Ex Parte Thiers

Patent Trial and Appeal Board

Jan 31, 2013

11400190 (P.T.A.B. Jan. 31, 2013)

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.
11/400,190 04/10/2006 Bernard Paul Joseph Thiers THIE3003C5/JJC 3056
23364 7590 02/01/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
02/01/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BERNARD PAUL JOSEPH THIERS
___________

Appeal 2010-008197
Application 11/400,190
Technology Center 3600
____________

Before LINDA E. HORNER, JAMES P. CALVE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/400,190

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STATEMENT OF THE CASE
Bernard Paul Joseph Thiers (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 5-7 as unpatentable over Moriau (US 6,006,486, issued
Dec, 28, 1999), Eby (US 5,961,903, issued Oct. 5, 1999) and Piacente
(US 5,858,160, issued Jan. 12, 1999); and (2) claims 4 and 8 as unpatentable
over Moriau, Eby and Mehta (US 5,141,799, issued Aug. 25, 1992). Claim
9 has been cancelled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention relates to a floor covering 1 formed of
laminated panels 2, wherein the panels 2 include a top layer 4 with a printed
wood pattern 5. Spec. 7, ll. 12-15; figs. 1, 2.
Claim 1, the sole independent claim, is illustrative of the claimed
invention and reads as follows:
1. A laminate floor covering panel having a perimeter
defining first and second pairs of opposite edges;
said panel having a top side and a bottom side, and
comprising a base plate and a top layer;
said base plate being formed of a material selected
from the group consisting of MDF and HDF;
said base plate having an upper side and a lower
side, the first and second pairs of opposite edges located
adjacent to and surrounding the upper side of the base
plate;
said panel at least at said first pair of opposite
edges being provided with coupling parts for mutually
coupling a plurality of such panels to each other in a
common plane to form a floor covering, wherein these
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coupling parts in coupled condition of two of such panels
provide for an interlocking in a direction perpendicular to
the plane of the panels as well as in a direction
perpendicular to the edges concerned and parallel to the
plane of the panels;
said top layer comprising a generally horizontally
planar decorative layer extending over the entirety of the
upper side of the base plate;
said decorative layer comprising a printed pattern;
said printed pattern representing a single wood
pattern extending over the entirety of the upper side of
the base plate;
said top layer defining a transparent or translucent
synthetic layer having first and second generally planar
surfaces, the second planar surface of the synthetic layer
continuously covering said decorative layer;
said synthetic layer defining said top side of the
panel;
wherein said synthetic layer comprises impressions
extending from the first planar surface into a thickness of
the synthetic layer short of the second planar surface to
such a depth that the impressions are situated above the
printed pattern, said impressions arranged to simulate
textural and visual unevennesses which substantially
follow said printed pattern to form an embossment which
is in register with said printed pattern;
wherein the wood pattern depicts at least two wood
nerves and a zone therebetween; wherein the impressions
are mainly situated in said synthetic layer above said
wood nerves, while the synthetic layer above said zone
therebetween is substantially flat.

ANALYSIS
Appellant indicates that claims 2-8 stand or fall with the rejection of
independent claim 1. Br. 6. Accordingly, we select claim 1 as the
representative claim. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

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The Examiner found that Moriau discloses the limitations of claim 1
except “the synthetic layer [including] impressions arranged to simulate an
unevenness which follows the printed pattern to form an embossment which
is in register with the printed pattern.” Ans. 4. The Examiner found that
Eby discloses it is known to emboss the surface of a floor covering to
simulate wood and that it may disclose an embossed pattern in register with
a printed pattern and that Piacente discloses embossing that substantially
follows a printed pattern. Id. The Examiner further found that these
teachings include or render obvious simulation of a wood appearance that
includes a single wood pattern having wood nerves/pores in register with a
plurality of successive impressions, as called for in claim 1. Ans. 5. The
Examiner determined it would have been obvious to one of ordinary skill to
combine these references to have surface embossment substantially follow a
printed pattern of wood nerves to simulate wood on the top surface of
Moriau’s floor panel to enhance the realistic effect of the wood grain décor.
Id.
Appellant argues that Eby discloses random surface texture that
generally simulates the printed pattern but does not provide successive
indentations that substantially follow a wood nerve of a printed pattern, as
called for in claim 1. Br. 13. Appellant’s individual attack on the
references is not persuasive, because the Examiner relies on Eby to disclose
mechanical embossing of a floor covering to simulate wood in register with
a printed pattern. See Ans. 4; Eby, col. 6, ll. 6-9 and 38-42. The Examiner
relies on Piacente for embossing that substantially follows a printed pattern.
Ans. 4.
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Appellant also argues that neither Eby nor Piacente disclose an
embossment structure, wherein “the impressions extend from the first planar
surface into a thickness of the synthetic layer short of the second planar
surface,” as called for in claim 1. Br. 17. We agree with the Examiner’s
findings as to the disclosure of Eby (Ans. 4, 7-8; Eby, col. 6, ll. 3-6), and
Appellant has not provided any persuasive argument as to why the
Examiner’s findings and conclusions with respect to Eby are erroneous.
Appellant further argues that there is no suggestion in the combination
of Eby and Piacente to rearrange the top layer of Moriau, which requires
planar surfaces with a decorative layer having a printed pattern under a
planar synthetic layer, with the irregular structure and decorative ink or
design layer extending over a foamed layer(s) of the combination of Eby and
Piacente. Br. 19-21. To the extent Appellant is arguing the references must
be capable of bodily incorporation in order to combine their teachings, the
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of a primary reference. In re
Keller, 642, F.2d 413, 425 (CCPA 1981). “Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. (citations omitted). Further, to the extent
Appellant is arguing the references teach away from the proposed
combination, mere differences between two references is insufficient to
establish that such references “teach away” from any combination thereof.
See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Prior art does
not teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
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1195, 1201 (Fed. Cir. 2004). The Examiner has relied on each reference for
particular teachings. We find the Examiner’s articulated reasoning for
combining the reference teachings in the manner claimed to be based upon
rational underpinnings, and we adopt them as our own. Appellant has not
shown that the Examiner’s reasons for combining the teachings of these
references are in error.
The Examiner’s finding that Moriau discloses a printed pattern to
simulate a single wood pattern (Ans. 4) also is supported by a preponderance
of evidence. Contrary to Appellant’s argument that Moriau fails to disclose
that “the decorative layer may form a ‘single’ wood pattern” (Br. 12),
Moriau discloses that the decorative layer can be imprinted with a wood
pattern. Moriau, col. 8, l. 67-col. 9, l. 2. As correctly pointed out by the
Examiner, Appellant’s Specification “does not include a disclosure as to the
meaning of ‘single wood pattern’ that would limit the understanding of such
a broad term.” Ans. 7. Consequently, we agree with the Examiner that
there is nothing in Appellant’s disclosure to suggest that the term “single
wood pattern” is not a broad enough limitation to read on a teaching of a
single plank depicting a wood pattern. Id. Providing a printed pattern
simulating a single wood pattern extending over the entirety of the upper
side of a base plate, would involve only ordinary creativity, and would not
be uniquely challenging to a person of ordinary skill in the art. See, e.g.,
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp”). As such, we further agree with the Examiner that “one of
ordinary skill in the art upon reading Appellant’s and Moriau’s disclosures
could understand the planks to have a ‘single’ wood pattern.” Ans. 7.
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Appellant’s argument that “the limitation of the depiction of the wood
nerves cannot be treated in mere isolation or only regarded as aesthetic
design elements; instead this limitation attributes to the structure of the floor
panel itself” (Br. 18) is not persuasive, because matters relating to
ornamentation only (wood pattern depicting at least two wood nerves),
which have no mechanical function cannot be relied upon to patentably
distinguish the claimed invention from the prior art. In re Seid, 161 F.2d
229, 231 (CCPA 1947); see In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983) (the critical question is whether there exists any new and unobvious
functional relationship between the printed matter and the substrate). We
find no substantial difference between the mechanical construction of
Appellant’s laminate floor panel and the laminate floor panel of Moriau.
First, we note the similarity between Appellant’s Figures 2 and 4 and
Moriau’s Figures 1 and 2. Like Appellant’s claimed laminate floor panel,
the laminate floor panel 1 of Moriau includes (1) a perimeter defining first
and second pairs of opposite edges (2 and 3), a top and bottom side, a base
plate 8 and a top layer including a decorative layer 55 and a synthetic layer
56; and (2) the first and second pairs of opposite edges (2 and 3) located
adjacent to and surrounding the upper side of the base plate 8. See Ans. 3.
We further note that, similar to Appellant’s invention, Moriau discloses that
base plate 8 of laminate floor panel 1 can be made of MDF (medium density
fiberboard) or HDF (high density fiberboard) (i.e., highly compressed
ground wood particles and binder material). See Moriau, col. 3, ll. 26-35;
col. 8, ll. 59-64; fig. 2; Spec. 2, ll. 9-10. Since Moriau specifically discloses
the mechanical structure of Appellant’s claimed laminate floor panel,
including that decorative layer 55 can be imprinted with a wood pattern, and
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Eby discloses that it is known to mechanically emboss the surface of a floor
covering so that the impression extends into the structure in register with the
wood pattern and Piacenta discloses such embossing in register with a
printed pattern, we agree with the Examiner that the single wood pattern of
the laminate floor panel of Moriau, as modified by the Examiner (see Ans.
4-5), depicts at least two wood nerves, as called for in claim 1.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 and of claims 2-8, which fall with claim 1.
DECISION
The decision of the Examiner is affirmed as to claims 1-8.
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

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