12066115 (P.T.A.B. Jul. 24, 2014)

Ex Parte Kiefel et al

Patent Trial and Appeal BoardJul 24, 2014

12066115 (P.T.A.B. Jul. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/066,115 04/11/2008 Heinz Kiefel 08-197 6604 34704 7590 07/25/2014 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 EXAMINER HIJAZ, OMAR F ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 07/25/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HEINZ KIEFEL and FRANZ SCHRATTENECKER ____________ Appeal 2012-006058 Application 12/066,115 Technology Center 3600 ____________________ Before: LYNNE H. BROWNE, JILL D. HILL, and TIMOTHY J. GOODSON, Administrative Patent Judges. GOODSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Heinz Kiefel and Franz Schrattenecker (Appellants) appeal under 35 U.S.C. § 134(a) from the rejection of claims 1 and 11–17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claims are directed to a panel that can be connected with other like panels for building walls, ceilings or floor surfaces. Spec. para. 1. Claim 1 is reproduced below: Appeal 2012-006058 Application 12/066,115 2 1. A panel, prepared for mechanical connection with at least one further, like panel by pivoting, comprising: a groove and tongue profile (6, 8) for fixing the panels (2, 4) at the same height with respect to each other, said groove profile (6) having a short groove cheek (14), a groove bottom (16) and a long groove cheek (18) at least on one side of said panel, and said tongue profile (8) corresponding to the groove profile (6) on at least one side of said panel, wherein the long groove cheek (18), at its free end (20), has a greater thickness (M) than in the area under the free end of the short groove cheek (14), and wherein the groove and tongue in a joined state each have top bearing surfaces (24a, 24b) with respect to a top surface of the tongue profile which are inclined with respect to the top surface (10) of the panel (2, 4), and bottom bearing surfaces (26a, 26b) which are rounded, locking means (28a, 28b) for fixing said panels (2, 4) in the same plane with respect to each other, including a locking face (28b) on said tongue and a locking face (28a) on said groove, wherein the locking faces (28a, 28b) are arranged on said groove and on said tongue between said top surface (10) and a bottom surface (12) of said panels (2, 4) in the area of the groove bottom (16), wherein the height H of the locking faces (28a, 28b) is not more than 20% of the maximum height M of the long groove cheek (18), wherein at least sections of the top side (30) of the long groove check (18) are obliquely arranged, wherein the top bearing surfaces (24a, 24b) contact each other when said panels are fixed in the same plane with respect to each other, and wherein the bottom bearing surfaces (26a, 26b) contact each other when said panels are fixed in the same plane with respect to each other. PRIOR ART The Examiner relies on the following evidence: Thiers US 7,624,552 B2 Dec. 1, 2009 Appeal 2012-006058 Application 12/066,115 3 GROUND OF REJECTION Claims 1 and 11–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thiers. Ans. 4. OPINION Appellants argue claims 1 and 11–17 together, and provide an additional argument on dependent claim 17. App. Br. 9; Reply Br. 3, 4. We first address the arguments Appellants present for all claims, selecting claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We then separately address claim 17. The Examiner finds that Thiers discloses bottom bearing surfaces which are rounded as required by claim 1. Ans. 5. In particular, the Examiner identifies contact surfaces 27, 28 as corresponding to the claimed “bottom bearing surface.” Id. Appellants argue that the contact surfaces 27, 28 are straight rather than being “rounded.” App. Br. 9; Reply Br. 2–3. In response to this argument, the Examiner cites Thiers’ description that “[a]s represented in FIG. 9, a bulge or protrusion 30 can be provided in the lower lip 11 on the contact zone 29.” Thiers, col. 11, ll. 19–20. We note that as shown in figure 9, bulge or protrusion 30 occurs at the contact surface 28, thus making this contact surface rounded. Further, mating contact surface 27 is also rounded where it contacts bulge or protrusion 30. Accordingly, Appellants’ argument is not persuasive. Appellants further argue that the bulge 30 in Figure 9 is curved in the opposite direction from their invention. Reply Br. 3. This argument is not commensurate with the claim scope Appellants seek, insofar as claim 1 does not specify a direction of curvature for the rounded bottom bearing surfaces. Appeal 2012-006058 Application 12/066,115 4 Appellants argue that surfaces curved in the direction of Thiers’ bulge 30 “could not properly be considered bottom bearing surfaces within the definition of the present invention” (Reply Br. 3), but Appellants do not point to any definition of “bottom bearing surfaces” in the Specification. Thus, Appellants’ arguments concerning claim 1 are not persuasive. Claim 17 Claim 17 recites that “when the groove and tongue profile (6, 8) are moved from a non-engaged position to a positive engagement, no deformation of the groove and tongue profile (6, 8) occurs.” Citing Figure 9, the Examiner finds that Thiers “discloses the groove and tongue profile are not deformed when in a positive engagement.” Ans. 9. The Examiner further finds that Thiers “does not specifically disclose that when the groove and tongue profile are moved from a non-engaged position to a positive engagement, no deformation occurs.” Id. However, the Examiner reasons that “these limitations are drawn to the method or process of forming the product” and “since this claim is an apparatus claim, the prior art only needs to show the final product.” Id. (citing MPEP § 2113). The Examiner’s reliance on rules governing product-by-process claims is improper. Claim 17 is not a product-by-process claim, because it does not define the claimed panel in terms of the process by which it is made. See MPEP § 2173.05(p). Rather, claim 17 recites additional features of a panel having the structure set forth in claim 1, from which it depends. Because “every limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines,” In re Wilder, 429 F.2d 447, 450 (CCPA Appeal 2012-006058 Application 12/066,115 5 1970), the Examiner erred in refusing to give weight to all of the limitations in claim 17. For the foregoing reasons, we sustain the Examiner’s rejection of claim 1, as well as dependent claims 11–16, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We do not sustain the rejection of claim 17. DECISION We AFFIRM the Examiner’s rejection of claims 1 and 11–16. We REVERSE the Examiner’s rejection of claim 17. 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 rvb