Ex Parte Price

Board of Patent Appeals and Interferences

Oct 26, 2007

10950830 (B.P.A.I. Oct. 26, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHELLY W. PRICE,
APPELLANT
____________
Appeal 2007-4310
Application 10/950,8301
Technology Center 1700

____________

Decided: 26 October 2007
____________

Before JAMESON LEE, CAROL A. SPIEGEL, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application filed 27 September 2004 ("830 Application"). The real party
in interest is listed as Henkel Consumer Adhesives, Inc. (Appeal Brief filed
4 December 2006 ("Br.") at 4.)
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A. INTRODUCTION
Appellant ("Price") appeals under 35 U.S.C. § 134 from the final
rejection of claims 1–15, 18, and 19. Claims 1-15 and 17–19 are pending:
claim 17 has been withdrawn from consideration and is not part of this
appeal. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The subject matter on appeal relates to skid-resistant shelf liners.
Claims 1, 18, and 19 are representative.
Claim 1
A shelf liner which defines a skid-resistant first major surface
for contacting a shelf and a decorative second major surface,
the shelf liner comprising
a scrim and a foamed resin in contact with the scrim,
the scrim comprising fibers,
the resin being discontinuous on the scrim,
such that at least a portion of the scrim fibers is
visible on the second major surface,
open pores extending from the first major surface to the
second major surface.
(Br. at 23 (Claims App'x); paragraphing and indentation added.)
Claim 18
A composite sheet material having first and second major
surfaces consisting essentially of
a single layer of scrim formed of natural fibers and
a foamed latex resin thereon,
open pores extending from the first major surface to the
second major surface,
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the foamed latex resin providing discontinuous
coverage of the scrim fibers on the second major
surface to provide a decorative surface.
(Br. at 24 (Claims App'x); paragraphing and indentation added.)
Claim 19
A shelf liner which defines a skid-resistant first major surface
for contacting a shelf and a decorative second major surface,
the shelf liner comprising
a single layer of scrim and a foamed resin in contact with
the scrim, which defines the first major surface,
the scrim comprising fibers,
the resin being discontinuous on the scrim,
such that at least a portion of the scrim fibers is
visible on the second major surface,
open pores extending from the first major surface to the
second major surface,
the foamed resin being thicker, on average on a side of
the scrim adjacent the second major surface, than on a
side of the scrim adjacent the first major surface.
(Br. at 25 (Claims App'x); paragraphing and indentation added; underlining
added to indicate major differences from claim 1.)
The Examiner has maintained the following rejections2:
1. Claims 1, 5, 11, 13, and 15 have been rejected under 35 U.S.C.
§ 102(e) in view of Mangum3. (Answer at 2.)

2 Examiner's Answer mailed 22 March 2007 ("Answer").
3 Scott Mangum and Kevin Donovan, Multi Scrim Non-Slip Pad and Method
of Manufacture, U.S. Patent 6,673,179 B1, issued 6 January 2004, based on
application 10/005,045 filed 4 December 2001.)
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2. Claims 12, 14, and 19 have been rejected under 35 U.S.C.
§ 103(a) in view of Mangum. (Answer at 3.)
3. Claims 2–4 have been rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Magnum and Jupina4. (Answer at 2.)
4. Claims 6–8 have been rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Magnum and Sobonya5. (Answer at 3.)
5. Claims 9 and 10 have been rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Magnum and Hawley6. (Answer at 3.)
6. Claim 18 has been rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Mangum, Sobonya, and Jupina. (Answer at 3.)
The principal legal questions in this case are:
1a. What is the meaning of the limitation, found in claim 19, "the
shelf liner comprising a single layer of scrim"?
1b. What is the meaning of the limitation, found in claim 18, "[a]
composite sheet material having first and second major surfaces consisting
essentially of a single layer of scrim"?

4 Michael S. Jupina, Continuous Foam Rug Gripper and Method of Using
the Same, U.S. Patent 6,558,786 B1, issued 6 May 2003.
5 William A. Sobonya and Elizabeth A. Flores, Composite Sheet Material,
U.S. Patent Application Publication 2002/0,197,922 A1, published 26
December 2002, based on application 09/891,568, filed 26 June 2001.
6 James K. Hawley et al., Smooth Surfaced Foam Laminate and Method of
Making Same, U.S. Patent 6,130,174, issued 10 October 2000.
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2a. What is the meaning of the limitation, found in independent
claims 1 and 19, "the resin being discontinuous on the scrim, such that at
least a portion of the scrim fibers is visible on the second major surface"?
2b. What is the meaning of the limitation, found in independent
claim 18, "the foamed latex resin providing discontinuous coverage of the
scrim fibers on the second major surface"?
To each of these legal questions corresponds the factual question,
does Mangum teach (or suggest) the limitation?
It is also necessary to resolve the factual question, does Mangum
teach "multi-scrim non-slip pads comprising multiple layers of the same
scrim type" that have a "skid-resistant" surface as required by independent
claims 1 and 19?
B. FINDING OF FACT (FF)
The following findings of fact and any set out in the Discussion, infra,
are supported by a preponderance of the evidence of record.
The 830 Application
1. According to Price, it is conventional to make drawer and shelf liners
by coating a generally porous sheet material that has openings that pass from
one surface to the other, called a "scrim," with a resin that is then foamed.
(830 Application at 1, ¶ 2.)
2. Price describes an embodiment, illustrated schematically in Figures 1
and 2 (830 Application at 3, ¶ 14).
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{Figures 1 and 2 of the 830 Application are shown below:}7

{Figures 1 and 2 are said to depict face and edge views of a sheet of the
invention}
3. The surface 16 is said to be an exposed outer surface of the liner that
in various embodiments is covered or substantially covered by the foamed

7 The text in curly braces preceding and following the Figures is provided to
ensure compliance with section 508 of the U.S. Rehabilitation Act for
publication of this Decision on the USPTO website pursuant to the Freedom
of Information Act. It is not part of the Decision.
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resin and that contacts the substrate and resists slipping along the substrate.
(830 Application at 3, ¶ 14.)
4. The "second major surface" 18 is characterized as a decorative surface
that is partially covered by the foam resin, "leaving at least portions of the
scrim material exposed or covered with a sufficiently thin layer of foam that
the texture of the scrim material is clearly visible." (830 Application at 3,
¶ 14; emphasis added.)
5. In some embodiments, Price teaches that "[p]ortions 24 of the warp
and weft strands 26, 28 on the decorative side 18 are free of the foam. For
example, at least 10% and in one embodiment, at least 20% of the length of
the warp and weft threads are exposed, at least to the naked eye."
(830 Application at 4, ¶ 17.)
6. In other embodiments, Price teaches that a decorative surface to the
composite sheet material is "due to the outline of the weave which . . . shows
through the surface of the foamed resin." (830 Application at 4, ¶ 21.)
7. Price also describes embodiments in which:
[t]he weave of the scrim is preferably spaced apart so that when
the scrim is impregnated with the foamable resin composition,
the composition penetrates into the weave and only partially
fills the spaces between the warp and the weft strands.
(830 Application at 3, ¶ 17.)
8. According to Price, in these embodiments, "[w]hen the impregnated
composition is foamed, open pores 22 extend from one surface of the sheet
material to the opposite surface." (830 Application at 3-4, ¶ 17.)
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9. Price describes a method of making the claimed composite sheets or
liners in the following words:
a portion of the liquid foamable material is removed, after it is
applied, from what will be the decorative surface 18, for
example with a knife or other blade. . . . The scraping leaves at
least some portions of the fibers on the decorative surface 18
which, at least to the naked eye, are completely free of the
foamed material.
(830 Application at 5, ¶ 24.)
10. As a result, according to Price, "[t]he coating on the non-slip
surface 16 is thus generally thicker, on average, than on the decorative
surface. This results in a larger portion of the foam being on the side of the
scrim adjacent surface 16 after foaming and drying." (830 Application at 5,
¶ 24.)
Mangum
11. Mangum relates to non-slip products such as kitchen drawer inserts
having multiple scrims, each coated with liquid polyvinyl chloride that is
then baked in an oven to form foamed coating layers around the scrims.
(Mangum at 1:7-17.)
12. Mangum describes the coated scrims as being "welded" together when
they are heated together in the oven. (Mangum, e.g., at 2:65 and at 3:62.)
13. Mangum teaches that a variety of scrims may be used (Mangum
at 1:37–61), stating that "the type of scrim utilized often effects [sic: affects]
the porosity, as well as amount of coating retained by the scrim." (Mangum
at 1:61–63.)
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14. Mangum also notes that the characteristics of the polyvinyl chloride
are known to affect the characteristics of the foam coating. (Mangum
at 1:64-2:14.)
15. According to Mangum, all of these factors can be varied to achieve
different products to meet end-user requirements. (Mangum at 2:15–40.)
16. In certain embodiments, Mangum is concerned with two-scrim non-
slip pads in which the first and second foamed resin-coated scrims have
different properties. (Mangum at 3:1–15.)
17. For example, according to Magnum, Figures 5 and 6 depict a non-slip
pad 10 having a first scrim 12 that has, in the alternative, "very small holes
extending through the scrim, when coated with polyvinyl chloride liquid and
the liquid coating is cured about the first scrim 12." (Mangum at 4:15–19.)
18. Mangum further describes the second scrim 20 as having "alternating
apertures . . . when coated, the coating is not retained in the larger apertures,
but substantially coats the remaining portions of the second scrim 20. This
design has been found to provide an advantageous texture on its top surface
while providing good cushioning effects." (Mangum at 4:22–26.)
19. Mangum states that "[o]ther embodiments could utilize multiple
layers of the same and/or different scrim types." (Mangum at 4:22–26.)
The Examiner's Rejections
20. With regard to claim 1, the Examiner finds that "Mangum teaches a
multi-scrim non-slip pad comprising multiple layers of the same scrim types
wherein each scrim is substantially coated with a polyvinyl chloride coating
such that the coating is not retained in the larger apertures of the scrim for
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providing a desired texture on a top surface of the scrim." (Answer at 4,
citing Mangum at 4:20–30.)
21. The Examiner finds that the bottom surface would define a skid-
resistant surface "because the texture is provided on its top surface."
(Answer at 4.)
22. The Examiner also finds that the incomplete coating of the top surface
"further implies a portion of the scrim fibers being uncovered by the coating
for imparting a textured or hairy surface." (Answer at 4.)
Price's Arguments
23. Price has not challenged the prior art status of any of the references
applied by the Examiner.
24. Moreover, Price has not offered separate substantive arguments for
the patentability of dependent claims other than claims 11 and 12, which
depend from claim 1, and which are rejected solely over Mangum.
25. Substantively, regarding claims 1–15, Price argues first that the
references do not disclose or suggest a shelf liner having open pores
extending from one major surface to the other major surface. (Br. at 12.)
26. In particular, according to Price, the Examiner relies on an improper
combination of two different embodiments of Mangum, namely, the
description of the coated second scrim having apertures, and the teaching
that multi-scrim no-slip pads can be made from multiple layers of the same
scrim type. (Br. part VII.A.1, at 12–13.)
27. Moreover, Price argues that the combination of two of the second
scrims taught by Mangum would not result in a liner having a skid resistant
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surface on one side and visible scrim fibers on the other. (Br. part VII.A.2,
at 14.)
28. In particular, Price argues that there is no suggestion that the texture
taught by Mangum is provided by "discontinuous coverage of the scrim
fibers" as required by Claim 1. (Br. part VII.A.2, at 14–15.)
29. Although Price offers a summary of the teachings of the secondary
references, Price's only substantive argument is that the secondary references
do not cure the failure of Mangum to teach discontinuous foam on the scrim.
(Br. part VII.A.3, at 15–16.)
30. Price argues further that there is no suggestion that the use of two
identical scrims, as proposed by the Examiner, would result in a product
having foamed resin on a first major surface, as required by claims 11
and 12. (Br. part VII.B, at 17.)
31. Finally, Price argues that the Examiner has misconstrued claims 18
and 19 by reading the limitations "consisting essentially of a single layer of
scrim . . . " and "comprising a single layer of scrim . . . " on embodiments
having multiple layers of scrim. (Br. part VII.C and D, at 17–21.)
C. DISCUSSION
The predecessor to our reviewing court explained over three decades
ago that, for rejections for anticipation to be proper, the "reference must
clearly and unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference." Application of Arkley, 455 F.2d 586, 587,
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172 USPQ 524, 526 (CCPA 1972) (emphasis original). Similarly, for
claimed subject matter to be obvious, the differences required by the claim
limitations must be such that they are described or obvious, as a whole, in
view of the prior art. The Gillette Co. v. S.C. Johnson & Son, Inc., 919 F.2d
720, 724, 16 USPQ2d 1923, 1927 (Fed. Cir. 1990) (“Focusing on the
obviousness of substitutions and differences, instead of on the invention as a
whole, is a legally improper way to simplify the often difficult determination
of obviousness.”) On appeal, the procedural burden is on the Applicant to
show that the Examiner has committed reversible error in maintaining the
rejections.
We begin by considering the meaning of the limitations "consisting
essentially of a single layer of scrim," recited in claim 18, and "comprising a
single layer of scrim," recited in claim 19. The transitional phrases
"comprising" and "consisting essentially of" are, as the Examiner noted,
open to additional materials and structures beyond those recited in the
claims, the latter with certain reservations not relevant here. The Examiner
errs, however, in reading these claims as being open to additional layers of
scrim. To read these claims in that manner would render nugatory the
express limitation, "a single layer of scrim". Although claims are to be read
broadly during prosecution, so the full scope and content of their meaning
may be explored while the applicant has a full and fair opportunity to amend
them, In re Zlezt, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989), nonetheless every word must be given due consideration. In the
present case, the 830 Application makes clear that the inventor is concerned
with embodiments based on a single scrim layer. The Examiner has not
identified any ambiguity in the claim language or any conflict with the
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specification that indicates that the single scrim layer limitation should be
read out of the claims as a grammatical accident or as an insubstantial
superfluity. Moreover, the Examiner has not indicated that Mangum
describes or suggests skid-resistant pads having only a single layer of scrim.
Instead, the Examiner argues that the claims read on multi-scrim skid-
resistant pads. The Examiner does not rely on Sobonya or Jupina for
teachings or suggestions of single-scrim skid-resistant pads. Accordingly,
the rejections of claims 18 and 19 under § 103(a) are REVERSED.
We consider next the "coverage" limitations in the independent
claims, which are reproduced here for convenient reference (emphasis
added):
Claims 1 and 19 require that the foamed latex resin be
"discontinuous on the scrim, such that at least a portion of the scrim
fibers is visible on the second major surface"; whereas
Claim 18 requires that the foamed latex resin provide
"discontinuous coverage of the scrim fibers on the second major
surface."
The difference in wording implies that resin that is "discontinuous on the
scrim" is distributed differently from resin that is "discontinuous on the
scrim fibers." CAE Screen Plates, Inc. v. Heinrich Fiedler GMBH & Co.
KG, 224 F.3d 1308, 1317, 55 USPQ2d 1804, 1810 (Fed. Cir. 2000) ("In the
absence of any evidence to the contrary, we must presume that the use of
these different terms in the claims connotes different meanings.") (citation
omitted). This impression is strengthened by the disclosure, which indicates
that "[i]n one embodiment, the foamed resin . . . partially covers a second
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major surface 18, leaving at least portions of the scrim material . . . covered
with a sufficiently thin layer of foam that the texture of the scrim material is
clearly visible." (FF 4; Specification at 3, ¶ 14.) The disclosure also
indicates that in certain embodiments, "[t]he weave of the scrim is preferably
spaced apart so that when the scrim is impregnated with the foamable resin
composition, the composition penetrates into the weave and only partially
fills the spaces between the warp and the weft strands." (FF 7;
830 Application at 3, ¶ 17.) These two passages are consistent with the
further limitation in claims 1 and 19 that "at least a portion of the scrim
fibers is visible on the second major surface."
In contrast, the disclosure appears to describe another embodiment in
which "the foamed resin . . . partially covers a second major surface 18,
leaving at least portions of the scrim material exposed." (FF 4; Specification
at 3, ¶ 14.) The disclosure appears to describe this embodiment further,
teaching that "[p]ortions 24 of the warp and weft strands 26, 28 on the
decorative side 18 are free of the foam." (FF 5; 830 Application at 4, ¶ 17.)
These descriptions are consistent with the limitation in claim 18 that the
resin provides "discontinuous coverage of the scrim fibers on the second
major surface," not merely the scrim as a whole.
With these interpretations in mind, we have no trouble determining
that, while the Examiner has identified passages in Mangum that fairly
describes textures in which the fibers of the scrim are visible, but covered by
foamed resin, the Examiner has not indicated that Mangum describes non-
slip pads in which scrim fibers are visually free of foamed resin. Nor has the
Examiner directed our attention to any disclosure in Mangum of a process of
making the non-slip pads that would necessarily result in such exposed
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fibers. Furthermore, the Examiner has not relied on the other references for
disclosure relating to the coverage of the scrim. We conclude that the
rejection of Claim 18 over the combined teachings of Mangum, Sobonya,
and Jupina should be and is REVERSED.
We return to claim 15. As Price points out (Br. at 12), claim 1
requires that the shelf liner be skid-resistant. Price argues that the
combination of two scrims 20 "would not yield a liner in which one surface
had visible scrim fibers and the other a skid resistant surface as required in
claim 1." (Br. at 14.)
We find the Examiner's assertion that the coated scrim 20 has skid-
resistant properties "because the texture is provided on its top surface"
(FF 21; Answer at 4) unpersuasive. The Examiner has not explained why
what Mangum describes at the top surface would affect the characteristics of
the bottom surface. Indeed, the skid resistant pads described by Mangum
appear to derive their skid-resistant characteristics from a foamed-resin
coated scrim 12 that "substantially forms a non-porous sheet, or
alternatively, has very small holes extending through the scrim." (FF 17;
Mangum at 4:16–18.) The partially coated scrim 20 is "welded" to the
coated scrim 12, yielding the desired combination of skid-resistance, top-
texture, and cushioning. (FF 18; Mangum at 4:23–25.)
Accordingly, we are constrained to REVERSE the Examiner's
rejection of claim 1 under § 102 in view of Mangum.
The remaining claims are dependent on claim 1. The Examiner did
not rely on the other references to remedy the deficiencies noted supra.
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Accordingly, the Examiner's rejections of the remaining claims must also be
REVERSED.
D. ADDITIONAL COMMENTS
In the event of further prosecution, we invite the Examiner and Price
to consider the following issues regarding the patentability of claim 1 over
each of Mangum and Hawley; the patentability of the dependent claims,
further in view of the additional references of record, may also need to be
revisited.
Mangum describes embodiments in which the first scrim is covered
with a foamed resin resulting in a sheet having "very small holes extending
through the scrim." (Mangum at 4:17–18.) The second scrim 20 is
described as having open large apertures. (Id. at 21–24.) The combination
appears to have open pores connecting the first major surface to the second
major surface. The first major surface is described as being skid-resistant
(id. at 3:35–36) and the second major surface is described as being textured
(id. at 4:24–26.) Thus, claim 1 may be unpatentable over Mangum. The
more complete coating of the first scrim 12 compared to the second scrim 20
would appear to meet the differential coating requirement of claim 11 and
the differential friction coefficient requirement of claim 13. The principle of
shifting the burden to the Applicant upon a prima facie showing that a prior
art disclosure meets or renders obvious claimed subject matter should be
considered. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
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burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977).
Hawley, at column 2, line 50, through column 3, line 4, describes a
slip-resistant pad 14 that is "conventional and commercially available"
(Hawley at 2:67-3:1). The pad 14 is said to be noncontinuous rubber or
plastic material foamed onto a loosely woven scrim in such a way that the
apertures are not filled (id. at 2:55-65). Preferred thicknesses are disclosed
at column 3, lines 1–4. Again, this disclosure appears to have anticipate
claim 1 and many of the dependent claims.
Claim 19 appears to invert, in the final clause, the recitations of the
"second major surface" and the "first major surface," when it requires that
the foamed resin be thicker on a side of the scrim adjacent the second major
surface, compared to the first major surface. The "first major surface" is
previously defined as the skid-resistant surface, which appears to have the
thicker foamed resin.
E. CONCLUSION
On consideration of the record and for the reasons given, it is:
ORDERED that the rejection of claims 1, 5, 11, 13, and 15
under 35 U.S.C. § 102(e) in view of Mangum is REVERSED;
FURTHER ORDERED that the rejection of claims 12, 14, and
19 under 35 U.S.C. § 103(a) in view of Mangum is REVERSED;
FURTHER ORDERED that the rejection of claims 2–4 under
35 U.S.C. § 103(a) in view of the combined teachings of Magnum and
Jupina is REVERSED;
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FURTHER ORDERED that the rejection of claims 6–8 under
35 U.S.C. § 103(a) in view of the combined teachings of Magnum and
Sobonya is REVERSED;
FURTHER ORDERED that the rejection of claims 9 and 10
under 35 U.S.C. § 103(a) in view of the combined teachings of Magnum and
Hawley is REVERSED;
FURTHER ORDERED that the rejection of claim 18 under 35
U.S.C. § 103(a) in view of the combined teachings of Mangum, Sobonya,
and Jupina is REVERSED.
REVERSED

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