Ex Parte Leopolder et al

Patent Trial and Appeal Board

Dec 31, 2013

11570710 (P.T.A.B. Dec. 31, 2013)

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.
11/570,710 08/21/2007 Christian Leopolder BARDP0143US 4251
49457 7590 12/31/2013
DON W. BULSON (General)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
12/31/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte CHRISTIAN LEOPOLDER and MAIK MOEBUS 7
___________ 8
9
Appeal 2012-001534 10
Application 11/570,710 11
Technology Center 3600 12
___________ 13
14
15
Before JAMES P. CALVE, HYUN J. JUNG, and THOMAS F. SMEGAL, 16
Administrative Patent Judges. 17
18
SMEGAL, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL22
Appeal 2012-001534
Application 11/570,710

2

STATEMENT OF THE CASE1 1
Christian Leopolder and Maik Moebus (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 1-9 and 11-15, the only 3
claims pending in the application on appeal. (App. Br. 3). We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
SUMMARY OF DECISION 6
We REVERSE. 7
CLAIMED SUBJECT MATTER 8
The Appellants’ claimed subject matter relates to a wall panel with 9
coupling means (Spec. 2:ll.1-2). 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 1, the sole independent claim, which is reproduced below. 12
1. A wall or ceiling covering panel having on one side a groove 13
formed between two lips and on an opposite side a tongue 14
which is formed such that it can be inserted into the groove 15
of a further similarly formed panel and connected therewith 16
in multiple different positions, wherein the two lips have at 17
least one locking element and the tongue has at least one 18
locking element, the locking elements being configured to 19
lockingly engage one another in the multiple different 20
positions to lock together the tongue and groove in the 21
multiple different positions, respectively, such that a spacing 22
of the panel relative to the further panel can be 23
correspondingly adjusted with at least one of the multiple 24
different positions allowing the tongue to be viewed 25
between the panel and further panel, and a décor layer 26
provided on and at least partially covering the tongue. 27

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 31, 2011) and Reply Brief (“Reply Br.,” filed October 3,
2011), and the Examiner’s Answer (“Ans.,” mailed August 3, 2011).
Appeal 2012-001534
Application 11/570,710

3

REFERENCES 1
The Examiner relies upon the following prior art: 2
Martensson US 6,588,166 B2 Jul. 8, 2003 3
Doherty US 6,658,808 B1 Dec. 9, 2003 4
Moriau US 7,040,068 B2 May 9, 2006 5
REJECTIONS ON APPEAL 6
A. Claims 1-7, 9, and 14 stand rejected under 35 U.S.C. § 102(b) as 7
being anticipated by Doherty. 8
B. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being 9
unpatentable over Doherty. 10
C. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being 11
unpatentable over Doherty and Martensson. 12
D. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being 13
unpatentable over Doherty and Moriau. 14
E. Claim 11 is rejected under 35 U.S.C. § 102(b) as anticipated by 15
Doherty or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over 16
Doherty. 17
18
Appeal 2012-001534
Application 11/570,710

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ANALYSIS 1
Claims 1-7, 9, and 14 rejected under 35 U.S.C. § 102(b) as 2
anticipated by Doherty. 3
The Examiner found that Doherty teaches a panel as claimed including a 4
décor layer provided on and at least partially covering the tongue. Ans. 6-7. 5
In particular, the Examiner found that Doherty discloses that a coating 6
material may be applied to the exterior of a unit of assembled modules for 7
decoration purposes. Ans. 7 (citing col. 3, ll. 55-65). The Examiner 8
reasoned that if a décor coating is applied to the panel, this coating would be 9
at least partially disposed on and cover the tongue especially when adjacent 10
modules are connected because the coating is applied for “sealing purposes” 11
which implies “that any cracks or exposed creases between the tongue and 12
groove would be sealed with the coating” such that “the coating would be on 13
the tongue because the coating would penetrate any cracks formed between 14
the two panels and be on at least a portion of the tongue.” Ans. 7, 12. 15
Appellants argue that Doherty discloses a coating material that is applied 16
to the exterior of the assembled modules and therefore the coating is not 17
“on” the tongue because the tongue is always fully contained in the groove 18
of an adjacent building module when the modules are assembled together. 19
App. Br. 8; Reply Br. 9. Appellants also argue that there is not any reason to 20
apply a coating of paint to the tongues prior to assembly because the tongues 21
are hidden from view when the building modules are assembled (unlike the 22
claimed cover panels) and the Examiner’s remarks to the contrary are 23
unsupported speculation. Reply Br. 10. 24
Appeal 2012-001534
Application 11/570,710

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We are persuaded that the Examiner erred in rejecting claims 1-7, 9, and 1
14 under 35 U.S.C. § 102(b) as being anticipated by Doherty. While 2
Doherty teaches “a coating material may be applied to the exterior of a unit 3
of assembled modules for decoration purposes” at column 3, lines 55-65 4
(Ans. 7), we find that Doherty fails to teach an individual panel having “a 5
décor layer provided on and at least partially covering the tongue,” as recited 6
by claim 1. 7
[U]nless a reference discloses within the four corners of the 8
document not only all of the limitations claimed but also all of 9
the limitations arranged or combined in the same way as recited 10
in the claim, it cannot be said to prove prior invention of the 11
thing claimed and, thus, cannot anticipate under 35 U.S.C. § 12
102. 13
See Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 14
2008). The Examiner’s finding that the panels have cracks or exposed 15
creases such that a coating on the exterior of assembled panels would 16
penetrate any cracks formed between two assembled panels and be on at 17
least a portion of the tongue is speculative at best. In re Robertson, 169 F.3d 18
743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be established by 19
probabilities or possibilities. The mere fact that a certain thing may result 20
from a given set of circumstances is not sufficient.”). If two panels are 21
assembled, the tongues (flanges 28’) of one panel would be contained fully 22
within the grooves (recesses 30’) of an adjoining panel. See Doherty, col. 2, 23
ll. 41-53; fig. 4. 24
For the foregoing reasons, we reverse the Examiner’s rejection of claims 25
1-7, 9, and 14 as being anticipated by Doherty. 26
Appeal 2012-001534
Application 11/570,710

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Claim 15 rejected under 35 U.S.C. § 103(a) as being unpatentable over 1
Doherty. 2
This rejection is directed to claim 15 which depends indirectly from 3
claim 1. We found independent claim 1 is not anticipated because the 4
Examiner did not show by a preponderance of the evidence that Doherty 5
satisfied the claim language of “a décor layer provided on and at least 6
partially covering the tongue.” Accordingly, because the Examiner’s 7
determination that it would have been obvious to pivot or wiggle together 8
two panels having a tongue to render obvious claim 15 does not remedy the 9
deficiencies discussed supra with respect to independent claim 1, we do not 10
sustain the rejection of claim 15 which is dependent upon independent claim 11
1, as being unpatentable over Doherty. 12
Claim 8 rejected under 35 U.S.C. §103(a) as being unpatentable over 13
Doherty and Martensson. 14
This rejection is directed to claim 8, which depends indirectly from 15
claim 1. We found independent claim 1 is not anticipated because the 16
Examiner did not show by a preponderance of the evidence that Doherty 17
satisfied the claim language of “a décor layer provided on and at least 18
partially covering the tongue.” The Examiner’s reliance on Martensson to 19
disclose a wooden fiberboard panel as recited in claim 8 does not remedy the 20
deficiencies discussed supra with respect to independent claim 1. Therefore, 21
we do not sustain the rejection of claim 8 which is dependent upon 22
independent claim 1, as being unpatentable over Doherty. 23
Claims 12 and 13 rejected under 35 U.S.C. § 103(a) as being 24
unpatentable over Doherty and Moriau. 25
Appeal 2012-001534
Application 11/570,710

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This rejection is directed to claims 12 and 13 which depend either 1
directly or indirectly from claim 1. We found independent claim 1 not 2
anticipated because the Examiner did not show by a preponderance of the 3
evidence that Doherty satisfied the claim language of “a décor layer 4
provided on and at least partially covering the tongue.” Accordingly, for the 5
same reasons as discussed supra with respect to independent claim 1, we do 6
not sustain the rejection of claims 12 and 13 which are dependent upon 7
independent claim 1, as being unpatentable over Doherty where the 8
Examiner has relied on Doherty to disclose the step of applying a décor 9
coating to cover the tongue of a panel when adjacent modules are connected. 10
Claim 11 rejected under 35 U.S.C. § 102(b) as being anticipated by or in 11
the alternative under 35 U.S.C. § 103(a) as being unpatentable over 12
Doherty. 13
Claim 11 recites a method for laying the panel of claim 1. We do not 14
sustain either the rejection under 35 U.S.C. § 102(b) as being anticipated by 15
Doherty or this new ground of rejection of claim 11 under 35 U.S.C. 16
§ 103(a) as being unpatentable over Doherty, for the reasons discussed supra 17
for claim 1, because the Examiner relied on Doherty to disclose a décor 18
layer provided on and at least partially covering the tongue. Ans. 5-6. 19
20
DECISION 21
The rejections of claims 1-9 and 11-15 are reversed. 22
23
REVERSED 24
25
Appeal 2012-001534
Application 11/570,710

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