Ex Parte Clohessy et alDownload PDFPatent Trial and Appeal BoardMar 31, 201613199314 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/199,314 08/24/2011 Thomas J. Clohessy 4955 7590 04/04/2016 WARE, FRESSOLA, MAGUIRE & BARBER LLP BRADFORD GREEN, BUILDING 5 755 MAIN STREET, P 0 BOX 224 MONROE, CT 06468 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 814-289.004-1 8209 EXAMINER FORD, GISELE D ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): mail@warefressola.com uspatents@warefressola.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS J. CLOHESSY and EDWIN PETTERSEN Appeal2014-003046 Application 13/199,314 Technology Center 3600 Before ANNETTE R. REIMERS, MARK A. GEIER, and PAUL J. KORNICZKY, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas J. Clohessy and Edwin Pettersen (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims 1, 2, 4-7, 11, and 15-19 as unpatentable over Daxon (US 7,985,143 Bl; iss. July 26, 2011) and Kessler (US 6,635,331 B2; iss. Oct. 21, 2003); (2) claims 3 and 20 as unpatentable over Daxon, Kessler, and McKay (US 6,458,442 B 1; iss. Oct. 1, 2002); (3) claim 8 as unpatentable over Daxon, Kessler, and Putt (US 7,329,451 B2; iss. Feb.12, 2008); and (4) claims 9, 10, and 12-14 as unpatentable over Daxon, Kessler, and Munoz (US 2005/0088020 Al; pub. Apr. 28, 2005). We have jurisdiction under 35 U.S.C. § 6(b). Appeal2014-003046 Application 13/199,314 We AFFIRM-IN-PART and enter NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claimed subject matter "relates to mats, particularly mats placed over a flat surface, such as a floor or the canvas surface of a fighting ring or the like." Spec. 1, 11. 10-11; Figs. 3, 4, 5. Claim 1, the sole independent claim, is representative of the claimed subject matter and recites: 1. A mat comprising: Claim 1 a first mat section having: an upper layer having an upper surface, the upper surface including a cutout area, and a lower layer having a lower surface and an upper surface, the upper surface including fasteners attached thereto in a space defined by said cutout area of said upper layer; and a second mat section having a lo\'l/er surface including fasteners that are removably attached to the fasteners on the upper surface of the lower layer of the first mat section, the second mat section having a perimeter that fits within the cutout area of the first mat section. ANALYSIS Obviousness over Daxon and Kessler The Examiner finds that Daxon discloses the limitations of claim 1 except Daxon "does not disclose the lower surface as including fasteners that are removably attached to the fasteners on the upper surface of the lower layer of the first mat section." Final Act. 2. The Examiner finds that 2 Appeal2014-003046 Application 13/199,314 "Kessler teaches fasteners (13 can be a strip of loop material, col. 5, lines 21-23) on the bottom surface of the second mat section." Id. The Examiner concludes that it would have been obvious "to use the loop fasteners of Kessler on the second mat section [of Daxon] as well as the hook fasteners of Kessler (23) on the upper surface of the first mat section [of Daxon] to further secure the second mat section into the cutout area of the first mat section." Id. at 3. Appellants contend that "the asserted combination of Daxon and Kessler does not render the claimed invention obvious, at least because the references teach away from making this combination, and the combination would render the Daxon reference unsuitable for it[s] intended purposes." Appeal Br. 5. Specifically, Appellants contend: [T]he stated purpose[] of Daxon of allowing the display region 70 to be removed relative to the mat by holding the rest of the mat stationary while pulling the tie string could not be achieved if Daxon was modified in the manner argued by the Office. Any modification of Daxon to include the use of loop fasteners of Kessler on the "second mat section", as well as the hook fasteners of Kessler on the upper surface of the "first mat section" to "further secure the second mat section into the cutout region of the first mat section" (emphasis added, final Office Action, page 3, lines 3--4) would be contrary to the teaching of Daxon and would make the teaching of Daxon inoperative. Id. at 7. Appellants further contend: Daxon already utilizes two different elements (tie string 22 and protrusions 86) to secure the display region 70 to the mat. There would have been no reason for a person of ordinary skill in the art to make the modification proposed by the Office in order to duplicate the function already being served by two other features in Daxon. Reply Br. 2. 3 Appeal2014-003046 Application 13/199,314 Appellants' arguments are not persuasive. The Examiner makes it clear in the response to Appellants' arguments that the proposed modification of Daxon with the hook and loop fasteners of Kessler is not "to duplicate the function already being served by two other features in Daxon," but "to serve an entirely different purpose, which is to further secure the removable mat." Ans. 2 (emphasis added); see also Reply Br. 2. The Examiner's findings as to why a skilled artisan would have combined the references are objectively reasonable and based on rational underpinnings. Appellants do not apprise us of error in the Examiner's findings or conclusions. In addition, we fail to see how adding the hook and loop fasteners of Kessler to the respective first and second mat sections of Daxon would hinder/prevent display region 70 from being removed "by holding the mat stationary while pulling the tie string [22]." See Appeal Br. 7; see also Daxon; col. 6; 11. 36-38. We agree with the Examiner; "[a]lthough [Daxon] uses a tie string (22) to aid in the removal of the display region (70), the removal process would not be changed with the addition of the hook and loop fasteners [of Kessler]." Ans. 2. As such, Appellants do not apprise us of how the Examiner's proposed modification of Daxon with the hook and loop fasteners of Kessler "would render Daxon unsatisfactory for its intended purpose." Reply Br. 2; see also Appeal Br. 7-8. Further, Appellants do not establish that the prior art teaches away from the claimed invention because Appellants do not demonstrate that "a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re 4 Appeal2014-003046 Application 13/199,314 Gurley, 27 F.3d at 553. As discussed infra, Daxon merely discloses an alternative (displaying an advertisement on an opposing mat 10 face), which is not, by itself, sufficient to demonstrate a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of [the disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... "). Additionally, Appellants do not direct us to any discussion in Daxon that criticizes, discredits, or otherwise discourages ( 1) the use of hook and loop fastener's on the mat; or (2) further securement of the second mat section into the cutout area of the first mat section. Moreover, the Examiner notes that "Daxon does not specifically teach that the use of fasteners, such as hook and loop fasteners, would hinder the effectiveness of his invention." Ans. 2. As such, the combined teachings of Daxon and Kessler do not teach away from the subject invention. Appellants contend: [I]t is a clear stated purpose of Daxon to be able to present advertisements on both sides of the mat surface. As a result, a person of skill in the art would be motivated away from incorporating the fasteners of Kessler as asserted by the Office. Doing so would require hook or loop fasteners on both sides of the mat, including the side that is face up displaying the advertisement, which would both detract from the surface area available to display the advertisement and would compromise the use of the mat to absorb fluid, as a hook and loop fastener would not absorb fluid, unlike a sponge material. See Daxon, column 7, lines 27-28. In addition, because the mat according to Daxon already includes four leg engaging recesses 40, the area to display advertisements would be even further reduced if that 5 Appeal2014-003046 Application 13/199,314 space also included the hook and loop fasteners on both sides as the Office suggests. Appeal Br. 7-8. Appellants' arguments are not persuasive. At the outset, as discussed above, the combined teachings of Daxon and Kessler do not teach away from the subject invention. Further, Appellants' contention that including hook or loop fasteners on the side of Daxon's mat displaying the advertisement "would both detract from the surface area available to display the advertisement and would compromise the use of the mat to absorb fluid" amounts to unsupported attorney argument, and thus is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Daxon discloses: Comer mat 10 preferably not only includes an upper surface area for display of advertising indicia I but preferably has alternative advertising indicia I on an opposing mat 10 face, so that the mat 10 body can be inverted to display the alternative advertising indicia I. Alternatively, removable display region 70 has an opposing display region face displaying alternative advertising indicia I, so that display region 70 also can be inverted to display the alternative advertising indicia I. Daxon, col. 6, 11. 40-48 (emphasis added). A reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). We agree with the Examiner that Daxon's disclosure of displaying an advertisement on an opposing mat 10 face "is presented as an option and consequently the hook and loop fasteners are not necessarily required on both sides of the mat." Ans. 3. 6 Appeal2014-003046 Application 13/199,314 Moreover, even assuming arguendo that adding the hook and loop fasteners of Kessler to Daxon's mat would result in "disadvantages ... in the system of Daxon," as alleged by Appellants (see Reply Br. 2; see also Appeal Br. 8), we note that "[a] known or obvious [product] does not become patentable simply because it has been described as somewhat inferior to some other product forthe same use." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "The fact that the motivating benefit comes at the expense of another benefit ... should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim 1 as unpatentable over Daxon and Kessler. Claims 2, 4, 6, 11, and 15-18 Appellants do not present arguments for claims 2, 4, 6, 11, and 15-18 separate from those presented above for claim 1. See Appeal Br. 12. Accordingly, for the reasons discussed above for claim 1, we likewise sustain the Examiner's rejection of claims 2, 4, 6, 11, and 15-18 as unpatentable over Daxon and Kessler. 1 1 Claim 4 depends from claim 2, which depends from claim 1, and claim 15 depends from claim 1. See Appeal Br. 16-17, Claims App. Each of claims 4 and 15 recites: "the upper surface of the second mat section." See id. We note that there is insufficient antecedent basis for "the upper surface" of the second mat section in the claims. 7 Appeal2014-003046 Application 13/199,314 Claim 5 The Examiner finds that "Daxon discloses a mat wherein the lower surface of the lower layer of the first mat section is configured to minimize slipping of the mat when the mat is placed on another surface (via fastening means 20)." Final Act. 3. Appellants contend: [T]he fastening means 20 (i.e., tie string 22, as stated in column 5, lines 37-38) does not configure the asserted "lower surface of the lower layer of the first mat section" (i.e., cavity bottom wall 82 according to the Office's claim 1 rejection) to minimize slipping of the mat when the mat is placed on another surface. Appeal Br. 9. Appellants' argument is persuasive. The Examiner fails to establish by evidence or sufficient technical reasoning how the lower surface of lower layer 82 of the first mat section of Daxon is configured via fastening means 20 to minimize slipping of the mat when the mat is placed on another surface. See Final Act. 3; see also Ans. 3. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claim 5 as unpatentable over Daxon and Kessler. Claim 7 For the reasons set forth infra in the new ground of rejection under 35 U.S.C. § 112, second paragraph, the limitation "the upper layer of the first mat section has an upper surface with a carpet-like material attached thereto" in dependent claim 7 is unclear, thereby rendering claim 7 indefinite. This limitation is critical to deciding the propriety of the prior-art rejections. 8 Appeal2014-003046 Application 13/199,314 Having determined that claim 7 is indefinite, we cannot sustain the rejection of this claim under 35 U.S.C. § 103(a) because to do so would require speculation as to the scope of the claim. In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). Accordingly, we do not sustain the Examiner's rejection of claim 7 as unpatentable over Daxon and Kessler. Claim 192 The Examiner finds: Daxon in view of Kessler discloses a mat wherein the second mat section includes a flexible sheet (lower sheet 16) forming the lower surface upon which the fasteners (of Kessler) are attached and another sheet (upper sheet 16) forming the upper surface of the second mat section, the two sheets bonded to each other to form the second mat section (via a spongy urethane foam, col. 7, lines 22-25). Final Act. 5. Appellants contend: [T]he Office's interpretation of Daxon relative to claim 19 is not consistent with the Office's interpretation of Daxon relative to independent claim 1, from which claim 19 depends. In rejecting claim 1, the Office has asserted that the "second mat section" 2 Despite our New Ground of Rejection of claim 19 under 35 U.S.C. § 112, second paragraph, below, the following analysis is based on the Examiner's interpretation of the claim notwithstanding the indefinite language of claim 19. 9 Appeal2014-003046 Application 13/199,314 relates to the display region 70 in Daxon. In column 7, lines 22- 28, the display region 70 is discussed as a separate entity from the high friction sheet material 16, and there is no mention of the two being related. Thus, the Office is in essence asserting two distinct features of Daxon are considered to teach "the second mat section" within claim 19, which incorporates the features of claim 1. Appeal Br. 11. Appellants' arguments are persuasive. Claim 19 recites, in relevant part, "the second mat section includes a flexible sheet forming the lower surface upon which the fasteners are attached and another sheet forming the upper surface of the second mat section." Appeal Br. 18, Claims App. (emphasis added). The Examiner finds that display region 70 of Daxon constitutes "a second mat section (Fig. 11, the removable portion of element 14 shown) having a lower surface." See Final Act. 2. Daxon discloses: "A layer of high friction sheet material 16 optionally is adhesively bonded to the mat 10 upper and lower surfaces." See Daxon, col. 7, 11. 22-23; see also id. Fig. 7; Final Act. 5; Ans. 4; Appeal Br. 11. Based on Daxon's disclosure, we acknowledge that high friction sheet material 16 of Daxon could constitute "a layer of high friction material [another sheet] adhesively bonded to the upper surface [of the second mat section (display region 70)]." See Ans. 4; see also Daxon, Fig. 7. However, claim 19 further requires that the second mat section (display region 70) includes a "flexible sheet forming the lower surface." Appeal Br. 18, Claims App. (emphasis added). The Examiner does not direct us to any discussion in Daxon regarding the lower surface of display region 70 (the second mat section) including a flexible sheet forming the lower surface. See Final Act. 5; Ans. 4; see also Appeal Br. 11. Further, the Examiner does not establish through sufficient technical 10 Appeal2014-003046 Application 13/199,314 reasoning that the lower surface of display region 70 (the second mat section) necessarily includes a flexible sheet forming the lower surface. See Final Act. 5; Ans. 4. As such, the Examiner fails to establish that Daxon discloses the second mat section including a flexible sheet forming the lower surface, as recited in claim 19. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claim 19 as unpatentable over Daxon and Kessler. Obviousness over Daxon, Kessler, and McKay Claim 3 Dependent claim 3 recites "the fluid absorbent material [of the second mat section] is a felt-like material." See Appeal Br. 16, Claims App. The Examiner finds that "Daxon in view of Kessler discloses a mat formed of a fluid absorbent material, but does not disclose the material as being of a felt- like material. McKay teaches the use of felt as a top layer of fluid absorbing material (16, col. 3, [11.] 51-56)." Final Act. 6. The Examiner concludes: It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a felt rather than the spongy polyurethane foam ofDaxon, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.04), and because felt would perform the same way as the moisture absorbing material disclosed by Daxon. Id. The Examiner further concludes: "This change in materials would still provide for a rough and slip-resistant (these are relative terms in the art) surface, as is the intention of Daxon' s mat surface." Ans. 5. 11 Appeal2014-003046 Application 13/199,314 Appellants contend: Modifying Daxon as suggested by the Office, such as to utilize a top layer of felt instead of a top layer of rough surface 14 for frictionally engaging boxer shoes (Daxon, column 5, lines 40- 42) would run counter to this purpose of Daxon, and as a result, would not have been an obvious modification to a person having ordinary skill in the art, particularly in view of the fact that Daxon already provides means for dealing with fluids (the fluid collecting pan 30 described from column 5, line 42 to column 6, line 2) while still utilizing a rough, high-friction top surface to reduce slipping. Appeal Br. 12. Appellants' argument is not persuasive. Appellants' argument is an attack on the references individually rather than a challenge to the Examiner's combination of the teachings of Daxon, Kessler, and McKay. See In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (holding that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). McKay discloses The bibulous layer 16 is designed to absorb liquid from a shoe or object which contacts its upper face 22. Therefore, when a person walks across the uppermost cleaning sheet and contacts the upper face 22 of the uppermost bibulous layer 16, the bibulous layer 16 absorbs liquid from the person's shoes. Also, the bibulous layer [16] is preferably tough enough to withstand wiping of shoes on its upper surface 22. As will be clear to those of skill in the art, the bibulous layer 16 may be constructed from any of a variety of materials. For example, non-woven substrates such as spunlace, airlaid, wet laid, rayon, polyester, melt blown felt or any other non-woven fabric may be used; woven fabrics may also be used for particular applications. 12 Appeal2014-003046 Application 13/199,314 McKay, col. 3, 11. 44--56 (emphasis added); see also Final Act. 6. In other words, McKay discloses a fluid absorbent felt material that is tough enough to withstand wiping of shoes (a frictionally engaging surface). Consequently, we agree with the Examiner that modifying Daxon and Kessler to include the felt of McKay "would still provide for a rough and slip-resistant[] surface, as is the intention of Daxon's mat surface." See Ans. 5. Appellants do not provide any persuasive evidence or argument to the contrary. See Appeal Br. 12. "Attomey[s'] argument in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 197 4) (citation omitted). Further, Daxon discloses that mat 10 includes "several boxer anti-slip means including a rough surface for frictionally engaging boxer shoes, and a fluid collecting pan having a pan." See Daxon, col. 1, 11. 28-31 (emphasis added); see also id. at col. 5, 11. 40-42. As such, it would appear that modifying Daxon and Kessler to include the fluid absorbent felt material of McKay would provide additional means for dealing with fluids (anti-slip means), which would lend to Daxon's purpose to "prevent slipping on the mat." See Final Act. 6; Ans. 5; Appeal Br. 12. Accordingly, for the foregoing reasons, we sustain the Examiner's rejection of claim 3 as unpatentable over Daxon, Kessler, and McKay. Claim 20 Claim 20 depends from claim 19. See Appeal Br. 18, Claims App. The Examiner does not rely on McKay in any manner that would result in overcoming the above-noted deficiency of the rejection of claim 19 based on Daxon and Kessler. See Final Act. 6-7. As such, we do not sustain the 13 Appeal2014-003046 Application 13/199,314 Examiner's rejection of claim 20 as unpatentable over Daxon, Kessler, and McKay. 3 Obviousness over Daxon, Kessler, and Putt Claim 8 For the reasons set forth infra in the new ground of rejection under 35 U.S.C. § 112, second paragraph, the limitation "the upper layer of the first mat section has an upper surface with a carpet-like material attached thereto" in dependent claim 7 is unclear, thereby rendering claim 7 indefinite. Having determined that claim 7 is indefinite, we cannot sustain the rejection of claim 8, which depends from claim 7, under 35 U.S.C. § 103(a) because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F.2d at 862-63. Accordingly, we do not sustain the Examiner's rejection of claim 8 as unpatentable over Daxon, Kessler, and Putt. Obviousness over Daxon, Kessler, and Munoz Claims 9, 10, and 12-14 Appellants do not present arguments for claims 9, 10, and 12-14 separate from those presented above for claim 1. See Appeal Br. 14. Accordingly, for the reasons discussed above for claim 1, we likewise sustain the Examiner's rejection of claims 9, 10, and 12-14 as unpatentable over Daxon, Kessler, and Munoz. 3 As claim 20 depends from claim 19, it incorporates the indefinite subject matter. See New Ground of Rejection, below; see also note 2, above. 14 Appeal2014-003046 Application 13/199,314 NEW GROUNDS OF REJECTION Indefiniteness Rejections Claims 7 and 8 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 7 and 8 under 35 U.S.C. § 112, second paragraph, for failure to particularly point out and distinctly claim the subject matter of the invention. Independent claim 1 recites "a first mat section having: an upper layer having an upper surface." Appeal Br. 16, Claims App. Claim 7 depends from claim 1. Id. at 17. The recitation in claim 7 of "wherein the upper layer of the first mat section has an upper surface" is unclear as to whether "an upper surface" of the upper layer of the first mat section of claim 7 is the same "upper surface" or a different "upper surface" than the one recited in claim 1. As such, the term "an upper surface" in claim 7 is unclear and the claim is indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210 (BP AI 2008) (precedential) (holding that "[t]he claimed 'sheet feeding area' is amenable to two plausible definitions" and renders the claims indefinite). Claim 8 depends from claim 7 and thus incorporates the indefinite subject matter. Accordingly, for the reasons discussed supra, we determine that dependent claims 7 and 8 are indefinite. Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 7 and 8 under 35 U.S.C. § 112, second paragraph, as indefinite. 15 Appeal2014-003046 Application 13/199,314 Claims 19 and 20 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 19 and 20 under 35 U.S.C. § 112, second paragraph, for failure to particularly point out and distinctly claim the subject matter of the invention. Claim 19 depends from claim 1 and recites "the upper surface of the second mat section." See Appeal Br. 18, Claims App. There is insufficient antecedent basis for "the upper surface" of the second mat section in claim 1. 4 As such, claim 19 is unclear in its recitation of "the upper surface of the second mat section." Claim 20 depends from claim 19 and thus incorporates the indefinite subject matter. Accordingly, for the reasons discussed supra, we determine that claims 19 and 20 are indefinite. Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 19 and 20 under 35 U.S.C. § 112, second paragraph, as indefinite. Obviousness over Daxon and Kessler Claim 5 Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 5 under 35 U.S.C. § 103(a) as unpatentable over Daxon and Kessler. At the outset, we agree and adopt as our own the Examiner's findings and conclusions regarding the combined teachings of Daxon and Kessler in reference to claim 1. See Final Act. 2-3. Claim 5, which depends from 4 We note that claim 1 does recite an "upper surface" with respect to the upper and lower layers of the first mat section. See Appeal Br. 16, Claims App. 16 Appeal2014-003046 Application 13/199,314 claim 1, recites that "the lower surface of the lower layer of the first mat section is configured to minimize slipping of the mat when the mat is placed on another surface." Appeal Br. 16, Claims App. Daxon discloses: "A layer of high friction sheet material 16 optionally is adhesively bonded to the mat 10 upper and lower surfaces." See Daxon, col. 7, 11. 22-23 (italics added), Fig. 7. A skilled artisan would recognize that the lower surface of lower layer 82 of the first mat section 14 of Daxon' s mat 10 could be configured via high friction sheet material 16 to minimize slipping of the mat when the mat is placed on another surface. See Daxon, Figs. 7, 11. As such, based on the foregoing reasons, we conclude that claim 5 is unpatentable over the combined teachings of Daxon and Kessler. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 2, 4, 6, 11, and 15-18 as unpatentable over Daxon and Kessler. We REVERSE the decision of the Examiner to reject claims 5, 7, and 19 as unpatentable over Daxon and Kessler. We AFFIRM the decision of the Examiner to reject claim 3 as unpatentable over Daxon, Kessler, and McKay. We REVERSE the decision of the Examiner to reject claim 20 as unpatentable over Daxon, Kessler, and McKay. We REVERSE the decision of the Examiner to reject claim 8 as unpatentable over Daxon, Kessler, and Putt. We AFFIRM the decision of the Examiner to reject claims 9, 10, and 12-14 as unpatentable over Daxon, Kessler, and Munoz. 17 Appeal2014-003046 Application 13/199,314 We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b), of claims 7, 8, 19, and 20 under 35 U.S.C. § 112(a), second paragraph, and of claim 5 under 35 U.S.C. § 103(a) as set forth supra. 5 Regarding the affirmed rejection(s), 37 CPR§ 41.52(a)(l) provides "Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection(s) of one or more claims, this decision contains a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner 5 The exercise of authority under 3 7 C.F .R. § 41. 50(b) to enter a new ground of rejection is discretionary. As such, with respect to the remaining pending claims in the present application, no inference should be drawn from a failure to exercise that discretion. See Manual of Patent Examining Procedure § 1213.02, 9th Ed. (March 2014). 18 Appeal2014-003046 Application 13/199,314 pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. § 141or145 with respect to the affirmed rejections, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejections are overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejections, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 19 Copy with citationCopy as parenthetical citation