Ex Parte Reddick

Patent Trial and Appeal Board

Jun 8, 2016

12980149 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/980,149 12/28/2010
26875 7590 06/10/2016
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Randolph S. Reddick
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
INFI-06B 4240
EXAMINER
JUSKA, CHERYL ANN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
06/10/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDOLPH S. REDDICK
Appeal2014-009750
Application 12/980,149
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 31 and 33--44. 1 We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The Examiner withdrew the rejection of claim 32 and indicated it is now
objected to. Ans. 20. Accordingly, this claim is not before us on appeal.
Appeal2014-009750
Application 12/980,149
STATEMENT OF THE CASE
Appellant's invention, as represented by independent claims 31, 3 5
and 41, is directed to an artificial turf comprising a filler dispersed over the
backing and about the tufts of the artificial turf. The independent claims
principally differ from each other in the type of filler claimed with
independent claims 31 and 41 being limited to fillers of substantially
rounded silicon dioxide coated beads and substantially rounded glass beads,
respectively, while independent claim 35 only broadly requires substantially
rounded beads. Independent claim 35 is representative of the subject matter
before us on appeal, which is reproduced below (disputed limitations
highlighted in italicized form):
3 5. An artificial turf for an athletic field, comprising;
a base;
a porous backing residing on the base, the backing
including pile tufts secured thereto and extending upwardly
therefrom; and
a filler evenly distributed over the backing and
supporting the pile tufts, the filler consisting essential 1 y of non-
porous, substantially rounded beads of restricted size profile,
wherein the beads resist mounding, repel water, resist
compacting, present no damaging sharp edges when
incorporated with the turf, and are environmentally safe, the
beads having an angle of repose no more than about 3 0
degrees, the beads being non-flammable, and the pile tufts
extending substantially above the top of the filler;
wherein the artificial turf retains a relatively constant G-
max throughout extended use, and wherein the beads have had
2
Appeal2014-009750
Application 12/980,149
at least one other substance combined therewith to affect at
least one of the use, texture, odor, and color of the beads.
The Examiner maintains the following rejections2 :
(1) claims 31, 33, 34, and 39 rejected under 35 U.S.C. § 103(a)
as unpatentable over Meredith (US 5,041,320, issued August 20,
1991), Sekisui (JP 05-171611, published July 9, 1993 and relying on a
machine translation submitted by Appellant and entered into the
record on April 1, 2011) and Prevost (US 6,551,689 Bl, issued April
22, 2003);
(2) claims 35, 36, 38, 40, and 43 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Meredith, Sekisui and Prevost;
(3) claims 35-38 and 43 rejected under 35 U.S.C. § 103(a) as
unpatentable over Sekisui and Prevost; and
(4) claims 41, 42, and 44 rejected under 35 U.S.C. § 103(a) as
unpatentable Sekisui and Prevost.
Appellant essentially relied on the same line of argument in
addressing the rejections of independent claims 31, 35 and 41. See
Appeal Brief, generally. We focus our discussion on the rejections of
representative independent claim 35 (Rejections (2) and (3)) with the
understanding that this discussion applies equally to the rejections of
independent claims 31 and 41 (Rejections (1) and ( 4), respectively)
given that all rejections are based on the same prior art and similarly
2 For the purposes of this opinion, we rely on the statements of the rejections
on appeal as presented in the Examiner's Answer. Ans. 2-20. While
Appellant takes issue with the rejections in the Final Action of July 30, 2013
for relying on improper presumptions (Reply Br. 6-8), Appellant has not
indicated in the Reply Brief of September 8, 2014 that these rejections differ
from the rejections maintained in the Final Action of July 30, 2013 (see
Reply Brief, generally).
3
Appeal2014-009750
Application 12/980,149
argued. See Appeal Brief~ generally. Appellant presented separate
arguments for dependent claims 36, 38--40, 42 and 44 but did not
present separate arguments for dependent claims 33, 34, 37 and 43.
Accordingly, claims 33, 34, 37 and 43 stand or fall with their
respective independent claim. Arguments for claims 36, 38--40, 42,
and 44 will be addressed separately.
OPINION
Rejections under 35 U.S.C. § 103(a)
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the prior art rejections for the reasons presented by
the Examiner and add the following.
With respect to claim 35 (Rejections (2) and (3)), the Examiner found
Sekisui and the combined teachings of Meredith and Sekisui disclose an
artificial turf comprising substantially rounded filler beads, where the
respective disclosed artificial turf differs from the claimed invention in that
the references do not teach (a) the pile tufts extend substantially above the
top of the fillers, (b) the beads resist mounding, repel water, resist
compacting, are environmentally safe and non-flammable, ( c) the infill
beads have the recited angle of repose, and ( d) the artificial turf retains a
relatively constant G-max throughout extended use. Ans. 7-8, 12-14;
Meredith Figure 1, col. 2, 11. 28--47, 61-68, col. 3, 11. 3--44, col. 4, 11. 27-34;
Sekisui Figures 1, 2, i-fi-13, 7, 16, 17, 19, 20, 23, 29, 32, 34, 38, 39. With
respect to (a), the Examiner found Prevost teaches the depth of a filler infill
to be 40-90% of the length of the pile tufts depending on the desired
4
Appeal2014-009750
Application 12/980,149
performance characteristics of the turf Ans. 8, 9, 15; Prevost col. 11, lines
20-23, col. 12, 11. 13-17. Given this teaching, the Examiner determined it
would have been obvious to one of ordinary skill in the art modify the
amount of infill to obtain a desired filler infill depth to meet desired turf
properties. Ans. 4. With respect to the above mentioned characteristics (b }-
( d), the Examiner found that both Meredith and Sekisui use fillers made of
the same materials claimed by Appellant (rounded silicon dioxide, per
independent claim 31, and rounded glass beads, per independent claim 41,
respectively) with the filler particles having a shape and a size similar to the
claimed fillers. Ans. 2, 12-13; Spec. Figures 9-10, i-fi-153, 56; Sekisui i-fi-13,
7, 17; Meredith col. 2, 11. 61---68, col. 3, 11. 3-7, col. 4, 11. 27-34. The
Examiner determined one skilled in the art would have expected the fillers
disclosed by Meredith and Sekisui to have the same properties as the
claimed fillers in view of these similarities, including those properties
related to environment friendliness and non-flammability as well the
required angle of repose, and the low G-max relative to a higher G-max for a
relative period of time of a relative amount of use for the turf. Ans. 9-11,
14--16.
Appellant argues Sekisui' s fillers are different from the claimed filler
because there is no evidence that Sekisui' s fillers possess the claimed
features such as resisting mounding, having an angle of repose of no more
than about 30 degrees or providing a turf having a relatively constant G-
max. App. Br. 22-24. In addition, Appellant argues Meredith's fillers are
different from the claimed filler because Meredith teaches the fillers to be
compacted (have physical cohesion) to some degree while the claimed fillers
are non-compacting (no physical cohesion) and remain pourable even after
5
Appeal2014-009750
Application 12/980,149
laying and distribution. App. Br. 13-14. Thus, Appellant argues it is not
reasonable to presume the fillers of Meredith possess the same features,
including providing a turf having a relatively constant G-max, as the filler
recited in claim 35. Id. at 13-15.
We are unpersuaded by these arguments. The Examiner found
Sekisui discloses substantially rounded glass beads, including spherical glass
beads, as known fillers for artificial turfs. Ans. 13; Sekisui Figures 2-3, i-fi-1
3, 19. With respect to Meredith, the Examiner found this reference discloses
fillers comprising loose substantially rounded silica (silicon dioxide) beads.
Ans. 2; Meredith col. 1, 11. 45--47, col. 2, 11. 61---68. As noted by the
Examiner, glass and silicon dioxide beads are disclosed by Appellant as
preferred fillers for the invention. Ans. 2, 12-13; Spec. Figures 9-10, i-fi-153,
56; Independent claims 31, 41. By establishing that the prior art and claimed
beads are made of the same material, the Examiner has provided a
reasonable basis for one skilled in the art to expect the beads of the prior art
and of the claimed invention to have the same properties. While Appellant
argues Meredith's fillers are subject to some degree of compaction, we agree
with the Examiner's determination that Meredith is not limited to compacted
filler materials, but includes embodiments of the filler material that
relatively resist compacting, particularly given Meredith describes the filler
as loose beads (grains) that may be, or may not be, compacted. Ans. 22-23;
Meredith col. 1, 11. 45-55, col. 2, 11. 48-60, col. 4, 11. 17-18.
It is well established that when there is a reason to conclude that the
structure of the prior art is capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See, e.g., In
6
Appeal2014-009750
Application 12/980,149
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). It is also well settled
that when a claimed product reasonably appears to be substantially the same
as a product disclosed by the prior art, the burden is on the applicant to
prove that the prior art product does not necessarily or inherently possess
characteristics attributed to the claimed product, and that it is of no moment
whether the rejection is based on § 102 or § 103 since the burden is on the
applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant relies principally on the declaration by Eric Miles3 (Miles
Declaration) and the supplemental declaration of Charles H. Darrah, III4
(Darrah Declaration), both under 37 C.F.R. § 1.132, to assert the fillers of
the prior art are different from the claimed filler. App. Br. 15-17.
We agree with the Examiner that these declarations are insufficient to
establish the fillers of the prior art as different from the claimed fillers. Ans.
24. In the Miles Declaration, Declarant Miles only offers general statements
that the prior art fillers are different from the claimed fillers. Miles Deel. i-fi-1
4, 6. Declarant Miles offers no evidence to factually explain how or why the
fillers are different or would not possess the claimed properties. In the
Darrah Declaration, Declarant Darrah asserts Meredith's fillers are
compacting fillers by directing our attention to portions of Miller reciting the
3 The declaration by Eric Miles was submitted by Appellant on March 9,
2012 and entered into the record by the Examiner in the Final Action of May
12, 2012.
4 Appellant relies principally on the supplemental declaration by Charles H.
Darrah, III. This declaration was submitted by Appellant on May 16, 2013
and entered into the record by the Examiner in the Final Action of July 30,
2013.
7
Appeal2014-009750
Application 12/980,149
fillers describing them as such. Darrah Dec. if 4; Meredith col. 1, 11. 52-55,
col. 2, 11. 52-56. However, the portions of Meredith relied upon by
Declarant Darrah, do not expressly require compaction of the fillers in view
of the use of the phrase "may be." Declarant Darrah does not adequately
explain why one skilled in the art would understand those portions of
Meredith exclude a layer of non-compacted fillers. Declarant Darrah does
not adequately explain or provide any evidence to show why Meredith's
filler would not possess the properties of the claimed filler.
Thus, we discern no reversible error in the Examiner's assessment of
the weight to be given to the submitted evidence. In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations."). See also
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more
weight to prior publications than to subsequent conclusory statements by
experts, the Board acted well within [its] discretion.").
Moreover, Appellant's Figure 9 describes substantially rounded filler
material for the disclosed invention that are similarly in shape as the fillers
shown in Sekisui's Figure 2. Spec. iii! 30, 53. In addition, Meredith
discloses rounded fillers. Meredith col. 2, 11. 61---68. According to
Appellant's Specification, rounded fillers are preferred because the
roundness of the particle prevents the filler from pilling or mounding and
maintains an angle of repose of about 30 degrees that assists in maintaining
even porosity and a constant G-force factor. Spec. if 53. Thus, the shape of
the filler results in some of the claimed advantageous properties. Appellant
has not adequately explained why the substantially rounded fillers of
8
Appeal2014-009750
Application 12/980,149
Meredith and Sekisui would not have been expected to possess the claimed
characteristics.
Appellant argues Sekisui and Meredith fail to disclose an artificial turf
with pile tufts that extend substantially above an infill as well as the specific
length for the pile tufts of dependent claims 39, 40 and 42. App. Br. 12-13,
21, 23, 25, and 28. Appellant further argues Prevost describes and claims an
infill of mixed sand and rubber particles and, thus, there is no objective
reason why a person of ordinary skill would combine these two references in
an effort to achieve a filler of the type described in claim 35. App. Br. 23.
We are unpersuaded by these arguments because they do not address
the Examiner's reasons for relying on Prevost. The Examiner found Prevost
teaches the depth of a filler infill vis-a-vis the length of the pile tufts in an
artificial turf is a result-effective variable that depends on the desired
performance characteristics of the turf. Ans. 8, 9, 15; Prevost col. 11, lines
20-23, col. 12, 11. 13-17. Thus, the prior art recognizes the relationship
between the depth of a filler infill layer and the length of the pile tufts is a
result effective variable. "A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective." In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well
settled that it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for result-effective parameters.
In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454,
456 (CCPA 1955); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990)
(where the difference between the claimed invention and the prior art is
some range, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
9
Appeal2014-009750
Application 12/980,149
relative to the prior art range). Appellant's arguments do not address this
finding by the Examiner.
Thus, on this record, Appellant's arguments and proffered
declarations have not adequately shown patentable distinction between the
prior art and the claimed fillers.
With respect to claim 3 6 requiring a porous foam sheet residing on the
base and to claim 38 requiring addition of a color pigment to the filler,
Appellant argues there is no need to add these features the cited art already
includes them. App. Br. 25. We find these arguments unavailing for the
reasons presented by the Examiner. Ans. 31-32. As noted by the Examiner,
one skilled in the art would have been capable of adding a resilient layer,
such as a porous foam sheet, to an artificial turf to achieve a desired
performance. Id. at 32. Likewise, one skilled in the art would have been
capable of adding these features to achieve a desired aesthetic result. Id.
With respect to claim 44, Appellant argues the cited art does not
suggest the claimed features of the specific gravity and the hardness of the
beads. App. Br. 28. We are unpersuaded by this argument and agree with
the Examiner's determination that, given Sekisui uses the same type of filler
(substantially rounded glass beads) as the claimed invention, one skilled in
the art would have reasonably expected Sekisui' s glass beads to possess the
same specific gravity range and hardness range as the claimed substantially
rounded glass beads. Ans. 37.
Accordingly, we affirm the Examiner's prior art rejections of claims
31, 33--44 under 35 U.S.C. § 103 (a) for the reasons presented by the
Examiner and given above.
ORDER
10
Appeal2014-009750
Application 12/980,149
The Examiner's prior art rejections of claims 31 and 33--44 under 35
U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
11