Liforme Limited

Patent Trials and Appeals Board

Dec 11, 2020

2020002732 (P.T.A.B. Dec. 11, 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.
15/339,095 10/31/2016 James Armitage 213185/21 3470
132052 7590 12/11/2020
Hahn Loeser & Parks, LLP - Chicago
200 West Madison Street
Suite 2700
Chicago, IL 60606
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
12/11/2020 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):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES ARMITAGE
____________

Appeal 2020-002732
Application 15/339,095
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–3, 6–8, 10–14, 18, and 19. Non-Final Act. 6–7. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Aug. 13, 2019), Reply Brief (“Reply Br.,” filed Feb. 25, 2020), the
Examiner’s Answer (“Ans.,” mailed Dec. 26, 2019), and the Non-Final
Office Action (“Non-Final Act.,” mailed Feb. 26, 2019) from which this
appeal is taken. Appellant identifies Liforme Limited as the real party in
interest. Appeal Br. 2.
Appeal 2020-002732
Application 15/339,095

2
CLAIMED INVENTON
Appellant’s invention “concerns an exercise mat for use in mat based
exercises, such as yoga or stretching.” Spec. ¶ 1. Claims 1 and 12 are
independent. Claim 1, reproduced below reformatted and with bracketed
notations added, is representative of the claimed subject matter:
1. An exercise mat comprising:
[(a)] a foamed base layer;
[(b)] a top layer formed of an absorbent material; and
[(c)] a waterproof and breathable barrier layer heat
bonded between the top and base layers,
[(1)] said base layer being foamed and melted onto
said barrier layer during manufacture of the exercise
mat,
[(2)] the breathability of said barrier layer
improving the effectiveness of said base layer,
[(3)] whereby said top layer absorbs sweat and
said barrier layer prevents sweat from seeping from
said top layer into said base layer when the exercise
mat is in use.

REJECTION
Claims 1–3, 6–8, 10–14, 18, and 19 are rejected under 35 U.S.C.
§ 103 as unpatentable over Dandapure (US 2012/0240336 A1, pub. Sept. 27,
2012), Castle (US 2012/0124740 A1, pub. May 24, 2012), and Wetzler (US
3,099,021, iss. July 30, 1963). Non-Final Act. 6–7.

Appeal 2020-002732
Application 15/339,095

3
ANALYSIS
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103 because the
prior art does not teach or suggest an exercise mat having a base layer
“foamed and melted onto said barrier layer during manufacture of the
exercise mat,” as recited in limitation (c)(1) of claim 1, and similarly recited
in claim 12. Appeal Br. 5; Reply Br. 2.
In rejecting claims 1 and 12 under 35 U.S.C. § 103, the Examiner
primarily relies upon Dandapure. Non-Final Act. 6–7. Dandapure describes
a three-layered exercise mat having: 1) top layer 210 made from
polyurethane; 2) middle layer 220 made from a woven or nonwoven fabric;
and 3) bottom layer 230 made from a polymeric material comprising natural
or synthetic rubber. Dandapure ¶¶ 8–10, Fig. 2. The layers are heat bonded.
Id. ¶ 12. For example, Dandapure describes curing the top layer (liquid
polyurethane) on one side of the middle layer, vulcanizing the bottom layer
(rubber) on the other side of the middle layer. Id. ¶¶ 12, 20. The Examiner
acknowledges that Dandapure does not teach the argued limitation, and
relies on Wetzler to cure the deficiency. Non-Final Act. 6–7 (citing Wetzler
3:45–4:16); Ans. 8–9.
Wetzler describes a method for fabricating mattresses, pads, or
cushions having coil springs 48 embedded in a urethane foam structure.
Wetzler 1:9–13, 3:41–45, Figs. 3, 5, 6. Coil springs 48 are dipped into, or
sprayed with, a film forming material to enclose each spring 48 within a
filmy envelope 52. Id. at 3:71–75. In particular, spray nozzles 60 and 62
deposit two components that mix to form a foaming urethane forming
composition. Id. at 4:3–8, Fig. 4.
Appeal 2020-002732
Application 15/339,095

4
The Examiner finds that “Wetzler discloses a base layer that is
foamed and melted during manufacture of the base layer of a cushion
assembly.” Non-Final Act. 7 (citing Wetzler 3:45–4:16); see also Ans. 8.
Yet, nothing in the portions of Wetzler relied upon by the Examiner teaches
foaming and melting the base layer during manufacture. Instead, as
described above, Wetzler teaches a foaming urethane forming composition
manufactured from two fluid components.
In response to Appellant’s argument that Wetzler does not teach this
aspect of the claim language, the Examiner takes the position with respect to
product claim 12 that “product-by-process claims are not limited to the
manipulations of the recited steps, only the structure implied by the steps.”
Ans. 8. The trouble with the Examiner’s approach is that it necessarily
assumes that claim 1 should be construed as a product claim containing a
process limitation (i.e., limitation (c)(1)3), rather than a structural limitation.
In re Garnero, 412 F.2d 276, 279 (CCPA 1969) (holding “interbonded one
to another by interfusion between the surfaces” to limit structure of the
claimed composite, and noting that “intermixed,” “ground in place,” “press
fitted,” “etched,” and “welded” are capable of construction as structural
limitations”).
Here, we agree with Appellant that limitation (c)(1) (i.e., “said base
layer being foamed and melted onto said barrier layer”), as recited in claim

2 Claim 12 is a method claim.
3 We also disagree with the Examiner’s interpretation of claim 1’s limitation
(c)(1) as a “means-plus-function” limitation subject to interpretation under
35 U.S.C. § 112(f). See Non-Final Act. 5. Here, limitation (c)(1) recites a
structural component, a base layer, and does not recite any function
performed by the base layer. See Appeal Br. 9.

Appeal 2020-002732
Application 15/339,095

5
1, limits the structure of the exercise mat between the base layer and barrier
layer. Reply Br. 3; see also Appeal Br. 9. Appellant’s Specification
supports our interpretation. Spec. ¶ 29 (describing that melting base layer 4
as it is foamed onto the waterproof fabric back results in a heat joining effect
between middle layer 3 and base layer 4, helping to prevent delamination
between the layers during use of the mat).
The Examiner does not provide further evidence or technical
reasoning to support a finding that Wetzler teaches limitation (c)(1), as
recited in claim 1, and similarly recited in claim 12. For at least this reason,
we are persuaded that the Examiner erred in rejecting claims 1 and 12 under
35 U.S.C. § 103.
We also are persuaded by Appellant’s argument that the Examiner
does not provide sufficient explanation or reasoning how or why one of
ordinary skill in the art would be motivated to combine Wetzler and
Dandapure to arrive at limitation (c)(1), as recited in claim 1, and similarly
recited in claim 12. Appeal Br. 5. In particular, the Examiner concludes
that it would have been obvious to one of skill in the art “to deposit the
liquid foaming composition of the base layer onto the cushion assembly[,] as
taught by Wetzler[,] yielding predictable results that provide an equivalent
and alternative manufacturing process to form an integral foam structure.”
Non-Final Act. 7 (emphasis omitted). Yet, Wetzler describes depositing the
foaming urethane forming composition on coil springs for use in a mattress,
pad, or cushion (Wetzler 3:71–4:8, Fig. 4); whereas, Dandapure describes
thermoplastically bonding a natural or synthetic rubber bottom layer to a
woven or nonwoven fabric middle layer (Dandapure ¶¶ 12, 20). Given the
magnitude of the differences between the Dandapure and Wetzler structures,
Appeal 2020-002732
Application 15/339,095

6
the Examiner does not establish that the manufacturing process of Wetzler’s
base layer is an equivalent and alternative to the manufacturing process of
Dandapure’s bottom layer. Accordingly, the Examiner does not adequately
support the determination that the prior art renders obvious the claimed
invention.
Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of
independent claims 1 and 12, and dependent claims 2, 3, 6–8, 10, 11, 13, 14,
18, and 19.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§  Basis/References Affirmed Reversed
1–3, 6–8,
10–14,
18, 19
103  Dandapure, Castle, Wetzler
1–3, 6–8,
10–14, 18,
19

REVERSED