THIERS, Bernard Paul Joseph.

Patent Trials and Appeals Board

Nov 22, 2019

15659964 - (D) (P.T.A.B. Nov. 22, 2019)

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.
15/659,964 07/26/2017 Bernard Paul Joseph THIERS 19791.54.1.1.1 8669
22913 7590 11/22/2019
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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 THIERS

____________

Appeal 2019-001954
Application 15/659,964
Technology Center 3600
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–10 as unpatentable under 35 U.S.C. § 103(a) over
Moriau (US 6,006,486, iss. Dec. 28, 1999) and Searer (US 5,570,554, iss.
Nov. 5, 1996). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Flooring Industries Limited, SARL,
as the Applicant and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to floor covering panels. Spec. ¶ 5.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A floor covering panel for forming a floor covering,
wherein the panel has a first pair of opposite edges and a
second pair of opposite edges;
wherein at least the first pair of edges is provided with
coupling parts made in one piece of the material of the panel,
said coupling parts being configured such that two of such
panels can be coupled to each other in a same plane so as to
form said floor covering, and provide an interlocking in a
direction perpendicular to said plane of the coupled floor panels
and in a direction perpendicular to said edges and parallel to the
plane of the floor covering;
wherein said coupling parts include a tongue and a groove
for providing the interlocking in the direction perpendicular to
the plane of the floor covering, said groove being bordered by
an upper lip and a lower lip, said lower lip extending distally
beyond the upper lip;
wherein said coupling parts further include locking parts for
providing the interlocking in the direction perpendicular to said
edges and parallel to said plane, said locking parts comprising a
locking part at said lower lip and a locking part at the lower
side of the tongue, said locking parts defining locking surfaces,
said locking surfaces of two of such panels being in contact
when coupled to each other;
wherein said coupling parts are configured such that in a
coupled condition of two of said panels said lower lip is bent
downwards, and creates a force forcing the coupled panels
towards each other; and wherein said panel at said first pair of
edges comprises upper edges, each of these upper edges being
provided with a bevel, resulting in that the panels are forced
against each other at a level mainly below said bevels.
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OPINION
Appellant argues claims 1–10 as a group. Appeal Br. 12–17. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Moriau discloses the invention substantially
as claimed, except for the bevel limitation, for which the Examiner relies on
Searer. Final Action 2–3. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made modify Moriau with bevels as taught by Searer. Id. at 4. According to
the Examiner, a person of ordinary skill in the art would have done this to
achieve a desired aesthetic result, facilitate joining, and prevent wear on the
edges of the panels. Id.
Appellant argues that a person of ordinary skill in the art would not
have modified Moriau by Searer. Appeal Br. 12. Appellant argues that “the
concept” of Moriau is to realize a flat decorative surface with the top
surfaces of two coupled panels being as closed as possible held together with
pretension and without gaps between the panels. Id. at 13. According to
Appellant, this results in limiting penetration of dirt and humidity. Id.
Moriau prevents penetration of dirt and humidity between the
floor panels by requiring an upper edge 15 of a first panel to be
in constant contact with an upper edge 16 of the coupled second
panel, so as to present a top protective layer 56 of the first panel
to be firmly abutted to the top protective layer 56 of the
adjoining panel upon coupling of the panels.
Id. at 14. Appellant argues that Moriau teaches that it is a “must” that panels
fit tightly against each other without gaps and that, therefore, Moriau
“teaches away” from floor panels with bevels. Id. at 14–15.
Appellant also argues that the Examiner’s proposed modification
changes the principle of operation of Moriau. Id. at 15, 17, Reply Br. 6.
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Appellant concludes that the Examiner’s proposed combination is the
product of improper hindsight reasoning. Id.
In response, the Examiner first addresses Appellant’s argument that a
non-beveled top surface is a “must” requirement of Moriau. Ans. 3.
According to the Examiner, Moriau’s goal of reducing gaps between
adjacent panels does not preclude using bevels as part of the contour of the
upper surface. Id. at 4. In that regard, the Examiner notes that Moriau relies
upon the structure of its coupling element, not the contours of its upper
surface, to achieve a tight, gapless, connection. Ans. 4. The Examiner
further notes that Appellant confuses the concept of beveling the top edges
of floor boards with “gaps” between the boards. Id. The Examiner
“considers the bevel to be contour of the upper surface, not a gap.” Id. The
Examiner further finds that, as modified, Moriau’s upper surface, at the
bevel, would have tight connection without gaps, which is achieved by its
coupling structure. Id.
With respect to Appellant’s “principle of operation” argument, the
Examiner responds by stating: “The modification of a bevel at the upper
surface does not change the structure or function of the coupling elements,
therefore it does not change the principle of operation of the floor panel
system of Moriau.” Id.
In reply, Appellant re-emphasizes that Moriau describes laminated
floor panels with a fiberboard core. Reply Br. 2–3. Appellant directs our
attention to top layer 56 that protects underlying core 8 from moisture
penetration. Id. at 3. Appellant argues that Searer is directed to wood
flooring, alleging that it makes no mention of laminate flooring. Id. at 4.
From this, we understand that Appellant contends that Searer’s wood does
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not need the same level of protection from moisture penetration as the
fiberboard core of Moriau. Appellant argues that modifying the laminated
floor panel of Moriau to include a bevel would necessarily remove a portion
of protective top layer 56 and thereby expose the fiberboard core. Id. at 4–5.
Appellant also disputes the Examiner’s finding that bevels are not “gaps.”
Id. at 5.
At the outset, we find Appellant’s argument based on equating bevels
with gaps unpersuasive. A beveled edge does not create a “gap” between
adjacent panels, it merely lowers the point of contact between the vertical
sides of the panels to a point that is below the plane of the upper surface of
the floor.
Moriau is directed to floor panels with integrated mechanical locking
elements. Moriau, Abstract. Although Moriau is intended for “so-called
laminated floors,” it expressly states that it can also be applied to “other
kinds of floor covering.” Id. at col. 1, ll. 8–10. The Examiner relies on
Moriau for its teaching on mechanical locking systems, there being no
limitation in claim 1 with respect to the core material used in the claimed
floor panel. Final Action 2–3, Claims App., claim 1.2 Beveling the top
edges of Moriau’s floor panels does not change the principal of operation
with respect to Moriau’s locking mechanism. See Moriau, Figs. 2–4. If
anything, beveling the top edges facilitates making the connection between
adjacent floor panels. Id.

2 Further in this regard, we note that Appellant’s Specification discloses that,
although the invention concerns floor panels, it is not limited to laminate
floor panels. See Spec. ¶ 5.
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We also find unpersuasive Appellant’s argument that beveling
Moriau’s top edge would expose the core to moisture for at least two
reasons. First, the proposed combination does not require or include a
fiberboard core. See Moriau, col. 1, l. 10 (“other kinds of floor covering”).
Second, Appellant’s argument is predicated on an unwarranted assumption
that modified Moriau would be manufactured by first applying a protective
top coat and then beveling the panels to remove a portion of the top coat at
the edges. Appellant fails to consider the possibility that Moriau’s
protective top coat could be applied after the beveling step is completed.
Finally, we find Appellant’s hindsight argument unpersuasive. The
Examiner’s reason to make the proposed combination is based on rational
underpinning. Final Action 4 (“to achieve a predictable and desired
aesthetic, to facilitate joining, and to prevent undo wear on the edges of the
panels”). The Examiner’s reasoning obviates Appellant’s hindsight
argument. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016)
(Explaining that a hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references).
In view of the foregoing discussion, we sustain the Examiner's
unpatentability rejection of claims 1–10.
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s) Affirmed Reversed
1–10 103 Moriau, Searer 1–10

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