Ex Parte Boquillon

Patent Trial and Appeal Board

Jun 26, 2017

13201567 (P.T.A.B. Jun. 26, 2017)

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.
13/201,567 09/28/2011 Nicolas Boquillon 508712 1192
53609 7590 06/28/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/28/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICOLAS BOQUILLON
Appeal 2016-007492
Application 13/201,567
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
BRIAN D. RANGE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1—6 and 13—16 under 35 U.S.C. § 103(a) as
unpatentable over Quinn et al.1 in view of Timm et al.2 3 4and Godwin et al.3,4 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 US Re. 36,458, reissued December 21, 1999 (“Quinn”).
2 US 5,358,993, issued October 25, 1994 (“Timm”).
3 US 2008/0234414 Al, published September 25, 2008 (“Godwin”).
4 Claims 7—11 are also pending and have been withdrawn from consideration.
Appeal 2016-007492
Application 13/201,567
The claimed subject matter is directed to a decorative welding rod used to
join elements of a decorative surface covering, such as tile floor coverings. Spec.
1, 14. Claim 1 is reproduced below from the Claims Appendix of the Appeal
Brief dated December 22, 2015 (“App. Br.”). The limitation at issue is italicized.
1. A decorative welding rod to join elements of a decorative
surface covering comprising unfused and coloured PVC-based
particles having a first size and colour, said welding rod comprising a
continuous matrix formed by a gelified plastisol-based composition
comprising a PVC resin in a benzoate plasticizer, said continuous
matrix having embedded therein unfused PVC-based particles having
a second size and colour visually matching the first size and colour of
the PVC-based particles used in the decorative surface coating.
App. Br., Claims Appendix 1.
Claims 14 and 15, the other independent claims on appeal, are also directed
to a decorative welding rod. Claim 14 recites that the welding rod comprises a
continuous matrix, “said continuous matrix having embedded therein unfused
PVC-based particles.” App. Br., Claims Appendix 3. Claim 15 recites that the
welding rod comprises a continuous matrix, “said continuous matrix having
suspended therein unfused and coloured PVC-based particles.” App. Br., Claims
Appendix 3.
The Appellant discloses that the welding rod is produced by: (1) blending
the components of the welding rod composition, which include PVC-based
particles and a plasticizer; (2) depositing the composition on a carrier; (3)
spreading the composition across the carrier to a desired thickness; (4) gelling the
composition; and (5) embossing the resulting sheet to form a plurality of welding
rods. See Spec. Tflf 60-61, 65; see also Appellant’s Fig. 7.
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Appeal 2016-007492
Application 13/201,567
B. DISCUSSION
The Examiner finds Quinn discloses a patterned welding rod used to seam
resilient flooring wherein the welding rod comprises multicolored PVC-based
particles that visually match the size and color of PVC-based particles in the
flooring. Final 2.5 The Examiner finds Quinn teaches that the welding rod
comprises a continuous matrix that includes PVC-based particles and a plasticizer.
Final 2. The Examiner finds “Quinn fails to teach the PVC-based particles are
unfused and the plasticizer may comprise benzoate” as recited in the claims on
appeal. Final 3.
The Examiner finds Timm discloses an inlaid tile composition comprising
cross-linked PVC chips uniformly dispersed throughout a thermoplastic tile base.
Final 3; see also Final 10 (finding that Timm’s PVC chips are unfused). The
Examiner finds the benefit of Timm is that “the chips remain discrete and non­
smearing and do not elongate during processing.” Final 3 (citing Timm, col. 1,11.
15—22). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to combine or substitute Quinn’s fused PVC-based particles
with Timm’s unfused PVC chips to provide a welding rod with “PVC chips that
remain discrete and non-smearing and do not elongate during processing.” Final 3.
The Examiner also finds Godwin discloses benzoate plasticizers and
concludes that it would have been obvious to one of ordinary skill in the art “to
combine or substitute the plasticizers of Godwin for the plastisols of Quinn”
because Godwin’s plasticizers “are fast-fusing and have a low viscosity combined
with good staining performance.” Final 3^4.
5 Final Office Action dated July 22, 2015.
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Appeal 2016-007492
Application 13/201,567
The Appellant argues that modifying Quinn by replacing Quinn’s fused
PVC-based chips with Timm’s unfused PVC chips, as proposed by the Examiner,
would not produce a welding rod according to Quinn’s process. The Appellant
relies on a Declaration of Nicholas Boquillon dated December 11, 2014
(“Boquillon Decl.”) for support. App. Br. 7. In that Declaration, Mr. Boquillon
states:
Quinn discloses a patterned thermoplastic welding rod fabricated in
several steps. In the first step, the chips are prepared by blending the
corresponding ingredients, sheeting the mixture and cutting and
grinding the sheet to the desired chip size. The chips are then heated
and consolidated into another sheet. The consolidated sheet is cut
into strips and press moulded into the desire[d] rod shape. An
example of Quinn’s fabrication process is described in col. 4,1. 45 to
col. 5,1. 35 of Quinn. Regarding the consolidation of the chips into a
sheet, it is clear that the chips are not embedded into a plastisol-based
composition. Instead, the chips are put together on a support carrier
(see Quinn, col. 5, lines 5-10), heated and fused together between
rolls. To me, and I believe to any experienced person in this field of
technology, it is obvious that fusion of the chips is necessary for the
consolidation according to Quinn to work properly. Otherwise there
would be no or insufficient cohesion between adjacent chips and the
obtained sheet would fall into pieces once it is removed from the
support carrier. I therefore consider that unfused chips . . . are . . . not
desirable, since the consolidated sheet would be unusable for the
purpose of Quinn if chips remained unfused.
App. Br. 6 (quoting Boquillon Decl. 14 (emphasis omitted)).
In response, the Examiner notes that the Boquillon Declaration “does not
speak specifically to the prior art of Timm and thus, without a concise discussion
in the opinion on the deficiencies of Timm, the opinion/declaration is not found to
be persuasive.” Ans. 10.6 It is not critical, however, that the Boquillon
6 Examiner’s Answer dated July 1, 2016.
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Appeal 2016-007492
Application 13/201,567
Declaration does not address Timm because the Examiner’s findings with respect
to Timm, including the Examiner’s finding that Timm discloses unfused PVC
chips, are not disputed on this record. See Reply Br. 5 (stating that “the teachings
of Timm are not at issue”).7
Moreover, the issue on appeal is not whether it would have been obvious to
modify the tile composition of Timm. Rather, the issue on appeal is whether it
would have been obvious to modify the welding rod of Quinn to include the
unfused PVC chips of Timm. In response to the Appellant’s argument, the
Examiner does not consider whether the unfused PVC chips disclosed in Timm
would have been suitable for producing the welding rod disclosed in Quinn. See
Reply Br. 6 (arguing that “it is the Examiner who does not address the unsuitability
of unfused chips in Quinn”). Rather, the Examiner merely repeats the previous
findings that Quinn teaches a welding rod comprising a continuous matrix having
PVC-based particles embedded therein and Timm discloses crosslinked PVC
chips. Ans. 10-11; see also Final 2—3; Ans. 2—3.
We find that Mr. Boquillon’s description of Quinn’s process is supported by
the record. In particular, Quinn discloses that “[t]he patterned welding rod is
prepared in four steps: 1—chip preparation, 2—chip consolidation, 3—cutting and
press molding, and 4—joining together and separating.” Quinn, col. 2,11. 46-48.
In the first step, chips are prepared by blending the ingredients, including PVC
resin and plasticizers, sheeting the blended ingredients to a desired thickness, and
cutting and grinding the sheet to the desired chip size. Quinn, col. 4,1. 65—col. 5,1.
1. In the second step, chips are heated to about 425°F. on a support carrier and
consolidated between two large metal rolls to form a sheet. Quinn, col. 5,11. 6—10.
7 Reply Brief dated August 2, 2016.
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Application 13/201,567
The sheet is then cut into strips and press molded into welding rods. Quinn, col. 2,
11. 49-51.
Quinn discloses that “[i]f chips, and not a consolidated sheet, were placed in
the mold cavity, the rod is not completely consolidated. The flow of the chips in
this instance is insufficient to completely fuse together and to form a rod without
smears.” Quinn, col. 2,11. 64—67.
On this record, the Examiner has failed to explain, in any detail, why
combining or substituting Quinn’s fused PVC-based chips with Timm’s unfused
PVC chips would have been expected to result in a welding rod as disclosed in
Quinn.
The Examiner finds “Godwin specifically teaches its plasticizers affect the
fusing properties of the PVC, and the Inventor’s Declaration [i.e., the Boquillon
Declaration] does not address Godwin at all or any affect the use of its plasticizers
might have in combination with Quinn as modified by Timm.” Ans. 18. The
Examiner, however, does not find, in the first instance, that Godwin’s plasticizers
would have enabled Timm’s unfused PVC chips to be used in Quinn’s process to
produce a welding rod as disclosed in Quinn. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (stating that an examiner bears the initial burden of
presenting a prima facie case of unpatentability). Thus, Mr. Boquillon was not
required to address the effect of Godwin’s plasticizers on the combination of
Quinn and Timm to demonstrate reversible error in the § 103(a) rejection on
appeal.
For the reasons set forth above, the § 103(a) rejection is not sustained.
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Application 13/201,567
C. DECISION
The Examiner’s decision is reversed.
REVERSED
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