BOA-FRANCDownload PDFPatent Trials and Appeals BoardDec 24, 20212021000050 (P.T.A.B. Dec. 24, 2021) 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. 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. Appeal 2021-000050 Application 13/966,396 2 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. Appeal 2021-000050 Application 13/966,396 3 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 Appeal 2021-000050 Application 13/966,396 4 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 Appeal 2021-000050 Application 13/966,396 5 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. Appeal 2021-000050 Application 13/966,396 6 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 Copy with citationCopy as parenthetical citation