Raymond Fedeli et al.

Patent Trials and Appeals Board

Dec 8, 2020

2020000802 (P.T.A.B. Dec. 8, 2020)

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.
13/169,473 06/27/2011 Raymond L. Fedeli 0011881USU/4709 2017
27623 7590 12/08/2020
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
SALVATORE, LYNDA
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
12/08/2020 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 RAYMOND L. FEDELI,
DANE R. JACKSON, BRIAN DENNIS KRATZER,
MARK S. WOYTOWICH, and DANIEL A. SILVER
____________

Appeal 2020-000802
Application 13/169,473
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 28–30, 34, 35, 37–39, 42, and 43. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies New Pig Corporation as the real party in
interest. Appeal Br. 1.
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BACKGROUND
The invention relates to adhesive backed absorbent mats. Spec. ¶ 2.
Claim 37 is the sole independent claim on appeal and reads as follows:
Claim 37. An absorbent mat for covering a floor
surface, consisting of:
a single absorbent layer having a first surface and a
second surface opposite the first surface, wherein the second
surface is an exterior upper surface of the absorbent mat, the
absorbent layer made of a material selected from the group
consisting of polyester and polypropylene, the exterior upper
surface being fluid permeable;
an extruded polyethylene based resin layer being directly
connected to the first surface of the absorbent layer;
a reinforcing backing layer having a first surface that is
directly connected to the extruded polyethylene based resin
layer on a side opposite the absorbent layer and having an
opposed second surface, the reinforcing layer being made of
polyethylene,;
a pressure sensitive adhesive material layer having a first
surface directly connected to the second surface of the
reinforcing layer and having a second surface that forms an
exposed exterior bottom surface of the absorbent mat, wherein
the reinforcing layer supports the pressure sensitive adhesive
material layer,
wherein the pressure sensitive adhesive material layer is
an acrylic pressure sensitive adhesive, wherein the pressure
sensitive adhesive layer covers the entire second surface of the
reinforcing layer, and wherein the pressure sensitive adhesive
has a peel value of from 2 to 35 ounces per inch, and
wherein the exposed exterior bottom surface of the
pressure sensitive adhesive material layer releasably adheres to
the exterior upper surface of the absorbent layer when in
contact with the absorbent layer, and wherein when the pressure
sensitive adhesive material layer releases from the exterior
upper surface of the absorbent layer, the pressure sensitive
adhesive does not leave a residue on the exterior upper surface
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of the absorbent layer and the exterior upper surface is not
marred, and
wherein the exposed exterior bottom surface of the
pressure sensitive adhesive material layer releasably adheres to
a floor surface when not in contact with the absorbent layer and
positioned on the floor surface.
Appeal Br. 14 (Claims Appendix).
REJECTIONS
I. Claim 43 stands rejected under 35 U.S.C. § 112, first paragraph, for
lack of written descriptive support.
II. Claims 29, 30, 34, 35, 37–39, 42, and 43 stand rejected under 35
U.S.C. § 103 as unpatentable over Rockett,2 Prentice3 and Benedek.4
III. Claim 285 stands rejected under 35 U.S.C. § 103 as unpatentable over
Rockett, Prentice, Benedek, and Gruenbacher.6
OPINION
Rejection I: lack of written description
Claim 43 recites “a peel value of less than 15 ounces per inch.” The
Examiner reads that recitation as encompassing peel values of 0–1.9999
ounces per inch, and concludes the range of 0–1.9999 is not adequately

2 US 4,609,580, issued September 2, 1986 (“Rockett”).
3 US 3,676,242, issued July 11, 1972 (“Prentice”).
4 ISTVAN BENEDEK, (CITATION: HANDBOOK OF PRESSURE-SENSITIVE
ADHESIVES AND PRODUCTS, NOV. 2008, 8.1.1.2 UNBALANCED
FORMULATION).
5 Claim 28 depends from claim 37. The Examiner apparently inadvertently
omits Benedek from the statement of rejection applied against claim 28. See
Final Act. 7 (stating claim 28 is rejected over prior art “as applied to claim
37” and further in view of Gruenbacher).
6 US 2007/0020433 A1, published January 25, 2007 (“Gruenbacher”).
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described in the Specification. Final Act. 4 (“The specification provides
support for a range of about 2 ounces per inch to about 35 ounces per inch,
but does not provide support for the full range of less than 15 ounces per
inch, which would include a range of 0–1.9999.”); Ans. 8 (“The recitation of
‘less than about 15 ounces per inch’ would include all values less than 2 and
thus is not supported.”).
Claim 37 recites a pressure sensitive adhesive having “a peel value of
from 2 to 35 ounces per inch.” Under the Examiner’s interpretation, claim
43 encompasses an overlapping range of peel values that is incompatible
with the range recited in parent claim 37. Appellant does not dispute that
interpretation. See Appeal Br. 11 (“Independent claim 37 recites a range of
2–35 ounces per inch, while claim 43 recites an overlapping range of less
than 15 ounces per inch.”); Reply Br. 4 (proposing to rewrite claim 43 in
independent form “while substituting the range of 2–35 with less than 15
ounces per inch”). In light of Appellant’s apparent acknowledgement
regarding the intended scope of claim 43, we determine claim 43 is
indefinite and improperly dependent. See Multilayer Stretch Cling Film
Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016)
(“A dependent claim that contradicts, rather than narrows, the claim from
which it depends is invalid.” (citing 35 U.S.C. § 112(d)); Trs. of Columbia
Univ. v. Symantec Corp., 811 F.3d 1359, 1366–67 (Fed. Cir. 2016) (holding
that claims that were internally contradictory were invalid as indefinite).
For the foregoing reasons, we enter new grounds of rejection of claim
43 under 35 U.S.C. § 112, second and fourth paragraphs. In light of our
indefiniteness determination, we decline to reach the Examiner’s rejection
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for lack of written description. In re Steele, 305 F.2d 859, 862–63 (CCPA
1962).
Rejection II: Obviousness over Rockett, Prentice, and Benedek
With regard to the Examiner’s rejection of claims 29, 30, 34, 35, 37–
39, 42, and 43 under 35 U.S.C. § 103, Appellant argues only claim 37. See
Appeal Br. 3–11. We address Appellant’s arguments regarding claim 37
below. Claims 29, 30, 34, 35, 38, 39, 42, and 43 stand or fall with claim 37.
Relevant to Appellant’s arguments on appeal, the Examiner finds
Rockett discloses an absorbent floor mat meeting essentially all of the
features recited in claim 37, except Rockett does not disclose an extruded
polyethylene based resin layer. Final Act. 4–5. Particularly, the Examiner
finds Rockett’s disclosed floor mat comprises a porous non-woven
polyolefin wear layer bonded to an absorbent layer. Id. The Examiner reads
Rockett’s wear layer on the recited absorbent layer, and reads Rockett’s
absorbent layer on the recited backing layer. Id. The Examiner finds
Prentice teaches use of extruded polyethylene resin for bonding non-woven
material layers, and that Prentice would have provided one of ordinary skill
in the art with a reason to use extruded polyethylene resin for bonding the
non-woven wear and absorbent layers in Rockett’s floor mat. Id. at 5–6.
Appellant argues Prentice discloses forming a resin layer film
intended to cover a maximum area of a surface to which the resin is applied.
Appeal Br. 5. Appellant contends substituting such a film for Rockett’s
bond areas would preclude transmission of liquid from the wear layer to the
absorbent layer, contrary to Rockett’s purpose. Id. at 5–6.
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Appellant’s argument is not persuasive of reversible error. The
Examiner relies on Prentice as evidence of extruded polyethylene resin as an
adhesive material suitable for bonding non-woven material layers. Final
Act. 6 (“[A] person of ordinary skill in the art would be motivated to look to
the prior art of Prentice to identify suitable adhesive materials for the
purpose of forming a laminate with non-woven layers.”); Ans. 12 (“[A]
person of ordinary skill in the art would easily recognize that the extruded
polyethylene resin material of Prentice, not the method of how it is applied
and/or amount of adhesive applied, can be used as the adhesive material in
the absorbent mat of Rockett.”). As Appellant acknowledges, Appeal Br. 4,
Rockett teaches achieving bonding in a pattern to allow transmission of
liquid from the wear layer to the absorbent layer. See Rockett 5:46–60
(explaining that the upper wear layer is joined to the absorbent layer by
“bond areas” formed by application of adhesive in an open, disconnected
pattern or lines, such that liquid is transmitted from the wear layer to the
underlying absorbent layer). The fact that Prentice teaches a non-patterned
application of the adhesive resin does not show error in the Examiner’s
finding that the combined teachings of Prentice and Rockett would have
provided one of ordinary skill in the art with a reason to use extruded
polyethylene resin as the adhesive material in Rockett’s bonding pattern.
Appellant also argues Rockett does not disclose a four-layer structure.
Appeal Br. 6. Appellant contends Rockett’s floor mat is a three-layer
structure because the bond area and adhesive strips are not layers. Id. at 7
(“Neither bond area 16 nor adhesive strips 18 are layers.”). Appellant
premises that argument on the contention that the term “layer” when used in
the claims requires a material that is “continuous over the entire cross-
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sectional length of the matt.” Reply Br. 3 (citing Spec. Fig. 3).
Alternatively, Appellant argues Rockett’s floor mat would be a five-layer
structure if the bond area and adhesive strips are deemed layers. Id. at 6–7.
The Examiner finds the relied upon prior art suggests a four-layer
structure formed from a wear layer, an adhesive bond layer, a calendared
absorbent layer, and a pressure sensitive adhesive layer. Ans. 11.
Rockett’s Figure 1 depicts a floor mat formed from a wear layer 10,
bond areas 16, absorbent layer 12, impervious layer 14, and adhesive strips
18. As noted, Rockett teaches forming bond areas 16 as a patterned
adhesive. 5:46–60. Rockett also teaches calendaring a surface of the
absorbent layer in lieu of providing impervious layer 14. Rockett 5:1–4.
Thus, Rockett discloses a floor mat consisting of a wear layer, patterned
adhesive, calendared absorbent layer, and pressure-sensitive adhesive strips.
We are not persuaded that the term, “layer,” as it is used in the claims
requires continuous coverage over the entire cross-section of the mat.
Appellant proposes limiting the definition of layer in a manner that is
inconsistent with the term’s use in the Specification. For example, the
Specification describes an adhesive “layer” as “multiple strips” as well as an
adhesive layer “applied in various arrangements, configurations, and sizes.”
Spec. 13. “In one example, the adhesive layer 18 is a hot melt pressure
sensitive adhesive that is typically applied only over a portion of the surface
14 to reduce material costs.” Id. ¶ 25. Claim 37 recites the pressure
sensitive adhesive layer “covers the entire second surface” of the reinforcing
layer, which language would be rendered superfluous under Appellant’s
proposed definition.
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Nor are we persuaded reading Rockett’s adhesive pattern and strips as
layers necessarily would result in a five-layer structure. As noted, Rockett
discloses calendaring a surface of the absorbent layer in lieu of providing a
liquid impervious layer, Rockett 5:1–4, resulting in a four-layered product.
Appellant’s argument that calendaring a surface of Rockett’s absorbent
material would render the entire absorbent material layer incapable of
absorbing and retaining fluid, Appeal Br. 7, is neither substantiated by
evidence nor consistent with Rockett’s express teaching to the contrary. See
Rockett 5:1–4 (“Alternative means may be used to obtain imperviousness,
such as calendaring the exposed absorbent surface.”).
Appellant next argues Rockett teaches nylon is particularly
advantageous for fabricating the disclosed wear layer and, for that reason,
teaches away from the recited polypropylene material. Appeal Br. 8–9.
With regard to the wear layer, Rockett states:
While other nonwoven chemically overall bonded webs are
available of synthetic polymers such as polyolefins, polyesters,
and the like, nylon webs, in the structure of the present
invention are particularly advantageous in that they may easily
be printed and resist discoloration or staining thus extending the
useful life of the mat.
Rockett 3:54–60. While we agree that Rockett expresses a preference for
nylon over polyolefin with regard to printability and discoloration resistance,
Appellant does not present persuasive evidence that such preference, alone,
would have discouraged the use of polyolefin material. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (finding there is no teaching away
where the prior art “does not criticize, discredit, or otherwise discourage the
solution claimed”); In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed.
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Cir. 2012 (“A reference must be considered for everything that it teaches,
not simply the described invention or a preferred embodiment.”).
Lastly, Appellant argues the relied upon prior art does not teach or
suggest a pressure-sensitive adhesive having the recited properties. Appeal
Br. 10–11. Appellant contends Rockett’s characterization of the disclosed
adhesive as “tacky” indicates that a residue would be left if contacted with
an exposed surface of the absorbent material. Id. at 10. Appellant, however,
presents no persuasive evidence in support of that contention. Appellant
argues the Examiner fails to identify a reason one of ordinary skill in the art
would have combined Benedek’s teaching of adhesive peel values to
Rockett’s pressure-sensitive adhesive strips. Id. at 11. To the contrary, the
Examiner finds Rockett discloses selecting pressure-sensitive adhesive that
achieves “easy releasing properties,” Final Act 5 (citing Rockett 5:5–25),
and finds Benedek teaches suitable peel values for adhesives intended for
removable applications, Id. at 7. Appellant does not dispute these findings.
For the foregoing reasons, Appellant’s arguments are not persuasive
of reversible error in the Examiner’s rejection of claim 37 based on the
combined teachings of Rockett, Prentice, and Benedek. The Examiner’s
rejection of claims 29, 30, 34, 35, 37–39, 42, and 43 is sustained.
Rejection III
Appellant does not separately argue the Examiner’s rejection of claim
28 identified above under Rejection III. As such, Appellant does not
identify reversible error. We also sustain the Examiner’s rejection of claim
28.
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CONCLUSION
The Examiner’s decision rejecting claims 28–30, 34, 35, 37–39, 42,
and 43 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
43 112 Indefiniteness 43
43 112 Improper
Dependency
43
43 112 Written
Description7

29, 30, 34,
35, 37–39,
42, 43
103 Rockett, Prentice,
Benedek
29, 30,
34, 35,
37–39,
42, 43

28 103 Rockett, Prentice,
Benedek,
Gruenbacher
28
Overall
outcome
28–30,
34, 35,
37–39,
42, 43
43
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2018). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of

7 We do not reach the Examiner’s rejection of claim 43 under 35 U.S.C.
§ 112, first paragraph for lack of written descriptive support.
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)