Ex Parte Streeton et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10639386 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AMY B. STREETON and WILLIAM O. BURKE

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Appeal 2008-1499
Application 10/639,386
Technology Center 1700
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Decided: March 31, 2008
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Before CHUNG K. PAK, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 1, 3 through 15, and 33 through 35, all of
the claims pending in the above-identified application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appeal 2008-1499
Application 10/639,386

STATEMENT OF THE CASE
The subject matter on appeal is directed to “slip resistant mats” (Spec.
1). Further details of the appealed subject matter are recited in
representative claim 1 reproduced below:
1. A mat consisting essentially of:
a base layer having a planar top surface to which is bonded a top
layer, a bottom surface and a depth E wherein said bottom surface
includes a plurality of identically sized and shaped circular
depressions, wherein each depression of said plurality of depressions
is characterized as having a uniform depth D surrounded by straight
side walls and wherein said depth D is less than said depth E of said
base layer, said plurality of depressions providing a suction force
when at least a portion of air is expressed from within said plurality of
depressions and said mat is engaging a surface.
The Examiner has relied upon the following references as evidence of
unpatentability of the claimed subject matter:
Roberts 2,776,233 Jan. 1, 1957
Malpass WO 02/43535 A2 Jun. 6, 2002

The Examiner has rejected the claims on appeal as follows:
1) Claims 1, 3 through 15, and 33 through 35 under 35 U.S.C. §
103(a) as unpatentable over the disclosure of Malpass; and
2) Claims 1, 3 through 15, and 33 through 35 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Roberts and
Malpass.
The Appellants assert that the Examiner’s rejections are untenable.
The Appellants contend that Malpass alone, in combination with Roberts,
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would not have suggested a mat consisting essentially of a bottom surface
having a plurality of identically sized and shaped circular depressions as
required by claim 1 (App. Br. 5-11). The Appellants also contend that
Malpass alone, or in combination with Roberts, would not have suggested
“the specific thickness, spacing, shape and depth of the recesses as recited in
the dependent claims” (App. Br. 5 and 9). Further, the Appellants contend
that Malpass alone, or in combination with Roberts, would not have
suggested a rubber base layer having the hardness recited in claim 6 (App.
Br. 5 and 10). The Examiner disagrees with the Appellants’ contentions
(Ans. 4-8). Consequently, the Appellants appeal from the Examiner’s
decision rejecting the claims on appeal under 35 U.S.C. § 103(a).

RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES AND
ANALYSES
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co., v. Teleflex, Inc., 127 S. Ct. 1727, 1740-
41 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
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Application 10/639,386

F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the
references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the nature
of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(“Having established that this knowledge was in the art, the examiner could
then properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
In re Hoeschele, 406 F.2d 1403, 1406-407 (CCPA 1969) (“[I]t is proper to
take into account not only specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
There is no dispute that Malpass, like the Appellants, describes a slip
resistant floor mat for a smooth floor composed of a plurality of recessions in
the bottom surface of at least one bottom layer attached to a top layer. (See
Figures 3 and 4, together with Abstract, and pages 3-5). Figures 3, 4 and 5 of
Malpass illustrate a plurality of identically sized and shaped large circular
recessions having a uniform depth and a plurality of identically sized and
shaped small circular recessions having a uniform depth. (See page 3, ll. 10-
12). The depths of these recessions are shown to be less than the thickness of
the bottom layer. (See Malpass, Figures 3 and 4).
The dispositive question is, therefore, whether Malpass alone, or in
combination with Roberts, would have suggested a bottom surface including
“a plurality of identically sized and shaped circular depressions” within the
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meaning of 35 U.S.C. § 103(a). On this record, we answer this question in the
affirmative.
As indicated supra, Malpass teaches, inter alia, a plurality of
identically sized and shaped large circular recessions in a bottom surface of its
floor mat. Although Malpass also teaches a plurality of identically sized and
shaped small circular recessions in the same bottom surface, we determine
that the transitional phrase “consisting essentially” recited in claim 1 does not
preclude the presence of the plurality of identically sized and shaped small
circular holes or recessions taught in Malpass. See In re Herz, 537 F.2d 549,
551-52 (CCPA 1976). Both the Appellants’ and Malpass’ depressions
overcome the problems associated with the use of conventional grippers,
cleats, fasteners, frames and suction cups for reducing the movement of a mat
on a carpeted floor and provide a mat with the slip resistant property to
smooth floors. (Compare Malpass, pages 1-2, with Spec. 1-2). On this
record, the Appellants have not demonstrated that Malpass’ additional small
depressions materially affect the basic and novel characteristics of the claimed
mat. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964) (Applicants have the
burden of showing that a component in a reference would materially affect the
basic and novel characteristics of a claimed composition).
Even were we to determine that the transitional phrase “consisting
essentially” recited in claim 1 precludes the presence of Malpass’ additional
small circular depressions, our conclusion would not be altered. We find that
Malpass teaches (Malpass p. 3, ll. 10-12) that:
The existence of multiple sizes of recessions permits improved
performance on a variety of floor surfaces since larger
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recessions perform better on some surfaces and smaller
recessions perform better on others.

Implicit in this disclosure of Malpass is that a plurality of identically sized and
shaped large circular recessions alone should be used if a slip resistant floor
mat is to be used for certain specific surfaces. Thus, we concur with the
Examiner that one of ordinary skill in the art would have been led to employ
only identically sized and shaped large circular recessions in the bottom
surface of the mats of the type taught by Malpass, with a reasonable
expectation of successfully improving its slip resistant property for “some
surfaces”. Indeed, it is known to employ only a plurality of identically sized
and shaped (square) recessions in the bottom surface of a mat to improve its
slip resistance as evidenced by Roberts (Roberts, col. 1, l. 61 to col. 2, l. 8,
together with Fig. 2).
As to “the specific thickness, spacing, shape and depth of the
recesses” as recited in claims 10, 12 through 15, and 33 through 35, we find
that Malpass teaches (Malpass p. 2, l. 28 to p. 3, l. 12) that:
The size and shape specification of the recessions can be varied
and they can be positioned in a variety of arrangements. The
recessions can be any shape that is formed on the underside of
the mat, does not extend through the top of the mat . . . adjoins
the floor in a continuous manner to permit the formation of a
low pressure area or near vacuum. In one embodiment, the
recessions are two sizes of cylinders or recessed circles, one
with a width of 0.75 and a depth of 0.040” and the other with a
width of 1” and a depth of 0.063. Also, in one embodiment, the
recessions are positioned in straight rows along one axis with
the recessions in each adjacent row along such axis offset along
the perpendicular axis such that every row is identical along the
parallel axes but shifted along the perpendicular axis . . . large
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recessions perform better on some surface and smaller
recessions perform better on others.

In other words, we find that Malpass teaches the claimed specific thickness,
spacing, shape and depth of the recesses as result effective variables. Thus,
we concur with the Examiner that it is well within the ambit of one of
ordinary skill in the art to employ the optimum or workable specific thickness,
spacing, shape and depth of the recesses, such as those claimed, in the bottom
surface of the mat taught by Malpass and/or Roberts to impart desired slip
resistant properties for given surfaces. In re Boesch, 617 F.2d 272, 276
(CCPA 1980)(“[D]iscovery of an optimum value of a result effective variable
…is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456
(CCPA 1955)(“[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
As to claim 6, we find that Malpass teaches the effect of a
compression force in creating near vacuum inside the recession being
impacted against the floor to reduce movement of the mat on an intended
surface (Malpass p. 2, ll21-27 and p. 5, ll. 17-22). In other words, we
determine that Malpass, like the Appellants, recognizes the hardness
(compressibility) of the bottom rubber layer as having the effect on the slip
resistant property of its mat. Indeed, Malpass teaches forming recessions on
“a soft, low durometer rubber compound such as LD-35” (Malpass p. 3, ll. 17-
20). Thus, again we concur with the Examiner that Malpass teaches either the
claimed hardness and/or the claimed hardness of the bottom rubber layer as a
result effective variable. Boesch, 617 F.2d at 276.
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In view of the forgoing, we determine that the preponderance of
evidence weighs most heavily in favor obviousness within the meaning of 35
U.S.C. § 103(a).
ORDER
The decision of the Examiner is 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).

AFFIRMED

tc

LEGAL DEPARTMENT (M-495)
P.O. BOX 1926
SPARTANBURG, SC 29304

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