Ex Parte Hannig

Patent Trial and Appeal Board

Feb 28, 2017

13027368 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/027,368 02/15/2011 Hans-Jiirgen HANNIG LSP-27 6719
20311 7590 03/02/2017
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
FONSECA, JESSIE T
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-JURGEN HANNIG
Appeal 2016-007622
Application 13/027,368
Technology Center 3600
Before JILL D. HILL, JAMES J. MAYBERRY, and SEAN P. O’HANLON,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans-Jiirgen Hannig (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—8 and 13—17.1 Appellant’s
representative presented oral argument on February 23, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 9—12 have been canceled.
Appeal 2016-007622
Application 13/027,368
BACKGROUND
Independent claims 1 and 18 are pending. Claim 18 has been allowed.
Final Act. 1. Independent claim 1, reproduced below, illustrates the claimed
invention, with certain disputed limitations emphasized.
1. A floor panel comprising:
a carrier layer comprising a plastic material that is pliable
and elastic at an application temperature of the floor panel;
a decorative layer being disposed above the carrier layer;
a first complementary mechanical locking means being
provided on a first two panel edges of the floor panel such that
the floor panel is capable of being coupled together with a
second floor panel of the same configuration as the floor panel
to form a first locked state and in the first locked state to
counteract a moving apart of the floor panel and the second
floor panel in a horizontal plane and a vertical plane;
a second complementary mechanical locking means
being provided on a second two panel edges such that the floor
panel is capable of being coupled together with a third floor
panel of the same configuration as the floor panel to form a
second locked state and in the second locked state to counteract
a moving apart of the floor panel and the third floor panel in
the horizontal plane and the vertical plane;
the first complementary locking means being a
complementary tongue and groove, the groove on one of the
first two panel edges of the floor panel and the tongue on an
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Application 13/027,368
opposite panel edge of the first two panel edges of the floor
panel;
the tongue and the groove each include an undercut, the
undercut of the tongue of the complementary tongue and
groove of the floor panel and the undercut of the groove of the
complementary tongue and groove of the second floor panel
cooperate in the first locked state to counteract the moving apart
of the floor panel and the second floor panel in the horizontal
plane;
the second complementary locking means being
complementary hook elements, the complementary hook
elements forming the second locked state through a vertical
movement between one of the complementary hook elements
on one of the second two panel edges of the floor panel and an
other of the complementary hook elements on an opposite panel
edge of the second two panel edges of the third floor panel;
each of the hook elements includes an inward facing
vertical undercut surface, the inward facing vertical undercut
surface of the one of the complementary hook elements of the
floor panel and the inward facing vertical undercut surface of
the other complementary hook elements of the third floor panel
cooperate in the second locked state to counteract a moving
apart of the floor panel and the third floor panel in the
horizontal plane;
each of the complementary hook elements has an
outward facing vertical surface with a corrugated profde,
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Application 13/027,368
wherein the corrugated profile of the one of the complementary
hook elements has at least one locking projection on the
outward facing vertical surface and the corrugated profile of the
other of the complimentary hook elements has at least one
locking recess on the outward facing vertical surface, the
corrugated surfaces being complimentary over an entire height
of the corrugated profiles, the at least one locking projection on
the outward facing vertical surface of the one of the
complementary hook elements of the floor panel fits in the at
least one locking recess on the outward facing vertical surface
of the other of a complementary hook elements of the third
floor panel in the second locked state to counteract a moving
apart of the floor panel and the third floor panel in the vertical
plane;
wherein the one of the second two panel edges of the
floor panel abuts the one of the second two panel edges of the
third floor panel; and
at least one edge of the second two panel edges has an
edge break-away point at the decorative layer, wherein the
corrugated profile of the at least one edge of the second two
panel edges extends up to the edge break-away point.
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Application 13/027,368
REJECTIONS2
Claims 1—4, 8, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pervan ’838 (US 2008/0209838 Al; pub. Sept. 4, 2008),
Thiers (US 6,931,811 B2; iss. Aug. 23, 2005), and Hannig (WO
2006/133690 Al; pub. Dec. 21, 2006). Final Act. 3.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Pervan ’838, Thiers, Hannig, and Nelson (US 6,345,481 Bl; iss. Feb. 12,
2002). Final Act. 8.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Pervan ’838, Thiers, Hannig, and Chen (US 2006/0032175 Al; pub. Feb. 16,
2006). Final Act. 8.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Pervan ’838, Thiers, Hannig, and Moriau (US 6,006,486; iss. Dec. 28,
1999). Final Act. 9.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pervan ’838, Thiers, Hannig, and Pervan ’528 (US
2002/0046528 Al; pub. Apr. 25, 2002). Final Act. 10.
OPINION
Appellant argues claims 1—4, 8, 16, and 17 as a group. We select
independent claim 1 as representative. Claims 2-4, 8, 16, and 17 stand or
fall with claim 1. In addition, Appellant makes no argument that claims 5, 6,
9, 13, and 14 would be patentable over the applied references, if claim 1 is
not patentable over Pervan ’838, Thiers, and Hannig.
2 The Examiner withdrew the rejection of claims 1—8 and 13 under 35
U.S.C. § 112,12, in the Advisory Action dated Dec. 17, 2015.
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Application 13/027,368
Regarding independent claim 1, the Examiner finds that Pervan ’838
discloses the recited claim limitations, including “a first complementary
mechanical locking means (tongue [22] and groove [23])” on the long sides
of the floor panels that lock to prevent vertical and horizontal movement,
and a “second complementary locking means (A and 8) (fig. 9f)” on the
short sides of the floor panels to prevent horizontal movement. Final Act. A-
5. The Examiner finds that Pervan ’838 does not disclose, inter alia, the
complementary hook elements A and 8 in Figure 9f having respective
outward facing vertical surfaces with corrugated profiles that are
complementary over an entire height of the corrugated profiles. Id. at 6.
The Examiner finds this teaching of corrugated profiles in Hannig’s floor
panel, which includes hook elements 9, 10 including “a corrugated profile
having projections and recesses on vertical surfaces of the hook elements
interlocking with one another (figs. 2-4).” Id. at 7. The Examiner concludes
that it would have been obvious to include Hannig’s corrugations on the
vertical walls of the locking means shown in Figure 9f of Pervan ’838 “to
provide a sealed joint that resists movement of the panels in both the
horizontal and vertical planes. No new or unpredictable results would be
obtained from substituting one known floor hook system for another.” Id.
Appellant argues that “Hannig relates to a floor panel made of
timber[,] and is not combinable with a floorboard made of plastic.” Appeal
Br. 12. According to Appellant, Hannig is expressly designed “to exploit. .
. a decreasing density of the derived timber material with increasing material
depth (see col. 2, lines 1-4, of Hannig),” such that “Hannig teaches away
from applying the invention to a floorboard with a core made of a plastic
material” as claimed. Id. at 13.
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The Examiner responds that Hannig does not teach away because
Hannig provides no disclosure that discredits or discourages use of its hook
elements with a plastic floor panel. Ans. 2. We agree with the Examiner.
To “teach away,” the prior art must “criticize, discredit, or otherwise
discourage the solution claimed.” See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). We are not persuaded that “exploiting” a changing
material density criticizes, discredits, or otherwise discourages use of
Hannig’s corrugations in Pervan’s plastic floor panel.
Appellant also argues that Hannig fails to disclose a corrugated profile
as claimed. Appeal Br. 12. According to Appellant, Hannig’s “humps 25
and 26” elastically deform during mating of the floor panels, and that this
deformation occurs at a great distance from a top of the floor panels, such
that the corrugations cannot extend up to the edge of the break-away point as
recited in claim 1. Appeal Br. 13—14.
We are not persuaded by this argument, because it does not address
the combination of Pervan ’838 and Hannig proposed by the Examiner,
wherein Hannig’s corrugations would be applied the Pervan’s vertical walls
to provide vertical locking. The location of Hannig’s corrugations, even if
they do not “extend[] up to the edge break-away point,” do not change the
fact that the Examiner proposes to locate them in Pervan ’838 such that they
extend to the break-away point.
Appellant further argues that Hannig’s corrugations are not shown to
be complementary “over an entire height of the corrugated profiles,” as
recited in claim 1, because there are gaps between the two corrugated
surfaces. Appeal Br. 15.
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The Examiner disagrees, arguing that Hannig’s mating corrugations
are complementary, because they interact to cause vertical locking in
Hannig’s hooks elements. Ans. 3. The Examiner also notes that Appellant’s
hook elements, shown in detail in Figures 2a and 2b, would also appear to
interlock such that gaps are created between the hook elements. Id.
We agree with the Examiner. Given the depiction of the
“complementary” corrugations in Appellant’s Specification, we decline to
construe the term “complementary” to exclude gaps as shown in Hannig’s
corrugations.
Appellant then argues that one skilled in the art, combining the
teachings of Pervan ’838 and Hannig, would removal all “protruding parts”
of Hannig, because Pervan ’838 teaches away from vertical locking. Appeal
Br. 17 (citing Pervan ’838,127).
We are not persuaded by Appellant’s argument, because consideration
of paragraph 27 of Pervan ’838 teaches that the short sides of the floor
panels could be (1) snapped in with lower force, (2) “produced with a
locking system [that] only locks horizontally,” (3) without any locking
system, or (4) secured by gluing and/or nailing. We decline to consider
Pervan’s claims to define (or narrow) what Pervan ’838 teaches a person
skilled in the art. See Reply Br. 2.
As set forth above, to teach away, the prior art must “criticize,
discredit, or otherwise discourage the solution claimed.” See Fulton, 391
F.3d at 1201. It is not enough for the prior art to state that a particular
combination is not a preferred embodiment. See id. at 1199—1200. Thus,
even if we agree that Pervan ’838 considers vertical locking on the short side
of a floor panel to be a non-preferred embodiment, this does not rise to the
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level of teaching away, because it merely discloses an embodiment that,
even if less preferred, does not cause the disclosure of Pervan’838 to rise to
the level of criticizing, discrediting, or otherwise discouraging vertical
locking on a short side of the floor panel.
Appellant lastly contends that, even if Pervan ’838 does not teach
away from vertical locking on short sides of the floor panels, “there is
nothing which would suggest utilizing the corrugations of Hannig” to
provide such vertical locking, such that the Examiner’s selection of Hannig’s
corrugations to provide vertical locking is based “only on hindsight.” Reply
Br. 3^4.
In the Final Action, the Examiner reasoned that it would have been
obvious to include Hannig’s corrugations on the vertical walls of Pervan’s
locking means shown in Figure 9f “to provide a sealed joint that resists
movement of the panels in both the horizontal and vertical planes. No new
or unpredictable results would be obtained from substituting one known
floor hook system for another.” Final Act. 7. Appellant’s contention that
Pervan ’838 does not suggest using corrugations to providing vertical
locking does not persuade us that the Examiner’s reasoning lacks a rational
basis, and we therefore are not persuaded by this argument.
For the reasons set forth above, we sustain the pending rejections.
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DECISION
We AFFIRM the all of the pending rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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