Ex Parte Wright

Patent Trial and Appeal Board

Sep 22, 2016

13542275 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/542,275 07/05/2012
16595 7590 09/26/2016
PergoLLC
Jenkins, Wilson, Taylor & Hunt, P.A.
University Tower, Suite 1200
3100 Tower Boulevard
Durham, NC 27707
FIRST NAMED INVENTOR
Thomas Scott Wright
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1845/27 1612
EXAMINER
MICHENER, JOSHUA J
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
usptomail@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCOTT WRIGHT
Appeal2014-009821
Application 13/542,275
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Scott Wright (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 28-34, 37--41, 43--47,
and 49. 1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claims 1-27, 35, 36, 42, 48, and 50-53 are withdrawn from
consideration. Appeal Br. 5.
Appeal2014-009821
Application 13/542,275
THE INVENTION
Appellant's invention relates to joint devices for connecting floor
panels.
Claim 28, the sole independent claim on appeal, is representative of
the claimed invention, and reads as follows:
28. A joint system comprising:
at least a first floor panel comprising a first locking
profile;
at least a second floor panel comprising a second locking
profile; and
a joint member disposed between the first floor panel and
the second floor panel;
wherein the joint member is adapted to pass a liquid
between the first floor panel and the second floor panel, and
\'I/herein each of the first floor panel, the second floor panel, and
the joint member comprise a weatherproof material;
wherein the joint member comprises a strip which, at
both edges, has opposing locking profiles with one or more
vertical and horizontal locking surfaces adapted to cooperate
behind portions of the first and second locking profiles of the
first floor panel and the second floor panel to secure the joint
member thereto; and
wherein the opposing locking profiles of the joint
member do not intersect a vertical midplane between the first
and second floor panels; and
wherein an upper surface of the joint member is at a same
level as and/or lower than at least a portion of an upper surface
of the first floor panel and/ or the second floor panel.
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Application 13/542,275
The Examiner has rejected:
THE REJECTIONS
(i) claims 28, 31-34, 39--41, 47, and 49 under 35 U.S.C. § 103(a) as
being unpatentable over Del Rincon (US 5,694,730, issued Dec. 9, 1997)
and Chen (US 6,363,677 Bl, issued Apr. 2, 2002);
(ii) claim 29 under 35 U.S.C. § 103(a) as being unpatentable over Del
Rincon, Chen, and Grohman (US 7,409,803 B2, issued Aug. 12, 2008);
(iii) claim 30 under 35 U.S.C. § 103(a) as being unpatentable over Del
Rincon, Chen, and Haid (US 4,599,841, issued July 15, 1986);
(iv) claims 37, 38, and 43 under 35 U.S.C. § 103(a) as being
unpatentable over Del Rincon and Chen;2
(v) claims 44 and 45 under 35 U.S.C. § 103(a) as being unpatentable
over Del Rincon, Chen, and Trogolo (US 6,248,342 Bl, issued June 19,
2001); and
(vi) claim 46 under 35 U.S.C. § 103(a) as being unpatentable over Del
Rincon, Chen, and Klosowski (US 2005/0194752 Al, published Sept. 8,
2005).
ANALYSIS
Claims 28, 31-34, 39-41, 47, and 49--0bviousness--Del Rincon/Chen
Claim 28 requires, inter alia, a joint member having "opposing
locking profiles with one or more vertical and horizontal locking surfaces
adapted to cooperate behind portions of the first and second locking profiles
2 Rejection (iv) differs from Rejection (i) in that the Examiner further
relies on duplication of parts or simple substitution. See Final Act. 9-10.
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Application 13/542,275
of the first floor panel and the second floor panel to secure the joint member
thereto." Appeal Br. 20 (Claims App.).
The Examiner finds that Del Rincon discloses most of the features of
claim 28 including a first floor panel 18, a second floor panel 25, and a joint
member 10 (see Ans. 2-3 (citing Del Rincon, col. 1, 11. 14--25; col. 2, 11. 25-
26, 11. 32-34, and 11. 45-53; Figs. 1 and 3)), but relies on the joint member of
Chen as having:
opposing locking profiles (left and right sides of the middle strip
of Fig. 17) with one or more vertical and horizontal locking
surfaces (unlabeled teeth of 1 7) adapted to cooperate behind
portions of the first and second locking profiles (Fig. 23) of the
first and second panels (50, 52) to secure the joint member
thereto (the unlabeled teeth of Fig. 17 are capable of cooperating
with the locking profiles of Fig. 23 to secure the joint member).
Ans. 4. The Examiner concludes that it would have been obvious "to modify
the joint system of Del Rincon . . . with the strip and locking profiles of the
panels and joint member of Chen . . . in order to better join the panels by
better securing the joint member to the panels, or to interconnect the panels."
Id. (citing Chen, col. 2, 11. 37-39).
Appellant asserts that there is no "disclosure for the barbed spline of
Figures 17 and/or 18 cooperating behind locking surfaces of an excavated
groove in Chen." Appeal Br. 10 (emphasis omitted). Appellant argues that
"the splines of Figures 17 and 18 clearly are not meant to and absolutely
cannot cooperate with the groove of Figure 23 and 22, respectively, as the
disclosed shapes are incompatible." Id. at 11. Appellant includes annotated
copies of Figures 17, 18, 22 and 23 in support of this argument. Id. at 12.
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Application 13/542,275
The Examiner responds that an identical match is not required because
the "barbed spline of Fig. 17 has locking profiles (barbs) which plainly can
cooperate behind the locking surfaces of the teeth in Fig. 23 to secure the
joint member." Ans. 6-7. The Examiner's position is that the language
"adapted to" is an intended use limitation that the prior art need only be
capable of performing and, in this case,
Chen discloses locking opposing locking profiles on the joint
member (Figures 17 and 18) and locking profiles on the panels
(Figures 23 and 22), and the locking profiles of the joint member
are clearly capable of cooperating behind portions of the locking
profiles of the panels to secure the joint member thereto.
Id. at 8.
Appellant replies that "there is absolutely no disclosure, teaching, or
suggestion in Chen for a joint member with locking surfaces adapted to co-
operate behind portions of locking profiles as recited by independent claim
28;" and rather; "the structures disclosed by Figures 17 and 23 are
incompatible, and cannot be combined." Reply Br. 5-6 (emphasis omitted).
Appellant argues that, moreover, "the Examiner wrongly assumes that
'adapted to' merely means 'capable of without any evidence and/or
analysis." Id. at 7.
The Examiner's position is not supported by a preponderance of the
evidence. When "the written description makes clear that 'adapted to,' as
used in the [patent] application, has a narrower meaning, viz., that the
claimed [machine] device is designed or constructed to be used" in a
particular manner, the "adapted to" clause limits the claims. In re Giannelli,
739 F.3d 1375, 1378 (Fed. Cir. 2014). Here, the Specification discloses that
panels 12 and 14 each have a groove 18 that is "adapted to engage" a
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Appeal2014-009821
Application 13/542,275
projection portion of joint member 16, and that 'joint member 16 can
comprise a protruding lower web portion 52 configured to engage a
correspondingly shaped recess portion of groove 18." Spec. 8, 1. 21-9, 1. 7;
16, 11. 24--28 and Fig. 3A. The Examiner has not established that Chen
discloses or suggests a connection wherein corresponding shapes are adapted
to engage each other. Instead, Chen discloses connecting a barbed tongue to
a smooth sideways "U" shaped groove. See Chen, Figs. 10 and 11. As
Appellant has noted, the upper barbs of the structure in Chen's Figure 17 are
offset a distance "D" with respect to the lower barbs, and thus, without
knowing whether the excavations of the structure in Figure 23 include the
same offset, it is not clear that the structures disclosed by Chen's Figures 17
and 23 are "adapted to" cooperate, as called for by claim 28. See Appeal Br.
12.
Even if "adapted to cooperate" were an intended use limitation, the
absence of any disclosure in Chen of connecting a barbed tongue to a
toothed groove calls into question why a person of ordinary skill in the art
would have found it obvious to modify the joint system of Del Rincon in the
manner proposed. Moreover, the Examiner's position that in using the
locking profiles of, for example, Figures 17 and 23, together, the joint
members of Chen will "better join the panels by better securing the joint
member to the panels, or to interconnect the panels," is speculative at best.
Ans. 4. The Examiner has not identified any disclosure or technical
reasoning to support this conclusion. By contrast, Chen discloses applying
adhesives or other bonding material "to the tongue and/or groove sections of
any of the materials in order to ensure a more permanent connection." Chen,
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Application 13/542,275
col. 6, 11. 29-33. Furthermore, as Appellant correctly points out, there are
differences in the configuration of the barbs in Figure 17 and the teeth of
Figure 23, that would prevent Chen's configurations from "better join[ing]
the panels by better securing the joint member to the panels, or to
interconnect the panels," as the Examiner proposes. See Appeal Br. 12;
Reply Br. 5. In view of the above, the mere existence of both toothed
tongues and toothed grooves in different elements does not adequately
establish that these elements are adapted to be secured to each other, would
better join the panels, or that one of ordinary skill would have found it
obvious to make such a connection.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a)
of claims 28, 31-34, 39--41, 47, and 49 as being unpatentable over Del
Rincon and Chen.
Claim 29--0bviousness--Del Rincon/Chen/Grohman
Claim 3 0--0bviousness--Del Rincon/Chen/Haid
Claims 37, 38, and 43--0bviousness--Del Rincon/Chen
Claims 44 and 45--0bviousness--Del Rincon/Chen/Trogolo
Claim 46--0bviousness--Del Rincon/Chen/Klosowski
The Examiner does not rely on Grohman, Haid, Trogolo, Klosowski,
or the further modification of Del Rincon and Chen in any manner that
would remedy the deficiency in the rejection of claim 28 based on Del
Rincon and Chen. Final Act. 7-12. For the same reasons discussed supra,
we do not sustain the rejections under 35 U.S.C. § 103(a) of claims 29, 30,
37, 38, and 43--46.
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Application 13/542,275
DECISION
The rejections of claims 28-34, 37--41, 43--47, and 49 under 35
U.S.C. § 103(a) are reversed.
REVERSED
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