Ex Parte Kornfalt et al

Patent Trial and Appeal BoardNov 23, 2012

11640351 (P.T.A.B. Nov. 23, 2012)

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. 11/640,351 12/18/2006 Sven Kornfalt 8688.002.USDV06 6663 74217 7590 11/23/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER KATCHEVES, BASIL S ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 11/23/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SVEN KORNFALT, PER BENGTSSON, HANS SJOLIN, and OLIVER STANCHFIELD ____________ Appeal 2010-009197 Application 11/640,351 Technology Center 3600 ____________ Before: STEVEN D. A. MCCARTHY, GAY ANN SPAHN, and JOHN W. MORRISON, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009197 Application 11/640,351 2 STATEMENT OF THE CASE Sven Kornfalt et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 46-71 and 73-80. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention relates to a process for the production of a floor strip. Spec. 1. Claims 46 and 61 are the independent claims on appeal. Claim 46 is illustrative and is reproduced below: 46. An assembly comprising: a floor having a decorative pattern; and a floor strip comprising: a first molding element, the first molding element comprising: a longitudinal carrier comprising an upper section having a decorative pattern on an upper surface thereof; and a foot depending from the upper surface the decorative pattern comprising at least one monochromatic or patterned paper sheet and hard particles, which particles impart an abrasion resistance to the floor strip; wherein the decorative pattern of the floor strip is the same as the decorative pattern of the floor; and, a second molding element, where the second molding element is connected to the upper section of the first molding element through a tongue and groove joint. Appeal 2010-009197 Application 11/640,351 3 THE REJECTIONS Appellants seek review of the following rejections: 1 claims 46-61, 63-71, and 73-80 under 35 U.S.C. § 103(a) over Ruff (US 4,067,155, iss. Jan. 10, 1978) and Lindgren (US 5,034,272, iss. Jul. 23, 1991); and claim 62 under 35 U.S.C. § 103(a) over Ruff, Lindgren, and Minnick (US 5,451,451, iss. Sep. 19, 1995). ANALYSIS Obviousness over Ruff and Lindgren Addressing claim 46, the Examiner has found that Lindgren discloses a decorative thermosetting laminate (title) made up of hard particles of aluminum oxide. Ans. 4 (citing Lindgren, col. 1, ll. 33-38). The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to modify Ruff by adding a decorative thermosetting laminate to the panels and strip, as disclosed by Lindgren, in order to increase the aesthetics and durability of assembly,” and “[u]sing the laminate on both the strip and panels would be an obvious design choice for aesthetics.” Ans. 4. The Appellants contend that there is no description of “a floor having a decorative pattern” and a floor strip “wherein the decorative pattern of the floor strip is the same as the decorative pattern of the floor”. Nor is there any disclosure that the insert 18 of Ruff et al. is a 1 The Examiner in the Answer withdrew a rejection of claim 59 under 35 U.S.C. 112, second paragraph, as indefinite due to lack of antecedent basis for a term. See Ans. 3. Appeal 2010-009197 Application 11/640,351 4 “carrier” for any decorative surface or surface covering. App. Br. 5. We agree with the Appellants. While Lindgren does teach the use of decorative patterns in the laminate, there is no teaching of using matching decorative patterns on a floor and a floor strip. Furthermore, the Examiner has failed to provide an adequate articulation of a reason with a rational underpinning to explain how the resilient insert member 18 of Ruff could be used as a carrier member for the laminate of Lindgren. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). None of Lindgren’s suggested uses: walls, covered doors, desk tops, table tops, for other furniture, and as flooring materials (see Lindgren, col. 1, ll. 6-9), appear to be a resilient material similar to the insert member 18 of Ruff. Therefore, one of ordinary skill in the art would not be led to place the laminate of Lindgren on the resilient strip of Ruff as suggested by the Examiner. As such, we cannot sustain the rejection of claim 46 and claims 47-60 and 79-80 which depend therefrom. Addressing claim 61, the Examiner relies on the same finding as that articulated for claim 46 and the fact the Lindgren discloses the use of fiber board. Ans. 5. The Appellants counter that there is no basis why an extruded thermoplastic as in Ruff et at. could be substituted by a fiberboard as in Lindgren et al., especially when the environment of Ruff et al. is an exterior roof or Appeal 2010-009197 Application 11/640,351 5 wall and not a floor and the known properties of fiberboard make it subject to destruction when exposed to water and similar elements. App. Br. 7. We agree with the Appellants. The Examiner has not set forth an adequate articulation of a reason with a rational underpinning to show how the destructible fiberboard of Lindgren could be substituted for the thermoplastic material of the insert member 18 of Ruff and survive in the water and other elements found in a floor environment. See KSR at 418. Thus, one skilled in the art would not be led to substitute the thermoplastic of the insert member of Ruff with the fiber board of Lindgren. As such, we cannot sustain the rejection of claim 61 and claims 63-78 which depend therefrom. Obviousness over Ruff, Lindgren, and Minnick Addressing claim 62, the Examiner has relied on Minnick to teach the use of a high density fiber board. Nothing in Minnick remedies the underlying deficiency of the rejection of claim 61 from which claim 62 depends. As such, we cannot sustain the rejection of claim 62. DECISION The Examiner’s decision rejecting claims 46-71 and 73-80 is reversed. REVERSED mls