Ex Parte Lewark

Board of Patent Appeals and Interferences

Sep 16, 2011

10944427 (B.P.A.I. Sep. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATTHIAS LEWARK
____________

Appeal 2009-014034
Application 10/944,427
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and EDWARD A.
BROWN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-014034
Application 10/944,427

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STATEMENT OF THE CASE
Matthias Lewark (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was conducted on September 13, 2011,
with Andrew M. Calderon appearing on behalf of Appellant.
We REVERSE.
THE INVENTION
Appellant’s invention is directed to a panel, especially a floor panel.
Independent claims 1 and 12, reproduced below are illustrative:
1. A panel comprising a core made of a
woodbased material and having a decoration
applied to a visible side, the visible side having, on
at least one side edge, a chamfer running at an
angle thereto, wherein the chamfer includes a
decoration, and a relief is stamped into the surface
of the chamfer.

12. A floor panel comprising:

a core comprising a woodbased material having a
visible side and at least one side edge;

a first decoration printed directly on the visible
side;

a chamfer provided on the at least one side edge;
and

a second decoration printed directly on the
chamfer.

Appeal 2009-014034
Application 10/944,427

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THE REJECTION
The Examiner has rejected claim 12 under 35 U.S.C. §102(b) as being
anticipated by Thiers (US 2002/0014047 A1, published February 7, 2002);
and has rejected claims 1-11, 13 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Thiers in view of Decker (US 5,573,829, issued
November 12, 1996).

ISSUES
Has the Examiner established that Thiers discloses a floor panel with
a first decoration printed directly on the visible side of a core?
Did the Examiner err in concluding that it would have been obvious,
in view of Decker, to modify the Thiers panel to include a relief stamped
into the surface of a chamfer provided on the panel core?

ANALYSIS
Claim 12--Anticipation--Thiers
The Examiner maintains that the core in Thiers is made up of panel 2
and decorative layer 16, and that decorations in the form of impressions
18A-C are printed directly on the visible surface of the core. (Ans. 3, 8-9).
Even if we accept that the core includes both the panel and decorative layer,
the Examiner has not shown that the printing in the form of the impressions
is effected directly on the visible side of the core, which would be the
decorative layer.
The Examiner maintains that since the impressions are located on the
visible side of the core, the impressions are a decoration printed directly on
the visible side. (Ans. 8). Claim 12 requires more than a printed decoration
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being located on the visible side; it requires that the decoration be printed
directly on the visible side. This language connotes that the printing,
whether it be forming impressions, applying ink, or some other form of
printing, must be directly onto the surface forming the visible side of the
core. Impressions 18A-C in Thiers are shown and described as having a
depth less than that of the transparent layer of synthetic material that overlies
the decorative layer. (Thiers, Fig. 15, p. 3, para. [0056]). Those impressions
are thus not printed directly on the decorative layer, which is, using the
Examiner’s interpretation, the visible side of the core.
The rejection of claim 12 as anticipated by Thiers will not be
sustained.
Claims 1-11, 13 and 14--Obviousness--Thiers/Decker
Claim 1 requires, inter alia, that a chamfer provided on a side edge of
the core have a relief stamped into the surface thereof. The Examiner
acknowledged that the Thiers patent does not disclose this claim feature, but
relied on the teaching of Decker directed to what the Examiner characterizes
as stamping of reliefs into boards, and concluded that it would have been
obvious
to modify the panel of Thiers to include a relief
stamped into the surface of chamfer as taught by
Decker in order to have a uniform and continuous
decorative covering over the viewable surface of
the panel. As per the modification, a decoration
pattern having a synthetic-resin layer with stamped
relief’s would be present on the chamfer
(Ans. 4).
The Examiner further noted that, given the disclosure of Decker, the
person of ordinary skill in the art would recognize that “further continuing
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the decoration from the top side of Thiers to the chamfer would provide a
uniform decorative covering.” (Ans. 10).
Appellant contends, with respect to the Examiner’s position that the
modified Thiers product would have a synthetic-resin layer with a stamped
relief on the chamfer, that the series of manufacturing steps employed by
Thiers would not permit the further continuing of the decoration from the
top side to the chamfer. (Appeal Br. 20; Reply Br. 9-10). Thiers discloses,
as pointed out by Appellant, that a large plate is initially formed by pressing
together a base plate 22, a decorative layer 16 and a resin layer 17. (Thiers,
p. 4, para. [0063], [0064]). The large plate is sawn into panels, and later
subjected to a milling operation. (Id.). As a result, when the chamfer is
formed, the decorative layer and resin layer in that region would be
removed. (See, e.g., Thiers, Fig. 8).
Thus, it does not appear to be possible, without completely revamping
the Thiers manufacturing process to further continue the decoration from the
top side of Thiers to the chamfer, to provide a uniform decorative coating.
In order to apply a decoration pattern having a synthetic resin layer with
stamped reliefs to the chamfer, the modification to Thiers proposed by the
Examiner, it would appear that a second, considerably more complex
pressing operation to bond a decorative strip and a synthetic resin strip to the
chamfered portion would be required. Given that the Examiner has
identified no such operation in the evidence of record, we are of the view
that the Examiner’s reason to combine the teachings at the outset, i.e., to
provide a uniform decorative coating, is not a predictable result, nor is there
any evidence that suggests that a person of ordinary skill in the art would
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have a reasonable expectation of successfully achieving a uniform
decorative coating with the proposed modification to Thiers.
The rejection of claim 1, and of claims 2-8 depending therefrom, will
not be sustained.
Independent claim 9, though somewhat different in scope than claim
1, is subject to the same obviousness rejection based upon the same
proposed modification of Thiers in view of Decker. For the reasons
identified above, the rejection of claim 9, and of claims 10 and 11 depending
therefrom, will not be sustained.
Claims 13 and 14, which depend from claim 12, contain the limitation
present in claim 9 directed to a relief being stamped into the surface of a
chamfer on a floor panel. For the same reasons discussed above with respect
to claim 9, the combination of Thiers and Decker falls short of rendering
obvious these claims, and the rejection will not be sustained.

CONCLUSIONS
The Examiner did not established that Thiers discloses a floor panel
with a first decoration printed directly on the visible side of a core.
The Examiner erred in concluding that it would have been obvious, in
view of Decker, to modify the Thiers panel to include a relief stamped into
the surface of a chamfer provided on the panel core.

DECISION
The decision of the Examiner to reject claims 1-14 is reversed.

REVERSED
Appeal 2009-014034
Application 10/944,427

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