Ex Parte 7299592 et al

Board of Patent Appeals and Interferences

Jan 27, 2011

90009124 (B.P.A.I. Jan. 27, 2011)

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.
90/009,124 06/05/2008 7299592 46308.0090 7255
57600 7590 01/27/2011
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
LEWIS, AARON J
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORGEN J. MOLLER, JR.,
Appellant
____________

Appeal 2010-012534
Reexamination Control 90/009,124
Patent 7,299,592
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Patent 7,299,592

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This is a decision on the appeal by the Patent Owner of U.S. Patent
No. 7,299,592 from the Patent Examiner’s rejections 1-27 in an ex parte
reexamination proceeding. The Board’s jurisdiction for this appeal is under
35 U.S.C. §§ 6(b), 134(b), and 306. We reverse.

STATEMENT OF THE CASE
U.S. Patent No. 7,299,592 (hereinafter “the ‘592 patent”) issued
November 27, 2007. The named inventor is Jorgen J. Moller, Jr. A Third-
Party Requester requested ex parte reexamination of claims 1-26 of the ‘592
patent pursuant to 35 U.S.C. §§ 302-307 and 37 C.F.R § 1.510 (“Req.” filed
June 5, 2008). Reexamination was sought on the basis of several prior art
publications said to raise substantial new questions of patentability (Req. 2).
Reexamination was ordered. Claim 27 was added during the reexamination
proceeding and patented claims 1, 7, 11, 14, 16, 19, 23, and 25 were
amended. In a Final Rejection dated December 16, 2009, claims 1-27 were
rejected. The rejection was appealed by the Patent Owner.
The claims involve injection molded floor panels. According to the
‘592 patent, injection molding was a known way of making floor tiles (col.
1, ll. 40-41). “Injection molding involves injecting heated liquid plastic into
a mold.” (Col. 1, ll. 41-42.) After injection into the mold, “the liquid plastic
is allowed to cool thereby solidifying into the desired floor tile.” (Col. 1, ll.
42-45). The ‘592 patent identified “sink marks” as a prominent problem that
occurs with injection molding (col. 1, ll. 47-49).
[W]hen the liquid plastic cools it often forms sink marks on the
top surface of the floor tile. The sink marks generally coincide
with the support systems located on the bottom side of the floor
tile. Sink marks are caused by extra material in certain areas
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inside of the mold that requires additional cooling time. For
example, if the bottom side of the tile contains numerous
support structures, there will often be coinciding sink marks
visible on the top surface of the final floor tile.
(Col. 1, ll. 48-56.)
The ‘592 patent states that sink marks detract from the appearance of
the floor tile and collect dirt. The patent describes eliminating sink marks by
aligning the support members on the floor tile bottom with the structures on
the tile surface (col. 2, ll. 4-10). This configuration is said by the patent to
prevent the surface of the tile under the support member from sinking during
the cooling process (col. 2, ll. 11-14).
The appealed claims are directed to a molded floor panel with
structures which extend upward from the main floor panel and support
members which extend downward. The structures and support members are
aligned and “an area defined by each of the one or more structures is
contained within and positioned directly above an area defined by the one or
more support members.” The claims stand rejected by the Examiner under
35 U.S.C. § 103(a) as obvious in view of prior art disclosed in the ‘592
patent, Margolis,2 and Osswald.3 Claim 1 is representative as reads as
follow (with underlining indicating subject matter added to the issued
claims):
1. An injection molded floor panel, comprising:
an at least substantially solid main floor panel;

2 ENG’G THERMOPLASTICS: PROPERTIES AND APPLICATIONS, PLASTICS ENG’G
8 (James M. Margolis ed., 1985).
3 INJECTION MOLDING HANDBOOK (Tim A. Osswald et al. eds., 2001).
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one or more structures which extend upward from the at
least substantially solid main floor panel, the one or more
structures including all structures which extend upward from
the at least substantially solid main floor panel; and
one or more support members which extend downward
from the at least substantially solid main floor panel;
wherein at least substantially all of the one or more
structures are at least substantially vertically aligned with the
one or more support members;
wherein an area defined by each of the one or more
structures is contained within and positioned directly above an
area defined by the one or more support members;
wherein the one or more structures form a discontinuous
pattern of separate, elongated protrusions;
wherein the at least substantially solid main floor panel is
continuous and solid between the one or more structures and
the one or more support members; and
wherein the injection molded floor panel is rigid.

CLAIM INTERPRETATION
Statement of the Issue
Claim 1 is directed to an injection molded floor panel. The floor
panel comprises surface “structures” which extend upward and “support
members” which extend downward (see ‘592 patent, Fig. 4A, where 220 is a
surface structure and 217 is a support member). The claim recites that “an
area defined by each of the one or more structures is contained within and
positioned directly above an area defined by the one or more support
members.” All the independent claims recite this same or similar limitation.
The Examiner took the position that the recited limitation, “an area” of the
structure is “contained within” an area defined by the support member, was
properly interpreted to require that only a part of the structure be contained
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within the support member (Ans. 18-20; Final Office Action 16). The
Examiner interpreted the claim to permit the top structures to extend outside
the area of the bottom support members.
Appellant contends that, when the limitation is read in light of the
‘592 patent, it would be understood that the entire area of the upwardly
extending structure is within the area of the support member (App. Br. 21).
The issue is therefore the proper interpretation of this phrase. The following
facts are relevant to this determination.

Findings of Fact (“FF”)
1. In describing the embodiment shown in Figures 6-10, the ‘592 patent
states:
The pattern formed by the vertical and horizontal members 215,
217 is aligned with the pattern essentially formed by the surface
structure 220 as shown in FIG. 4B.
(Col. 6, ll. 5-8.)
2. Figure 4B, an embodiment of the invention, is reproduced below:
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Figure 4B, reproduced above, shows upper structures 220 where the
area defined by it are entirely contained within, and aligned with, an area
defined by the lower support members 215 and 217.
3. Figure 3B of the ‘592 patent was designated by the inventor as
prior art. Figure 3B is reproduced below:

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Figure 3B, reproduced above, shows that the area of upper structures
120 is not aligned with, nor contained entirely within, the area of the lower
support members 115 and 117, although there are overlapping areas.

Legal Principles
During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007);
see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010).
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“[A] person of ordinary skill in the art is deemed to read the claim
term not only in the context of the particular claim in which the disputed
term appears, but in the context of the entire patent, including the
specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).

Analysis
Claims must be read in light of the specification of which they are
part. Phillips, 415 F.3d at 1313. The ‘592 patent expressly acknowledges
prior art molded floor tiles in which “sink marks” are formed on the tile top
surface at positions corresponding to the position of the support systems
located on the tile’s bottom floor (‘592 patent, col. 1, ll. 45-55) (see supra
“Statement of the Case”). Figure 3B illustrates a prior art plastic injected
molded tile “that suffers from the sink mark problem” (id. at col. 3, ll. 59-
61). Figure 3B (FF3) clearly shows areas in which the upperwardly
extending structure 120 overlap with the downwardly extending support
members 115 and 117. That is, an area of the upper structure 120 overlaps
the area of a support member of the prior art molded tile. However, the
upper structures are not co-extensive with the support members. The figure
shows the upper structures criss-crossing in certain regions with the lower
support member, producing areas in which the upper surface structure
extend outside the support members.
The ‘592 patent describes the invention as addressing the sink mark
problem by aligning the support system with the outwardly extending top
surface structures. Certain embodiments show precisely the configuration in
which the entire area defined by all of the top structures is within the area of
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the support system (FF2). While we do not import limitations from the
Specification into the claims, the claims must be read consistently with the
Specification. ICON, 496 F.3d at 1379; Suitco, 603 F.3d at 1259. In this
case, the Examiner’s interpretation of the disputed limitation to permit parts
of the upper surface structure to extend outside of the support system is not
reasonable when read in light of the Specification.
First, the Examiner’s interpretation of the disputed limitation
corresponds to the configuration of the prior art tile depicted in Figure 3.
This configuration is discussed above as resulting in sink marks. It is not
reasonable to read the claims as reading on a prior art configuration which
was expressly addressed and remedied by the ‘592 patent.
Secondly, a plain reading of the claim is consistent with the
interpretation that the entire top structure area is completely “within” the
support member system. The claim recites that “an area defined by each of
the one or more structures is contained within and positioned directly above
an area defined by the one or more support members.” The written
description does not define what “an area” constitutes, but the claimed
“structures” would reasonably be understood to refer to all structures in the
tile that extend upward. The claim also requires that the structures are
vertically aligned with support members. Thus, the claim expressly
characterize all the upwardly extending structures as aligned with the
support members, which would indicate that – when aligned – they are
completely contained within the bottom members.
Thirdly, as mentioned above, all the embodiments depicted in the ‘592
patent in which the upper and lower elements are characterized as vertically
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aligned, all show the upper surface structure entirely within the lower
support member (FF1 & FF2).
In view of these disclosures, persons of ordinary skill in the art would
have understood that the claimed requirement that an “area” of a surface
structure “is contained within … an area defined by” the support member
means that the entire upper area is within the lower area. The Examiner’s
interpretation is not the broadest reasonable interpretation of the claims
when read in view of the ‘592 patent.

OBVIOUSNESS REJECTION
The claims stand rejected over the prior art molded tiles shown in
Figures 1-3 of the ‘592 patent in combination with the Margolis and
Osswald publications. The Examiner found that Margolis and Osswald
taught that sink marks on molded tile surfaces could be eliminated by
putting outwardly extending ribs on the tile surface directly opposite the
support member (Ans. 5). The Examiner concluded that it would have been
obvious to modify the prior art molded tile with surface rib structures to
avoid sink marks as taught by Margolis and Osswald (id. at 6.)
The Examiner’s rationale, at most, explains why the supporting
members of the prior art molded tile would be covered by surface ribs –
where the ribs correspond to the claimed “structures which extend upward
from the . . . main floor panel.” However, the claims also require the area
defined by all of the upward surface structures to be within the area of the
downward bottom support members. The Examiner has not provided an
adequate rationale as to why persons of ordinary skill in the art would have
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had reason to make this configuration. The Examiner did not provide
evidence that the prior art reasonably suggested the top ribs be placed
completely within the area of the lower member support.
As pointed out by the Patent Owner, simply realigning the surface and
support elements of the prior art molded tile depicted in Figure 1 of the ‘592
patent to make them directly opposite each other would result in some of the
surface elements extending outside of the area of the support member (Reply
Br. 4), a configuration excluded by the claim. The Examiner did not dispute
this, but instead took the position that the claim language does not restrict
the area of the surface structures to the entirety of the support members
(Ans. 19), an interpretation that we have found to be unreasonably broad
(supra at p. 7). Consequently, we are compelled to reverse the obviousness
rejection of claims 1-27.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

REVERSED

bim

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Patent 7,299,592

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FOR PATENT OWNER:

HOLLAND & HART
222 SOUTH MAIN STREET
SUITE 2200
P.O. BOX 11583
SALT LAKE CITY, UT 84110

FOR THIRD PARTY REQUESTER:

THORPE, NORTH & WESTERN, LLP
8180 SOUTH 700 EAST
SUITE 350
SANDY, UT 84070