Ex Parte Olofsson

Board of Patent Appeals and Interferences

Mar 29, 2012

10761401 (B.P.A.I. Mar. 29, 2012)

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.
10/761,401 01/22/2004 Ola Olofsson TPP 31436DIV 3311
74217 7590 03/30/2012
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
SELF, SHELLEY M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/30/2012 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 OLA OLOFSSON
____________

Appeal 2010-003179
Application 10/761,401
Technology Center 3700
____________

Before LINDA E. HORNER, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ola Olofsson (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 21-25 and 27-34. Appellant cancelled
claims 1-20 and 26. Appellant’s representative presented oral argument on
March 15, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE CLAIMED SUBJECT MATTER
Claim 28, reproduced below, with italics added, is illustrative of the
subject matter on appeal.
28. A floor comprising:
a first board having edges, at least one of the
edges comprising a projecting tongue; and
a second board having edges, at least one of
the edges comprising a groove having a depression
therein, the depression located distally of an
innermost portion of the groove;
wherein at least one of the tongue and the
groove is formed by broaching an impregnated
milled portion, having an angle not possible by
milling and the tongue is inserted into the groove.

Br. 14.

THE REJECTIONS
The following Examiner’s rejection(s) are before us for review.
Claims 32 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. Ans. 3.
Claims 24, 27-31, and 33 are rejected under 35 U.S.C. § 102(b) as
anticipated by Moriau (US 6,006,486, iss. Dec. 28, 1999). Ans. 4-5.
Claims 24, 27-31, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moriau. Ans. 5-6.
Claims 21-23, 25, and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Moriau and Serino (US 6,357,197 B1, iss. Mar. 19, 2002).
Ans. 6-7.

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OPINION
Indefiniteness under 35 U.S.C. § 112, second paragraph
Independent claim 32 is directed to a system for forming a surface
including a least two boards with one of the boards having an edge including
a groove and one of the boards having an edge including a tongue. Br. 15.
A wall surface of the groove has a portion which exhibits “the characteristic
surface of a milled surface” and a portion which exhibits “the characteristic
surface of a broached surface.” Br. 16.
The Examiner determines that the claim phrases “characteristic
surface of a milled surface” and “characteristic surface of a broached
surface” in independent claim 32 are indefinite as it is not clear what
characteristic, defined as “a distinguishing trait, quality or property,”1 is
being referred to by each claim phrase. Ans. 3
Appellant contends that the claim recitations of “the characteristic
surface of a milled surface” and “the characteristic surface of a broached
surface” are clear and “well known to those having ordinary skill in the art.”
Br. 5. Indeed, Appellant refers our attention to paragraphs 6, 7, and 8 of the
Declaration Under 37 C.F.R. § 1.132 of Fredrik Schlyter (hereinafter
“Schlyter Declaration”) filed on July 11, 2008 as evidence that one of
ordinary skill in the art understands the aforementioned claim recitations.
Appellant also refers our attention to the Specification’s “Field of the
Invention” on page 1 and page 7, line 30 to page 9, line 29 as describing the

1 The Examiner cites to Merriam-Webster’s On-Line Dictionary available at
http://www.merriam-webster.com/dictionary/characteristic, Copyright 2012,
Merriam-Webster, Incorporated.
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claim recitations of “the characteristic surface of a milled surface” and “the
characteristic surface of a broached surface.” Br. 6.
We do not agree that paragraphs 6, 7, and 8 of the Schlyter
Declaration show that the claim recitations of “the characteristic surface of a
milled surface” and “the characteristic surface of a broached surface” are
known to those having ordinary skill in the art. Paragraphs 6, 7, and 8 of the
Schlyter Declaration do not explicitly address the limitations of “the
characteristic surface of a milled surface” and “characteristic surface of a
broached surface.” More particularly, paragraph 6 of the Schlyter
Declaration merely acknowledges that some tongue and groove edges can be
accomplished by milling alone, while other tongue and groove edges have
angles which cannot be accomplished by milling alone during commercial
manufacture. Paragraph 7 of the Schlyter Declaration shows an edge having
a groove therein with depressions or undercuts within the upper and lower
walls of the groove and acknowledges that this configuration cannot be
accomplished solely by milling during commercial manufacture. Paragraph
8 of the Schlyter Declaration acknowledges that “[t]he present invention
utilizes a combination of conventional commercial milling in combination
with broaching to form the Joint Edge shapes impossible to achieve by
commercial milling.”
We also do not agree that Appellant’s Specification shows that the
claim recitations of “the characteristic surface of a milled surface” and “the
characteristic surface of a broached surface” are known to those having
ordinary skill in the art. More particularly, the Field of the Invention on
page 1 of the Specification merely discusses that it is difficult to achieve
complex cross-sections with undercuts using traditional milling, especially
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in narrow grooves; however, it is known to achieve undercuts by using more
than one milling tool with different rotational axes even though with this
method it is hard to obtain desirable tolerances due to vibration and flexing.
This portion of the Specification does not define what is meant by “the
characteristic surface of a milled surface.” The disclosure at page 7, line 30
through page 9, line 29 of the Specification merely describes the broaching
tools shown in Figures 5 and 6, but does not define what is meant by “the
characteristic surface of a broached surface.”
Thus, we are not persuaded by Appellant’s contention that a person of
ordinary skill in the art would understand what is meant by the claim terms
“the characteristic surface of a milled surface” and “the characteristic
surface of a broached surface.” Accordingly, we sustain the Examiner’s
rejection of claim 32 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Anticipation based on Moriau
The Examiner interprets Moriau to teach each and every limitation of
independent claims 28, 29, 30, 31, and 33 in order to anticipate those claims.
Ans. 4-5.
Independent claim 28
The Examiner alleges that independent claim 28’s recitation of
“wherein at least one of the tongue and groove is formed by broaching an
impregnated milled portion, having an angle not possible by milling” (Br.
14) is a product-by-process limitation which is “not germane to the
patentability of the end resultant product” or floor. Ans. 4.
Appellant contends that “the Examiner has not found any prior art
teachings in Moriau to anticipate th[e] feature” of the broached portion
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having angles sharper than possible by milling as recited in claim 28. Br. 8.
Appellant argues that the limitation of “having an angle not possible by
milling” is structural, not process. Id. Appellant points to paragraph 8 of the
Schlyter Declaration and states that claim 28 requires angles within the
grooved portion which are impossible to form by rotating milling tools, and
that can only be formed by non-rotary shaping or broaching tools. Id.
Appellant contends that Moriau only teaches milling, never mentions
broaching, and thus cannot possibly be an anticipatory reference of the
claimed subject matter. Br. 8-9.
In response to Appellant’s argument that “having an angle not
possible by milling” is structural, not process, the Examiner acknowledges
that an angle is structural and states that “any surface has an angle, i.e., even
a straight surface is an angle of 180°.” Ans. 9. However, the Examiner
maintains that “not possible by milling” is process in a product-by-process
limitation. Id.
We agree with Appellant that the recitation of “having an angle not
possible by milling” is a structural limitation. The Examiner acknowledges
that an angle is a structural limitation and the words “not possible by
milling” are merely further describing the angle being recited. As such, the
Examiner has failed to show by a preponderance of the evidence that Moriau
teaches this limitation of claim 28. More particularly, the Examiner’s
rejection cites to Moriau’s Figure 23 embodiment as having a “tongue (9)”
and a “groove defined by an opening (81)” (see Ans. 4), and the Examiner
finds that any surface has an angle, including a straight surface having an
angle of 180° (see Ans. 9). However, the Examiner has not pointed to any
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surface of Moriau’s tongue 9 or groove 10 that meets the claim limitation of
“an angle not possible by milling.”
Accordingly, we do not sustain the Examiner’s rejection of claim 28
under 35 U.S.C. § 102(b) as anticipated by Moriau.
Independent claim 29
Independent claim 29 is directed to a floor including a first board
having an edge comprising a tongue and a second board having an edge
comprising a groove. Br. 14-15. At least one of the tongue and the groove
comprise a burr-free broached portion. Br. 15.
The Examiner alleges that independent claim 29’s recitation of
“wherein at least one of the tongue and the groove comprise a burr-free
broached portion” (Br. 15) is a product-by-process limitation not germane to
the patentability of the claimed subject matter or floor. Ans. 5.
Appellant contends that the recitation of “a burr-free broached
portion” is structural and does “not hav[e] anything to do with product-by-
process.” Br. 9.
If the words of limitation can connote with equal force a structural
characteristic of the product or a process used to obtain it, then the limitation
is commonly interpreted in its structural sense. See, e.g., 3M Innovative
Props. Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir.
2003)(“[E]ven words of limitation that can connote with equal force a
structural characteristic of the product or a process of manufacture are
commonly and by default interpreted in their structural sense….”); Hazani v.
U.S. Int’l. Trade Com’n., 126 F.3d 1473, 1479 (Fed. Cir. 1997) (holding that
claims to a plate having a “chemically engraved” surface are best
characterized as pure product claims, since the “chemically engraved”
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limitation, read in context, describes the product more by its structure than
by the process used to obtain it); see also In re Garnero, 412 F.2d 276, 278-
79 (CCPA 1969)(noting that past-tense verbs such as “ ‘intermixed,’ ‘ground
in place,’ ‘press fitted,’ ‘etched,’ and ‘welded,’ all . . . at one time or another
have been separately held capable of construction as structural, rather than
process, limitations.”).
We agree with Appellant that the recitation of “a burr-free broached
portion” is structural. In particular, since the word “broached” can connote
with equal force either at structural characteristic of the product (i.e.,
broached portion of tongue or groove of floor) or a process (broaching) used
to obtain it, then the limitation is commonly interpreted in its structural
sense. As such, the Examiner has failed to show by a preponderance of the
evidence that Moriau discloses claim 29’s recitation of “a burr-free broached
portion.” Moreover, even assuming arguendo that the “broached” limitation
is product-by-process as alleged by the Examiner, the Examiner has not
pointed out any portion of Moriau that is burr-free and both “burr-free” and
“portion” are structural limitations. Thus, the Examiner has failed to find
each and every limitation of claim 29 in Moriau.
Accordingly, we do not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 102(b) as anticipated by Moriau.
Independent claim 30
Independent claim 30 is directed to a floor including a first board
having an edge with a tongue and a second board having an edge with a
groove. Br. 15. At least one of the tongue and the groove comprise a
“broached portion having a geometry not capable of being formed by
milling.” Id.
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The Examiner alleges that independent claim 30’s recitation of
“wherein at least one of the tongue and the groove comprise a broached
portion, the broached portion having a geometry not capable of being
formed by milling” (Br. 15) is a product-by-process limitation not germane
to the patentability of the claimed subject matter or floor.
Appellant contends that the above-quoted recitation of claim 30 is
structural, and not product-by-process. Br. 9.
We agree with Appellant that the recitation in question is structural.
As the Examiner has failed to show by a preponderance of the evidence that
either Moriau’s tongue 9 or groove 10 comprises a broached portion having
a geometry not capable of being formed by milling, we do not sustain the
Examiner’s rejection of claim 30 under 35 U.S.C. § 102(b) as anticipated by
Moriau.
Independent claim 31
Independent claim 31 is directed to a floor including a first board
having an edge with a tongue and a second board having an edge with a
groove. Br. 15. The groove includes a depression and “a broached portion,
the broached portion having an angle sharper than possible by milling.” Id.
The Examiner alleges that independent claim 31’s recitation of the
groove “comprising a broached portion, the broached portion having an
angle sharper than possible by milling” (Br. 15) is a product-by-process
limitation not germane to the patentability of the claimed subject matter or
floor. Ans. 5.
Appellant contends that the above-quoted recitation of claim 31 is
structural, and not product-by-process. Br. 9.
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We agree with Appellant that the claim 31’s limitation of “a broached
portion, the portion having an angle sharper than possible by milling” is
structural. The Examiner has failed to show by a preponderance of the
evidence that Moriau’s groove 10 comprises a broached portion having a
geometry not capable of being formed by milling. Thus, we do not sustain
the Examiner’s rejection of claim 31 under 35 U.S.C. § 102(b) as anticipated
by Moriau.
Independent claim 33
Independent claim 33 is directed to a system for forming a surface
including at least two boards with one of the boards having an edge
including a groove and one of the boards having an edge including a tongue.
Br. 16. The system also “has a portion which shows the surface created by a
rotating milling tool and at least one portion of the surface of the groove
shows a smoother surface than that made by the rotating milling tool, the
smoother surface formed by a broaching tool.” Id.
The Examiner alleges that independent claim 33’s recitation that the
system “has a portion which shows the surface created by a rotating milling
tool and at least one portion of the surface of groove shows a smoother
surface than that made by the rotating milling tool, the smoother surface
formed by a broaching tool” (Br. 16) is a product-by-process limitation not
germane to the patentability of the claimed subject matter or system for
forming a surface. Ans. 5.
Appellant contends that the above-quoted recitation of claim 33 is
structural, and not product-by-process. Br. 9.
We agree with Appellant. The Examiner has failed to show by a
preponderance of the evidence that Moriau’s groove 10 has a surface with at
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least one portion showing a smoother surface than a surface made by a
rotating milling tool. As such, we do not sustain the Examiner’s rejection of
claim 33 under 35 U.S.C. § 102(b) as anticipated by Moriau.
Obviousness based on Moriau
The Examiner finds that claims 24, 27-31, and 33 are unpatentable
over Moriau. Ans. 5-6.
Appellant contends that “[b]ecause Moriau does not even hint at any
type of process of broaching and is completely silent on ‘broaching[,]’ it
cannot possibly teach or make obvious any product having a broached
surface.” Br. 10. Therefore, Appellant argues that the rejection of claims
24, 27-31, and 33 under 35 U.S.C. § 103(a) as being unpatentable over
Moriau is in error. Id.
The Examiner’s rejection of claims 24, 27-31, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over Moriau does not set forth any other findings
than those set forth for the Examiner’s rejection of claims 24, 27-31, and 33
under 35 U.S.C. § 102(b) as anticipated by Moriau. In order to establish a
prima facie case of obviousness, an examiner must undertake the factual
inquiries listed in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In
addition, the examiner must articulate some “reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). In the instant case, the Examiner has
failed to undertake the factual inquiries in Graham, because the Examiner
has not ascertained the differences between the prior art reference to Moriau
and the claims at issue. In addition, the Examiner has not articulated some
reasoning with some rational underpinning to support the legal conclusion of
obviousness.
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In view of the foregoing, and for the same reasons as discussed supra
in the section entitled “Anticipation based on Moriau,” we do not sustain the
Examiner’s rejection of claims 24, 27-31, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Moriau.
Obviousness based on Moriau and Serino
Claims 21-23 and 25 depend directly upon claim 31. Br. 14. Claim
34 depends directly upon claim 33. Br. 16.
The Examiner relies on Serino to teach a thermoplastic polymeric
material. Ans. 6-7. Appellant contends that Moriau fails to teach broaching
and Serino does not cure the deficiency of Moriau. Br. 10.
We agree with Appellant. Since Serino fails to cure the deficiencies
of Moriau with respect to independent claims 31 and 33 as discussed supra,
we do not sustain the Examiner’s rejection of claims 21-23, 25, and 34 under
35 U.S.C. § 103(a) as unpatentable over Moriau and Serino.

DECISION
We reverse the Examiner’s decision to reject claim 21-25, 27-31, 33,
and 34.
We affirm the Examiner’s rejection of claim 32.
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

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