Ex Parte Dugast

Patent Trial and Appeal Board

May 17, 2018

13202898 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/202,898 10/13/2011
53609 7590 05/21/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Hubert Dugast
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.
507381-PCT-US 2846
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUBERT DU GAST
Appeal2017-005559
Application 13/202,898
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-5, 7, 8, and 14--17. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Tarkett GDL as the real party in interest. Appeal Brief
filed November 7, 2016 ("App. Br."), 2.
2 Claims 9-13 stand withdrawn from consideration. Final Office Action
entered June 8, 2016 ("Final Act."), 1.
Appeal2017-005559
Application 13/202,898
STATEMENT OF THE CASE
Appellant claims a multilayer flexible synthetic floor covering
element. App. Br. 2-3. Claim 1 illustrates the subject matter on appeal and
is reproduced below with contested language italicized:
1. A multilayer flexible synthetic floor covering element
compnsmg:
at least one synthetic wear layer;
at least one support layer; and
a decorative pattern printed on one of the layers of said
flexible floor covering element,
said printed decorative pattern representing at least two
elements of natural floor covering to be imitated,
said floor covering element being in the form of a strip,
the width of which corresponds to the width of one of the at
least two elements of natural floor covering to be imitated, and
the length of which corresponds to the length of the at least two
elements of said natural floor covering to be imitated,
wherein first portions of said printed decorative pattern
that represent each one element of natural floor covering to be
imitated are separated by a second portion of said printed
decorative pattern that imitates a joint connecting said elements
of said natural floor covering to be imitated.
App. Br. Claims Appendix 1 (paragraphing added).
The Examiner sets forth the rejection of claims 1-5, 7, 8, and 14--17
under 35 U.S.C. § 103(a) as unpatentable over Plusquellec (US
2004/0102120 Al, published May 27, 2004) in view of Laurent (US
2006/0156672 Al, published July 20, 2006) in the Final Office Action, and
maintains the rejection in the Examiner's Answer entered December 15,
2016 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
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claims 1-5, 7, 8, and 14--17 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Office Action, the Answer, and below.
Claims 1, 3-5, 7, and 15-17
Appellant argues claims 1, 3-5, 7, and 15-17 as a group on the basis
of claims 1and14, which Appellant argues together. App. Br. 5-7.
Therefore, we select claim 1 as representative, and decide the appeal as to
claims 1, 3-5, 7, and 15-17 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
Plusquellec discloses a flexible synthetic floor covering comprising an
upper unfilled PVC plastisol-based layer that provides resistance to wear
(synthetic wear layer), and a flexible sheet that includes a PVC-based foam
layer (support layer) having a smooth surface onto which a decorative ink
pattern is printed (decorative pattern printed on one of the layers).
Plusquellec i-fi-13, 5, 16, 34, 35, 49-53.
The Examiner finds that "Plusquellec is silent to the specifics of the
decorative coating," and relies on Laurent's disclosure of decor for flooring.
Final Act. 3--4. Laurent discloses a strip-shaped laminate floor panel
comprising a top layer, printed decor representing (imitating) a wood
pattern, and an underlying substrate that preferably consists of wood
fiberboard such as MDF or HDF. Laurent i-fi-12, 6, 41, 130, Fig. 1. Laurent
discloses including embossments in the surface of the panel over which the
decor extends that imitate a joint in the center of the panel, as "when one
panel imitates two or more planks." Id. i-fi-f 130, 133.
The Examiner finds that Laurent does not explicitly disclose that the
width of the strip-shaped floor panel corresponds to the width of one of the
two wooden planks being imitated, but the Examiner determines that it
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would have been obvious to one of ordinary skill in the art at the time of
Appellant's invention seeking to create an aesthetically pleasing design to
form the floor covering disclosed in Plusquellec into a strip-shaped panel
having the width of a wooden plank, and comprising a printed decor and
embossments as disclosed in Laurent that imitate two wooden planks
separated by a center joint, corresponding to a printed decorative pattern
representing at least two elements (first and second planks) of natural floor
covering (wood) to be imitated, the width of which corresponds to the width
of one of the at least two elements (one plank) of natural floor covering to be
imitated, the length of which corresponds to the length of the two elements
of natural floor covering to be imitated (first and second planks), wherein
first portions of said printed decorative pattern that represent each one
element of natural floor covering to be imitated (first and second planks) are
separated by a second portion of said printed decorative pattern that imitates
a joint connecting said elements of said natural floor covering to be imitated,
as recited in claim 1. Final Act. 3--4.
Appellant argues that the rejection is based "solely on hindsight
reconstruction of the prior art" because neither Plusquellec nor Laurent
discloses or suggests a printed decor having a width corresponding to the
width of one of the two or more elements of natural floor covering (wooden
planks) being imitated. App. Br. 6-7; Reply Br. 4--5. Appellant contends
that "the recited features cannot be dismissed merely as an aesthetic choice,
as the width of the printed decorative pattern constrains the structure of the
floor covering element by determining the width of the flexible floor
covering." App. Br. 7. Appellant asserts that the claimed floor covering
element has structurally distinct features from the prior art floor covering
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disclosed in Figures 1 and 2 and paragraph 3 of Appellant's Specification
that has "a great width," and is also distinct "from the rigid MDF /HDF floor
elements of Laurent." Id.
However, as discussed above, the Examiner's proposed combination
of the relied-upon disclosures of Plusquellec and Laurent involves forming
the floor covering material disclosed in Plusquellec into a strip-shaped panel
comprising a printed decor and embossments as disclosed in Laurent, to
imitate two wooden planks separated by a center joint. Final Act. 3--4. The
resulting material would include an upper unfilled PVC plastisol-based layer
that provides resistance to wear (synthetic wear layer), and a flexible sheet
including a PVC-based foam layer (support layer) having a smooth surface
onto which the decor is printed, as disclosed in Plusquellec, and would not
include a wood fiberboard (MDF /HDF) substrate as disclosed in Laurent.
Although neither Plusquellec nor Laurent explicitly discloses a floor
covering element having a width corresponding to the width of one of two
wooden planks being imitated, a mere difference in the claimed dimensions
and the prior art dimensions is insufficient to show nonobviousness in
circumstances where the claimed dimensions are not of functional
significance and they accomplish the same results as the prior art. See
Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984)
(affirming a district court determination of obviousness because "the
dimensional limitations of claim 1 failed to particularly point out a feature of
an air bar which performed any differently from prior art bars"). Appellant's
arguments do not demonstrate that a floor covering element width
corresponding to the width of one of two elements of natural flooring being
imitated is of any functional significance or serves a unique or critical
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purpose. App. Br. 5-7. Nor do Appellant's arguments demonstrate that
such a width provides any unexpected result or advantage. Id. Accordingly,
changing the dimensions of Plusquellec' s floor covering to be the size of a
strip-shaped panel having the width of a single wooden plank (width of one
element of natural floor covering being imitated) as recited in claim 1, would
have been a matter of design choice that was well within the level of
ordinary skill in the art at the time of Appellant's invention. In re Kuhle,
526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated
problem and presents no unexpected result and "would be an obvious matter
of design choice within the skill of the art").
In addition, although paragraph 3 of Appellant's Specification and
Figures 1 and 2 describe prior art decorative floor coverings "in the form of
a roll of great length and great width," Appellant's Specification also
indicates that synthetic decorative floor coverings having the dimensions of
a single element of natural floor covering to be imitated, such as a single
wooden slat, were known in the art at the time of Appellant's invention.
Spec. ,-r 5, Fig. 3.
Appellant argues that Laurent provides a complete solution to the
problem of providing synthetic floor coverings in the form of individual
rigid planks that imitate natural wood planks. App. Br. 6. Appellant
contends that "[t]he skilled person would not have bargained the readily
available solution of Laurent for a doubtful combination with another
reference where it is not sure whether the combination will keep up with the
original solution." Id.
However, as discussed above, the Examiner's proposed combination
of the relied-upon disclosures of Plusquellec and Laurent is not based on
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modifying the laminate floor panel disclosed in Laurent. Rather, the
Examiner determines that one of ordinary skill in the art would have formed
the floor covering material disclosed in Plusquellec into a strip-shaped panel
comprising a printed decor and embossments as disclosed in Laurent, to
imitate two wooden planks separated by a center joint.
As also discussed above, Plusquellec discloses a synthetic floor
covering that includes a decorative pattern printed onto the smooth surface
of a PVC-based foam layer, but Plusquellec does not provide specific details
regarding the nature of the decorative pattern. Appellant has not persuaded
us of error in the Examiner's finding that one of ordinary skill in the art,
seeking to produce a synthetic floor covering as disclosed in Plusquellec that
imitates natural wooden planks, would have looked to Laurent for a suitable
decorative pattern to use in Plusquellec' s synthetic floor covering. Such a
skilled artisan would have been led, through no more than ordinary skill and
creativity, to form the floor covering material disclosed in Plusquellec into a
strip-shaped floor panel having a printed decor and embossments, as
disclosed in Laurent, in order to imitate two wooden planks separated by a
center joint. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(explaining that the prior art references must be read in context, taking into
account, inter alia, "the background knowledge possessed by a person
having ordinary skill in the art," and "the inferences and creative steps that a
person of ordinary skill in the art would employ.")
We accordingly sustain the Examiner's rejection of claims 1, 3-5, 7,
and 15-17 under 35 U.S.C. § 103(a).
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Claim 2
Claim 2 depends from claim 1 and recites that the width of the strip is
between 10 and 50 cm and the length of the strip is between 4 m and 30 m.
The Examiner finds that Laurent does not disclose the width and
length of the strip-shaped laminate floor panel described in the reference.
Final Act. 4. The Examiner determines that it nonetheless would have been
obvious to one of ordinary skill in the art at the time of Appellant's
invention to form the modified floor covering of Plusquellec (discussed
above) to have the dimensions recited in claim 2 to "allow the panels to be
larger giving the appearance of more planks on one panel separated by the
joints, therefore allowing the user to better customize the appearance of the
panel and replicate the wood appearance better." Final Act. 4--5.
Appellant argues that "it is not apparent why a person skilled in the art
would have chosen the dimensions recited in claim 2 regarding both the
length and the width of the floor covering" because Appellant's
Specification indicates that standard flexible floor coverings are commonly
provided as a material having great width, and synthetic flooring tiles or
planks as disclosed in Laurent are typically not longer than 1.5 m to 2 m
"due to the inherent difficulties of manufacturing, transporting, and
installing non-flexible elements" having a length "greater than about 2 m."
App. Br. 8. Appellant contends that the Examiner's rationale for rejecting
claim 2, which Appellant characterizes as a general desire to improve a
product, "does not provide a cognizable basis for a person of ordinary skill
in the art to depart from the prior art, or to choose the specific dimensions
recited by claim 2." App. Br. 8.
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However, as discussed above in connection with claim 1, a difference
in claimed dimensions from the prior art dimensions does not make a
structure nonobvious in circumstances where the claimed dimensions are not
of functional significance and they accomplish the same results as the prior
art. Gardner, 725 F.2d at 1346. Appellant's arguments do not demonstrate
that the dimensions recited in claim 2 are of any functional significance,
serve a unique or critical purpose, or provide any unexpected result or
advantage. Appellant's argument regarding the inherent difficulties of
synthetic flooring tiles or planks as disclosed in Laurent that have a length
greater than about 2 m does not address the proposed combination of the
applied prior art, which involves forming the flexible floor covering
disclosed in Plusquellec into a strip-shaped panel as suggested by Laurent
having the dimensions recited in claim 2, rather than forming a "non-
flexible" laminate floor panel as disclosed in Laurent with the recited
dimensions.
We accordingly sustain the Examiner's rejection of claim 2 under
35 U.S.C. § 103(a).
Claims 8 and 14
Claim 8 depends from claim 1 and recites that the strip of floor
covering is packaged in the form of a roll. Claim 14 recites, inter alia, that
the claimed multilayer flexible synthetic floor covering element is in the
form of a strip packaged in the form of a roll.
The Examiner finds that neither Plusquellec nor Laurent discloses
packaging the floor coverings described in the references in the form of a
roll, but determines that it would have been obvious to one of ordinary skill
in the art at the time of Appellant's invention to package the modified strip-
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shaped floor covering of Plusquellec in the form of a roll to "allow for easier
processing and transportation of the printed floor covering as rolling up the
floor covering would save space." Final Act. 6.
Appellant argues that not all floor coverings can be rolled. App. Br.
8. Appellant contends that "[t]he floor covering of Laurent are [sic] formed
from MDF or HDF, and is thus inherently rigid and incapable of being
rolled. Additionally, it is also uncertain whether Plusquellec's flooring can
be rolled, as the reference is silent as to this feature." Id.
However, Appellant's arguments are based on Plusquellec and
Laurent individually, and do not take into consideration what the combined
disclosures of these references would have suggested to one of ordinary skill
in the art at the time of Appellant's invention. In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references."); In re Keller, 642 F.2d 413, 425
( CCP A 1981) (The test for obviousness "is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.")
One of ordinary skill in the art would have understood that the flexible floor
covering disclosed in Plusquellec modified into a strip-shaped panel as
suggested by Laurent could be packaged in the form of a roll, and would
have been led to do so, as the Examiner correctly finds, to allow for easier
processing and transportation of the material.
We accordingly sustain the Examiner's rejection of claims 8 and 14
under 35 U.S.C. § 103(a).
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DECISION
We affirm the Examiner's rejections of claims 1-5, 7, 8, and 14--17
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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