Obviousness reversed by Board in Ex parte KORNFALT
The Appellants in Ex parte KORNFALT did well in negating an obviousness rejection:
We agree with the Appellants. While Lindgren does teach the use of
decorative patterns in the laminate, there is no teaching of using matching
decorative patterns on a floor and a floor strip. Furthermore, the Examiner
has failed to provide an adequate articulation of a reason with a rational
underpinning to explain how the resilient insert member 18 of Ruff could be
used as a carrier member for the laminate of Lindgren. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”).
The Appellants also prevailed on a substitution issue:
We agree with the Appellants. The Examiner has not set forth an
adequate articulation of a reason with a rational underpinning to show how
the destructible fiberboard of Lindgren could be substituted for the
thermoplastic material of the insert member 18 of Ruff and survive in the
water and other elements found in a floor environment. See KSR at 418.
Thus, one skilled in the art would not be led to substitute the thermoplastic
of the insert member of Ruff with the fiber board of Lindgren.