Ex Parte Miller et al

Board of Patent Appeals and Interferences

Mar 21, 2008

10219938 (B.P.A.I. Mar. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT J. MILLER, GREGORY FOWLER, BENNY RAY
WOOD and KIRK T. LOWE
____________

Appeal 2008-1059
Application 10/219,938
Technology Center 3600
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Decided: March 21, 2008
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-5, 7-18, and 20,
the only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2008-1059
Application 10/219,938

INTRODUCTION
The claims are directed to a laminate floor covering panel. Claims 1
and 3 are illustrative:
1. A laminate floor covering panel, comprising:
a. a laminate floor panel comprising a plurality of layers and having a
first generally planar surface, a second generally planar surface opposed to
said first surface, a first side edge and an opposed second side edge, each
respective side edge extending between said first and second surfaces,
respectively, a first coupling member defined within the first edge of the
panel and comprising a protrusion extending therefrom, a complementary
second coupling member defined within the second edge of the panel and
comprising a recess sized and shaped to receive said protrusion therein; and
b. a self activating adhesive composition having an open time of at
least about one month selectively applied to at least a portion of at least one
of the first and second coupling members.
3. The laminate floor covering . . . [panel of claim 1, further
comprising a first and a second one of said floor covering panels,
respectively, the first coupling member of the first panel being received
within the second coupling member of the second panel, and wherein the
adhesive composition is positioned between the respective first and second
coupling members of the two panels and forms an adhesive bond there
between], wherein the adhesive composition forms a substantially non-
refastenable bond after about 48 hours of connective attachment.

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Application 10/219,938

The Examiner relies on the following prior art references to show
unpatentability:
Durso et al. US 2003/0003258 A1 Jan. 2, 2003
Pålsson US 6,591,568 B1 Jul. 15, 2003

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 5, 7-18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pålsson and Durso.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Pålsson, Durso, and Appellants’ disclosure.
We reverse.

DISCUSSION
1. Claims 1, 2, 5, 7-18, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Pålsson and Durso.
The Examiner finds that Pålsson teaches every element of Appellants’
claimed invention with the exception of “a self-activating adhesive
composition having an open time of at least about one month selectively
applied to at least a portion of at least one of the first and second coupling
members” (Ans. 4). Appellants do not dispute and therefore concede to this
finding.
The Examiner relies on Durso to make up for the deficiency in
Pålsson. Specifically, the Examiner finds that Durso teaches
A self-activating adhesive composition having an extended
open time and extended shelf time (page 1 col 2 paragraph 11
lines 12 to end of paragraph) to enable the pre-application of
adhesive to panels for later assembly and time for after-
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Application 10/219,938

assembly adjustment, the adhesive being applied to at least a
portion of at least one of the first and second coupling members
(figures 1-6).

(Ans. 4.)
Based on this evidence the Examiner concludes that
[i]t would have been obvious to one having ordinary
[s]kill in the art to modify Palsson to show a self-activating
adhesive composition having an open time of at least about one
month selectively applied to at least a portion of at least one of
the first and second coupling members because having a
contact, self-activating adhesive between the coupling members
of the panels would allow for the precise pre-application of
adhesive to the panels for later use as taught by Durso et al, and
having the adhesive with open time of at least about one month
would allow for the storage of the unassembled pre-applied
adhesive [for] an extended period of time prior to assembly as
taught by Durso et al as extended periods of time in
construction can be months per normal housing construction
time frame.

(Ans. 4-5.)
Appellants disagree. According to Appellants “[a]s set forth in the
instant [S]pecification, ‘self-activating’ requires no catalyst or activator to
commence formation of a substantially non-refastenable bond upon mating
of two floor covering panels.’ See, as-filed Specification at page 17, lines
23-26” (App. Br. 3). In this regard, Appellants assert that “Durso’s adhesive
is activated (or cured) by a metallic initiator applied to one or more edges of
a complimenting set of panels. See e.g., Durso, para. 11, lines 5-6 and 11-
12” (id.).

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Application 10/219,938

The Examiner responds with three arguments.
First, the Examiner asserts that “the adhesive of Durso needs no
outside help to have the adhesive bonding together. Rather, [it is] the
ingredients within the adhesive itself which interact with each other, namely
in this case the metallic initiator start[s] the process of bonding of the
chemicals. The adhesive is thus self-activating” (Ans. 7). We disagree.
Durso teaches an
assembly of a plurality of joined panel parts [to which] [s]ome
of the individual parts contain a pre-applied curable adhesive to
one or more sides or edges. An initiating metal activator is
applied to complementing edges and cure is activated when the
parts are assembled . . . . The activating metal . . . is affixed to
one surface which is brought into proximity with the curable
adhesive compound dispensed onto the complementing part.

(Durso, Abstract.) Thus, Durso’s adhesive is not “self-activating” as defined
by Appellants’ Specification, but instead is activated by a metallic activator
prior to joining the panel pieces. The Examiner does not identify, and we do
not find, a teaching in Durso of a “self-activating” adhesive within the scope
of Appellants’ claimed invention. Accordingly, we are not persuaded by the
Examiner’s first argument.
Second, the Examiner asserts that “the limitation of ‘self-activating
requiring no catalyst or activator to commence formation ….’ is not in the
claims” (Ans. 7 (alteration original)). We are not persuaded. Appellants’
claims require the use of a “self activating adhesive composition” (Claim 1).
According to Appellants’ Specification “the adhesive composition used in
the present invention is ‘self-activating’ in that it requires no catalyst or
activator to commence formation of a substantially non-refastenable bond
upon mating of two floor covering panels” (Spec. 17: 23-26). When the
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claims are read in light of the Specification the requirement in Appellants’
claims of “a self activating adhesive composition” means that it “requires no
catalyst or activator to commence formation of a substantially non-
refastenable bond upon mating of two floor covering panels”. Claim
language must be analyzed “not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary skill in the pertinent
art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Accordingly, we are
not persuaded by the Examiner’s second argument.
Third, the Examiner poses a number of questions relating to the scope
of the term “self-activating” and concludes that “Durso’s adhesive meets the
claimed limitation of self-activated” (Ans. 7). For the foregoing reasons, we
disagree with the Examiner’s third argument.
The initial burden of presenting a prima facie case of obviousness
rests on the Examiner. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
For the foregoing reasons, the Examiner has failed to present the evidence
necessary to establish a prima facie case of obviousness. Accordingly, we
reverse the rejection of claims 1, 2, 5, 7-18, and 20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Pålsson and Durso.

2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Pålsson, Durso, and Appellants’ disclosure.
The Examiner relies on the combination of Pålsson and Durso as
discussed above. The Examiner relies on Appellants’ disclosure to reach the
limitations of claims 3 and 4, which ultimately depend from claim 1. We
will not affirm this rejection.
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As Appellants point out this rejection is “misplaced because the
rejection of Claim 1 is insufficient as set forth above” (App. Br. 3). For the
reasons set forth above, we are not persuaded by the Examiner’s assertion
that “[t]he rejections to dependent claims 3 and 4 . . . [are] proper as the
rejection of claim 1 is proper” (Ans. 7).
Having found that the Examiner failed to present the evidence
necessary to establish a prima facie case of obviousness over claim 1, we
reverse the rejection of claims 3 and 4 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Pålsson, Durso, and
Appellants’ disclosure.

CONCLUSION
In summary, we reverse the rejections of record.

REVERSED
NEEDLE & ROSENBERG, P.C.
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