Ex Parte Boo

Patent Trial and Appeal Board

Sep 21, 2018

14224628 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/224,628 03/25/2014
21839 7590 09/25/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Christian Boo
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.
1033462-000348 7108
EXAMINER
W ALRAED-SULLIV AN, KYLE
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN B00 1
Appeal2017-000341
Application 14/224,628
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-11, 15, and 24--26. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Valinge Innovation AB, which the Appel Brief
identifies as the real party in interest. Appeal Br. 1.
2 An oral hearing was conducted on September 4, 2018.
Appeal2017-000341
Application 14/224,628
CLAIMED SUBJECT MATTER
The claims are directed to floorboards provided with a mechanical
locking system. Claim 1, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
1. Floorboards provided with a mechanical locking system
comprising a locking strip protruding from a first edge of a first
floorboard, wherein the locking strip is provided with a locking
element configured to cooperate with a locking groove at a lower
side of a second edge of a second floorboard for locking the first
edge and the second edge in a horizontal direction, the first edge
and the second edge are configured to be assembled by a vertical
downward motion of the second edge towards the first edge,
wherein said second edge is provided with a calibrating groove
adjacent said locking groove.
Appeal Br. (Claims App.).
PRIOR ART
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pervan US 2009/0133353 Al May 28, 2009
REJECTI0N3
Claims 1-11, 15, and 24--26 are rejected under 35 U.S.C. § I02(al) as
anticipated by Pervan.
3 The Final Office Action included a rejection of claim 1 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 2. However, on December 10, 2015,
Appellant filed an amendment to claim 1 to address this rejection, and an
Advisory Action, dated January 7, 2016, indicates that this amendment was
entered. Advisory Act. 1. Although the Answer does not explicitly
withdraw this rejection, the rejection for indefiniteness is not repeated in the
Answer.
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Appeal2017-000341
Application 14/224,628
OPINION
The Examiner finds that Pervan discloses all of the elements required
by claim 1, and, specifically, that wedge 40 and strip 6 of Pervan correspond
to the recited first and second edges, respectively. Final Act. 3.
Appellant contends that, in Pervan, the edge with the calibrating
groove moves upward during installation, whereas claim 1 requires that the
edge with the calibrating groove move vertically downward. See Appeal
Br. 4---6.
In response, the Examiner states, "Pervan's panels may be assembled
in a downward motion, since one could flip the assembly around and
place 4a downward on 4b then flip the assembly back over." Ans. 3.
In reply, Appellant asserts that there is no evidence that the panels in
Pervan are configured to be assembled in an upside down state, and that
doing so would create a disadvantage inasmuch as, if the panels were
assembled this way, it would be more difficult to tell if the two panels were
properly connected. Reply Br. 3--4.
We agree with Appellant that Pervan does not disclose panels in
which a first edge and a second edge are configured to be assembled by a
vertical downward motion of the second edge towards the first edge in
combination with the remaining limitations in claim 1. Appellant's
Specification explains that, due to manufacturing tolerances, the thickness of
floorboards may vary from board to board. See Spec. 1-2. When the
floorboards are placed on the floor without underlying foam, the difference
in floorboard thickness may cause misalignment between a tongue on a first
floorboard and a corresponding tongue groove on a second floorboard. Id.
As a result, it may be difficult to lock multiple floorboards together. Id. As
minimizing this difficulty is the problem addressed by Appellant's invention
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Appeal2017-000341
Application 14/224,628
(id. at 2), a person of ordinary skill in the art would understand that
assembly of the floor boards is to be performed with the boards in their
upright state such that the term "configured to be assembled by a vertical
downward motion" in claim 1 refers to the direction that is vertically
downward when the boards are arranged for assembly, i.e., when the floor
boards are oriented in their upright state. Thus, we disagree with the
Examiner that claim 1 reads on the floorboards 4a and 4b disclosed by
Pervan, which require the edge with the calibrating groove to move
vertically upward during installation.
The Examiner also finds that in Pervan, lower part 6a of strip 6
corresponds to the calibrating groove recited in claim 1, and upper guiding
surface 15 corresponds to the locking groove recited in claim 1. Final
Act. 3. The Examiner additionally finds that lower part 6a is adjacent to
guiding surface 15. Id.
Appellant contends that lower part 6a is not adjacent to guiding
surface 15 because the components are located on opposite sides of strip 6.
Appeal Br. 10-11. Appellant has the better position on this point. A person
of ordinary skill in the art would not consider lower part 6a and guiding
surface 15, which are on opposite sides of one of the major structures
depicted in the connection of floorboards 4a and 4b of Pervan (strip 6), to be
adjacent each other. In other words, under the broadest reasonable
interpretation of claim 1 in light of Appellant's Specification, lower part 6a
and guiding surface 15 are separated by too much structure to be considered
to be adjacent each other.
We reverse the rejection of claims 1-11, 15, and 24--26 as anticipated
by Pervan.
DECISION
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Appeal2017-000341
Application 14/224,628
The Examiner's decision to reject claims 1-11, 15, and 24--26 is
reversed.
REVERSED
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