Ex Parte Datema

Patent Trial and Appeal Board

Jan 29, 2018

13148687 (P.T.A.B. Jan. 29, 2018)

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.
13/148,687 12/08/2011 Cornelis Pauwel Datema 2009P00085WOUS 4135
24737 7590 01/31/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue EVERETT, CHRISTOPHER E
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2121
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CORNELIS PAUWEL DATEMA
Appeal 2016-000424
Application 13/148,6871
Technology Center 2100
Before KRISTEN L. DROESCH, JOHN A. EVANS, and
JOHN P. PINKERTON, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1—22. App. Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 The Appeal Brief identifies Koninkhjke Philips Electronics N. V. as the
real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 13, 2015, “App. Br.”), the Reply Brief
(filed October 7, 2015, “Reply Br.”), the Examiner’s Answer (mailed
August 7, 2015, “Ans.”), the Final Action (mailed October 14, 2014, “Final
Act.”), and the Specification (filed August 10, 2011, “Spec.”) for their
respective details.
Appeal 2016-000424
Application 13/148,687
STATEMENT OF THE CASE
The Invention
The claims relate to a floor construction comprising a resilient layer.
See Abstract.
Claims 1,15, and 16 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A floor construction, comprising:
a resilient layer with a variable resilience that has a grade
and an adapting surface; and
means for varying the grade of resilience.
References and Rejections
Streit US 5,542,221 Aug 6, 1996
Fiedrich US 6,182,903 B1 Feb. 6, 2001
Harinishi US 2007/0173379 A1 July 26, 2007
Podgomy US 2008/0281472 A1 Nov. 13, 2008
Shi US 8,531,646 B2 Filed Sep. 11,2008
The claims stand rejected as follows:
1. Claims 1—3, 6—9, 14, 16, 21, and 22 stand rejected under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Harinishi. Final Act. 6—17
2. Claims 4, 5, and 13 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Harinishi, McKinney, and Fiedrich. Final
Act. 18-23.
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Appeal 2016-000424
Application 13/148,687
3. Claim 10 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Harinishi and Fiedrich. Final Act. 23—24.
4. Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Harinishi and Streit. Final Act. 25—26.
5. Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Harinishi and Shi. Final Act. 26—28.
6. Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Harinishi and Podgomy. Final Act. 29-33.
7. Claims 17 and 18 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Harinishi and McKiney. Final Act. 33—35.
8. Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Harinishi, McKiney, and Fiedrich. Final Act. 35—38.
ANALYSIS
We have reviewed the rejection of Claims 1—22 in light of Appellant’s
arguments that the Examiner erred. We consider Appellant’s arguments
seriatim, as they are presented in the Appeal Brief, pages 6—27.
Claims 1-3,6-9,14,16,21, and 22: Anticipation by Harinishi.
The present appeal turns on whether the “gymnastic mat,” as
disclosed by Harinishi fairly anticipates a “floor construction” as claimed.
We find that it does not.
The Examiner finds Harinishi discloses the claimed “floor
construction.” Final Act. 6 (‘[i]n some preferred embodiments, an impact
absorbing gymnastic mat”) (citing Harinishi, Abstr.).
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Appeal 2016-000424
Application 13/148,687
Appellant contends the Harinishi gymnastic mat is not involved in
constructing a floor, but merely lies atop a floor. App. Br. 6. Appellant
argues a person of ordinary skill in the arts (construction arts) would not
recognize a gymnastic mat as a floor construction in light of the
Specification. Id. at 7.
The Examiner finds the broadest reasonable interpretation of floor
construction includes “any component that is . . . placed of [sic, on] the
floor.” Final Act. 3. During prosecution, the Examiner consistently argues
“Harinishi et al. describes a floor construction and other limitations as
described in the response to arguments on pages 2-3 of the office action
dated 10/14/2014 and in the rejection of claim 1 on pages 6-7 of the office
action dated 10/14/2014.” Advisory Action mailed December 24, 2014.
However, in response to Appellant’s Brief, the Examiner now
declines to find that Harinishi discloses the claimed floor covering, but
rather the Examiner now finds “the recitation ‘floor construction’ has not
been given patentable weight because the recitation occurs in the preamble.”
Ans. 35. The Examiner finds “the recitation ‘floor construction’ provides no
antecedent basis for any terminology in the body of the claims and the
structure, a resilient layer and means for varying the grade of resilience,
stands alone without reference to the recitation ‘floor construction.’” Id.
Appellant contends that “it is well-known that any phraseology in the
preamble that limits the structure of the article or apparatus must be given
patentable weight.” Reply Br. 5 (citing In re Stencel, 4 USPQ2nd 1071
(Fed. Cir. 1987). Appellant argues “in the present context, the framework
against which patentability is measured is not all layers (e.g., of chocolate
cake) but a layer of a floor construction.” Reply Br. 6.
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Appeal 2016-000424
Application 13/148,687
We agree with Appellant. In general, the preamble limits a claim if it
recites essential structure or is otherwise “necessary to give life, meaning,
and vitality” to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150,
152 (CCPA 1951)). The present preamble “give[s] life, meaning, and
vitality” to the claims. Appellant discloses “floor constructions are usually
regarded as being a sort of subitem only playing a secondary role compared
to other building components such as, for example, the facade of a building.”
Spec. 1 (emphasis added). Here, Appellant has clearly defined a floor
construction to be a component of a building. Where a patentee uses the
claim preamble to recite structural limitations of his claimed invention, the
PTO and courts give effect to that usage. Bell Communications Research,
Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995).
We agree with Appellant that the preamble “recite[s] structural limitations of
his claimed invention.” A person of ordinary skill in the building trades
would not consult chocolate layer cakes or gymnastic mats to find a “layer”
suitable for a component of a “floor construction.3
In view of the foregoing, we decline to sustain the anticipation
rejection of independent Claims 1 and 16 (each of which recite “a floor
construction”), nor of dependent Claims 2, 3, 6—9, 14, 16, 21, and 22,
3 Appellant also refers to a plurality of U.S. patents that use the term floor
construction in the sense Appellant argues would be understood by a person
of ordinary skill in the building trades. See. App. Br. 9-13.
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Appeal 2016-000424
Application 13/148,687
Claims 4, 5,10-13, and 17-20: Obviousness over Harinishi and
VARIOUSLY OVER McKlNNEY, FlEDRICH, STREIT, and SHI.
The Examiner applies Harinishi as discussed above and does not
apply any of the secondary references to teach the claimed floor
construction.
In view of the foregoing discussion, we decline to sustain the rejection
of Claims 4, 5,10-13, and 17—20.
Claim 15: Obviousness over Harinishi and Podgorny.
Independent Claim 15 does not recite the claim term “floor
construction,” commensurate in scope with independent Claims 1 and 16.
Claim 15 recites, inter alia, “adjusting the resilience of the floor
according to the chosen user profile.”
The Examiner finds Podgorny does not teach this limitation. Final
Act. 29. The Examiner relies on Harinishi for disclosing “[wjith this impact
absorbing gymnastic mat, the impact resilience can be controlled by
adjusting the air pressure within the mat body, so that impact resilience
suitable for the user’s age and the content of the sport can be obtained and
that desired impact resilience can be reproduced any number of times.” Id.
at 29-30.
Appellant contends Podgorny relates to an indoor climate control
system and does not even mention a floor of a building. App. Br. 23.
Appellant argues Harinishi teaches an inflatable gym mat to accommodate
gymnasts of varying weights, but Harinishi has no relation to climate
control. Id.
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Appeal 2016-000424
Application 13/148,687
We agree with Appellant (see id., at 24) that the combination of an
indoor climate control system with an inflatable gym mat fails to yield
“adjusting the resilience of the floor according to the chosen user profile,” as
claimed.
In view of the foregoing discussion, we decline to sustain the rejection
of Claim 15.
DECISION
The rejection of Claims 1—3, 6—9, 14, 16, 21, and 22 under 35 U.S.C.
§ 102 is REVERSED.
The rejection of Claims 4, 5, 10-13,15, and 17—20 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
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