Ex Parte Duernberger

Patent Trial and Appeal Board

Jul 31, 2013

10861921 (P.T.A.B. Jul. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GERHARD DUERNBERGER
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Appeal 2010-007553
Application 10/861,921
Technology Center 3600
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Before: EDWARD A. BROWN, REMY J. VANOPHEM, and
RICHARD E. RICE, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/861,921

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-15. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a facing panel for floors, walls or ceilings.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A facing panel, in particular for floors, walls, or ceilings,
the facing panel comprising: connecting or locking elements (5,
6) configured as tongues and grooves, being formed on long
side surfaces of the facing panel (1, 1'), the connecting or
locking elements being shaped along parallel long-side edges
(4, 4') of the facing panel (1, 1') so as to be different or to
complement one another whereby long-side edges (4, 4')
formed with different locking elements can be joined, locked,
or assembled to each other; orienting indicia consisting of a
single visible stripe (2) on a visible surface (7) of the facing
panel (1, 1'), extending parallel to and in close spaced relation
to one of the two long side edges (4, 4') of the visible surface,
the color of said stripe (2) being darker than the color of the
remainder of the visible surface, one and the same connecting
or locking element (6) being formed along the long-side edge
(4) of the facing panel (1, 1') to which the stripe (2) extends
parallel, and one and the same connecting or locking element
(6) being formed on the opposite long-side edge (4'), this being
complementary to a connecting or locking element (5) on an
adjacent facing panel (1, 1') and lockable thereto.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harvey US 4,035,697 July 19, 1977
Costantino US 6,119,423 Sep. 19, 2000

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Application 10/861,921

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REJECTIONS
1. Claims 1-8 and 10-14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the teachings of Costantino.
2. Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Costantino in view of the teachings of Harvey.

ANALYSIS
Rejection of claims 1-8 and 10-14 over Costantino
Appellant argues the rejected claims as a group. App. Br. 4-9. We
select claim 1 as representative of the group, and claims 2-8 and 10-14 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Costantino discloses a floor panel with
tongue and groove connection on the long surfaces of the panel that are
parallel. Ans. 3. The Examiner further finds a single stripe (fig. 4B; 10;
each individual board in portion 10 is a stripe) is inlaid on a visible surface
parallel to and in close spaced relation to the side edges. Ans. 3-4. The
stripe runs parallel to one of the long-side edges. Ans. 4. The Examiner
further finds that Costantino “does not disclose the stripe as a single stripe.”
Ans. 4. The Examiner concludes it would have been obvious at the time the
invention was made to a person having ordinary skill in the art as a matter of
design choice to have this limitation because Costantino discloses that the
panel can be made to most any design, and aesthetic designs are within the
level of ordinary skill in the art. Ans. 4. The Examiner further concludes
that matters related to ornamentation only, which have no mechanical
function, cannot be relied upon to patentably distinguish the claimed

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invention from the prior art. Ans. 4, referencing In re Seid, 161 F.2d 229
(CCPA 1947).
Appellant contends that the Examiner has only attributed ornamental
design significance and not patentable weight to Appellant’s single
independent claim 1, which reads in part:
…orienting indicia consisting of a single visible stripe (2)
on a visible surface (7) of the facing panel (1, 1'), extending
parallel to and in close spaced relation to one of the two long
side edges (4, 4') of the visible surface, the color of said stripe
(2) being darker than the color of the remainder of the visible
surface.
App. Br. 4.
Appellant further contends that the Specification, at page 1, line 17
through page 2, line 18, sets forth a clear functional relationship between the
facing panel and the indicia consisting of a single visible stripe and therefore
the Examiner erred to characterize the indicia as “ornamental only which has
no mechanical function” and to conclude that the indicia cannot be relied
upon to patentably distinguish the claimed invention from the prior art.
App. Br. 5-6.
In response to Appellant’s argument, the Examiner appears to
acknowledge that Costantino does not specifically disclose orienting indicia
consisting of a single visible stripe on a visible surface of the facing panel,
as claimed, but “maintains that the disclosure of Costantino is clear that the
panel can be made to virtually any design.” Ans. 8, referencing Costantino,
col. 6, ll. 30-50.
We agree with Appellant that the orienting indicia recited in claim 1
does not relate to ornamentation only. Thus, the Examiner’s reliance on In

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re Seid is misplaced. Seid stands for the proposition that a claim that recites
a structure differing from prior art structure only by way of a limitation
relating to ornamentation and having no mechanical function whatsoever is
unpatentable over the prior art. Seid, 161 F.2d at 231. Here, in contrast, the
orienting indicia have the mechanical function of enabling “a layman to
arrange the facing panels correctly relative to each other in the plane of
application and then install them as required.” Spec. 1.
Costantino fails to disclose any orienting indicia related to the floor
panels and, as found by the Examiner, does not disclose the stripe as a single
stripe. Ans. 4.
We agree with the Appellant that it is improper to mischaracterize a
claim limitation as purely aesthetic when according to Appellant’s
disclosure, the limitation has clear orienting function. Therefore, we
conclude the Examiner erred in rejecting claims 1-8 and 10-14 as being
unpatentable over the teachings of Costantino. Accordingly, we do not
sustain the rejection of claims 1-8 and 10-14 under 35 U.S.C. § 103(a).

Rejection of claims 9 and 15 over Costantino and Harvey
The Examiner rejected dependent claims 9 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over the teachings of Costantino in view of the
teachings of Harvey. The teachings of Harvey do not cure the shortcomings
of Costantino as discussed supra. Therefore, we do not sustain the rejection
of claims 9 and 15 under 35 U.S.C. § 103(a).

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DECISION
REVERSED

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