Ex Parte Trudel

Patent Trial and Appeal Board

Jun 22, 2017

12871219 (P.T.A.B. Jun. 22, 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.
12/871,219 08/30/2010 Pierre TRUDEL 05203041-5US SC/ip 1360
20988 7590 06/22/2017
NORTON ROSE FULBRIGHT CANADA LLP
1, Place Ville Marie
SUITE 2500
MONTREAL, QC H3B 1R1
CANADA
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
06/22/2017 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 PIERRE TRUDEL
Appeal 2016-002123
Application 12/871,2191
Technology Center 3600
Before JASON V. MORGAN, SHARON FENICK, and
MICHAEL M. BARRY, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—5, 7, 8, and 11—21, all the pending
claims in the present application. (Appeal Br. 5.) Claims 6 and 9 were
withdrawn from consideration, and claims 10 and 22 have been cancelled.
(Id.) We have jurisdiction over the appeal under 35 U.S.C. § 6(b)(1).
We REVERSE.
1 According to Appellant, the real party in interest is Rene St-Cyr (1996) Inc.
(Appeal Br. 3.)
Appeal 2016-002123
Application 12/871,219
Invention
Appellant’s invention relates to a floorboard assembly including
floorboards connecting in a tongue and groove arrangement. (Spec. 1:9—10;
Abstract.)
Illustrative Claim
Claim 1, reproduced below with emphasis and paragraph breaks
added, is illustrative:
1. A floorboard assembly comprising:
at least first and second hardwood floor boards adapted to
be mounted in a side-by-side coplanar relationship,
the first floor board having a tongue extending
longitudinally along a first side thereof,
the second floor board having a groove extending
longitudinally along a second side thereof,
the groove having a width defined between a top lip and a
bottom lip,
the tongue being linearly insertable and removable from
the groove while the first and second floor boards are coplanar,
the tongue being received in a tight fit manner in the groove, a
top surface of the tongue being in frictional engagement with an
undersurface of the top lip of the groove from a top outermost
contact point to a top innermost contact point relative to a depth
of the groove, a bottom surface of the tongue being in frictional
engagement with a top surface of the bottom lip of the groove
from a bottom outermost contact point to a bottom innermost
contact point relative to the depth of the groove, the frictional
engagement of the top surface of the tongue depending at least
on a distance between the top outermost contact point and the top
innermost contact point, the frictional engagement of the bottom
surface of the tongue depending at least on a distance between
the bottom outermost contact point and the bottom innermost
contact point, the frictional engagement of the top and bottom
surfaces providing sufficient frictional resistance to resist against
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Appeal 2016-002123
Application 12/871,219
translational separation of the first and second floor boards in a
common plane thereof when subject to pull-apart forces of a
magnitude similar to that encountered during factory sanding
operations,
the top outermost contact point and the bottom innermost
contact point defining a first diagonal, the top innermost contact
point and the bottom outermost contact point defining a second
diagonal, the first and second diagonals defining slopes of
opposite sign, one of said first and second diagonals having a
length sufficiently greater than the width of the groove to
substantially lock the first and second floor boards against
relative pivotal movement in one of an upward and a downward
direction associated with said one of said first and second
diagonals, a clearance provided between the tongue and the
groove, the clearance reducing the length of the other one of said
first and second diagonals to approximate the width of the groove
to permit an angular withdrawal of the tongue from the groove
by manually pivoting the first and second boards toward each
other in the other one of said upward and downward directions,
and
means for providing added flexibility in the bottom lip of
the groove, said means including an undercut defined in an
undersurface of the bottom lip, the undercut extending
substantially along the full extent of the bottom lip in a depthwise
direction of the groove.
Rejections
Appellant appeals the following rejections:
Claims 1—5, 7, 11, 12, and 17—21 are rejected under pre-AlA
35 U.S.C. § 103(a) as unpatentable over Niese et al. (US 6,851,237 B2; iss.
Feb. 8, 2005) (hereinafter “Niese”). (Final Action 2—9.)
Claims 8 and 13—16 are rejected under pre-Al A
35 U.S.C. § 103(a) as unpatentable over Niese and Schwitte et al. (US
2006/0010820 Al; pub. Jan. 19, 2006) (hereinafter “Schwitte”). (Final
Action 9—11.)
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Appeal 2016-002123
Application 12/871,219
ANALYSIS
The Examiner finds that Niese teaches or suggests the “undercut
defined in an undersurface of the bottom lip, the undercut extending
substantially along the full extent of the bottom lip in a depthwise direction
of the groove,” as recited in claim 1. (Final Action 4.) Specifically, the
Examiner finds that while Niese discloses an undercut which does not
extend substantially along the full extent of the bottom lip in a depthwise
direction of the groove, one of ordinary skill in the art at the time of the
invention would have found it obvious to extend the undercut “to further
increase flexibility of the bottom lip of the groove during assembly and
disassembly.” (Id.) The Examiner explains that
the undercut of the prior art is the same location as the claimed
undercut of the invention, therefore the undercut of the prior art
is considered a structural equivalent to the undercut of the
invention and will perform the same function as those performed
by the extended undercut. Moreover . . . one of ordinary skill
could extend the length of the bevel/undercut along the full
extent of the bottom lip to get predictable and expected results.
(Ans. 11.)
Appellant argues that Niese discloses a beveled edge, which is “not
defined in an undersurface of the bottom lip but is rather a chopped portion
of an edge of the lip.” (Appeal Br. 10.) Appellant further argues that there
is no teaching or suggestion that the extension of the undercut to extend
“substantially along the full extent of the bottom lip,” as claimed, because
the prior art contains no teaching or suggestion of the desirability of added
flexibility to the bottom lip. (Id.)
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Appeal 2016-002123
Application 12/871,219
Appellant has persuaded us the Examiner erred in rejecting claim 1. In
appropriate circumstances, a modification of prior art teachings may be a
matter of design choice. See, e.g., ACCO Brands Corp. v. Fellowes, Inc.,
813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently
located two sensors in shredder’s feed, skilled artisan faced two design
choices of placing the thickness sensor above or below the presence sensor
and each design choice was an obvious combination of prior art elements).
However, in rejecting claims under 35 U.S.C. § 103(a), it is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988). Design choice may be an acceptable rationale for an obviousness
rejection when there is no difference in function; however, where different
structures achieve different purposes, design choice is inapposite. See In re
Gal, 980 F.2d 717, 719 (Fed. Cir. 1992). Here, the Examiner proposes to
modify a structure to provide functionality (increased flexibility) which is
not clearly present in the prior art beveled edge. We agree with Appellant
that the modification of the prior art is not a mere matter of design choice.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we do not sustain the Examiner’s obviousness rejection of
independent claim 1. Additionally, we do not sustain the rejections of
independent claim 17, or dependent claims 2—5, 7, 8, 11—16, and 18—21, all
argued in whole or in part on the same basis.
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Appeal 2016-002123
Application 12/871,219
DECISION
We reverse the Examiner’s § 103(a) rejections of claims 1—5, 7, 8, and
11—21 as obvious.
REVERSED
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