Ex Parte Pomberger

Patent Trial and Appeal Board

Mar 3, 2015

10548105 (P.T.A.B. Mar. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER POMBERGER
____________

Appeal 2013-001751
1

Application 10/548,105
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
4, 5, 9, 10, 17–21, 24–27, 33, 46–48, and, 52, and 54–57.
2, 3
We have
jurisdiction under 35 U.S.C. § 6(b).

1
Appellant state, “[t]he real party in interest is KAINDL FLOORING
GMBH.” Br. 1.
2
Our decision references Appellant’s Specification (“Spec.,” filed Sept. 30,
2010) and Appeal Brief (“Br.,” filed July 9, 2012), as well as the Examiner’s
Answer (“Answer,” mailed Aug. 17, 2012).
3
Although Appellant’s Claims Appendix and the Examiner’s listings of
rejected claims (Answer 4; pages 1 and 2 of final Office Action mailed
February 6, 2012) include claims 6 and 7, the subject matter of claims 6 and
7 has not been addresses substantively by either Appellants or the Examiner
Appeal 2013-001751
Application 10/548,105

2

We REVERSE.
According to the Specification, Appellant’s “invention relates to a
cladding panel for floors, walls or ceilings or similar applications.” Spec. 1,
ll. 2–3. Claim 47, which we reproduce below, is the only independent claim
under appeal and is representative of the appealed claims.
47. A cladding panel, the cladding panel being
made from wood, wood material, MDF, HDF,
plastic, recycled plastic, chips with synthetic resin
or bonded chips, and being configured for
cooperation with similar cladding panels to form
floors, walls and ceilings, the cladding panel
comprising:
a first edge (17) having a tongue (6) with an
insertion area (6a) extending to a free end (6b)
associated therewith and a second edge (17a)
having a groove (12) defined between opposed
legs (3) and (4), the tongue (6) and groove (12)
having opposed wall surfaces (7) and (5)
associated therewith, the cladding panel (1), being
joinable with adjacent similar cladding panels (2)
upon receiving a tongue (6) of a similar cladding
panel in the groove (12) and upon inserting the
free end of the tongue (6) into the groove (12) of
another similar cladding panel (2) to form floors,
walls or ceilings, the panels (1, 2) each having top
surface areas (18), (18a); the tongue (6) and
groove (12) being disengageable when the tongue
is inserted (6) into the groove (12);
at least one first deposited bead (8) having an
interface (8c) with and adhered to the wall surface

in any paper subsequent to the filing of the Notice of Appeal. Indeed, page 2
of the final Office Action mailed April 14, 2011, withdraws claims 6 and 7
from consideration as being drawn to a non-elected species. On these facts,
we treat claims 6 and 7 as withdrawn.
Appeal 2013-001751
Application 10/548,105

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(7) of the tongue (6), the first bead (8) having a
rear surface (8a) spaced a selected first distance
from the first end face (17);
at least one second deposited bead (9) having an
interface (9c) with and adhered to a wall surface
(5) of the groove (12), the wall surface (5) being
on at least one of the opposed wall surfaces (5) of
the legs (3,4) forming the groove (12), the second
bead (9) having a rear surface (9a), spaced a
selected second distance from the second end face
(17a), which first and second selected distances at
least approximate one another wherein the rear
surfaces (8a) and (9a) face one another to
mechanically lock the tongue (6) within the groove
(12) when the tongue (6) is inserted into the
groove (12);
at least one of the first and second beads (8 and 9)
being comprised entirely of an adhesive, the
adhesive comprising an adhesive cement, adhesive
plastic or an adhesive composite of cement and
plastic; the first and second beads being adhered to
one another upon the panels (1 and 2) being
joined;
the first bead (8) being positioned at a first location
on the outer surface (7) of the tongue (6) and the
second bead (9) being positioned at a second
location on the inner surface (5) of at least one leg
(3,4) of the groove (12); wherein when the tongue
(6) of the cladding panel (1) has been inserted into
the groove (12) of an adjacent similar cladding
panel (2) to bring the edges (17) and (17a) into
proximity, the first bead (8) has passed over the
second bead (9) thereby positioning the first bead
(8) behind the second bead (9) with the rear
surface (8a) of the first bead (8) facing the rear
surface (9a) of the second bead (9) and with the
Appeal 2013-001751
Application 10/548,105

4

edges (17) and (17a) in proximity to mechanically
lock the tongue (6) within the groove (12), and
wherein when the cladding panel (1) receives in
the groove (12) the tongue (6) of a similar cladding
panel (2), the first bead (8) on the tongue (6) of the
similar cladding panel passes over the second bead
(9) on the cladding panel (1) and by simultaneous
mechanical and adhesive contact therebetween
while the beads (8) and (9) are within the groove
(12) holds the tongue (6) within the groove (12) of
the cladding panel (1), whereby a surface (18),
(18a) is configured that is further extendible by
still additional similar cladding panels, and
wherein the beads (8 and 9) of the cladding panel
have been deposited on the outer wall surface (7)
of the tongue (6) and on the inner wall surface (5)
of the groove (12) during manufacture of the
cladding panels (1 and 2) prior to delivery of the
cladding panels (1 and 2) from a facility making
completed panels.
Br., Claims App.
REJECTIONS AND PRIOR ART
4

Appellant appeals the following rejections made by the Examiner:
claims 4, 5, 9, 10, 17–19, 24, 25, 33, 46, 47, 52 and 56 under 35
U.S.C. § 102(b) as anticipated by Steinwender (EP 1 229 181 A1, pub.
Aug. 7, 2002); and

4
The Examiner indicates that, “[e]very ground of rejection set forth in the
Office [A]ction dated 02/06/2012[,] from which the appeal is taken[,] is
being maintained by the [E]xaminer[,] except for the grounds of rejection
. . . listed under the subheading ‘WITHDRAWN REJECTIONS,’” which
withdraws “[t]he rejection of claim 57 under 35 USC § 112[,] first
paragraph.” Answer 2. The Office Action dated February 6, 2012 (“Final
Action”) rejects the claims as indicated. See Final Action 2–15.
Appeal 2013-001751
Application 10/548,105

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claims 20, 21, 26, 27, 48, 54, 55 and 57 under 35 U.S.C. § 103(a) as
unpatentable over Steinwender.
The Examiner withdraws the rejection of claim 57 under 35 U.S.C.
§ 112, first paragraph.
ANALYSIS
Independent claim 47 states the following:
at least one second deposited bead (9)
having an interface (9c) with and adhered to a wall
surface (5) of the groove (12), the wall surface (5)
being on at least one of the opposed wall surfaces
(5) of the legs (3,[]4) forming the groove (12), the
second bead (9) having a rear surface (9a), spaced
a selected second distance from the second end
face (17a), which first and second selected
distances at least approximate one another wherein
the rear surfaces (8a) and (9a) [of the first and
second deposited beads (8) and (9)] face one
another to mechanically lock the tongue (6) within
the groove (12) when the tongue (6) is inserted
into the groove (12);
. . .
the first bead (8) being positioned at a first
location on the outer surface (7) of the tongue (6)
and the second bead (9) being positioned at a
second location on the inner surface (5) of at least
one leg (3,[]4) of the groove (12); wherein when
the tongue (6) of the cladding panel (1) has been
inserted into the groove (12) of an adjacent similar
cladding panel (2) to bring the edges (17) and
(17a) into proximity, the first bead (8) has passed
over the second bead (9) thereby positioning the
first bead (8) behind the second bead (9) with the
rear surface (8a) of the first bead (8) facing the
rear surface (9a) of the second bead (9) and with
the edges (17) and (17a) in proximity to
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Application 10/548,105

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mechanically lock the tongue (6) within the groove
(12), and wherein when the cladding panel (1)
receives in the groove (12) the tongue (6) of a
similar cladding panel (2), the first bead (8) on the
tongue (6) of the similar cladding panel passes
over the second bead (9) on the cladding panel (1)
and by simultaneous mechanical and adhesive
contact therebetween while the beads (8) and (9)
are within the groove (12) holds the tongue (6)
within the groove (12) of the cladding panel (1),
whereby a surface (18), (18a) is configured that is
further extendible by still additional similar
cladding panels.
Br., Claims App. (emphases added). Initially, for the below reasons we
determine that the claim requires that first and second bead rear surfaces
face one another to mechanically lock cladding panels together, and thus
these statements are not options or conditions without patentable weight.
As MPEP § 2111.04 states:
Claim scope is not limited by claim language that
suggests or makes optional but does not require
steps to be performed, or by claim language that
does not limit a claim to a particular structure.
However, examples of claim language, although
not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for”
clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.
The determination of whether each of these
clauses is a limitation in a claim depends on the
specific facts of the case. See, e.g., Griffin v.
Bertina, 283 F.3d 1029, 1034 . . . (Fed. Cir. 2002)
(finding that a “wherein” clause limited a process
claim where the clause gave “meaning and purpose
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Application 10/548,105

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to the manipulative steps”). In Hoffer v. Microsoft
Corp., 405 F.3d 1326, 1329 . . . (Fed. Cir. 2005),
the court held that when a “‘whereby’ clause states
a condition that is material to patentability, it
cannot be ignored in order to change the substance
of the invention.” Id. However, the court noted
(quoting Minton v. Nat’l Ass’n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 . . . (Fed. Cir.
2003)) that a “‘whereby clause in a method claim
is not given weight when it simply expresses the
intended result of a process step positively
recited.’” Id.
Although claim 47 uses the term “when” instead of “whereby,” “wherein,”
or “adapted,” we find that the above-noted claim language describing the
bead arrangement when a tongue of one cladding panel is inserted into a
groove of another cladding panel does more than simply express the result of
such insertion, but instead that the claim language requires both that the
claimed structural components (e.g., the beads) are arranged as claimed and
that this arrangement mechanically locks the panels together also as claimed.
In the rejection, the Examiner finds that in Steinwender, “the beads
(Steinwender 12 and 14) contain spherical micro-particle beads
(Steinwender 18) in the shape of typical beads” (Answer 4), and that these
beads disclose the claimed first and second beads (see id. at 3). Although
the Examiner states, “the panels of Steinwender are interlocked . . .
[because] the micro-particle beads (Steinwender 18) which are installed on
the tongue-and-groove portion of the panels are crushed upon installation to
form the adhesive thereby interlocking two panels together, adhesively and
mechanically” (id.), we agree with Appellant that the Examiner does not
establish persuasively that Steinwender’s beads mechanically lock with one
another as required by claim 47 (see Br. 5–8). We note that one relevant
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Application 10/548,105

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definition of “mechanical” is “caused by, resulting from, or relating to a
process that involves a purely physical as opposed to a chemical or
biological change or process.” From http://www.merriam-
webster.com/dictionary/mechanical, last accessed March 2, 2015. By
contrast, the formation of adhesive described by the Examiner appears to
include a chemical change or process. Based on the foregoing, we do not
sustain the rejection of claim 47, or the rejection of claims 4, 5, 9, 10, 17–21,
24–27, 33, 46, 48, 52, and 54–57 dependent therefrom.
DECISION
The Examiner’s rejections of claims 4, 5, 9, 10, 17–21, 24–27, 33, 46–
48, 52, and 54–57 are reserved.

REVERSED

rvb