Ex Parte 6688061 et al

Patent Trial and Appeal Board

Apr 30, 2014

95001516 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,516 12/23/2010 6688061 6200-37196 1440
30827 7590 04/30/2014
MCKENNA LONG & ALDRIDGE LLP
1900 K STREET, NW
WASHINGTON, DC 20006
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

KRONOPOL SP. Z O. O.
Requester
v.
FAUS GROUP INC.
Patent Owner
____________________

Appeal 2013-010535
Reexamination Control 95/001,516
US Patent No. 6,688,061 B21
Technology Center 3900
____________________
Before: DANIEL S. SONG, RAE LYNN GUEST, AND
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 US Patent No. 6,688,061 B2 (hereinafter "the '061 patent") was issued on
February 10, 2004 to Eugenio Cruz Garcia.
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STATEMENT OF THE CASE
Patent Owner/Appellant2 appeals under 35 U.S.C. §§ 134(b) and 315
from the Examiner’s rejection of claims 1-4 and 6-14. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 315. Oral arguments were heard on January
29, 2014.
The '061 patent was subject to a related litigation, Kronotex USA LLC
v. Faus Group, No. 1:09-CV-2583-JEC (N.D. Ga.), which, according to the
Patent Owner, has settled. App. Br. 4.
We AFFIRM.

THE INVENTION
Appellant’s invention is directed generally to direct laminated flooring
products. Claim 1, the only independent claim and reproduced below, is
illustrative of the claimed subject matter:
1. A laminated material comprising cellulose sheets
impregnated with a polymer resin that are mechanically pressed
and cut into a product, wherein the product includes a surface
with both a perimeter area having an edge contour and an
interior region, wherein the perimeter area is relieved such that
the edge contour is below the interior region, wherein the
surface is mechanically formed with a surface texture that
varies in accordance with the visual pattern, and wherein the
surface is formed from a cellulose sheet having a visual pattern
that imitates another product.

2 The real party in interest in this case is Faus Group Inc. App. Br. 3.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Collins US 2,137,238 Nov. 22, 1938
Smith et al. US 3,204,380 Sep. 7, 1965
Grosheim et al. US 3,373,068 Mar. 12, 1968
Scher et al. US 3,814,647 Jun. 4, 1974
Kunz US 3,846,219 Nov. 5, 1974
Yoshikawa US 4,367,110 Jan. 4, 1983
Coggan US 4,579,767 Apr. 1, 1986
Gibson US 4,625,491 Dec. 2, 1986
Diamond et al. US 5,112,671 May 12, 1992
Ormiston US 5,755,068 May 26, 1998
Yoshikawa et al. GB 20544583 Feb. 18, 1981
JP 63-40055 4 Feb. 2, 1988
Toshimitsu et al. JP 9-112595 Jan. 14 1997
Giertz WO 97/31775 Sep. 4, 1997
Moriau WO 97/47834 Dec. 18, 1997

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1 and 6-13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Yoshikawa. RAN 7.
2. Claim 2-4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshikawa and Grosheim. RAN 10.

3 Hereinafter referred to as "GB '458."
4 Hereinafter referred to as "JP '055." While the entire Japanese language
document is of record, an English language translation of only portions of
the Japanese document are of record. An English language translation of the
applicant’s or inventors’ names, for example, is not of record.
5 Hereinafter referred to as "JP '259."
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3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshikawa and Collins. Id.
4. 1-3, 6, and 8-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ormiston and Giertz. RAN 11.
5. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ormiston, Giertz, and Moriau. RAN 15.
6. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ormiston, Giertz, and Yoshikawa. RAN 16.
7. Claims 1-4, 6, and 8-13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over JP '259 and Grosheim. Id.
8. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP '259, Grosheim, and Yoshikawa. RAN 19.
9. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP '259, Grosheim, and Collins. Id.
10. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over JP '259, Grosheim, and Coggan. RAN 20.
11. Claims 1-4, 6, and 9-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gibson and Grosheim. RAN 21.
12. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gibson, Grosheim, and Yoshikawa. RAN 23.
13. Claims 1-4 and 9-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kunz and Collins. Id.
14. Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kunz, Collins, and Yoshikawa. RAN 25.
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15. Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Giertz and JP '055. RAN 26.
16. Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over GB '458 and Diamond. RAN 29.
17. Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Giertz and Smith. RAN 32.
18. Claims 1-4 and 6-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Scher and JP '055. RAN 35.

ANALYSIS
Claim Construction
Appellant's first argument is that the Examiner has not properly
construed the term "mechanically pressed" to require that the product be
made by direct lamination and/or that the laminate "is formed by a single
steady pressing step." App. Br. 11. In support of this, Appellant also
submits a pair of declarations of George Gehringer dated August 15, 2011
and April 2, 2012. We do not find this argument persuasive.
Although we agree that the '061 patent Specification refers
predominantly to a direct laminate, the Patent Owner chose to use the term
"mechanically pressed" in the claims. The phrase “mechanically pressed” is
not used or defined in the '061 patent Specification. This term is broader
than the “direct laminate” process described in the '061 patent Specification
because, on its face, it does not require a single steady pressing step, only
pressing by a machine. See SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
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may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”)
Further, the PTO applies to verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the Specification. In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). Reading a claim in light
of the Specification, to thereby interpret limitations explicitly recited in the
claim, is a quite different thing from reading limitations of the Specification
into a claim, to thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the claim. In re Prater,
415 F.2d 1393, 1404-05, (CCPA 1969). Although the claims are interpreted
in light of the Specification, limitations from the Specification are not read
into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). In this
particular instance, we conclude that limiting the claims only to "direct" or
"single-step" lamination, without an express definition of "mechanically
pressed" that is so limiting, would amount to an improper importation of
language from the Specification into the claims.
Rejection 16: Obviousness over GB '458 and Diamond
The Examiner has established by a preponderance of the evidence that
the subject matter of the claims on appeal are prima facie obvious over the
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teachings of GB '458 and Diamond. Ans. 61-69 and 98-100. Appellants’
arguments that a prima facie case of obviousness has not been established
are not persuasive as discussed in detail below.
Appellant asserts that GB '458 fails to disclose "a surface texture that
varies in accordance with the visual pattern as claimed." App. Br. 19. The
Examiner, however, points to several persuasive passages in GB '458 that
disclose, for example, "a decorative laminate with wood grain using the
above-mentioned recessed parts as tracheal parts or one with a designed tile
pattern." GB '458 p. 1, ll. 51-54; see also Ans. 63. The Examiner also notes
that GB '458 discloses "that its three-dimensional surface is smooth and
suitable for reproducing three-dimensional patterns resembling enamel,
pottery, tiles, cloisonné wear, natural stone and so on." Id. at p. 2, ll. 26-28.
We find this to be a sufficient teaching to support the rejection and agree
with the Examiner that "GB '458's process results in a laminate wherein the
finished sheet is embossed in registration with the visual pattern as applied
in the rejection." Ans. 99.
Appellant next argues that "one of ordinary skill would not be
motivated to combine GB '458 with Diamond. Namely, GB '458 is directed
to a process to form a press plate and Diamond is directed to a significantly
distinct, and also complex, process used to form a vinyl tile product." App.
Br. 20. Additionally, Appellant asserts that "Diamond requires a specific
configuration to perform the complex rotatable [two-step] process in which
the press plate formed in GB '458 could not be used." Id. As the Examiner
points out, however, the rejection is to use the teaching in Diamond of
forming a depressed area around the perimeter "to modify the GB '458 press
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plate by modifying the various raised portions and/or adding new raised
portions to produce a depressed area at the perimeter of the laminate." Ans.
99-100. As such, Appellant's arguments on this point do not address the
actual rejection laid out by the Examiner. Accordingly, this argument is not
persuasive.
Appellant also reasserts the argument that the claims require a single
step process whereas Diamond "describes a [two-step] pressing process that
also incorporates rotating the tile product." App. Br. 19. As discussed
supra, the claims are not so limited, and we will not further address this
point.
Specifically regarding claim 14, Appellant asserts that an "abutting
arrangement does not constitute 'mates with' as claimed." App. Br. 20. As
the Examiner states, "[t]here is no structure set forth [in the claim] to limit
the type of mating engagement of the laminates." Ans. 100. Further, as the
Examiner points out, "the subject patent depicts a similar abutting
arrangement in Figure 3." Id. Accordingly, Patent Owner has provided no
persuasive reason that an abutment of pieces cannot be considered to be a
mating arrangement as claimed.
Secondary Considerations of Non-obviousness
As noted above, we have determined the subject matter of the claims
on appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and Appellant furnishes evidence of
secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. See, for example, In re Eli Lily
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& Co., 902 F.2d, 943, 945 (Fed. Cir. 1990). We are also mindful that the
objective evidence of nonobviousness in any given case may be entitled to
more or less weight depending on its nature and its relationship with the
merits of the invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538
(Fed. Cir. 1983). To be given substantial weight in the determination of
obviousness or nonobviousness, evidence of secondary considerations must
be relevant to the subject matter as claimed, and therefore we must
determine whether there is a nexus between the merits of the claimed
invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986).
As Appellant admits, the sales data used to support its argument for
nonobviousness "is confidential and cannot be released without permission
of [Faus'] partners." Reply Br. 8. The majority of Appellant's argument thus
relies upon the declarations of George Gehringer. Mr. Gehringer "reviewed
confidential sales information provided by Faus" and declares that the
"embossed in registration" and "joint guard" features "were a significant
reason for the commercial success." Gehringer Decl. of April 2, 2012, ¶ 14.
Essentially this expert opinion is the sole basis for Appellant's assertion of
patentability based on secondary considerations. Without more regarding
the sales information, we are unable to assess the merit of the supposed
commercial success due to the claimed features. A declaration is entitled to
little weight if it recites conclusions without reciting the underlying facts to
support those conclusions. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
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declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”); In re Thompson,
545 F.2d 1290, 1295 (CCPA 1980) (affidavit related to secondary
consideration of nonobviousness, notably copying, “sets forth no specifics
and falls far short of constituting probative evidence.”).
Furthermore, as the Examiner states, "the purported success is argued
to be attributed to the embossed in register and the relieved perimeter
features, yet the evidence, e.g. Exhibit M, indicates that the success was due
to wide planks and the five-in-one molding system." RAN 39. Accordingly,
we agree with the Examiner that Appellant's arguments are "not persuasive
to show a clear nexus between the patented claims and the purported
success." RAN 40.
Having considered all of Appellant's arguments, including those
regarding secondary considerations of non-obviousness, we sustain the
Examiner's rejection of claims 1-4 and 6-14 as unpatentable over GB '458
and Diamond. Because the affirmed Examiner's rejection constitutes an
affirmance of rejection of all of the claims, we will not reach the remaining
rejections of the same claims over other references. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009).

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DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-4 and 6-14.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008). In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
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and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED

PATENT OWNER:
MCKENNA LONG & ALDRIDGE LLP
1900 K STREET, NW
WASHINGTON, DC 2000

THIRD-PARTY REQUESTER:

ANDREW M. CALDERON
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
P.O. BOX 10064
McLean, VA 22102-8064