Ex Parte Miller

Board of Patent Appeals and Interferences

May 27, 2008

10423881 (B.P.A.I. May. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. MILLER
____________

Appeal 2008-2026
Application 10/423,881
Technology Center 1700
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Decided: May 27, 2008
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-6 and 11-15. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Appeal 2008-2026
Application 10/423,881

I. BACKGROUND
The invention relates to a tile structure, such as floor tile, that includes
a generally planar substrate utilizing interlocking members, such as tongue
and groove members, for installation convenience. The tile structure
includes a veneer layer of glass, ceramic, marble, granite, natural stone,
slate, etc. attached to the generally planar substrate via, preferably, a water
impervious adhesive. The veneer layer has a Mohs hardness greater than 3
and a thickness of between 2 and 10 mm. Claims 1 and 11 are illustrative of
the subject matter on appeal:
1. An engineered tile, comprising:
a generally planar base of selected dimensions and
configuration, said base including an upper surface, a lower
surface, a first edge incorporating a first cooperating element of
an interlocking member, and a second edge incorporating a
second cooperating element of said interlocking member. [sic]
a veneer layer having a Mohs hardness of greater than 3
and a thickness of between 2 and 8mm [sic] affixed to said
upper surface of said base, said veneer layer being dimensioned
so as not to overlie said first cooperating member.

11. A flooring tile, comprising:
A stable, substantially rigid, generally planar substructure
sheet having a thickness of between 4 and 10 mm and defining
an upper and lower surface of a select geometric configuration,
said sheet defining at least a first and second edges [sic] where
the first edge features a profiled tongue structure projecting
therefrom in a plane generally parallel to the upper core surface
and said second edge including a groove recess corresponding
in shape and dimension to the profiled tongue of the first edge,
where inserting said tongue structure of said first edge into the
groove structure of said second edge interconnects abutting
tiles;
a veneer layer affixed to said upper surface of said sheet,
said veneer layer being composed of material selected from the
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group consisting of sliceable natural stone, marble, granite,
slate, glass, and ceramics, where said veneer has a thickness of
3-10 mm and possesses a Mohs hardness of at least 3.

Appellant requests review of the sole rejection maintained by the
Examiner, namely the rejection of claims 1-6 and 11-15 as obvious under 35
U.S.C. § 103(a) over U.S. Patent No. 6,517,915, issued February 11, 2003,
to Banus et al. (“Banus”) in view of U.S. Patent No. 6,803,110, issued
October 12, 2004, to Drees et al. (“Drees”).
II. DISCUSSION
The Examiner finds that “Banus discloses a decorative composite
stone material having a Mohs index of at least 7, which is coated with a
ceramic material (veneer) (column 5, lines 1-15) where the stone flooring
tile is made using marble (column 5, lines 40-41, 60-62 and column
6, line 1).” (Ans. 3). The Examiner states that “Figures one through three
show a coating on a generally planar base or substructure.” (Ans. 5).
However, the Examiner finds that Banus does not teach a first edge
incorporating a first cooperating element of an interlocking member and a
second edge incorporating a second cooperating element of an interlocking
member. (Ans. 4). The Examiner concludes that “[i]t would have been
obvious to one of ordinary skill in the art to include tongue and groove edges
[taught by Drees] in the floor tile of Banus to improve or simplify the
installation of the floor.” (Ans. 4-5).
Appellant responds that the Examiner incorrectly read the teachings of
Banus and that “the coating of Banus is not affixed to the upper surface of a
generally planar base or substructure as claimed”, nor does the particle
coating of Banus “even form a veneer layer affixed to the surface of the
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Application 10/423,881

composite stone material itself.” (App. Br. 4). Appellant also responds that
“there is no teaching or suggestion that would motivate one of ordinary skill
in the art to provide a coating having the specific veneer thickness recited in
the instant claims.” (App. Br. 4). Appellant also argues that utilizing the
tongue and groove taught by Drees on the stone composite material taught
by Banus would fail to provide the claimed invention, that one of ordinary
skill in the art would not be motivated to make such a modification to the
composite material of Banus, and that there is no suggestion that such a
modification of the composite stone material could even be made. (App. Br.
5-6).
The dispositive issue on appeal arising from the contentions of
Appellant and the Examiner is: Did the Examiner reversibly err in finding
that Banus teaches a veneer layer affixed to an upper surface of “a generally
planar base,” as called for in claim 1, and “a generally planar substructure
sheet,” as called for in claim 11? We answer this question in the affirmative.
The evidence of record supports the following Findings of Fact (FF):
1. Banus teaches a decorative composite stone material which is
made up of hard aggregate particles, such as pieces of quartz, that are
“coated with metal, ceramic, plastic or other material in such a way as to
produce a coated particle.” (Banus, col. 5, ll. 1-13).
2. According to Banus, “[t]he coated transparent or translucent
hard particles or granules are then incorporated into a composite stone
material production process such as is well known to practitioners skilled in
the art.” (Banus, col. 6, ll. 56-59).
3. Specifically, the Background of the Invention section of Banus
discusses that “[t]he current technologies for producing composite or
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Application 10/423,881

agglomerated stone utilize cements, epoxy, polyester, acrylic and other
modern binders to hold the aggregates together in forming the composite
stone.” (Banus, col. 1, ll. 39-42).
4. Figures 1-3 illustrate “a partial cross section diagrammatic
view” of a stone composite tile. (Banus, col. 5, l. 60-col. 6, l. 3).
5. Figures 1 and 2 show “bits and granules 20 of aggregate
distributed uniformly within and held together as a solid by binder 30.”
(Banus, col. 7, ll. 14-21). Figure 3 shows “a piece of hard aggregate selected
in accordance with the limitations of the invention, granule 22, which was
fully enveloped by controlled coating 24 of selected materials.” (Banus, col.
7, ll. 22-25).
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of non-patentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (emphasis omitted).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has not established a
prima facie case of obviousness with respect to the only independent claims,
claims 1 and 11. In particular, the Examiner has not adequately
demonstrated that the teachings of Banus would have suggested to one of
ordinary skill in the art a veneer layer affixed to an upper surface of “a
generally planar base,” as called for in claim 1, or “a generally planar
substructure sheet,” as called for in claim 11.
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We find no teaching or suggestion in Banus that the granules 20/22
that are coated by a metal or ceramic coating 24 would be either “a generally
planar base” or a “generally planar substructure sheet.” Rather, Banus
clearly teaches that these granules 20 are “aggregate particles.” (FF 1-5).
Figures 1-3 are cross sections of the stone composite material. (FF 4). The
irregular borders of the granules 20/22 illustrated in figures 1-3 clearly do
not suggest that the particles are generally planar in their structure. (FF 3
and 5). Thus, we disagree with the Examiner’s finding that figures 1-3 show
a veneer layer on either “a generally planar base” or “a generally planar
substructure sheet” as claimed.
III. CONCLUSION
The Examiner reversibly erred in finding that Banus teaches a veneer
layer affixed to an upper surface of “a generally planar base,” as called for in
claim 1, or “a generally planar substructure sheet,” as called for in claim 11.
Accordingly, we cannot sustain the Examiner's rejection. Because our
determination on this issue necessitates a reversal, we need not address
Appellant’s arguments directed to the combination of the teachings of Banus
and Drees.
Claims 2-5 and 12-15 are all dependent from claims 1 and 11,
respectively, and the rejection of these claims fails for the reasons provided
above.
Accordingly, we do not sustain the rejection of all the claims.
IV. DECISION
We reverse the Examiner’s decision.

REVERSED
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tc

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