Ex Parte Stanchfield et al

Patent Trial and Appeal Board

May 27, 2014

12559191 (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte OLIVER STANCHFIELD, SVEN KORNFALT,
ROLAND LARSSON, WILLIAM T. PIERCE,
SABAD LA SERNA, PATRICK GEORGE SMITH, and
WAYNE ROBERT JOHNSTON
____________________

Appeal 2012-004463
Application 12/559,191
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and JILL D. HILL,
Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/559,191

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STATEMENT OF THE CASE
Oliver Stanchfield et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 23-25, and 27-32. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claimed Subject Matter
Claims 1 and 24 are the pending independent claims. Claim 1,
reproduced below, illustrates the claimed subject matter.
1. A multi-purpose flooring transition structure for
forming flooring transitions comprising:
a unitary core having an outer surface defining at least a
top and two sides;
an outer surface of the core defining at least one cut
therein creating a plurality of break-away sections in the core,
wherein the at least one cut is sized, shaped and positioned such
that removal of a break-away section of the core transforms the
multipurpose structure into a flooring transition; the cut
extending from the outer surface only partially into the core
whereby the core remains unitary; and
a covering of decorative material applied to at least the
top and two sides of the outer surface of the core having the at
least one cut therein without compressing the core in the
vicinity of the cut in the outer surface such that the decorative
material covers the cut but the cut remains open beneath the
said covering.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Matti US 2,477,071 Jul. 26, 1949
Kornfalt US 2003/0159389 A1 Aug. 28, 2003
Schacht US 2006/0150565 A1 Jul. 13, 2006
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Rejections
Claims 1, 24, 25 and 27-29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schacht. Ans. 5.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Schacht and Matti. Ans. 8.
Claims 30-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schacht and Kornflat. Ans. 8.
OPINION
Rejection of Claims 1, 24, 25 and 27-29 under 35 U.S.C. § 103(a)
Appellants argue claims 1, 24, 25 and 27-29 as a group. App. Br. 4-5.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 24, 25, and 27-29 stand or fall with claim 1.
The Examiner finds that Schacht’s embodiment shown in Figure 44
teaches “a flooring transition formed from an integral multi-purpose
structure for forming flooring transitions comprising a unitary core (7, 8, 11)
having an outer surface forming at least a top and two sides; at least one cut
(63) formed on the outer surface of the core” to define break-away sections
in the core, “wherein the at least one cut is sized, shaped and positioned such
that removal of a break-away section of the core transforms the structure
into a flooring transition; the cut extending from the outer surface only
partially into the core whereby the core remains unitary,” and a decorative
covering 46. Ans. 5.
The Examiner finds that “Schacht does not disclose that the core has
the at least one cut therein with without compressing the core in the vicinity
of the cut in the outer surface such that the decorative material covers the cut
but the cut remains open beneath the said covering.” Id. The Examiner
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finds, however, that Schacht’s embodiment shown in Figures 27 and 30
teaches a core with cuts 63 therein “with without compressing the core in the
vicinity of the cut in the outer surface such that the decorative material
covers the cut but the cut remains open beneath the said covering” to provide
a wider opening where a cutting tool may be easily inserted to allow for
separation of the different transitioning pieces. Id. at 5-6 (citing Schacht,
para. [0184]). Indeed, this paragraph of Schacht teaches that space 63
remains open under the covering 46, “allow[ing] a knife or the like to be
moved smoothly through this space 63.” Schacht, para. [0184]. We note
that although the Examiner states that Schacht does not disclose the core
having “at least one cut therein with without compressing the core in the
vicinity of the cut in the outer surface such that the decorative material
covers the cut but the cut remains open beneath the said covering” (Ans. 5),
the Examiner finds that Schacht’s Figure 27 provides such disclosure.
Based on the Examiner’s misstatement that Schacht does not disclose
the core having “at least one cut therein with without compressing the core
in the vicinity of the cut in the outer surface such that the decorative material
covers the cut but the cut remains open beneath the said covering,”
Appellants argue that there can be no prima facie obviousness because the
Examiner admits that the sole prior art reference does not teach a recited
limitation. App. Br. 4. We are not persuaded by this argument because, as
stated above, the Examiner meant to state that the embodiment of Schacht’s
Figure 44 does not disclose the cut remaining open when covered, not that
the entirety of Schacht fails to disclose this limitation.
Appellants also argue that Figures 27 and 30 of Schacht fail to show
“[a] unitary core having at least one cut without compressing the core in the
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vicinity of the cut therein; such that the decorative material covers the cut
but the cut remains open,” because Schacht’s core 7, 8, 11 is not unitary and
its spaces 63 are not cuts. Id.
The term “unitary” is defined in paragraph [0062] of Appellants’
Specification to mean “a single piece/unit, not a multi-piece element, held
together by glues, adhesives, joints, etc.,” and is defined in paragraph [0011]
as being synonymous with “monolithic.” Thus, the cut would be made
within the core with, for example, a blade or laser. See, e.g., Spec., para.
[0069]. Although the embodiment of Schacht’s Figures 27 and 30 may not
include a unitary core as the term “unitary” is defined in Appellants’
Specification, the embodiment of Schacht’s Figure 44 includes a unitary
core. Further, Appellants fail to explain persuasively how Schacht’s spaces
63 differ from the claimed “cuts.”
We agree with the Examiner’s finding that the embodiment of
Schacht’s Figure 44 teaches a unitary core having cuts (or spaces) therein,
and that Figures 27 and 30 teach a decorative material covering the core
without compression of the cuts (or such that the cuts remain open). We
therefore sustain the rejection of claims 1, 24, 25 and 27-29 under 35 U.S.C.
§ 103(a).
Rejection of Claims 30-32 under 35 U.S.C. § 103(a)
Claims 30-32 depend from independent claim 24. Appellants make
no argument that claims 30-32 are patentable over Schacht and Kornflat if
claim 24 is not patentable over Schacht. We therefore sustain the rejection
of claims 30-32 under 35 U.S.C. § 103(a).
Rejection of claim 23 under 35 U.S.C. § 103(a)
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Appellants do not appeal the rejection of claim 23. App. Br. 3. We
therefore summarily sustain the rejection of claim 23 under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the rejection of claims 1, 24, 25 and 27-29 under 35
U.S.C. § 103(a) as unpatentable over Schacht.
We AFFIRM the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Schacht and Matti.
We AFFIRM the rejection of claims 30-32 under 35 U.S.C. § 103(a)
as unpatentable over Schacht and Kornflat.

AFFIRMED

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