Ex Parte ThiersDownload PDFPatent Trial and Appeal BoardOct 27, 201711400190 (P.T.A.B. Oct. 27, 2017) Copy Citation 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. 11/400,190 04/10/2006 Bernard Paul Joseph Thiers 19791.55.1.1.3 3056 22913 7590 Workman Nydegger 60 East South Temple Suite 1000 Salt Lake City, UT 84111 EXAMINER LAUX, JESSICA L ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 10/31/2017 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): Docketing @ wnlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNARD PAUL JOSEPH THIERS Appeal 2015-005399 Application 11/400,190 Technology Center 3600 Before LINDA E. HORNER, JAMES P. CALVE, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-005399 Application 11/400,190 STATEMENT OF THE CASE1 Bernard Paul Joseph Thiers (Appellant) appeals under 35 U.S.C. §134 from the Examiner’s decision to reject claims 1—3 and 5—7 under 35 U.S.C. § 103(a) as unpatentable over Moriau (US 6,006,486, issued Dec, 28, 1999), Mehta (US 5,141,799, issued Aug. 25, 1992), Eby (US 5,961,903, issued Oct. 5, 1999), and Piacente (US 5,858,160, issued Jan. 12, 1999). Claims 4, 8, and 9 have been cancelled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “relates to a floor covering formed of laminated panels.” Spec. l,Fig. 13.2 Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A laminate floor covering panel having a perimeter defining first and second pairs of opposite edges; said panel having a top side and a bottom side, and comprising a base plate and a top layer; said base plate being formed of a material selected from the group consisting of MDF and HDF; said base plate having an upper side and a lower side, the first and second pairs of opposite edges located 1 The subject application was previously before the Patent Trial and Appeal Board in Appeal No. 2010-008197. See Decision dated February 1, 2013. In that Decision, the adverse decision of the Examiner was AFFIRMED. Following that Decision, Appellant reopened prosecution and further amended the claims. 2 Appellant’s Specification does not provide line or paragraph numbering, and, accordingly, reference will only be made to the page number. 2 Appeal 2015-005399 Application 11/400,190 adjacent to and surrounding the upper side of the base plate; said panel at least at said first pair of opposite edges being provided with coupling parts for mutually coupling a plurality of such panels to each other in a common plane to form a floor covering, wherein these coupling parts in coupled condition of two of such panels provide for an interlocking in a direction perpendicular to the plane of the panels as well as in a direction perpendicular to the edges concerned and parallel to the plane of the panels; said top layer comprising a generally horizontally planar decorative layer extending over the entirety of the upper side of the base plate; said decorative layer comprising a printed pattern; said printed pattern representing a single wood pattern extending over the entirety of the upper side of the base plate; said top layer defining a transparent or translucent synthetic layer having first and second generally planar surfaces, the second planar surface of the synthetic layer continuously covering said decorative layer, said transparent or translucent synthetic layer comprises more than one transparent layer of paper, synthetic resin and wear and tear resistant substances, wherein said synthetic resin hardens in a heated press; said synthetic layer defining said top side of the panel; wherein said synthetic layer comprises impressions extending from the first planar surface into a thickness of the synthetic layer short of the second planar surface to such a depth that the impressions are situated above the printed pattern, said impressions arranged to simulate textural and visual unevennesses which substantially follow said printed pattern to form an embossment which is in register with said printed pattern; wherein the wood pattern depicts at least two wood nerves and a zone therebetween; wherein the impressions are mainly situated in said synthetic layer above said wood 3 Appeal 2015-005399 Application 11/400,190 nerves, while the synthetic layer above said zone therebetween is substantially flat. ANALYSIS Claim Interpretation Independent claim 1 is directed to a laminate floor covering panel having a top layer defining a transparent or translucent synthetic layer, wherein “[the] transparent or translucent synthetic layer comprises more than one transparent layer of paper, synthetic resin and wear and tear resistant substances.” Appeal Br. 22—23, Claims App. We construe the relevant claim language at the outset to serve as a basis for our review of the rejection. Appellant’s Specification describes that The aforementioned layer of synthetic material, which, according to the invention, is situated on top of the decorative layer, can be composed in any manner. By “transparent layer of synthetic material”, it is meant that this layer comprises synthetic material, as well as, in applied condition, is sufficiently transparent for perceiving the printed wood pattern. This layer of synthetic material itself may comprise other materials than synthetic material, as well as be composed of several sublayers. Preferably, this transparent layer of synthetic material, as usual with known laminated parquet panels, consists of a synthetic resin or one or more transparent or translucent material layers soaked in synthetic resin, for example, very thin transparent layers of paper. In the layer of synthetic material, substances may be present by which the wear and tear resistance of the surface is enhanced. Spec. 3 (emphasis added). 4 Appeal 2015-005399 Application 11/400,190 Under the broadest reasonable interpretation consistent with the Specification, we interpret the phrase “[the] transparent or translucent synthetic layer comprises more than one transparent layer of paper, synthetic resin and wear and tear resistant substances” to mean that the transparent or translucent synthetic layer has more than one transparent layer of paper including synthetic resin and wear and tear resistant substances. Obviousness over Moriau, Mehta, Eby, and Piacente Regarding claim 1, the Examiner finds that Moriau discloses “a top layer (55 and 56,57),” the top layer including “a transparent or translucent synthetic layer (56) having first and second planar surfaces (56) continuously covering the decorative layer (55); [the] transparent or translucent synthetic layer [56] comprises more than one transparent layer, synthetic resin.” Final Act. 3^4. With regard to Moriau’s top layer 56, Appellant contends that Moriau “makes no mention of the protective top layer 56 ‘comprising more than one transparent layer of paper, synthetic resin and wear and tear resistant substances.’” Br. 13. In particular, Appellant contends that Moriau specifies at column 8, line 65 through column 9, line 9, that “the protective top layer 56 ‘consists of a layer saturated with resin, for example, melamine resin, which in the final product is transparent.’” Id. at 14. Moriau discloses that “it is preferred that the laminated flooring is provided with . . . a protective top layer 56” and “[t]he protective top layer 56 preferably also consists of a layer saturated with resin, for example, melamine resin, which in the final product is transparent.” Moriau 8:65—67, 9:4—6 (emphases added). 5 Appeal 2015-005399 Application 11/400,190 Given that Moriau discloses that protective top layer 56 “refers to the layer in singularity of ‘a’,” we agree with Appellant that a skilled artisan “would only understand [Moriau] to use a single layer saturated with resin rather than a synthetic layer including more than one transparent layer of paper, synthetic resin and wear and tear resistant substances[, as] required by claim 1.” Br. 14. We further agree with Appellant that Moriau “makes no mention of the protective top layer [56] ‘comprising more than one transparent layer,’ as required by claim 1Id. Moreover, we note that the Examiner fails to establish how Moriau’s disclosure of “at least layer 56 [being] a layer saturated in resin” would “broadly [be] considered to be more than one layer.” Ans. 2. In the Final Rejection, the Examiner appears to take an alternate position by stating that “Moriau clearly discloses more than one layer transparent layer of paper, synthetic resin (where there are at least layers 56,57, and where it is noted at Col. 8, line 63 that more than one layer is/can be included.[)]” Final Act. 2. In this case, Appellant correctly points out that Moriau’s “decorative layer 55 is formed between the intermediate layer 57 and the protective top layer 56.” Br. 13 (emphasis added); see also Moriau 8:59-67, 9:7—9, Fig. 8. We agree with Appellant that Moriau’s “intermediate layer 57 is not part of protective top layer 56” and Moriau “makes no mention at all of intermediate layer 57 being a transparent layer.” Br. 14. As such, we further agree with Appellant that Moriau’s “intermediate layer 57 and protective top layer 56 together are [not] analogous to ‘more than one transparent layer of paper, synthetic resin and wear and tear resistant substances’ of the claimed top layer.” Id. 6 Appeal 2015-005399 Application 11/400,190 Regarding Moriau disclosing at column 8, line 63, “that more than one layer is/can be included,” Appellant correctly notes that “[i]n the sentences immediately following the Examiner’s cited portion of Moriau, Moriau expressly describes what is meant by ‘one or more layers of material’ provided on the upper side of core 8.” Br. 14 (italics omitted); see also Final Act. 2. In particular, Appellant correctly points out that Moriau “describes intermediate layer 57, decorative layer 55, and protective top layer 56 provided on the upper side of core 8” as the “‘one or more layers of material’ provided on the upper side of core 8.” Br. 14; see also Moriau 8:59-9:9, Fig. 8. Based on the foregoing, the Examiner fails to provide sufficient evidence or technical reasoning to support the finding that “one of ordinary skill in the art would certainly understand from Moriau to provide more than one synthetic layer in the top layer.” Final Act. 2—3. In the Answer, the Examiner states that Mehta discloses “more than one transparent layer having a resin and wear and tear resistant layers (as noted at pages 4-5 of the [final] action).” Ans. 2; see also Final Act. 4—5.3 As an initial matter, Appellant correctly notes that “the decorative layer and the synthetic layer are different elements” in claim 1 of the subject invention. Br. 15. Mehta discloses that “it is an object of the present invention to produce an overlay sheet and/or multiple layer decor paper with low scratch and abrasion-resistant characteristics.” Mehta 3:6—9 (emphasis added); see also id. at 2:43—68; Br. 15. 3 The Examiner relies on the combined teachings of Eby and Piacente for disclosing “the embossed pattern [being in] register with the printed pattern.” See Final Act. 5—6. 7 Appeal 2015-005399 Application 11/400,190 In view of Mehta’s disclosure, we agree with Appellant that Mehta “does not impart the understanding to the skilled person of the multiple layer synthetic layer of claim 1; rather Mehta discloses either an overlay sheet or a multiple layer decor paper.” Br. 15 (italics omitted); see also Mehta 3:6—9. Indeed, even where the Examiner finds that Mehta discloses more than one layer, the Examiner finds that there is only one paper layer and another layer of wear and tear resistant substances. See Ans. 2 (citing Mehta, col. 4). Based on the foregoing reasons, the Examiner fails to provide sufficient evidence or technical reasoning to establish that the combined teachings of Moriau and Mehta disclose a laminate floor covering panel having a top layer defining a transparent or translucent synthetic layer, wherein the transparent or translucent synthetic layer comprises more than one transparent layer of paper, including synthetic resin and wear and tear resistant substances, as called for in claim 1. See Appeal Br. 22—23, Claims App. Accordingly, we do not sustain the Examiner’s rejection of claims 1—3 and 5—7 as unpatentable over Moriau, Mehta, Eby, and Piacente DECISION We REVERSE the Examiner’s decision to reject claims 1—3 and 5—7 as unpatentable over Moriau, Mehta, Eby, and Piacente. REVERSED 8 Copy with citationCopy as parenthetical citation