Ex Parte Ford et al

Board of Patent Appeals and Interferences

Oct 31, 2008

10898254 (B.P.A.I. Oct. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY J. FORD, MARK D. KILPATRICK,
JACK H. CROUSE and KENNETH L. HIXSON1
____________________

Appeal 2008-4910
Application 10/898,254
Technology Center 3700
____________________

Decided: October 31, 2008
____________________

Before RICHARD E. SCHAFER, SALLY G. LANE and
JAMES T. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
1
STATEMENT OF CASE 2
The Appellants appeal under 35 U.S.C. § 134 (2002) from a final 3
rejection of claims 1-48. We have jurisdiction under 35 U.S.C. § 6(b) 4
(2002). 5
The Appellants’ claims are directed to a panel structure for a bowling 6
lane. 7

1 The real party in interest is Qubicaamf Worldwide, LLC. (App. Br. 2).

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Claims 1, 18 and 35 are the only independent claims in the 1
application. 2
Claim 1 reads as follows: 3
1. A panel structure for a bowling lane, comprising: 4
a lane panel having a first surface and a second surface, the first 5
surface forming a bowling surface of the bowling lane; 6
an underlayment adjacent the lane panel; 7
a tapered hole extending from the first surface of the lane 8
panel to the second surface of the lane panel, wherein the area 9
of the tapered hole is larger at the first surface than at the 10
second surface; and 11
a fastener having a head and a securing portion, the head 12
being disposed in the tapered hole and having a wall having a 13
taper at substantially the same angle as the tapered hole, the 14
securing portion extending from the head into the 15
underlayment. 16
17
(App. Br. Appendix 41). 18
19
Figure 3 from the Application, reproduced below, illustrates 20
one embodiment of claimed panel structure. (Specification p. 8, ¶ 21
028). 22
23
24

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{Figure 3 shows a cross-sectional view of the panel 1
structure (Specification p. 8, ¶ 027).} 2
3
THE EVIDENCE 4
5
The Examiner relies upon the following as evidence in support of the 6
rejections: 7
Bowen US 915,068 Mar. 16, 1909 8
Pasley US 4,137,681 Feb. 06, 1979 9
Stirling US RE 35,778 Apr. 28, 1998 10
11
THE REJECTIONS 12
13
The following rejections are before us for review: 14
1. Claims 1-10, 12-27, 29-44 and 46-48 stand rejected under 35 U.S.C. § 15
103(a) over the combination of Stirling (US Reissue Patent 35,778) and 16
Pasley (US Patent 4,137,681). 17
2. Claims 11, 28 and 45 stand rejected under 35 U.S.C. § 103(a) over the 18
combination of Stirling, Pasley and Bowen (US Patent 4,137,681). 19
We AFFIRM the rejections of claims 1-11, 12-43, and 45-48. We 20
enter a new ground of rejection under 35 U.S.C. § 103(a) over the 21
combination of Stirling, Pasley and Bowen for dependent claim 44. 22
ISSUE 23
Have the Appellants established that the Examiner erred in 24
determining that it would have been obvious to one of ordinary skill in the 25
art at the time the invention was made to combine a tapered sunk screw and 26
a tapered hole, both known elements of the prior art, to provide the claimed 27
panel structure for mounting a bowling lane to an underlayment? 28
FINDINGS OF FACT 29

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The record supports the following findings of fact by a preponderance 1
of the evidence. 2
1. Stirling describes an overlay structure for resurfacing a bowling 3
lane. (Stirling 2:18-20). 4
2. Stirling describes that the invention is directed to solving 5
problems related to repairing the surface of the wood lane that have become 6
worn and irregular. (Id. 1:23-29; 2:4-14). 7
3. Stirling Figure 2 , reproduced below, illustrates the fastening 8
means and overlay structure of the invention. 9
10
11
12
13
14
15
{Figure 2 shows a fragmented section of a mechanical fastening mechanism 16
(Id. 3:65-67).} 17
4. Stirling describes that the overlay structure 26 is generally 18
designed for covering, i.e., resurfacing an existing bowling lane. 28. (Id. 19
3:34-36). 20
5. Stirling describes that the structure includes the use of a fastening 21
means 30. (Id. 3:37-38). 22
6. Stirling describes that the fastening means 30 are in the form of 23
screws 38 extending through covering 26 and through the drilled holes 40 24
for securements to lane 28. (Id. 4:37-39). 25

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7. Stirling also describes that the drilled holes 40 are countersunk, as 1
at 42, to accommodate the heads 44 of the screws in recesses 46 in the upper 2
surface of the sheet. (Id. 4:40-41). 3
8. Stirling describes that disc-shaped plugs 48 are inserted into 4
recesses 46 and provide an acceptable appearance and allow the use of many 5
fasteners. (Id. 4:43-53). 6
9. Pasley describes a fastening device for securing wear-resistant 7
tiles to a backing. (Pasley Title). 8
10. Pasley Figure 2, reproduced below, illustrates the fastening 9
devices of the invention. 10
11
{Figure 2 depicts a cross section of a fastening device.} 12
11. Pasley describes that the structure of the invention includes a 13
metal backing 2 and a lining 4 that covers the backing, which supports the 14
lining and maintains it in the desired configuration. (Id. 2:32-36). 15
12. Pasley describes that the tiles 6 may be set to a grout bed 8 to 16
level them. (2:40-41). 17
13. Pasley also describes that each tile 6 is retained in place by a 18
fastening device 10, that is attached directly to the backing 2. (Id. 2:43-45). 19
14. Pasley describes that the tile has a tapered hole 16 that is larger at 20
the front face 14 than at the back face 12. (Id. 2:56-58). 21

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15. Additionally, Pasley describes that the fastening device fits into 1
the tapered hole 16 for the tile 6. (Id. 2:67-68). 2
16. Pasley describes that each fastening device 10 includes a tapered 3
anchor 20 and a threaded stud 22 that is secured to the backing 2. (Id. 2:68-4
3:4). 5
17. Pasley describes that the large ends of the tapered holes 16 may be 6
closed with a ceramic plug or a filler material such as epoxy. (Id. 4:58-60). 7
18. Pasley describes that the fastener secures the tile in place while 8
allowing the anchor to be easily removed, so that the tiles may be easily 9
replaced on an individual basis. (Id. 1:50-59). 10
19. Bowen describes an ornamental cap for screws and other 11
fasteners. (Bowen Title). 12
20. Bowen describes providing a socket in the head of a fastening. 13
(Bowen Figs. 1-4; p. 1, ll. 89-90). 14
21. Bowen also describes a cap that consists of a simple disk that is 15
dished to give it a “concavo-convex shape.” (Id. p. 1, ll. 98-102). 16
22. Additionally Bowen describes that the disk 6 is completely 17
circular. (Id. p. 2, ll. 27-28; Fig 4). 18
ANALYSIS 19
I. The Rejection of Claims 1-10, 12-27, 29-44 and 46-48 under 35 20
U.S.C. § 103(a) over Stirling and Pasley. 21
Claims 1-10, 12-27, 29-44 and 46-48 stand rejected under 35 U.S.C. § 22
103(a) over the combination of Stirling (US Reissue Patent 35,778) and 23
Pasley (US Patent 4,137,681). 24

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Claim 1 1
Claim 1 reads as follows: 2
1. A panel structure for a bowling lane, comprising: 3
a lane panel having a first surface and a second surface, the first 4
surface forming a bowling surface of the bowling lane; 5
an underlayment adjacent the lane panel; 6
a tapered hole extending from the first surface of the lane 7
panel to the second surface of the lane panel, wherein the area 8
of the tapered hole is larger at the first surface than at the 9
second surface; and 10
a fastener having a head and a securing portion, the head 11
being disposed in the tapered hole and having a wall having a 12
taper at substantially the same angle as the tapered hole, the 13
securing portion extending from the head into the 14
underlayment. 15
16
(App. Br. Appendix 41). 17
18
Initially, we analyze the claim, giving it the broadest reasonable 19
interpretation consistent with the specification. In re Yamamoto, 740 20
F.2d 1569, 1571 (Fed. Cir. 1984). Claim 1 requires a bowling lane 21
panel, an underlayment, a tapered hole, and a fastener with a tapered 22
head matching the tapered wall. The claim requires the hole to extend 23
through the lane panel. We find the term “tapered” read reasonably 24
broadly can mean either a portion of the hole wall, or the complete 25
hole wall, is tapered. 26
We now turn to the Examiner’s rejection. 27
The Examiner found that Stirling describes a bowling lane secured 28
with fasteners. (Non-Final Rejection, Jun. 6, 2006, p. 2, incorporated by 29
reference in Final Rejection, Nov. 14, 2006, p. 2). The Examiner also found 30

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that “Pasley teaches that a common expedient in fasteners would have been 1
obvious to mount linings to backings.” (Id.). According to the Examiner, 2
Pasley describes a fastening expedient having a tapered hole 16 extending 3
from the first surface to a second surface, and a fastener 42 with a securing 4
portion 28. (Id.). The Examiner also found that Pasley describes the plug of 5
claims 5-10. (Id.)(citing Pasley 4:59). 6
The Appellants challenge the Examiner’s rejection of claim 1 by 7
asserting that the combined references do not teach or suggest all of the 8
features of the claim. (App. Br. 10). First, the Appellants assert that 9
“Stirling does not disclose a tapered hole extending from the first surface of 10
the lane panel to the second surface of the lane panel, wherein the area of the 11
tapered hole is larger at the first surface than at the second surface, as recited 12
in claim 1.” (Id.). According to the Appellants, Stirling instead describes a 13
hole that “has a taper which only extends partially through the middle 14
portion of the covering,” where the remaining portion of hole is not tapered. 15
(Id. 11). 16
We disagree with the Appellants’ claim interpretation. Claim 1 17
recites that the hole tapers such that “the area of the tapered hole is larger at 18
the first surface than at the second surface.” (See claim 1). Neither the 19
specification nor the claim further defines the disputed claim language. 20
The Appellants have not directed us to persuasive evidence that a 21
more narrow definition of the claim limitation applies, i.e., that “a tapered 22
hole extending from the first surface of the lane panel to the second surface 23
of the lane panel” requires the entire taper of the hole to extend from the first 24
to second surface of the lane panel. It is reasonable to construe this claim to 25

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only require a taper at any part of the hole. It is the Applicants’ burden to 1
precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048, 2
1056 (Fed. Cir. 1997). 3
Stirling’s lane panel comprising a hole that extends from the first 4
surface of the lane panel to the second surface of the lane panel, wherein the 5
hole has a tape that partially extends through the middle portion of the panel, 6
and the area of the tapered hole is larger at the first surface than at the 7
second surface, therefore falls within the scope of instant claim 1. The 8
Appellants have not established that the Examiner erred in so determining. 9
The Appellants further assert that “Pasley does not compensate for the 10
deficiencies of Stirling,” regarding the tapered hole of claim 1. In support of 11
this assertion the Appellants recite various embodiments of Pasley. (See 12
App. Br. 11-12). 13
This assertion is also unpersuasive. As discussed, Stirling alone 14
describes this limitation of claim 1. Moreover, Pasley is evidence that even 15
a tapered hole in which the hole and the taper extend from the first surface 16
to the second surface of a structure was known in the art at the time of the 17
invention. (Ans. 4, 11). Consequently, we do not find error with the 18
Examiner’s rejection. 19
Next, the Appellants assert that the Examiner erred in finding that the 20
combined references describe “a fastener having a head and a securing 21
portion, the head being disposed in the tapered hole and having a wall 22
having a taper at substantially the same angle as the tapered hole, the 23
securing portion extending from the head into the underlayment, as recited 24
in claim 1.” (App. Br. 14). Specifically, the Appellants assert that the 25

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Examiner mistakenly referenced Pasley’s threaded aperture 28 located in the 1
anchor 42 as “a securing portion.” (Id. 13). 2
We reproduce the disputed figure below: 3
4
{Figure 8 is a cross sectional view of a fastener having tapered walls 5
in a hole having similarly tapered walls extending throughout the length of 6
the material being secured.} 7
The Appellants argue that the aperture 28 “does not extend into the 8
metal backing 2.” (Id.). Therefore, according to the Appellants, the 9
Examiner’s suggestion to replace Stirling’s screw 38 with Pasley’s anchor 10
42 would not result in a structure comprising “a fastener having a securing 11
portion extending into the underlayment.” (Id.). 12
This argument is wholly unpersuasive. First, the Examiner correctly 13
found that Stirling and Pasley each describe fasteners, as claimed. (Final 14
Rejection, Nov. 14, 2006, p. 2; Ans. 3). Therefore the disputed claim 15
limitation is obvious over Stirling alone. Stirling Figure 2, reproduced 16
below, illustrates an embodiment of the invention. 17
18
19

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1
2
3
{Figure 2 shows a fragmented section of a mechanical fastening 4
mechanism} 5
As the Examiner stated, Stirling describes “a fastener having a head 6
44 and a securing portion 38, the head being disposed in the tapered hole 42 7
and having a wall having a taper at substantially the same angle as the 8
tapered hole ... the securing portion 38 extending from the head into the 9
underlayment.” (Ans. 3). 10
Regarding Stirling, the Appellants repeat the assertion that “Stirling’s 11
hole ... would still not constitute a tapered hole extending from the first 12
surface of the covering to the second surface of the covering.” (App. Br. 13
14). We have discussed, supra, that Stirling describes a tapered hole, as 14
claimed. Consequently, we find that the Examiner did not error in rejecting 15
claim 1 over Stirling and the Appellants have not established otherwise. 16
Second, with respect to the Examiner’s reliance on Pasley, we remain 17
unpersuaded of error. Pasley expressly describes a fastener comprising a 18
tapered anchor 20 and a threaded stud 22 that is “secured to the backing 2.” 19
(Pasley 2:68-3:4). Pasley Figure 2, reproduced below, illustrates the 20
threaded stud 22, i.e., securing portion, extending from the anchor 20, i.e., 21

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head, into the backing 2, i.e., underlayment, as claimed. 1
2
{Figure 2 depicts a cross section of a fastening device.} 3
The Appellants further assert that the “combination of Stirling and 4
Pasley is improper because ... there no reasonable expectation of success of 5
replacing the fastener of Stirling with that of Pasley, as suggested by the 6
Examiner.” (App. Br. 14). 7
Specifically, the Appellants assert that Stirling describes driving 8
screws through the covering and into the existing wood bowling lane, 9
whereas, Pasley describes welding a metal anchor to a metal backing. (Id.). 10
Therefore, the Appellants conclude that “[t]here is no reasonable expectation 11
of success of welding the metal anchor 42 to the existing wood bowling lane 12
of Stirling, because, generally speaking, metal cannot be successfully 13
welded to wood.” (Id.). 14
This argument is unpersuasive as the Appellants have failed to 15
properly consider the level of one of ordinary skill in the art. The law 16
presumes skill on the part of the artisan rather than the converse, see In re 17
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985), including the skill to 18

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successfully select and fasten an anchor to wood instead of trying to weld 1
steel to wood. Therefore, we sustain the Examiner’s rejection. 2
The Appellants further assert that the combination of Stirling and 3
Pasley is improper because Pasley is not analogous art as it is directed to 4
connecting ceramic tiles to a metal backing for a chute conduit,” rather than 5
to a panel structure for a bowling lane. (App. Br. 15). The Appellants also 6
assert that Pasley is not reasonably pertinent to the problem addressed by the 7
applicants, namely, “attaching a bowling lane panel to an underlayment to 8
achieve a desired flatness and without fracturing the lane panel.” (Id.). 9
First the Appellants characterize the relevant art too narrowly. Pasley 10
address the problem facing the inventor of the instant application, that is, 11
finding an improved method of fastening two panel-like parts together. (See 12
Ans. 19; see also Specification p. 3, ¶ 004, stating that “[t]he invention is 13
directed to a system for attaching the lane panel to the underlayment.”). 14
Specifically, Pasley describes that the invention relates to “fastening devices, 15
and more particularly to fastening devices for attaching linear segments to a 16
backing.” (Pasley 1:6-8). 17
Moreover, contrary to the Appellants’ assertion, (App. Br. 15), Pasley 18
also provides motivation for employing its fastening device in the lane 19
panels of Stirling by teaching that the fastener secures the tile in place while 20
allowing the anchor to be easily removed, so that the tiles may be easily 21
replaced on an individual basis.” (Id. 1:50-59). As Stirling describes, the 22
invention is directed to solving problems related to repairing the surface of 23
the wood lane that have become worn and irregular. (Stirling 1:23-29; 2:4-24
14). Insofar as the motivation to combine references if for a purpose 25

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different than that of the Appellants, the motivation is nevertheless valid. 1
See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). 2
Therefore, we conclude that the Examiner did not err in determining 3
that it would have been obvious to one of ordinary skill in the art at the time 4
of the invention to combine the references to arrive at the claimed invention. 5
Nor was the Examiner’s determination the result of inappropriate hindsight. 6
(See App. Br. 16). A reconstruction is not improper if it relies on ordinary 7
skill at the time of the invention and not on knowledge gained solely from 8
the applicant’s disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 9
(C.C.P.A. 1971). 10
Claim 7 11
Claim 5 recites, “The panel structure of claim 1, further comprising a 12
plug disposed within the tapered hole above the fastener.” (App. Br. 13
Appendix 41). 14
Claim 7 recites, “The panel structure of claim 5, wherein the plug 15
includes a wall tapered at substantially the same angle as the tapered wall of 16
the tapered hole.” (Id.). 17
The Appellants assert that the Examiner erred in rejecting claim 7 18
because “Pasley does not teach or suggest that the ceramic plug or filler 19
material has a tapered wall...[that is] tapered at substantially the same angle 20
as the tapered wall of the tapered hole.” (App. Br. 16). 21
In particular, the Appellants assert that Pasley describes closing the 22
large ends of the tapered holes using a ceramic plug or filler material such as 23
epoxy, but “provides no description of the shape of such a plug or filler 24
material. (Id.). The Appellants also assert “that a plug having tapered walls 25

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would not work effectively” in Stirling’s structure because Stirling describes 1
a disc-shaped plug that is inserted into a cylindrical recess. (App. Br. 16). 2
These arguments are not persuasive, and border on frivolous. In 3
essence, the Appellants are arguing that the Examiner erred because it would 4
not have been obvious to one of ordinary skill in the art to shape a plug like 5
the hole it is filling. We disagree. It would have been obvious to a skilled 6
artisan at the time of the invention would who reviewed Pasley’s that closing 7
tapered holes with a ceramic plug or a filler material such as epoxy would 8
require using plug or filler material that is also tapered. (Ans. 20; Pasley 9
2:58-60). Moreover, as discussed supra, Stirling describes a hole wherein 10
the large end of the hole is tapered. Therefore, the Examiner did not err in 11
combining Pasley’s plug, designed to close the large end of a tapered hole, 12
with Stirling’s hole that is tapered at the large end. 13
Claims 8-10 14
Claim 8 recites, 15
8. The panel structure of claim 5, wherein the head includes 16
a recess formed in a top surface, the plug including a projection 17
configured to project into the recess. 18
19
Claim 9 recites, 20
9. The panel structure of claim 5, wherein the plug 21
comprises a generally fluid material. 22
23
Claim 10 recites, 24
10. The panel structure of claim 9, wherein the plug is 25
formed of urethane. 26
(App. Br. Appendix 21). 27

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The Appellants assert that the additional limitations of claims 8-10 1
render those claims patentable. (App. Br. 17-19). 2
This argument is unpersuasive as the Appellants have not established 3
that it would have been beyond the skill of an ordinarily skilled artisan at the 4
time of the invention to (1) understand that the shape of a plug made of 5
epoxy would conform to the shape of the anchor head, (2) that epoxy is “a 6
generally fluid material,” and (3) that epoxy urethane is old and well known 7
in the art and one would know how to use it (see Ans. 21, citing Tosh, US 8
Patent 4,705,841). As we have stated, an artisan must be presumed to know 9
something about the art apart from what the references disclose. See In re 10
Jacoby, 309 F.2d 513, 516 (CCPA 1962). 11
We note that the Appellants have put forth no persuasive evidence 12
that the further limitations of claims 8-10 would have been unobvious to the 13
skilled artisan. Accordingly, this argument does not persuade us of error. 14
Claims 13-14 15
Claim 13 recites, 16
13. The panel structure of claim 1, further comprising an 17
insert disposed in the underlayment, the insert being configured 18
to receive the securing portion of the fastener. 19
20
Claim 14 recites, 21
14. The panel structure of claim 13, wherein the insert is 22
threaded. 23
24
(App. Br. Appendix 21). 25
The Appellants assert that the additional limitations of claims 13 and 26
14 render the claims patentable. (App. Br. 19-21). Such an argument 27
essentially represents that the Appellants are unaware of any material art 28

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contrary to this assertion (see 37 CFR §56(b)(2)(ii)), and asks this panel to 1
accept the position that a common wall anchor with a thread would not have 2
been obvious to use as an anchor in the claimed structure. 3
This argument is unpersuasive. The Appellants have provided no 4
persuasive evidence that it would have been beyond the skill of an ordinarily 5
skilled artisan at the time of the invention to dispose a threaded insert in the 6
underlayment and configure it so as to receive a securing portion of the 7
fastener, as claimed. As the Examiner stated, such a design step would have 8
been obvious and considered well within the grasp of a person of ordinary 9
skill in the art of fasteners at the time of the invention. (Ans. 22)(citing KSR 10
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007)). 11
Without persuasive evidence to the contrary, the Appellants’ 12
argument fails. 13
Claims 15 and 16 14
Claim 15 recites, 15
15. The panel structure of claim 1, wherein the head and the 16
securing portion are integral. 17
18
Claim 16 recites, 19
16. The panel structure of claim 1, wherein the head is 20
configured to connect onto the securing portion. 21
22
(App. Br. Appendix 21). 23
The Appellants assert that that the combined references do not 24
describe a panel structure, as recited in claims 15 and 16. (App. Br. 21-22). 25
With respect to Stirling, the Appellants concede that “the head and the 26
securing portion of the screw are likely integral,” as recited in claim 15. (Id. 27

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21). However, according to the Appellants, the Examiner’s suggested 1
modification of Stirling replaces the screw with the fastener of Pasley 2
causing the Stirling fastener to be “irrelevant.” 3
This argument is unpersuasive. As discussed, supra, Stirling by itself 4
recites the limitations of claim 1. Thus, Stirling’s teaching a panel structure 5
wherein the head and the securing portion are integral is relevant and renders 6
claims 15 obvious. 7
Next, the Appellants assert that Pasley does not describe the 8
limitations of claim 16 because Pasley does not teach that the securing 9
portion 28 extend into the underlayment, as required by claim 1, from which 10
claim 15 depends.” (Id. 21-22). 11
This argument remains unpersuasive for the same reasons as claim 1. 12
Claim 17 13
Claim 17 recites, 14
17. The panel structure of claim 1, wherein the securing 15
portion includes a first section and a second section, the first 16
section being configured to attach to the head and the second 17
section extending into the underlayment. 18
19
(App. Br. Appendix 21). 20
The Appellants assert that the Examiner erred in rejecting claim 17 for 21
the same reasons asserted for claim 13. Further, the Appellants assert that 22
the combined references do not describe that the securing portion recited in 23
claim 17. 24
This argument is not persuasive. As the Examiner stated, Pasley 25
teaches that the fastener may have a removable head portion while leaving 26
the securing portion secured to the underlayment. (Ans. 23). Consequently, 27

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Pasley describes the limitations of claim 17 and the Examiner has not erred 1
in rejecting the claim. 2
Claims 18-23 and 29, 24-27, 30-34, 40-42, 46 and 48 3
The Appellants challenge the Examiner’s rejection: 4
- of claims 18-23 and 29 by repeating the assertions raised regarding 5
the rejection of claim 1. (App. Br. 24-25). 6
- of claims 24-27 for the same reasons asserted for claims 7-10, 7
respectively. (App. Br. 26-29). 8
- of claims 30-34 for the same reasons asserted for claims 13-17, 9
respectively. (App. Br. 29-33). 10
- claims 40-42 for the same reasons asserted for claims 8-10, 11
respectively. (App. Br. 34-36). 12
- of claims 46 and 48 for the same reasons asserted for claims 13 and 13
16, respectively. (App. Br. 37-38). 14
These assertions are unpersuasive for the reasons discussed, supra. 15
Claim 35-39, 43 and 47 16
Representative Claim 35 recites, 17
35. A method for installing a bowling lane, comprising; 18
Forming a tapered hole in a lane panel, the lane panel 19
having a top and a bottom surface, the tapered hole extending 20
from the top surface of the lane panel to the bottom surface of 21
the lane panel, wherein the area of the tapered hole is larger at 22
the top surface than at the bottom surface; 23
placing the lane panel on an underlayment; 24
driving a securing portion of a fastener into the 25
underlayment; and 26
driving a head of the fastener into the tapered hole in the 27
lane panel, the head having a wall having a taper at 28
substantially the same angle as the tapered hole. 29

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1
(App. Br. Appendix 24). 2
The Appellants assert that claim 35 is patentable because 3
Stirling does not describe a method. (App. Br. 34). The Appellants, 4
however, note that “[i]nasmuch a method may be implicit in the 5
description of Stirling’s structure....the Examiner has failed to identify 6
any such method steps on the record” (Id.). The Appellants further 7
assert the that the claim is not obvious for the same reasons raised 8
regarding claims 1 and 7. 9
This argument is not persuasive. Stirling’s structure implicitly 10
describes a method for installing the bowling lane (see, at a minimum, 11
the Abstract, where fasteners are positioned in recessed in the overlay 12
upper sheet and extend through the tapered hole in the sheet for 13
securement to the lane, followed by force fitting plugs). Thus, it 14
would have been obvious to a person of ordinary skill in the art at the 15
time of the invention to install a bowling lane according to the 16
teachings of Stirling. Consequently, the Appellants have not shown 17
error on the part of the Examiner. 18
Claim 44 19
Claim 44 recites, “The method of claim 38, comprising snapping the 20
plug onto the head.” (App. Br. Appendix 24). Claim 38 recites, “The 21
method of claim 35, further comprising installing a plug into the tapered 22
hole above the head of the fastener.” (Id.). 23
The Appellants assert that the additional limitation of claim 44 renders 24
the claim patentable. While we agree that neither Stirling nor Pasley 25
describe a plug snapped onto the fastener, and reverse this rejection as it 26

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applies to claim 44, we nonetheless exercise our discretion and enter a new 1
ground of rejection as follows. 2
Claim 44 is rejected under 35 U.S.C. § 103(a) over the combination of 3
Stirling, Pasley and Bowen. 4
Bowen describes an ornamental cap for screws and fasteners. Bowen 5
Figure 2 is reproduced below: 6
7
{Figure 2 is a cross sectional view of a fastener with a snap-on cap.} 8
Stirling and Pasley are as discussed in the Examiner’s rejection. It 9
would have been obvious to one of ordinary skill in the art at the time the 10
invention was made to use a snap-on cap as described in Bowen as a plug in 11
the tapered hole above the head of the fastener as claimed in claim 44 to 12
obtain the decorative improvements in covering a marred surface, as 13
described in Bowen p. 1, l.80. 14
Accordingly, we affirm the Examiner’s rejections, except as to claim 15
44, and enter a new ground of rejection as to claim 44 as discussed above. 16

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II. The Rejection of Claims 11, 28 and 45 under 35 U.S.C. § 103(a) 1
over Stirling, Pasley and Bowen. 2
Claims 11, 28 and 45 stand rejected under 35 U.S.C. § 103(a) over the 3
combination of Stirling, Pasley and Bowen (US Patent 4,137,681). Claims 4
11, 28 and 45 and depend from claims 1, 18 and 35, respectively. 5
Representative Claim 11 recites, 6
11. The panel structure of claim 5, wherein the plug and the 7
head are attached by a ball joint. 8
9
Claim 5 recites, 10
5. The panel structure of claim 1, further comprising a plug 11
disposed within the tapered hole above the fastener. 12
13
Specifically, the Examiner found that Stirling and Pasley do not 14
describe a ball joint. (Non-Final Rejection, Jun. 6, 2006, p. 2, incorporated 15
by reference in Final Rejection, Nov. 14, 2006, p. 2). However, the 16
Examiner found that Bowen teaches that it would have been obvious to a 17
person of ordinary skill in the art at the time of the invention to “use a ball 18
and socket in a fastener like the one shown by Stirling in order to attach a 19
finishing cap or cover.” (Id.). 20
The Appellants assert that the Examiner erred in relying on Bowen as 21
teaching the additional limitations of claims 11, 28 and 45 because “Bowen 22
does not show a ball joint, nor is a ball joint discussed in the disclosure of 23
Bowen.” (App. Br. 38). According to the Appellants, Bowen’s figures only 24
describe that a “cap 6 has a concave upper surface with downward extending 25
slits 7a, 7a (fingers) which attach to the head of the fastener 4 (wood 26
screw).” (Id. 39). 27

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23
This argument is not persuasive. As the Examiner stated, Bowen 1
describes a plug 6 fit in a socket 4 provided in the head of the fastener. (See 2
Bowen Figs. 1-4; p. 1, l. 89). Bowen also describes that the cap consists of a 3
simple disk 6 that is dished to give it a concavo-convex shape. (Id. p. 1, ll. 4
98-102 ). Additionally Bowen describes that the disk 6 is completely 5
circular. (Id. p. 2, ll. 27-28; Fig 4). The Appellants have not established 6
otherwise with persuasive evidence. 7
Accordingly, we affirm the Examiner’s rejections. 8
CONCLUSION OF LAW 9
On the record before us, the Appellants have not shown error on the 10
part of the Examiner. It would have been obvious to one of ordinary skill in 11
the art at the time the invention was made to combine known elements of the 12
prior art to provide the claimed panel structure for a bowling lane. 13
DECISION 14
The Rejection of claims 1-10, 12-27, 29-43 and 46-48 under 35 15
U.S.C. §103(a) as being unpatentable over Stirling (US Reissue Patent 16
35,778) and Pasley (US Patent 4,137,681) is AFFIRMED. 17
The Rejection of claims 11, 28 and 45 under 35 U.S.C. §103(a) as 18
being unpatentable over Stirling, Pasley and Bowen is AFFIRMED. 19
A new ground of rejection is entered against claim 44. Claim 44 is 20
rejected under 35 U.S.C. §103(a) as being unpatentable over the 21
combination of Stirling, Pasley and Bowen. 22
No time period for taking any subsequent action in connection with 23
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). The 24
Appellants are directed to the provisions of 37 CFR §41.50(b). 25

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1
AFFIRMED 2
ack 3
4
cc: 5
6
GREENBLUM & BERNSTEIN, P.L.C. 7
1950 ROLAND CLARKE PLACE 8
RESTON, VA 20191 9