PARALLAX GROUP INTERNATIONAL, LLC (ASSIGNEE) et al.Download PDFPatent Trials and Appeals BoardMay 26, 20202020003479 (P.T.A.B. May. 26, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/013,852 12/30/2016 9289085 101342.0010US3re 5697 24392 7590 05/26/2020 FISH IP LAW, LLP 2603 Main Street Suite 1000 Irvine, CA 92614 EXAMINER TORRES VELAZQUEZ, NORCA LIZ ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/26/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/014,126 05/24/2018 9289085 101342.0010US3re2 7047 24392 7590 05/26/2020 FISH IP LAW, LLP 2603 Main Street Suite 1000 Irvine, CA 92614 EXAMINER TORRES VELAZQUEZ, NORCA LIZ ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/26/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex Parte PARALLAX GROUP INTERNATIONAL, LLC Patent Owner and Appellant ____________ Appeal 2020-003479 Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 Technology Center 3900 ____________ Before, RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected the claims as unpatentable under 35 U.S.C. § 103. Pursuant to 35 U.S.C. § 134, Patent Owner1 appeals the rejection of the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Patent Owner” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Patent Owner identifies the real party in interest as Parallax Group International, LLC. Appeal Br. 2. Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 2 STATEMENT OF CASE This is an appeal of the Examiner’s decision to reject the claims in a reexamination of U.S. Pat. 9,289,085 B2 (“the ̓ 085 patent”), which issued March 22, 2016. A first Request for Ex Parte Reexamination of the ̓ 085 patent was submitted by a third-party requester, identified as Greatmats.com Corporation, on October 28, 2016 under 35 U.S.C. §§ 301–307 and 37 C.F.R. § 1.510. The first Request was granted and assigned Serial No. 90/013,852. A second Request for Ex Parte Reexamination of the ʼ085 patent was submitted by a third-party requester, identified as Evan J. Newman, on May 24, 2018 (corrected on this date) under 35 U.S.C. §§ 301–307 and 37 C.F.R. § 1.510. The first Request was granted and assigned Serial No. 90/014,126. The two reexaminations were merged in accordance with 37 C.F.R. § 1.565(c). Decision on Merger of Proceedings (mailed Jan. 16, 2019). The Examiner finally rejected claims 1–5, 7–10, 12–15, and 22–26 as follows: Claims 1–4, 7–10, 12–14, and 22–26 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Koffler et al., WO 02/068515 A1, published Sept. 6, 2002 (“Koffler”), Luetkens et al., U.S. Pat. 5,354,402, issued Oct. 11, 1994 (“Luetkens”), Chang, U.S. Pat. 6,588,167 B2, issued Jul. 8, 2003 (“Chang”), and Gelorme et al., U.S. Pat. 4,882,245, issued Nov. 21, 1989 (“Gelorme”). Final Act. 9; Ans. 2. Claims 5 and 15 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Koffler, Luetkens, Chang, Gelorme, and McMahan, U.S. Pat. Pub. No. Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 3 2004/0237194 A1, published Dec. 2, 2004 (“McMahan”). Final Act. 15; Ans. 6. Claims 1, 22, 23, and 25 are independent claims. Claim 1 is representative. It is reproduced below (underlining and brackets relative to the original claim as it appeared in the ’085 Patent): 1. A reversible floor matting comprising: a body with an interlocking peripheral wall having a plurality of teeth and a plurality of receiving slots, the body [comprising] having only a first foamed layer and a second foamed layer [that have the same coefficient of thermal expansion]; wherein each of the first and second foamed layers is made of a foam elastomeric material that includes at least some recycled polymer; wherein the first foamed layer has a first color and the second foamed layer has a second color that is different than the first color, such that the first and second foamed layers have at least slightly different compositions, but the same coefficient of thermal expansion and the same elastomeric properties so that the first and second foamed layers respond similarly when subjected to a temperature change and a force; and wherein the first foamed layer and second foamed layer are bound together to form an undulating inner boundary therebetween having a topography of continuously rolling hills and valleys. REJECTION The Examiner found that Example 17 of Koffler describes a foam floor mat, as claimed, comprising alternating colored layers of foam which are made from the same mix of ingredients. Final Act. 10. The Examiner also found that the foam layers made by Koffler have “the same coefficient of thermal expansion and the same elastomeric properties” as required by Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 4 claim 1. The Examiner explained that because “the layers [in Koffler] are formed from the same mix of ingredients, under the same processing conditions, except for the color which is added in separate batches; it is expected that the layers will have the same coefficient of thermal expansion and the same elastomeric properties as taught by the ’085 Patent Specification (Col. 3, lines 29-33).” Id. (emphasis removed). Citing the Gelorme publication as evidence, the Examiner further stated that a person of ordinary skill in the art “would use materials with the same physical properties, such as coefficient of thermal expansion, in laminated foam materials to avoid delamination.” Id. The Examiner also stated that “problems of delamination” are “overcome” by “providing layers forming the matting with similar compositions that will have the same coefficient of thermal expansion upon foaming.” Final Act. 10–11. Luetkens is cited by the Examiner for teaching using recycled polymer as required by the claims (claim 1: “second foamed layers is made of a foam elastomeric material that includes at least some recycled polymer”). Final Act. 11–12. Chang is cited by the Examiner for its disclosure to meet the limitation of “a body with an interlocking peripheral wall having a plurality of teeth and a plurality of receiving slots.” Id. at 12– 13. McMahan is cited in the rejection of claims 5 and 15 to meet the texture limitation of these claims. Final Act. 15. Patent Owner did not provide separate arguments for the claims. The claims therefore stand or fall together. 37 C.F.R. 41.37(c)(1)(iv). Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 5 DISCUSSION All of the independent claims are directed to floor matting having first and second foam layers, where each layer has a slightly different composition, but the same coefficient of thermal expansion. Patent Owner argues that Koffler does not disclose the coefficient of thermal expansion of its foamed layers. Appeal Br. 10. Patent Owner argues that the Examiner did not cite “where Koffler teaches that the manufacturing parameters are consistent from batch to batch,” and that Koffler is “[i]n fact, silent with respect to manufacturing parameters.” Id. Patent Owner argues, citing additional evidence,2 that “the fact that different batches are made using the same equipment does not necessarily mean that the different batches are made under the same conditions because the foaming process is inherently unstable and is highly sensitive to equipment precision.” Id. at 10–11. We have considered the evidence provided by Patent Owner, but do not find it persuasive. To begin with, as noted by the Examiner, the ’085 Patent specification discloses: Preferably, the two layers have the same chemical composition so that the two layers have the same coefficient of thermal expansion and the same elastomeric properties so that the two layers work together and respond similarly when subject to temperature changes and forces. ’085 Patent, col. 3, ll. 29–33. 2 Declaration under 37 C.F.R. § 1.132 of Dr. Reza Barzegari (Barzegari Decl.) (dated May 29, 2018); Declaration under 37 C.F.R. § 1.132 of Dr. Shau-Tarng Lee (Lee Decl.) (dated May 29, 2018); Declaration under 37 C.F.R. § 1.132 of Tung-An Liu (Liu Decl.) (dated May 29, 2018); Excerpts from “Polymeric Foams: Science and Technology” (undated). Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 6 Thus, the ’085 Patent specification, itself, discloses that layers having the “same”3 composition have the “same coefficient of thermal expansion and the same elastomeric properties,” providing a basis for the Examiner’s finding that the composition disclosed in Koffler (at 50:29–51:5 (Example 17)) would have the same properties as required by the claims. We have considered, as pointed out by Patent Owner (Reply Br. 4), that Koffler discloses a range of temperatures over which the foam layers can be prepared (Koffler 50:29–51:5 (Example 17)). However, the Examiner stated, in the explanation of the rejection, that one of ordinary skill in the art had reason to use layers with the same coefficient of thermal expansion to “overcome” the problem of delamination when the layers are attached to each other. Final Act. 10. As disclosed by the cited Gelorme publication (Final Act. 10), layers with a “substantial similarity of the coefficient of thermal expansion” will have a “reduced tendency to delaminate.” Gelorme 8:60–63. Therefore, the skilled worker had reason at the time of the invention to pick the conditions which would result in the layers having the same thermal properties and to only use those that do, as found by the Examiner, to avoid delamination. Final Act. 10 (“A person having ordinary skill in the art would use materials with the same physical properties, such as coefficient of thermal expansion, in laminated foam materials to avoid 3 The claim recites that the “compositions” are “slightly different.” The Examiner found that Koffler teaches that the layers in its foam mat have the same ingredients except for having a different colorant. Final Act. 10. The Examiner found that this difference in colorant between the compositions of each layer meets the claim limitation that the composition are “slightly different.” Id. Patent Owner did not dispute the Examiner’s finding or interpretation of the claim with respect to this limitation. Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 7 delamination.”). For this reason, we are not persuaded by the evidence provided by Patent Owner that difficulties in controlling properties from batch to batch (Appeal Br. 11) and the criticality of process parameters and equipment to obtain foams with the same properties (id. at 12) undermine the obviousness rejection. The skilled worker would have known at the time of the invention to select and use layers with the same thermal expansion properties to avoid delamination when attached to each other. Patent Owner has not established that Koffler would not enable one of ordinary skill in the art at the time of the invention to pick the temperature conditions and determine the properties of the foam layers to obtain and use those foam layers with the same coefficients of thermal expansion. Patent Owner discusses the Liu declaration in the Appeal Brief in which the declarant states: 12. After much research, I was able to discover which process parameters are critical to control from batch to batch so that the different colored sheets foam at the same rate and therefore form with minimal imperfections. 13. Manufacturing dual colored mats required different equipment than the equipment used for solid color mats in order to control process parameters from batch to batch. For example, when I discovered that large temperature variations in the sheet- forming rollers was causing significant variation in the properties of the sheets from batch to batch, I obtained new equipment with more precise temperature controls (e.g., different heat transfer fluid). The better temperature control of the rollers allowed us to more precisely control the properties of the sheets from batch to batch. The new equipment allowed us to manufacture sheets that were thinner and more smooth than the sheets produced by the old equipment used for solid color mats. Liu Decl. ¶¶ 12, 13. Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 8 Liu did not establish that the skilled worker, relying on Koffler for guidance, would have been unable to make layers with the same thermal expansion properties. See Final Act. 16,4 18. Liu did not even address Koffler in the declaration. Liu also did not identify where in the ’085 Patent disclosure such enabling equipment and temperature control is disclosed that is asserted to be necessary to make layers with the same coefficient of thermal expansion. The ’085 Patent discloses that “uniform temperatures of a range of 5° C.; preferably within a range of 1° C” are used in the manufacture (at 4:15–17), but did not state that special equipment, as asserted by Patent Owner, is necessary to implement these conditions. Liu discusses “old equipment” and “new equipment” used in the studies described in the declaration, but did not establish that the equipment available to Koffler would have been unable, and would lack a reasonable expectation of success,5 to make foam batches with the same thermal 4 “Patent Owner further states that is entirely possible that KOFFLER's equipment and processes were not capable of controlling temperature with sufficient precision to consistently disperse the foaming agent in each intermediary pre-foamed sheet from batch to batch. . . . Patent Owner's arguments have been considered but are not found persuasive. It seems that all the arguments rely on speculations and not evidence that the matting material of KOFFLER that is made by a similar process to the claimed invention would not have the claimed property of thermal expansion between the two foamed layers formed of same compositions except for a different colorant by same processing in separate batches.” 5 To establish obviousness, there must be a reasonable expectation of success. In re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986). The only variable at issue is temperature. “[T]his is not the case where there are ‘numerous parameters’ to try. Rather, the only parameter to be varied is the [LED material choice].” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366 (Fed. Cir. 2007). Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 9 properties. See Final Act. 18. In fact, Liu does not even identify what equipment is considered to be “old” and “new.” Patent Owner also cites to the declaration of Dr. Lee. Dr. Lee states: Slight differences in process parameters, like mixing time, mixing temperature, roller temperatures, and cooling time from batch to batch also significantly affect the properties of polymeric foam. For example, if the mixing time and rolling temperature are too high, the melt strength will decrease and some blowing agent will be lost. If the temperatures are too low, the ingredients may not mix well. Because the equipment available in 2002 for mixing and rolling polymeric foam sheets was not precise in controlling mixing and rolling temperature, a person of ordinary skill in the art would not conclude that the EVAHWCG mat inherently has layers with matching coefficients of thermal expansion. The layer are more likely to have different properties because they were produced in separate batches. Lee Decl. ¶ 7. The EVAHWCG publication is not cited in the rejection at issue in this appeal. Dr. Lee did not address Koffler in the declaration. Dr. Lee also did not establish that the equipment available to Koffler would have been unable, and would lack a reasonable expectation of success, to make foam batches with the same thermal properties. Dr. Lee also did not identify the equipment disclosed in the ’085 Patent which permitted the asserted “precise” control to be implemented. Dr. Lee, like the Liu Declaration, does not address the disclosure in Gelorme cited by the Examiner that the skilled worker would have known to use foam layers with the same thermal expansion coefficient. Therefore, Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 10 even if there is variability in the coefficient of thermal expansion between batches, the skilled worker would have known to only use those foams with the same coefficients. Appellant also relied on the declaration by Dr. Barzegari. In this declaration, Dr. Barzegari discloses measurements of the coefficients of thermal expansion for foam samples obtained from Bruce Thrush. Barzegari Decl. ¶¶ 8, 9. The results were provided to establish that samples made of the same ingredients did not necessarily have the same thermal properties. The Examiner considered this evidence and did not find it persuasive. The Examiner stated, for example, that the “difference in CTE [coefficient of thermal expansion] values obtained is not significantly different between the red and blue layers in comparison to the values obtained for samples A3 and B3, which were described in the Liu and Barzegari Declarations as being significantly different.” Final Act. 18. Patent Owner did not respond in the Appeal Brief to this criticism. The Examiner repeated this reasoning in the Answer. Ans. 4. Patent Owner, in the Reply Brief, discusses the data in the declaration. Reply Br. 5–6. Patent Owner argues that variations in temperature between the rollers used to make the foam layers resulted in different coefficients in thermal expansion. Id. However, Patent Owner did not respond to the Examiner’s point that the blue and red layers manufactured under the same conditions and temperatures had the same coefficients of thermal expansion (e.g., in A1, blue is 273.7±14.4 and red is 276.4±10; in C1, blue is 259.5±31.5 and red is 265.5±17.4). Patent Owner did not establish that such manufacturing conditions used to make the red and blue layers in A1 and C1, for example, would not have been employed Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 11 by the ordinary skilled worker at the time of the invention, when following Koffler’s guidance in manufacturing foam layers. In fact, Patent Owner provided evidence that temperature is a known condition that affects foaming (Appeal Br.10; Barzegari Decl. ¶ 10) and therefore one of ordinary skill in the art would have known to have controlled temperature when manufacturing foam in accordance with Example 17 of Koffler. For the foregoing reasons, the obviousness rejection of claim 1 is affirmed. Claims 2–5, 7–10, 12–15, 22–26 were not argued separately and fall with claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7–10, 12–14, 22– 26 103(a) Koffler, Luetkens, Chang, Gelorme 1–4, 7–10, 12–14, 22– 26 5, 15 103(a) Koffler, Luetkens, Chang, Gelorme, McMahan 5, 15 Overall Outcome 1–5, 7–10, 12–15, 22– 26 Appeal 2020-003479 Ex Parte Reexamination Control 90/013,852 and 90/014,126 Patent U.S. 9,289,085 B2 12 TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED PATENT OWNER: FISH IP LAW, LLP 2603 Main Street, Suite 1000 Irvine, CA 92614 THIRD PARTY REQUESTER: PEQUIGNOT + MYERS LLC 90 North Coast Highway 101, Suite 315 Encinitas, CA 92024 tc Copy with citationCopy as parenthetical citation