Ex Parte Sjoberg

Patent Trial and Appeal BoardNov 30, 2012

11579153 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/579,153 10/31/2006 Ake Sjoberg 8688.052.US0000 1413 74217 7590 12/03/2012 NOVAK, DRUCE + QUIGG L.L.P. - PERGO 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER GOFF II, JOHN L ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 12/03/2012 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 AKE SJOBERG __________ Appeal 2011-008404 Application 11/579,153 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008404 Application 11/579,153 2 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1, 5, 6, and 20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on November 28, 2012. We AFFIRM. Appellant’s invention is said to be directed to a process of manufacturing decorative boards with a surface structure on an upper surface (Spec. 1). Claim 1 is illustrative: 1. A process for the manufacturing of decorative boards with a surface structure, the decorative boards comprising a base layer, a decor layer and a wear layer, the wear layer comprising a thermosetting resin, the process comprising: laminating the base layer, the decor layer and the wear layer together under increased temperature and pressure, and forming surface structures of differing heights, wherein the difference in height between a highest and a lowest point is above 0.05mm, to form a laminate; cutting the laminate to provide a plurality of boards; forming joining elements on edges of the boards; treating portions of an uppermost surface of the wear layer of the laminate in an area close to the edges to alter the surface properties so that two boards, when assembled together along their edges, will match. Appellant appeals the following rejection: Claims 1, 5, 6, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Endrizzi (US 4,284,453 issued Aug. 18, 1981) or Michaelson (US 3,311,520 issued Mar. 28, 1967) in view of Miller (US 2002/0100231 A1 published Aug. 1, 2002), Tychsen Appeal 2011-008404 Application 11/579,153 3 (US 2001/0047702 A1 published Dec. 6, 2001), and Bennett (US 2003/0145550 A1 published Aug. 7, 2003)1. Appellant argues the subject matter common to claim 1 only (App. Br. 3- 4). ISSUE Did the Examiner reversibly err in determining that Endrizzi or Michaelson would have suggested “treating portions of an uppermost surface of the wear layer of the laminate in an area close to the edges to alter the surface properties so that two boards, when assembled together along their edges will match” as recited in claim 1? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Appellant argues that none of the applied references teach the “treating” step of claim 1 (App. Br. 3). Specifically, Appellant contends that there is no teaching in any of the references to alter the surface properties of the wear layer in an area “close to the edges” or that the wear layer of any two boards when assembled will “match” as required by claim 1 (id. at 4). Appellant argues that Endrizzi’s and Michaelson’s teachings to rub the wear layer neither alters surface properties of the board nor makes adjacent boards match. Id. Appellant contends that the Examiner’s stated rejection is based on speculation. Id. 1 We confine our analysis and discussion to the Endrizzi and Michaelson references as Appellant does not dispute the combination of Miller, Tychsen or Bennett with Endrizzi or Michaelson (App. Br. 3-5). Appeal 2011-008404 Application 11/579,153 4 The Examiner finds that Endrizzi or Michaelson teaches rubbing the wear layer to affect color or gloss, respectively (Ans. 4). The Examiner finds that the Specification does not expressly define the phrase “close to the edges” or “match” (id. at 9). The Examiner construes “close” as “within a short distance” and “match” as “a person or thing equal or similar to another.” Id. Appellant does not challenge the Examiner’s claim construction (App. Br. 3-5). The Examiner finds that Endrizzi’s or Michaelson’s teaching to rub the surface of the wear layer surface is without limitation and would have included portions only a short distance from the edges (Ans. 6, 9). The Examiner further finds that the teachings of the applied prior art would have suggested rubbing so that each of the boards will have a color or a glossiness that is equal or similar to each other (id. at 9-10). The preponderance of the evidence favors the Examiner’s conclusion of obviousness. The Examiner properly finds that the claims require that the wear layer surface be treated close to (i.e., at a short distance from) the edge. As Appellant has not defined in the Specification what is meant by “close to” the edge, the Examiner reasonably finds that Endrizzi’s or Michaelson’s rubbing of the surface would have suggested the claimed requirement. The claim language “area close to the edges” is relative terminology that does not specify specific distances that are required to meet the claimed invention. Moreover, the Examiner finds that Endrizzi and Michaelson alter surface properties across the uppermost surface of the laminate without limitation (id. at 6). In other words, the Examiner finds that Michaelson or Endrizzi would have suggested treating the entire upper surface of the Appeal 2011-008404 Application 11/579,153 5 laminate to affect surface properties, which would have included areas close to the edges. (See, e.g., Endrizzi, col. 2, ll. 29-36; Michaelson, col. 5, ll. 15- 19, Ans. 10). While Appellant contends that there is no explicit teaching to treat the wear layers at areas close to the edges, it must also be considered whether Endrizzi and Michaelson would have suggested to one of ordinary skill in the art treatment at such areas close to the edge as the Examiner finds. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which skilled in the art would reasonably be expected to draw therefrom.”). In light of the Examiner’s reasonable findings regarding Endrizzi’s and Michaelson’s teachings, we agree that Endrizzi and Michaelson would have suggested such a treatment location. Appellant’s argument that Endrizzi or Michaelson does not teach surface treatment to affect a surface property is without merit as Endrizzi teaches surface rubbing to affect color and Michaelson teaches surface rubbing to affect glossiness as found by the Examiner (Ans. 4). Appellant’s argument that Endrizzi or Michaelson does not teach rubbing to make adjacent boards match is unpersuasive. As noted supra, the Examiner properly finds “match” is not defined by Appellant in the Specification. The Examiner defines “match” as “a person or thing equal or similar to another” (id. at 9). As such, the broadest reasonable interpretation of “match” consistent with the Specification includes rubbing the wear layer of the board so that adjacent boards are equal or similar to one another in some surface property as found by the Examiner (id. at 9-10). Appeal 2011-008404 Application 11/579,153 6 With this proper and unchallenged claim construction is mind, the Examiner reasonably finds that boards subjected to either Endrizzi’s or Michaelson’s surface rubbing to affect color or gloss would have resulted in boards that when assembled along their edges will have similar surface properties (i.e., matched boards). Boards subjected to the same surface rubbing to affect either color (i.e., Endrizzi) or gloss (i.e., Michaelson) would have reasonably been expected to have some level of similar surface property and thus “match” at some degree. On this record and for the above reasons, we affirm the Examiner’s § 103 rejection. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED bar