Ex parte Ridder et al.

Board of Patent Appeals and Interferences

Feb 28, 2001

08911913 (B.P.A.I. Feb. 28, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JURGEN RIDDER and JOHANNES HUBINGER
__________
Appeal No. 2000-1455
Application 08/911,913
___________
ON BRIEF
___________
Before CALVERT, COHEN, and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1,
2, 4, 19 and 20. The other claims in the application stand
withdrawn from consideration under 37 CFR § 1.142(b), as being
drawn either to a nonelected invention (claims 21 to 25) or to
nonelected species (claims 3 and 5 to 18).
Appeal No. 2000-1455
Application 08/911,913
We note that in this claim the comma after “flexible”1
should be deleted, and --and-- apparently should be inserted
after “elastomer”.
A translation of this document, prepared by the USPTO,2
is forwarded to appellants herewith.
2
The claims on appeal are drawn to a mat for sanitary
facilities. Claim 1, the only independent claim, reads :1
1. A mat for sanitary facilities comprising a carrier of
flexible, plastic with suction cups on a bottom side thereof
and a layer of nonwoven fabric on a top side of the carrier;
wherein the carrier is formed of a thermoplastic elastomer is
joined to the nonwoven fabric by having been back-injected
onto the nonwoven fabric.
The appealed claims are reproduced in the new appendix
filed on November 30, 2000.
The reference applied in the final rejection is:
Hausch (German patent) 3,303,993 Aug. 9,
19842
An additional reference, applied herein in a rejection
pursuant to 37 CFR § 1.196(b), is:
Harper, Ed., Handbook of Plastics, Elastomers, and Composites
(2d. Ed. 1992) pp. 7.1, 7.2 and 7.37 to 7.41 (Handbook).
The following rejections are before us:
Appeal No. 2000-1455
Application 08/911,913
Erroneously described in footnote 2 of the brief as “a3
translation of the paragraph spanning pages 5 & 6 of the
Hauser {sic} reference.”
This translation differs from the enclosed USPTO4
translation in that in appellants’ version the German
expression “ein Gewebe oder ein Flies” is translated as “a
fabric or nonwoven,” while in the USPTO version it is
translated as “a woven fabric or fleece” (see trans., p. 4).
We will utilize appellants’ version here.
3
(1) Claims 1 and 4, anticipated by Hausch, under 35 U.S.C.
§ 102(b).
(2) Claims 1, 2, 4, 19 and 20, unpatentable over Hausch, under
35 U.S.C. § 103(a).
The Hausch Reference
The first portion of Hausch’s disclosure which is of
particular relevance to this case is in the paragraph bridging
pages 6 and 7, discussing the prior art. According to the
translation furnished by appellants with their brief , the3
pertinent portion (the first two sentences) of this paragraph
reads4
Elastic mats of the aforementioned type are known in
which a fabric or nonwoven is coated with foamed plastic
and a slip-proof surface structure is formed on the
plastic layer. Suction cups are then bonded onto the
bottom of the plastic layer or attached in some other
Appeal No. 2000-1455
Application 08/911,913
4
way.
Hausch discloses two different embodiments of his
invention, shown in Figs. 2 and 3. The Fig. 3 embodiment is of
more interest in the present case; as described at page 7,
line 15 et seq. of the translation, the liner (mat) of this
embodiment consists of an unfoamed plastic layer 5 having
integral suction cups 4, and a foamed plastic layer 6 with
nubbins 3 on its upper surface. Layers 5 and 6 may be
attached together by gluing or welding (trans. page 8, lines 9
to 11), or layer 6 may be directly molded on layer 5 (id,
lines 12 to 15). Hausch states that various plastics are
suitable (trans. page 7, lines 11 to 14), articularly PVC,
which gives “an especially soft and flexible liner” (trans.
page 8, lines 1 and 2).
§ 102(b) Rejection
The examiner takes the position that Hausch’s above-
discussed disclosure of the prior art anticipates claim 1. He
asserts that Hausch discloses a thermoplastic elastomer, and
that the recitation of the thermoplastic elastomer “having
been back-injected onto the nonwoven fabric” is a process
Appeal No. 2000-1455
Application 08/911,913
See, e.g., page 7.1 of the Handbook. See also 8 Kirk-5
Othmer Encyclopedia of Chemical Technology 626 (3d Ed. 1979)
(copy attached).
5
limitation which carries little if any weight in a claim to a
known product (answer, page 4).
We do not find any disclosure in Hausch itself of a
thermoplastic elastomer, but as the examiner points out, the
attached abstract states that “Various types of resin are
suitable, e.g., PVC and other thermoplastics.” However,
assuming for the purpose of this decision that the PVC
disclosed by Hauser is inherently a thermoplastic, and further
assuming that Hausch’s disclosure that PVC is suitable for his
invention constitutes a disclosure that it would also be
suitable for the prior art mats disclosed by him at pages 6 to
7, there is still no disclosure of a thermoplastic elastomer.
The examiner’s assertion that “‘elastomer’ is definitive of
virtually any resilient plastic” (answer, page 6) is not well
taken, since “thermoplastic elastomer” (TPE) is a term of
art. Since claim 1 requires a TPE and Hausch does not5
expressly or inherently disclose it, claim 1 is not
anticipated. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
Appeal No. 2000-1455
Application 08/911,913
6
1429, 1431 (Fed. Cir. 1997).
The § 102(b) rejection therefore will not be sustained.
§ 103(a) Rejection
The basis of this rejection as stated by the examiner in
the examiner’s answer is not particularly clear.
Nevertheless, since Hausch does not teach or suggest the use
of a TPE, as recited in claim 1, and the examiner has cited no
other evidence from which it might be concluded that it would
have been obvious to make any of the mats disclosed by Hausch
out of a TPE, the rejection will not be sustained.
Rejection Pursuant to 37 CFR 1.196(b)
Claim 1 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Hausch in view of the Handbook. As
discussed above, Hausch discloses a prior art elastic mat
having a layer of nonwoven fabric coated with a “carrier” of
foamed plastic with suction cups attached to its bottom side.
Since this disclosed mat is elastic, and TPEs are well known
elastic polymers which may be foamed, as disclosed on pages
7.1, 7.2, 7.40 (last line) and 7.41 of the Handbook, it would
have been obvious to one of ordinary skill in the art to
Appeal No. 2000-1455
Application 08/911,913
In their brief (page 4, line 21; page 5, line 23; page6
6, lines 6 and 7) appellants refer to their claimed TPE as
“back-sprayed” rather then “back-injected.”
Claim 1 does not require the suction cups to be an7
integral part of the carrier.
7
utilize a TPE as the foamed plastic of the known elastic mat
disclosed by Hausch, in order to obtain the art-recognized
advantages thereof.
It is not clear whether “back injection” of the TPE onto
the nonwoven fabric as recited in claim 1 would be inclusive
of the coating process disclosed by Hausch , but in any event,6
assuming that it would not, it appears that the prior art mat
described by Hausch (as modified in view of the Handbook)
would have essentially the same structure and characteristics
as the mat recited in claim 1. Appellants have the burden of7
proving that it would not. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977).
Remand to the Examiner
The application is remanded to the examiner to determine
whether claims 2, 4, 19 and 20 should be rejected as
unpatentable over Hausch in view of the Handbook, alone or in
view of other prior art.
Appeal No. 2000-1455
Application 08/911,913
8
Conclusion
The examiner’s decision to reject claims 1, 2, 4, 19 and
20 is reversed. Claim 1 is rejected pursuant to 37 CFR §
1.196(b), and the application is remanded to the examiner.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
Appeal No. 2000-1455
Application 08/911,913
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application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, § 1.196(b) AND REMANDED
Appeal No. 2000-1455
Application 08/911,913
10
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
IAC:pgg
David S. Safran
Sixbey Friedman Leedom & Ferguson, P.C.
8180 Greensboro Drive, Suite 800
McLean, VA 22102
Appeal No. 2000-1455
Application 08/911,913
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