Ex Parte Lee

Patent Trials and Appeals Board

May 28, 2019

14568365 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/568,365 12/12/2014
23399 7590
REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
05/30/2019
FIRST NAMED INVENTOR
Jeremy R. Lee
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.
1597.3153.002 4359
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
docketing@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY R. LEE
Appeal2018-008341
Application 14/568,365 1
Technology Center 3600
Before STEFAN STAICOVICI, JEFFREY A. STEPHENS, and
FREDERICK C. LANEY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Jeremy R. Lee ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision in the Final Office Action ( dated Mar. 30, 2017,
hereinafter "Final Act.") rejecting claims 1-19. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
1 Oscoda Plastics, Inc. is the applicant and is identified as the real party in
interest in Appellant's Appeal Brief (filed May 2, 2018, hereinafter "Appeal
Br."). Appeal Br. 2.
Appeal2018-008341
Application 14/568,365
SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS of REJECTION pursuant
to our authority under 37 C.F.R. § 4I.50(b).
INVENTION
Appellant's invention "relates to ways of joining plastic floor pieces
together." Spec. para. 2.
Claims 1, 14, and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method of bonding plastic floor pieces together,
compnsmg:
laying plastic floor pieces down to produce a seam
between side-by-side plastic floor pieces;
cutting a groove into and along at least a part of the
seam; and
filling the groove with a bonding compound comprising
methyl methacrylate.
REJECTIONS 2
I. The Examiner rejects claims 1, 3, 5, 7, 9, 10, 13, and 17 under
35 U.S.C. § 103 as being unpatentable over Oakey et al. (US
2002/0071930 Al, pub. June 13, 2002, hereinafter "Oakey")
and Coombs et al. (US 5,674,337, iss. Oct. 7, 1997, hereinafter
"Coombs").
2 The Examiner has withdrawn the rejection of claims 1, 14, and 16 under 35
U.S.C. 112, second paragraph, as being indefinite. See Examiner Answer
(dated June 22, 2018, hereinafter "Ans.") 3.
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II. The Examiner rejects claim 2 under 35 U.S.C. § 103 as being
unpatentable over Oakey, Coombs, and Bannister (US
4,684,425, iss. Aug. 4, 1987).
III. The Examiner rejects claim 4 under 35 U.S.C. § 103 as being
unpatentable over Oakey, Coombs, and Quinn et al. (US Re.
36,458, iss. Dec. 21, 1999, hereinafter "Quinn").
IV. The Examiner rejects claims 6, 8, and 12 under 35 U.S.C. § 103
as being unpatentable over Oakey, Coombs, and Rouse et al.
(US 2010/0193118 Al, pub. Aug. 5, 2010, hereinafter
"Rouse").
V. The Examiner rejects claims 11, 14--16, 18, and 19 under 35
U.S.C. § 103 as being unpatentable over Oakey, Coombs, and
Tanis et al. (US 5,810,956, iss. Sept. 22, 1998, hereinafter
"Tanis").
VI. The Examiner rejects claim 1 under 35 U.S.C. § 103 as being
unpatentable over Rouse and Coombs.
VII. The Examiner rejects claims 14 and 16 under 35 U.S.C. § 103
as being unpatentable over Oakey, Coombs, and Ko et al. (KR
10-2013-0080938 A, pub. July 16, 2013, hereinafter "Ko")3•
ANALYSIS
Rejection I
The Examiner finds that Oakey discloses a process for bonding plastic
floor pieces 42 (tile) including, inter alia, laying the pieces down to produce
3 The Examiner refers to the English language equivalent US 2014/0360117
Al, pub. Dec. 11, 2014.
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Application 14/568,365
seam 88 (edge), cutting groove 78 (perimeter) into and along a part of the
seam, and filling groove 78 with bonding compound 86 (glue). Final Act. 3
( citing Oakey, paras. 49, 72, Fig. 3). 4 However, the Examiner finds that
"Oakey ... fails to disclose [that] the bonding material compris[ es] methyl
methacrylate." Id. Nonetheless, the Examiner finds "Coombs ... discloses
an adhesive coating for edge to edge surfaces ... wherein the adhesive
comprises methyl methacrylate." Id ( citing Abstract, col. 4, 11. 10-15).
Thus, the Examiner concludes that
it would have been obvious to one of ordinary skill in the
art at the time the invention was made, to modify the floor
covering edge treatment of Oakey ... to include an adhesive
that comprises methyl methacrylate, as taught by Coombs ... in
order to provide an adhesive that produces the optimal
decorated aesthetic per the flooring design.
Id ( emphasis added).
Appellant argues that the Examiner's reasoning to combine the
teachings of Oakey and Coombs lacks rational underpinnings because "[t]he
very optimal decorated aesthetic differs between Oakey and Coombs."
Appeal Br. 20. According to Appellant, "there is no reason to modify
Oakey which teaches a clear demarcation between adjacent units in such a
manner as to use a methyl methacrylate as taught by Coombs which results
in a cove that is indistinguishable from the slabs." Id ( emphasis added).
In response, the Examiner takes the position that Coombs' teaching of
an indistinguishable cove 22 "does not preclude the methyl methacrylate
adhesive of Coombs from producing a clear demarcation between adjacent
tiles of Oakey" because "Oakey disclose[ s] hiding the seam between tiles
4 Parenthetical nomenclature refers to Oakey.
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... [and] enhancing the grout-like appearance." Ans. 7 (citing Oakey, para.
53). The Examiner asserts that "it is well-known that choosing materials
based on aesthetics are within the level of one of ordinary skill in the art."
Id. at 6. Hence, according to the Examiner, "just because the tiles of
Coombs match the methyl methacrylate adhesive, does not mean that the
same would occur when the tiles of Oakey are modified by the adhesive of
Coombs." Id. at 7.
We appreciate the Examiner's position that choosing materials based
on aesthetics is well known to a skilled artisan, however, our reviewing
court indicates that if the Examiner's modification, renders the prior art
method "inoperable for its intended purpose," then a prima facie case of
obviousness has not been established. In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984).
In this case, the purpose of the invention of Oakey is to provide an
aesthetic finish having a "clear demarcation between adjacent [tile] units ...
similar to the appearance of traditional ceramic tile with grouted regions
between adjacent tiles." Oakey, para. 7 ( emphasis added). In contrast,
Coombs' invention provides an aesthetic finish where "a joining surface
between the two panels that is virtually indistinguishable in color and texture
from the two panels." Coombs, col. 3, 11. 5-7 (emphasis added). Hence, in
light of Oakey' s purpose of providing an aesthetic finish with a "clear
demarcation between adjacent" tiles, it would not have been obvious to a
skilled artisan to modify Oakey' s bonding method to employ Coombs'
adhesive containing methyl methacrylate, which provides an
"indistinguishable" joining surface, because such a modification would not
have maintained Oakey' s finish. See DePuy Spine, Inc. v. Medtronic
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Application 14/568,365
Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the
"predictable result" discussed inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398
(2007), also means "that the combination would have worked for its
intended purpose").
We agree with Appellant that the Examiner's combination "is
contrary to the purpose of at least one" of Oakey or Coombs. Reply Brief
(filed Aug. 22, 2018, hereinafter "Reply Br.") 5. Appellant is correct that
even if "the methyl methacrylate [ adhesive of Coombs] would result in a
clear demarcation ... [when] combined with Oakey, it is used in a way that
is exactly opposite of its intended use in Coombs, namely to provide no
visible seam between the two slabs." Reply Br. 5; see also Ans. 7.
Likewise, "assuming that ... [Coombs'] methyl methacrylate [adhesive]
would not result in a clear demarcation ... [when] combined with Oakey,
[then] it is used in a way that is exactly opposite of the intended purpose of
Oakey." Reply Br. 5. Furthermore, the Examiner's determination that a
clear demarcation between Oakey's adjacent tiles may occur when using
Coombs' adhesive requires speculation on the Examiner's part as the
Examiner has not made any findings regarding the materials of Oakey' s tiles
42. See Ans. 7.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of claims 1, 3, 5, 7, 9, 10, 13, and 17 as
unpatentable over Oakey and Coombs. 5
5 As we have determined that obviousness has not been established, we do
not need to reach the merits of the Declaration filed under 37 C.F.R. § 1.132
by inventor Mr. Jeremy Robert Lee (hereinafter "Lee Declaration") on
March 13, 2017.
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Rejections II-V and VII
As to Rejections II-V and VII, the Examiner's use of the Bannister,
Quinn, Rouse, Tanis, and Ko disclosures6 does not remedy the deficiency of
the Oakey and Coombs combination discussed supra. See Final Act. 6-19.
Therefore, for the reasons discussed above, we also do not sustain Rejections
II-V and VII.
Re} ection VI
The Examiner finds Rouse discloses a process for bonding plastic
floor pieces (sheets) 40, 42 including, inter alia, laying the pieces down to
produce seam 46, cutting groove 48 into and along a part of the seam, and
filling groove 48 with bonding material 60 (welding rod). Final Act. 15
(citing Rouse, Abstract, Figs. 3, 4). 7 However, the Examiner finds that
"Rouse ... fails to disclose [that] the bonding material comprises methyl
methacrylate." Id. Nonetheless, the Examiner finds "Coombs ... discloses
an adhesive coating for edge to edge surfaces ... wherein the adhesive
comprises methyl methacrylate." Id ( citing Abstract, col. 4, 11. 10-15).
Thus, the Examiner concludes that
it would have been obvious to one of ordinary skill in the
art at the time the invention was made, to modify the bonding
method of Rouse ... to include an adhesive that comprises
methyl methacrylate, as taught by Coombs ... in order to
6 The Examiner relies on Bannister to disclose masking tape; on Quinn to
disclose removing bonding compound protruding above top surfaces of
plastic floor pieces; on Rouse to disclose cutting a groove using a power
groover; and on Tanis and Ko to disclose a two-part bonding compound and
a dispenser gun. See Final Act. 6-8, 10, 17.
7 Parenthetical nomenclature refers to Rouse.
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provide an adhesive that produces the optimal decorated
aesthetic per the flooring design.
Id ( emphasis added).
Appellant argues that "one of ordinary skill in the art would have no
proper reason or rationale to modify Rouse' s welding method [to] substitute
... [Coombs'] adhesive with methyl methacrylate instead of using a welding
process." Appeal Br. 23. According to Appellant, Rouse does not disclose
that sheets 40, 42 or welding rod 60 include methyl methacrylate, and
Coombs fails to disclose that its adhesive can be used with slabs 10, 12,
which do not include methyl methacrylate. Id. Hence, Appellant contends
that "ordinarily skilled artisans would be altogether dissuaded from making
the proffered modifications by the teachings of the references themselves
because it, inter alia, changes the fundamental method of use." Id. at 24.
In response, the Examiner takes the position that "using the methyl
methacrylate adhesive of Coombs as the bonding material in Rouse would
have been possible whether or not the methyl methacrylate adhesive were
applied using a welding process or not, since the method of application is
not limited in the claim." Ans. 9. The Examiner asserts that, even though
Rouse's welding rod 60 does not include methyl methacrylate, "the materials
of Rouse including the sheets and the welding material could both be
modified to include the methyl methacrylate material of Coombs." Id
( emphasis added).
Although we appreciate the Examiner's position, nonetheless, the
Examiner does not provide adequate support for the determination that using
the methyl methacrylate adhesive of Coombs as the bonding material in
Rouse would "produce[] the optimal decorated aesthetic per the flooring
design." See Final Act. 15 (emphasis added). As correctly noted by
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Appellant, Coombs' use of an adhesive including methyl methacrylate
achieves "matching texture and color" to obtain an "indistinguishable" cove
22 when both the materials for slabs 10, 12 and the epoxy filled adhesive
contain methyl methacrylate. See Appeal Br. 23-24; see also Coombs, col.
4, 11. 9-11, 52-55. However, as Rouse's sheets 40, 42 are not disclosed as
containing methyl methacrylate, it is not clear how using Coombs' adhesive
for bonding Rouse's floor pieces (sheets) 40, 42 achieves an "optimal"
aesthetic.
Furthermore, because Rouse' s bonding method requires melting
welding rod 60 (see Appeal Br. 23), whereas Coombs' bonding method
employs an epoxy adhesive that is heat-cured (see Coombs, col. 6, 11. 40-
45), we agree with Appellant that a skilled artisan would not employ
Coombs' adhesive in Rouse's welding method. See Appeal Br. 23. As an
artisan must be presumed to know something about the art apart from what
the references disclose, a person of ordinary skill in the art would have
recognized that an epoxy resin does not melt because it is a thermosetting
polymer. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Although we
appreciate the Examiner's position that "claim 1 does not indicate the
method in which the adhesive is applied" (see Ans. 9), nonetheless, the
Examiner fails to explain adequately how Coombs' thermosetting epoxy
adhesive would work as a bonding compound in Rouse's welding method.
Lastly, as noted above, although the Examiner determines that the
sheet and welding rod materials of Rouse could be modified to include
methyl methacrylate, the Examiner has not proposed further modifying
Rouse's bonding method to include materials that contain methyl
methacrylate, much less articulated a reason to do so. See Ans. 9.
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Accordingly, for the foregoing reasons, we agree with Appellant that
"it is not at all clear that ... [Coombs'] adhesive can be used in the welding
process of Rouse," and, thus, the Examiner's combination fails to show that
it "would produce the optimal decorated aesthetic of the flooring design."
Appeal Br. 24. As the Examiner's articulated reason for combination is not
supported by a preponderance of the evidence of the record before us, we do
not sustain the rejection of claim I under 35 U.S.C. § 103 as unpatentable
over Rouse and Coombs. 8
NEW GROUND OF REJECTION
Claims 1-3, 5, 7, 9-11, and 14--16 are rejected under 35 U.S.C. § 103
as being unpatentable over Oakey and Squitieri (US 8,001,744 Bl, iss. Aug.
23, 2011).
Oakey discloses a process for bonding plastic flooring pieces 42 (tiles)
including, inter alia, laying down pieces 42 to produce seam 88 (edge) 9,
cutting groove 78 (perimeter) into and along a part of the seam, and filling
groove 78 with bonding agent 86 (glue), which is described as a "grout-like"
polymeric material. Oakey, paras. 49, 72, Fig. 3. However, Oakey does not
disclose that bonding agent 86 contains methyl methacrylate. Squitieri
discloses a process for grouting floor tiles using "[a] two-part methyl
methacrylate grout formulation." Squitieri, Abstract, col. 5, 11. 56-57.
Therefore, it would have been obvious for a person of ordinary skill in the
8 As we have determined that the Examiner does not provide adequate
support for the reasoning to combine the teachings of Rouse and Coombs,
we do not need to reach the merits of the Lee Declaration.
9 Parenthetical nomenclature refers to Oakey.
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art to employ the two-part polymeric methyl methacrylate grout formulation
of Squitieri as a "grout-like" bonding agent in the process of Oakey in order
to provide a grout that is highly resistant to high traffic, chemical cleaning
agents, and deterioration. Id. at col. 2, 11. 51-55, col. 3, 11. 26-27.
Alternatively, it would have been obvious for a skilled artisan to employ the
two-part polymeric methyl methacrylate grout formulation of Squitieri as a
substitute for Oakey's "grout-like" bonding agent 86. See KSR, 550 U.S. at
416 ("[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.").
With respect to claim 2, Squitieri discloses providing masking tape
along the sides of the joint-line. Squitieri, Abstract. Therefore, it would
have been obvious for a person of ordinary skill in the art to provide
Squitieri's masking tape along the sides of Oakey's groove 78, in order to
prevent the polymeric methyl methacrylate grout formulation of Squitieri
from contacting the top surface of Oakey's tile pieces 42 and, thus, achieve a
clean finish.
As to clam 3, Squitieri discloses using a leveling tool to smooth the
surface level of grout in a joint after dispensing and before curing. Squitieri,
col. 3, 1. 67---col. 4, 1. 8. It would have been obvious for a person of ordinary
skill in the art to level the surface of Squitieri' s polymeric methyl
methacrylate grout formulation after dispensing in Oakey' s groove 78, and
before curing, in order to remove excess grout and, thus, provide for a flush
surface with tile pieces 42 of Oakey for a clean finish.
In regards to claim 5, Squitieri discloses curing its polymeric methyl
methacrylate grout formulation. Squitieri, col. 8, 11. 33-34. It would have
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been obvious for a person of ordinary skill in the art to cure Squitieri' s
polymeric methyl methacrylate grout formulation after dispensing in
Oakey's groove 78 in order to harden and toughen the polymeric material
and, thus, obtain a joint resistant to deterioration.
With respect to claim 7, Oakey discloses that groove 78 is cut part
way into seam 88 in a direction orthogonal to top surfaces 72 of floor pieces
42 such that a portion of seam 88 is not cut and, thus, provides a gap
between adjoining faces, to then receive the polymeric methyl methacrylate
grout formulation of Squitieri. Oakey, Fig. 3.
As to claim 9, Oakey discloses U-shaped groove 78. Oakey, Fig. 3.
With respect to claim 10, Oakey discloses a gun to dispense its
"grout-like" bonding agent 86 and Squitieri discloses an applicator gun for
dispensing its "grout-like" bonding agent. Oakey, para. 60, Squitieri,
Abstract.
Regarding claims 11 and 14--16, Squitieri discloses an applicator gun
for dispensing a reactive two-part methyl methacrylate grout formulation
pre-packaged into a two-part cartridge package for holding each part of the
formulation and, as the two components are being dispensed, mixing the
two-part components in a static mixer tube affixed to the front of the two-
part cartridge. 10 Squitieri, Abstract, col. 8, 11. 17-32. Furthermore, it is well
known in the art that a two-part reactive component, such as Squitieri' s two-
part reactive methyl methacrylate grout formulation, contains a first
10 Although Squitieri discloses using its applicator gun with a two-part
reactive epoxy grout formulation, Squitieri specifies that the two-part methyl
methacrylate formulation is used "with the same procedures" as the epoxy
formulation, that is, is used with the same applicator gun. See Squitieri,
Abstract.
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polymeric resin part, i.e., methyl methacrylate, and a second, activator
(hardener) part. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An
artisan must be presumed to know something about the art apart from what
the references disclose.). Squitieri further discloses that the hardener
(activator) is pre-colored. Squitieri, Abstract, col. 4, 11. 7-9. As such, it
would have been obvious for a person of ordinary skill in the art to employ
Squitieri' s applicator gun to dispense its methyl methacrylate grout
formulation in the process of Oakey in order to provide a way to mix and
dispense the two-part components into Oakey's groove 78 and bond floor
pieces 42.
Lastly, with respect to the other limitations of independent claims 14
and 16, not discussed in the previous paragraph, such limitations are
discussed supra in the rejection of claims 1, 5, and 7.
Although we decline to reject dependent claims 4, 6, 8, 12, 13, and
17-19 under our discretionary authority under 37 C.F.R. § 4I.50(b), we
emphasize that our decision does not mean the remaining claims are
patentable. Rather, we leave the patentability determination of these claims
to the Examiner.
SUMMARY
The Examiner's decision to reject claims 1-19 under 35 U.S.C. § 103
is reversed.
We enter a new ground of rejection of claims 1-3, 5, 7, 9-11, and 14--
16 under 35 U.S.C. § 103 as unpatentable over Oakey and Squitieri.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides ( emphasis added):
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground 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 [E]xaminer,
in which event the prosecution will be remanded to the [E]xaminer.
The new ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made which,
in the opinion of the [E]xaminer, overcomes the new ground of
rejection designated in the decision. Should the [E]xaminer reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01 (9th ed.
2018).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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