Ex Parte IMBEAU et al

Patent Trial and Appeal BoardMar 28, 2019

14473583 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/473,583 08/29/2014 Daniel IMBEAU 23552 7590 04/01/2019 MERCHANT & GOULD P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 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. 09680.0715FPU1 1079 EXAMINER MATTEI, BRIAN DAVID ART UNIT PAPER NUMBER 3633 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): USPT023552@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL IMBEAU and MICHEL LABONTE Appeal2018-007800 Application 14/473,583 1 Technology Center 3600 Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellants appeal from the Examiner's decision rejecting claims 1, 2, 4--12, 14--22, and 25-28. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 According to the Appellants, "[ t ]he real party of interest in this application is GROUPE ISOLOFOAM INC." Appeal Br. 2. Appeal2018-007800 Application 14/473,583 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 12, and 25 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A rigid floor insulating panel comprising: an insulating material core with an R-value of at least 2.5 (hr.ft2.Â°F)/BTU.in, the insulating material core having opposed first and second substantially flat surfaces, a pair of spaced-apart longitudinal edges, and a pair of spaced-apart lateral edges extending between the pair of longitudinal edges, at least one of the pair of longitudinal edges and the pair of lateral edges comprising connecting members, each one of the connecting members including a tongue and groove assembly consisting of an inner groove and an outer tongue with a single inflexion point positioned at a median of a length of the tongue and groove assembly, the inner groove and outer tongue being separated by a substantially S-shaped median wall defining consecutive convex and concave sections in the inner groove and the outer tongue with the single inflection point being located at the junction of the convex and concave sections, the tongue and groove assembly being engageable in a pivotable interconnection with the tongue and groove assembly of an adjacent rigid floor insulating panel; and at least one polymeric-based film covering one of the first surface and the second surface of the insulating material core [.] Rejections Claims 1, 2, 4---6, 8-10, 12, 14--16, 18-21, and 25 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Bahnmiller (US 2011/0197530 Al, pub. Aug. 18, 2011) and Ford et al. (US 2015/0047282 Al, pub. Feb. 19, 2015) ("Ford"). Claims 7 and 17 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Bahnmiller, Ford, and Halfaker (US 4,437,287, iss. Mar. 20, 1984). 2 Appeal2018-007800 Application 14/473,583 Claims 11 and 22 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Bahnmiller, Ford, and Lubker, II et al. (US 6,263,574 Bl, iss. July 24, 2001) ("Lubker"). Claims 26-28 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Bahnmiller, Ford, and Perra et al. (US 2012/0180416 Al, pub. July 19, 2012) ("Perra"). ANALYSIS The Examiner finds Bahnmiller teaches substantially all of the subject matter of independent claims 1, 12, and 25, but fails to teach "each of the connecting members including tongue and groove assemblies separated by a substantially S-shaped median wall." Final Act. 2. The Examiner relies on Ford to remedy this deficiency. Id. at 3. Specifically, the Examiner finds: Ford teaches a connecting member including a tongue and groove assembly consisting of an inner groove and an outer tongue with a single inflection point positioned at a median of a length of the tongue and groove assembly, the inner groove and outer tongue being separated by a substantially S-shaped median defining consecutive convex and concave sections in the inner groove and the outer tongue with the single inflection point being located at the junction of the convex and concave sections, the inner groove being defined partially by a substantially straight inner wall extending substantially perpendicular to one of the first and second surfaces (Fig[.] 1 ). Id. The Examiner concludes it would have been obvious to one of ordinary skill in the art to modify Bahnmiller's connecting member with "an inner groove and an outer tongue separated by a substantially S-shaped median wall[,] as taught by Ford, in order to lock the adjacent panels together and 3 Appeal2018-007800 Application 14/473,583 eliminate any gap between panels thereby improving the thermal performance of the wall." Id. The Appellants argue that the Examiner's rejection is based on impermissible hindsight reasoning. See Appeal Br. 17. The Appellants assert that "there is no need in Bahnmiller to further eliminate any gap between adjacent panels" because Bahnmiller's "adjacent panels are secured together through the adhesive portion of the facing that extends beyond the core." Id. The Appellants' argument is persuasive. Bahnmiller's insulation panels 12 are described as abutting and secured. Bahnmiller ,r,r 35, 36. For example, Bahnmiller describes: abutting insulation panels 12 being temporarily secured to one another by facing overhang 7 a, secured by tape tab 6, and cap screws with a fender washers if necessary (not shown) until they can be secured in place by means of fasteners driven through the wall panels 21 and insulation panels 12 and into the girts 18. Id. ,r 35 (emphasis omitted). Therefore, Bahnmiller does not disclose a gap between panels that would need to be eliminated. We appreciate the Examiner's position that "[i]t is well known in the art that gaps between insulating panels provide opportunity for heat/cold to pass through and thus reduce the efficiency and performance of the panel system." Ans. 5. However, the Examiner fails to adequately explain how Bahnmiller's abutting insulations panels 12, which have multiple means of being secured in place, would have such gaps. Thus, we do not sustain the Examiner's rejection of independent claims 1, 12, and 25, as well as dependent claims 2, 4---6, 8-10, 14--16, and 18-21, as unpatentable over Bahnmiller and Ford. 4 Appeal2018-007800 Application 14/473,583 The remaining rejections, based on Bahnmiller and Ford in combination with Halfaker, Lubker, or Perra, rely on the same deficiency as discussed above. This deficiency is not cured by the additional findings and reasoning of the remaining rejections. Thus, we do not sustain the Examiner's rejections of: claims 7 and 17 as unpatentable over Bahnmiller, Ford, and Halfaker; claims 11 and 22 as unpatentable over Bahnmiller, Ford, and Lubker; and claims 26-28 as unpatentable over Bahnmiller, Ford, and Perra. DECISION We REVERSE the Examiner's decision rejecting claims 1, 2, 4--12, 14--22, and 25-28. REVERSED 5