Ex Parte 7721502 et al

Patent Trial and Appeal Board

Sep 30, 2015

95001726 (P.T.A.B. Sep. 30, 2015)

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.
95/001,726 08/25/2011 7721502 I4060-819301 6519
23370 7590 09/30/2015
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2015 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
____________________

TANDUS FLOORING, INC
Requester

v.

INTERFACE, INC.
Patent Owner
____________________

Appeal 2015–004830
Reexamination Control 95/001,726
Patent US 7,721,5021
Technology Center 3900
____________________
Before: STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Scott et al. May 25, 2010 (the '502 patent).
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
the Examiner’s rejection of claims 1–23. We have jurisdiction under 35
U.S.C. §§ 134(c) and 315(b). Oral arguments were presented in this case on
September 11, 2015, a transcript of which will be entered into the record in
due course. During the hearing, arguments were presented for both the
instant appeal as well as for appeal 2015–004899. The transcript will reflect
this combined hearing.
We are informed that the '502 patent is related to other patents that are
subject to additional proceedings. Patent US 8,381,473 is the subject of four
litigations in the Northern District of Georgia styled Interface, Inc. v. Tandus
Flooring, Inc. & Tandus Flooring US, LLC (case 4:13-cv-00044-HLM);
Interface, Inc. v. J&J Industries, Inc. (case 4:13-cv-00045-HLM); Interface,
Inc. v. Tandus Flooring, Inc. & Tandus Flooring US, LLC (case 4:13-cv-
00046-WSD); and Interface, Inc. v. J&J Industries, Inc. (case 4:13-cv-
00047-HLM). Patent US 7,464,510 is subject to inter partes reexamination
no. 95/001,725. European Patent Application Nos. 05812737.4,
10180426.8, and 10180493.8 are also pending.
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The Patent Owner's claims are directed generally to "systems and
methods for installing floor coverings, particularly including carpet tile and
other modular floor coverings." Spec., col. 1, ll. 19–21. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
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1. A stack of connectors for installing modular tiles, each
having an underside, on a floor surface without attaching the
tiles to the floor surface, the stack comprising:
at least a first connector and a second connector each
comprising a film with an adhesive side having a layer of
adhesive and an opposite side, wherein the layer of adhesive is
capable of forming a bond with the undersides of the tiles so
that, when a connector spans adjacent edges of adjacent tiles so
that the layer of adhesive contacts the underside of each of the
adjacent tiles, the layer of adhesive prevents relative movement
between the adjacent tiles while extending along only a portion
of the adjacent edges; and
wherein the first connector and second connector are
releasably attached to one another.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Robinson
Settineri
Puskadi
Loder
LaBianca
Wagner
Kobe
Braud
US 3,241,662
US 3,928,690
US 4,196,254
US 4,562,938
US 4,920,720
US 5,012,590
US 5,888,335
US 5,931,354
Mar. 22, 1966
Dec. 23, 1975
Apr. 1, 1980
Jan. 7, 1986
May 1, 1990
May 7, 1991
Mar. 30, 1999
Aug. 3, 1999
Kinoshita JP H05-163825 A June 29, 1993

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claims 1, 3, 5–8, 10–12, 14, and 15 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kinoshita and Kobe. RAN 4–7.
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2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Kobe, and Loder. RAN 7.
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Kobe, and Settineri. RAN 8.
4. Claims 7, 8, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kinoshita, Kobe, and Braud. RAN 8–10.
5. Claims 9 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kinoshita, Kobe, and LaBianca. RAN 10–11.
6. Claims 1, 3, 5–8, 11, 12, 14, and 15 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Kinoshita and Robinson. RAN
11–14.
7. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Robinson, and Loder. RAN 15.
8. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Robinson, and Settineri. RAN 15–16.
9. Claims 7, 8, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kinoshita, Robinson, and Braud. RAN 16–18.
10. Claims 9 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kinoshita, Robinson, and LaBianca. RAN 18–19.
11. Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kinoshita and Puskadi. RAN 19–20.
12. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Puskadi and Loder. RAN 20.
13. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinoshita, Puskadi and Settineri. RAN 21.
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14. Claim 16–23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kinoshita and Wagner. RAN 22–27.
15. Claim 16–23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kinoshita, Wagner, and Kobe. RAN 27.
16. Claim 16–23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kinoshita, Wagner, and Robinson. Id.
17. Claim 16–23 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Kinoshita, Wagner, and Puskadi. RAN 28.

ANALYSIS
As the Patent Owner states, "Kinoshita is the core reference in this
appeal." App. Br. 19. As shown above, every rejection involves a
combination involving Kinoshita. Most of Patent Owner's arguments in one
way or another relate to rebutting the propriety of the Examiner utilizing
Kinoshita in combination with the various other references listed above. As
is seen from representative claim 1, the '502 patent is essentially about a
connector, or a stack of connectors, utilized to install carpet tile.
Kinoshita discloses an adhesive connector used to connect carpet tiles
in much the same way as that disclosed in the '502 patent. Simply viewing a
side-by-side comparison of the main drawings of each patent makes this
abundantly clear.
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Above is a side-by-side comparison of Fig. 5 of the '502 patent with Figure 1
of Kinoshita whereby both figures show a grid of carpet tiles with adhesive
connectors at the intersection of four adjacent tiles.
The Patent Owner argues at length that Kinoshita is inadequate to prove
obviousness by suggesting that Kinoshita only "teaches how to apply generic
'adhesive tape,' a technology known to fail in this application, to tile
installations;" and that Kinoshita "rel[ies] on a substance known to fail in
joining tiles." App. Br. 19. We are not aware, however, of any basis for
presuming, as the Patent Owner would have us do, that a piece of prior art is
inadequate to teach that which it explicitly states is the purpose of its
invention. The Patent Owner also has not provided any persuasive evidence
other than attorney argument that Kinoshita would fail or be insufficient for
its clearly stated purpose.
The Patent Owner contends that "Kinoshita says nothing about the
type of carrier film the tape should have or its characteristics" or "of the
characteristics of the adhesives the tape should have (e.g., shear strength)"
while at the same time the Patent Owner informs us that Kinoshita's
connectors rely on a substance known to fail. Id. It is not abundantly clear
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how Kinoshita’s connectors can be known to fail when, admittedly, little is
known of the type of carrier film or adhesive employed. Absent persuasive
evidence to the contrary, we presume that Kinoshita enables the process it
discloses. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir.
2012).2 We do not deny that Kinoshita is rather sparse in its details
regarding the specifics of the adhesive, but we see no basis to essentially
ignore that Kinoshita clearly teaches the use of adhesive connectors for
laying carpet. Not only do we presume that Kinoshita enables the laying of
carpet tile, we find that Kinoshita discloses a method of installation whereby
"it is also possible to link an appropriate number of the tile carpet units 1
ahead of time with the adhesive tape 2 to form the blocks, and lay these
block using the same procedure as shown in FIG. 2." Kinoshita, ¶ 15.
Furthermore, Kinoshita displays some skill in the proper selection of
adhesives suitable for carpet installation by stating that, in its double-sided
tape application, the adhesive on the subfloor side should be weaker than the
adhesive that contacts the carpet tiles. Kinoshita, ¶ 0012. This
accomplishes a similar objective as stated in the '502 patent to provide a
floor that can be easily removed without damaging the subfloor upon
removal.
The Patent Owner also argues that Kinoshita does not teach the
limitation that the adhesive connector "prevents relative movement between

2 The disclosures of a prior art reference are presumed to be enabled. Amgen
Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003).
Moreover, a “non-enabling reference may qualify as prior art for the purpose
of determining obviousness under § 103.” Antor Media, 689 F.3d at 1292
(citing Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578
(Fed.Cir.1991)).
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adjacent tiles" as recited in claim 1. Patent Owner argues a narrow
construction of this limitation by asserting that this only refers to preventing
"lateral movement." App. Br. 15–17. According to the Patent Owner, the
patent only describes "preventing [] lateral movement, not non–lateral
movement." App. Br. 15. We find this to be contrary to the '502 patent's
disclosure, which also discusses the adhesive connector's peel strength,
which refers to the strength needed to remove the connector from the carpet
tile. As the Requester states, movement relating to peel strength "would be a
vertical movement, not a lateral movement." Resp. Br. 3 (citing the '502
patent Spec., col. 7, l. 61–col. 8, l. 22). As such, the '502 patent does not
discuss only lateral movement and so a construction that limits the claim
only to preventing lateral movement would be overly narrow.
Even if we were to accept the Patent Owner's construction, it is clear
that Kinoshita would still meet this limitation. First, the Patent Owner does
not explain how an adhesive that prevents peeling would be incapable of
also preventing lateral movement to at least some degree as well. Also, as
noted above, Kinoshita teaches a method whereby tiles are connected upside
down and then a section of tiles is flipped for installation. In order to
accomplish this installation, Kinoshita's connectors would have to prevent
both peeling and relative lateral movement so as to effect a proper carpet
installation.
Furthermore, neither the claims nor the Specification describes how
resistant the adhesive connector must be to lateral movement of the tiles.
The Patent Owner attempts to introduce an undisclosed method of testing
carpet whereby a chair is rolled across the carpet 50,000 times to test for the
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adequacy of the bond at the seams; and asserts that the Examiner is incorrect
to construe the term such that even passing one cycle of this test would be
sufficient to meet the claim. App. Br. 17–18. But again, the '502 patent
itself provides how resistant the adhesive must be to lateral movement in
order to satisfy claim 1. Accordingly, we are unpersuaded that the
Examiner’s construction of the term "prevents lateral movement" is
unreasonable or that Kinoshita fails to teach this limitation.
The Patent Owner next argues that the various aspects of Kinoshita
that are missing cannot be supplemented by looking to the adhesive art
because adhesive art is not analogous art. See App. Br. 9–15. As with claim
construction, the Patent Owner attempts to assert an overly narrow definition
of the relevant art by confining it to "the field of developing systems and
methods for installing tiles." App. Br. 26. We first note that other than
contextually identifying the application as carpet installation, the claims at
their most basic level refer only to an adhesive connector, thus the adhesive
connector art would definitely be relevant to the subject matter of the claims.
We also find it difficult to accept that a person of ordinary skill looking to
improve upon Kinoshita's invention would have confined himself or herself
only to the field of carpet installation and, as the Requester states, "be
expected to 'reinvent the wheel' and ignore the well-established art of
adhesive tapes." Resp. Br. 5. Even assuming for purposes of this appeal
that the pertinent art is restricted to developing systems and methods for
installing tile, one of ordinary skill in the art familiar with the teachings of
Kinoshita either would have had a working knowledge of adhesives or
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would have had reason to consult an expert in the adhesive art in order to
implement Kinoshita’s teachings.
The Requester's expert, Curtis Larson, stated that one of ordinary skill
in the adhesive art presented with an application for an adhesive, with which
he or she may have had no experience, could have determined the necessary
characteristics of the adhesive from the application, utilizing his or her
knowledge in the adhesive art. Larson Dec. 15. This is not an instance
where the Requester and the Examiner are using hindsight to reconstruct the
claims, as asserted by the Patent Owner. App. Br. 27. Rather, the prior art
provides, by way of Kinoshita, the exact problem and solution alleged to be
the purpose of the '502 patent, but without certain details regarding the
specific characteristics of the adhesive tape used therein, which are claimed
by the Patent Owner. Thus, it is highly relevant for one of ordinary skill in
the art to consult the adhesives art to find suitable properties for a connector
such as that disclosed in Kinoshita to be used in carpet tile installation. As
the Requester states, "any properties of the tape of Kinoshita needed to
achieve the desired result would [have] be[en] an obvious matter of design
choice." Resp. Br. 11.
Although the Patent Owner nominally argues some specifics of the
combinations involving each of Puskadi, Robinson, Wagner, and Kobe,
these arguments are not based upon a deficiency of the teachings of any of
the references, but merely repeat the argument regarding the alleged
improper combination of aspects of adhesive art with Kinoshita. App. Br.
27–31. We agree with the Requester and the Examiner that each of the
secondary references teaches the relevant claim limitation at issue and is
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properly combinable with Kinoshita. Having already deemed the adhesive
art to be properly within the realm of analogous and relevant art, we disagree
that Kinoshita is not properly combined with any of the stated references.
Accordingly, we sustain all of the Examiner's rejections of claims 1–23.
The Patent Owner next argues that the Examiner failed to properly
consider the evidence of secondary considerations that allegedly rebut the
obviousness case. App. Br. 32–36. First, we agree with the Requester that
in this case, "the Examiner properly determined that the prima facie case of
obviousness is so strong that it cannot be overcome by any evidence of
secondary considerations." Resp. Br. 13, citing Ran 35. See also, Newell
Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768–769 (Fed. Cir. 1988)
(holding very strong prima facie cases of obviousness not overcome by
evidence of commercial success, copying by others, and other secondary
considerations).
a. Long-Felt Need

The Patent Owner argues that the application of glue for carpet tile
installations dominated the market and there was a need for viable glueless
options and for carpet installations with no lateral tile movement. App. Br.
32. To establish evidence of a long-felt but unresolved need, a patent owner
must show that there was a persistent problem that was recognized by those
of ordinary skill in the art. See In re Gershon, 372 F.2d 535, 539 (CCPA
1967). The problem must not have been solved previously by another, and
the claimed invention must, in fact, satisfy the long–felt need. See Newell
Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
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Here, although there is some evidence that a prevailing installation
for carpet tiles involved applying glue to the floor, Patent Owner fails to
show when the problem first arose and how long this need was felt. See
Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178
(Fed. Cir. 1993) (“[L]ong–felt need is analyzed as of the date of an
articulated identified problem and evidence of efforts to solve that
problem."). Furthermore, Patent Owner fails to show that the alleged need
for a glueless installation was not solved by another because Kinoshita
discloses installations of carpet tiles without glue, thus solving the
problem. For the foregoing reasons, the objective evidence proffered by
Patent Owner is insufficient to establish a long–felt, but unmet, need.
b. Unexpected Results and Skepticism
We are persuaded by Requester’s argument that Patent Owner failed
to show unexpected results. Resp. Br. 13–14. As the Requester states,
"Patent Owner did not invent the adhesive that purportedly brings about
the desired result recited in the claims and merely selected the adhesive
from a finite number of commercially available products." Resp. Br. 14
(citing the '502 patent, Spec. col. 7, ll. 53–57). Thus, the results achieved
were not unexpected, but were exactly the results that would be expected
when choosing an adhesive for the stated application. Furthermore, we
also agree that, as evidenced by the preexistence of Kinoshita's carpet tile
installation method, "Patent Owner cannot reasonably assert that using a
known adhesive for a known purpose has brought about any truly
unexpected results. Id. (citing MPEP 716.02 and In re Merck & Co., 800
F.2d 1091 (Fed. Cir. 1986)).
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c. Commercial Success
Patent Owner asserts that over 123 million TACTILES connectors
have been sold since introduction of the product in 2006. App. Br. 33.
Even assuming that the TACTILES connectors include all the recited
limitations of the claims-at-issue, there is insufficient evidence in the
record to warrant a finding of commercial success that supports a
conclusion of non-obviousness. As previously discussed, glueless
installations were known in the art at the time of the invention of the '502
patent. To the extent the alleged success is based at least partly on this
feature, Patent Owner has not shown that such success is due to the merits
of the claimed invention beyond what was readily available in the art. See
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (finding
the prior art possessed the function relied upon by the patent applicant to
establish unexpected results and, therefore, was not a basis for rebutting a
prima facie finding of obviousness); J.T. Eaton & Co., Inc. v. Atlantic
Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“[T]he asserted
commercial success of the product must be due to the merits of the claimed
invention beyond what was readily available in the prior art.”).
Indeed, the Patent Owner shows its own commercial product
alongside an alleged copy, but one of the prominent features of those two
products is that each has an alignment indicia, which is claimed only in
claim 16 and its dependent claims. We cannot distinguish the basic
connector features as potential bases for commercial success and thus, a
proper nexus cannot be established with respect to at least claims 1–15.
Furthermore, as the Requester points out, "no evidence was produced that
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the sales of the connectors are the direct result of the claimed invention
and not due to other factors such as advertising or heavy promotion ."
Resp. Br. 14. Accordingly, the Patent Owner has not carried its burden
regarding commercial success.
d. Copying
Lastly, Patent Owner alleges that multiple copycat products have
emerged since the introduction of the TACTILES connectors. App. Br. 34–
36. Copying, as objective evidence of nonobviousness, requires evidence of
effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d
1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). In the instant proceeding, the Patent
Owner simply asserts that a competitor's product, ECO-STICKER, "looks
strikingly similar to Patent Owner's Tactiles® connectors." App. Br. 34.
The allegations that the products look similar and are used to install carpet
tiles without glue in no way show that any of the entities producing those
products actually copied Patent Owner’s TACTILES connectors.
After weighing the Examiner's strong prima facie case of obviousness
against the Patent Owner's evidence of secondary considerations, we
conclude that the Requester has demonstrated that the subject matter of
claims 1–23 would have been obvious as stated in rejections 1–17 above.
Accordingly, we sustain all of rejections 1–17 as set for the by the
Examiner.
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DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1–23.
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). In the event
neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, 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

cu

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PATENT OWNER:
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA GA 30309

THIRD PARTY REQUESTER:
DANA E. STANO
WOMBLE CARLYLE SANDRIDGE & RICE PLLC
P.O. BOX 7037
ATLANTA, GA 30357-0037