Ex Parte Hansson et al

Board of Patent Appeals and Interferences

Nov 30, 2010

10440317 (B.P.A.I. Nov. 30, 2010)

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.
10/440,317 05/19/2003 Krister Hansson 8688.009.USDV01 8592
74217 7590 11/30/2010
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
AMAKWE, TAMRA L
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
11/30/2010 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 KRISTER HANSSON, JOHAN LUNDGREN,
AND HAKAN WERNERSSON
____________

Appeal No. 2009-010250
Application No. 10/440,317
Technology Center 1700
____________

Before RICHARD SCHAFER, RICHARD TORCZON and MICHAEL
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Pergo AB
(“Pergo”), under 35 U.S.C. § 103(a), from a final rejection of claims 44-70,
the only claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Piacente et al. U.S. 5,858,160 Jan. 12, 1999
Moriau U.S. 6,006,486 Dec. 28, 1999

The Invention
Pergo’s invention relates to a process of manufacturing laminated
flooring having an upper decorative surface said to have “considerably
improved matching of the décor between adjacent surface elements.”
(Spec., 1). Pergo’s invention is described as a process for manufacturing
surface elements having a supporting core and a decorative upper layer,
where the décor can be a printed décor. (Spec., 2).
Pergo seeks to provoke an interference with Garcia, U.S. Patent
6,691,480, which is directed to laminated materials that are mechanically
embossed where the embossed texture corresponds to or is “in-register with”
a visual image on the laminate. (Garcia, abstract and 7:10-15). As such,
Pergo amended its claims during the course of prosecution using Garcia’s
claims as a template. Pergo claim 44 is representative of Pergo’s claims on
appeal and reads as follows:

44. An embossed-in-registration laminate system
comprising:
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a plurality of embossed-in-registration laminates, each
having a plurality of locking mechanisms;
wherein said plurality of embossed-in-registration
laminates lock together using said plurality of locking
mechanisms to form an embossed-in-registration laminate
system; and
wherein said embossed-in-registration laminate system
includes:
intraboard boundary lines having a width;
a vertical edge boundary line, having a width, that is
comprised of a top boundary line of a first embossed-in-
registration laminate of said plurality of embossed-in-
registration laminates and of a bottom edge boundary line of a
second embossed-in-registration laminate of said plurality of
embossed-in-registration laminates; and
a horizontal edge boundary line, having a width, that is
comprised of a right boundary line of a third embossed-in-
registration laminate of said plurality of embossed-in-
registration laminates and of a left edge boundary line of a
fourth embossed-in-registration laminate of said plurality of
embossed-in-registration laminates.

(App. Br. Claims App’x 10).

The Rejection on Appeal
The Examiner rejected claims 44-70 under 35 U.S.C. § 103(a) over
Moriau in view of Piacente. (Ans. 3).2

B. ISSUE
Would it have been obvious to one skilled in the art to construct
laminated flooring whose surface is embossed such that the embossed

2 The Examiner also rejected the claims over Piacente in view of Moriau.
(Ans. 5). As recognized by Pergo, however, the substance of the rejection is
the same whether it is styled as Piacente in view of Moriau or Moriau in
view of Piacente. (Second Supplemental Reply Brief, 8).
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portion is in-register with (“corresponds to”) a printed decorative pattern
already on or near the upper surface of the laminate?

C. FINDINGS OF FACT

Pergo’s Specification and Drawing

1. Pergo Figure 1, the only figure in Pergo’s application, is said to depict
a supporting core 5 having an upper side 1’, a lower side 4, and edges 3 for
joining adjacent boards where the upper side is provided with a décor 2’.
(Pergo, Specification, original claim 1).

Pergo Fig. 1 depicts a core having upper and lower sides and edges.

Piacente, U.S. Pat. 5,858,160
2. Piacente describes decorative surface coverings having embossed
patterns in register with inlaid patterns. (Piacente, abstract).
3. Piacente states that it is a common practice to emboss the surface of a
floor covering product to simulate leather, textured cloth, bricks, wood and
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other natural surfaces. (Id. at 1:53-57).
4. Piacente states that it is desirable to produce a pattern of inlaid
material in register with an embossed pattern. (Id. at 2:4-7).
5. Piacente teaches that one skilled in the art can produce embossed in-
register patterns using an embossing roll with the understanding that lining
up the embossing plate and a pattern can be difficult due to the limitations of
the equipment and the process used in mechanical embossing. (Id. at
2:1-23).
6. Piacente claims a method of forming decorative surface coverings by
placing a foamable layer onto a nonfoamable substrate and foaming the
foamable layer to produce an embossed surface. (Id., claim 2).
7. Piacente states that its invention is most readily suitable for use in the
manufacture of multilayered sheeting designed for use as floor coverings.
(Id., 15:27-35).

Moriau, U.S. Patent 6,006,486
8. Moriau is directed to laminated floors where flooring panels are
coupled together so as to avoid gaps between the panels. (Moriau, 1:5-13,
1:66-2:12).
9. Moriau Figure 1, reproduced below, depicts a floor panel according to
the invention having edges opposite two sides 2-3, provided with coupling
parts 4-5, which permit two adjacent panels to be coupled together. (Id. at
5:23-26).
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10. Moriau states that its panels can be imprinted with a variety of
patterns, including wood, stone or cork patterns. (Moriau, 8:67-9:4).

D. PRINCIPLES OF LAW
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 406 (2007). Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. Id. at 420. In
particular, the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. at 416.

E. ANALYSIS
The Examiner rejected all the claims on appeal, claims 44-70, under
35 U.S.C. § 103(a) as obvious over the combined teachings of Moriau and
Piacente. Generally, the Examiner has taken the position that it would have
been obvious to one of ordinary skill in the art to use the embossed-in-
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register flooring décor of Piacente with the laminated flooring system of
Moriau. Specifically, the Examiner states that Piacente teaches that the
embossed-in-register décor provides for a unitary pattern and improves the
cost and efficiency of producing decorative flooring and as Moriau teaches
that its laminated flooring panels can be interlocked to prevent the panels
from drifting apart, which would detract from the décor.
Pergo argues all the claims collectively with independent claim 44 but
does provide additional sets of arguments with respect to i) claims 48, 54
and 55 and ii) claims 50 and 70. Generally, Pergo contends that the Board
should terminate the appeal and remand for a declaration of interference so
as to avoid unnecessary delays and costs. Alternatively, Pergo suggests the
Examiner be reversed as the references are directed to non-analogous art and
do not teach or suggest the claimed invention. Pergo’s contentions are
discussed below.

1. Pergo’s Request to Terminate this Appeal is Denied

Pergo contends that the issued Garcia patent will be directly affected
by the Board’s decision in this appeal. Pergo contends that the Board should
terminate the interference and declare an interference between Pergo and
Garcia to avoid unnecessary costs and delays and to give Garcia an
opportunity to be heard. (App. Br. 1-2).
Contested cases are generally much more expensive than ex parte
proceedings. Consequently, it makes little sense to initiate a contested case
before all patentability issues (other than those that are the subject of the
contested case) have been resolved. Brenner v. Manson, 383 U.S. 519, 528
n.12 (1966) (rejecting the proposition that an interference must be declared
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when the applicant's interfering claims are unpatentable). Accordingly, we
decline to exercise our authority and declare an interference, should one
exist, prior to resolving the patentability issues presented in the appeal.

2. Moriau and Piacente are Analogous Art

Pergo contends that Moriau and Piacente are non-analogous art as
neither reference is directed to forming embossed-in-registration laminates.
(App. Br., 5). Specifically, Pergo contends that one of ordinary skill in the
art would not look to the teachings of Moriau and Piacente to form an
embossed-in-registration laminate system as neither reference teaches the
combination of laminates with an embossed-in-register surface. (Id.).
A reference is analogous art if it is either in the same field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006);
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Both Moriau and Piacente are directed to the same field of invention
as the presently claimed art. Specifically, Pergo, Moriau and Piacente all
relate to flooring systems formed from interconnected flooring panels that
have decorative décors on their surfaces. Accordingly, we hold that Pergo
has failed to establish that Moriau and Piacente represent a different field of
endeavor.
Additionally, Pergo has failed to demonstrate that Moriau and
Piacente are not reasonably pertinent to Pergo’s problem. Specifically,
Pergo seeks to form a system of laminates having a pattern formed on its
surface. Both Moriau and Piacente, like Pergo, seek to form a flooring
system having a décor on their respective surfaces that can form a pattern,
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e.g., bricks, wood and other natural surfaces. (Piacente, 1:53-57; Moriau,
8:67-9:4). Accordingly, Pergo has failed to establish that Piacente and
Moriau’s flooring systems having patterned décors are not reasonably
directed to the problem with which the present invention is concerned.

3. One Skilled in the Art Had Reason to Combine the Teachings
of Piacente and Moriau to form an Embossed-In-Register
Laminated Flooring

Piacente teaches that it is common practice to emboss the surface of a
floor to add decorative appeal and that suitable embossing includes brick,
wood and other natural surfaces. (Piacente, 1:53-60). Piacente also teaches
that it is desirable in certain applications to produce flooring embossed-in-
register with patterns. (Id., 2:4-7). Piacente further teaches that its chemical
embossing technique improves the efficiency and economy of producing
decorative inlaid structures. (Id., 15:21-25). Moriau teaches a laminated
floor where the panels are coupled together such that gaps are eliminated.
(Moriau, 2:8-12). Moriau, like Piacente, teaches that its flooring can have a
decorative layer pattern such as wood or stone. (Id., 8:65-9:4). We hold that
one skilled in the art had reason to combine the known flooring components
to form the claimed embossed-in-register laminate. Specifically, we hold
that Pergo’s claims represent a combination of known elements (embossed
in-register décor, laminated interlocking flooring panels) for their known
purpose (decorative flooring) to achieve a predictable result (a flooring
surface without gaps that has an embossed-in-register decorative pattern).
Pergo contends that Piacente does not teach or suggest an embossed-
in-register laminate. (App. Br. 4). Specifically, Pergo contends that
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Piacente does not describe or suggest a “laminate” or intraboard, vertical
edge and horizontal boundary lines. (App. Br. 4 and 7). Pergo further states
that Moriau, although describing a laminate, does not disclose intraboard,
vertical edge or horizontal edge boundary lines. (App. Br. 7).
Obviousness is not limited to the express teachings of a single prior
art reference but is based upon what the combined teachings of the prior art
suggest to the person of ordinary skill in the art. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Moriau describes a laminated flooring formed with
panels having vertical and horizontal edge boundary lines. (Compare
Moriau Fig. 1 and Pergo Fig. 1). Specifically, both Moriau and Pergo depict
laminated panels having distinct vertical and horizontal edges where panels
have locking mechanisms to form a laminated flooring system. Further,
Piacente states that it is a common practice to emboss flooring with patterns
such as bricks, which would have “intraboard” boundary lines. We hold that
one of ordinary skill in the art seeking to avoid gaps would have had reason
to use Moriau’s laminated flooring panels, with their horizontal and vertical
edges, and further that Piacente directs one skilled in the art to its embossed-
in-register decorative patterns, such as brick, as such patterns provide
improved efficiency and economy over prior embossed patterns.
Pergo also contends that Moriau is formed using a decorative paper
layer and that one skilled in the art would not know how to maintain
Piacente’s expanded resin in registration with the printed pattern. We do not
credit Pergo’s unsupported conjecture that one skilled in the art would not
have been able to follow the teachings of Piacente when using a laminated
flooring structure. Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092
(Fed. Cir. 1997)(Nothing in the rules or in jurisprudence requires the trier of
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fact to credit unsupported or conclusory assertions).
Additionally, Pergo contends that Piacente teaches away from
physically embossing a laminate. Pergo’s claims however, are not limited to
physical embossing processes. Further, Piacente teaches one skilled in the
art could physically emboss-in-register, albeit with care. (Piacente, 2:1-23).
We hold that the Examiner has established that Pergo independent
claim 44 is obvious over the combined teachings of Piacente and Moriau.

4. The Combination of Piacente and Moriau Render Obvious
Flooring Patterns That Extend from One Panel to Another

Pergo contends that dependent claims 48, 54 and 55 require that the
decorative pattern bridge the gap between two laminates and that the cited
prior art fails to teach such a feature. (App. Br. 7-8). As discussed above,
both Piacente and Moriau teach that various patterns may be placed on
flooring surfaces. Further, Piacente specifically teaches decorative flooring
surfaces simulating bricks, which is a pattern that would extend from one
panel to another.

5. The Combination of Piacente and Moriau Render Obvious
Marble and Granite Flooring Patterns

Pergo dependent claims 50 and 70 require marble or granite motifs for
the claimed laminate system and Pergo contends that this décor is not taught
by Piacente or Moriau. (App. Br. 8). Marble and granite are well known
“natural surface” flooring patterns. Piacente teaches that it was known in the
art to simulate natural surfaces and Moriau explicitly teaches the use of
stone patterns. We hold that the selection of a known natural surface stone
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pattern for its known purpose (flooring décor pattern) would have been
obvious to one of ordinary skill in the flooring art.

F. CONCLUSION
It would have been obvious to one skilled in the art to construct
laminated flooring whose surface is embossed such that the embossed
portion is in-register with (“corresponds to”) a printed decorative pattern
already on or near the upper surface of the laminate.

G. ORDER
The rejections of claims 44-70 under 35 U.S.C. § 103(a) as
unpatentable over Piacente and Moriau are 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)(1)(iv).

AFFIRMED
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ak

THOMAS P. PAVELKP, ESQUIRE
Novak, Druce & Quigg, LLP
300 New Jersey Avenue, N.W.
Fifth Floor
Washington, D.C. 20001