BOA-FRANC

Patent Trials and Appeals Board

Dec 24, 2021

2021000050 (P.T.A.B. Dec. 24, 2021)

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.
13/966,396 08/14/2013 François Roy 10003196-3US 8175
20988 7590 12/24/2021
NORTON ROSE FULBRIGHT CANADA LLP
1, PLACE VILLE MARIE
SUITE 2500
MONTREAL, QUEBEC H3B 1R1
CANADA
EXAMINER
FIGG, LAURA B
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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):
NRFCUSPTOMAIL@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANÇOIS ROY, JONATHAN CLOUTIER, and
VINCENT TANGUAY
____________

Appeal 2021-000050
Application 13/966,396
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and JENNIFER
R. GUPTA, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 6–8, and 43. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Boa-Franc as the real party in interest. Appeal Br. 2.
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Application 13/966,396

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CLAIMED SUBJECT MATTER
The invention relates to flexible wood strip sheets. Spec. ¶ 1. Claim
2 reads as follows:
2. A flexible sheet of wood strips, said wood strips being
elongated wood strips of rectangular cross-section held together
in a side-by-side aligned spaced relationship by thermofusable
glue droplets, the thermofusable glue droplets being spaced
longitudinally apart from one another along flat, opposed side
edges of said wood strips, all having the same width between
said opposed side edges and collectively interconnecting said
wood strips to one another between said opposed side edges in
a manner providing a constant spacing between the wood strips,
the thermofusable glue droplets all having the same width
between said opposed side edges collectively forming a flexible
joint providing flexibility to said flexible sheet of wood strips,
the thermofusable glue droplets providing a mechanical
retention force to retain the wood strips in an interconnected
spaced-apart relationship.
Appeal Br. 22 (Claims Appendix).
Claim 1 recites an engineered floor board which includes all the
features recited in claim 2. Each remaining claim on appeal depends from
claim 2.
REJECTIONS
I. Claims 1, 2, and 4 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marino, Scoville, Hudson, and Gori.
II. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Marino, Scoville, Hudson, Gori, and Stone.
III. Claim 43 stands rejected under 35 U.S.C. § 103 as unpatentable over
Marino, Scoville, Hudson, Gori, and Padmanabhan.
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Application 13/966,396

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IV. Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as unpatentable
over Marino, Scoville, Hudson, Gori, Padmanabhan, and Beckerman.

REFERENCES
Name Reference Date
Marino US 3,365,850 Jan. 30, 1968
Beckerman et al. US 4,801,483 Jan. 31, 1989
Hudson US 5,968,625 Oct. 19, 1999
Scoville et al. US 2008,0047212 A1 Feb. 28, 2008
Stone US 2008/0289277 A1 Nov. 27, 2008
Padmanabhan US 2011/0179740 A1 July 28, 2011
Gori About the Wood
http://www.gori.com/about-
wood/project-guide
2021

OPINION
Each claim on appeal requires, inter alia, “wood strips . . . held
together in a side-by-side aligned spaced relationship by thermofusable glue
droplets” and “the thermofusable glue droplets providing a mechanical
retention force to retain the wood strips in an interconnected spaced-apart
relationship.” (Emphasis added).
The Examiner finds Marino discloses a wood flooring comprising
adjacently positioned wood strips (so-called fillets) permanently bonded to
one another by a flexible adhesive, but does not teach the adhesive being
provided in discrete droplets. Final Act. 4 (citing Marino 3:10–18). The
Examiner finds Scoville teaches providing edges of wood flooring panels
with discrete deformable beads formed from thermoplastic adhesive to
establish a defined gap between adjacent panels. Id. (citing Scoville ¶¶ 70–
73). The Examiner determines it would have been obvious to one of
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Application 13/966,396

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ordinary skill in the art to substitute Marino’s flexible adhesive with
Scoville’s discrete beads because Scoville’s beads “perform the same
function.” Id.
Appellant argues Scoville’s beads would not perform the same
function as Marino’s adhesive because Scoville’s beads do not adhere
adjacent panels. Appeal Br. 12 (“[T]he spacers in Scoville are used for
spacing panels relative to one another, not to adhere panels to one another.”).
Appellant’s argument has merit. While Scoville teaches use of an
adhesive material to form the disclosed spacer beads, Scoville does not teach
use of such beads to adhere adjacent panels. Scoville’s purpose is different.
Scoville concerns establishing a predetermined gap between longitudinal
edges of adjacent wood panels. Scoville Abstract, ¶ 10. According to
Scoville, self-spacing panels include integral spacers provided along a
panel’s longitudinal edge. Id. ¶ 12. As one example, Scoville teaches
providing “a separate compressible and/or deformable spacer 50 attached to
at least two edges 18 of the panel.” Id. ¶ 69. Scoville’s spacer “extends
from the edge a pre-determined distance whereby upon placing one self-
spacing panel 10 adjacent to a second self-spacing panel 10’ a spacer 50 of
the first panel will abut an adjacent longitudinal edge 18’ of a second panel.”
Id. ¶ 70 (emphasis added). Scoville teaches the disclosed spacer may
comprise a flexible adhesive material, such as a continuous or discrete bead,
such that adjacent panels are gapped a predetermined distance and the
flexible spacer is able to deform or compress upon expansion of the panels.
Id. ¶¶ 69–73. In that manner, Scoville teaches using adhesive material to
form flexible spacers positioned between adjacent panels, not to adhere
panel edges. As Scoville states it, “[i]t is believed that adhesives have not
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been used before on panels for their deformable properties as opposed to
their adhesive properties.” Id. ¶ 75 (emphasis added).
In light of the foregoing disclosures in Scoville, Appellant’s argument
is persuasive; Scoville’s spacer beads would not perform the same function
as Marino’s adhesive because Scoville’s spacer beads do not adhere adjacent
panels. Marino’s adhesive permanently bonds adjacent wood panels,
whereas Scoville’s spacer beads are not shown to provide any bonding at all.
As such, the Examiner’s finding that one of ordinary skill in the art would
have had a reason to replace Marino’s adhesive with Scoville’s spacer beads
to achieve the same function is not supported by the evidence presented.
Moreover, even if one were to make such a substitution, the Examiner does
not identify evidence that Scoville’s spacer beads would achieve the recited
property of “providing a mechanical retention force” such that adjacent
wood strips are “held together.”
For the foregoing reasons, Appellant’s arguments persuade us of
reversible error in the Examiner’s obviousness determination based on the
combined teachings of Marino and Scoville. The Examiner does not rely on
any of the other cited references in a manner that overcomes that deficiency.
Accordingly, the Examiner’s rejections are not sustained.
CONCLUSION
The Examiner’s decision rejecting claims 1, 2, 4, 6–8, and 43 is
reversed.
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Application 13/966,396

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1, 2, 4 103 Marino, Scoville,
Hudson, and Gori
1, 2, 4
8 103 Marino, Scoville,
Hudson, and Gori,
Stone
8
43 103 Marino, Scoville,
Hudson, and Gori,
Padmanabhan
43
6, 7 103 Marino, Scoville,
Hudson, and Gori,
Padmanabhan,
Beckerman
6, 7
Overall
Outcome
1, 2, 4, 6–8,
43

REVERSED