2021002929 (P.T.A.B. Dec. 24, 2021)

TARKETT GDL

Patent Trials and Appeals BoardDec 24, 2021

2021002929 (P.T.A.B. Dec. 24, 2021)

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. 15/738,342 12/20/2017 Jean-Yves SIMON OVL0030US 1007 23413 7590 12/24/2021 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER HIJAZ, OMAR F ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 12/24/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-YVES SIMON, JONAS BLADH, ANDRE CRESSON, and MATHIAS LEWARK Appeal 2021-002929 Application 15/738,342 Technology Center 3600 Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and CARL M. DEFRANCO, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8, 10, 11, and 13–19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new ground of rejection in accordance with 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies TARKETT GDL as the real party in interest. Appeal Br. 2. Appeal 2021-002929 Application 15/738,342 2 CLAIMED SUBJECT MATTER The claims are directed to a flexible rectangular floor covering panel having connection profiles along each of its four edges. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flexible rectangular floor covering element with a decorative top face and a bottom face for contacting an underfloor, the floor covering element having four edges with tongue-and-groove connection profiles, that is to say: a first long edge with a first connection profile, the first connection profile having a recess at said bottom face and a tongue overhanging said recess and laterally protruding from the edge, a second long edge with a second connection profile that is complementary to the first connection profile, the second connection profile having a protrusion at said bottom face and a groove laterally extending into the edge of the floor covering element for receiving the tongue of the first profile, a first short edge with said first connection profile; and a second short edge with said second connection profile; wherein, when looking at the floor covering element from above the top face, the edges are arranged in the following order in the clockwise direction: 1) the first long edge, 2) the first short edge, 3) the second long edge and 4) the second short edge; and wherein the floor covering element is a double-angling- type floor covering element, the first connection profile and the second connection profile being configured so that the second connection profile can be angled under the first connection profile and by said angling laterally the tongue of the first connection profile being allowed to enter into the groove of the second connection profile. Appeal Br. 30 (Claims App.). Appeal 2021-002929 Application 15/738,342 3 REJECTIONS 1. Claims 1–8, 10, 11, and 13–18 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claim(s) 1, 2, 4, 6–8, 10, 11, 13, 14, and 19 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Roy (US 2014/0215946 A1, published Aug. 7, 2014). 3. Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over Roy and Segaert (US 2015/0121793 A1, published May 7, 2015). 4. Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Roy. 5. Claims 15–18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Roy and Kalyan (US 9,216,857 B1, issued Dec. 22, 2015). ANALYSIS A. Indefiniteness The Examiner contends that claim 1’s recitation of “said angling laterally” is indefinite for lack antecedent basis. Final Act. 2. We disagree. One skilled in the art would readily understand that, when read in the full context of the claim, the phrase “said angling laterally” finds support and meaning from the claim’s earlier recitations of the terms “angled” and “laterally.” More specifically, because the claim recites that the first connection profile has an overhanging tongue “laterally protruding from the edge” and the second connection profile has a groove “laterally extending into the edge,” and then recites that the second connection profile “can be angled under” the first connection profile, one skilled in the art would understand from those recitations that the groove must be at an angle for Appeal 2021-002929 Application 15/738,342 4 lateral entry of the tongue into the groove. As such, we do not sustain the Examiner’s indefiniteness rejection. B. Anticipation—Claims 1, 2, 4, 6–8, 10, 11, 13, 14, and 19 Of the claims rejected as anticipated by Roy, Appellant argues claims 1, 2, 4, 6, 7, 11, 13, and 14 together (see Appeal Br. 28) and claims 8, 10, and 19 separately (see id. at 20, 21, 23). As for the claims argued together, we select claim 1 for review, with claims 2, 4, 6, 7, 11, 13, and 14 standing or falling therewith. We address claims 8, 10, and 19 separately. 1. Claim 1 (and Dependent Claims 2, 4, 6, 7, 11, 13, and 14) The Examiner finds that Roy discloses all the elements of claim 1, including the claimed “first connection profile” having a “tongue” (Roy’s element 20b) and the claimed “second connection profile” having a “groove . . . for receiving the tongue of the first profile” (Roy’s element 20a). See Final Act. 3–4 (citing Roy, Figs. 3, 3A, 5). In response, Appellant argues that Roy “teaches away” from the claimed tongue and groove configuration because Roy speaks of it as a “weakness” in the prior art. Appeal Br. 13. This argument is unpersuasive for two reasons. First, the concept of teaching away is inapplicable to an anticipation rejection. See Celeritas Technologies Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Moreover, even if applicable, the Examiner correctly notes that, rather than teaching away, Roy’s Figure 5 clearly depicts a tongue (element 25b) engaging with a groove (element 23a) to form a tongue-and-groove connection between two floor panels. See Final Act. 11–12. And although Roy uses the term “flange” (or “projection”) rather than “tongue,” one skilled in the art would nonetheless understand Roy to be describing a tongue-and-groove connection, especially Appeal 2021-002929 Application 15/738,342 5 given that Roy uses the term “groove” to describe the corresponding profile into which the so-called flange is inserted. See Roy ¶¶ 67–69. And to the extent Appellant relies on an inventor declaration as proof to the contrary (see Appeal Br. 13–14), we give the inventor’s testimony little to no weight as it is clearly inconsistent with what Roy plainly shows on its face. Next, Appellant argues that Roy does not teach the double-angling type configuration as claimed because “[Roy’s] connectors can be assembled and disassembled by translation as well as by rotation” and because Roy’s connectors “are held together by f[r]iction fit (tight fit) rather than by interlocking (form or geometry fit).” Appeal Br. 14 (citing Decl. ¶ 10). According to Appellant, the term “double-angling” means that the connection profiles on the floor panel’s long and short edges “are shaped such that they interlock (they engage into a form fit or geometry fit) by rotation, not by mere translation.” Id. at 14 (citing Decl. ¶ 9). Although Appellant’s interpretation of the claim term “double-angling” may be correct, Appellant’s assessment as to Roy’s disclosure of such is simply wrong. Roy clearly illustrates the connection of two floor panels by means of rotating and angling one panel relative to an adjacent panel so that the tongue of the angled panel engages with, and fits into, the corresponding groove of the adjacent panel. See Roy, Fig, 5, arrow D; see also id. ¶¶ 75– 76 (describing Roy’s “alternative technique for connecting multiple panels . . . with reference to FIG. 5”). Moreover, we reject Appellant’s assertion that Roy’s connection profiles do not result in “interlocking” of the panels. Appeal Br. 14. As expressly stated by Roy, “[e]qually beneficially, the groove 22/flange 24 configuration allows for the rapid alignment of two Appeal 2021-002929 Application 15/738,342 6 panels 10 and allows for their interlocking by applying a light pressure.” Roy ¶ 84 (emphasis added). Appellant further contends that the Examiner “dismisses” certain the “structural capabilities” of “the first connection profile and the second connection profile being configured so that the second connection profile can be angled under the first connection profile and by said angling laterally the tongue of the first connection profile being allowed to enter into the groove of the second connection profile . . . ,” as recited in claim 1. Appeal Br. 15 (emphases added). We disagree. Although the Examiner hedges on this limitation as being functional in nature, the Examiner nonetheless addresses its structural capabilities head-on, as discussed above. See Ans. 4–5. And to the extent Appellant contends that claim 1’s recitation of the second connection profile (i.e., the groove) being “angled under” the first connection profile (i.e., the tongue) is opposite of what Roy discloses (i.e., angling the tongue under the groove), we discern no meaningful difference given that one skilled in the art would see this as simply a difference in the point of reference that depends wholly on whether the panel with overhanging tongue or the underlying groove is placed on the floor first. See Ans. 5–6. In sum, the preponderance of the evidence does not support Appellant’s arguments. Thus, we sustain the Examiner’s rejection of claim 1, as well as the rejection of the claims falling therewith, i.e., dependent claims 2, 4, 6, 7, 11, 13, and 14. 2. Claims 8 and 10 Claim 8 recites ‘[a] set of floor covering elements as claimed in claim 1 having user information associated therewith indicating that the set Appeal 2021-002929 Application 15/738,342 7 of floor covering elements is for right hand persons and/or for installation from left to right” and claim 10 includes a similar recitation except the user information indicates the set is “for left-handed persons and/or for installation from right to left.” Appeal Br. 31, 32, respectively. Giving the term “user information” its broadest reasonable interpretation, the Examiner states that the term “information “is not limited to textual or pictorial information” but can mean any form of indicia. Final Act. 12–13; Ans. 7. With that in mind, the Examiner finds that Roy discloses as much because “one of ordinary skill in the art can to look at the edges/lips of the [panel] as a whole and as a form of indicia, [] be able to discern that the set of floor covering elements” is for right-handed or left- handed persons and/or for installation from left to right or right to left. Ans. 7. Appellant, in turn, argues that “the skilled person would not have been able to interpret the arrangement of Roy’s connection lips 20 as conveying [] information” regarding installation of the panels. Appeal Br. 21. We believe Appellant has the more reasonable position. The Examiner fails to provide any evidentiary support, from Roy or otherwise, for why one skilled in the art would glean the manner of installing Roy’s panel from simply looking at the panel’s edges. See Final Act. 6; Ans. 7. As such, we do not sustain the Examiner’s rejection of claims 8 and 10. However, we enter a new ground of rejection for claims 8 and 10, as discussed below. 3. Claim 19 Independent claim 19 recites limitations that are essentially the same as claim 1. Appeal Br. 35 (Claims App.). The Examiner rejects claim 19 on the same basis as claim 1. See Final Act. 7–8. In contesting this rejection, Appeal 2021-002929 Application 15/738,342 8 Appellant merely repeats the same arguments as made with respect to claim 1. See Appeal Br. 23–28. Those arguments are no more persuasive with respect to claim 19 than they were for claim 1. Thus, for the same reasons as claim 1, we sustain the Examiner’s rejection of claim 19. C. Obviousness—Claims 3, 5, and 15–18 Appellant does not argue the obviousness rejection of dependent claims 3, 5, and 15–18, and instead relies on their ultimate dependency from claim 1 along with arguments made with respect thereto. See Appeal Br. 28. D. New Ground of Rejection—Claims 8 and 10 Dependent claims 8 and 10 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Roy. Claim 8 recites that the floor covering elements of claim 1 have “user information associated therewith indicating that the set of floor covering elements is for right-handed persons and/or for installation from left to right,” while claim 10 recites similar user information except “for left-handed persons and/or for installation from right to left.” Appeal Br. 31–32 (Claims App.) (emphasis added). Put another way, the recited “user information” is merely indicia instructing the user on proper installation of the floor panels, which, in our view, constitutes printed matter. Indeed, as Appellant concedes, the Specification defines such indicia as comprising “indications” in the form of “a matrix barcode 38a, a pictogram representing a right hand 40a and a textual notice 42a.” Appeal Br. 20 (citing Spec. ¶ 30 and Fig. 4 in support of claim 8); see also id. at 22 (citing Spec. ¶ 31 and Fig. 5 in support of claim 10). Our reviewing court cautions that “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 703 Appeal 2021-002929 Application 15/738,342 9 F.2d 1381, 1385 (Fed. Cir. 1983) (citation omitted). In that case, “[a]lthough the printed matter must be considered, . . . it may not be entitled to patentable weight.” Id. Thus, “the relevant question is whether ‘there exists any new and unobvious functional relationship between the printed matter and the substrate.’” King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267 (Fed. Cir. 2010) (citing Gulack, 703 F.2d at 1386). But a functional relationship is not demonstrated merely because a substrate supports and displays indicia. Gulack, 703 F.2d at 1386. Here, Appellant has not identified any functional relationship between the substrate (i.e., the claimed floor covering elements) and the printed matter (i.e., the user information or indicia). Indeed, Appellant concedes that “the connection profiles and the user information,” as claimed, are “separate elements.” Appeal Br. 21. That concession suggests there is no functional relationship between the structure of the connection profiles and the indicia informing the user about installation. Rather, the indicia simply bear information regarding how a floor covering element may be physically installed. It is undisputed, however, that the indicia do not bear structural aspects or features that would preclude the claimed floor covering element from being installed in the absence of such indicia. More succinctly, the indicia do not change the structure of the connection profiles in any manner whatsoever. So, because the claimed structure of Appellant’s floor covering element is old (as evidenced by Roy) and the sole difference added by claims 8 and 10 is the existence of non-functional printed matter, there is nothing patentable about that structure. Accordingly, we enter a new ground Appeal 2021-002929 Application 15/738,342 10 of rejection of claims 8 and 10 on the basis that they merely recite non- functional printed matter rendering them unpatentable over Roy. CONCLUSION Claims Rejected 35 U.S.C. § Basis Affirmed Reversed New Ground 1–8, 10, 11, 13–18 112(b) Indefiniteness 1–8, 10, 11, 13–18 1, 2, 4, 6–8, 10, 11, 13, 14, 19 102(a)(1) Roy 1, 2, 4, 6, 7, 11, 13, 14, 19 8, 10 8, 10 3 103 Roy, Segaert 3 5 103 Roy 5 15–18 103 Roy, Kalyan 15–18 Overall Outcome 1–7, 11, 13–19 8, 10 8, 10 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2021-002929 Application 15/738,342 11 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(B)