Ex Parte Vogel

Patent Trial and Appeal Board

Oct 31, 2012

11072450 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HANS VOGEL
____________________

Appeal 2010-006887
Application 11/072,450
Technology Center 3600
____________________

Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006887
Application 11/072,450

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1-17. Appellant’s representative presented oral argument on October
18, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellant’s claimed invention relates to a flooring panel. Spec. para.
[0002]. Claims 1 and 13 are the independent claims on appeal, and claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A wooden material board, comprising a tongue
formed on at least one side edge and a groove
formed on a opposite side edge, which comprises a
pattern printed onto a top side, a first elastic
varnish layer applied to the printed pattern and a
second varnish layer applied to the first elastic
varnish layer and is harder than the first elastic
varnish layer.

EVIDENCE RELIED UPON
Prior Art
Wang
Moriau
Hansson
US 5,494,707
US 6,006,486
US 6,685,993 B1
Feb. 27, 1996
Dec. 28, 1999
Feb. 3, 2004
Windmoller US 2003/0136494 A1 Jul. 24, 2003
Appeal 2010-006887
Application 11/072,450

3
Other Evidence
Brinell and Vickers Hardness Scale and Tensile Strength Equivalent Chart,
Jul. 10, 2008, http://www.gordonengland.co.uk/hardness/brinell
_conversion_chart2.htm (hereinafter “Brinell”).

Material: Glass (SiO2), bulk , MEMSnet, An information portal for the
MEMS and Nanotechnology community, http://www.memsnet.org/material
/glasssio2bulk/, (hereinafter “MEMSnet”).

Brittleness, http://en.wikipedia.org/wiki/Brittle, (hereinafter “Wikipedia”).

Brittle, http://thesaurus.reference.com/browse/brittle (hereinafter
“thesaurus.com”).

REJECTIONS
The following rejections are before us on review:
1. Claims 1-4, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over
Hansson and Wang.
2. Claims 5-7, 9, 10, 13, 14, 16,1 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Hansson, Wang, and Moriau.
3. Claims 8 and 15 under 35 U.S.C. 103(a) as unpatentable over Hansson,
Wang, and Windmoller.

1 Claim 16 was added as a new ground of rejection in the Examiner’s
Answer. Ans. 3, 6.
Appeal 2010-006887
Application 11/072,450

4
OPINION
Claims 1-4, 11, and 12 over Hansson and Wang
Claims 1, 3, and 122
Claim 1 is directed to a wooden material board that includes a first
elastic varnish layer and a second varnish layer applied to, and harder than,
the first elastic varnish layer.
The Examiner found that Hansson discloses the subject matter of
claim 1 to include a first and second varnish layer, except that Hansson’s
first varnish layer is not elastic and Hansson’s second varnish layer is not
harder than the first varnish layer. Ans. 3-4. The Examiner found that
Wang discloses a first elastic varnish layer (wear layer base coat 31
comprised of PHOTOGLAZE® U233) and a second varnish layer (wear
layer top coat 33 comprised of PHOTOGLAZE® U249) as claimed. Ans. 4.
The Examiner concluded that it would have been obvious to “modify the
first and second varnish layers of Hansson to have the first varnish layer
being elastic and the second varnish layer being inelastic and harder than the
first elastic varnish layer as taught by Wang in order to provide a wear
surface that meets the highest resistance standards for staining, marring,
soiling and scuffing.” Ans. 4-5.
In support of the finding that Wang discloses a second varnish layer as
claimed, the Examiner reasons that because “the hardness of the material
increases with the value of the tensile strength,” a tensile strength of 5,320
pounds per square inch (psi) for PHOTOGLAZE® U249 (the second

2 Appellant argues claims 1, 3, and 12 as a group, we select claim 1 as
representative, and claims 3 and 12 stand or fall with claim 1. App. Br. 5-
14; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
Appeal 2010-006887
Application 11/072,450

5
varnish layer) indicates a greater hardness than a tensile strength of 1,100 psi
for PHOTOGLAZE® U233 (the first elastic varnish layer). Ans. 4.
It is undisputed that PHOTOGLAZE® U249 has a tensile strength
roughly five times greater than PHOTOGLAZE® U233 (5,320 psi versus
1,100 psi). See Ans. 4; App. Br. passim; Reply Br. passim; see also Wang,
table 2. Further, the Examiner has submitted evidence and technical
reasoning explaining how hardness is related to tensile strength. Ans. 4
(Brinell chart). Thus, the Examiner made a prima facie case that Wang’s
second varnish layer (wear layer top coat 33 comprised of PHOTOGLAZE®
U249) has a greater hardness than the first varnish layer (wear layer base
coat 31 comprised of PHOTOGLAZE® U233), and the burden shifted to
Appellant to show that such is not the case. See In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (citing In re King, 801, F.2d 1324, 1327 (Fed. Cir.
1986) and In re Ludtke, 441 F.2d 660, 664 (CCPA 1971)) (“[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.”).
In response, Appellant argues that the Examiner has only established
Wang’s first and second varnish layers have different tensile strength and
has not established that Wang’s second layer (wear layer top coat 33
comprised of PHOTOGLAZE® U249) is harder than the first layer (wear
layer base coat 31, e.g., PHOTOGLAZE® U233) as claimed. App. Br. 7-8.
Specifically, Appellant concedes that tensile strength is proportionally
related to hardness for some materials, but contends that such a correlation is
not universal for all materials. App. Br. 8-9; see also Reply Br. 8-9 (noting
that hardness conversion for different materials cannot be made
Appeal 2010-006887
Application 11/072,450

6
mathematically exact, and that the correlation between hardness and tensile
strength differs by material). Appellant also points out that the Brinell Chart
cited by the Examiner is not disclosed as being based upon or representative
of PHOTOGLAZE®, and that the hardness of coatings, such as
PHOTOGLAZE®, is not measured by the Vickers or the Brinell hardness
tests. App. Br. 9-10. For the reasons that follow, these contentions are not
persuasive.
First, we agree with Appellant that hardness may be measured by
different methods and scales and that conversion between these methods and
scales cannot be accomplished for a wide range of materials. See Brinell,
para. 1. However, these facts shed no light on the relationship between
tensile strength and hardness.
Second, the excerpt provided by Appellant establishes that there is a
correlation between hardness and tensile strength so that tensile strength
may be estimated based upon hardness test results3 for a given material, but
the precise conversion varies by material tested. App. Br. 9 (citing Material
Hardness, http://www.calce.umd.edu/general/Facilities/Hardness_ad_.htm4).
Appellant’s evidence demonstrates only that the relationship between
hardness and tensile strength varies to some degree between materials, and
does not suggest that for some materials there is no such relationship.
Third, we agree with Appellant’s assertion that the Brinell Chart is not
disclosed as based upon, or representative of, PHOTOGLAZE®. However,
such assertion is inapposite in that the Examiner did not find that the Brinell
Chart is based upon testing of PHOTOGLAZE®. Rather, the Examiner

3 Because hardness results are easier to obtain than tensile strength results.
4 Though omitted by Appellant, this reference also states that, a “well known
correlation links hardness and tensile strength.”
Appeal 2010-006887
Application 11/072,450

7
found that this chart is evidence of the relationship between hardness and
tensile strength.
Fourth, we agree with Appellant that hardness for a coating such as
like PHOTOGLAZE® is measured by a method other than that shown in the
Brinell chart. As previously stated, hardness may be measured by different
methods and scales (e.g., pendulum damping test and Brinell hardness).
However, this assertion is unpersuasive because it also sheds no light on the
relationship between hardness and tensile strength.
Beyond these unpersuasive assertions, we note that Appellant could
have submitted evidence regarding the relative hardness of
PHOTOGLAZE® U249 and PHOTOGLAZE® U233, but chose not to
submit such evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(Appellant’s arguments do not take the place of evidence); CFMT, Inc. v
Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (an
applicant may submit objective factual evidence to the PTO during
prosecution). In light of the above, Appellant has failed to cogently
demonstrate error in the Examiner’s finding.
Appellant also challenges whether the claimed subject matter would
have been obvious over Hansson and Wang.
First, Appellant argues that it would not have been obvious to
combine Hansson and Wang because, “Wang is not concerned with
improving the footfall properties, but instead is aimed at increasing the wear
resistance of the coating (for PVC or other vinyl surface) by additional
coating on bases of a UV -curable acrylate.” App. Br. 12. In other words,
Appellant argues that Wang is not directed to the same problem as the
claimed subject matter. Such argument is unpersuasive because the rationale
Appeal 2010-006887
Application 11/072,450

8
for the proposed combination may be directed to problems other than those
addressed by Appellant. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) (“Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”)
Second, Appellant argues that the Examiner has not considered the
prior art as a whole in that the rejection ignores: 1) “[h]ardness conversion
between different methods and scales cannot be made mathematically exact
for a wide range of materials”, 2) that the correlation between hardness and
tensile strength cannot be extrapolated to include other materials not tested,
and 3) that the Brinell-Vicker scale cited by the Examiner is not disclosed as
applicable to PHOTOGLAZE. Reply Br. 8-9 (citing W.L. Gore & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).
In W.L. Gore & Assoc., Inc. v. Garlock, Inc., the court held that a
prior art reference must be considered in its entirety, i.e., as a whole,
including portions that would lead away from the claimed invention. W.L.
Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d at 1550. In the case at hand,
the Brinell Chart is not relied upon as a prior art reference; rather, it is relied
upon as evidence that “the hardness of the material increases with the value
of the tensile strength.” See Ans. 4. For that reason, the holding in W.L.
Gore is inapposite to the case at hand, and Appellant’s argument is
unpersuasive. Further, as explained, supra, regarding the contention that
Wang does not disclose a second varnish layer as claimed, the Examiner has
properly considered this evidence.
Third, Appellant argues that the proposed combination is the result of
hindsight because, “the rejection focuses only on the differences between the
Appeal 2010-006887
Application 11/072,450

9
claims and the prior art, and not whether the claimed invention as a whole
would have been obvious.” App. Br. 12-14. This contention is not
supported by an example of how the rejection fails to consider whether the
invention as a whole was obvious, nor is it accompanied by a citation to any
portion of the Examiner’s Answer. Rather, this contention recites the law on
hindsight without a cogent explanation of how that law applies to the facts of
this case. As such, this contention is unconvincing.
Appellant’s challenges are also unpersuasive because they do not
directly address the rationale provided by the Examiner, namely, that the
proposed modification would increase the resistance of the wear layers (e.g.,
resistance to staining, marring, soiling, and scuffing). Ans. 5, 10.
Accordingly, we sustain the rejection of claims 1, 3, and 12.

Claim 2
Claim 2 depends from independent claim 1 and recites, “wherein the
second varnish layer is inelastic.” Thus, claim 1 calls for the second varnish
layer to be harder than the first varnish layer and claim 2 further limits the
second varnish layer to be inelastic. The Specification does not provide a
lexicographical definition of inelastic, which the Examiner interprets as “a
material that has a low value of elasticity.” Spec., passim; Ans. 10. Spec.
passim. Appellant presents no direct argument against this claim
construction, and consistent with the Examiner’s claim construction, asserts
that elasticity refers to a material’s ability to deform under stress and return
to its original shape when that stress is removed. App. Br. 14-15. We
discern nothing in the Specification inconsistent with the ordinary meanings
put forth by the Examiner and Appellant.
Appeal 2010-006887
Application 11/072,450

10
Therefore, claim 2 calls for the second varnish layer to have a low
value of elasticity (ability to return to original shape after removal of stress
that induces deformation).
The Examiner reasons that Wang’s second varnish layer (wear layer
top coat 33, e.g., PHOTOGLAZE® U249) has a low value of elasticity
because PHOTOGLAZE® U249 failed the Mandrel bend flexibility test.
Ans. 4.
Wang discloses that if within five minutes of a specimen being stapled
tightly around the testing mandrel cracks are visible to the naked eye, the
specimen fails the Mandrel bend flexibility test. Wang, col. 15, ll. 48-59.
Wang discloses that PHOTOGLAZE® U249 failed the Mandrel bend
flexibility test for mandrels of 0.25, 0.5 and 1 inches in diameter. Wang,
table 3. Because PHOTOGLAZE® U249 cracks when deformed under
stress, a person of ordinary skill in the art would recognize that the material
will not fully return to its original shape. Given this, the Examiner’s finding
that PHOTOGLAZE® U249 has a low value of elasticity has a sound basis
and the burden has shifted to Appellant to demonstrate that such is not the
case. See In re Spada, 911 F.2d at 708.
In response, Appellant argues that “tensile strength and elasticity are
different physical properties.” App. Br. 14; see also App. Br. 15. The
Examiner’s reasoning is based upon a correlation between the Mandrel bend
flexibility test and elasticity, not tensile strength and elasticity. For that
reason, Appellant’s argument is inapposite. Appellant has failed to cogently
demonstrate error in the Examiner’s finding.
Accordingly, we sustain the rejection of claim 2.

Appeal 2010-006887
Application 11/072,450

11
Claim 4
Claim 4 depends from claim 1 and recites, “wherein the first and
second varnish layers are transparent.”
As discussed, supra, we conclude that the subject matter of claim 1
would have been obvious in view of Hansson and Wang. The additional
distinction at issue with regard to claim 4 is that the first and second varnish
layers must also be transparent. With this distinction in mind, we evaluate
the Examiner’s rejection in light of Appellant’s arguments.
The rejection of claim 4 must be seen in context, namely, that it is a
further modification of the combination used for the rejection of claim 1.
Regarding claim 1, the Examiner found, and Appellant does not contest, that
Hansson discloses a wooden material board having a pattern (upper
decorative layer 2) printed on the top side, covered by translucent layers.
Ans. 3; App. Br. 5-16; Reply Br. 7-11; Hansson, col. 7, l. 22; fig. 1. Further
the rejection proposes to “modify the first and second varnish layers of
Hansson to have the first varnish layer being elastic and the second varnish
layer being inelastic and harder than the first elastic varnish layer as taught
by Wang.” Ans. 4-5. Regarding claim 4, the Examiner concluded that it
would have been obvious to further modify the first and second varnish
layers disclosed by Wang to both be transparent like Wang’s first layer 29,
allowing the printed surface (Hansson’s upper decorative layer 2) to be seen
and enhancing the décor. Ans. 5 (addressing only the second varnish layer),
11 (changing to address modifying both the first and second varnish layers).
Appellant argues that Hansson does not disclose transparent layers.
App. Br. 16; Reply Br. 9-11. The Examiner did not find that Hansson
discloses transparent layers, but rather concluded that such a modification
Appeal 2010-006887
Application 11/072,450

12
would have been obvious in view of Wang’s first layer 29 which is
transparent. Ans. 3, 5, 11. Thus, Appellant’s argument is unpersuasive
because it does not address the rejection as articulated by the Examiner, and
is an individual attack on the references.
Appellant also argues that Wang’s first layer 29 is comprised of PVC
and not varnish as claimed. App. Br. 16; Reply Br. 9-11. This argument
also does not address the rejection as articulated by the Examiner. The
Examiner did not find that Wang’s first layer 29 is varnish; rather the
Examiner concluded it would have been obvious to modify the proposed
combination of Hanssen’s and Wang’s first elastic varnish layer (wear layer
base coat 31, e.g., PHOTOGLAZE® U233) and a second varnish layer
(wear layer top coat 33, e.g., PHOTOGLAZE® U249) to be transparent as
first layer 29 is transparent.
Appellant argues that the proposed combination is the result of
impermissible hindsight. Reply Br. 11. Such contention parallels the
hindsight contention used against the rejection of claim 1, as addressed,
supra, and is unpersuasive because it simply recites the law on hindsight
without a cogent explanation of how that law applies to the facts of this case.
Accordingly, we sustain the rejection of claim 4.

Claim 11
Claim 11 depends from claim 2 which depends in turn from claim 1.
Thus, claim 11 contains the limitations of claims 1 and 2. Appellant repeats
the arguments used for claims 1 and 2, which are unpersuasive for the
reasons given supra. Accordingly, we sustain the rejection of claim 11.

Appeal 2010-006887
Application 11/072,450

13
Claims 5-7, 9, 10, 13, 14, and 17 over Hansson, Wang, and Moriau
Claims 5-7 and 9
Claims 5-7 and 9 depend, directly or indirectly, from claim 1.
Appellant argues these claims as a group, and repeats the arguments used
against claim 1. App. Br. 17. Thus, for the reasons given in the analysis of
the rejection of claim 1, supra, we also sustain the rejection of claims 5-7
and 9.

Claim 10
Claim 10 depends indirectly from claim 1, and recites, “wherein the
counteracting layer is structured and arranged to prevent bending as a result
of tensile forces occurring because of the first and second varnish layers.”
The Specification states that the topside 10 of the wooden material board is
covered with varnish layers 3 and 4 that dampen footfalls and prevent
surface wear, and the underside 9 of the wooden material board may be
provided with a counteracting layer. Spec. paras. [0009], [0017].
The Examiner found that Moriau’s backing layer 58 is capable of
preventing bending as a result of tensile forces. Ans. 6. Appellant argues
that Moriau makes no mention that backing layer 58 prevents bending as a
result of tensile forces as claimed. App. Br. 16-17.
Appellant is correct that Moriau does not explicitly state the backing
layer 58 prevents bending as a result of tensile forces. Moriau, passim.
However, Moriau discloses laminated flooring that includes a core 8, a
protective top layer 56, and a backing layer 58 applied to the underside 7.
Moriau, col. 8, l. 59 - col. 9, l. 11; figs. 2-11. Backing layer 58 forms a
counterbalancing element for the top layers and guarantees the stability of
Appeal 2010-006887
Application 11/072,450

14
the form of the floor panel 1. Moriau, col. 9, ll. 11-15. Because Moriau’s
backing layer 58 ensures the stability of the form of the floor panel 1, it
prevents bending as a result of tensile forces.
Appellant also argues that, “the Examiner has not articulated how, in
combination, each element merely performs the same function as it does
separately, or that such a modification would have produced expected
results.” App. Br. 19. The Examiner correctly points out that the rejection
is not based upon the rationale mentioned by Appellant, but rather is based
upon a teaching, suggestion or motivation in the reference, namely, to
guarantee the stability of the floor panel. Ans. 12-13; see also Ans. 7.
Appellant’s argument is unconvincing because it fails to address the
rejection as articulated by the Examiner.
Accordingly, we sustain the rejection of claim 10.

Claims 13, 14, and 17
Independent claim 13 is directed to a wooden material board that
includes a first elastic varnish layer and a second inelastic varnish layer
wherein both layers are transparent. Thus, claim 13 is similar to claim 4.
Appellant repeats the arguments used against the rejection of claims 1, 2,
and 4. App. Br. 21-22. These arguments are unpersuasive for the reasons
discussed with respect to each of these claims, supra.

Claim 16
Claim 16 depends indirectly from claim 13, and recites, “further
comprising a counteracting layer on the underside which prevents the panel
Appeal 2010-006887
Application 11/072,450

15
from bending as a result of tensile forces occurring because of the first layer
and the second layer.”
Appellant argues that the Examiner misconstrues the limitation of
claim 16 regarding the counteracting layer as an intended use. Reply Br. 3.
While the Examiner initially refers to the limitation at issue as an intended
use, Appellant’s argument ignores that the Examiner goes on to find that the
proposed combination discloses the structure (counteracting layer) of claim
16 and that such layer is capable of performing the function of “preventing
the panel from bending” as recited in claim 16. See Supp. Ans. 4. We agree
with the Examiner’s interpretation that claim 16 calls for a counteracting
layer having a structure capable of preventing bending as a result of tensile
forces occurring because of the first and second layers.
Appellant argues that the Examiner has improperly grouped claim 16
with claim 10, failed to address the language of claim 16, and thus has
improperly based the rejection on the “gist” of the invention. Reply Br. 6.
Significantly, Appellant’s argument quotes portions of claims 10 and 16, but
fails to identify any difference in the scope of the two claims. In other
words, Appellant asserts that the Examiner failed to address the differences
between claim 16 and claim 10, yet Appellant does not identify any such
differences. Further, Appellant’s assertion that the Examiner failed to
address the language of claim 16 is incorrect. The Examiner specifically
found that “Moriau discloses a wooden material board comprising a
counteracting layer (58) on an underside (7) that is capable of being
structured and arranged to prevent bending as a result of tensile forces
occurring because of the first and second varnish layers.” Supp. Ans. 35

5 Refers to the Supplement Examiner’s Answer dated Jan. 7, 2010.
Appeal 2010-006887
Application 11/072,450

16
(citing to Moriau, col. 9, ll. 10-15 and Fig. 2). Appellant’s argument does
not cogently explain an error in this finding.
Appellant repeats the argument that Moriau’s backing layer 58 is not a
counteracting layer as claimed. Reply Br. 3. Such argument is unpersuasive
for the reason given in the analysis of claim 10, supra.
Appellant goes on to assert that even if Moriau’s backing layer were a
counteracting layer as claimed, the proposed modification would not have
been obvious. Specifically, Appellant contends that Moriau’s backing layer
58 is intended to counterbalance top layers that include melamine resin and a
melamine-impregnated paper layer, while in contrast, Hansson’s top layers
include a lacquer layer and do not use a resin-impregnated decorative paper.
Reply Br. 4. Due to these differences, Moriau’s backing layer 58 would not
perform the same function in the proposed combination as in Moriau and the
results would not have been predictable. Id.
Appellant argues that Moriau’s backing layer 58 will not perform the
same function on Hansson’s wooden material board, yet fails to identify
what function will not be performed. Further, no relevant evidence in
support of this argument was submitted. In re Pearson, 494 F.2d at 1405.
Nor does Appellant provide a cogent explanation of why such a modification
would not have been predictable. With regard to a counteracting layer,
Appellant’s Specification states only that underside 9 may be provided with
a counteracting layer if necessary. Spec. para. [0017]. The Specification
contains no statement that the addition of such a layer produces unexpected
results. For these reasons, Appellant’s argument is not persuasive.
Consequently, we sustain the rejection of claim 16.

Appeal 2010-006887
Application 11/072,450

17
Claims 8 and 15 over Hansson, Wang, and Windmoller
Claim 8 depends from claim 1, and claim 15 depends indirectly from
independent claim 13. Appellant argues for the patentability of claims 8 and
15 based upon their dependence from independent claims 1 and 13,
respectively. These arguments are unpersuasive for the reasons discussed
with respect to each of these claims, supra.

DECISION
We affirm the Examiner’s decision to reject claims 1-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Klh