Ex Parte Schlisner

Patent Trial and Appeal Board

Aug 10, 2016

13866329 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/866,329 04/19/2013 Dennis G. Schlisner
408 7590 08/12/2016
LUEDEKA NEELY GROUP, P.C.
P 0 BOX 1871
KNOXVILLE, TN 37901
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.
65331.Dl 1472
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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):
docketing@luedeka.com
LNG.PA TENT@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS G. SCHLISNER
Appeal2014-008720
Application 13/866,329
Technology Center 1700
Before BEYERL YA. FRANKLIN, RICHARD M. LEBOVITZ, and
WESLEY B. DERRICK, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods of manufacturing dry
adhesive backed flooring for being installed in a flat orientation on a
subfloor. The Examiner has finally rejected the claims as obvious under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The
Examiner's rejections are reversed.
STATEMENT OF CASE
This appeal is related to Appeal No. 2014-006637 of Application
12/774,955. The Examiner's rejections in the related appeal were reversed
by the Patent Trial and Appeal Board in a Decision entered Mar. 25, 2016.
Appeal2014-008720
Application 13/866,329
Appellant appeals the Examiner's final rejection of claims 5-7, 9, and
10. There are two independent claims on appeal, claims 5 and 9. Each of
the claims is directed to a methods of manufacturing dry adhesive backed
flooring for being installed in a flat orientation on a subfloor. The claims
stand rejected as follows:
1. Claims 5-7, 9, and 10 under 35 U.S.C. § 103(a) (pre-AIA) as
obvious in view of JP 2000-117863 (published Apr. 25, 2000) (English
translation from Japanese by the McElroy Translation Company) ("JP
'863").
2. Claims 7, 9, and 10 under 35 U.S.C. § 103(a) (pre-AIA) as obvious
in view of JP '863 and Urban et al. (US 2,677,635, issued May 4, 1954)
("Urban").
Claim 5 is representative and reads as follows:
5. A method of manufacturing a dry adhesive backed flooring
for being installed in a flat orientation on a subfl oor, the
method comprising the steps of:
providing a roll of a sheet flooring material provided in a
roll, the sheet flooring material having a first length, a first
width, a decorative upper surface, and an opposite under
surface;
providing a roll of a double-sided dry sheet adhesive
substantially free of volatile organic compounds, the sheet
adhesive having a second length substantially corresponding to
the first length, a second width slightly less than but
substantially corresponding to the first width, and first and
second adhesive surfaces, and
contacting the first adhesive surface to the under surface
of the sheet flooring material to marry the sheet flooring
material and the sheet adhesive to yield the dry adhesive backed
flooring,
wherein the dry adhesive backed flooring is installable on
a subfloor by contacting the second adhesive surface to the
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Appeal2014-008720
Application 13/866,329
subtloor, to yield an installed dry adhesive backed flooring that
is substantially free of bubbles and wrinkles and the second
adhesive surface of the sheet adhesive will substantially
permanently maintain the installed dry adhesive backed
flooring adhered to the subfloor such that the installed dry
adhesive backed flooring will remain substantially flat as
initially installed and not significantly rise from the subfloor,
bubble or otherwise detach from the subfloor under normal use
conditions for the dry adhesive backed flooring.
REJECTIONS
Independent claim 5 is directed to a "method of manufacturing a dry
adhesive backed flooring for being installed in a flat orientation on a
subfloor." The method has three recited steps. The only step in dispute in
both § 103 rejections is the step of "providing a roll of a double-sided dry
sheet adhesive substantially free of volatile organic compounds," where the
sheet has "first and second adhesive surfaces."
Independent claim 9 also is directed to a "method of manufacturing
dry adhesive backed flooring" which comprises the same step of providing a
"double-sided dry sheet adhesive" having "first and second adhesive
surfaces."
Claims 6 and 7 depend from claim 5. Claim 10 depends from claim 9.
We interpret both independent claims to require the first and second
adhesive surfaces of the double-side dry sheet adhesive to be dry adhesive
surfaces because the claim preamble recites "dry adhesive backed flooring"
and the sheet is a "dry sheet adhesive."
The Examiner rejected all claims based on JP '863. JP '863 describes
decorative adhesive sheets for adhering to floors and ceilings. JP '863 ,-i 1.
The issue is whether both sides of the sheet described in JP '863 has a dry
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Appeal2014-008720
Application 13/866,329
adhesive layer. Citing claim 3 of JP '863 which recites "a mesh sheet is
coated with adhesive to form an adhesive layer," the Examiner found that
the skilled worker
would have instantly understood that because the wet adhesive
would have initially permeated throughout the open structure of
the base material sheet 1. After drying, the entire surface of the
base material sheet 1 becomes adhesive, so as the dry thickness
of the adhesive layer 4 depends on the thickness of the base
material sheet, as set forth above. That is, the adhesive layer 4
is adhesive on both sides (double-sided adhesive sheet) ...
Answer 3 (emphasis added).
The Examiner's rejection is not supported by a preponderance of the
evidence. Paragraphs 10 and 11 of JP '863 each refer to "coating" a base
material to form "an adhesive layer on that." Paragraph 14 further explains:
"With the first adhesive sheet according to the present invention, a woven
fabric, a nonwoven or a mesh such as this is used as the base material sheet,
and an adhesive layer is formed on it." None of these descriptions is
consistent with the Examiner's finding that the adhesive "permeated" to the
other side of the base material.
Fig. 1 of JP '863 is an example of a woven fabric as a base material
showing an adhesive on one side only of a base material. Fig. 1 is
reproduced below.
Fig. 1 depicting an adhesive [attachment] sheet 8 has the following
elements: 1 is the base material; 2 is the warp; 3 is the weft; 4 is the
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Appeal2014-008720
Application 13/866,329
adhesive layer; 5 is the raised sections; 6 is the recess; and 7 is the peel-away
layer. JP '863 iii! 14, 16 It is explained that, when a woven fabric is used
and "coated with adhesive, the adhesive layer 4 that is formed has raised
sections 5 and recesses 6 that are derived from the aforementioned warp and
weft." Id. iJ 16. Fig. 1 shows the adhesive layer 4 on only one side of the
base material 1, not permeating it as found by the Examiner. Thus, base
material 1 of JP '863 has only one adhesive surface, not two as required by
the claims.
Fig. 2 of JP '863 shows a base material adhered on a surface sheet 9.
Id. iJ 18. As shown in Fig. 2, reproduced below, only one side of the base
material has an adhesive layer.
Fig. 2 depicting an adhesive [attachment] sheet 8 has the following
elements: 1 is the base material; 2 is the warp; 3 is the weft; 4 is the
adhesive layer; 5 is the raised sections; 6 is the recess; 7 is the peel-away
layer; and 9 is the surface sheet. Id. iJ 18. It is explained that "adhesive
layer 4 and peel-away layer 7 are formed on top of' base material 1. Id ..
Again, the Examiner's finding that the adhesive has penetrated the base
material to the underside is not supported by either the drawing or the plain
language of the patent. The drawing shows the adhesive layer 4 only one
surface of the base material.
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Appeal2014-008720
Application 13/866,329
Disclosures in additional paragraphs of JP '863 are consistent with the
adhesive being on only one surface of the base material and there being no
penetration of the adhesive: 22 ("adhesive layer that is formed on a base
material"); 25 ("a mesh sheet is coated with adhesive"); 28 ("base material
sheet was coated with acrylic adhesive so that the dry thickness would be
about 10 µm and dried, and an adhesive layer was formed in which the
height from the bottom of the recesses in the surface to the apex of the raised
sections was about 10 µm and the spacing of the raised sections is about 2
mm"). The Examiner has not provided an adequate explanation as to why
the skilled worker would have "instantly understood" that the adhesive
penetrated through the mesh to produce a base material with "first and
second adhesive surfaces" as required by the claims, when the inventors of
JP '863 do not describe this as occurring but instead describe the adhesive as
confined to one surface. Consequently, the Examiner did not meet the
burden in showing that the base material described in JP '863 is a "double-
sided dry sheet adhesive" having "first and second adhesive surfaces."
Accordingly, we are compelled to reverse the obviousness rejections 1 and
2.
REVERSED
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