Ex Parte Pelosi

Board of Patent Appeals and Interferences

Aug 29, 2006

10102445 (B.P.A.I. Aug. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK PELOSI, JR.
____________

Appeal No. 2006-1819
Application No. 10/102,445
____________

HEARD: AUGUST 8, 2006
____________

Before FRANKFORT, OWENS and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final
rejection of claims 12 through 20 and 23 through 31, all of the
claims remaining in the application. Claims 1 through 11, 21 and 22
have been cancelled.

Appellant’s invention relates to the problem of supporting an
overlying flooring material at the juncture of flooring materials
of different heights, at the transition region at the juncture
between the different height materials, where the transition is
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Application No. 10/102,445

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generally desired to be unnoticeable to people walking on the
flooring over the juncture. In particular, the claims on appeal
are directed to a transition support comprising an elongated wedge
in sheet form for smoothly bridging the region at the juncture
between the different height materials. See, for example, Figure 1
of the application drawings. Independent claims 12, 20, 23 and 31
are representative of the subject matter on appeal and a copy of
those claims can be found in the Appendix attached to appellant’s
brief.1

The sole prior art reference relied upon by the examiner in rejecting the appealed
claims is:

1 As is evident from the communication from the examiner
mailed December 27, 2004, the claims as they appear in the
Appendix to the brief and as set forth in the amendment filed
June 2, 2003 are those that are on appeal. Likewise, the changes
in the specification found in the amendment of June 2, 2004 have
been entered by the examiner, thereby rendering moot the change
requested in the supplemental amendment after final rejection
attached to the appeal brief.
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Glatz 5,581,967 Dec. 10, 1996

Claims 12 through 20 and 23 through 31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Glatz.2

Rather than reiterate the examiner's commentary regarding the above-noted
obviousness rejection and the conflicting viewpoints advanced by the examiner and
appellant regarding the rejection, we make reference to the examiner's answer (mailed
November 3, 2003) for the reasoning in support of the rejection, and to appellant’s brief
(filed August 6, 2003) and reply brief (filed January 7, 2004) for the arguments
thereagainst.

2 Since neither the examiner’s objection to the specification nor the rejection of
claim 25 under 35 U.S.C.
§ 112, second paragraph, found in the final rejection (pages 2-3), have been repeated in
the answer, we consider them to be withdrawn.
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Application No. 10/102,445

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OPINION

In reaching our decision in this appeal, we have given careful consideration to
appellant’s specification and claims, to the applied prior art reference, and to the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we have made the determination that the examiner’s above-noted rejection under
35 U.S.C. § 103(a) will not be sustained. Our reasons follow.

The examiner’s basic position is set forth on pages 4-7 of the answer. Essentially, the
examiner is of the view that flooring adapter transition member (10) of Glatz comprises an
elongate wedge in sheet form (col. 3, line 33); including a thick end (at 60) with a thickness
generally equal to the height difference between a high area of the floor and a low area of
the floor at a transition region, where the thick end is placeable at the juncture adjacent the
high area of the floor; and a relatively thin end (at 42) opposite the thick end and parallel to
the thick end, the thin end being placeable on the low area of the floor remote for the high
area of the floor and the juncture; and a tapering section interconnecting the thick end and
the thin end and forming a top surface of the wedge, the tapering section providing a
support surface means for being covered with a flooring material; the wedge constituting
means for rendering the junction between the high area and the low area generally
unnoticeable to persons walking across the flooring material on the tapering section and
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Application No. 10/102,445

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also for preventing the jostling of wheeled vehicles crossing the flooring material on the
tapering section (col. 1, line 58 to col. 2,
line 52). The examiner concedes that Glatz fails to teach a distance between the thick end
and the thin end being at least 30 times the thickness of the thick end.

To address this difference, the examiner notes the disclosure in Glatz (col. 5, lines 24-
30) that the flooring adapter may be modified to accommodate flooring materials of varying
heights, and concludes that
It is apparent a variation or modificatio [sic, modification] to one having
ordinary skill in the art would encompass the length-to-width ratio or the
length-to-height ratio, etc. Thus, it would have been obvious to one having
ordinary skill in the art to select a ratio of the distance between the thick and
thin ends as compared to the thickness of the thick end according to the
intended use of the member and environment in which of the member is
being used. As discussed in GLATZ, his device is designed to mainly to
generate a smoother surface for walking/running pedestrians and wheeled
apparatuses. A wheeled apparatus might require a longer device giving way
to a much smoother flooring transition; whereas a runner/walker might not
require the transition device to be as smooth. Thus, it is well within the
general knowledge of a worker in the art to increase the distance as opposed
to the thickness in order to create a more refined taper which in turn would
provide a smoother transition surface (answer, pages 4-5).

After a consideration of the teachings to be fairly derived from the applied patent to
Glatz by one of ordinary skill in the art, we must agree with appellant that there is no
reasonable teaching, suggestion or motivation in Glatz to modify the configuration of the
flooring adapter shown and disclosed in that patent to be an elongate wedge in sheet form
Appeal No. 2006-1819
Application No. 10/102,445

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having a distance between the thick end and the thin end of at least 30 times the thickness
of the thick end, to thereby provide a transition support for extending over a low area of a
floor and for extending under a flooring material where the floor has a high area at a
relatively high height adjacent to the low area, a juncture between the high area and the
low area, and a difference in height between the high area and the low area at the
juncture, whereby the elongate wedge can have its relatively thick end placed at the
juncture adjacent the high area of the floor and the relatively thin end opposite the thick
end placed on the low area of the floor remote for the high area and the juncture so that
the tapering section of the wedge-shaped transition support renders the junction between
the high area and the low area of the floor generally unnoticeable to persons walking
across the flooring material on the tapering section and also prevents the jostling of
wheeled vehicles crossing the flooring material on the tapering section.

There is simply no reason, teaching or suggestion to modify the relatively small size
flooring adapter transition member of Glatz, which has an overall width dimension of
approximately 2.5 inches and is specifically designed to have end portions (44, 64) which
overlie adjacent flooring materials of differing heights, to take on a substantially different
configuration and role as a transition support of the type set forth in claims 12 through 20
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and 23 through 31 on appeal. In the final analysis, it is our view that the examiner is using
the hindsight benefit of appellant’s own disclosure to modify the flooring adapter of Glatz in
an attempt to recreate appellant’s claimed invention.

Moreover, even if the flooring adapter of Glatz were to be sized so that the width
dimension between the thick end and the thin end was in the range of at least 30 times the
overall thickness at the thick end and then used for extending under a flooring material as
set forth in the claims on appeal, we do find that a transition support like that claimed by
appellant would be the result. In that regard, it is our view that the thickness variations (E)
and (F) at the thin and thick ends, respectively, seen in Glatz (Fig. 2) would preclude that
member from rendering the junction between the differing height floor materials generally
unnoticeable to persons walking across the flooring material on the tapering section and
also prevent the jostling of wheeled vehicles crossing the flooring material on the tapering
section, as set forth in the claims on appeal.

Since we have determined that the teachings and suggestions found in Glatz would not
have made the subject matter as a whole of independent claims 12, 20, 23 and 31 on
appeal obvious to one of ordinary skill in the art at the time of appellant’s invention, we
must refuse to sustain the examiner’s rejection of those claims, and of claims 13 through
19, and 24 through 30 dependent therefrom, under 35 U.S.C. § 103(a).
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In light of the foregoing, the decision of the examiner is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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Address

Appeal No. 2006-1819
Application No. 10/102,445

10
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1940 East 6th Street
Cleveland, OH 44114

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