Ex Parte Grafenauer

Board of Patent Appeals and Interferences

Mar 10, 2009

10697567 (B.P.A.I. Mar. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS GRAFENAUER
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Appeal 2008-4135
Application 10/697,567
Technology Center 3600
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Decided: 1 March 11, 2009
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Before: WILLIAM F. PATE III, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304 (2008), begins to run from the Decided
Date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or the Notification Date (electronic delivery).

Appeal 2008-4135
Application 10/697,567

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1, 3-7, 9, 12 and 13 under 35 U.S.C. § 102(b) (2002) as
being anticipated by Pålsson (WO 01/75247 A1, publ. Oct. 11, 2001). We
have jurisdiction under 35 U.S.C § 6(b) (2002).
We AFFIRM the rejections of claims 1 and 3. We REVERSE the
rejections of claims 4-7, 9, 12 and 13.
The claims on appeal relate to a floor panel which ensures locking
both in the transverse direction and in the vertical direction. (Spec. 1, ll. 32-
35). Claim 1 is typical of the claims on appeal:

1. A floor panel which is bounded in a
horizontal plane by a top side having a decorative
layer, and an underside provided for bearing on an
underlying surface, the floor panel being provided
with means for releasably connecting at least two
panels, wherein the connecting means are formed
on at least one first side edge such that locking
takes place in a transverse direction (Q) and
vertical direction (V), and further comprising
form-fitting elements for locking in the vertical
direction (V) with a further panel formed on a
second side edge running at an angle to the first
side edge, wherein the form-fitting elements are
spaced apart from one another in the transverse
direction (Q) and in the vertical direction (V) on
two spaced-apart, essentially vertically oriented
walls, and further comprising a tongue formed on
the first side edge and extending in the longitudinal
direction of the first side edge, and a recess
corresponding to the tongue formed on an opposite
side edge, wherein an underside of the tongue,
starting from a tip of the tongue, has a
continuously curved contour and wherein a radius
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of curvature of the contour of the underside of the
tongue is constant over at least 90 degrees.

Pålsson discloses flooring material comprising sheet-shaped floor
elements. The floor elements are joined by means of joining members on
the edges of the floor members. (Pålsson 2-3).

ISSUES
The Appellant argues claims 1 and 3 together, contending that Pålsson
fails to disclose form-fitting elements, for locking in the vertical direction
with a further panel, formed on a second side edge running at an angle to the
first side edge, wherein the form-fitting elements are spaced apart from one
another in the transverse direction and in the vertical direction on two
spaced-apart, essentially vertically oriented walls. (App. Br. 5-6). The
Examiner finds that snapping hooks 23 formed on a vertical inner wall of a
side edge of Pålsson’s floor element and the slope formed on a mainly
vertical lower cheek surface 21 of the side edge constitute form-fitting
elements for locking in a vertical direction. (Ans. 6).
The Appellant argues claim 4 separately, contending that Pålsson fails
to disclose undercuts formed on an inner wall and an outer wall which
correspond with the one and the other form-fitting elements. (App. Br. 9
and 10). The Examiner finds that an outer wall of one edge of Pålsson’s
floor element includes undercuts 24. (Ans. 4). The Examiner further finds
that the mainly vertical upper cheek surface 22 of the inner wall of the same
edge could be an “undercut” if the floor element is flipped upside-down.
(Ans. 8-9). The Examiner finds that the undercuts 24 correspond to the
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snapping hooks 23 and that the mainly vertical upper cheek surface 22
corresponds to the slope formed on the lower cheek surface 21. (Ans. 4).
The Appellant argues claims 5-7 as a group, contending that Pålsson
fails to disclose a first step-like milled relief including an essentially
horizontal head surface with a channel formed therein. (App. Br. 14-15).
The Examiner finds that Pålsson’s male vertical joining member 10′′′
constitutes a step-like relief and that the space between lower cheek surface
21 and the vertical wall of the floor element opposite the lower cheek
surface constitutes a channel in the otherwise horizontal surface which may
be faired over the lowermost face of the male vertical joining member 10′′′.
(Ans. 9-10).
The Appellant argues claim 12 separately, contending that Pålsson
fails to disclose walls forming at least a portion of a tongue and a groove or
recess on a first side edge of the floor panel being sized and shaped to form a
dust pocket. (App. Br. 12 and 16). The Examiner finds that the size and
shape of Pålsson’s tongue and groove are similar to the size and shape of the
tongue and groove disclosed in the Appellant’s Specification (Ans. 6) and
that the tolerances necessary in the design and manufacture of floor elements
such as Pålsson’s are such as to inherently form a dust pocket (Ans. 10-11
and 12-13).
The Appellant’s contentions raise four issues:
Has the Appellant shown that the Examiner erred in
finding that Pålsson discloses form-fitting elements for locking
in the vertical direction with a further panel formed on a second
side edge running at an angle to the first side edge, wherein the
form-fitting elements are spaced apart from one another in the
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transverse direction and in the vertical direction on two spaced-
apart, essentially vertically oriented walls?
Has the Appellant shown that the Examiner erred in
finding that Pålsson discloses undercuts formed on an inner
wall and an outer wall which correspond with the one and the
other form-fitting elements?
Has the Appellant shown that the Examiner erred in
finding that Pålsson discloses walls forming at least a portion of
a tongue and a groove on a first side edge of the floor panel
being sized and shaped to form a dust pocket?
Has the Appellant shown that the Examiner erred in
finding that Pålsson discloses a first step-like milled relief
including an essentially horizontal head surface with a channel
formed therein?

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Pålsson’s floor element 1 has a male joining member 10′ on a
first edge 2′ and a female joining member 10′′ on a second edge 2′′ opposite
the first edge 2′. (Pålsson 6, ll. 24-27).
2. The male joining member 10′ of Pålsson’s floor member 1 is
provided with a tongue 11 and the female joining member 10′′ is provided
with a groove 13. (Pålsson 6, ll. 27-30).
3. Fig. 1 of Pålsson shows first and second edges 2′, 2′′ of adjacent
floor elements in cross-section during joining. (Pålsson 5, ll. 27-28). Fig. 1
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does not show any space between the tongue 11 and the groove 13 sized and
shaped to form a dust pocket.
4. Pålsson’s floor element 1 is also provided with a male vertical
assembly joining member 10′′′ on a third edge 2′′′ and a female vertical
assembly joining member 10IV on a fourth edge 2IV opposite the third edge
2′′′. (Pålsson 7, ll. 22-25).
5. Fig. 5 of Pålsson shows the male vertical assembly joining
member 10′′′ as having a downwardly projecting portion at its outer edge
and the female vertical assembly joining member 10IV as having an
upwardly projecting portion at its outer edge. The outermost surfaces of
both projecting portions are shown as horizontal and flat with no channels.
6. The male vertical assembly joining member 10′′′ of Pålsson’s
floor member 1 is provided with a mainly vertical lower cheek surface 21
arranged parallel to the third edge 2′′′. A mainly vertical upper cheek
surface 22 is arranged on the female vertical assembly joining member 10IV.
(Pålsson 7, ll. 25-31). Fig. 5 of Pålsson shows the lower cheek surface 21
and the upper cheek surface 22 as being formed with a slope relative to the
vertical direction so that the lower cheek surface 21 fits the form of the
upper cheek surface 22. The upper and lower cheek surfaces 21, 22 are
intended to interact so that two adjacent floor elements are locked against
each other in a horizontal direction. (Pålsson 7, ll. 25-31).
7. Fig. 5 of Pålsson appears to show the upper and lower cheek
surfaces 21, 22 as being smooth without undercuts.
8. The male vertical assembly joining member 10′′′ of Pålsson’s
floor member 1 also is provided with two snapping hooks 23 while the
female vertical assembly joining member 10IV is provided with matching
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undercuts 24. (Pålsson 7, l. 31 – 8, l. 2). Fig. 5 of Pålsson shows the
snapping hooks 23 arranged on an outer wall of the male vertical assembly
joining member 10′′′ and the undercuts 24 arranged on an inner wall of the
female vertical assembly joining member 10IV. Fig. 5 further shows that the
outer wall on which the snapping hooks 23 are formed is spaced transversely
from the lower cheek surface 21. The snapping hooks 23 and the undercuts
24 limit the vertical movement between two joined adjacent floor elements.
(Pålsson 7, l. 31 – 8, l. 2).
9. Fig. 5 of Pålsson shows the snapping hooks 23 positioned
above the vertical extent of the lower cheek surface 21.
10. By locking the two adjacent floor elements against each other in
a horizontal direction, the upper and lower cheek surface 21, 22 hold mating
horizontal surfaces of the snapping hooks 23 and the undercuts 24 against
each other, thereby locking the two floor elements against vertical
movement. Since the upper and lower cheek surfaces 21, 22 are sloped,
the two surfaces also cooperate to lock two floor elements against vertical
movement by resisting vertically upward movement of the female vertical
assembly joining member 10IV of one floor element relative to the male
vertical assembly joining member 10′′′ of the other floor element.
11. Pålsson discloses providing cavities in the joint between two
joined floor elements. (Pålsson, 4, l. 25).

PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A claim under
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examination is given its broadest reasonable interpretation consistent with
the underlying specification. In re American Acad. of Science Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of an express
definition of a claim term in the specification, the claim term is given its
broadest reasonable meaning in its ordinary usage as the term would be
understood by one of ordinary skill in the art. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). Limitations not expressed in the language of the
claims cannot be imported from the specification. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

ANALYSIS
The snapping hooks 23 and the slope formed on the lower cheek
surface 212 of Pålsson’s male vertical assembly joining member 10′′′ are
form-fitting elements in the sense that the snapping hooks and the slope
formed on the lower cheek surface are configured to fit the forms of the
undercuts 24 and the upper cheek surface 22 of Pålsson’s female vertical
assembly joining member 10IV of another floor element. (See FF 6 and 8).
The snapping hooks are spaced apart from the slope formed on the lower
cheek surface in the transverse direction and in the vertical direction. (See
FF 6, 8 and 9).
The slope formed on Pålsson’s lower cheek surface 21 is formed on
an essentially vertical wall. Looking to the Appellant’s Specification for

2 The slope formed on the lower cheek surface 21 may be thought of as
the right-triangular prism of material between the lower cheek surface itself
and a vertical plane extending upwardly from the upper edge of the lower
cheek surface.
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guidance, form-fitting action by shoulders 25, 250 of the floor panels
disclosed by the Appellant lock the panels in the transverse direction. (Spec.
6, ll. 18-22). The Appellant’s Fig. 3 indicates that it is the interaction of
the inner surfaces 27, 270 of the shoulders 25, 250 which lock the panels
against separation in a transverse direction. Absent a clearer indication
of the meaning of the term “essentially vertical” from the Appellant’s
Specification, the term is sufficiently broad to include surfaces sufficiently
vertical to lock adjacent panels against movement in the transverse direction.
In this sense, Pålsson’s upper and lower cheek surfaces 21, 22 are essentially
vertical. (See FF 7).
The form-fitting elements, that is, the snapping hooks 23 and the slope
formed on the lower cheek surface 23 are for locking adjacent floor elements
in the vertical direction. Since the upper and lower cheek surfaces 21, 22 are
sloped, the two surfaces cooperate to lock two floor elements against vertical
movement by resisting vertically upward movement of the female vertical
assembly joining member 10IV of one floor element relative to the male
vertical assembly joining member 10′′′ of the other floor element. (FF 10).
Since the Specification fails to define the term “locking in the vertical
direction,” this is all that the language of claim 1 requires.
Even were claim 1 interpreted narrowly so as to require the form-
fitting elements to lock the floor elements in the vertical direction so as to
prevent upward movement of the recited floor element, the upper and lower
cheek surface 21, 22 lock mating horizontal surfaces of the snapping hooks
23 and the undercuts 24 in engagement. This interaction locks the two floor
elements against upward movement of the recited element. (FF 10).
Therefore, Pålsson discloses form-fitting elements for locking in the vertical
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direction with a further panel formed on a second side edge running at an
angle to the first side edge, wherein the form-fitting elements are spaced
apart from one another in the transverse direction and in the vertical
direction on two spaced-apart, essentially vertically oriented walls.
The ordinary meaning of the term “undercut” is “the result of cutting
away from the underside of anything.” WEBSTER’S THIRD NEW INT’L
DICTIONARY at 2488 (G&C Merriam Co. 1971)(“undercut,” entry 2, def. 1).
The term “undercut” as used in claim 4 must be understood in the context of
that claim. Claim 4 depends from claim 1, which recites a top side and an
underside of the panel. Claim 4 recites that the second step-like milled relief
starts from the top side. This recitation implies that the second step-like
milled relief is relieved in an upward direction. Hence, the term “undercut”
as used in claim 4 must refer to the result of cutting away from the underside
of anything relative to the upward direction defined by the direction in
which the second step-like milled relief projects.
Pålsson’s female vertical assembly joining member 10IV has undercuts
24 which correspond to the snapping hooks 23 of a male vertical assembly
joining member 10′′′ of an adjacent floor element. (FF 8). Pålsson’s upper
and lower cheek surfaces 21, 22 have no undercuts. (FF 7). In particular,
the upwardly projecting section at the outer end of the female vertical
assembly joining member 10IV is not an undercut when the floor element is
in the orientation meeting the other limitations of claims 1 and 4. Therefore,
Pålsson does not disclose undercuts formed on an inner wall and an outer
wall which correspond with the snapping hooks 23 and the slope formed on
the lower cheek surface 21.
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There is no basis in Pålsson or in the common knowledge in the art for
finding that design or manufacturing tolerances inherently will result in the
tongue and groove of a floor panel joint being sized and shaped to form a
dust pocket. Pålsson discloses providing cavities in the joint between two
joined floor elements. (FF 12). This disclosure implies that such cavities
are not provided as a necessary result of design and manufacturing
tolerances. Pålsson does not disclose expressly (see FF 3) or inherently that
a tongue 11 and a groove 13 are sized and shaped to form a dust pocket.
The ordinary meaning of the term “relief” is “[t]he projection of
figures or forms from a flat background.” The Free Dictionary, http://www
.thefreedictionary.com/relief (last visited March 4, 2009)(def. 6a). One of
ordinary skill in the art would understand the head surface of a relief to be
the outermost surface of the relief. The downwardly projecting portion at
the outer edge of the male vertical assembly joining member 10′′′ is a step-
like relief relative to the horizontal surface or channel on the opposite side of
the lower cheek surface 21. (See FF 5). The outermost or “head” surface of
the downwardly projecting portion is flat with no channel formed therein.
(Id.) The horizontal surface on the opposite side of the lower cheek surface
21 from the outermost surface of the downwardly projecting portion is not
a channel formed in the outermost or “head” surface of the projection but
rather the flat surface from which the downwardly projecting portion or
“step-like relief” is relieved. Pålsson does not disclose a first step-like
milled relief including an essentially horizontal head surface with a channel
formed therein.
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CONCLUSIONS
The Appellant has not shown that the Examiner erred in finding that
Pålsson discloses form-fitting elements for locking in the vertical direction
with a further panel formed on a second side edge running at an angle to the
first side edge, wherein the form-fitting elements are spaced apart from
one another in the transverse direction and in the vertical direction on two
spaced-apart, essentially vertically oriented walls. Therefore, the Appellant
has not shown that the Examiner erred in rejecting claims 1 and 3 under
§ 102(b) as being anticipated by Pålsson.
The Appellant has shown that the Examiner erred in finding that
Pålsson discloses undercuts formed on an inner wall and an outer wall which
correspond with the one and the other form-fitting elements. Therefore, the
Appellant has shown that the Examiner erred in rejecting claim 4 under
§ 102(b) as being anticipated by Pålsson.
The Appellant has shown that the Examiner erred in finding that
Pålsson discloses walls forming at least a portion of a tongue and a groove
on a first side edge of the floor panel being sized and shaped to form a dust
pocket. Therefore, the Appellant has shown that the Examiner erred in
rejecting claim 12 under § 102(b) as being anticipated by Pålsson.
The Appellant has shown that the Examiner erred in finding that
Pålsson discloses a first step-like milled relief including an essentially
horizontal head surface with a channel formed therein. Therefore, the
Appellant has shown that the Examiner erred in rejecting claims 5-7, 9 and
13 under § 102(b) as being anticipated by Pålsson.
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DECISION
We AFFIRM the rejections of claims 1 and 3.
We REVERSE the rejections of claims 4-7, 9, 12 and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37
C.F.R. § 1.136(a)(1)(iv) (2007).

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AFFIRMED-IN-PART
JRG

GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
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