Ex Parte Thiers

Patent Trial and Appeal Board

Jun 13, 2017

12868929 (P.T.A.B. Jun. 13, 2017)

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.
12/868,929 08/26/2010 Bernard Paul Joseph THIERS 19791.54.1.2 6877
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
06/15/2017 EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/15/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Docketing @ wnlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD PAUL JOSEPH THIERS1
Appeal 2015-003501
Application 12/868,929
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bernard Paul Joseph Thiers (“Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final rejection of claims 12—18 under 35
U.S.C. § 103(a) as unpatentable over Moriau (US 6,006,486, iss. Dec. 28,
1999) and Chen (US 6,617,009 Bl, iss. Sept. 9, 2003).2’3 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Flooring Industries
Ltd. Appeal Br. 2 (filed October 3, 2014).
2 The Examiner explains that incorrect claim numbering was utilized in the
final rejection. Compare Ans. 4 (mailed Dec. 5, 2014), with Final Act. 5
(mailed Feb. 6, 2014).
3 Claims 1—11 have been cancelled. Appeal Br. 18 (Claims App.).
Appeal 2015-003501
Application 12/868,929
CLAIMED SUBJECT MATTER
The invention concerns laminate floor covering panels. Spec. | 5.
Claim 12, the sole independent claim, is illustrative of the subject matter on
appeal, and recites:
12. A floor covering including a plurality of
interlocking hard floor panels, comprising:
a floor panel having a core formed from MDF or HDF, a
top side including a substantially flat upper surface and a
laminated structure with a continuous decorative layer located
along the upper surface of the panel, the decorative layer
containing a layer printed with a pattern;
wherein said floor panels are formed starting from a larger
board upon which one or several layers including said decorative
layer is already present before the panel itself is formed;
wherein each of said floor panels is provided with a first
coupling means formed along a first pair of opposite edges,
allowing that two of such panels can be coupled to each other
without any play or practically without any play;
wherein said first coupling means are configured such that
they provide for an interlocking in a direction perpendicular to
the plane of the floor covering, and in a direction perpendicular
to the edges concerned and parallel to a plane of the floor
covering;
said first coupling means being realized with a first
coupling part in the form of a tongue along a first edge of said
first pair of opposite edges, as well as with a second coupling
part in the form of a groove along a second edge of said first pair
of opposite edges, said groove being bordered by an upper lip
having a distal end and a lower lip, said lower lip extending
beyond the distal end of the upper lip;
said first coupling means for horizontal locking further
being realized with a single contact surface at the lower side of
said tongue and a single contact surface at the upper side of the
lower lip which in the coupled condition of two of such panels
provide a locking which prevents that the panels can drift apart,
the contact surface at the upper side of the lower lip being
2
Appeal 2015-003501
Application 12/868,929
positioned in the lower lip at a location beyond the distal end of
the upper lip;
said first coupling means being configured such that two
of such panels can be joined by rotating the panels along the
edges concerned;
wherein a bevel is formed at each of said first and second
edges of the panel, and located near a top side of the panel and
extending downward to a respective lower edge, wherein the
surfaces of the bevels are realized with the continuous decorative
layer located thereover,
said lower edge of each bevel defining the position of a
theoretical vertical joint plane where the panels in coupled
condition join each other at their upper sides; and
wherein said first coupling means are formed in one piece
with and from the core, such that the distance between the joint
plane defined by the lower side of the bevel and the
corresponding locking surface is substantially only determined
by the one-piece core material of said core.
Appeal Br. 18—19 (Claims App.) (emphasis added).
ANALYSIS
Appellant argues claims 12—18 as a group. Appeal Br. 11—16. We
select claim 12 as representative, and claims 13—18 stand or fall with
claim 12. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Moriau discloses a floor covering
substantially as claimed, except that Moriau does not disclose a bevel
covered with a continuous decorative layer. Final Act. 5—6. The Examiner
finds that Chen discloses floor covering panels having bevels 78, which are
covered with a decorative layer. Id. at 6. The Examiner concludes that it
would have been obvious to have modified an edge of Moriau’s panel “to
have a bevel at a top side and covered with the top decorative layer over the
bevel as disclosed by Chen to provide a floor panel that resists undo wear at
3
Appeal 2015-003501
Application 12/868,929
the edges and maintains a cohesive aesthetic appearance that simulates a real
hardwood floor board.” Id. at 7.
Appellant contends that a skilled artisan would not understand to
combine Moriau and Chen, as the Examiner proposes. Appeal Br. 12.
According to Appellant, Moriau and Chen are manufactured with different
methods, and have “inherent differences in structure,” such that they would
not be combined. Id. Specifically, Appellant contends that neither Moriau
nor Chen disclose a floor panel manufactured from larger panels, wherein
the coupling parts and bevels are cut into multiple layers of the laminate
structure. Id. at 12—13 (also arguing that Chen’s panels are extruded), 16.
We are not persuaded by Appellant’s argument. As the Examiner
correctly explains, the patentability of a claimed product does not depend
upon its method of production if the claimed product is obvious over that of
the prior art. See Final Act. 2,4. Although any structure implied by claimed
process steps must be considered when assessing the patentability of
product-by-process claims, here, Appellant does not explain persuasively
how the claimed product would vary, structurally, from that rendered
obvious by Moriau and Chen. Appellant’s argument that the coupling parts
and bevels must be cut into multiple layers of a laminate structure, see
Appeal Br. 12—13, is not persuasive because Appellant does not explain
adequately how the prior art differs from the structure formed by that
method. Specifically, Moriau discloses a panel having laminated MDF or
HDF core 8, which includes one or more layers. Moriau, 8:59—64. Moriau
also explains that tongue 9 and groove 10 of the panel, e.g., the claimed
coupling means, are formed with milling cutters that cut into the laminated
core. Id. at 4:9—29, 9:16—53. In the combination proposed by the Examiner,
4
Appeal 2015-003501
Application 12/868,929
the panel of Moriau is modified to also include a bevel through the
laminated MDF or HDF.
Appellant also argues that “Moriau does not disclose making a bevel”
and “offers no understanding of how the decorative layer can be applied
over the bevel.” Appeal Br. 13, 15. This argument is not persuasive,
because the test for obviousness is what the combined teachings of the
references as a whole would have suggested to those of ordinary skill in the
art, not merely what Moriau disclosed. In re Keller, 642 F.2d 413, 425
(CCPA 1981). “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). In this case, the Examiner relies upon Chen, not
Moriau, for such teachings. Final Act. 2—3, 6; Ans. 2—3. Appellant does not
argue persuasively that Chen lacks a bevel with a decorative covering, as
claimed. See Chen, 7:63—67, 13:4—5, 13:11—12, Figs. 3^4.
Similarly, Appellant argues that although Chen discloses a bevel,
Chen “only discloses forming coupling means with a spline,” does not
disclose a bevel “along the same edge including coupling parts,” and does
not disclose a MDF or HDF core. Id. at 13—14. This argument is
unpersuasive because the Examiner relies upon Moriau, not Chen, for the
claimed coupling means and the MDF or HDF core. Final Act. 2—6; Ans. 2—
4; see also, e.g., Moriau, 5:24—27, 5:47-49, 8:59—66.
Finally, Appellant argues that Chen discourages use of HDF or MDF,
such that Moriau’s wood-based panels are “at odds” with Chen’s disclosure.
Appeal Br. 14—15. This argument is unpersuasive because the Examiner
proposes modifying Moriau’s wood-based laminated panel to include a
5
Appeal 2015-003501
Application 12/868,929
bevel. Final Act. 7. That Chen identifies moisture resistance of fiberboard
as a concern does not suggest that, in prior art fiberboard panels, bevels
would be unsuitable. See Chen, 1:20—23, 2:24—26. Indeed, the Examiner
provides articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness, namely, that providing Moriau’s panel
with bevels covered with a decorative layer in would resist wear at the edges
and provide a cohesive appearance. Final Act. 7. Appellant provides no
persuasive argument or evidence to discredit this reasoning.
Accordingly, Appellant has not apprised us of error in the Examiner’s
rejection of claim 12, or claims 13—18 grouped therewith.
DECISION
The Examiner’s decision to reject claims 12—18 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).
AFFIRMED
6