Ex Parte Knauseder

Board of Patent Appeals and Interferences

May 10, 2010

11229718 (B.P.A.I. May. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANZ KNAUSEDER
____________

Appeal 2009-012617
Application 11/229,178
Technology Center 3600
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Decided: May 10, 2010
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Before CATHERINE Q.TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-10, 14-16, 18, 19, 22, 23, 28, and 37-43.

1 On page 3 of the Brief, Appellant states that there are no related
appeals or inferences pending, but that he is in the process of preparing an
appeal in parent Application No. 09/814,055. The correct Application No. is
09/814,066, and it is noted that since the time of Appellant’s Brief an Appeal
has, in fact, been filed for this application, as well as a Notice of Docketing,
but no decision had yet been rendered/mailed for this application to date.
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Application 11/229,718

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We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
April 21, 2010.
We REVERSE.
Claim 1 is illustrative:
1. A method of connecting first and second structural components
having a relatively low thickness, the first structural component comprising
a tongue, the second structural component comprising a groove, the tongue
comprising a front end and sides which diverge from the front
end, the groove comprising a groove base and sides which diverge from the
groove base and converge towards an opening of the groove, wherein an
angle of convergence of the sides of the groove is greater than an angle of
divergence of the sides of the groove, the opening having a
width that is greater than the front end of the tongue, the sides of the tongue
having the same angle as the sides of the groove, the tongue further
comprising at least one undercut arranged in a back area of the tongue which
receives a projecting portion of the groove, the method comprising:
pre-applying, at an off-site location, an adhesive to: (i) at least one of the
sides of the groove or (ii) at least one of the sides of the tongue;
pre-applying, at an off-site location, a substance different from the adhesive
and which activates the adhesive to: (i) at least one of the sides of the tongue
or (ii) at least one of the sides of the groove, respectively;
connecting, at a site different from the off-site location, the first and second
structural components together by causing the tongue to be inserted into the
groove.

Appellant appeals the following rejections:
1. Claims 1-3, 5-6, 8, 14-15, 22-23, 28, and 37-42 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Kaindl in view Witex or Breault,
Skoultchi, and Freeman.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kaindl in view of Witex or Breault, Skoultchi, and Freeman, and
further in view of Martensson.
Appeal 2009-012617
Application 11/229,718

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3. Claims 7 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaindl in view of Witex or Breault, Skoultchi, and
Freeman, and further in view of Rehmer.
4. Claims 9-10, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kaindl in view of Witex or Breault, Skoultchi, or
Freeman, and further in view of Marotta.
ISSUE
Has the Examiner erred in determining that the combination of Kaindl
in view of Witex, Breault, Skoultchi and Freeman suggest the aspect of the
claims pertaining to:
pre-applying, at an off-site location, an adhesive to: (i) at least one of
the sides of the groove or (ii) at least one of the sides of the tongue;
pre-applying, at an off-site location, a substance different from the
adhesive and which activates the adhesive to: (i) at least one of the sides of
the tongue or (ii) at least one of the sides of the groove, respectively?

FINDINGS OF FACT
1. Kaindl teaches a tongue and groove arrangement which does
not use an adhesive and teaches that the tongue and groove arrangement is
intended to be easily detachable. English translation, pp. 4-5. Appellant
argues that Kaindl teaches away from their invention because adhesive is not
used, and because the components are intended to be detachable. Br. 10.
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2. Witex teaches to apply a contact adhesive to both the tongue
and groove at the factory. Appellant correctly points out that this is not a
two part adhesive system. Br. 10.
3. Breault teaches to apply a pressure sensitive adhesive to walls
of a groove at the factory. Appellant correctly points out that this is not a
two part adhesive system. Br. 10.
4. Both Skoultchi and Freeman teach state-of-the art two part
adhesive systems. These references do not teach to apply a two part
adhesive system at the factory, followed by adhesion upon installation.

ANALYSIS
While tongue and groove arrangements are known in the art, as
exemplified by Kaindl, and while two part adhesive systems are known in
the art, as exemplified by Skoultchi and Freeman, we agree with Appellant
that the Examiner has not presented a prima facie case of obviousness
regarding the claimed aspect of pre-applying, at an off-site location, an
adhesive to: (i) at least one of the sides of the groove or (ii) at least one of
the sides of the tongue; and pre-applying, at an off-site location, a substance
different from the adhesive and which activates the adhesive to: (i) at least
one of the sides of the tongue or (ii) at least one of the sides of the groove,
respectively, because the Examiner’s rejection lacks sufficient motivation in
so doing, for the reasons discussed below.
It is notable that Kaindl does not use an adhesive because Kaindl
discloses that the components are intended to be detachable. It is also
notable that the teachings of a two part adhesive system found in either
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Skoultchi or Freeman do not include a teaching to pre-apply a two part
adhesive system at the factory, followed by attachment upon installation. In
this light, the Examiner has not identified sufficient reasons that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418. It thus appears that the Examiner’s
conclusion of obviousness is based upon the use of impermissible hindsight
reconstruction in view of Appellant’s Specification rather than upon the
suggestion of the applied art.
Accordingly, we reverse.

DECISION
Each rejection is reversed.

ORDER
REVERSED

Pl initial
sld

ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN VA 22102-8064