Ex Parte Buckwalter et al

Patent Trial and Appeal Board

Nov 10, 2016

11338092 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111338,092 01124/2006 Michael E. Buckwalter
112 7590 11/15/2016
Armstrong World Industries, Inc.
2500 Columbia A venue
Lancaster, PA 17603
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0501 6030
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@armstrong.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL E. BUCKWALTER, MICHAEL W. LOHR,
DIKE S. STOE, and MARK C. ZEAMER
Appeal2015-002037
Application 11/338,092
Technology Center 1700
Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY R. SNAY,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5, 6, 8, 12, 21, 25, 26, 29, and 31-39. 3 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the Specification ("Spec.") filed Jan. 24, 2006; Final Office
Action ("Final Act.") mailed Mar. 28, 2014; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify Armstrong World Industries, Inc., as the real party in
interest. App. Br. 2.
3 Claims 4, 16, 17, and 29-40 were withdrawn from consideration and are
not before us.
Appeal2015-002037
Application 11/338,092
BACKGROlH~D
The subject matter involved in this appeal relates to patterned sheet
flooring. Spec. 1. Claims 1 and 31 are illustrative and reproduced from the
Claims Appendix of the Appeal Brief as follows:
1. A flooring system comprising:
a first flooring sheet and a second flooring sheet, each of
the first and second flooring sheets comprising a pattern design
that is an ink printed non-geometric pattern, a longitudinal
edge, a removable selvage edge portion adjacent the
longitudinal edge, a non-removable portion adjacent the
removable selvage edge portion, and wherein the removable
selvage edge portions comprises at least a portion of the pattern
design;
each of the first and second flooring sheets comprising a
plurality of pattern match indicators embedded in the pattern
design adjacent the longitudinal edge, the plurality of pattern
match indicators located entirely in the removable selvage edge
portion;
the removable selvage edge portion of the first flooring
sheet overlapping the removable selvage edge portion of the
second flooring sheet at a seam there between such that the
plurality of pattern match indicators of the first flooring sheet
are spaced apart from the plurality of pattern match indicators
of the second flooring sheet and are collinear thereto so that the
pattern designs of the first and second flooring sheets are
aligned at the seam; and
wherein upon the first and second flooring sheets being
cut along the seam, the removable selvage edges portion of the
first and second flooring sheets are removed from the non-
removable portions of the first and second flooring sheets.
31. A flooring sheet comprising:
a pattern design that is a printed non-geometric pattern;
a longitudinal edge;
a removable selvage edge portion adjacent to the
longitudinal edge, the removable selvage edge portion having a
first width measured perpendicular to the longitudinal edge;
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Application 11/338,092
a non-removable portion adjacent the removable selvage
edge portion; and
a plurality of pattern match indicators embedded in the
pattern design adjacent the longitudinal edge, the plurality of
pattern match indicators located entirely in the removable
selvage edge portion and having a second width measured
perpendicular to the longitudinal edge, the second width being
less than the first width.
Claims 2, 3, 5, 6, 8, 12, 21, 25, 26, 29 depend from claim 1. Claims
32-39 depend from claim 31.
REJECTIONS
The Examiner maintained the following grounds of rejection: 4
I. Claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 stand rejected under 35
U.S.C. § 112, first paragraph.
II. Claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Sabater5 and Buckwalter, 6 alternatively
further in view of Brickey. 7
III. Claims 31-39 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Sabater, alternatively in view of Brickey.
4 Final Act. 2-25; Ans. 2-22. Additional rejections under 35 U.S.C. § 112,
second paragraph, were withdrawn. See Advisory Action, mailed Jun. 12,
2014, at i-f 3 ("Applicant amended claims to overcome 35 USC 112, second
paragraph rejections of record.").
5 US 8,201,377 B2, issued Jun. 19, 2012 ("Sabater").
6 US 6,673, 177 B2, issued Jan. 6, 2004 ("Buckwalter").
7 US 2006/0127155 Al, published Jun. 15, 2006 ("Brickey").
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Application 11/338,092
IV. Claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kraft, 8 Sabater, and Buckwalter. 9
V. Claims 31-39 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kraft and Sabater.
DISCUSSION
I
With regard to Rejection I, the Examiner's sole basis for finding that
the rejected claims lack adequate written description was that the term
"system" recited in claim 1 "does not appear to have support in the
originally filed specification." Final Act. 3. Appellants persuasively argue
that the specification's description of "multiple flooring sheets ... that are
positioned adjacent to each other to form a flooring installation" conveys to
a person of ordinary skill that the inventors possessed the recited "system"
aspect of the claimed invention at the time of filing. App. Br. 5---6.
Accordingly, we will not sustain Rejection I.
II
Claim 1 and each claim depending therefrom requires that respective
pattern match indicators are configured such that, upon overlapping selvage
edge portions of adjacent flooring sheets with the pattern match indicators
8 US 2003/0041543 Al, published Mar. 6, 2003 ("Kraft").
9 The Examiner mistakenly listed canceled claim 20 instead of rejected claim
21 in captioning this ground of rejection, Final Act. i-fi-153, 71, and
mistakenly included claim 20 in captioning Rejection II, id. at i-f 14.
Appellants do not raise any issue in connection with the foregoing errors,
and acknowledge that claim 21 is included in the claims subject to
Rejections II and IV. See App. Br. 4.
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Application 11/338,092
collinear about a seam therebetween, the pattern designs of the adjacent
flooring sheets are aligned at the seam. With regard to Rejection II, the
Examiner found that Buckwalter discloses flooring sheets configured such
that respective selvage edge portions may be overlapped across a seam "so
that [upon removing the selvage edge portions] the pattern designs of the
first and second flooring sheets are aligned at the seam." Final Act. 6 (citing
Buckwalter col. 12, 11. 33-37). The above-mentioned passage in Buckwalter
regards vinyl flooring and refers to the described technique as "a
conventional double-cut seam method." Buckwalter at col. 12, Example 6.
In light of Buckwalter's teaching, the Examiner found that one of ordinary
skill would have had reason to "overlap the first and second flooring sheets
of Sabater ... in order to ensure identical pieces and accurate cutting of the
seams." Final Act. 6. Appellants correctly point out that Sabater discloses
rigid flooring planks, App. Br. 7, and argue that Buckwalter's double-cut
seam technique is inapplicable to the sizing and installation of rigid flooring
planks, id. at 11. Generally, Sabater discloses flooring planks that include
decorative motifs, portions of which are arranged along edges of each
flooring plank such that "a periodic flooring pattern larger than an individual
plank can be formed by placing identical planks adjacent to one another."
Sabater, Abstract. Those edge portions of decorative motif "may be used as
an [sic] alignment marks ensuring consistent alignment of adjacent flooring
planks." Id. at col. 11, 11. 2-5.
We agree that the Examiner did not present any finding or technical
reasoning addressing why one of ordinary skill would have configured
Sabater's alignment marks to permit Buckwalter's double-cut seam
technique to be applied to Sabater's rigid flooring planks. Nor is it apparent
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how Buckwalter' s overlapping and cutting technique for vinyl flooring
sheets would be applicable to Sabater's rigid planks.
For that reason, we will not sustain Rejection II.
III
Claim 31 and each claim depending therefrom requires a "plurality of
pattern match indicators located entirely in the removable selvage edge
portion" of the recited flooring sheet, and having "a width measured
perpendicular to the longitudinal edge" that is less than the width of the
selvage edge. With regard to Rejection III, the Examiner acknowledged that
Sabater "fails to teach the plurality of pattern match indicators located
entirely in the removable selvage edge," and found that it would have been
obvious "to include alignment marks on any edge, including the longitudinal
edge and arrive at the presently claimed invention." Final Act. 11.
Appellants argue that Sabater's "pattern match indicators form a
permanent part of the decorative motif and are critical to the formation of a
continuous pattern across multiple floor planks." App. Br. 8. For that
reason, Appellants contend, arbitrarily assigning a removable selvage edge
portion to Sabater' s flooring plank, such that the disclosed alignment marks
formed by the end portions of the decorative motif would be removed with
the selvage edge, "would destroy the intended technical purpose of the
Sabater system." Id. at 9. We agree. As Appellants correctly point out,
Sabater' s decorative motif necessarily includes edge portions which, upon
alignment with corresponding alignment marks of an adjoining plank, create
a continuous pattern across the adjacent flooring planks. Id. at 9; Sabater
col. 3, 11. 22-29 (" ... at least one of a surface texture and decorative motif is
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Application 11/338,092
substantially aligned between adjacent flooring planks such that
substantially continuous embossed-in-registration patterns are formed across
the interlocked flooring planks."). In light of these teachings in Sabater, we
are persuaded that the Examiner failed to articulate a reason why one of
ordinary skill would have modified Sabater' s flooring planks to include
alignment marks or other pattern match indicators that are located entirely
within a selvage edge. 10
Accordingly, we also will not sustain Rejection III.
IV
In reaching Rejection IV, the Examiner principally relied on Kraft,
and found that one of ordinary skill would have had reason to modify Kraft's
patterned flooring sheets to include edge-located alignment marks, in light of
Sabater, and to configure such alignment marks to facilitate pattern
alignment upon overlapping and removing a selvage edge, in light of
Buckwalter. Final Act. 15-17. Appellants present two arguments against
this ground of rejection. First, Appellants contend that Sabater's pattern
match indicators form part of the flooring sheet design and, for that reason,
"at best, suggest incorporating the pattern match indicators of Sabater in to
[sic] Kraft so that they form a permanent part of the flooring sheets of Kraft.
We find Appellants' argument unpersuasive. Kraft discloses flooring
sheets that "can have a matching pattern along the seam." Kraft i-f 21. To
10 The Examiner's alternative reliance on Brickey for the similar proposition
that it was known to provide flooring sheets with pattern match indicators
embedded in the pattern design at the edges of the flooring sheets, Final Act.
12, neither addresses nor cures the deficiency noted with regard to
modifying Sabater.
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Application 11/338,092
that end, Kraft teaches that the adjoining sheets "are advantageously cut to
have a seam that lines up with the pattern." Id. at i-f 53 (emphasis added).
Buckwalter similarly teaches the overlapping and double-cut seam method
for the purpose of matching patterns of adjacent flooring tiles. Buckwalter
col. 12, 11. 33-38. Viewing these teachings collectively, we are persuaded
that a preponderance of the evidence supports the Examiners finding that
one of ordinary skill in the art would have had reason to provide edge-
located alignment marks, such as those taught by Sabater, in an intended
selvage edge in the manner recited in claim 1. See In re Keller, 642 F .2d
413, 425 (CCPA 1981) ("The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of
theprimary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.").
Appellants additionally incorporate their argument made in
connection with Rejection II, namely, that Buckwalter's overlapping double-
cut seam technique would not be applicable to Sabater's rigid flooring
planks. App. Br. 10-11, 13. Given that the alternative ground of rejection
set forth in Rejection IV involves application of Buckwalter's technique to
Kraft's flooring sheets, and not to Sabater's planks, we find Appellants'
argument unpersuasive of error.
For the foregoing reasons, we sustain Rejection IV.
v
Appellants' sole argument against Rejection Vis that "no permissible
combination of Sabater and Brickey renders obvious claim 31." App. Br.
14. Brickey is not relied upon in connection with Rejection V. Appellants
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do not particularly argue against the combination of Kraft and Sabater with
regard to this ground of rejection.
Accordingly, we also sustain Rejection V.
SUMMARY
Rejection I of claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 under 35
U.S.C. § 112, first paragraph, is not sustained.
Rejection II of claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 as
unpatentable over Sabater, Buckwalter, and alternatively further in view of
Brickey is not sustained.
Rejection III of claims 31-39 as unpatentable over Sabater or the
combination of Sabater and Brickey is not sustained.
Rejection IV of claims 1-3, 5, 6, 8, 12, 21, 25, 26, and 29 as
unpatentable over Kraft, Sabater, and Buckwalter is sustained.
Rejection V of claims 31-39 as unpatentable over Kraft and Sabater is
sustained.
DECISION
The Examiner's decision rejecting claims 1-3, 5, 6, 8, 12, 21, 25, 26,
29, and 31-39 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.
AFFIRMED
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