11185724 (P.T.A.B. Feb. 28, 2013)

Ex Parte Martensson

Patent Trial and Appeal BoardFeb 28, 2013

11185724 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GORAN MARTENSSON ____________ Appeal 2010-007471 Application 11/185,724 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and CARL M. DeFRANCO, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007471 Application 11/185,724 2 STATEMENT OF THE CASE Goran Martensson (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-3 and 6-10 as unpatentable over Hoelscher (DE 3932980 A1; published Nov. 28, 1991)1,2 and Brenneman (US 3,627,362; issued Dec. 14, 1971); (2) claim 4 as unpatentable over Brenneman and Porter (US 5,950,389; issued Sep. 14, 1999); and (3) claim 5 as unpatentable over Hoelscher, Brenneman and Porter. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s invention relates to a flooring material having board shaped flooring elements which are assembled using separate joining profiles. Spec.1, ll. 1-2; figs. 7a-7d. Claim 6 is illustrative of the claimed invention and reads as follows: 6. Flooring system comprising board shaped floor elements, the board shaped flooring elements comprising a material selected from the group consisting of solid wood, fibre board and particle board, which floor elements are provided with edges, a lower side and a decorative upper surface, whereby the floor elements are intended to be joined by separate joining profiles, wherein at least one edge of the floor elements is provided with one groove each, which grooves are 1 We derive our understanding of this reference from the translation produced by the automated process provided by the EPO. All references to the text of this document are to portions of the translation. 2 We note that both the Examiner and Appellant refer to the Hoelscher reference as “Holscher.” Ans. 3; Br. 5. We shall refer to the reference as Hoelscher. Appeal 2010-007471 Application 11/185,724 3 defined by upper and lower cheeks of the material and when viewed in a cross-section are arranged perpendicular to its respective edge, the lower cheek of the material sloping in a downward direction from the opening of the groove towards an interior portion of the groove whereby the opening has a smaller dimension at the opening than the groove dimension remote from said opening, the joining profiles are provided with lips arranged in pairs, which lips are intended to each be received by one of the grooves so that the floor elements with the grooves at the adjacent edges will be guided vertically via the lips of the joining profile, which lips are joined by a middle section of the joining profile. ANALYSIS The obvious rejection over Hoelscher and Brenneman Claims 1-3 and 6-10 Each of independent claims 1 and 6 requires inter alia “the lower cheek of the material sloping in a downward direction from the opening of the groove towards an interior portion of the groove.” Br., Claims Appendix. The Examiner takes the position that (1) figure 1 of Hoelscher illustrates “a section of the lower cheek of [the] material is sloping in a downward direction from the opening of the groove towards an interior portion of the groove;” (2) “[t]he claim language does not require the entire lower cheek to be sloped;” and (3) figure 7d of Appellant’s drawings illustrates an example of an embodiment that has sections of the lower cheek of the material that are sloping and sections of the lower cheek of the material that are parallel to the upper cheek of the material. Ans. 9. The Examiner concludes that Hoelscher Appeal 2010-007471 Application 11/185,724 4 disclose[s] the lower cheek of the material sloping (at each of the notches), and the slope is in a downward direction (the slant of each side of the notch), the downward direction being from the opening of the groove towards an interior portion of the groove (the slant of one half of each of the notches). Id.; Hoelscher, fig. 1. In other words, the Examiner appears to take the position that Hoelscher discloses grooves defined by upper and lower cheeks of the material, wherein the lower cheek of the material slopes in a downward direction at each of the recesses/notches from the opening of the groove towards an interior portion of the groove. At the outset, we agree with the Examiner that the claim language does not require the entire lower cheek to be sloped. We further agree with the Examiner that figure 7d of Appellant’s drawings illustrates an example of an embodiment that has sections of the lower cheek of the material that are sloping and sections of the lower cheek of the material that are parallel to the upper cheek of the material. However, we note that in figure 7d of Appellant’s drawings (1) the lower cheek of the material 76, 176 slopes downward from the opening 74, 174 of the groove 94; and (2) the lower cheek of the material 76, 176 is parallel to the upper cheek of the material 75, 175 only along the interior portion of the groove 94 that is remote from the opening 74. We find that Hoelscher discloses grooves 3 defined by upper and lower cheeks of the material, wherein the lower cheek of the material slopes in a downward direction at each of the recesses 9 of the groove 3 at an interior portion of the groove 3, not from the opening 4 of the groove 3. Hoelscher, fig. 1. As such, we agree with Appellant that the lower cheek of the material of Hoelscher does not slope in a downward direction from the Appeal 2010-007471 Application 11/185,724 5 opening of the groove towards an interior portion of the groove, as required by claims 1 and 6. Br. 6, 8. The Examiner relies on Brenneman for disclosure of the material of the floor elements. Ans. 4. The Examiner does not rely on Brenneman to cure the above-noted deficiency with Hoelscher. Ans. 9. Accordingly, for the foregoing reasons, the Examiner’s rejection of claims 1-3 and 6-10 under 35 U.S.C. § 103(a) as being unpatentable over Hoelscher and Brenneman cannot be sustained. The obvious rejection over Brenneman and Porter Claim 4 Appellant argues that Brenneman fails to disclose “notched grooves on each of all four edges of the floor elements,” as required by claim 4. Br. 10-11. Appellant further argues that [w]hile Porter does show applying adhesive (fig. 1) as [sic] bends 28a and 28b (or bends 90a and 90b-figs.5a-5b), however this is because Porter does not have notched grooves into which his joining elements are placed. It is only the power of the glue or adhesive which holds the elements together. Br. 11. According to Appellant, “[i]n the claimed invention not only are there undercuts in the groove so as to interact but pairs of lips, but [sic] the lips are provided with hooks that match the undercut.” Id. As such, Appellant takes the position that “one would not expect, and thus consider it unobvious, to incorporate glue into a groove which has already been provided with joining profiles having lips which are provided with hooks that match an undercut in the groove into which is joined.” Id. At the outset, we are not persuaded by Appellant’s arguments because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art Appeal 2010-007471 Application 11/185,724 6 disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner that Brenneman discloses flooring material including board shaped floor elements 106, 107, which floor elements are provided with edges, a lower side, and a decorative upper surface, whereby the flooring elements 106, 107 are intended to be joined by separate joining profiles 105, wherein all four edges of the floor elements 106, 107 are provided with one notched groove each, which grooves are arranged parallel to its respective edge, the joining profiles provided with lips 110 arranged in pairs, which lips 110 are intended to each be received by one of the grooves so that the floor elements 106, 107 with the grooves at the adjacent edges will be guided vertically via the lips 110 of the joining profile, which lips 110 are joined by a middle section of the joining profile 105 and wherein the grooves are provided with an undercut 109 while the lips 110 are provided with hooks (at the ends of 108) that match the undercut 109 whereby adjacent floor elements 106, 107 will be fixed horizontally via the undercuts 109 and the hooks (at the ends of 108). Ans. 7; Brenneman, col. 5, ll. 5-16; fig. 10. We further agree with the Examiner that Porter discloses floor elements which are assembled via joining profiles 22, 24 and grooves 16a, 16b, 18a, 18b, wherein at least one of the joining profiles and the groove of the floor elements is coated with glue 28a, 28b, 34a, 34b. Ans. 7-8; Porter, col. 3, l. 37 - col. 4, l. 24; figs. 1-2. Consequently, we agree with the Examiner that it would have been obvious to a person of ordinary skill in the art at the time of the invention “to modify Brenneman to use glue on at least one of the joining profiles and the groove of the floor elements, such as Appeal 2010-007471 Application 11/185,724 7 taught by Porter, in order to more securely attach the floor elements together.” Ans. 8. Moreover, we note that Porter discloses that (1) hooks 26a, 26b, 30a, 30b securely engage adjacent portions of the foam cores 12c, 14c of the first and second panels 12, 14 (Porter, col. 3, ll. 47-49, 51-52; col. 3, l. 61 - col. 4, l. 4; figs. 1-2); and (2) the adhesive deposits 28a, 28b, 34a, 34b applied to each of the outer and inner splines 22, 24 “securely join the first and second panels 12, 14” (Porter, col. 4, ll. 22-24; Ans. 8). Hence, we further agree with the Examiner that “one may wish to create a stronger connection between the floor elements through the use of glue. The connection formed by the notched grooves could be strengthened and enhanced by using glue or adhesive.” Ans. 10-11. Accordingly, we find that the Examiner articulated adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to add Porter’s adhesive feature to Brenneman’s flooring element device. Appellant has not provided any persuasive evidence of error regarding the Examiner’s interpretation of the disclosures of Brenneman and Porter. Therefore, for the foregoing reasons, the Examiner’s rejection of claim 4 under U.S.C. § 103(a) as being unpatentable over Brenneman and Porter is sustained. The obvious rejection over Hoelscher, Brenneman and Porter Claim 5 The Examiner relies on Porter for disclosure of at least one of the joining profiles and the groove of the floor elements being coated with adhesive material. Ans. 7-8. The Examiner does not rely on Porter to cure the above-noted deficiency with Hoelscher and Brenneman. Accordingly, Appeal 2010-007471 Application 11/185,724 8 the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Hoelscher, Brenneman and Porter cannot be sustained. DECISION The decision of the Examiner is affirmed as to claim 4 and reversed as to claims 1-3 and 5-10. 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-IN-PART babc