Ex Parte Simon et al

Patent Trial and Appeal BoardFeb 28, 2019

14783998 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/783,998 10/12/2015 53609 7590 03/04/2019 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 FIRST NAMED INVENTOR Jean-Yves Simon 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. 510683 9468 EXAMINER ADAMOS, THEODORE V ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 03/04/2019 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-YVES SIMON, AGNES PARMENTIER, MICHEL CANCELLIER, and BENJAMIN CORNEZ 1 Appeal 2018-004850 Application 14/783,998 Technology Center 3600 Before MICHAEL L. HOELTER, WILLIAM A. CAPP, and JEREMY M. PLENZLER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 18-23 and 25-28. See App. Br. 2; Reply Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we AFFIRM. 1 "The patent application that is the subject of this appeal is assigned to Tarkett GDL S.A., the assignee of the entire right, title, and interest." App. Br. 2; Reply Br. 2. We thus proceed on the basis that, for purposes of this appeal, Tarkett GDL S.A. is the "Appellant." Appeal2018-004850 Application 14/783,998 CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a resilient polymer-based surface covering element in the form of a long strip comprising connecting means and relates to a polymer-based surface covering comprising such element." Spec. ,r 1. Apparatus claim 18 is the sole independent claim, is representative of the claims on appeal, and is reproduced below. 18. An assembly comprising a resilient, homogeneous, polymer-based surface covering element and a dispenser box with an aperture, the resilient polymer-based surface covering element comprising an upper surface, a lower surface, side edges provided between said upper surface and said lower surface, and connection means to join two or more surface covering elements, wherein said surface covering element is a strip provided as a roll to be laid out by unrolling from said roll, the strip comprising two opposed edges extending in an unrolling direction and said connection means comprise a male portion cut, milled, or drilled into one of said opposed edges of said resilient, homogeneous strip and a female portion on the other of said opposed edges of said resilient, homogeneous strip, said male and female portions being mutually complementary in shape; and wherein said roll is packaged in the dispenser box, so that the surface covering element can be laid out by unrolling it from the roll and pulling it through said aperture. Tyson Ko Nunn Plante Dugast REFERENCES us 4,444,313 US 2004/0123538 Al US 2007/0113502 Al US 2007/0193180 Al US 2012/0070617 Al THE REJECTIONS ON APPEAL April 24, 1984 July 1, 2004 May 24, 2007 Aug.23,2007 Mar. 22, 2012 Claims 18, 20-23, and 25-28 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Dugast, Nunn, and Tyson. 2 Appeal2018-004850 Application 14/783,998 Claim 19 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Dugast, Nunn, Tyson, and Ko. Claims 18, 20-23, and 25-27 and are rejected under 35 U.S.C. Â§ 103 as unpatentable over Dugast, Plante, and Tyson. Claim 19 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Dugast, Plante, Tyson, and Ko. ANALYSIS The rejection of claims 18, 20-23, and 25-28 as unpatentable over Dugast, Nunn, and Tyson Appellant presents arguments for all these claims (see App. Br. 5-9) and also presents additional arguments specific to dependent claim 22 (see App. Br. 9-10). We select independent claim 18 for review (see 37 C.F.R. Â§ 4I.37(c)(l)(iv)) and also provide comments regarding claim 22 under this rejection below. Regarding claim 18, the Examiner primarily relies on the teachings of Dugast but (a) relies on the teachings of Nunn as evidence that it is well known to provide complementary "tongue and groove connection means;" (b) relies on the teachings of Tyson for disclosing "a dispenser box;" and, ( c) contends that the limitation directed to the male portion being "cut, milled, or drilled" is a "product-by-process" limitation and thus "has not been given patentable weight." Final Act. 3--4. Appellant contends that the primary reference to Dugast lacks (a) "a dispenser box;" (b) "connection means;" ( c) the male portion being "cut, milled or drilled;" and, ( d) the "male and female portions [being] complementary in shape." App. Br. 6; Reply Br. 6. As evidenced above, the Examiner did not rely on Dugast for these teachings (see supra) and 3 Appeal2018-004850 Application 14/783,998 thus, Appellant's contentions regarding Dugast are not persuasive of Examiner error. Appellant also addresses Nunn stating that this reference "fails to disclose an assembly comprising a dispenser box." App. Br. 6; Reply Br. 6. However, the Examiner relied on Tyson for disclosing the recited "dispenser box," not Nunn. See Final Act. 4. Addressing Tyson, Appellant argues that "Tyson fails to disclose particular connection means of surface covering elements." App. Br. 6; Reply Br. 6. However, the Examiner referenced Nunn for this, not Tyson. See Final Act. 3; see also Ans. 5. Accordingly, Appellant's arguments regarding the Examiner's reliance on Dugast, Nunn, and Tyson for their respective teachings, is not persuasive of Examiner error. Appellant also challenges the Examiner's characterization of the male portion being "cut, milled, or drilled" as a product-by-process limitation. See App. Br. 6-9; Reply Br. 7-9. Appellant submitted a Declaration by Mr. Jonas Bladh, dated October 2, 2017, which rendered an "opinion that producing the connection means by cutting, milling or drilling results in structural properties ... that provide a clear technical advantage." App. Br. 8; see also Declaration ,r 4; Reply Br. 7. Appellant contends that this Declaration is "evidence of record that the identified product-by-process limitation in fact imparts structural characteristics." App. Br. 8. We understand the submitted Declaration is an attempt to comply with the teachings of In re Marosi to the effect that when a product-by-process claim appears to be identical to a prior art product, "the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product." In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983); see also Final Act. 14; Ans. 4-- 4 Appeal2018-004850 Application 14/783,998 6, 8. Thus, according to Appellant, the limitation directed to cutting, milling, or drilling "must be given patentable weight." App. Br. 8; Reply Br. 8. Presuming that this cutting, milling, drilling limitation is to be given patentable weight, Mr. Bladh's Declaration makes clear that the distinctive structural characteristics imparted to the final product by such processes are machining marks. 2 The Examiner notes that Paragraph 46 of Appellant's Specification states that the connection means may be produced by cutting, milling, or drilling, as well as by "moulding."3 Ans. 5. According to the Examiner, this inclusion of molding as a suitable method of manufacture (but not its recitation in claim 18), "suggests that the method of forming such connection means is not critical to the claimed invention." Ans. 5. The Examiner also states that "connection means formed by a molding method .. . would also impart marks." Ans. 7. Appellant does not dispute that molding "would also impart marks," but instead contends that "marks on a molded item is irrelevant" and, more specifically, "it is irrelevant to the question of whether cut, milled, or drilled connection portions are structurally different from molded connection portions." Reply Br. 13. 2 "I have been asked by [Appellant's] patent department to provide my opinion on whether the process steps of cutting, milling or drilling the male and female portions would be expected to impart distinctive structural characteristics on the final product. My answer to this question is yes, as one does expect that male and female portions obtained by cutting, milling or drilling present machining marks (feed mark, revolution marks, tool marks) on their cut, milled or drilled surface(s). These machining marks give the obtained surfaces a characteristic finish." Declaration ,r 4. 3 Nunn teaches products produced "in flat moulds," and also "by casting in long strips." Nunn ,r,r 26, 27; see also id. at ,r,r 46, 75. 5 Appeal2018-004850 Application 14/783,998 Appellant relies on Mr. Bladh's Declaration which states, "when connection means are cut, milled or drilled into edges of a polymer-based surface covering element, better precision may be achieved than molding techniques." Reply Br. 13; Declaration ,r 5 (emphasis added). Hence, both Appellant and Mr. Bladh's Declaration state that the distinguishing feature between molding and the recited processes is one of "better precision," not that molding fails to impart marks as stated by the Examiner. See Ans. 7. Because the Examiner finds that "Nunn teaches the use of molding to form such male and female connection means" (Ans. 5) which Appellant does not dispute, and Appellant fails to identify any particular structural difference between Nunn's molded part and the recited "cut, milled, or drilled" part, we are not apprised of error. Appellant further challenges the Examiner's treatment of Mr. Bladh's Declaration, asserting that "the dismissal of Mr. Bladh's Declaration is improper." Reply Br. 11. On this point, "[ t ]he Examiner thus asserts that the evidence of obviousness based on at least the prior art far outweighs non- obviousness based off of the objective evidence." Ans. 6. In other words, the Examiner undertook a 'balancing' test between the teachings of the prior art and the Declaration, with the teachings of the prior art prevailing. 4 4 For example, the Examiner states that the Declaration "fails to provide evidence that the different process steps as defined within the claim limitations of the product claim would provide unobvious differences than the process steps and the final product of the prior art." Ans. 6. This reference to "unobvious differences" is understood to be a reference to machine markings, which the Declarant contends "would be expected" from "cutting, milling or drilling" (Declaration ,r 4) and which Appellant does not dispute also occurs upon molding (see supra). 6 Appeal2018-004850 Application 14/783,998 We do not find fault with the Examiner's conclusions. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claims 18, 20, 21, 23, and 25-28 as being obvious over Dugast, Nunn, and Tyson. Claim 22 is directed to a middle of a height of an assembly having a tongue and groove. We note that Appellant disputes this claim when rejected under the above combination involving Nunn (see App. Br. 9-10; Reply Br. 16-17), but does not dispute this claim under the combination of Dugast, Plante, and Tyson discussed below (see App. Br. 11-13). 5 Because we affirm the Examiner's rejection based on the combination of Dugast, Plante, and Tyson, as discussed below, we do not reach the rejection of this claim based on the combination involving Nunn. The rejection of claims 18, 20-23, and 25-27 as unpatentable over Dugast, Plante, and Tyson Regarding this rejection, Appellant contends, "[a]s discussed above, Dugast and Tyson do not disclose, teach, or suggest that the connection means comprise a male portion that is cut, milled or drilled into the long edge of the resilient, homogeneous strip." However, similar to the above, the Examiner did not rely on Dugast and/or Tyson for this teaching. See Final Act. 9-10. We further note Plante's disclosure that "planks may be cut so that they have either the tongue and groove profile of typical wood floors or an innovative 'groove on all sides' profile." Plante ,r 19; see also Final Act. 11 (referencing Plante Fig. 5B). Appellant argues that "Plante is not analogous art" and that "Plante pertains to a very specific field and addresses 5 The Examiner relies on Figure 5B of Plante as teaching this limitation. See Final Act. 11. 7 Appeal2018-004850 Application 14/783,998 problems arising in this very specific field, to wit, wood expansion and contraction in wooden floorings." App. Br. 12; see also Reply Br. 19. Regardless of the particular field of endeavor, we are persuaded that Plante is at least reasonably pertinent to a problem addressed by Appellant's disclosure. The Examiner relied on Plante for teaching that "[i]t is highly well known in the art, as evidenced by Plante, to provide tongue and groove connection means." Final Act. 9. The Examiner explains that "Plante was provided to show the obviousness in forming connection means." Ans. 12. Appellant is also concerned with forming connection means. See Spec. ,r 14 ("the connection means are provided on one or more edges of the surface covering element"). Appellant does not explain why the Examiner's reliance on Plante for specifically teaching tongue and groove connecting means is not "reasonably pertinent to the problem of attaching surface coverings to one another using connection means" as stated by the Examiner. Ans. 13. Accordingly, we are not persuaded Plante is non- analogous art or that the Examiner erred in relying on Plante ( as well as Dugast and Tyson) in rejecting claims 18, 20-23, and 25-27. The rejection of claim 19 as unpatentable over (a) Dugast, Nunn, Tyson, and Ko, and also (b) Dugast, Plante, Tyson, and Ko In each instance, Appellant contends, "the addition of Ko does not rectify the deficiencies of the base combination" discussed above. App. Br. 11, 13; Reply Br. 17, 20. Appellant's contentions are not persuasive for reasons already expressed. We sustain the Examiner's rejection of claim 19. 8 Appeal2018-004850 Application 14/783,998 DECISION The Examiner's rejection of claims 18, 20, 21, 23, and 25-28 as unpatentable over Dugast, Nunn, and Tyson is affirmed. The Examiner's rejection of claims 18, 20-23, and 25-27 as unpatentable over Dugast, Plante, and Tyson is affirmed. The Examiner's rejections of claim 19 as unpatentable over (a) Dugast, Nunn, Tyson, and Ko, and (b) Dugast, Plante, Tyson, and Ko is affirmed. No time period for taking any subsequent action in connection with this appeal (see 37 C.F.R. Â§ 1.136(a)(l)) may be extended (see 37 C.F.R. Â§ 1.136(a)(l )(iv)). AFFIRMED 9