Ex Parte Loyd et al

Board of Patent Appeals and Interferences

May 11, 2009

10641015 (B.P.A.I. May. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT E. LOYD and J. SCOTT JORDAN
____________

Appeal 2008-3766
Application 10/641,015
Technology Center 1700
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Decided:1 May 11, 2009
____________

Before PETER F. KRATZ, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 21-26 (Final Office Action, mailed Sep. 19,
2005). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention is directed to a floor covering which includes a leno
weave fiberglass material in the secondary backing material. (Spec. [0001].)
The use of leno weave fiberglass warp and weft yarns is said to provide the
dimensional stability and other beneficial characteristics of conventional
backing materials while allowing for a reduction in the quantity of PVC
material. (Spec. [0011].) Claims 21 and 26 are illustrative of the subject
matter on appeal, and are reproduced from the Claims Appendix to the
Appeal Brief (“App. Br.”), filed Jun. 11, 2007:
21. A floor tile comprising:

a primary backing;

a yarn tufted into the primary backing and forming an exposed
surface;

a precoat layer of one of VAE or an acrylic latex along a side of the
primary

backing opposite from the exposed surface;

a first layer of PVC in contact with the precoat layer;

a second layer of PVC in contact with the first layer; and

a leno weave fiberglass material in contact with said first layer and
said second layer.
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26. A floor tile according to claim 25 consisting essentially of the
primary backing, the tufted yarn, the VAE precoat layer, the first and second
PVC layers, and the leno weave fiberglass material.
The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Sep. 18, 2007, 2):
Higgins 4,522,857 Jun. 11, 1985
Slosberg Re. 34,951 May 13, 1995

“Drape Comparisons of Lees Carpet Tiles Manufactured with Leno Weave
Scrim and Nonwoven Fiberglass Scrim,” Supplemental to the Shail
Declaration filed with the Amendment After Final on 01/19/06.

Appellants request review of the following grounds of rejection (App.
Br. 8):
1. claims 21-24 under 35 U.S.C. § 103(a) as unpatentable over
Higgins; and
2. claims 21-26 under 35 U.S.C. § 103(a) as unpatentable over
Slosberg.

ISSUES
Have Appellants shown reversible error in the Examiner’s
determination that it would have been obvious to have substituted a PVC
layer for the adhesive layer 16 and a leno weave for the glass scrim 18 of
Higgins’ carpet tile to achieve Appellants’ claimed floor tile?
Have Appellants shown reversible error in the Examiner’s
determination that it would have been obvious to have substituted a leno
weave for the glass scrim 22 of Slosberg’s carpet tile to achieve Appellants’
claimed floor tile?
We answer these questions in the negative.
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FINDINGS OF FACT (“FF”)
1. Application Figure 1 is reproduced below:

Application Figure 1 illustrates a carpet tile (covering 10) which includes a
primary backing 12 in which yarns 14 are tufted. (Spec. [0009].) “[A]
preferred VAE precoat layer 16 . . . maintain[s] the tufts in the primary
backing 12. (Id.) The covering 10 may include other precoat layers. (Id.)
Layer 20 is an “open mesh material, preferably woven fiberglass” (Spec.
[0010]), and “preferably [a] leno weave” (Spec. [0012]). Layers 18, 22 are a
“latex, resinous or adhesive material, preferably PVC.” (Spec. [0009],
[0010].)
2. Figure 1 of Higgins is reproduced below:
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Higgins Figure 1 illustrates a carpet tile 10 (col. 1, ll. 2-27) which includes
the following layers:
a primary backing 22 (col. 1, l. 36);
yarns 20 created by tufting fibers into the primary backing 22 (col. 1,
ll. 34-36);
a precoat layer of latex 24 for bonding the yarns 20 to the backing
layer 22 (col. 1, ll. 37-38);
an adhesive layer 16 (col. 1, ll. 30-31); and
a layer of glass scrim 18 embedded in the adhesive layer 16 (col. 1, ll.
30-31).
According to Higgins, the adhesive layer 16 may be a polyolefin, a
polyamide, or other “suitable thermoplastic material.” (Col. 1, ll. 48-50.)
PVC is a thermoplastic material. (See Slosberg, col. 2, ll. 61-64.) Higgins
discloses that the glass scrim 18 provides dimensional stability to the tile
(col. 1, l. 31) and may be replaced with “a woven or non-woven material of
glass or other suitable material such as polyester, nylon or polypropylene”
(col. 1, ll. 52-55).
3. The Examiner finds that one of ordinary skill in the art, at the
time of the invention would have known that PVC would function as a
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suitable adhesive in the manufacture of carpet tiles. (Ans. 3; see also, Ans.
4.) Appellants do not dispute this finding. (See generally, Rep. Br.)
4. The Examiner takes Official Notice of the fact that, at the time
of the invention, “leno weaves [were] known as having improved
dimensional stability over plain weave mesh fabrics.” (Ans. 3.) Appellants
argue that the Examiner has not identified any prior art documentation “that
supports these alleged ‘Official Notices’” (Rep. Br. 3), but do not dispute the
accuracy of this Officially Noticed fact (see generally, Rep. Br.; see also,
App. Br., para. bridging 10-11).
5. Figure 1 of Slosberg is reproduced below:

Slosberg Figure 1 illustrates a carpet tile 10 (col. 6, l. 3) which includes the
following layers:
a primary backing 14 (col. 6, ll. 4-5);
yarns, i.e., tufted fiber 12 (col. 6, l. 4);
an acrylic precoat layer 16 (col. 6, l. 11);
an optional PVC layer 18 (col. 6, ll. 17-18);
a PVC layer 20 (col. 6, l. 14);
a PVC layer 24 (col. 6, l. 14); and
a glass fiber scrim 22 secured between PVC layers 20, 24 (col. 6, ll.
12-14).
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6. Appellants rely on the Declaration of Todd Shail (see App. Br.,
Evidence Appendix) to establish unexpected results. (App. Br. 12-14 and
17.) Mr. Shail, relying on a comparison of “drape data on carpet tiles of the
same style manufactured with leno weave fiberglass scrim and with a non-
woven fiberglass scrim” (Dec. ¶ (3)), states that carpet tile containing the
leno weave scrim showed improved drape characteristic. (Dec. ¶ (4).) It is
not apparent from the exhibits to the Declaration, nor does Mr. Shail state,
that the comparative carpet tiles are identical with the exception of the
fiberglass scrims.
7. Appellants rely on the Declaration of Alex Jauregui (see App.
Br., Evidence Appendix) to establish commercial success. (App. Br. 14 and
17.) Mr. Jauregui states that “[t]he subject matter of the claims covers and
embraces a carpet tile currently being manufactured and sold by the Lees
Carpet Division of Mohawk Industries Inc.” (Dec. ¶ (3).) Mr. Jauregui
states that “[s]ales of such carpet tiles have increased dramatically since the
introduction of the carpet tile using the leno weave scrim as compared with
prior carpet tile products formed using a non-woven fiberglass scrim.” (Dec.
¶ (3).) Mr. Jauregui indicates that the difference between the
aforementioned prior and current carpet tiles is not limited to the fiberglass
scrim. (See Dec. ¶ (4) (“[O]ther aspects of the carpet tiles have likewise
been improved to increase sales volume such as more meaningful aesthetics
and colorations, better service and effective marketing.”).)

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” Id. at 417.
In an obviousness analysis, it is appropriate to consider:
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the
marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known
elements in the fashion claimed.

Id. at 417-18.
Under the flexible inquiry set forth by the Supreme Court, the
Examiner must take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would employ. Ball Aerosol and
Specialty Container, Inc. v Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009). The Examiner may “take notice of facts beyond the record
which, while not generally notorious, are capable of such instant and
unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970). The Examiner may also cite other references or
extrinsic materials in the rejection to explain an element in the cited prior art
reference, as long as they are not used to expand on the teachings of the
primary reference. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.
Cir. 1991).
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
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nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
“The evidence presented to rebut a prima facie case of obviousness
must be commensurate in scope with the claims to which it pertains.” In re
Dill, 604 F.2d 1356, 1361 (CCPA 1979); see also, In re Baxter Travenol
Labs., 952 F.2d at 392 (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”). Evidence of superior results does not establish
“unexpected” results. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371
(Fed. Cir. 2007) (“[B]y definition, any superior property must be unexpected
to be considered as evidence of non-obviousness.”).
Commercial success or other secondary considerations may
presumptively be attributed to the claimed invention only where “the
marketed product embodies the claimed features, and is coextensive with
them.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Phillip Morris, Inc.,
229 F.3d 1120, 1130 (Fed. Cir. 2000)). The commercial success must be
due to claimed features, and not due to unclaimed features. Joy Techs., Inc.
v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990), aff'd., 959 F.2d 226, 228
(Fed. Cir. 1992).
ANALYSIS
Appellants argue that
one skilled in the art had no ‘apparent’ reason to modify the
Higgins structure and arrive at the claimed structure without
improper hindsight reconstruction and without using elements
no where found in Higgins. . . .
In particular, Higgins fails to disclose or suggest a first
layer of PVC 18 in contact with the VAE pre-coat layer 16, a
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second layer of PVC 22 in contact with the first layer of PVC
18, and a leno weave fiberglass material 20 in contact with the
first and second PC [sic, PVC] layers.

(Reply Brief (“Rep. Br.”), filed Nov. 19, 2007, 4.) However, Appellants do
not dispute the Examiner’s finding that the ordinary artisan, at the time of
Appellants’ invention, would have known that PVC would function as a
suitable adhesive in the manufacture of carpet tiles and that leno weaves
provide improved dimensional stability over plain weave mesh fabrics. (FF
3, 4.) Thus, Appellants have not shown that the Examiner erred in
concluding that it would have been obvious to have substituted a PVC layer
for the adhesive layer 16 and a leno weave for the glass scrim 18 of Higgins
since selection of “a known material on the basis of its suitability for the
intended use” is within the level of ordinary skill in the art. (Ans. 3.) See In
re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (substitution of one known
element for a known equivalent is prima facie obvious); In re Lundberg, 244
F.2d 543, 551 (CCPA 1957) (Examiner's statement accepted as true when
Appellant fails to question its accuracy or present contradicting evidence).
For the same reason, Appellants have not shown that the Examiner erred in
concluding that it would have been obvious to have substituted a leno weave
for Slosberg’s glass scrim 22. (See Ans. 4; Rep. Br. 4-62.)
Appellants argue that the Examiner did not properly evaluate their
evidence of unexpected results and commercial success. (Rep. Br. 6.)
However, Appellants have not explained, with any degree of particularity,

2 Contrary to Appellants’ contention (Rep. Br. 5-6), use of the phrase
“consisting essentially of” in claim 26 does not patentably distinguish over
Slosberg which clearly suggests a structure having only those features
recited in claim 26. (See FF 4, 5; Ans. 4 and 11-12.)
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why the Examiner’s analysis of the evidence is flawed. To the contrary, we
find that the Examiner provided an extremely thorough discussion of the
Shail and Jauregui Declarations and clearly identified the reasons why these
declarations do not provide convincing evidence of unexpected results and
commercial success. (Ans. 8-11; see also, FF 6, 7.)
In sum, we find that the Examiner properly evaluated the evidence of
obviousness against Appellants’ evidence of nonobviousness and provided a
well-reasoned basis to conclude that claims 21-24 are unpatentable under 35
U.S.C. § 103(a) over Higgins, and that claims 21-26 are unpatentable under
35 U.S.C. § 103(a) over Slosberg. (See generally, Ans.)
CONCLUSION
Appellants have not identified reversible error in the Examiner’s
determination that it would have been obvious to have substituted a PVC
layer for the adhesive layer 16 and a leno weave for the glass scrim 18 of
Higgins to achieve Appellants’ claimed floor tile. Appellants have not
shown reversible error in the Examiner’s determination that it would have
been obvious to have substituted a leno weave for Slosberg’s glass scrim 22
to achieve Appellants’ claimed floor tile. Therefore, we sustain the rejection
of claims 21-24 as unpatentable under 35 U.S.C. § 103(a) over Higgins, and
the rejection of claims 21-26 as unpatentable under 35 U.S.C. § 103(a) over
Slosberg.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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PL Initial:
sld

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