Ex Parte Chen et al

Patent Trial and Appeal Board

Feb 28, 2013

11827897 (P.T.A.B. Feb. 28, 2013)

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.
11/827,897 07/13/2007 Hao A. Chen 3620-064-02 1883
33432 7590 02/28/2013
KILYK & BOWERSOX, P.L.L.C.
400 HOLIDAY COURT
SUITE 102
WARRENTON, VA 20186
EXAMINER
WATKINS III, WILLIAM P
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
02/28/2013 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
____________

Ex parte HAO A. CHEN and
NATHAN W. EASTERDAY
____________

Appeal 2012-000574
Application 11/827,897
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
DONNA M. PRAISS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000574
Application 11/827,897

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Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-12, 14, 15, and 17-39 as
unpatentable over Hansson (US 6,465,046 B1 issued Oct. 15, 2002) in view
of Casto (US 1,947,459 issued Feb. 20, 1934) and further in view of Wiley
(US 4,675,212 issued June 23, 1987). We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.

Appellants claim a surface covering panel comprising a support layer
1 with or without texturing, a base coating 2 of about 1 mil to about 30 mils
thickness on the support layer and having a mechanically embossed textured
surface 3, a printed pattern 4 on the textured surface and in register with the
textured surface to within about 1 mm or less, and a protective layer 5 on the
printed pattern and having a top surface with the textured pattern that
corresponds to the textured surface (independent claim 1; see also
independent claims 30 and 39). Appellants also claim a method of making
the surface covering panel of claim 1 (claim 18).
Representative claim 1 reads as follows:
1. A surface covering panel comprising:
at least one support layer with or without texturing; at
least one base coating located on top of said support layer
having a mechanically embossed textured surface; at least one
printed pattern located on said textured surface and in registered
with said textured surface; and at least one protective layer
located on the printed pattern, wherein said at least one base
coating, having a thickness of from about 1 mil to about 30
mils, is a polymeric coating and the printed pattern is applied to
the base coating with a printer that prints the printed pattern
directly on said base coating, and said printed pattern is applied
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Application 11/827,897

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after the textured surface is present, and the printed pattern and
textured surface are in register to within about 1 mm or less,
wherein said protective layer has a top surface with a textured
pattern that corresponds to said textured surface.
We will sustain the above rejection for the reasons expressed in the
Examiner's Answer (mailed June 3, 2011) and in the Decision (dated June
13, 2007) for prior appeal 2007-1262 in parent application 10/697,532. The
following comments are added for emphasis.
Appellants characterize the appealed claims as being directed to a
product and method which involve a printed-in-register technique as
opposed to the embossed-in-register technique of Hansson (see, e.g., App.
Br. para. bridging 15-16). As pointed out in the Answer (Ans. 8) and the
prior Decision (Dec. 4), the product made by a printed-in-register technique
appears to be indistinguishable from the Hansson product made by an
embossed-in-register technique. Although Appellants state that their
printed-in-register technique yields product advantages (e.g., improved
registry) compared to the conventional embossed-in-register technique (see,
e.g., App. Br. 16-17), this statement is not supported by evidence comparing
their printed-in-register technique with Hansson's embossed-in-register
technique as correctly noted by the Examiner (Ans. 7).
Regardless, we agree with the Examiner that it would have been prima
facie obvious, in view of Casto, to modify Hansson's method so as to first
mechanically emboss a textured surface onto the base coating and then to
print a pattern directly onto and in register with this textured surface, thereby
yielding a printed-in-register method and corresponding product.
In support of their contrary view, Appellants reiterate the prior-appeal
argument that their claimed registry (e.g., within about 1 mm or less) would
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Application 11/827,897

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not be obtained with the random matching tolerance of up to ± 5 mm
disclosed in column 1, lines 25-28, of Hansson (see, e.g., App. Br. para.
bridging 18-19). As pointed out multiple times in the record, the above
tolerance disclosure relates to a prior art technique over which Hansson's
digitally controlled technique is an improvement. Appellants' argument
concerning this tolerance disclosure remains unpersuasive for the several
reasons given in the Answer (Ans. para. bridging 6-7) and the prior Decision
(Dec. para. bridging 6-7). Furthermore, the Examiner's proposed
combination of prior art teachings would result in a method identical to
Appellants' claimed method and therefore would necessarily produce the
degree of registry claimed by Appellants.
Appellants also reiterate the prior-appeal argument that a prima facie
obviousness conclusion is contrary to Casto's teaching of filling the
embossed surface indentations with pigment to create a smooth surface (see,
e.g., App. Br. para. bridging 23-24). However, as in the prior Decision
(Dec. 6), we continue to find that Casto teaches, or at least would have
suggested, a non-smooth surface such as mortar joints represented by
depressed fillings (Casto 3:34-41; see also Casto sentence bridging 2-3,
claims 5-6). In response to our finding in the prior Decision, Appellants
argue that Casto's "depressed fillings" disclosure "is not referring to literally
forming 'depressed fillings'" (App. Br. para. bridging 24-25). We find no
convincing merit in this argument particularly since it is contrary to Casto's
teaching of using an engraved plate or roll to create a second grain outline
on a surface containing previously filled depressions (see again Casto
sentence bridging 2-3, claims 5-6).
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Application 11/827,897

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Appellants further argue that the applied references contain no
teaching or suggestion of the claim feature wherein the top surface of the
protective layer has a textured pattern corresponding to the textured surface
below (see, e.g., App. Br. 25). We agree with the Examiner that Hansson's
disclosure of a protective layer having a texture corresponding to the
textures below would have suggested preserving this protective layer texture
in combining the teachings of Hansson and Casto (Ans. para. bridging 8-9).
In addition, since these combined teachings would result in a method
identical to Appellants' claimed method, this resulting method would
necessarily produce the protective layer textured surface of the claimed
method. In this regard, we observe that Appellants' disclosed method causes
a textured surface to be eventually reflected on the protective coating/layer
(Spec. 16:5-8) without practicing any specific step to create the textured
surface.
In addition, Appellants contend that the applied references contain no
teaching or suggestion of the claim feature wherein the base coating has a
thickness of about 1 mil to about 30 mils (see, e.g., App. Br. 29). We do not
agree. Both Hansson and Wiley evince that base coating thickness is an art-
recognized, result-effective variable, thereby evincing obviousness for the
thickness feature of claims 1, 18, and 30.1 See In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).
Finally, Appellants argue that no apparent reason exists for combining
the applied references in such a manner as to produce the independent claim
30 requirement for a support layer having a mechanically embossed textured

1 Independent claim 39 contains no such limitation.
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Application 11/827,897

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surface with a base coating thereon which has a textured pattern
corresponding to the textured surface (see, e.g., App. Br. 37). The Examiner
makes the undisputed finding that Hansson discloses a core layer (i.e., a
support layer) coated with an acrylic layer (i.e., a base coating) (Ans. 5). We
agree with the Examiner that mechanically embossing these layers would
necessarily yield a support layer having a textured surface with an overlying
base coating having a corresponding textured pattern as required by claim 30
(id. at 12).

For the reasons stated in the Answer, in our prior Decision, and above,
we sustain the Examiner's § 103 rejection of the appealed claims as
unpatentable over Hansson, Casto, and Wiley.

The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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