Ex Parte Stanchfield et al

Patent Trial and Appeal Board

Apr 16, 2014

11984091 (P.T.A.B. Apr. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte OLIVER O. STANCHFIELD, SVEN KORNFALT,
WILLIAM T. PIERCE, PATRICK GEORGE SMITH,
SABAD LA SERNA, ROLAND LARSSON
and WAYNE ROBERT JOHNSTON
____________________

Appeal 2012-001331
Application 11/984,091
Technology Center 3600
____________________

Before: JOHN C. KERINS, JILL D. HILL, and FRANCES L. IPPOLITO,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1 and 6-20. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claims 1 and 20 are independent. Claim 1 is illustrative:
1. An assembly for covering a gap adjacent a first
flooring element comprising:
at least one track, said at least one track comprising a
substantially planar section for longitudinally extending at least
partially below a first flooring element and an upstanding
section comprising spaced upstanding elements, said
upstanding elements defining a groove therebetween; the
substantially planar section extending beneath each upstanding
element as well as extending beyond at least the groove formed
by said upstanding elements; and,
a molding component, comprising an upper section and
at least one depending section;
wherein said at least one depending section is sized and
shaped to fit in said groove.

REJECTIONS
Claims 1 and 11 are rejected under 35 U.S.C. § 102(a) and § 102(e) as
being anticipated by Stanchfield (US 2006/0201093 A1, published
September 14, 2006).
Claims 6-10 and 12-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stanchfield.

ANALYSIS
Claim 1 as anticipated by Stanchfield
The Examiner found that Stanchfield discloses an assembly for
covering a gap adjacent a first flooring element. Ans. 5-6. More
specifically, the Examiner provided an annotated version of Figure 57 of
Stanchfield (id. at 6), and identified in that version that the assembly
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comprises at least one track (“A”), including a substantially planar section
(“B”) and an upstanding section comprising spaced upstanding elements
(“C”), the upstanding elements defining a groove therebetween, the
substantially planar section extending beneath each upstanding element as
well as extending beyond at least the groove formed by the upstanding
elements, a molding component (“Dl” and “D2”), comprising an upper
section (“Dl”) and at least one depending section (“D2”); wherein the at
least one depending section is sized and shaped to fit in the groove, and a
reducer (“E”) sized and shaped to mate with a second track (“F”). Id. at 5-6.
The Examiner also found the claim language “for longitudinally extending at
least partially below a first flooring element,” describing the substantially
planar section (“B”), to be functional language and a statement of intended
use, and that the structure in Figure 57 of Stanchfield is fully capable of
performing the function and the intended use. Id. at 5-6, 13.
Appellants argue that element “B” in Figure 57 does not evidence a
track comprising a substantially planar section longitudinally extending at
least partially below a first flooring element, but rather extends either below
the molding component “D2” or below the reducer “E,” and that there is no
flooring element shown in Figure 57. App. Br. 4. Appellants submit that
the Examiner clearly labels a reducer component as “E,” which is not a
flooring element, and that this confirms the absence of a planar section
longitudinally extending below a flooring element. Id.
In response, the Examiner further elaborated that claim 1 does not
positively recite a first flooring element, and recites only that the planar
section is for longitudinally extending at least partially below an unclaimed
first flooring element. Ans. 12-13. As noted above, the Examiner construes
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the claim as only setting forth a functional relationship with respect to how
the track would interrelate with a flooring element in the recited intended
use of the claimed invention, and found that the Stanchfield device is
capable of performing the intended use. Id. at 12-13.
We agree with the Examiner that claim 1 does not positively recite a
first flooring element, and thus the Examiner’s reliance on Figure 57 of
Stanchfield, which does not show such a flooring element, is not misplaced.
Appellants has offered no evidence to rebut the Examiner’s contention that
component “B” in Figure 57 of Stanchfield, identified by the Examiner as
corresponding to the claimed substantially planar section, is capable of
performing the intended use set forth in claim 1. It appears that a suitably
configured flooring element could be accommodated in the space occupied
by reducer element “E,” and the planar section would, in such an assembly,
extend at least partially below that flooring element.
The rejection of claim 1 is sustained.

Claim 11 as anticipated by Stanchfield
The Examiner further found that Stanchfield discloses a reducer (“E”),
sized and shaped to mate with a second track (“F”). Ans. 6. Appellants
argue that Figure 57 of Stanchfield discloses no “second track,” as claimed.
App. Br. 5.
The Examiner is correct that the language of claim 11 merely requires
a track for mating with a reducer of corresponding size and shape. The
claim does not require that the second track have the same features as the “at
least one track” of claim 1, which appears to be the basis of Appellants’
argument. Appellants have not shown that the structure “F” identified by the
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Examiner in the annotated Figure 57 of Stanchfield does not meet the
language of claim 11 calling for a second track.
The rejection of claim 11 is sustained.

Claim 15 as unpatentable over Stanchfield
The Examiner takes the position that the embodiment in Figure 57 of
Stanchfield, which meets the limitations of claim 11, from which claim 15
depends, does not disclose a shim positioned between the reducer and the
second track as required by claim 15. Ans. 10. The Examiner relies upon
the embodiment in Figure 54 of Stanchfield (annotated version at id. 10), as
disclosing a shim (“W”), the reducer (“X”) and the second track (“Y”),
maintaining that it would have been obvious “to substitute one embodiment
for another as they are considered obvious variants and would function
equally as well.” Id.
Appellants argue that the substitution of the track of Stanchfield in
Figure 54 is even more remote from the claimed invention, as it does not
contain a substantially longitudinally extending portion. App. Br. 5.
The Examiner’s rejection of claim 15 lacks clarity as to the nature and
extent of the substitution proposed and, thereby, as to the resulting structure,
including the existence of an extending portion in the proposed combination.
The Examiner further merely identifies structure (“W”) as a “shim” as
claimed without any further explanation. We question whether a person of
ordinary skill in the art would consider the structure relied on by the
Examiner as being a “shim.” In that regard, it is noted that the Stanchfield
reference itself identifies other structure similar to that below the groove-
defining track in Figure 54 as a “shim, as optionally used in the other
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embodiments described herein.” Stanchfield, Fig. 20a (element 102); paras.
[0066], [0094].
The rejection of claim 15 is not sustained.

Claims 6-10, 12-14, and 16-19 as unpatentable over Stanchfield
Appellants argue that because Stanchfield does not teach limitations
of claims 1 and 11, the same limitations not taught in Stanchfield above as
applied to claims 1 and 11 are also not taught as applied to dependent claims
6-10, 12-14, and 16-19. App. Br. 4. Claim 16 depends directly from claim
11 and claims 6-10, 12-14, and 17-19 depend directly from claim 15. As
noted above, we are not apprised of Examiner error with respect to claim 11,
but do find that the Examiner erred in rejecting claim 15.
Therefore, the rejection of claim 16 is sustained and the rejection of
claims 6-10, 12-14, and 17-19 is not sustained.

Claim 20 as unpatentable over Stanchfield
The Examiner takes the position that Stanchfield provides a floor
comprising a first flooring element having a substantially, planar upper
surface and the assembly of claim 15 as previously discussed. Ans. 11-12
(citing Stanchfield, Fig. 4, element 124).
The Examiner’s rejection of claim 20 relies on the same nebulous
position as was advanced for claim 15, which we found to be inadequate to
constitute a prima facie case of unpatentability. Furthermore, and in contrast
to claim 15, which depends from claim 1, claim 20 positively requires a first
flooring element in combination with such assembly. The Examiner’s
reliance on Figure 4 in addition to Figures 54 and 57, however, fails to
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provide any further guidance as to how the embodiments of the various
figures are proposed to be combined to meet all the structures required by
claim 20.
The rejection of claim 20 is not sustained.

Claims 6, 7, 17, and 18-Objection based on improper Markush grouping
Appellants’ present arguments regarding an objection, raised during
prosecution before the Examiner, that these claims include improper
Markush groups. App. Br. 6.
The Board normally only considers matters affecting the merits of the
invention, i.e., rejections of claims. See 37 C.F.R. § 41.31(c) (2011).
Matters not affecting the merits of the invention, such as objections to the
claims or Specification or allegations of procedural errors by the Examiner
(e.g., failure to designate a new ground of rejection as such), are to be raised
by petition to the Director or to the PTO official to whom the Director has
delegated the authority to determine the petition. See 37 C.F.R. §§ 1.181-
183; see also Manual of Patent Examining Procedure (MPEP) §§ 1002,
1207.03 (IV) (8th ed., Rev. 9, Aug. 2012).
This objection is a petitionable matter and not within the jurisdiction
of the Board.

DECISION
We AFFIRM the rejections of claims 1, 11, and 16 and REVERSE the
rejections of claims 6-10, 12-15, and 17-20.

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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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