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In re Duvi

February 26, 1999


Before Newman, Circuit Judge, Cowen and Archer, Senior Circuit Judges.

The opinion of the court was delivered by: Newman, Circuit Judge.

(Serial No. 08/235,200)

Thomas A. DuvJ appeals the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, rejecting claims 1-6, 8, and 10-16 of patent application Serial No. 08/235,200 on the ground of obviousness, 35 U.S.C. '103. The rejection of claims 5 and 6 on grounds of '112 is not appealed. The Board's decision is affirmed.


The DuvJ patent application is directed to an intermediate subfloor material for placement over a base surface such as concrete and under a rigid veneer finishing layer. Rigid veneer floors are used in areas such as shopping malls where an attractive surface is desired and there is heavy pedestrian traffic and occasional vehicular traffic. Veneer floors such as ceramic tile encounter two principal types of threats to their structural integrity, described as "reflective" cracking and "compressive" failure. Intermediate subfloor materials have been used as anti-fracture products, and it is known that products that remedy reflective cracking may exacerbate compressive failure, and vice versa.

The DuvJ invention is an elastomeric membrane which he states provides superior performance overall and has achieved commercial success. Claim 1 is as follows:

"1. A system for use on a subsurface to prevent the occurrence of reflective cracks in a rigid veneer finish applied over said subsurface, said system comprising:

"(a) an elastomeric membrane having a thickness of less than about 50 mils, said elastomeric membrane including an elastomeric base layer formed of a material having a resiliency of about Shore A 80"15% and having a first surface adapted for application of a fiber sheet and a second surface opposite said first surface adapted for application to a subsurface, said elastomeric membrane further comprising a fiber sheet secured to said first surface of said base layer,

"(b) a first adhesive layer applied to said fiber sheet and forming a bond therewith; and

"(c) a rigid veneer finish applied to said first adhesive layer."

Claim 10 is in Jepson format and is directed to a membrane thickness of less than 40 mils. Claim 11 is a method claim for application of the system of claim 1. The dependent claims incorporate various limitations relating to the adhesive layer, a second adhesive layer, the fiber sheet, a membrane of less than 40 mils, and use of a woven synthetic fiber sheet. Claim 8 is directed to specified rigid veneers.

The examiner rejected all of the claims as obvious in view of a published brochure describing a rubberized asphaltic membrane material for use as an intermediate underlay of roadways and bridges, the material having the brand name Petrotac7. This reference was relied on alone, or in combination with a reference to Platt and any of three references to Galbreath, Murphy and Uffner. According to the Petrotac7 brochure, the Petrotac7 material spans growing cracks and delays reflective cracking.

The Board found that the composition of the Petrotac7 material and the material used by Mr. DuvJ are essentially the same. The DuvJ product is thinner, having a thickness of about 40-50 mils compared with the "typical" 75 mils mentioned in the Petrotac7 brochure. Mr. DuvJ states that his product is harder, the claims reciting Shore A 80"15. No hardness value is given in the Petrotac7 brochure, but DuvJ estimated the hardness as Shore A 10-40. The examiner deemed these differences to be merely "an obvious expedient," and the Board held that DuvJ showed "no perceptible difference" or no "practical difference" between the products.

Mr. DuvJ argues that his use is not foreseen in or obvious from the Petrotac7 brochure. Although Petrotac7 is used as a paving underlay, the brochure teaches covering the membrane with an asphalt layer at least 12 inches thick, while Mr. DuvJ uses ceramic tile and other veneers that may be less than 2 inch thick. He states that the prior art does not suggest that by making the Petrotac7-type material thinner and harder it would be an effective underlayer for use with rigid veneers. However, we agree with the Board that the examiner had made a prima facie case of obviousness, based on the identity of the composition of the membranes and the general similarity of their uses, and that there shifted to DuvJ the burden of coming forward with rebuttal evidence. The case turns on the sufficiency of the rebuttal in light of the entirety of ...

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