11907965 (B.P.A.I. Feb. 22, 2012)

Ex Parte Brunedal et al

Board of Patent Appeals and InterferencesFeb 22, 2012

11907965 (B.P.A.I. Feb. 22, 2012)

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. 11/907,965 10/18/2007 Dan Brunedal TPP32023US 7200 74217 7590 02/23/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER WENDELL, MARK R ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 02/23/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DAN BRUNEDAL and PATRICK SMITH ____________________ Appeal 2010-002287 Application 11/907,965 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Dan Brunedal and Patrick Smith (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1 and 7-20. Claims 2-6 have been canceled. An oral hearing was held on February 16, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-002287 Application 11/907,965 2 THE INVENTION Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A flooring transition comprising a molding and an attachment thereto said molding including a foot and two generally opposing arms representing the shape of a T; and at least one attachment, the attachment being connected to at least one of the opposing arms or the foot; said molding having an outer surface presenting at least one decorative surface selected from the group consisting of real wood, laminate, veneer and metal; said attachment also having at least one outer decorative surface comprising an abrasion resistant foil. THE REJECTIONS The following rejections are before us for review: 1. Claims 1 and 7-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Stanchfield (US 6,860,074 B2, iss. Mar. 1, 2005) and Gómez Insa (US 7,287,357 B2, iss. Oct. 30, 2007); and 2. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Stanchfield, Gómez Insa, and Chi (US 2001/0037617 A1, pub. Nov. 8, 2001). OPINION The rejection of claims 1 and 7-18 as being unpatentable over Stanchfield and Gómez Insa Appellants offer arguments pertaining to all the claims subject to this rejection (claims 1 and 7-18) and offer additional arguments for dependent claims 16 and 17. Br. 3-5. For the arguments pertaining to all of the claims, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2010-002287 Application 11/907,965 3 We separately consider the additional arguments pertaining to claims 16 and 17. Appellants’ claimed invention pertains to a flooring transition comprising a molding and an attachment. Claim 1 calls for the molding to have a “decorative surface selected from the group consisting of real wood, laminate, veneer and metal” and the attachment to have a “decorative surface comprising an abrasion resistant foil.” The dispositive issue presented by Appellants’ arguments is whether the Examiner’s reliance on Stanchfield provides the requisite factual basis for the conclusion that Appellants’ claimed transition with foil on the attachment would have been obvious. See Br. 3-4. We determine that Stanchfield provides adequate underpinning to support that conclusion. The Examiner relies on the list of materials found in Stanchfield at column 4, lines 22-44. Ans. 3-4, 9-10. One of ordinary skill in the art would understand that the discussion of materials in that paragraph, including the use of foil, is applicable to Stanchfield’s leveling block 40 (found to be the claimed attachment), and not solely to the molding. See Ans. 9; Stanchfield, col. 4, ll. 22-24 (“The molding 11, as well as any of the other components used in the invention, may be formed of ....”); see also id. at col. 6, ll. 43-45 (the leveling block (attachment) outer surface is generally treated to match or blend with the molding outer surface in order to improve aesthetics). Further, because Stanchfield indicates that foil is acceptable for use on the molding, it follows that the leveling block 40 could also be covered with a foil. See Ans. 10. Appellants’ claimed elements of one component’s decorative surface being selected from a group of materials such as wood and another Appeal 2010-002287 Application 11/907,965 4 component’s decorative surface being foil are selections from a finite number of known choices for decorative surfaces. The Examiner’s reasoning underlying the conclusion of obviousness – that one of ordinary skill would select the two decorative finishes based on aesthetics and the amount of traffic to which it is subjected – is rational. Ans. 4; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007) (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We affirm the rejection of claims 1, 7-15, and 18 as obvious. As to claims 16 and 17, which recite that “the foil contains hard particles having a Moh’s hardness [of a specified value],” Appellants challenge the Examiner’s construction and findings. Br. 5. One of ordinary skill, reading the claims in light of the Specification, would understand claims 16 and 17 to call for the particles included with the foil to have the recited hardness. See Spec. 5, para. [0018]. The Examiner’s initial articulation in the Answer of the ground of rejection does not clearly address the particles, but rather only refers to the foil. Ans. 6. We do not find the Examiner’s position in the response to argument to be persuasive. Ans. 11 (apparently finding that flooring transition foil is generally made from aluminum and asserting that aluminum is comprised of hard particles having a mass and density). Accordingly, we cannot sustain the rejection of claims 16 and 17. Appeal 2010-002287 Application 11/907,965 5 The rejection of claims 19 and 20 as being unpatentable over Stanchfield, Gómez Insa, and Chi In addressing the rejection of claims 19 and 20, Appellants chose to present an argument directed only to claim 201, the narrower of the two claims. Br. 5-6. As such, Appellants have waived any argument against the rejection of claim 19, and we sustain the rejection of that claim. As to claim 20, Appellants only assert that the Examiner conceded that the references fail to disclose the “light” recited in claim 20. Br. 5-6. This is incorrect. The statement from the Examiner quoted by Appellants (id. at 5) is a finding directed solely to Stanchfield and Gómez Insa, not to all of the references as Appellants imply. See Final Rej. at 6; Ans. 7. The Examiner did not make the purported concession upon which Appellants rely. As such, Appellants have not shown error in the Examiner’s rejection of claim 20, and we sustain that rejection. DECISION The decision of the Examiner to reject claims 16 and 17 is reversed. The decision of the Examiner to reject claims 1, 7-15, and 18-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART nlk 1 Appellants’ statement that Chi does not cure the purported deficiency in the rejection of claim 1 is not considered to be a separate argument for claim 19. Br. 6.