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In re Duvi

U.S. Court of Appeals, Federal Circuit

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 the evidence. See In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976) (all the evidence must be evaluated, not on the ability to "knockdown" the prima facie case, but on the totality of the evidence).

Mr. DuvJ states that 40-50 mils is significantly less than 75 mils. The Commissioner argues that the absolute difference of about 1/32 of an inch is not clearly significant. Mr. DuvJ did not provide any comparative data to support his argument that the difference affects performance. As for the difference in hardness, which Mr. DuvJ also says is significant, he merely estimated the hardness value of Petrotac7, although it is apparently readily measured, leaving a cloud on this asserted difference. Again, he provided no evidence that the hardness property affected performance.

Mr. DuvJ averred that Petrotac7 "failed bond, impact and shear testing." He provided no comparative data for bond and impact testing. He stated generally that Petrotac7 was not usable with standard tile mortar, but offered no patentable significance for this observation. He stated that the Petrotac7 system failed impact resistance tests when tested by dropping a four-pound steel ball six feet; however, he did not identify what was tested or what was compared. We take note that data for shear tests showed significant differences in shear, but agree with the Commissioner that DuvJ did not explain how these tests relate to any properties or measure any performance that may serve to distinguish his product from the prior art.

The Board also held that Mr. DuvJ's use of the term "rigid" to describe his veneer finish "does not distinguish over the rigid overlay applied over the elastomeric membrane of Petrotac7." The Petrotac7 brochure describes an asphalt overlay of at least 12 inches in thickness. Mr. DuvJ adequately established, by encyclopedia reference, that asphalt is a flexible, not a rigid, surfacing material. However, the Board also observed that the specification includes veneers such as vinyl tile and sheet vinyl, not distinguished from asphalt in their flexibility, thus diluting Mr. DuvJ's argument that by rigid he excludes flexible finishes such as asphalt. Although Mr. DuvJ argues that "rigid" should be read to exclude all such flexible finishes, dependent claims 8 and 16 are specific to ceramic tile and finishes of similar rigidity. The Commissioner correctly points out that the doctrine of claim differentiation suggests that a broader scope is intended for the use of "rigid" as a generic term in claim 1. *fn1

The Board did not clearly err in finding that there was inadequate support for DuvJ's argument that his membrane provides superior properties or performance when used with ceramic and similarly rigid veneers. DuvJ points to his commercial success and the copying of his product. The Commissioner argues that DuvJ did not properly correlate his evidence of commercial success to the claims. However, "a prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent." Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir. 1988). However, in view of the close similarity of DuvJ's product to Petrotac7, and the inadequacy of the showing of differences in properties or unobvious advantages as compared with the prior art, the objective evidence in this case is insufficient to tilt the balance in favor of patentability. Although the ultimate burden of establishing unpatentability is with the PTO, see 35 U.S.C. '102 ("A person shall be entitled to a patent unlessC"); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984), upon the record presented the PTO met that burden.

No costs.

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