Ex Parte Fabick

Board of Patent Appeals and Interferences

Mar 29, 2011

10744989 (B.P.A.I. Mar. 29, 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.
10/744,989 12/23/2003 Joseph G. Fabick JR. E8348-00002 1095
39290 7590 03/29/2011
DUANE MORRIS LLP - DC
505 9th Street
Suite 1000
WASHINGTON, DC 20004-2166
EXAMINER
SIMONE, CATHERINE A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
03/29/2011 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 JOSEPH G. FABICK JR.
______________

Appeal 2010-004572
Application 10/744,989
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 12-14, 16, and 18-27 in the Office Action
mailed November 24, 2008 (Office Action). 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2009).
An oral hearing was held March 10, 2011.1

1 An appeal, whether on brief or heard, is decided on the record. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009) provides in pertinent part: “Any arguments or
authorities not included in the brief or reply brief filed pursuant to § 41.41
Appeal 2010-004572
Application 10/744,989
2
We affirm the decision of the Primary Examiner.
Claim 12 illustrates Appellant’s invention of a bed liner for protecting
a cargo carrying area of a truck where said cargo carrying area has a load
bed, two opposing vertical side members and a vertical front member, and is
representative of the claims on appeal:
12. A bed liner for protecting a cargo carrying area of a truck where
said cargo carrying area has a load bed, two opposing vertical side members
and a vertical front member, said bed liner comprising:
a first and second polymer composition, said first polymer
composition being dissimilar to the second polymer composition;
the first polymer composition disposed over the load bed of the truck
and only over the load bed, said first polymer composition forming a lower
layer having an upper surface with a smooth, and substantially flat finish
over the load bed, said first polymer composition having a thickness that is
non-uniform laterally across the load bed, said first polymer composition
further comprising a first sublayer poured into and substantially filling a set
of spaces between a set of longitudinal ribs of the load bed and allowed to
cure and a second sublayer poured over the first sublayer; wherein said
second sublayer covers the first sublayer and the longitudinal ribs; and
the second polymer composition sprayed over the first polymer
composition on the load bed and over opposing inside surfaces of the
vertical side members and front member, said second polymer composition
forming a substantially continuous upper layer of a textured, non-skid
surface over the load bed, the inside surfaces of the two opposing vertical
side surfaces and front member.
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 12-14, 16, and 18-27
over Wise (US 5,007,670) in view of Kronz (US 5,814,398) and Sturtevant

will be refused consideration by the Board, unless good cause is shown.”
See also Manual of Patent Examining Procedure §§ 1205.02 and 1209 (8th
ed., Rev. 3, August 2005).
Appeal 2010-004572
Application 10/744,989
3
(US 6,509,084 B2).2 App. Br. 5;3 Ans. 3.
Appellants argue the ground of rejection based on the claims as a
group. App. Br. 5, 8, and 9. Thus, we decide this appeal based on claim 12
and on claim 23 to the extent argued in the Appeal Brief. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).
Opinion
We are of the opinion Appellant’s arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed bed liner for protecting a cargo carrying area of a truck
encompassed by claims 12 and 23. In this respect, we are in agreement with
the Examiner’s analysis of the evidence in the references and the legal
conclusions stated in the Answer, to which we add the following for
emphasis with respect to Appellant’s arguments.
I.
Appellant submits that the Examiner erred in relying on Kronz to
teach pouring at least a second layer on the load bed of Wise’s vehicle which
has a set of longitudinal ribs. App. Br. 6. Appellant argues that Kronz
describes a bed liner for a flat bed dump truck which does not have a set of

2 The Examiner withdrew the ground of rejection of claims 23 and 24 under
35 U.S.C. § 112, first paragraph, written description requirement. Ans. 2.
Appellant does not request review of the ground of rejection of claims 25-27
under 35 U.S.C. § 112, first paragraph, written description requirement, and
the Examiner has not advanced this ground on appeal. See Office Action 2-
4. Accordingly, we consider the ground of rejection of claims 25-27 under
this statutory provision as withdrawn by the Examiner.
3 We considered the Appeal Brief filed July 7, 2009, the Examiner’s
Answer mailed October 28, 2009, and the Reply Brief filed December 2,
2009.
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Application 10/744,989
4
longitudinal ribs. App. Br. 6-7. Appellant contends that “[t]he limitation of
substantially filling the set of spaces between the longitudinal ribs is
admittedly not taught by [Kronz] or Wise and without such an express
teaching no prima facie case can be made,” and the claim limitation is not
inherent in Kronz’s method. App. Br. 6-8, citing In re Robertson,
169 F.3d 743, 745 (Fed. Cir. 1999). In this respect, Appellant further argues
that Wise’s removable, soft foam bed liner has the utility of providing
cushioning and thus differs from Kronz’s “tough abrasive resistant liner for
a dump truck or similar vehicle” formed from “a high density polymer
applied directly to a bed.” Reply Br. 2-3. “[T]o make a in situ liner that is
not removable goes against the teaching of Wise.” Reply Br. 3.
Appellant further contends that the Examiner erred in maintaining the
rejection because “[f]ollowing the [Kronz] method of applying ‘additional
layers’ until a desired thickness is reached does not explicitly or inherently
lead to the second layer as required by” claim 12. App. Br. 8. According to
Appellant, Kronz teaches allowing a layer “to ‘gel’ or become ‘tack-free’”
before another layer is applied, and thus the first layer is not “‘allowed to
cure’” as claimed before the second layer is applied, which teaches away
from the “first sublayer” and “second sublayer” limitations of claim 12.
App. Br. 8-9.
Appellant also contends that the Examiner erred in not addressing the
limitations in claim 12 that the “first polymer composition” forming the
“first sublayer” and the “second polymer” forming the “second sublayer” are
“dissimilar,” and the further limitation in claim 23 that the “first polymer
layer being harder than said second polymer layer.” App. Br. 9. Appellant
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Application 10/744,989
5
further contends that the limitation “first polymer composition being
dissimilar to the second polymer composition” of claim 12 is not met by
“dissimilar densities” of applied layers because there is no teaching in the
“cited art that dissimilar densities result from dissimilar compositions.”
Reply Br. 4.
II.
We find that Wise would have disclosed to one of ordinary skill in the
art a removable vehicle bed liner assembly forming a pad for the bed of,
among other things, a pickup truck or a van, wherein the bed has a “series of
parallel, spaced apart corrugations conventionally provided on the bed
surface of the bed portion of the truck or van,” as illustrated in Wise Figures
1 and 2. Wise, e.g., col. 2, ll. 33-50, col. 4, ll. 39-41, col. 5, ll. 1-7. Wise
discloses that the removable bed liner has a soft plastic or foam layer, which
fits into and above the corrugations of the bed, on which can be an optional
carpet layer, as illustrated in Wise Figure 2. Wise, e.g., col. 4, ll. 41-50, and
col. 4, l. 58 to col. 5, l. 7.
We find that Kronz would have disclosed to one of ordinary skill in
the art a bed liner formed in situ in vehicles, including, among others, dump
trucks, pickup trucks, and delivery service vans, and protects the vehicle bed
against scratches and dents and is impact-absorbing. Kronz, e.g., abstract,
col. 1, ll. 11-16, col. 1, l. 65 to col. 2, l. 7, and col. 4, ll. 27-38. Kronz
discloses that the in situ liner can be formed with one or more coats by
pouring a two-part polymer system onto the floor of the bed and spraying a
two-part polymer system onto the sides and front of the bed. After a layer of
polymer system is applied and is tack-free, another layer can be applied,
Appeal 2010-004572
Application 10/744,989
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with the steps repeated until the desired thickness is reached. Kronz, e.g.,
col. 1, l. 65 to col. 2, l. 7, col. 3, ll. 17-67, col. 8, ll. 12-19 and 37-67.
We find that Kronz would have further disclosed that the two part
polymer systems can comprise a polyurethane, polyurea, or
polyurethane/polyurea hybrid polymer, which can include additives and
fillers. Kronz, e.g., col. 1, ll. 65-67, col. 2, l. 8 to col. 3, l. 16, col. 4, l. 47 to
col. 6, l. 60. We find that Appellant discloses the same polymer systems.
Spec., e.g., ¶ 0014. Kronz discloses that the vehicle bed is leveled prior to
application. Kronz col. 3, ll. 24-26. Appellant discloses that the vehicle bed
is leveled prior to application. Spec. ¶ 0022. Kronz further discloses that
once the bed liner becomes tack-free but not cured, the surface can be
abraded or etched to provide additional traction to the surface. Kronz col. 8,
ll. 64-67.
A discussion of Sturtevant is not necessary to our decision.
III.
On this record, we cannot subscribe to Appellant’s position. We
disagree with Appellant’s contention that a reference must expressly
describe a modification to an article or method disclosed therein in order for
one of ordinary skill in the art to arrive at that modification. Indeed, to the
contrary, it is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. See, e.g., In re
Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825,
826-27 (CCPA 1968). Thus, there is no requirement that a reference must
expressly describe a claimed invention in order to be considered with respect
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Application 10/744,989
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to that invention. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-
18 (2007) (“[A]nalysis [of whether the subject matter of a claim would have
been obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”); DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H.
Patrick Co., 464 F.3d 1356, 1367-68 (2006) (“Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense”); B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that
reference. This suggestion or motivation need not be expressly stated.”
(citation omitted)). In this respect, skill is presumed on the part of one of
ordinary skill in the art. See, e.g., In re Sovish, 769 F.2d 738, 742-43 (Fed.
Cir. 1985); see also KSR, 550 U.S. at 421 (“A person of ordinary skill is also
a person of ordinary creativity, not an automaton.”).
We are of the opinion that one of ordinary skill in the art would have
been armed with the knowledge that the cargo carrying area of a truck, such
as the cargo bed of a pickup or a van, can have corrugations, that is,
longitudinal ribs, in the floor. Such a corrugated bed is shown in Wise’s
van, and we notice that pickup trucks have been routinely produced with
such a bed. Thus, this person would have recognized that Kronz’s in situ
vehicle bed liner can be formed in the corrugated bed of the cargo carrying
area of Wise’s van or of any other cargo-carrying vehicle where resistance to
Appeal 2010-004572
Application 10/744,989
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scratches and dents and impact-absorbing characteristics are desired.
Indeed, both Wise and Kronz are directed to any manner of cargo carrying
vehicles, and Wise would have shown that a polymer layer on a corrugated
cargo area would have to reside within the spaces between the corrugations
as well as over the top thereof to provide a level floor bed liner. In this
respect, Kronz teaches that the vehicle bed should be leveled prior to
pouring the two part polymer system on the floor in order to achieve a level
floor bed liner. Thus, as the Examiner contends, one of ordinary skill in the
art would have replaced the soft bed liner for a van with a corrugated cargo
carrying area illustrated by Wise with Kronz’s in situ bed liner in the
reasonable expectation of obtaining a cargo carrying area bed liner having
the characteristics taught by Kronz. Ans. 4
We further cannot agree with Appellant that one of ordinary skill in
this art routinely following Kronz’s method for forming the in situ bed liner
would not have added an additional layer until the prior layer had cured, as
Kronz teaches that another layer can be applied after the first layer is tack-
free. We are of the view that one of ordinary skill in the art would have
recognized from Kronz that once the surface of a layer is tack-free, it is
sufficiently cured to accept an additional, discreet polymer layer. Indeed,
this person would have inferred from Kronz that an additional, discrete layer
can be applied to a prior layer that is completely cured.
We also disagree with Appellant’s position that one of ordinary in this
art routinely following Kronz’s method for forming an in situ bed liner
would not have employed dissimilar polymer compositions for the polymer
composition forming the first sublayer and for the polymer composition
Appeal 2010-004572
Application 10/744,989
9
forming the second sublayer as claimed in claim 12, wherein the first
sublayer is harder than the second sublayer as claimed in claim 23. We are
of the opinion that this person would have been taught by Kronz that the
layers of the in situ bed liner can be formed from one or more of the three
two-part polymer systems disclosed, which compositions can further contain
any manner of additives and/or fillers taught by the reference. Thus, Kronz
would have led one of ordinary skill in the art to adjust the properties of the
individual layers as desired by selecting the appropriate two part polymer
system and the additives and/or fillers to be added thereto to obtain desired
properties, including adjusting the first sublayer to be harder to any extent
than the second layer as claimed.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Wise, Kronz, and Sturtevant with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 12-14, 16, and 18-27 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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(a).
AFFIRMED

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