, 18–22,
24
6 103 Horian, Gold, Calkins 6
13 103 Horian, Gold, Robbins,
III
13
15 103 Horian, Gold, Zheng 15
16 103 Horian, Gold, Zheng,
Von Behren
16
23 103 Horian, Gold, Von
Behren
23
Overall
Outcome
1–24

REVERSED