Ex Parte DuernbergerDownload PDFPatent Trial and Appeal BoardJul 31, 201310861921 (P.T.A.B. Jul. 31, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GERHARD DUERNBERGER ____________________ Appeal 2010-007553 Application 10/861,921 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, REMY J. VANOPHEM, and RICHARD E. RICE, Administrative Patent Judges. VANOPHEM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007553 Application 10/861,921 2 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 Appeal 2010-007553 Application 10/861,921 3 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 Appeal 2010-007553 Application 10/861,921 4 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 Appeal 2010-007553 Application 10/861,921 5 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). Appeal 2010-007553 Application 10/861,921 6 DECISION REVERSED mls Copy with citationCopy as parenthetical citation