Ex Parte Sjoberg

Board of Patent Appeals and Interferences

Feb 10, 2011

10477141 (B.P.A.I. Feb. 10, 2011)

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.
10/477,141 12/03/2003 Ake Sjoberg TPP 31706 3452
74217 7590 02/10/2011
NOVAK, DRUCE + QUIGG L.L.P. - PERGO
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
SIMONE, CATHERINE A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
02/10/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AKE SJOBERG
____________

Appeal 2010-002804
Application 10/477,141
Technology Center 1700
____________

Heard: January 20, 2011
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-002804
Application 10/477,141

2
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A system of embossed decorative boards, each board having a first
and a second opposite edge with a third and a fourth adjacent edge, which
board includes an upper side decorative surface, an upper side embossing
and a base layer,

wherein the embossing is comprised by surface structure areas of
which at least four are first, second, third and fourth outermost surface
structure areas, the first outermost surface structure areas each having one
end edge coinciding with the first edge of the board, being arranged opposite
to the second outermost surface structure areas having each one end edge
coinciding with the second edge of the board, the third outermost surface
structure area have each one end edge coinciding with the third edge of the
board and the fourth outermost surface structure areas having each one end
edge coinciding with the fourth edge of the board, that at least two surface
structures having different visual characteristics are used, the surface
structures comprising at least one texture selected from the group consisting
of recesses, pores, cracks, graining, joint pits, knots, and microstructuring;
wherein two adjacent outermost surface structure areas within the same
board have different surface structures, that the different surface structures
can be arranged into surface structure groups according to its surface
structure characteristics whereby the first outermost surface structure areas
of the first edge is numbered LI, LII, etc. in a subsequent order starting from
the third edge and that the second outermost surface structure areas of the
second edge is numbered RI, RII, etc. in a subsequent order starting from the
third edge (LIII) whereby the end edge of the outermost surface structure
areas with the same ordinal number of the first edge and the second edge has
mainly the same length while the outermost surface structure are with the
same ordinal number of the first edge and the second edge has a similar
surface structure, and at least some of the third outermost surface structure
areas of the third edge of the board have the same visual characteristics as at
least some of the fourth outermost surface structure areas of the fourth edge
of the board, whereby when two boards are assembled along their edges the
Appeal 2010-002804
Application 10/477,141

3
surface structure areas having the same visual characteristics overlaps the
adjoining boards.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Elmendorf 3,055,065 Sep. 25, 1962
Lindgren 4,940,503 Jul. 10, 1990
Ringo 5,744,220 Apr. 28, 1998
McGrath 6,132,883 Oct. 17, 2000
Bonsall GB 2 088 280 Jun. 9, 1982

THE REJECTIONS

1. Claims 1-4, 7, 8, 14, 15, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ringo in view of Bonsall.

2. Claims 9, 13, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the art as applied to claim 1 above, and further in view of
Lindgren.

3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
the art as applied to claim 1 above, and further in view of McGrath.

4. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the art as applied to claim 1 above, and further in view of
McGrath and Lindgren.

Appeal 2010-002804
Application 10/477,141

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5. Claims 5, 6, 16, and 17 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the art as applied to claim 1 above, and further in view of
Elmendorf.

ANALYSIS
(with Findings of Fact and Principles of Law)

We essentially adopt the Examiner’s findings pertinent to the issue(s)
raised by Appellants for this rejection. We, therefore, incorporate the
Examiner’s position as set forth in the Answer. We add the following for
emphasis only.
We consider claim 1 only based upon Appellant's arguments. See
37 C.F.R. § 41.37 (c)(l)(vii)). Hence, we focus on Rejection 1, listed above,
and our determination made regarding Rejection 1 applies to the remaining
rejections (Appellant states that his remarks for Rejection 1 are equally
applicable for the other rejections. Br. 4).
Beginning on page 4 of the Brief, Appellant explains that his
invention is to provide a system of embossed decorative boards wherein
each board is provided with certain surface structure, such that when two
boards are assembled along their edges, the surface structure areas having
the same visual characteristics overlap the adjoining boards, thereby tending
to hide the actual joint edge between adjacent boards. Appellant further
explains that his invention is to have not only the short edges of the board
contain surface structures which bridge the joint, such that the joint between
two boards to be visually hidden, but also the joint edges of the long sides of
the board to be similarly visually hidden. Br. 5.
Appeal 2010-002804
Application 10/477,141

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Appellant first argues that the Examiner’s understanding of Ringo is
incorrect because the Examiner misunderstands the depiction of Figure 4 of
Ringo. Appellant asserts that Figure 4 of Ringo is not to a series of boards
but rather is to a “patterned décor paper 9.” Br. 5. However, as the
Examiner explains, Figure 5 and Figure 6 of Ringo show a system of
decorative boards assembled together, having first, second, third, and fourth
edges. Ans. 15-17. Thus, we are not persuaded by Appellant’s argument in
this regard.
Appellant then argues that Ringo does not teach the aspect of his
claim pertaining to at least some of the third outermost surface structure
areas of the third edge of the board having the same visual characteristics as
at least some of the fourth outermost surface structure areas of the fourth
edge of the board.2 Br. 6.
Appellant admits that Ringo teaches “short side match.” Br. 6.
An object of Ringo is having a decorate laminate having a bar design
such that the bars in adjoining rows are mutually offset in a longitudinal
direction. Ringo, col. 2, ll. 35-47. Matching patterns of the short ends of the
bars are determined in advanced so that a floor with an optimal pre-
determined appearance is achieved. Ringo, col. 3., ll. 46-56. Hence, as
pointed out by the Examiner, Ringo teaches that the short ends (first and
second edges as claimed) have a selected pattern, but that the long ends
(third and fourth edges as claimed) have arbitrary patterns. Ans. 5.

2 We refer to this as “long side match”.
Appeal 2010-002804
Application 10/477,141

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It is the Examiner’s position that selecting a chosen pattern for the
third and fourth edges of the bars (long edges) would have been an obvious
design choice. Ans., 1, 15, and 16.
We agree with the Examiner’s position, and add that Ringo’s teaching
of a “short side match” would have also suggested to one of ordinary skill in
the art to modify Ringo to provide a long side match by selecting matching
patterns also for the long ends (long side match), with a reasonable
expectation of matching the patterns on both the long and short sides.. In
making a determination of obviousness, one must take into account the
“interferences and creative steps,” or even routine steps, that an ordinary
artisan would employ. Ball Aerosol and Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009); see also Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (The
analysis may also include “recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”). Also, an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). One of the ways in
which a claim’s subject matter can be proved obvious is by establishing that
there existed at the time of invention a known problem for which there was
an obvious solution encompassed by the claims. Id. at 419-20; see also In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) (“[C]onsider what the
combined teachings, knowledge of one of ordinary skill in the art, and the
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Application 10/477,141

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nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art.”).
We also agree with the Examiner that the teaching of Bonsall that
decorative laminates can be embossed suggests Appellant’s claimed “upper
side embossing” recited in claim 1 for the reasons provided by the Examiner
in the Answer. Ans. 3-5, 17, and 18.
In view of the above, we affirm the rejections.
CONCLUSIONS OF LAW AND DECISION
Each rejection is affirmed.
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).
AFFIRMED

cam

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