Ex Parte Plotz

Board of Patent Appeals and Interferences

Jul 28, 2006

10619609 (B.P.A.I. Jul. 28, 2006)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte KURT PLOTZ

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Appeal No. 2006-1392
Application No. 10/619,6091
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ON BRIEF
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Before PAK, WALTZ, and KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

1 Application for patent filed July 16, 2003.
This is a decision on an appeal from the examiner=s refusal
to allow claims 1, 3 through 11, 13 through 16, and 32 through
34, which are all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. ' 134.
Appeal No. 2006-1392
Application No. 10/619,609

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APPEALED SUBJECT MATTER
Claims 1 and 34 are representative of the subject matter on
appeal and read as follows:
1. Wall and floor coverings based on a carrier coated
with one or more layers, said carrier consisting essentially
of:

a fiberglass containing mat pre-consolidated with a
binder, and

a non-woven mat made of thermally fixed organic
synthetic fibers bound with said fiberglass mat by needling,
wherein part of said organic fibers penetrate through said
fiberglass mat and lie adjacent to a side of said fiberglass
containing mat that is opposite to said organic non-woven
mat; and

one or more layers coated on a glass fiber side of said
carrier, opposite the non-woven synthetic mat.

34. Wall and floor coverings comprising a carrier
coated with one or more layers, said carrier consisting
essentially of:

a glass fiber-containing mat pre-consolidated with a
binder; and

a non-woven mat comprised of thermally fixed organic
synthetic fibers bonded to said fiberglass mat by
hydrodynamic needling, wherein part of said organic fibers
penetrate through said glass fiber mat and lie adjacent to a
side of said glass fiber-containing mat that is opposite to
said organic fiber non-woven; and

at least one layer bonded to a glass fiber of said
carrier, opposite the non-woven synthetic mat.

Appeal No. 2006-1392
Application No. 10/619,609

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REFERENCE
The prior art references relied upon by the examiner in
support of the § 103 rejections before us are2:
Hiers (Hiers '876) 4,522,876 Jun. 11, 1985
Frankenburg et al. (Frank) 4,569,088 Feb. 11, 1986
Greiser et al. (Greiser) 5,017,426 May 21, 19913
Heidel et al. (Heidel) 5,171,629 Dec. 15, 1992
Baravian et al. (Baravian) 5,616,395 Apr. 1, 1997
Hiers et al. (Hiers '622) 6,092,622 Jul. 25, 2000
REJECTIONS

The appealed claims stand rejected as follows:
1) Claims 1, 4, 5, 9, 10 and 15 under 35 U.S.C. ' 103(a) as
unpatentable over the combined disclosures of Greiser and
Hiers '622;
2) Claims 1, 3 through 5, 9 through 11, 15, 16 and 32 under
35 U.S.C. ' 103(a) as unpatentable over the combined
disclosures of Baravian, Hiers '622 and Heidel;

2 The examiner does not list the Heidel reference in the Prior Art of Record
section even though it is relied upon in one of the rejections set forth in
the Answer.
3 The examiner inadvertently causes confusion by assigning two different
patent numbers to Greiser, i.e., "4,522,876" in the Prior Art of Record
section and "5,017,426" in the Ground of Rejection section. The U.S. patent
number "4,522,876" belongs to Hiers '876.
Appeal No. 2006-1392
Application No. 10/619,609

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3) Claim 13 under 35 U.S.C. ' 103(a) as unpatentable over the
combined disclosures of Baravian, Hiers '622 and Hiers '876;
4) Claims 6 through 8, 14 and 33 under 35 U.S.C. ' 103(a) as
unpatentable over the combined disclosures of Baravian,
Hiers '622, and Heidel4;
5) Claim 34 under 35 U.S.C. ' 103(a) as unpatentable over the
combined disclosures of Baravian, Hiers '622, and Frank; and
6) Claims 1, 4, 5, 9, 10 and 15 under the judicially-created
doctrine of obviousness-type double patenting as
unpatentable over claims of 1 through 6 of Greiser in view
of Hiers '876.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the arguments advanced by both the
examiner and the appellants in support of their respective
positions. As result of this review, we have made the
determinations which follow.
As evidence of obviousness of the claimed subject matter
under § 103, the examiner relies on Greiser or Baravian to teach
a laminate useful for roofing and sealing. See the Answer, pages

4 Although the statement of rejection set forth by the examiner is confusing
as to which Hiers is relied upon to reject claims 6 through 8, 14 and 33, we
will presume that the examiner is relying on Hiers '622 since the body of the
rejection refers to "Hiers et al".
Appeal No. 2006-1392
Application No. 10/619,609

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3 and 4. According to the examiner (e.g., the Answer 3), these
references do not teach “one or more layers coated on a glass
fiber side of the carrier.”
To remedy this and other deficiencies, the examiner relies
on the disclosure of Hiers ‘622. However, as correctly pointed
out by the appellant (the Brief, page 6), Hiers ‘622 is directed
to “thermal and acoustical insulating laminates designed
primarily for automotive uses…” rather than for roofing or
sealing uses. See also Hiers ‘622, column 1, lines 4-45. The
examiner has not adequately explained why one of ordinary skill
in the art would have been led to employ one or more additional
coating from the laminates taught by Hiers ‘622 on the glass
fiber side of Greiser’s or Baravian’s roofing or sealing
laminate. See the Answer in its entirety. Thus, we concur with
the appellant that the examiner has not demonstrated that one of
ordinary skill in the art seeking to improve the roofing or
sealing sheets would look to the laminates of Hiers ‘622 to coat
one or more layers on the glass fiber side thereof.
Accordingly, we reverse the § 103 rejections and the
obviousness double patenting rejection as proposed by the
examiner and recommend consideration of the following matters.

Appeal No. 2006-1392
Application No. 10/619,609

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OTHER ISSUES
We observe that Greiser teaches a laminate “suitable as a
carrier web for roofing and sealing sheets comprises a
preconsolidated synthetic fiber web and preconsolidated mineral
fiber web which are bonded to each other by needling.” See
column 1, lines 48-52. Greiser teaches that “[p]referred mineral
fiber webs are glass fiber webs…” See column 1, line 66. These
“roofing and sealing sheets are usually coated with bitumen on
one or both sides, but can also have a coating made from
elastomers or plastomers,” thus meeting the claimed requirement
for one or more layers coated on a glass fiber side of the
carrier web. See column 1, lines 10-15.
The dispositive question raised is, therefore, whether
Greiser teaches or would have suggested “part of said organic
synthetic fibers penetrate through said fiberglass mat and lie
adjacent to a side of said fiberglass containing mat that is
opposite to said organic non-woven mat” recited in claim 1. On
this record, we answer this question in the affirmative.
Greiser teaches (column 2, lines 13-22):
The needling should comprise 10 to 100 stitches/cm2,
preferably between 20 and 50 stitches/cm2. This
needling is carried out in such a way that the needles
first enter the synthetic fiber web and then penetrate
through the material fiber web underneath. The depth
of a stitch naturally depends on the thickness of the
Appeal No. 2006-1392
Application No. 10/619,609

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webs. It is between 6 and 11 mm and leads to a strong
positive join of the synthetic fiber web to the mineral
fiber web by means of synthetic fibers pulled through
the latter. Emphasis added.

Moreover, we note that in an exemplified embodiment5 in a related
Application 09619536, needling the synthetic and mineral fiber
webs at 32 stitches/cm2, which is within the preferred stitch
range taught in Greiser, is said to provide the claimed
penetration characteristics. Thus, absent any evidence to the
contrary, it is reasonable to infer that Greiser necessarily
describes “part of said organic synthetic fibers penetrate
through said fiberglass mat and lie adjacent to a side of said
fiberglass containing mat that is opposite to said organic non-
woven mat” as recited in claim 1. Thus, we determine that
Greiser describes or would have suggested at least the subject
matter as recited in claim 1 within the meaning § 102(b) or
103(a).
Upon return of this application, the examiner is advised to
determine whether Greiser affects the patentability of the
remaining claims.

5 The appellant did not disclose this embodiment in the subject application.
Appeal No. 2006-1392
Application No. 10/619,609

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This remand to the examiner pursuant to 37 CFR § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) is not
made for further consideration of a rejection. Accordingly, 37
CFR § 41.50(a)(2) does not apply.

REVERSED AND REMANDED

CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )

CKP:TF
Appeal No. 2006-1392
Application No. 10/619,609

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