Ex Parte Tian et al

Board of Patent Appeals and Interferences

Sep 28, 2007

10448758 (B.P.A.I. Sep. 28, 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is not binding precedent of the Board.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 DONG TIAN,
RALPH W. WRIGHT, JR., and
SCOTT WHALEN
____________

Appeal 2007-3374
Application 10/448,758
Technology Center 1700
____________

Decided: September 28, 2007
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, 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 through 23. Claims 24 through 45, the
other claims pending in the above-identified application, stand withdrawn
from consideration as being directed to a non-elected invention. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appeal 2007-3374
Application 10/448,758

STATEMENT OF THE CASE
The subject matter on appeal is directed to surface coverings, such as
floor coverings and wallpaper, “having difference in gloss in selected
regions or zones . . . ” (Specification 1, para. 001). Further details of the
appealed subject matter are recited in representative claim 1 reproduced
below:

1. A surface covering comprising:

a) a surface covering substrate having a top surface and a
bottom surface,

b) a primer overlying a portion of the top surface of the
surface covering substrate, wherein the primer comprises a
flatting agent, and

c) a top coat overlying at least a portion of the primer and
overlying substantially all of the top surface of the surface
covering substrate,

wherein the top coat overlying the primer has a gloss level
less than the gloss of the top coat not overlying the primer.

The Examiner has relied upon the following references:
Carder US 3,966,572 Jun. 29, 1976
Mawson US 4,172,169 Oct. 23, 1979
Schneider US 4,207,368 Jun. 10, 1980
Sigel ‘501 US 2002/0168501 A1 Nov. 14, 2002
MacQueen US 6,759,096 B2 Jul. 6, 2004
Sigel ‘625 US 6,890,625 B2 May 10, 2005

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Application 10/448,758

The Examiner has rejected the claims on appeal as follows:
1. Claims 1 through 6, 14, and 16 through 18 under 35 U.S.C.
§ 102(a) as anticipated by the disclosure of Mawson;
2. Claims 7 through 10 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Mawson;
3. Claims 1 through 11 and 14 through 23 under 35 U.S.C.
§ 103(a) as unpatentable over the combined disclosures of Sigel ‘501 and
Carder;
4. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Sigel ‘501, Carder, and Schneider;
5. Claims 1 through 11 and 14 through 23 under 35 U.S.C.
§ 103(a) as unpatentable over the combined disclosures of MacQueen and
Carder;
6. Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of MacQueen, Carder, and Schneider; and
7. Claims 1 through 23 under the judicially-created doctrine of
obviousness-type double patenting as unpatentable over Claims 1 through 36
of Sigel ‘625 in view of Carder.
The Appellants contend that the Examiner erred in rejecting the
claims on appeal. This appeal ensues.
ISSUES
1. Has the Examiner demonstrated that Mawson clearly and
unequivocally describes expressly or inherently each and every limitation
recited in claim 1 within the meaning of 35 U.S.C. § 102(b)?
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Application 10/448,758

2. Has the Examiner identified a reason that would have prompted one
of ordinary skill in the art to employ a flatting agent in an inner ink layer
underneath of a photo-curable top coat having desired differential gloss
within the meaning of 35 U.S.C. § 103(a)?

PRINCIPLES OF LAW, FACTUAL FINDINGS, AND ANALYSES
ANTICIPATION
For a § 102(b) rejection to be proper, the Examiner must demonstrate
that the applied prior art clearly and unequivocally describes each and every
element of a claimed invention, without any need for picking, choosing, and
combining various disclosures therein. In re Arkley, 455 F.2d 586, 587-88,
172 USPQ 524, 526 (CCPA 1972). When the Examiner relies upon a
theory of inherency, “the [E]xaminer must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990)
(emphasis omitted). It must be emphasized that inherency “may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” Ex
parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
Applying the above principles of law to the present situation, we
concur with the Appellants that the Examiner has not established a prima
facie case of anticipation within the meaning of 35 U.S.C. § 102(b). As
correctly pointed by the Appellants (Br. 10-17), Mawson does not teach,
much less clearly and unequivocally teach, employing silica (delustrant) in
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Appeal 2007-3374
Application 10/448,758

an inner layer completely covered by an outer layer (col. 4, ll. 20-43). We
find that Mawson teaches employing chemically different polymers and/or
delustrants, such as silica, to first and second layers exposed to the outer
environment to provide differential gloss (id.). For those embodiments
involving in a first inner layer completely covered by a second outer layer,
Mawson clearly states at col. 3, ll. 2-7:
[A]s explained in more detail below when a profiled effect only
is desired, without differences in gloss, the first [inner] layer
may be discontinuous and the second [outer] layer may
completely overlie the first layer, so that the differences in
profile arise at least in part from the deposits of the first layer.

Nowhere does Mawson teach adding a delustrant (corresponding to the
claimed flattening agent) to the unexposed inner layer.
Accordingly, we are constrained to agree with the Appellants that
Mawson does not expressly or inherently teach employing a delustrant
(corresponding to the claimed flatting agent) in an inner discontinuous layer
completely covered by an outer layer to provide differential gloss within the
meaning of 35 U.S.C. § 102(b).

OBVIOUSNESS
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 (e.g.,
unexpected results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
17-18, 148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject
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Application 10/448,758

matter of a claim would be 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, 82 USPQ2d 1385, 1396 (2007) quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006). The
analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements as the new invention does.” KSR,
127 S. Ct. at 1741, 82 USPQ2d at 1396.

REJECTION BASED ON MAWSON
As evidence of obviousness of the subject matter defined by claims 7
through 10 under 35 U.S.C. § 103, the Examiner takes the position that the
determination of optimum or workable thicknesses of the first and second
layers taught by Mawson is well within the ambit of one of ordinary skill in
the art (Answer 4-5). However, as indicated supra, Mawson is silent as to
employing a flattening agent in an inner layer that is completely covered by
an outer layer. Nevertheless, the Examiner has not identified any reason
why one of ordinary skill in the art would have prompted to employ a
flattening agent in an inner layer hidden behind an outer layer. Accordingly,
we are constrained to agree with the Appellants that the Examiner has not
established a prima facie case of obviousness within the meaning of
35 U.S.C. § 103(a).

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Appeal 2007-3374
Application 10/448,758

REJECTIONS BASED ON SIGEL ‘501, MACQUEEN, AND SIGEL ‘625
Appellants do not dispute the Examiner’s finding that Sigel ‘501,
MacQueen, and Sigel ‘625 all teach and/or claim applying an ink pattern
containing a photoinitiator, thermal initiator, and/or a cure altering agent on
a substrate and then coating the substrate and the pattern with a UV-curable
coating composition to provide the claimed differential gloss, i.e., the top
coat overlying the primer (corresponding to the ink pattern) has gloss level
less than the gloss of the top coat not overlying the primer (ink pattern)
(Sigel ‘501. p. 2, para. 0012 and 0013, MacQueen, cols. 8-10, and Sigel
‘625, claims 1-36).
The dispositive question is, therefore, whether the Examiner has
identified a reason that would have prompted one of ordinary skill in the art
to employ a flattening agent in an ink pattern completely covered by a
photo-curable coating composition within the meaning of 35 U.S.C. § 103.
On this record, we answer this question in the negative.
As acknowledged by the Appellants (Br. 17), Carder teaches that a
flattening agent can be used in photo-curable compositions or photo-curable
inks to provide differential gloss. However, nowhere does Carder teach or
suggest employing a flattening agent in the inner ink layer completely
covered by a photo-curable coating composition. In fact, we find that Sigel
‘501, MacQueen and Sigel ‘625 all teach employing a flattening agent in the
top photo-curable layer to obtain differential gloss (Sigel ‘501, pp. 1-2, para.
0011, p. 4, para. 0037, and p. 5, para. 0061, MacQueen, col. 14, ll. 41-67,
and Sigel ‘625, claim 1). Moreover, as indicated supra, Sigel ‘501,
MacQueen and Sigel ‘625 already obtain the claimed differential gloss in the
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Application 10/448,758

selected areas via including a curing agent or cure altering agent to the ink
pattern. Finally, Schneider is not relied on to teach or suggest the addition
of a flattening agent to the inner ink layer (Answer 6-9). Hence, we do not
find any reason or explanation proffered by the Examiner that would have
prompted one of ordinary skill in the art to employ a flattening agent in the
inner ink layer covered by a photo-curable coating composition having
desired differential gloss. See Answer in its entirety.
Accordingly, we are constrained to agree with the Appellants that the
Examiner has not established a prima facie case of obviousness within the
meaning of 35 U.S.C. § 103 or a prima facie case of unpatentability within
the meaning of the judicially-created doctrine of obviousness-type double
patenting.
ORDER
The decision of the Examiner is reversed.

REVERSED

tf/ls

ARMSTRONG WORLD INDUSTRIES, INC.
LEGAL DEPARTMENT
P. O. BOX 3001
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