Ex Parte Sjoberg

Board of Patent Appeals and Interferences

Apr 28, 2010

10309345 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AKE SJOBERG
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Appeal 2009-011466
Application 10/309,345
Technology Center 1700
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Decided: April 28, 2010
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Before CATHERINE Q. TIMM, and JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 5-7, 12, 13, 15-20, and 23-27, which are
all of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.1
We REVERSE.

1 An oral hearing was held for this appeal on April 21, 2010.

Appeal 2009-011466
Application 10/309,345

STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a surface
comprising multiple boards having a textured surface comprising at least
two heights, wherein the texture on the first board extends over the joint
formed between adjacent boards.
The Examiner maintains the rejection of claims 5-7, 12, 13, 15-20,
and 23-27 under 35 U.S.C § 103(a) as unpatentable over the combined
teachings of Garcia (US 6,401,415 B1, issued June 11, 2002) and Giertz
Garcia (WO 97/31775, published September 4, 1997).

ISSUE
Did the Examiner err in determining that the combination of Garcia
and Giertz suggests a surface comprising multiple boards having a textured
surface comprising at least two heights, wherein the texture on the first
board extends over the joint formed between the first and second boards to
match the texture of the second board at the joint as required by independent
claim 23? We decide this issue in the affirmative.

FINDINGS, ANALYSIS, AND CONCLUSION
We agree with the Appellant that the Examiner fails to account for the
differences between the claimed structure and the structure of Garcia. As
correctly stated by Appellant “in the claimed invention, the texture i.e., at
least two different heights extend across the joint at the edge of the boards.”
(App. Br. 4). Appellant, also correctly recognizes that Garcia discloses

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Appeal 2009-011466
Application 10/309,345
[a]s shown in Fig. 2, such tile or boards have a depressed edge or rim
1 that is sunk below the rest of the S of the product unit. See column
2, lines 62-64. It is this perimeter rim 1 which forms at a joint 2, as
shown in Fig. 3 of Garcia. Thus, it can be clearly appreciated that the
texture of Garcia does not extend across the joint but only a single
height i.e. S or b as shown in Figs. 1-3 of Garcia clearly did not
extend across the joint. (App. Br. 4).

The Examiner recognizes that “Garcia fails to disclose the texture on
the first board position such that when said first edge of said first board is
joined with one of said edges said second board, said texture on said first
board extends over the joint formed to match said texture of said second
board at said joint.” (Ans. 4). However, the Examiner contends that the
texture of the claimed invention is merely ornamental and therefore would
have been obvious design choice to have a pattern flow over the joints of
adjacent boards. (Ans. 6). The Examiner’s position regarding the texture is
in error because it does not account for the different heights of the texture
required by the claimed invention. The Examiner cites the Giertz reference
for describing the polymeric composition of the decorative layer. (Ans. 5).
Consequently, the Examiner has failed to account for the differences in the
Garcia structure identified by Appellant. Thus it follows the Examiner has
reversibly erred.

ORDER
In summary, the rejection made by the Examiner is reversed.
REVERSED

tc

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Appeal 2009-011466
Application 10/309,345
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
1300 Eye Street, N.W.
1000 West Tower
Washington, DC 20005
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