Hendrik Hecht et al.

Patent Trials and Appeals Board

Aug 7, 2019

14672445 - (D) (P.T.A.B. Aug. 7, 2019)

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.
14/672,445 03/30/2015 Hendrik Hecht 4385-153500 7463
28289 7590 08/07/2019
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/07/2019 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HENDRIK HECHT, INGO LEHNHOFF, and JENS SIEMS
____________

Appeal 2018-008397
Application 14/672,445
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–10 and 12–14. (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision includes citations to the following documents:
Specification filed July 21, 2015 (“Spec.”); Final Office Action mailed
January 18, 2018 (“Final Act.”); Appeal Brief filed May 21, 2018 (“Appeal
Br.”); Examiner’s Answer mailed May 7, 2018 (“Ans.”); and Reply Brief
filed August 23, 2018 (“Reply Br.”).
2 Appellant is the Applicant, Flooring Technologies, Ltd., which is
identified in the Appeal Brief as the real party in interest. (Appeal Br. 3.)
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THE INVENTION
Appellant states the invention relates to a solid-borne-sound underlay
based on wood-plastics-composite material. (Spec. 1, ll. 5–9.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A solid-borne-sound underlay comprising a wood-plastics-
composite material, wherein:
the thickness of the solid-borne-sound underlay is 2.5 mm; and
the solid-borne-sound underlay can be reversibly rolled up.
(Appeal Br. 22 (Claims Appendix).)

REJECTIONS
1. The Examiner rejected claims 1, 2, 5–8, and 14 under 35 U.S.C. § 103
as obvious over Doerer et al. (US 4,418,031; issued November 29,
1983, hereinafter “Doerer”) and Döhring et al. (US 2010/0051380 A1;
published March 4, 2010, hereinafter “Döhring”).
2. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103 as
obvious over Doerer, Döhring, and Tröger et al. (US 7,405,248 B1;
issued July 29, 2008).
3. The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103 as
obvious over Doerer, Döhring, and Tröger et al. (US 2009/0068430
A1; published March 12, 2009).
4. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103 as
obvious over Doerer, Döhring, and Pohlmann (US 2006/0143869 A1;
published July 6, 2006.)
(Final Act. 2–7; Ans. 3–8.)
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Appellant presents arguments for claims 1 and 12 on appeal. (See
Appeal Br. 6–21.) We select claims 1 and 12 as representative for
disposition of this appeal. 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 1
ISSUE
The Examiner found Doerer discloses a solid-borne-sound underlay
comprising a flexible wood-plastics-composite material, but Doerer is silent
as to the thickness of the material. (Ans. 3.) The Examiner found Döhring
discloses a mat comprising wood fibers, which is used as a sound insulation
mat and has a thickness of from 2 mm to 2.5 mm. (Id.) The Examiner
found Döhring discloses overlapping thicknesses with the thickness recited
in claim 1, and determined it would have been obvious to form the mat of
Doerer having the thickness disclosed in Döhring, because Döhring
discloses it was known in the art to form sound insulation mats comprising
wood fibers to have that thickness, and changes in size were within the
purview of one of ordinary skill in the art. (Id. at 3–4.) The Examiner also
found Doerer does not disclose that the underlay (compressed product) can
be reversibly rolled up, but Doerer discloses the underlay is flexible and
composed of the same composition as disclosed in the Specification. (Id. at
4.) The Examiner determined it would have been expected the product of
Doerer having the thickness of Döhring would be capable of being rolled up
as recited in claim 1. (Id.)
Appellant argues Döhring does not disclose an underlay can be
reversibly rolled up, but discloses a floor panel with a sound improving
layer, which is always firmly connected to the rest of the panel and is not
capable of being reversibly rolled up. (Appeal Br. 8, 10–13.) Appellant
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argues Doerer discloses producing a permanently rigid-shaped end product,
which would not be flexible and capable of being reversibly rolled up as
recited in claim 1. (Id. at 9–10, 14–15.) Appellant argues Pohlmann (cited
in Rejection 4) discloses bulk densities of about 20–300 kg/m3 would exhibit
increased compressive rigidity, which would provide a reason why one of
ordinary skill in the art would not have expected a wood-plastics-composite
underlay having a 2.5 mm thickness would be capable of being rolled up as
recited in claims 1 and 12. (Id. at 15–16.) Appellant argues one of ordinary
skill in the art would not have looked to Döhring, which discloses a
wood/adhesive layer and a separate thermoplastic layer for adjusting the
thickness of a wood-plastics-composite material. (Id. at 16–20.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s
determination that the combination of Doerer and Döhring would have
rendered obvious a wood-plastics-composite solid-borne-sound underlay
capable of being reversibly rolled up as recited in claim 1?

DISCUSSION
We are not persuaded by Appellant’s argument that Doerer and
Döhring disclose rigid products, which would not be capable of being
reversibly rolled up as recited in claim 1.
As to Doerer, Doerer discloses a fibrous mat as an end product may be
used as sound insulation, and may be used as one layer of a multi-layer
product. (Doerer, col. 7, ll. 45–50.) Doerer discloses the mat material “may
be stored in roll form until ready for use or it may be immediately cut into
individual mat sections.” (Id. at col. 5, ll. 20–26; Ans. 10.) We agree with
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the Examiner that although Doerer discloses an embodiment where the mat
may acquire a form due to further molding and shaping, Doerer discloses the
mat may be used as sound insulation, packaging, or cushioning material.
(Doerer, col. 1, ll. 9–15, col. 5, ll. 20–26.) Accordingly, the Examiner’s
findings that Doerer discloses a flexible fibrous mat capable of being
reversibly rolled are supported by a preponderance of the evidence.
(Ans. 3–4, 10.)
In this regard, we emphasize, as the Examiner points out, Doerer
discloses a fibrous mat with the same composition recited in claim 1, and it
would have been expected the product of Doerer having the thickness
disclosed in Döhring would be capable of being reversibly rolled up.
(Ans. 3, 9; Doerer, col. 2, ll. 9–22, col. 4, ll. 55–59, col. 7, ll. 35–45; Spec. 5,
ll. 6–10.) “[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re
Ludtke, 441 F.2d 660, 664 (CCPA 1971).
“[T]he PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection
is based on ‘inherency’ under 35 U.S.C. s [sic] 102, on ‘prima
facie obviousness’ under 35 U.S.C. s [sic] 103, jointly or
alternatively, the burden of proof is the same . . . (footnote
omitted).”
In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting In re Best, 562 F.2d
1252, 1255 (CCPA 1977)).
We also are not persuaded by Appellant’s arguments regarding
Döhring, and in particular that Döhring does not disclose an underlay that
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may be reversibly rolled up. The Examiner merely relies on Döhring for
common thicknesses of sound-proofing underlays. Thus, whether Döhring
discloses the sound improving layer is firmly connected to the rest of the
panel, does not bear on the Examiner’s rejection as a whole.
We are not persuaded that the Examiner’s position Doerer’s fibrous
mat, when having a thickness of 2.5 mm as disclosed in Döhring, would be
capable of being reversibly rolled up is conclusory and unsupported.
(Appeal Br. 19–20.) First, as discussed above, we do not subscribe to
Appellant’s view that Doerer is limited to a rigid hardened product. Second,
simply because Doerer does not disclose a thickness for the rolled-up fibrous
mat, does not mean a fibrous mat having a thickness of 2.5 mm could not be
reversibly rolled up. Indeed, Doerer discloses the mat thickness may be
varied and does not set forth any particular limit to the mat thickness when
stored in roll form. (Doerer, col. 5, ll. 8–26.)
We are also not persuaded by Appellant’s argument merely because
Döhring discloses a wood-adhesive layer, one of ordinary skill in the art
would not have turned to Döhring to modify the thickness of a wood-
plastics-composite material. (Appeal Br. 17–19.) Rather, we are of the view
that Döhring exhibits standard thicknesses for sound absorbing layers
including wood fibers, similar to the mat disclosed in Doerer. In addition,
despite Appellant’s argument to the contrary, the Specification itself shows
no criticality to the thickness of the mat, which can vary broadly between 2
and 15 mm, and exhibits a preference for 2.5 mm. (Spec. 8, ll. 19–21.)
Thus, we are not persuaded by Appellant’s argument that the Office engaged
in improper hindsight reasoning in concluding it would have been obvious to
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formulate the mats of Doerer having the thicknesses disclosed for the
soundproofing layer disclosed in Döhring.
We are not persuaded by Appellant’s argument that the bulk density
range disclosed in Pohlmann teaches away from the ability to reversibly roll
up the underlay. As the Examiner points out, the bulk density disclosed in
Pohlmann overlaps the claimed density. (Ans. 7.) In this regard,
Pohlmann’s disclosure that the “compressive rigidity” of the wood fiber
insulating material mat is increased by the process disclosed in Pohlmann
(¶ 25) does not mean the resulting material is incapable of being reversibly
rolled up. (Ans. 15.) Similarly, Appellant’s argument regarding
Pohlmann’s teaching of “good transverse tensile strength” is unpersuasive
(Appeal Br. 16), because, as the Examiner points out, tensile strength relates
to resistance of a material to breaking under stress, and does not necessarily
speak against rollability or flexibility of the material. (Ans. 13.) Appellant
does not challenge the Examiner’s statements in this regard. (See Reply
Br. 2–5.) As discussed above, we emphasize again the composition of the
mat of Doerer is the same as recited in the claims and disclosed in the
Specification.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 5–8,
and 14 as obvious over Doerer and Döhring.

Rejections 2 and 3
Appellant does not present any arguments with respect to Rejection 2
(claims 3 and 4) and Rejection 3 (claims 9 and 10), which are directed to
claims dependent from claim 1 and rely on the base combination of Doerer
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and Döhring. Accordingly, we affirm Rejections 2 and 3 for similar reasons
as discussed above with respect to Rejection 1.

Rejection 4
To the extent Appellant’s arguments regarding Pohlmann apply to
claim 12, which recites an envelope density of the solid-borne-underlay is
between 200 and 400 kg/m3, we are not persuaded for similar reasons as
discussed above with respect to Rejection 1. Appellant does not set forth
any additional arguments with respect to claim 13. Accordingly, we affirm
Rejection 4 as well.
DECISION
We affirm the Examiner’s decision rejecting claims 1–10 and 12–14.
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