Ex Parte GrafenauerDownload PDFBoard of Patent Appeals and InterferencesFeb 29, 201211533634 (B.P.A.I. Feb. 29, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte THOMAS GRAFENAUER ________________ Appeal 2010-001906 Application 11/533,634 Technology Center 3600 ________________ Before STEVEN D.A. McCARTHY, GAY ANN SPAHN and CHARLES N. GREENHUT, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2 final decision rejecting claims 1-24. The Examiner rejects: 3 claims 15-20 and 23 under 35 U.S.C. § 112, second 4 paragraph, as being indefinite; 5 1 The Appellant identifies the real party in interest as Flooring Technologies LTD. Appeal No. 2010-001906 Application No. 11/533,634 2 claims 1-3, 6, 7, 12, 15 and 24 under 35 U.S.C. § 103(a) 1 as being unpatentable over Grafenauer (DE 101 62 275 C1, 2 publ. Feb. 20, 2003)2 and Glowa (US 5,791,113, issued Aug. 3 11, 1998); 4 claims 4, 13, 16 and 17 under § 103(a) as being 5 unpatentable over Grafenauer, Glowa and Foy (US 6,286,841 6 B1, issued Sep. 11, 2001); 7 claim 5 under § 103(a) as being unpatentable over 8 Grafenauer, Glowa and Pervan (US 2003/0233809 A1, publ. 9 Dec. 25, 2003); 10 claims 8-11, 14 and 21-23 under § 103(a) as being 11 unpatentable over Grafenauer, Glowa and Andrzejewski (US 12 4,107,898, issued Aug. 22, 1978); and 13 claims 18-20 under § 103(a) as being unpatentable over 14 Grafenauer, Glowa, Foy and Andrzejewski. 15 Oral argument was heard February 14, 2012. We have jurisdiction under 35 16 U.S.C. § 6(b). 17 We AFFIRM. 18 Claim 1 is illustrative of the claims on appeal: 19 1. A connecting element for connecting 20 flooring panels with a core of wooden material, 21 comprising a tongue on one side edge and a groove 22 on an opposite side edge, wherein the tongue 23 corresponds to a groove of a panel and the groove 24 on the opposite side edge corresponds to a tongue 25 of the panel, and 26 2 All reference to “Grafenauer” in this opinion will be to the official translation prepared by FLS, Inc. in or about June 2009, which is of record in the file of the underlying application. Appeal No. 2010-001906 Application No. 11/533,634 3 two lips lying opposite one another 1 embodied on a top side projecting beyond 2 the one side edge and the opposite side edge, 3 wherein the two lips are configured to 4 provide a sole sealing mechanism. 5 (Reformatted for emphasis.) 6 7 ISSUES 8 Only issues and findings of fact contested by the Appellant will be 9 addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 10 The Appellant argues the rejection of claims 15-20 and 23 under the 11 second paragraph of § 112 as a group. (See App. Br. 5-7; Reply Br. 4-5). 12 Independent claims 15 and 23 are representative. A first issue raised in this 13 appeal is: 14 First, are claims 15-20 and 23 indefinite due to the 15 recitation of “lips configured to . . . overlap a butt joint between 16 panels of the at least one flooring panel and the connecting 17 element?” (See App. Br. 5-7; Ans. 3; Reply Br. 4-5). 18 The Appellant groups claims 1, 6, 7 and 12 for purposes of the 19 rejection under § 103(a). (See App. Br. 7-18). Claim 1 is representative of 20 this group. Although claim 5 is argued under a separate subheading, the 21 Appellant argues its patentability solely based on the dependence of claim 5 22 on claim 1. 23 The Appellant separately argues the rejection of dependent claims 2, 3 24 and 24 under § 103(a) under subheadings separate from the rejection of 25 claim 1. (See App. Br. 18-21). Nevertheless, the argument with which the 26 Appellant contests the rejections of claims 3 and 24 are sufficiently similar 27 to the argument with which the Appellant contests the rejection of claim 15 28 Appeal No. 2010-001906 Application No. 11/533,634 4 that our resolution of the issues raised concerning claim 15 is dispositive as 1 to the issues raised concerning claims 3 and 24. 2 Second, third and fourth issues raised in this appeal are: 3 Second, does Grafenauer or Glowa describe a connecting 4 element including “two lips lying opposite one another 5 embodied on a top side projecting beyond the one side edge and 6 the opposite side edge, wherein the two lips are configured to 7 provide a sole sealing mechanism” as recited in claim 1 or a 8 connecting element having “lips configured to be a sole sealing 9 mechanism and to bear on a top side of the at least one flooring 10 panel and overlap a butt joint between panels of the at least one 11 flooring panel and the connecting element” as recited in claim 12 15? 13 Third, do the evidence and technical reasoning 14 underlying the rejection of claims 1 and 15 adequately support 15 the conclusion that such connecting elements would have been 16 obvious? (See App. Br. 7-18; Reply Br. 5-9). 17 Fourth, do the evidence and technical reasoning 18 underlying the rejection of claim 2 adequately support the 19 conclusion that it would have been obvious to modify 20 Grafenauer’s connecting element to include resiliently elastic 21 lips? (App. Br. 18-19; Reply Br. 8-9). 22 The Appellant argues claims 4, 13, 16 and 17 as a group. (App. Br. 23 22-23). In addition, the Appellant argues the rejections of claims 8-11, 14 24 and 21-23 separately from the rejection of claim 1. Although the rejections 25 of claims 21 and 23 are argued under separate subheadings from the 26 Appeal No. 2010-001906 Application No. 11/533,634 5 remainder, the arguments addressing each of these claims is similar. (See 1 App. Br. 24-32). Therefore, our resolution of the issues raised concerning 2 claim 21 is dispositive as to the issues raised concerning claims 8-11, 14 and 3 21-23. 4 Fifth and sixth issues raised in this appeal are: 5 Fifth, is Foy or Andrzejewski non-analogous art? (App. 6 Br. 22 and 25; Reply Br. 10-11).3 7 Sixth, do the evidence and technical reasoning underlying 8 the rejection of claim 21 adequately support the conclusion that 9 a connecting element including a clamp that increases a spring 10 force of the groove of the connecting element would have been 11 obvious? (App. Br. 24-32). 12 13 FINDINGS OF FACT 14 The record supports the following findings of fact (“FF”) by a 15 preponderance of the evidence. 16 17 Grafenauer 18 1. The Appellant appears to be the named inventor of Grafenauer. 19 3 During the hearing of this appeal on February 14, 2010, Counsel for the Appellant argued that Glowa is non-analogous art. In addition, counsel argued that one of ordinary skill in the art would not have had reason to further modify the connecting element 7 of Grafenauer to add sealing sides with flocking on the underside of the sealing sides in accordance with the teachings of Glowa and Foy because Foy teaches a seal with flocking on its upper side. These arguments do not appear to have been made in the Appellant’s briefs. Therefore, the arguments are waived. See 37 C.F.R. § 41.47(e)(1). Appeal No. 2010-001906 Application No. 11/533,634 6 2. After describing drawbacks of prior art flooring systems, 1 Grafenauer states that: 2 Proceeding from this problem formulation a 3 means for connection of generic floor panels will 4 be devised which ensures simple connection of 5 panels with which if necessary a visible joint can 6 be produced and which ensures a tight connection 7 on the top of the joined panels in order to avoid 8 penetration of moisture into the core. 9 (Grafenauer, para. 0006). This passage implies that one problem with which 10 the Appellant has been involved is that of providing a tight connection on 11 the top of the joined panels in order to avoid penetration of moisture into the 12 core. 13 3. Grafenauer describes a connecting element 7 which is made 14 strip-shaped and has a tongue 3a and a groove 4a on its side edges Ia, IIa. 15 (Grafenauer, para. 0020). Figures 1-3 of Grafenauer depict the upper 16 portions of the sides edges Ia, IIa of the connecting element 7 abutting the 17 upper portions of the side of two adjoining flooring panels 1, 2 when 18 installed. 19 20 Glowa 21 4. Figures 2-4 of Glowa depict a connecting member 54 including 22 a head portion 86 with non-parallel extending sealing surfaces 89, 90. 23 (Glowa, col. 2, ll. 18-22 and 53-58). Glowa teaches that “sealing side 89 is 24 shaped to conform with a side of the first structural member forming the 25 joint, and sealing side 90 is shaped to conform with a side of the second 26 structural member.” (Glowa, col. 2, ll. 59-62 and fig, 2). 27 Appeal No. 2010-001906 Application No. 11/533,634 7 5. Nevertheless, Glowa teaches that the angle between the sealing 1 sides might be varied to seal joints between structural members having 2 surfaces extending other than in perpendicular directions. 3 For example, the two sides forming the joint may 4 be coplanar in which case after joining they 5 become [a] continuous surface. In this case, the 6 angle between the two sealing sides of the head 7 portion would be 180 degrees, and preferably 8 slightly more than 180 degrees so that the sealing 9 sides are biased against the sides forming the joint. 10 (Glowa, col. 4, ll. 56-62; see also id., col. 6, l. 66 – col. 7, l. 2 (claim 20)). 11 This description would have been understandable to an ordinary layman, not 12 to mention one of ordinary skill in the art. 13 14 Foy 15 6. Foy describes a resilient seal having a sealing surface urged into 16 contact with a planar surface of a structural element, namely, a window 17 panel 14 of an automobile 16. Foy teaches providing a contacting layer 50 18 of flocking for contact with the window panel 14. (See Foy, col. 1, ll. 46-49; 19 col 4, ll. 38-41; col. 6, ll. 12-16; and fig. 3). 20 21 Andrzejewski 22 7. Andrzejewski describes channel-shaped strips for gripping and 23 covering edge flanges surrounding an opening of a vehicle. (Andrzejewski, 24 col. 1, ll. 6-9). 25 8. Andrzejewski’s channel-shaped strip consists of a metal core 8 26 covered with a plastic or rubber material 10. (Andrzejewski, col. 2, ll. 5-9). 27 The metal core 8 is integral with the channel-shaped strip in the sense that 28 Appeal No. 2010-001906 Application No. 11/533,634 8 the metal core 8 is embedded in the strip. (See Andrzejewski, fig. 2). As 1 depicted in Figure 2, the metal core 8 has a curved cross-section essentially 2 corresponding to a circumferential contour of the channel. 3 9. The strip includes a gripping rib 12 which extends along one 4 inside wall of the channel. The gripping rib is formed over a metal 5 reinforcement 29. The strip also includes smaller gripping ribs or serrations 6 14 along an opposite inside wall of the channel. The gripping rib 12 and the 7 serrations 14 grip and seal against a flange when the channel-shaped strip is 8 placed over the flange. (Andrzejewski, col. 2, ll. 9-18 and 58-62). 9 10 ANALYSIS 11 First Issue 12 The Examiner concludes that claims 15-20 and 23 are indefinite due 13 to the recitation of “lips configured to . . . overlap a butt joint between panels 14 of the at least one flooring panel and the connecting element” in independent 15 claims 15 and 23. The language of a claim satisfies the second paragraph of 16 § 112 only if “one skilled in the art would understand the bounds of the 17 claim when read in light of the specification.” Exxon Research & Eng’g Co. 18 v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim is indefinite 19 if the language of the claim is susceptible of no reasonable interpretation. 20 Id. Alternatively, a claim under examination susceptible of more than one 21 reasonable interpretation may be indefinite if the scope of the claim differs 22 significantly depending on which of the reasonable interpretations one 23 adopts. Ex Parte Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008). 24 The broadest reasonable interpretation of the term “at least one panel” 25 is that the term is sufficiently broad to encompass a single panel. On the 26 Appeal No. 2010-001906 Application No. 11/533,634 9 other hand, the recitation of “panels of the at least one flooring panel and the 1 connecting element” implies that the at least one flooring element must 2 include a plurality of panels. The use of two different terms to identify the 3 “at least one panel” and the “connecting element” implies that the 4 connecting element is not a panel. See CAE Screenplates Inc. v. Heinrich 5 Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)(“In the absence of any 6 evidence to the contrary, we must presume that the use of these different 7 terms in the claims connotes different meanings.”) 8 Therefore, the broadest reasonable interpretation of claims 15-20 and 9 23 is indefinite. Depending on which interpretation of the term “at least one 10 flooring panel” one adopts, claims 15 and 23 may be sufficiently broad to 11 encompass systems having only a single floor panel or may be limited to 12 systems each having a plurality of panels. The disclosure of paragraph 13 [0016] and Figure 1 of the Specification, cited by the Appellant at page 6 of 14 the Appeal Brief, does not resolve this ambiguity. We sustain the rejection 15 of claims 15-20 and 23 under § 112, second paragraph, as indefinite. 16 17 Second Issue 18 The Appellant contends that neither Grafenauer nor Glowa describes a 19 connecting element including “two lips lying opposite one another embodied 20 on a top side projecting beyond the one side edge and the opposite side 21 edge” as recited in claim 1. (See App. Br. 7). The Examiner correctly finds 22 that “Grafenauer discloses a connecting element (7), which is capable of 23 connecting flooring panels with a core of wooden material.” (Ans. 4; see 24 25 Appeal No. 2010-001906 Application No. 11/533,634 10 also FF 3).4 The Appellant concedes that Glowa also describes a 1 connecting element. (App. Br. 8 and 13). 2 Figures 2-4 of Glowa depict a connecting member 54 including a head 3 portion 86 with non-parallel extending sealing surfaces 89, 90. Glowa 4 teaches that the sealing surfaces 89, 90 are shaped to conform to 5 perpendicularly extending surfaces of a door jamb 50 and a brick mould 52 6 on either side of the joint. (FF 4). Nevertheless, Glowa also teaches joining 7 two structures with coplanar surfaces by means of a connecting member 8 having sealing sides extending opposite one another at an angle of 9 approximately 180°. (FF 5). In the Examiner’s words, Glowa teaches that 10 the lips 89, 90 “may form a coplanar joint where the sealing sides would be 11 180 degrees (col. 4, lines 52-65).” (Ans. 19). 12 The Examiner concludes that it would have been obvious: 13 to modify the connecting element of Grafenauer to 14 include two lips lying opposite one another 15 embodied on a top side projecting beyond opposite 16 side edges as taught by Glowa et al. in order to seal 17 the joints between the connecting element and 18 adjoining panels. 19 (Ans. 5). The problem of penetration of moisture through a joint into the 20 core of a flooring panel was known in the art. (See FF 2). The Examiner 21 correctly finds from the teachings of Glowa that sealing the joint was a 22 known solution to such a problem. The Examiner correctly concludes that 23 4 Since Grafenauer describes a plurality of flooring elements 1, 2 adjoining the connecting element 7 (FF 3), it is unnecessary to speculate as to the scope of the term “at least one flooring panel” as used in claim 15 in order to address whether claim 15 is patentable over the combined teachings of Grafenauer and Glowa. Therefore, we may address the patentability of claim 15 notwithstanding the rejection of claim 15 under the second paragraph of § 112. Appeal No. 2010-001906 Application No. 11/533,634 11 one of ordinary skill in the art familiar with the teachings of Grafenauer and 1 Glowa would have had reason to modify Grafenauer’s connecting element 7 2 in view of the teachings of Glowa to provide seals to address the moisture 3 penetration problem. 4 The Appellant contends that Glowa teaches away from the subject 5 matter of claims 1 and 15. More specifically, the Appellant looks to the 6 particular connecting element 54 depicted in Figures 2-4 of Glowa. The 7 Appellant argues that, with this configuration, 8 the sealing member would potentially interfere 9 with the connecting element connecting adjacent 10 panels, as it would extend into the joint of the 11 connecting element and the panel. Also, and even 12 more importantly, the sealing member would 13 extend upwards past the floor surface, making the 14 sealing member a tripping hazard. This would be 15 dangerous and, as such, one of skill would never 16 contemplate using such a sealing member 17 configuration for a flooring member. 18 (App. Br. 9-10; see also id. 15). 19 The Appellant’s argument does not persuade us of error in the 20 Examiner’s reasoning in support of the rejection. That reasoning does not 21 include substituting a connecting element identical to the particular 22 connecting element 54 depicted in Figures 2-4 of Glowa for the connecting 23 element 7 of Grafenauer. (See Ans. 5). 24 To the extent that Glowa might be deemed not to have provided an 25 express description of a connecting element having “two lips lying opposite 26 one another embodied on a top side projecting beyond the one side edge and 27 the opposite side edge, wherein the two lips are configured to provide a sole 28 sealing mechanism” as recited in claim 1, one of ordinary skill in the art 29 Appeal No. 2010-001906 Application No. 11/533,634 12 would have had reason to modify Grafenauer’s connecting element 7 to 1 include the feature. This is true even if other features of Glowa’s connecting 2 element 54, such as the walls 74, 76 might have been capable of making 3 some inherent contribution to the sealing of a joint in which the connecting 4 element was inserted. The Appellant does not suggest that one of ordinary 5 skill in the art might have deemed the results of the modification 6 unpredictable or that the modification would have been beyond the level of 7 ordinary skill. We sustain the rejection of claims 1, 6, 7 and 12 under 8 § 103(a) as being unpatentable over Grafenauer and Glowa. 9 The Appellant does not present any argument suggesting that claim 5 10 might be patentable over Grafenauer, Glowa and Pervan if claim 1 is not 11 patentable over Grafenauer and Glowa. (See App. Br. 23). We sustain the 12 rejection of claim 5 under § 103(a) as being unpatentable over Grafenauer, 13 Glowa and Pervan. 14 15 Third Issue 16 Claim 15 recites a system including a connecting element having “in 17 an area of the side edges, lips configured to be a sole sealing mechanism and 18 to bear on a top side of the at least one flooring panel and overlap a butt joint 19 between panels of the at least one flooring panel and the connecting 20 element.” (See App. Br. 13). Similarly, claim 3 recites a connecting 21 element according to claim 1 “wherein in a connection of two panels the lips 22 are structured and arranged to bear on a top side of the panels in a sealing 23 manner.” Glowa teaches sealing a joint between two structural members 24 having coplanar sides using a connecting element in which the angle 25 between the two sealing sides of the head portion would be 180°. Glowa 26 Appeal No. 2010-001906 Application No. 11/533,634 13 teaches that, after joining, the coplanar sides of the structural members form 1 a continuous surface. (FF 5). Translating these teachings to the connecting 2 element 7 of Grafenauer, the teachings would have provided one of ordinary 3 skill in the art reason to position the sealing sides at the top of the connecting 4 element in order to overlap the top surfaces of the adjacent flooring panels to 5 form a continuous surface across the joint. We sustain the rejection of 6 claims 3, 15 and 24 under § 103(a) as being unpatentable over Grafenauer 7 and Glowa. 8 9 Fourth Issue 10 Claim 2 depends from claim 1 and recites that the lips are elastically 11 resilient. The Examiner correctly finds that Glowa describes the lips as 12 biased against the sides of the joint. (Ans. 6; see also FF 5). Although the 13 Appellant contends that the head portion 86 is not inherently elastic (see 14 App. Br. 9), one of ordinary skill in the art confronted with the teachings of 15 Glowa would have had reason to modify Grafenauer’s connecting element 7 16 using sealing sides formed from elastically resilient material extending 17 opposite one another at an angle of approximately 180° in order to provide a 18 biasing force between the seal and the top surface of an adjacent flooring 19 panel. We sustain the rejection of claim 2 under § 103(a) as being 20 unpatentable over Grafenauer and Glowa. 21 22 Fifth Issue 23 The Appellant contends that Foy and Andrzejewski are non-analogous 24 art. (See App. Br. 22 and 25). The established precedent of our reviewing 25 Court sets up a two-fold test for determining whether art is analogous: “(1) 26 Appeal No. 2010-001906 Application No. 11/533,634 14 whether the art is from the same field of endeavor, regardless of the problem 1 addressed and, (2) if the reference is not within the field of the inventor’s 2 endeavor, whether the reference still is reasonably pertinent to the particular 3 problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 4 1348 (Fed. Cir. 2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 5 2004)). 6 One problem with which the Appellant was involved is that of 7 preventing moisture from penetrating through a joint into the core of a 8 flooring panel. (See Spec., paras. [0003]-[06]; see also FF 1 and 2). The 9 Examiner correctly finds that one of ordinary skill in the art seeking to seal a 10 joint between a flooring panel and a connecting element would have had 11 reason to look to the sealing art, including seals for automotive structures. 12 (See Ans. 20). Foy does not address flooring systems. Nevertheless, it 13 describes a resilient seal having a sealing surface urged into contact with a 14 planar surface of a structural element, namely, a window panel 14. (See FF 15 6). Therefore, the teachings of Foy are reasonably pertinent to a particular 16 problem with which the inventor was involved. Foy is not non-analogous 17 art. 18 In Grafenauer, the Appellant proposed addressing the moisture 19 problem by providing a tight connection on the top of the joined panels. (FF 20 1 and 2; see also Spec., para. [0016]). This statement implies that another 21 problem with which the Appellant was involved was that of providing a tight 22 connection between the connecting element and the adjacent flooring panels. 23 Not only is Andrzejewski within the sealing art, but Andrzejewski describes 24 a sealing strip including an embedded metal carrier 8 designed to grip an 25 edge flange or tongue. (FF 7 and 8). Therefore, Andrzejewski is reasonably 26 Appeal No. 2010-001906 Application No. 11/533,634 15 pertinent to the problem of locking connected panels in the transverse 1 direction without the necessity of adding glue to the grooves or tongues used 2 for locking the panels so as to tighten the connection on the top of the joint 3 between a flooring panel and the connecting element. (See Ans. 22; see also 4 Spec., para. [0011]). Since the teachings of Andrzejewski are reasonably 5 pertinent to a particular problem with which the inventor was involved, 6 Andrzejewski is not non-analogous art. 7 Klein is distinguishable. In Klein, our reviewing court criticized the 8 Board for attempting to redefine in general terms the particular problem with 9 which the applicant was involved. See id. at 1351 n.1. Here, the statements 10 of the problems with which the Appellant was involved were taken from the 11 Appellant’s Specification and from the Appellant’s statements in 12 Grafenauer. In Klein, our reviewing court also criticized the Board because 13 the cited references addressed a problem different from that with which the 14 applicant was involved, namely, separating solid objects rather than “making 15 a nectar feeder with a movable divider to prepare different ratios of sugar 16 and water for different animals.” Id. at 1350-51. Here, the references 17 address the same sealing and joint tightening problems addressed by the 18 Appellant. The Appellant points to nothing in the holding of Klein 19 inconsistent with finding that Foy and Andrzejewski are not non-analogous 20 art. 21 The Appellant presents no persuasive argument suggesting error in the 22 rejection of claims 4, 13, 16 and 17. We sustain the rejection of these claims 23 under § 103(a) as being unpatentable over Grafenauer, Glowa and Foy. 24 Appeal No. 2010-001906 Application No. 11/533,634 16 Sixth Issue 1 Claim 21 recites a connecting element including “a clamp that 2 increases a spring force of the groove of the connecting element.” The 3 Examiner finds that neither Grafenauer nor Glowa describe this feature. 4 Instead, the Examiner correctly finds that Andrzejewski describes “a channel 5 shaped member comprising plastic (10), wherein the channel shaped 6 member includes a metal clamp (8) for strength and improved gripping 7 properties for engaging a flange (fig. 2; col. 1, lines 31-54; col. 2, lines 6-8 9).” (Ans. 11; see also FF 8). The Examiner concludes that it would have 9 been obvious “to modify the groove (channel) of Grafenauer, previously 10 modified by Glowa et al.[,] to include an inserted clamp corresponding with 11 the groove (channel) as taught by Andrzejewski et al. in order to provide 12 strengthening of the connecting element and improved gripping properties 13 (spring force) of the groove when engaging an adjacent panel.” (Id.) 14 The Appellant argues that one of ordinary skill in the art would 15 recognize that “gripping ribs 12 and serrations 14 [described in 16 Andrzejewski] provide the sealing mechanism and prevent removal, and that 17 there is no indication, whatsoever, that the clamp 8, itself, is designed to 18 increase a spring force, much less a spring force of a groove of a connecting 19 element (or prevent removal).” (App. Br. 25). In view of this argument, the 20 Appellant contends that one of ordinary skill in the art would not have had 21 reason to combine the teachings of Grafenauer, Glowa and Andrzejewski in 22 the fashion claimed. (Id.) 23 We adopt the Examiner’s reasoning in response to this argument: 24 Regarding the clamp, Examiner submits the 25 clamp (metal carrier, 8) of Andrzejewski et al. 26 would increase the spring force of the groove and 27 Appeal No. 2010-001906 Application No. 11/533,634 17 thus the gripping ability. It is submitted the 1 covering material (10) is of a plastic or rubber 2 material in which the metal core or carrier is added 3 for reinforcement (figs. 1-2; col. 2, lines 5-9). 4 Note the gripping rib noted by Appellant also 5 includes metal reinforcement in order to provide a 6 more resilient gripping rib for improved gripping. 7 As the carrier (8) of Andrzejewski et al. is of a 8 more resilient material (metal) than that of the 9 covering material (plastic or rubber), one of 10 ordinary skill in the art at the time of the invention 11 would [have] recognize[d] the inclusion of 12 reinforcement would [have] increase[d] the spring 13 force of the groove or in other words the 14 groove[’]s ability to resist deformation similar to 15 the gripping rib. If no reinforcement is present, the 16 groove connector of Andrzejewski et al. would be 17 more susceptible to deformation. 18 (Ans. 21-22; see also FF 7-9). 19 Since it was known to be desirable to ensure a tight connection on the 20 top of the joined panels in order to avoid penetration of moisture into the 21 core (FF 2); and since one of ordinary skill in the art familiar with the 22 teachings of Andrzejewski would have recognized that the metal carrier 8 23 contributed to the gripping ability of Andrzejewski’s channel-shaped strip, 24 one of ordinary skill in the art would have had reason to provide 25 Grafenauer’s connecting element 7 with an integral clamp embedded in the 26 connecting element 7 around the groove 4 in order to tighten the grip 27 between the connecting element 7 and an adjacent flooring panel 1. The 28 Appellant does not suggest that one of ordinary skill in the art might have 29 deemed the results of the modification unpredictable or that the modification 30 would have been beyond the level of ordinary skill. We sustain the rejection 31 Appeal No. 2010-001906 Application No. 11/533,634 18 of claims 8-11, 14 and 21-23 under § 103(a) as being unpatentable over 1 Grafenauer, Glowa and Andrzejewski. 2 The Appellant separately addresses the rejections of claims 10, 14 and 3 18-20. (See App. Br. 32-34). Concluding that these separate arguments are 4 unpersuasive, we sustain the rejections of claims 10 and 14 under § 103(a) 5 as being unpatentable over Grafenauer, Glowa and Andrzejewski; and of 6 claims 18-20 under § 103(a) as being unpatentable over Grafenauer, Glowa, 7 Foy and Andrzejewski. 8 9 DECISION 10 We AFFIRM the Examiner’s decision rejecting claims 1-24. 11 No time period for taking any subsequent action in connection with 12 this appeal may be extended under 37 C.F.R. § 1.136(a). 13 14 AFFIRMED 15 16 17 18 Klh 19 Copy with citationCopy as parenthetical citation