Appeal No. 2005-2175
Application 10/104,383
claims 56, 60 and 65 through 67 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pollock in view of Pitman as applied to claims 35, 47 through 51, 53 and 58, further in view
of Nelson and further in view of Haid (answer, page 10);
claim 68 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nelson in view of
Pollock and Pitman (answer, page 11); and
claim 67 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Nelson in view of
Pollock and Pitman as applied to claim 68 above and further in view of Haid (answer, pages
11-12).
Appellants group the appealed claims into nine groups in which the grouped claims
“stand or fall together” (brief, page 5). We observe that five groupings include claims that are
rejected on different grounds. The applicable rule provides that the claims can be grouped “[f]or
each ground of rejection.” Thus, we decide this appeal based on appealed independent claims
35, 67 and 68 and on appealed claims 52, 54, 56, 57 and 62, all directly or ultimately dependent
on claim 35, as representative of the grounds of rejection. 37 CFR § 1.192(c)(7) (2003); see also
37 CFR § 41.37(c)(1)(vii) (2005).
We affirm the grounds of rejection of appealed claims 67 and 68, and we reverse the
grounds of rejection of the remaining appealed claims as set forth below. Thus, the decision of
the examiner is affirmed-in-part.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
In order to review the examiner’s application of prior art to the claimed invention
encompassed by appealed claims 35, 52, 54, 56, 57, 62, 67 and 68, we first interpret the claims
by giving the terms thereof the broadest reasonable interpretation in their ordinary usage as they
would be understood by one of ordinary skill in the art in light of the written description in the
specification, unless another meaning is intended by appellants as established in the written
description of the specification, and without reading into the claims any limitation or particular
embodiment disclosed in the specification. See, e.g., In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
Each of the independent claims is drawn to “[a] thermoplastic flooring plank” (emphasis
supplied). We determine that when the term “flooring” in the preambular clause is considered in
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