Ex Parte Meersseman et al

Patent Trial and Appeal Board

Oct 31, 2016

12481041 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/481,041 0610912009
75304 7590 11/01/2016
Capitol City TechLaw, PLLC
333 Maple A venue East, #900
VIENNA, VA 22180
FIRST NAMED INVENTOR
Laurent Meersseman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
300-0006/US 4493
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
MAILDATE DELIVERY MODE
11/01/2016 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 LAURENT MEERSSEMAN and OKE NOLLET
Appeal2015-001037
Application 12/481,041
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
BRIAND. RANGE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claim 1. 2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appellants state that the real party in interest is "FLOORING
INDUSTRIES LIMITED, SARL" (Appeal Brief filed September 15, 2014,
hereinafter "Appeal Br.," 1 ).
2 Appeal Br. 2; Final Office Action mailed July 16, 2014, hereinafter "Final
Act.," 1; Examiner's Answer mailed October 3, 2014, hereinafter "Ans.," 2.
Appeal2015-001037
Application 12/481,041
BACKGROlH~D
The subject matter on appeal relates to a printed substrate, which may
be included in a floor panel as a top layer with printed decor on a basic panel
(Specification, hereinafter "Spec.," i-f 2). Claim 1, the sole claim on appeal,
is reproduced from the Claims Appendix to the Appeal Brief, with disputed
limitations highlighted in italics, as follows:
1. A printed substrate for manufacturing floor panels,
each of the floor panels having at least a basic panel and a top
layer with a printed decor, the top layer being obtained from the
printed substrate and being provided on the basic panel, the
printed substrate comprising:
a rolled-up material web including a support in the form
of a flexible material sheet; and
a print provided on the support;
wherein the print includes the printed decors of a
plurality of floor panels to be manufactured;
wherein the printed decors in the print are grouped in at
least a first stripe and a second stripe that extend in the
longitudinal direction of the flexible material sheet;
wherein the first stripe has a first tint that is equal over
the length of the first stripe;
wherein the second stripe has a second tint that is equal
over the length of the second stripe;
wherein the first and the second stripes are adjacent, and
the first tint is different than the second tint;
wherein the stripes extend with their longitudinal
direction in a longitudinal direction of the printed substrate;
wherein the printed decors represent a wood motif;
wherein the print of each stripe in width direction of the
stripe represents the motif of only a single wooden panel
including wood nerves, wood pores and/ or other wood
characteristics that extend continuously over the stripe in the
width direction; and
wherein the print of each stripe is constructed of a
substantially uniform fond print and a motif print that repeats
itself in the longitudinal direction.
2
Appeal2015-001037
Application 12/481,041
THE REJECTION
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Dumberger (US 2008/0066406 Al, published March 20, 2008)3 (Ans. 2---6;
Final Act. 2--4 ).
DISCUSSION
The Examiner found that Dumberger describes a printed decorative
paper (i.e., a printed substrate) including every limitation recited in claim 1
except that the paper is not in the form of "a rolled-up material web" as
required by the claim (Ans. 2-3). The Examiner determined, however, that
the limitation "rolled up material web is a functional limitation and does not
change the structure of the floor panel" (id. at 4). Furthermore, the
Examiner found that because Dumberger's substrate is a flexible paper
substrate, it would be capable of being rolled up in the manner as recited in
claim 1 (id.). The Examiner concluded that "[i]t would have been obvious to
roll up the material web since it would allow for easier transportation of the
printed floor covering" (id.; see also Final Act. 3--4).
The Appellants off er several arguments, but we do not find any of
them persuasive to identify reversible error in the Examiner's rejection. We
address each of these arguments below.
1. The Rolled-Up Material Web Limitation
The Appellants agree with the Examiner that the "rolled-up material
web" limitation does not further limit the structure of a floor panel as claim
1 directed to a printed substrate and not to a floor panel (Reply Brief filed
3 The Examiner stated that Dumberger is a "direct translation" of WO
2006074831 Al (Ans. 2), but it does not appear that the latter reference has
been applied against the claim.
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Appeal2015-001037
Application 12/481,041
October 27, 2014, 2). But the Appellants disagree with the Examiner's
finding that the printed substrate in rolled-up form would provide easier
processing and transportation (Appeal Br. 4--5). Specifically, the Appellants
argue that "[t]he act of rolling and unrolling the paper sheet would require
extra handling and effort, which would make processing more difficult and
cumbersome" and that "there is simply no reason to believe that transporting
a rolled-up sheet would be easier than transporting a flat sheet" (id. at 5).
According to the Appellants, their position is bolstered by Durnberger's
disclosure that processing can be facilitated by cutting the paper in smaller
sheets-not by rolling larger sheets (id.) (citing Durnberger i-f 35).
Although we do not share the Examiner's view that the disputed
limitation is a functional limitation insofar as the claimed printed substrate is
concerned, decorative or printed sheets in convenient rolled-up form are
notoriously well-known. Non-limiting examples include printed adhesive
labels, decorative gift-wrapping paper, and even adhesive vinyl flooring
materials in rolled-up forms. Here, the Appellants do not-and could not-
assert that no prior art printed sheets have been provided in rolled-up form.
Rather, their argument appears to be that given Durnberger' s disclosure of
cutting the printed sheets into smaller pieces (Durnberger i-f 35), the
Examiner failed to provide a sufficient reason that would have prompted a
person skilled in the art to manufacture Durnberger's printed sheets in
rolled-up form. But the mere fact that Durnberger describes an alternative
form (i.e., cut up sheets) would not preclude an obviousness conclusion as to
other known forms, including rolled-up forms. Cf In re Mouttet, 686 F .3d
1322, 1334 (Fed. Cir. 2012).
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Appeal2015-001037
Application 12/481,041
Notwithstanding Dumberger's specific disclosure of cut-up forms, we
determine that a person having ordinary skill in the art would have
immediately recognized various advantages (e.g., processing, storage, and
transport) in providing printed sheets in rolled-up form. KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (an obviousness "analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ"); Perfect Web
Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness "may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.").
For these reasons, we discern no prejudicial error in the Examiner's
determination that a person having ordinary skill in the art would have been
prompted to provide Dumberger's printed substrate in rolled-up form to
allow for easier processing and transportation.
2. The Different Tint Limitations
Claim 1, reproduced above, recites that "the first stripe has a first tint
that is equal over the length of the first stripe," "the second stripe has a
second tint that is equal over the length of the second stripe," and "the first
tint is different than the second tint." This feature is shown in Figure 1,
reproduced from the application as follows:
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Appeal2015-001037
Application 12/481,041
Fig. 1
Figure 1 above illustrates a printed substrate 1 including, inter alia, stripes
4A through 4C "of similar or approximately equal tint" or "different tint"
(see, e.g., i-f 28).
The Appellants argue that Dumberger does not disclose different tints
that are "equal over the length of' the second first and second stripes, as
required by claim 1, because although Dumberger' s Figure 1 discloses a
center portion between matching end pieces 4 that is varied in terms of
color, lines, and/or structures, Dumberger teaches that the end pieces 4 are
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Appeal2015-001037
Application 12/481,041
visually identical (Appeal Br. 6) (citing Dumberger's i1i121-20, 32, and
claims 13, 14). We find the Appellants' argument unpersuasive for the
reasons given by the Examiner (Ans. 4--5).
Specifically, Dumberger's Figure 1 (re-oriented counter-clockwise by
90Q) is reproduced as follows:
<.O
~...,..,..jfr,-...,...,+,,.,,...-,...,m---,.,,+n--,-n ...,._.,...,.+,,.,...-,....t-.....--"T"T~-i-rl,.,..-'"!""'I"!: --~-~
Dumberger' s Figure 1 depicts decorative paper 1, placed over ten panels,
provided with matching pieces 4, which are identical, and visually different
center portions between the matching ends 4 (i1i130, 43). As explained by
the Examiner (Ans. 4), claim 1 places no further limitation on "the length"
of each stripe and, therefore, reads on any length, including a length that
corresponds to Dumberger's visually different center portions as shown in
Figure 1. Stated in a slightly different way, claim 1 on appeal, which recites
that "the printed decors in the print are grouped in at least a first stripe and a
second stripe that extend in the longitudinal direction of the flexible material
sheet" and "the stripes extend with their longitudinal direction in a
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Appeal2015-001037
Application 12/481,041
longitudinal direction of the printed substrate" (emphases added), fails to
exclude Durnberger's matching ends 4.
For these reasons, we cannot overturn the Examiner's rejection on the
basis of the different tint limitations.
3. Longitudinal Direction Limitation
The Appellants argue that "as clearly shown in Fig[ ure] 1 of the
reference, the decors extend in the transverse direction of the printed paper
sheet 1 [,]" which "is in contrast to claim 1, which recites the orientation of
the stripes relative to the printed substrate (not a finished floor panel)"
(Appeal Br. 7). The Appellants' argument lacks merit because, when re-
oriented counter-clockwise by 90Q, the printed substrate as shown in
Durnberger' s Figure 1 is indistinguishable from the printed substrate as
recited in claim 1 (compare Durnberger's Figure 1, re-oriented
counterclockwise by 90Q, with Figure 1 of the current application).
4. Repeating Motif Print Limitation
The Appellants contend that Durnberger' s Figure 1 shows a print that
includes "grain lines [that] extend all the way across the width of the
decorative paper 1 without repeating" (Appeal Br. 7-8). We concur with the
Examiner that the design does not confer patentability (Ans. 5---6).
Moreover, a review ofDurnberger's Figure 1 shows that in the center
section between matching pieces 4, the wood grains are spaced apart in a
repeatedly narrowing or broadening pattern. When the disputed limitations
are construed broadly in a manner consistent with the current Specification,
we find that the repeatedly narrowing or broadening pattern shown in
Durnberger's Figure 1 meets the disputed claim limitation.
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Appeal2015-001037
Application 12/481,041
survnvIARY
The Examiner's final decision to reject claim 1 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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