ARMSTRONG WORLD INDUSTRIES, INC.Download PDFPatent Trials and Appeals BoardMar 27, 202014678163 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation 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. 14/678,163 04/03/2015 DONG TIAN 1456-00-US-01-AFP 8411 138961 7590 03/27/2020 Budzyn IP Law, LLC Christina Geerlof 120 Eagle Rock Ave, Suite 328 East Hanover, NJ 07936 EXAMINER SAWDON, ALICIA JANE ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): afp_patents@armstrongflooring.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONG TIAN and JEFFREY S. ROSS Appeal 2019-001085 Application 14/678,163 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, MICHAEL G. McMANUS, and SHELDON M. McGEE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 11–20. We have jurisdiction under 35 U.S.C. § 6(b). 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 AFI Licensing LLC. Appeal Br. 3. Appeal 2019-001085 Application 14/678,163 2 Appellant’s invention is directed to flooring systems comprising an abrasion resistant coating (Spec. ¶ 1; Claim 1). Claim 1 is representative of the subject matter on appeal: 1. A floor covering comprising a substrate, and a coating layer comprising: a coating matrix formed from a curable coating composition comprising a binder, wherein the coating matrix has an average coating matrix thickness; and diamond particles that have an average particle size and a narrow distribution of particle sizes, wherein the average particle size is about 2 μm to about 50 μm and the narrow distribution of particle sizes has a standard deviation less than 35% of the average particle size; wherein a ratio of the average coating matrix thickness to average particle size ranges from 0.6:1 to 2:1. Appellant appeals the following rejections: 1. Claims 1–8 and 18–20 are rejected under 35 U.S.C. § 103 as unpatentable over Pryor (US 5,492,769, issued Feb. 20, 1996) in view of Chen (US 6,291,078 B1, issued Sept. 18, 2001). 2. Claims 11–17 are rejected under 35 U.S.C. § 103 as unpatentable over Pryor in view of Chen and Sung (US 2012/0260582 A1, published Oct. 18, 2012). FINDINGS OF FACT & ANALYSIS The Examiner’s findings and conclusions regarding the rejection of claims 1 and 18 over Pryor in view of Chen are located on pages 2 to 5 and 8 to 11 of the Final Action. The Examiner’s findings and conclusions Appeal 2019-001085 Application 14/678,163 3 regarding the rejection of claim 11 over Pryor in view of Chen and Sung are located on pages 12 to 15. Appellant argues that claims 1, 11, and 18 require a substrate and a coating layer (Appeal Br. 8). Appellant contends that Pryor teaches away from using a coating layer (Appeal Br. 8). Appellant argues that Pryor teaches that applying coatings to a substrate to provide scratch resistance has been problematic because the coating may not adhere well to the substrate and the films may craze over time (Appeal Br. 11). Appellant argues that Pryor teaches to embed diamond particles into the surface of a substrate to overcome these shortcomings with coatings and to provide wear resistant articles without significantly increasing the weight or external dimensions of the plastic material or articles (Appeal Br. 10–11). Appellant contends that Pryor disavows the use of a coating to impart scratch or wear resistance to a substrate (Appeal Br. 12). Appellant argues that Pryor’s method of thermally or chemically softening the substrate to embed diamond particles into the softened substrate cannot form a coating layer formed from a curable coating composition on the substrate (Appeal Br. 14–15). Appellant argues that treating Pryor’s diamond particle embedded substrate as a coating layer which may be applied to another substrate is contrary to Pryor’s teachings and would render Pryor unsatisfactory for its intended purpose (Appeal. Br. 18–19). The Examiner finds that the broadest reasonable interpretation of coating layer includes “a layer or covering of something else” (Ans. 19). Based on this claim construction, the Examiner finds that a substrate, when combined with other layers, is a coating layer (Ans. 19). The Examiner finds that Pryor’s use of the diamond-embedded substrate in windows, Appeal 2019-001085 Application 14/678,163 4 headlights and taillights, optical components, viewing screens, etc. would have met the claim (Ans. 19). The Examiner finds that the articles disclosed by Pryor are known to include several layers of components such that adding another substrate layer would not have changed Pryor’s principle of operation (Ans. 19). The Examiner maintains that the outer layer would still have the diamond-particles embedded therein (Ans. 19). The Examiner finds that Appellant has not argued that the substrate needs to be a different material than the curable coating composition of the coating layer (Ans. 20). The Examiner finds that Pryor’s final product includes abrasion resistant particles embedded into the surface of a thermoplastic substrate (Ans. 19– 20). The Examiner does not find a structural difference between Pryor’s product that has the diamond-particles embedded in the surface of a thermoplastic material and coating layer of curable coating composition and particles applied to substrate in a separate step (Ans. 20). Based on the findings of the Examiner and Appellant’s contentions, the primary issue in the case is claim interpretation. Claim 1 recites a floor covering comprising a substrate and a coating layer. The coating layer in claim 1 further comprises a coating matrix of curable coating composition comprising a binder and diamond particles. By the limitations in the claim, a coating layer and substrate are required. The Specification describes that the floor covering has a substrate 2 and coating layer 3 (Spec. ¶ 47). The floor covering (i.e., the end product) has a coating layer where the bottom surface of the coating layer 12 abuts the top surface 4 of the substrate 2 or the top surface of an underlying coating layer (Spec. ¶ 47, Fig. 1). In other words, the claims and Specification are clear that two distinct layers are Appeal 2019-001085 Application 14/678,163 5 required wherein one layer is a coating layer made of a curable coating composition and diamond particles and a substrate. With this claim construction in mind, we find that the Examiner has not shown that Pryor’s diamond particle-embedded substrate is structurally the same as the claimed floor covering. Pryor’s layer of diamond particles embedded in the surface of the substrate does not include a layer of curable coating composition in addition to the substrate material. Pryor teaches the colloid or sol used to apply the diamond particles preferably is polymethylmethacrylate and water (col. 8, ll. 3–5). Pryor further teaches that it is preferred to have the carrier evaporate or otherwise be removed from the substrate surface prior to embedding the diamond particles into the surface layer of the substrate (col. 8, ll. 5–10). In other words, no coating layer composed of curable coating composition and diamond particles is formed in Pryor. The Examiner posits that Pryor’s diamond embedded substrate constitutes a coating because it is part of the articles (e.g., windows, headlights, etc.) made by Pryor which are known to be multilayer (Ans. 19). Pryor teaches: Thus, the present invention is especially useful in the manufacture of scratch resistant and transparent plastic and glass articles for use as windows, lenses, automotive headlights and taillights, optical components, viewing screens (i.e., computer and television screens and conventional or microwave oven windows) and like articles. (Pryor, col. 9, ll. 24–30) (emphasis added). In the context of Pryor’s disclosure, this portion teaches that the particle-embedded plastic or glass material may be used as the articles (e.g., windows, lenses, automotive headlights, etc.). In other words, Pryor’s Appeal 2019-001085 Application 14/678,163 6 article, itself, would be used as part of the article. Although the Examiner finds that Pryor is capable of functioning as a floor covering (i.e., an intended use), the Examiner’s rejection based on Pryor, alone, is based on structural similarities (Final Act. 3). As noted above, Pryor differs from the claimed invention in that it does not include both a substrate and a coating layer having a curable coating composition with diamond particles therein. Stated differently, if Pryor’s article is considered to be a coating with embedded particles then it is missing a substrate. If Pryor’s article is considered to be a substrate then it is missing a coating layer composed of a curable coating composition and diamond particles. The Examiner alternatively finds that Chen would have suggested using Pryor’s particle-embedded plastic or glass as a coating in Chen’s floor covering (Final Act. 3). The Examiner finds that Chen teaches forming a wear resistant coating on a resilient support surface used as a floor covering (Final Act. 3 to 4). The Examiner concludes that it would have been obvious for “the scratch resistant coating of Pryor to be applied to a resilient support surface of a floor covering, as taught by Chen, in order to achieve a durable and abrasion resistant product as taught by Chen (Final Act. 4). As noted above, Pryor’s particle-embedded substrate is not a coating as the Examiner erroneously finds. Rather, Pryor’s particle-embedded substrate is used as other articles such as windows. Pryor’s column 2, lines 10–22 cited by the Examiner as suggesting the use of the particle-embedded plastic or glass as a coating for a substrate is taken out of context. That portion of Pryor teaches the goal of Pryor is to form new protective surfaces or coatings for plastic, glass, metal and composite materials. In other words, Pryor’s column 2 disclosure teaches that coatings (i.e., the embedded Appeal 2019-001085 Application 14/678,163 7 particles) are formed on a substrate to protect the substrate. That does not suggest that Pryor’s particle embedded glass or plastic is considered to be a coating that should be applied to another substrate. Based on Pryor’s disclosures, we find that the Examiner has not established that a person of ordinary skill in the art would have combined Pryor’s particle-embedded glass or plastic with a resilient support surface as taught by Chen. On this record, we reverse the Examiner’s § 103 rejection of claims 1–8 and 18–20 over Pryor in view of Chen. Regarding the § 103 rejection over Pryor in view of Chen and Sung, the Examiner relies on the same faulty combination of Pryor and Chen. We, therefore, reverse the § 103 rejection of claims 11–17 over Pryor in view of Chen and Sung for the same reasons. CONCLUSION In summary: Claims Rejected Basis References Affirmed Reversed 1–8, 18–20 § 103 Pryor, Chen 1–8, 18–20 11–17 § 103 Pryor, Chen, Sung 11–17 1–8, 11–20 REVERSED Copy with citationCopy as parenthetical citation