Ex Parte Martensson

Patent Trials and Appeals Board

Feb 28, 2013

11185724 - (D) (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GORAN MARTENSSON
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Appeal 2010-007471
Application 11/185,724
Technology Center 3600
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Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007471
Application 11/185,724

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STATEMENT OF THE CASE
Goran Martensson (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims 1-3
and 6-10 as unpatentable over Hoelscher (DE 3932980 A1; published Nov.
28, 1991)1,2 and Brenneman (US 3,627,362; issued Dec. 14, 1971); (2) claim
4 as unpatentable over Brenneman and Porter (US 5,950,389; issued Sep. 14,
1999); and (3) claim 5 as unpatentable over Hoelscher, Brenneman and
Porter. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention relates to a flooring material having board
shaped flooring elements which are assembled using separate joining
profiles. Spec.1, ll. 1-2; figs. 7a-7d.
Claim 6 is illustrative of the claimed invention and reads as follows:
6. Flooring system comprising board shaped floor
elements, the board shaped flooring elements comprising
a material selected from the group consisting of solid
wood, fibre board and particle board, which floor
elements are provided with edges, a lower side and a
decorative upper surface, whereby the floor elements are
intended to be joined by separate joining profiles,
wherein at least one edge of the floor elements is
provided with one groove each, which grooves are

1 We derive our understanding of this reference from the translation
produced by the automated process provided by the EPO. All references to
the text of this document are to portions of the translation.
2 We note that both the Examiner and Appellant refer to the Hoelscher
reference as “Holscher.” Ans. 3; Br. 5. We shall refer to the reference as
Hoelscher.
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defined by upper and lower cheeks of the material and
when viewed in a cross-section are arranged
perpendicular to its respective edge, the lower cheek of
the material sloping in a downward direction from the
opening of the groove towards an interior portion of the
groove whereby the opening has a smaller dimension at
the opening than the groove dimension remote from said
opening, the joining profiles are provided with lips
arranged in pairs, which lips are intended to each be
received by one of the grooves so that the floor elements
with the grooves at the adjacent edges will be guided
vertically via the lips of the joining profile, which lips are
joined by a middle section of the joining profile.

ANALYSIS
The obvious rejection over Hoelscher and Brenneman
Claims 1-3 and 6-10
Each of independent claims 1 and 6 requires inter alia “the lower
cheek of the material sloping in a downward direction from the opening of
the groove towards an interior portion of the groove.” Br., Claims
Appendix.
The Examiner takes the position that (1) figure 1 of Hoelscher
illustrates “a section of the lower cheek of [the] material is sloping in a
downward direction from the opening of the groove towards an interior
portion of the groove;” (2) “[t]he claim language does not require the entire
lower cheek to be sloped;” and (3) figure 7d of Appellant’s drawings
illustrates an example of an embodiment that has sections of the lower cheek
of the material that are sloping and sections of the lower cheek of the
material that are parallel to the upper cheek of the material. Ans. 9. The
Examiner concludes that Hoelscher
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disclose[s] the lower cheek of the material sloping (at each of
the notches), and the slope is in a downward direction (the slant
of each side of the notch), the downward direction being from
the opening of the groove towards an interior portion of the
groove (the slant of one half of each of the notches).
Id.; Hoelscher, fig. 1. In other words, the Examiner appears to take the
position that Hoelscher discloses grooves defined by upper and lower cheeks
of the material, wherein the lower cheek of the material slopes in a
downward direction at each of the recesses/notches from the opening of the
groove towards an interior portion of the groove.
At the outset, we agree with the Examiner that the claim language
does not require the entire lower cheek to be sloped. We further agree with
the Examiner that figure 7d of Appellant’s drawings illustrates an example
of an embodiment that has sections of the lower cheek of the material that
are sloping and sections of the lower cheek of the material that are parallel to
the upper cheek of the material. However, we note that in figure 7d of
Appellant’s drawings (1) the lower cheek of the material 76, 176 slopes
downward from the opening 74, 174 of the groove 94; and (2) the lower
cheek of the material 76, 176 is parallel to the upper cheek of the material
75, 175 only along the interior portion of the groove 94 that is remote from
the opening 74.
We find that Hoelscher discloses grooves 3 defined by upper and
lower cheeks of the material, wherein the lower cheek of the material slopes
in a downward direction at each of the recesses 9 of the groove 3 at an
interior portion of the groove 3, not from the opening 4 of the groove 3.
Hoelscher, fig. 1. As such, we agree with Appellant that the lower cheek of
the material of Hoelscher does not slope in a downward direction from the
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opening of the groove towards an interior portion of the groove, as required
by claims 1 and 6. Br. 6, 8.
The Examiner relies on Brenneman for disclosure of the material of
the floor elements. Ans. 4. The Examiner does not rely on Brenneman to
cure the above-noted deficiency with Hoelscher. Ans. 9. Accordingly, for
the foregoing reasons, the Examiner’s rejection of claims 1-3 and 6-10 under
35 U.S.C. § 103(a) as being unpatentable over Hoelscher and Brenneman
cannot be sustained.
The obvious rejection over Brenneman and Porter
Claim 4
Appellant argues that Brenneman fails to disclose “notched grooves
on each of all four edges of the floor elements,” as required by claim 4. Br.
10-11. Appellant further argues that
[w]hile Porter does show applying adhesive (fig. 1) as [sic]
bends 28a and 28b (or bends 90a and 90b-figs.5a-5b), however
this is because Porter does not have notched grooves into which
his joining elements are placed. It is only the power of the glue
or adhesive which holds the elements together.
Br. 11. According to Appellant, “[i]n the claimed invention not only are
there undercuts in the groove so as to interact but pairs of lips, but [sic] the
lips are provided with hooks that match the undercut.” Id. As such,
Appellant takes the position that “one would not expect, and thus consider it
unobvious, to incorporate glue into a groove which has already been
provided with joining profiles having lips which are provided with hooks
that match an undercut in the groove into which is joined.” Id.
At the outset, we are not persuaded by Appellant’s arguments because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
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disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
We agree with the Examiner that Brenneman discloses flooring
material including board shaped floor elements 106, 107, which floor
elements are provided with edges, a lower side, and a decorative upper
surface, whereby the flooring elements 106, 107 are intended to be joined by
separate joining profiles 105, wherein all four edges of the floor elements
106, 107 are provided with one notched groove each, which grooves are
arranged parallel to its respective edge, the joining profiles provided with
lips 110 arranged in pairs, which lips 110 are intended to each be received
by one of the grooves so that the floor elements 106, 107 with the grooves at
the adjacent edges will be guided vertically via the lips 110 of the joining
profile, which lips 110 are joined by a middle section of the joining profile
105 and wherein the grooves are provided with an undercut 109 while the
lips 110 are provided with hooks (at the ends of 108) that match the undercut
109 whereby adjacent floor elements 106, 107 will be fixed horizontally via
the undercuts 109 and the hooks (at the ends of 108). Ans. 7; Brenneman,
col. 5, ll. 5-16; fig. 10.
We further agree with the Examiner that Porter discloses floor
elements which are assembled via joining profiles 22, 24 and grooves 16a,
16b, 18a, 18b, wherein at least one of the joining profiles and the groove of
the floor elements is coated with glue 28a, 28b, 34a, 34b. Ans. 7-8; Porter,
col. 3, l. 37 - col. 4, l. 24; figs. 1-2. Consequently, we agree with the
Examiner that it would have been obvious to a person of ordinary skill in the
art at the time of the invention “to modify Brenneman to use glue on at least
one of the joining profiles and the groove of the floor elements, such as
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taught by Porter, in order to more securely attach the floor elements
together.” Ans. 8.
Moreover, we note that Porter discloses that (1) hooks 26a, 26b, 30a,
30b securely engage adjacent portions of the foam cores 12c, 14c of the first
and second panels 12, 14 (Porter, col. 3, ll. 47-49, 51-52; col. 3, l. 61 - col. 4,
l. 4; figs. 1-2); and (2) the adhesive deposits 28a, 28b, 34a, 34b applied to
each of the outer and inner splines 22, 24 “securely join the first and second
panels 12, 14” (Porter, col. 4, ll. 22-24; Ans. 8). Hence, we further agree
with the Examiner that “one may wish to create a stronger connection
between the floor elements through the use of glue. The connection formed
by the notched grooves could be strengthened and enhanced by using glue or
adhesive.” Ans. 10-11. Accordingly, we find that the Examiner articulated
adequate reasoning based on rational underpinnings to explain why one of
ordinary skill in the art would have been led to add Porter’s adhesive feature
to Brenneman’s flooring element device. Appellant has not provided any
persuasive evidence of error regarding the Examiner’s interpretation of the
disclosures of Brenneman and Porter.
Therefore, for the foregoing reasons, the Examiner’s rejection of
claim 4 under U.S.C. § 103(a) as being unpatentable over Brenneman and
Porter is sustained.
The obvious rejection over Hoelscher, Brenneman and Porter
Claim 5
The Examiner relies on Porter for disclosure of at least one of the
joining profiles and the groove of the floor elements being coated with
adhesive material. Ans. 7-8. The Examiner does not rely on Porter to cure
the above-noted deficiency with Hoelscher and Brenneman. Accordingly,
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the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Hoelscher, Brenneman and Porter cannot be sustained.

DECISION
The decision of the Examiner is affirmed as to claim 4 and reversed as
to claims 1-3 and 5-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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