DI-COAT CORPORATION

Patent Trials and Appeals Board

Nov 24, 2020

2020002620 (P.T.A.B. Nov. 24, 2020)

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.
15/205,887 07/08/2016 Joshua GRUTZA DCO-101-P-A-1 7012
21828 7590 11/24/2020
CARRIER BLACKMAN AND ASSOCIATES PC
22960 VENTURE DRIVE
SUITE 100
NOVI, MI 48375
EXAMINER
DION, MARCEL T
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
cbalaw@gmail.com
wblackman@ameritech.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA GRUTZA, ZIGMUND R. GRUTZA,
DAVID ASSELIN, and ALAN DAVIS
Appeal 2020-002620
Application 15/205,887
Technology Center 3700
Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and
CARL M. DEFRANCO, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on November 12, 2020.
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Di-Coat Corporation.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention is directed to abrading tools and
methods of making same. Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An abrading tool comprising:
a metal base member comprising a plate portion defining
a first level and a plurality of raised islands integrally formed
with and extending outwardly from the first level, the islands
being spaced apart from one another and each including a
respective tip portion having an arcuate cross-sectional shape;
and
an abrasive composite affixed to at least the tip portion of
at least some of the islands, the abrasive composite comprising
a carrier material and particles of an abrasive material selected
from the group consisting of diamond, tungsten carbide,
titanium carbide, and mixtures thereof, wherein the first level of
the plate portion is substantially free of said abrasive material.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fisher US 5,332,098 July 26, 1994
Dunn US 5,363,530 Nov. 15, 1994
Takahashi US 6,419,574 B1 July 16, 2002
Petersen US 2006/0135050 A1 June 22, 2006
Seth US 2011/0165364 A1 July 7, 2011
REJECTIONS
Claims 8 and 11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Petersen.
Claims 1, 3, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Petersen and Seth.
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Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Seth, and Takahashi.
Claims 4–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Seth, and Fisher.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Seth, and Dunn.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen and Dunn.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen and Takahashi.
Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Seth, and Dunn.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petersen, Seth, Dunn, and Takahashi.
OPINION
Anticipation—Petersen
Appellant groups claims 8 and 11 together in contesting the
anticipation rejection. Appeal Br. 12–15. We decide the appeal of this
rejection on the basis of claim 8, and claim 11 stands or falls with claim 8.
37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to
decide the appeal as to a single ground of rejection of a group of claims
argued together).
The dispositive issue in the appeal of the anticipation rejection is
whether the Examiner errs in reading the “base member comprising a plate
portion” recited in claim 8 on Petersen’s resilient body 4. See Final Act. 3;
Appeal Br. 14. Appellant contends that “Petersen’s resilient foam body
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cannot reasonably be construed as including a plate portion.” Appeal Br. 14.
Appellant asserts that its Specification “teaches that the plate portion 24 is a
relatively thin member which is sufficiently rigid to permit mounting thereof
to a drive shaft which may be rotatably driven by a power tool,” and that
“[t]his is not consistent with Petersen’s resilient body.” Id. at 15.
The disposition of the appeal of this rejection turns on the
interpretation of the claim term “plate portion” and, in particular, whether it
requires a degree of rigidity greater than that of Petersen’s resilient body as
Appellant asserts. The Examiner determines that “[a]s broadly claimed, the
‘plate portion’ can be considered a flat surface of the body” and points out
that “there is no mention of rigidity in the [S]pecification, no mention of
rigidity in the claims, and no special definition given to the term ‘plate
portion.’” Ans. 4.
The Federal Circuit has described the correct inquiry for determining
the broadest reasonable construction as follows:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is
not whether the specification proscribes or precludes
some broad reading of the claim term adopted by the
examiner. And it is not simply an interpretation that is
not inconsistent with the specification. It is an
interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e.,
an interpretation that is “consistent with the
specification.”
In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (holding that
the Board’s construction of the claim term “body” as including components
consistently identified and described in the appellant’s patent application
specification separately from the “body” was “unreasonable” because it gave
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“the term ‘body’ . . . a strained breadth in the face of the otherwise different
description in the specification”).
Appellant does not identify, nor do we find, any mention of the word
“rigid” in Appellant’s Specification. The Specification describes the “plate
portion” as having a first level substantially free of abrasive material and a
plurality of raised islands integrally formed with the first level having an
abrasive composite affixed to at least the top portions of the islands. Spec.
¶¶ 13, 14, 21. These instances of the term “plate portion” do not reveal a
special definition of the term “plate portion,” and the term “plate portion”
does not appear elsewhere in the Specification.
Paragraphs 42–52 of the Specification describe in detail the
illustrative embodiments of the invention. It is not clear that much can be
gleaned from these paragraphs, or the corresponding figures illustrating
these embodiments, regarding the meaning of the term “plate portion”
because the term “plate portion” does not appear in any of these paragraphs.
The Specification describes the embodiment of an abrading tool depicted in
Figures 1–3 as “a grinding disc attachment for use with a rotary hand drill,
drill press[,] or similar tool.” Id. ¶ 44. The Specification describes the
embodiment depicted in Figures 11–12 as a “hand sander” and the
embodiment of Figure 13 as an “abrader insert . . . for use with a
reciprocating sanding or grinding tool.” Id. Additionally, the Specification
describes various “three-dimensional shaped inserts” depicted in Figures
14–19 “for use with a rotary hand drill, drill press[,] or similar tool.” Id.
¶ 45. Notably, the three-dimensional shaped inserts depicted in Figures
14–19 do not include flat base members.
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Appellant does not provide evidence or persuasive technical reasoning
to explain why all of the disclosed uses for the abrading tool embodiments
described in paragraphs 44–45 of the Specification would necessarily require
more rigidity than that of Petersen’s resilient body. Moreover, Appellant’s
Specification does not limit the invention to the particular embodiments or
uses discussed in paragraphs 44–45. Rather, the Specification states that
“[t]he present invention relates to abrading tools and to methods of making
such abrading tools” and, more particularly, “to an abrading tool including a
base member including a main sheet having a plurality of raised islands
thereon.” Spec. ¶ 2. Further, Appellant’s claims recite an “abrading tool”
and not an abrading tool adapted for a particular application. Thus, even
assuming that the particular uses mentioned in paragraphs 44–45 would
require more rigidity than that of Petersen’s body, we see no reason to
import such a limitation into Appellant’s claims. The Specification “is not a
substitute for, nor can it be used to rewrite, the chosen claim language.”
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004). Thus, “a particular embodiment appearing in the written description
may not be read into a claim when the claim language is broader than the
embodiment.” Id. (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34
F.3d 1048, 1054 (Fed. Cir. 1994)).
In short, Appellant’s reliance on the Specification does not apprise us
of error in the Examiner’s reading of the “base member comprising a plate
portion” recited in claim 8 on Petersen’s resilient body 4. Accordingly, we
sustain the rejection of claim 8, as well as claim 11, which falls with claim 8,
under 35 U.S.C. § 102(b).
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Obviousness—Petersen and Seth
Appellant groups claims 1, 3, 9, and 14 together in contesting this
rejection. Appeal Br. 15–21. We decide the appeal of this rejection on the
basis of claim 1, and claims 3, 9, and 14 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Petersen does not disclose the base member
(resilient body 4) “being metal, but states that any resilient material can be
used.” Final Act. 4 (citing Petersen ¶ 46). The Examiner determines it
would have been obvious “to use a metal backing in the tool of Petersen, as
metal is known as a suitable flexible backing for abrasive tools as taught by
Seth.” Id.
Appellant contends that Seth’s teaching of using a metal foil as a
backing “does not teach, disclose[,] or suggest a metal base member as
disclosed and claimed by [Appellant]” and that “[t]he combination of
Petersen and Seth further fails to render [Appellant’s] abrasive tool,
including a metal base member[,] obvious.” Appeal Br. 15. This contention
appears to be premised on Appellant’s argument, which we find
unpersuasive for the reasons discussed above, that the claim language “base
member comprising a plate portion” should be construed as requiring a rigid
structure.
Appellant also “submits that modifying Petersen’s flexibly resilient
sanding sponge to add a metal base member including a base portion would
require a substantial reconstruction and redesign” and would “require a
change in the basic principle of resiliency under which . . . Petersen’s
construction was designed to operate.” Appeal Br. 20. Appellant
additionally argues “that Petersen’s clear preference for a grinding tool with
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a flexibly resilient foam body teaches away from [Appellant’s] claimed
invention, which requires a metal base member including a plate portion.”
Id. at 21.
Appellant’s arguments are not persuasive as they appear to presume
that the proposed modification would render Petersen’s sanding article rigid
and non-conformable. This is not the case. As the Examiner explains,
Petersen specifically states that “any resilient or
conformable material with at least one coatable surface
may be used for the body of the sanding article” in
[0046]. Based on the teachings of Seth, a metal base
member can be flexible, which would satisfy the need for
a conformabl[e] base member in Petersen.
Ans. 5.
Petersen’s objective is to provide a “sanding block includ[ing]
separated raised abrasive surfaces on individual separated portions each of
which can be compressed relatively independently, therefore making the
sanding block particularly suited for sanding a profiled wooden surface, such
as wood trim molding” and also capable of being “used in a wide variety of
end use applications including sanding flat surfaces and sanding painted
surfaces.” Petersen ¶ 5. Thus, Petersen teaches that “any resilient or
conformable material with at least one coatable surface may be used for the
body of the sanding article.” Id. ¶ 46 (emphasis added). Seth teaches metal
foil as a suitable flexible backing material for an abrasive article. Seth ¶ 22.
In fact, notably, Seth teaches metal foil as just one alternative from a group
of suitable flexible backing materials that also includes foam, which
Petersen identifies as a suitable material for body 4. Id.; Petersen ¶ 46.
Providing a flexible backing material, such as metal foil, as taught by Seth,
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on the body of Petersen’s abrasive sanding device would permit the raised
abrasive surfaces to independently conform to profiled surfaces in
accordance with Petersen’s objectives.
Appellant relies on a Declaration of Alan Davis (one of the named
inventors on the present application) dated October 10, 2018 (hereinafter
“Davis Declaration” or “Davis Decl.”), as purportedly “clearly establish[ing]
commercial success” of tools according to the claimed invention. Appeal
Br. 30. The Davis Declaration states that, since at least 2015, Di-Coat
Corporation has been selling two products, each of which includes a metal
base member including a plate portion defining a first level and a plurality of
spaced, raised islands extending outwardly from the first level and having
arcuate tip portions, with an abrasive composite comprising a carrier
material and particles of an abrasive material affixed to at least the tip
portion of at least some of the islands and the first level of the plate portion
being substantially free of the abrasive material. Davis Decl. ¶ 2. Between
October 1, 2015, and September 30, 2018, Di-Coat sold over 207,000 pieces
of these two products combined amounting to total sales receipts of over
$550,000. Id. ¶ 3, Sales Summary. The Davis Declaration attributes the
purported commercial success of these products “to the novel features of the
product including the islands having an arcuate cross-sectional shape, which
provides superior performance in abrasive grinding, as compared to islands
or protrusions having flattened tops, which would be more suitable for
polishing.” Id. ¶ 4.
The Davis Declaration fails to establish strong evidence of
commercial success of the claimed invention because it provides no data
concerning whether the number of sales of Di-Coat’s products represents a
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substantial share in this market. Our reviewing court has noted in the past
that evidence related solely to the number of units sold provides a very weak
showing of commercial success, if any. See In re Huang, 100 F.3d 135, 140,
(Fed. Cir. 1996); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1026–27 (Fed. Cir. 1985) (finding that sales of 5 million units represent a
minimal showing of commercial success because “[w]ithout further
economic evidence ... it would be improper to infer that the reported sales
represent a substantial share of any definable market”).
Moreover,
“For objective evidence of secondary considerations to be
accorded substantial weight, its proponent must establish a
nexus between the evidence and the merits of the claimed
invention.” Where the offered secondary consideration actually
results from something other than what is both claimed and
novel in the claim, there is no nexus to the merits of the claimed
invention.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citations omitted). As the
Examiner points out, the Davis Declaration attributes any commercial
success of the two Di-Coat products to the arcuate cross-sectional shape of
the islands, which is a feature of Petersen’s abrasive article and, thus, not a
novel feature of the claimed invention. Final Act. 10; see id. at 3 (citing
Petersen ¶ 24 (disclosing “arched” or “dome shaped” end surfaces of the
raised islands)).
For the above reasons, after weighing all of the evidence, including
both the evidence of obviousness and the evidence of nonobviousness, we
conclude the evidence of obviousness of the subject matter of claim 1
outweighs the evidence of nonobviousness. Accordingly, we sustain the
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rejection of claim 1, as well as claims 3, 9, and 14, which fall with claim 1,
under 35 U.S.C. § 103(a).
Obviousness—Petersen and Takahashi; Petersen, Seth, and Takahashi
In addressing the limitation in claim 2 and in claim 13 that the width
of the islands is less than the distance between two adjacent islands, the
Examiner relies on Takahashi’s teaching that the distance between adjacent
protruded parts of an abrasive tool should be in a range from 1/3 to
approximately twice the mean outer diameter of the protruded parts so the
abutment pressure of abrasive grains can be maintained at high value and to
permit various grinding wastes to be smoothly discharged through this gap.
Final Act. 5, 7 (citing Takahashi 6:6–12). The Examiner determines it
would have been obvious “to have the width of the islands of Petersen less
than the space between the islands, as these dimensions are known results
effective variables which [affect] abutment pressure, and ability of the tool
to discharge grinding waste as taught by Takahashi.” Id.
Appellant argues that Takahashi’s projections have flat tops, which
are better for polishing than for removing material from a workpiece, in
contrast to elevated curved surfaces, which allow a deeper cut and faster
stock removal, and that modifying Petersen’s sponge as proposed by the
Examiner would require a substantial reconstruction and redesign of
Petersen and would change the principle of resiliency under which Petersen
operates. Appeal Br. 22–23, 27–28.
These arguments are not persuasive because the Examiner does not
propose to modify the curved shape of Petersen’s islands (separated
portions). Rather, as discussed above, the Examiner applies Takahashi for
its teachings with regard to the width of the islands relative to the distance
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between adjacent islands. Appellant does not cogently explain, or present
evidence to show, that spacing Petersen’s islands (separated portions) by a
distance that is greater than the widths of the islands would require
substantial reconstruction and redesign of Petersen’s abrasive device or
change its principle of operation (i.e., resiliency).
After weighing all of the evidence, including both the evidence of
obviousness and the evidence of nonobviousness (i.e., the Davis Declaration,
discussed above), we conclude the evidence of obviousness of the subject
matter of claims 2 and 13 outweighs the evidence of nonobviousness.
Accordingly, we sustain the rejections of claims 2 and 13 under
35 U.S.C. § 103(a).
Obviousness—Petersen, Seth, and Fisher
In contesting the rejection of claims 4–7, which depend from claim 1,
Appellant argues only that “[t]he introduction of Fisher fails to overcome the
deficiencies of Petersen and Seth.” Appeal Br. 24. For the reasons
discussed above, Appellant’s arguments fail to apprise us of error in the
rejection of claim 1 as unpatentable over Petersen and Seth, and likewise fail
to apprise us of error in the rejection of claims 4–7 as unpatentable over
Petersen, Seth, and Fisher. Accordingly, we sustain the rejection of claims
4–7 under 35 U.S.C. § 103(a).
Obviousness—Petersen and Dunn, alone or combined with one or more of
Seth and Takahashi
The Examiner’s rejections of claims 10, 12, and 14–16 are grounded,
in pertinent part, on the Examiner’s determination that it would have been
obvious “to include indentations on an inner surface of the plate of Petersen,
the indentations being the result of a stamping process as taught by Dunn
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(col. 3, lines 58-61), which predictably form islands in a base member.”
Final Act. 6, 7, 9.
Appellant argues that “the Examiner’s suggested modification of
Petersen would require substantial reconstruction and redesign of the
reference.” Appeal Br. 25, 29.
Dunn discloses a pipe joint cleaner comprising a conically shaped
member (cone 10) having a plurality of cutting projections 13 on both the
interior and exterior surfaces thereof. Dunn 3:53–58, Figs. 1–4. Dunn’s
pipe joint cleaner is made by stamping a flat sheet material from each side to
form preferably semi-circular projections and then rolling the sheet material
into the conical shape. Id. 3:58–61. Dunn’s projections abrade away
projecting burrs or slivers from the pipe by rotating the conical cleaner on
the pipe surface to be cleaned. Id. 4:1. More specifically, when the cut end
of a pipe is placed against the interior of Dunn’s conical cleaner, as shown in
Figure 1, and the conical cleaner is rotated against the end surface of the
pipe, projections 13 on the interior wall of cone 10 cut and abrade away any
burrs or slivers from the external end and surface of the pipe. Id. 4:2–8.
When the pointed end of Dunn’s pipe cleaner is inserted into a cut pipe, as
shown in Figure 2, and the pipe cleaner is rotated, projections 13 on the
outer surface of cone 10 similarly clean up burrs on the inside surface of the
pipe. Id. 4:9–13.
Dunn’s pipe cleaner operates under a significantly different principle
than Petersen’s abrasive sanding sponge. More specifically, Dunn’s cone
and projections must be relatively rigid in order for the projections to cut and
abrade away burrs from a pipe. Petersen’s sanding sponge, on the other
hand, uses abrasive particles affixed to conformable or resilient separated
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portions (islands) integral with a flexible base to permit the sanding sponge
to be bent and curved to conform to a contoured surface, as discussed above.
It is not apparent how Petersen’s separated portions could be formed by
stamping the base member material, as taught by Dunn, to form functioning
cutting and abrading protrusions, without sacrificing the conformability
feature of Petersen’s sanding sponge. Thus, it is not clear why a person
having ordinary skill in the art would have been prompted to make such a
modification, and the Examiner does not articulate a reason for doing so.
See Final Act. 6, 7, 9.
Accordingly, we do not sustain the rejections of claims 10, 12, and
14–16 under 35 U.S.C. § 103(a).

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DECISION SUMMARY
In summary,
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
8, 11 102(b) Petersen 8, 11
1, 3, 9, 14 103(a) Petersen, Seth 1, 3, 9, 14
2 103(a) Petersen, Seth,
Takahashi
2
4–7 103(a) Petersen, Seth,
Fisher
4–7
10 103(a) Petersen, Seth,
Dunn
10
12 103(a) Petersen, Dunn 12
13 103(a) Petersen,
Takahashi
13
14, 16 103(a) Petersen, Seth,
Dunn
14, 16
15 103(a) Petersen, Seth,
Dunn, Takahashi
15
Overall
Outcome
1–9, 11, 13,
14
10, 12, 15,
16
RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART