Ex Parte Groeke et al

Patent Trial and Appeal Board

Apr 26, 2017

12858644 (P.T.A.B. Apr. 26, 2017)

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.
12/858,644 08/18/2010 Carsten GROEKE 3910-40002 6300
25570 7590 04/28/2017
Roberts Mlotkowski Safran Cole & Calderon, P.C.
7918 Jones Branch Drive
Suite 500
McLean, VA 22102
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
lgallaugher@rmsc2.com
docketing@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARSTEN GROEKE and MARTIN PRAGER
Appeal 2015-005783
Application 12/858,6441
Technology Center 2800
Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4—18, 20—27, 29, and 30, which constitute all
claims pending in the application. App. Br. 66—69 (Claims App’x). Claims
2, 3, 19, and 28 have been cancelled. An oral hearing was held on April 20,
2017. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Flooring Technologies Ltd. as the real party in interest.
App. Br. 2.
Appeal 2015-005783
Application 12/858,644
STATEMENT OF THE CASE
The Claimed Invention
Appellants’ invention relates to methods for producing synthetic floor
panels in patterns made to look and feel like genuine wood, and in particular,
having specific chamfer cuts. Spec. Tflf 3^4. A chamfer is a type of edge or
groove in carpentry, like a beveled edge.2 Claim 1 is representative of the
invention and the subject matter of the appeal, and reads as follows (with
formatting added and the disputed limitations emphasized):
1. A method for producing a panel with a core of a wooden
material, comprising
guiding a side edge (I or II) of the panel past an oscillating
laser which has a mass unbalance to generate an oscillation
about an axis running parallel to a transport direction (T) of the
panel to form a chamfer having an angle which at different points
along a length of the panel have different values,
wherein the angle at the different points forms angles a,
ai, and 0.2 which are arbitrary and non-continuous and changes
over a length (Li) of an area of the chamfer,
wherein the angle is determined iteratively in an area
embodied at a constant angle in order to obtain a V joint of
different widths due to the changing angles a, ai, and (X2 over the
length of the panel, and a lower edge of the chamfer is cut
straight, based on the visible side, such that an impermeable
connection of two panels is provided.
App. Br. 66 (Claims App’x).
2 See Oxford English Dictionary Online,
http://www.oed.com/view/Entry/30359?rskey=orKzds&result
=l&isAdvanced=false#eid (last visited 4/21/2017).
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Appeal 2015-005783
Application 12/858,644
Prior Art
The Examiner relies upon the following prior art:
Gillis 3,779,294 Dec. 18, 1973
Lewark US 2005/0076598 Al Apr. 14, 2005
Brooks US 2005/0175424 Al Aug. 11,2005
Brouckaert et al. US 8,056,236 B2 Nov. 15,2011
The Rejections on Appeal
Claims 1, 4—18, 20-27, and 29 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Lewark, Gillis, and Brouckaert et al.
(“Brouckaert”). Final Act. 2—17.
Claim 30 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lewark, Gillis, Brouckaert, and Brooks. Final Act. 17—
20.
ANALYSIS
We have reviewed the Examiner’s rejections in light of the arguments
raised in the Briefs. On the record before us, we cannot sustain the
Examiner’s rejections.
Obviousness Rejection of Claims 1, 4—18, 20—27, and 29
Appellants argue the Examiner erred in finding the prior art teaches or
suggests a “method for producing a panel. . . wherein ... a lower edge of
the chamfer is cut straight,” as recited in claim l.3 App. Br. 6—7; Reply Br.
2 (emphasis added). Specifically, Appellants contend the Examiner relies
3 Independent claims 20 and 29 recite limitations commensurate in scope
with the foregoing disputed limitation, i.e., “lower edge of the chamfer cut
straight” and therefore forming an impermeable connection. App. Br. 68—
69.
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Appeal 2015-005783
Application 12/858,644
solely on Lewark as teaching the foregoing limitation, but that Lewark “only
show[s] a cross sectional view such that it is not possible to determine . . .
whether the chamfer is cut straight” and therefore forms an “impermeable
connection” as required by claim 1. App. Br. 7. On the record before us, we
are persuaded by Appellants’ argument.
The Examiner finds the disputed limitation taught or suggested in
Lewark Figure 1 and paragraph 13, which illustrate and describe a particular
panel. Ans. 2—3. Specifically, the Examiner finds Appellants’ disputed
limitation, which recites characteristics of a product formed by the claimed
method, would have been obvious from the product illustrated in Lewark.
Id.; see In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in
the product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.”) (citations omitted). Lewark Figure 1 is reproduced
below.
Figure 1 is a “side view of a panel” 1 in accordance with the invention
taught in Lewark. Lewark || 6, 12. It includes “chamfers” 8 and 9 “running
at an angle of up to 45-.” Id. at 113. The figure further illustrates a
“decoration 2 [and 2a]” is applied to the “visible side” of the panel 1 and the
chamfers 8 and 9. Id. at || 12—13.
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Appeal 2015-005783
Application 12/858,644
The Examiner’s only explanation in the Answer, as to how Lewark
Figure 1 and paragraph 13 teach or suggest Appellants’ claimed “lower edge
of the chamfer cut straight,” is “see the figure and paragraph [0013], where
the lower edge of the chamfers 8, 9 are cut straight.” Ans. 3. This circular
explanation of the two-dimensional drawing of Lewark does not suffice to
establish a prima facie case of obviousness. See, e.g., KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some rational
underpinning to support the legal conclusion of obviousness.”).
Lewark Figure 1 (the only drawing in Lewark) is, as Appellants argue,
strictly a two-dimensional side-view that does not illustrate the “lower edge”
of a chamfer.4 App. Br. 7. Appellants’ Figure 5, by contrast, shows a
“chamfer on a panel in perspective [three dimensional] representation.”
Figure 5 of Appellants’ Specification is reproduced below.
4 As noted above, although the “strips” 2 and 2a shown in Lewark Figure 1
may give the optical illusion of a third dimension, they actually represent a
decoration layer in the two-dimensional view.
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Appeal 2015-005783
Application 12/858,644
Figure 5 illustrates an embodiment of a panel made from Appellants’
claimed method, including chamfer angle a and width B, with the chamfer
angle changing over the length L of panel 1. Spec. 4—5. The lower edge of
the chamfer (running parallel to length L, i.e., the depth perspective of the
figure) is shown as cut straight, as recited in claim 1. This edge cannot be
seen in Lewark’s two dimensional Figure 1, and the Examiner has identified
nothing in the record that suggests the chamfer lower edge taught in Lewark
is cut straight. App. Br. 7. Because the edge cannot be seen in Lewark’s
two dimensional Figure 1, for us to affirm the Examiner on this record
would require speculation on our part. We decline to engage in speculation.
Accordingly, we are persuaded of error on the record before us. We
need not consider Appellants’ remaining arguments. For the foregoing
reasons, we do not sustain the obviousness rejection of claim 1. For the
same reasons, we also do not sustain the obviousness rejection of
independent claims 20 and 29, which recite limitations commensurate in
scope with the disputed limitation and are subject to the same rejection. Nor
do we sustain the rejection of dependent claims 4—18 and 21—27, which
include the limitations of independent claims 1 and 20, respectively.5
5 In the event of further prosecution, Appellants and the Examiner may wish
to consider whether claim 1 (specifically, for example, the terms “mass
unbalance” and “visible side”) is sufficiently definite under 35 U.S.C. § 112,
second paragraph. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
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Appeal 2015-005783
Application 12/858,644
Obviousness Rejection of Claim 3 0
Appellants argue the Examiner erred in rejecting claim 30 for the
same reasons as claim 1. See, e.g., App. Br. 53. Claim 30 recites a method
for producing a panel wherein “a size of an angle of the chamfer varies” but
a “lower edge of the chamfer remains constant. . . such that an impermeable
connection of two panels is provided.” App. Br. 69 (Claims App’x). The
Examiner cites “the reasoning applied . . . with respect to claim 1” in finding
this limitation taught in the prior art (and specifically, Lewark). Ans. 14;
Final Act. 17.
For the reasons set forth above with respect to claim 1, we are
persuaded the Examiner erred, on the record before us, in rejecting claim 30.
Accordingly, we do not sustain the obviousness rejection of claim 30.
DECISION
We REVERSE the Examiner’s rejections of claims 1, 4—18, 20—27,
29, and 30.
REVERSED
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