Ex Parte Pervan et al

Patent Trial and Appeal Board

Sep 27, 2018

12832752 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/832,752 07/08/2010
21839 7590 10/01/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Darko Pervan
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.
1033462-000205 5079
EXAMINER
BESLER, CHRISTOPHER JAMES
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
10/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARKO PERVAN and PETER WINGARDH
Appeal 2016-004487
Application 12/832,752
Technology Center 3700
Before NEIL T. POWELL, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Darko Pervan and Peter Wingardh ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting 1-26 and 29-38,
which are all the pending claims. See Appeal Br., Cover Page; Final Act. 1
(Office Action Summary). We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on July 3, 2018.
We REVERSE.
According to Appellants, the real party in interest is Valinge
Innovation AB. Appeal Br. 1.
Appeal 2016-004487
Application 12/832,752
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "generally relates to the field of
mechanical locking of floor panels," and, more specifically, "relates to a
carving or scraping tool configuration as well as the method for producing
improved locking systems for mechanical locking of floor panels using that
carving or scraping tool configuration." Spec., p. 1, 11. 2---6. Claims 1, 2, 19,
20, and 38 are independent. Claims 2 and 20, reproduced below with
emphasis added, are illustrative of the subject matter on appeal.
2. A method for producing a mechanical locking system in
a floor panel having a top surface layer on a front side of the
floor panel that is configured to be a visible swface when the
floor panel is locked to another floor panel on a subfloor, the
floor panel comprising a mechanical locking system on a first
and a second edge of the floor panel for horizontal and vertical
locking of the floor panel with other similar floor panels, the
method comprising:
displacing the floor panel in a feeding direction relative
to a carving tool so that the carving tool removes a portion of
the floor panel extending from a top-most swface of the top
surface layer of the floor panel such that at least initial removal
of the top-most surface layer is performed by the carving tool,
and forms on the first or second edge of the floor panel via the
carving tool a tongue or a groove for vertically locking the
floor panel with another similar floor panel.
20. A carving tool for producing a mechanical locking
system in a floor panel comprising a mechanical locking system
on a first and a second edge of the floor panel for horizontal and
vertical locking of the floor panel with other similar floor
panels,
the carving tool comprising a plurality of teeth each of
which includes a single non-rotating chip-removing tip only
and is individually detachably attached to a fixture with a screw
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Application 12/832,752
penetrating the tooth, the non-rotating chip-removing tip has a
clearance angle between 2 to 8 degrees, a cutting angle of
between 55 to 65 degrees, and a rake angle between 20 to 30
degrees, the carving tool configured to form on the first or the
second edge of the floor panel a tongue or a groove.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Dupuis us 3,656,220 Apr. 18, 1972
Bomer us 4,495,733 Jan.29, 1985
Roseliep us 4,564,320 Jan. 14, 1986
Brouckaert US 2008/0172856 Al July 24, 2008
REJECTIONS
The following rejections are before us for review:
I. Claims 2 and 3 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 2-3.
II. Claims 1--4, 13-18, and 36-38 stand rejected under 35 U.S.C.
§ I02(b) as anticipated by Brouckaert. Id. at 3-9.
III. Claims 5-12 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Brouckaert and Dupuis. Id. at 10-12.
IV. Claims 19-26, 29, and 30 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Dupuis, Bomer, and
Roseliep. Id. at 12-15.
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Application 12/832,752
V. Claims 31-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dupuis, Bomer, Roseliep, and Brouckaert.
Id. at 16.
ANALYSIS
Rejection I- Claims 2 and 3 - Written Description
The Examiner found that the recitation of at least "initial removal of
the top-most surface layer is performed by the carving tool," as presently
recited in claim 2, lacks written description support. Final Act. 2-3
( emphasis added). This finding stems from the Examiner's position that
"'initial removal' requires that no other 'removings' occur to the top-most
surface layer prior to that of the carving tool." Id. at 3. We agree with
Appellants that such a position is in error, and that the disclosure for the
limitation in question is sufficient. See Appeal Br. 11-13.
The fundamental factual inquiry for sufficient written description is
whether Appellants' Specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, Appellants were in
possession of the invention as presently claimed. See Ariad Pharm., Inc., v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562---64 (Fed. Cir. 1991).
Here, the Examiner's position appears to misconstrue the scope of the
claim as being directed to production of a floor panel in its entirety, whereas
the claim is only directed to production of "a mechanical locking system in a
floor panel," where some ( or all) of the floor panel may already have been
formed. Appeal Br., Claims App.; see id. at 11-12. In this regard, we agree
with Appellants that "[ s Jawing or milling of a piece of wood into a plank
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Appeal 2016-004487
Application 12/832,752
shape [(e.g., some "initial removal" of material in forming a floor panel
itself, which seemed to concern the Examiner)] is outside the scope of
embodiments of [ c ]laim 2." Id. at 11. Given a proper interpretation of the
claim, the Examiner's position is untenable, as the relevant disclosure of the
present application reasonably conveys to those skilled in the art that
Appellants had possession of the invention recited-namely, "initial removal
of the top-most surface layer [being] performed by the carving tool," within
the context of "forming the mechanical locking system in the floor panel."
Appeal Br. 12-13 ( emphasis omitted); see also Spec., Figs. 13-16 ( depicting
the relevant "initial removal" operation of the claimed method).
Thus, we do not sustain the rejection of claims 2 and 3 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejections II and III - Claims 1-18 and 36-38
Reliance on Brouckaert for Method Claims
The method claims are directed to producing a mechanical locking
system in a floor panel that includes a top surface layer configured to be a
visible surface when the floor panel is locked to another panel in forming a
floor, whereby a locking surface (a tongue or a groove) is formed on an edge
of the floor panel by moving the panel in a feeding direction relative to a
carving tool to remove a portion from the top surface layer. See Appeal Br.,
Claims App. In other words, removal of material in forming the locking
surface is accomplished from the top surface layer of the panel. See id.
In rejecting the method claims, the Examiner relies on Brouckaert for
disclosing such a production process, including removal of material in
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Application 12/832,752
forming the locking surface being accomplished from the top surface layer
of the panel. See Final Act. 6-7; see id. at 3-12. Underlying this finding is
the Examiner's interpretation that Brouckaert's top surface 4 "may be used
as a bottom surface and the opposing surface may be used as the 'top surface
layer,' [because] the opposing layer meets the requirements of the 'top
surface layer."' Id. at 6. Without citing to objective evidence, the Examiner
reasons that this opposing layer (Brouckaert' s bottom surface) "sufficiently
meets the requirements of the 'top surface layer' that is 'configured to be a
visible surface when the floor panel is locked to another floor panel on a
sub floor,"' indicating that the "configured to" language of the claim only
requires that something "can be" so used. Id.
We agree with Appellants that such an interpretation of Brouckaert
flies in the face of Brouckaert's express disclosure regarding its top surface
and opposed bottom surface and-in the absence of evidence as to why a
person having ordinary skill in the art would consider these structurally
distinct surfaces to be somehow interchangeable-is unreasonable. See
Appeal Br. 16-20; Reply Br. 2---6. A person having ordinary skill in the art
would readily appreciate inherent structural distinctions between these
opposed surfaces within a laminate floor panel (from the suitability of
materials used for durability and/or visual standpoints, to the shape of the
mechanical locking system so that the panels can be installed in a right-side
up orientation). See, e.g., Spec., p. 1, 1. 8-p. 2, 1. 7, p. 3, 1. 24-p. 6, 1. 16;
Brouckaert ,r,r 3---6, 21-27, 88-89. Such inherent structural distinctions
cannot be arbitrarily disregarded.
Thus, for the reasons presented by Appellants regarding the
differences between the claimed method and that shown in Brouckaert, we
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Application 12/832,752
agree that the rejections are premised on stated findings that are not
supported by a preponderance of the evidence, based on an erroneous
interpretation of Brouckaert and the reliance thereon. Accordingly, we do
not sustain them.
Rejections IV and V- Claims 19-26 and 29-35
Reliance on Dupuis for Apparatus Claims
The apparatus claims are directed to a carving tool for producing a
mechanical locking system in a floor panel that includes locking surfaces on
first and second edges of the panel for locking of the panel with other similar
panels. See Appeal Br., Claims App. The claimed tool includes, among
other things, "a rake angle between 20 to 30 degrees." Id.
In rejecting the apparatus claims, the Examiner relies on Bomer for
disclosing such a rake angle. See Final Act. 13 (identifying Bomer's
undercut angle a, between undercut face 30 and vertical, and citing to Fig. 5
and col. 4, 11. 34--36); see id. at 12-14.
Although it is undisputed that Bomer discloses an angle within the
range claimed, we agree with Appellants that the identified angle is not a
"rake angle" for the chip face of the carving tool. See Appeal Br. 23-24;
Reply Br. 7-9. To the extent that Bomer discloses a rake angle for its chip
face, we agree with Appellants that the Examiner has not identified
sufficient evidence that it would fall within the claimed range. See Reply
Br. 7-9.
Thus, for the reasons presented by Appellants regarding the
distinctions between the recited rake angle for the chip face of the carving
tool and the identified angle in Bomer, we agree that the rejections are
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Application 12/832,752
premised on a finding that is not supported by a preponderance of the
evidence. Accordingly, we do not sustain them.
DECISION
We REVERSE the Examiner's decision rejecting claims 2 and 3
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We REVERSE the Examiner's decision rejecting claims 1--4, 13-18,
and 36-38 under 35 U.S.C. § 102(b) as anticipated by Brouckaert.
We REVERSE the Examiner's decision rejecting claims 5-12 under
35 U.S.C. § 103(a) as being unpatentable over Brouckaert and Dupuis.
We REVERSE the Examiner's decision rejecting claims 19-26, 29,
and 30 under 35 U.S.C. § 103(a) as being unpatentable over Dupuis, Bomer,
and Roseliep.
We REVERSE the Examiner's decision rejecting claims 31-35 under
35 U.S.C. § 103(a) as being unpatentable over Dupuis, Bomer, Roseliep, and
Brouckaert.
REVERSED
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