In Re: Stoller

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE JAMES E. STOLLER
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2014-1271
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Application No.
11/217,904.
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Decided: January 15, 2015
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MATHEW R.P. PERRONE, JR. Law Office of Mathew
R.P. Perrone, Jr., of Algonquin, Illinois, argued for appel-
lant.
BRIAN T. RACILLA, Associate Solicitor, Office of the So-
licitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for appellee. With him on
the brief were NATHAN K. KELLEY, Solicitor, and JAMIE L.
SIMPSON, Associate Solicitor.
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Before PROST, Chief Judge, MOORE, and CHEN, Circuit
Judges.
2 IN RE STOLLER
MOORE, Circuit Judge.
James Stoller appeals from the decision of the Patent
Trial and Appeal Board affirming the examiner’s rejec-
tions of all pending claims in Mr. Stoller’s patent applica-
tion. For the reasons discussed below, we affirm-in-part,
reverse-in-part, and remand.
BACKGROUND
Mr. Stoller’s U.S. Patent Application No. 11/217,904 is
directed to a multilayered winter turf cover for a golf
green. The cover, as shown in Figure 2 below, has a
“laminated” structure including a bottom polyethylene
layer 112 and a top polyethylene layer 114 with a scrim
(i.e., fabric) layer 116 secured between the top and bottom
layers. In a preferred embodiment, the scrim layer is
“laminated” between the top and bottom layers “using a
molten polymer.” The ’904 application touts the ad-
vantages of the laminated structure, including increased
moisture protection, easier removal, and increased dura-
bility.
Claims 21-37 of the ’904 application are pending on
appeal. Claim 35 is the broadest claim and recites a two-
layer cover, with a scrim layer “laminated” to one poly-
ethylene layer, i.e., it requires only two of the three layers
described in the preferred embodiment shown in Figure 2.
All other claims, however, recite the three-layer laminat-
IN RE STOLLER 3
ed structure of Figure 2. Based on this differing claim
scope, the examiner rejected the claims under different
combinations of references, rejecting claim 35 as antici-
pated by U.S. Patent Publication No. 2004/0013824
(Sibbet), and rejecting all other claims as obvious over
Sibbet in view of one or more secondary references. The
Board affirmed all rejections. Mr. Stoller appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(4).
ANALYSIS
I. Anticipation Rejection of Claim 35
The Board affirmed the examiner’s rejection of claim
35’s two-layer laminated structure as anticipated by
Sibbet. Sibbet discloses a turf cover constructed from two
separate covers that are fastened together by stringing
nylon loops through a series of grommets around the
cover’s perimeter. Sibbet Fig. 2 (below), ¶¶ 27-30. The
bottom cover 20 is made of polyester mesh, and the top
cover 30 is made of polyethylene. Id. ¶¶ 14-15. A
chopped straw insulating layer 40 is disposed between the
bottom and top covers. Id. ¶¶ 28, 37.
The examiner found that Sibbet’s mesh cover 20 dis-
closes the claimed scrim layer and top cover 30 discloses
the claimed polyethylene sheet. The examiner also inter-
preted “laminated” as “covered or layered” and concluded
4 IN RE STOLLER
that Sibbet’s mesh cover 20 was “laminated” under that
construction. Prior to this rejection by the examiner, Mr.
Stoller had appealed a previous rejection in the prosecu-
tion of the same application to the Board. In that appeal,
the Board similarly construed laminated as “a structure
formed from several layers.” During Mr. Stoller’s second
Board appeal, which led to the present appeal to us, Mr.
Stoller argued that the Patent Office’s construction was
unreasonably broad and that Sibbet’s mesh cover was not
laminated to the top cover under the broadest reasonable
interpretation. The Board affirmed the examiner’s find-
ing that Sibbet’s two layers were laminated under the
broadest reasonable interpretation of that term.
The parties’ dispute on appeal centers on the con-
struction of “laminated.” Mr. Stoller argues that the
broadest reasonable construction of laminated is “fused,
bonded, pressed, or adhered together into a unitary
structure.” The Patent Office argues that the Board
correctly construed the term as describing a “structure
formed from several layers.” We review the Patent Of-
fice’s construction de novo. Rambus Inc. v. Rea, 731 F.3d
1248, 1252 (Fed. Cir. 2013).
We hold that the Patent Office erred in construing
“laminated” to require only layering, such that it encom-
passes Sibbet’s perimeter-tied covers. Much like Sibbet’s
cover, a scarecrow’s shirt includes two layers of material
sewn together at the perimeter with straw stuffed be-
tween them. Under the Patent Office’s construction the
front and back of the scarecrow’s shirt would be laminat-
ed. This is not within the ambit of the broadest reasona-
ble construction.
Claim construction begins with the plain language of
the claims. The American Heritage Dictionary defines
“laminated” as “composed of layers bonded together,” or
“arranged in laminae; laminate.” THE AMERICAN
IN RE STOLLER 5
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed.
2006) (emphasis added). To support its construction of
“laminated,” the Board cited to the definition of “lami-
nate” in an online version of the same dictionary. The
definition the Board appears to have relied upon was “to
make by uniting several layers.” Id. (emphasis added).
Despite the fact that the definitions of both “laminated”
and “laminate” include the notion of bonding or uniting
the two layers together, this feature is notably missing
from the Patent Office’s construction.
The ’904 application does not define “laminated,” but
its discussion of laminated structures supports the plain
language requirement of bonding or otherwise uniting the
two layers together. It describes an exemplary method of
laminating two sheets using a molten polymer that solidi-
fies to form a single sheet. ’904 application at 6. It also
repeatedly explains that laminating the sheets together—
both via the preferred molten polymer embodiment and
generally—improves tear resistance and durability of the
unitary cover. Id. at 3-4, 6, 8.
We thus agree with Mr. Stoller that the broadest rea-
sonable interpretation of “laminated” is “fused, bonded,
pressed, or adhered together into a unitary structure.”
This construction is consistent with the plain meaning of
“laminated” and “laminate,” requiring layers that are
bonded together or otherwise form a unitary structure. It
is also consistent with the specification’s discussion of
“laminated” as exemplified by a polymer bond and used to
improve the tear resistance of a resulting unitary cover.
Sibbet does not disclose that mesh cover 20 is “lami-
nated” to top cover 30 under this construction. Sibbet’s
only disclosed means for connecting the two covers is the
loop and grommet system disclosed above, which is akin
to sewing the edges of the covers together. If this embod-
iment fell within the definition of laminated, so too would
6 IN RE STOLLER
the scarecrow’s shirt or opposing sides of a bean bag or
teddy bear. In fact, Sibbet itself distinguishes the loop
and grommet system from prior art laminated covers,
providing further support that one of skill would not
conclude that Sibbet’s layers are laminated. Sibbet ¶ 6.
We do not turn a blind eye to the many references in
this record that demonstrate that laminating two (or
more) layers together was well-known in the art. The
only rejection of claim 35 before us, however, is a § 102
rejection based only on Sibbet. That rejection is not
supported in the record. Accordingly, we reverse the
rejection of claim 35.
II. Obviousness Rejections of Remaining Claims
The Board affirmed the rejections of claims 21-34 and
36-37 as obvious over Sibbet in view of U.S. Patent No.
6,739,088 (’088 Stoller), or as obvious over Sibbet in view
of ’088 Stoller and one or more of U.S. Patent Nos.
3,252,251 (Simmons) and 213,932 (Powell). Each of these
claims requires a three-layer laminated structure similar
to the ’904 application Figure 2 embodiment discussed
above. As the examiner recognized, Sibbet only discloses
two layers and thus does not disclose a three-layer lami-
nated structure. However, ’088 Stoller indisputably
discloses lamination, and, more particularly, a three-layer
laminated structure with two polyethylene sheets lami-
nated to a central foam layer. Oral Argument at 4:37-
4:52, 6:11-6:19, available at http://oralarguments.cafc.
uscourts.gov/default.aspx?fl=2014-1271.mp3; ’088 Stoller
Fig. 11. That is, the claimed three-layer laminated struc-
ture differs from the ’088 Stoller three-layer laminated
structure by replacing ’088 Stoller’s central foam layer
with the claimed scrim layer. Oral Argument at 4:37-
5:18. Compare ’088 Stoller Fig. 11 with ’904 application
Fig. 2. To reject each of the remaining claims, the exam-
iner thus combined Sibbet’s scrim and polyethylene layers
IN RE STOLLER 7
with ’088 Stoller’s three-layer laminated structure, ren-
dering obvious the claimed three-layer laminated struc-
ture with a central scrim layer. The Board’s erroneous
construction of “laminated” does not affect the obvious-
ness rejections of the remaining claims because ’088
Stoller indisputably discloses a laminated structure under
the proper construction of that term, and the combination
of Sibbet and ’088 Stoller renders obvious the claimed
three-layer laminated structure.
Mr. Stoller additionally argues that the obviousness
rejections are improper for various reasons. For example,
Mr. Stoller argues that it would not have been obvious to
combine certain references, that the references teach
away from the claimed subject matter, and that the
combination of references does not teach additional fea-
tures in the claims. We have considered each of Mr.
Stoller’s additional arguments regarding the obviousness
rejections and do not find them to be persuasive. Because
the Board’s findings underlying its obviousness rejections
are supported by substantial evidence, we affirm the
rejections of claims 21-34 and 36-37.
CONCLUSION
Because the Board’s obviousness rejections are sup-
ported by substantial evidence, but the anticipation
rejection of claim 35 is not, we affirm-in-part, reverse-in-
part, and remand.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
No costs.