Ex Parte Hopkins

Patent Trial and Appeal Board

Aug 2, 2017

13751241 (P.T.A.B. Aug. 2, 2017)

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.
13/751,241 01/28/2013 Samuel P Hopkins Hopkins-1301 8022
36787 7590
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
patents @ BLKLawGroup.com
cbelleci @ BLKLawGroup .com
blynn @ BLKLawGroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL P. HOPKINS1
Appeal 2016-005307
Application 13/751,241
Technology Center 3700
Before DANIEL S. SONG, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—20 in the present application (App. Br. 5). We have
jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM-IN-PART.
1 The real party in interest is inventor, Samuel P. Hopkins (Appeal Brief
(hereinafter “App. Br.”) 3).
Appeal 2016-005307
Application 13/751,241
The claimed invention is directed to a kit for resurfacing tungsten
jewelry (Title; Abstract). Representative independent claim 1 reads as
follows (App. Br. 21, Claims App’x, emphasis added):
1. A tungsten jewelry resurfacing kit for consumer end use,
the kit comprising:
A) A buffing cloth;
B) A container of tungsten resurfacing compound having
less than 50 ml of resurfacing compound, wherein the
resurfacing compound comprises a mixture of
i) a diamond powder of at least 1000 grit size; and
ii) a binder which is a semi-solid at ambient
temperatures.
The Examiner rejects claims 1 and 3—18 as unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Kushner2 and
SU ’175.3
The Examiner rejects claims 2 and 19—20 as unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Kushner, SU ’175,
and Fitzgerald.4
ANALYSIS
The Appellant argues various claims separately. Only those
arguments actually made by the Appellant have been considered in this
2 U.S. Patent No. US 6,883,989 B1 issued April 26, 2005 to Kushner et al.
3 Soviet Union reference 800175 dated January 30, 1981 (citations to the
machine-generated English translation of record).
4 U.S. Patent No. US 6,502,589 B1 issued January 7, 2003 to Fitzgerald et
al.
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Application 13/751,241
decision. Arguments that the Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claims 1 and 3—18
The Examiner rejects claims 1 and 3—18 as unpatentable over the
combination of Kushner and SU ’175 (Final Office Action (hereinafter
“Final Act.”) 2). The Examiner finds that Kushner discloses
a jewelry surfacing kit for consumer end use, the kit
comprising: a cleaning agent (a compound), a means for
removing the cleaning agent (the compound), a buffing cloth,
wherein the compound is placed in a small container for
ensuring the usability of this apparatus.
(Final Act. 2, citing Kushner, Abs.; col. 3,11. 14—59; col. 4,11. 55—62; col. 5,
11. 47-56, Figs. 1—6E).
The Examiner further finds that SU ’175 discloses
a diamond paste for final surface polishing of a metal surface
comprising a mixture of a diamond powder and a binder of
petroleum jelly, which is a semi-solid at ambient temperatures,
wherein the amount of the diamond powder is 2-40% by
weight; the amount of the binder is 20-40% by weight that
allows ensuring the qualitative abrasive treatment of metal
surfaces.
(Final Act. 2—3, citing SU ’175, col. 1,11. 1—30; col. 3,11. 11—16).
Based on the above findings, the Examiner concludes that
To incorporate a semi-solid binder in the polishing compound
as taught by [SU ’175] to create a paste suitable for manually
polishing a variety of metal surfaces, would have been obvious
to those of ordinary skill in the art. As for the specific size of
the diamond powder particles used in the mixture for cleaning
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Application 13/751,241
surfaces, the range of grit size is found in the prior art and it
would have been obvious to a person of ordinary skill in the art
to have arrived at a suitable grit size for polishing a specific
metal[](tungsten) by mere routine experimentation.
(Final Act. 3).
Claim 1
The Appellant argues that neither Kushner nor SU ’175 discloses a
tungsten jewelry resurfacing kit for consumer end use, and that Kushner
merely discloses a device for cleaning objects such as glasses, golf balls,
mirrors, and other objects (App. Br. 10). The Appellant also argues that it is
unaware of ANY tungsten jewelry resurfacing kit for consumer
end use using “diamond powder in a semi-solid lubricant
carrier”, nor any jewelry resurfacing kit for consumer end use
using “diamond powder in a semi-solid lubricant carrier.”
(Reply Br. 4).
However, these arguments do not address the obviousness rejection,
which is based on the combination of Kushner and SU ’175. We find no
error in the above noted findings with respect to Kushner, which discloses a
kit for cleaning jewelry as well as the other objects noted by the Appellant
(Kushner, col. 4,1. 60 (specifying “jewelry” as an object that may cleaned
“using a cleaning agent and a towel”)). SU ’ 175 is properly relied upon by
the Examiner for disclosing a cleaning agent/compound (Final Act. 2—3).
The Appellant also argues that Kushner is non-analogous art because
it discloses cleaning of jewelry but does not resurface jewelry, and that
“cleaning agent suitable for ‘computer screens and cell phones’ would [not]
be suitable for resurfacing tungsten jewelry, because . . . these fields are
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Application 13/751,241
incompatable [sic].” (Reply Br. 3). We do not agree that these fields are
incompatible or non-analogous. Cleaning and resurfacing, removes
impurities from the surface, in this case, from the surface of the jewelry. For
example, it cannot be reasonably disputed that it is well known to clean
silver jewelry to remove tarnish therefrom, and such removal of tarnish
resurfaces the silver. As noted above, Kushner clearly discloses a kit for
cleaning jewelry, and as such, is in the same field of endeavor, or is
reasonably pertinent to the problem being addressed by the claimed kit. In
this regard, “[a] reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect.” EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Although Kushner does not
specify the particular material of the jewelry as being tungsten, it would
have been obvious to a person of ordinary skill in the art to have selected a
cleaning agent/compound that would have been suitable for a particular
jewelry.
The Appellant further argues that SU ’175 “also fails to teach or
suggest tungsten jewelry resurfacing kit,” and merely discloses a diamond
paste “used in the final finishing of surfaces of work pieces made of various
materials, especially in the manufacture of components where elevated
temperatures (above 100-C.) are developed in the working zone.” (App. Br.
11). However, this argument is unpersuasive because SU ’175 does not
teach that the disclosed paste is only suitable for use in manufacturing of
components, or that the paste would have been ineffective at specific
temperatures, much less even mention 100-C as a requirement.
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Application 13/751,241
The Appellant also argues that the claimed buffing cloth is not taught
or suggested in Kushner or SU ’175, and that “[a]n absorbent cotton towel
designed for ‘removing cleaning agent and/or soil’ is simply not suitable for
use with diamond past to resurface tungsten surface.” (App. Br. 11). The
Appellant’s argument is without merit.
The Specification of the present application states that “[t]he buffing
cloth 14 may be formed of a variety of known materials, such as a lint free
micro fiber cloth or such as material used for forming jewelry polishing
cloths.” (Spec. 1 [0021]). Kushner discloses that “[i]n one embodiment of
the invention[,] towel 130 comprises an absorbent micro-fiber cleaning
cloth, in other embodiments[,] towel 130 is a cotton cloth.” (Kushner, col. 3,
11. 52—54). As such, Kushner discloses the very same cloth made of micro­
fiber as disclosed in the Appellant’s Specification.
The Appellant also argues that the claimed container having less than
50 ml of tungsten resurfacing compound is not taught or suggested, and “the
claimed size is optimal for consumer use.” (App. Br. 12). However, we
agree with the Examiner that
the size of the container would be seen as one of obvious design
choice by those of ordinary skill in the art, dependent upon cost
factors associated with marketing a diamond grit paste product,
rather than any criticality attributed to end use. Clearly, with a
relatively expensive abrasive like diamond, those of ordinary
skill in the art would consider the final cost to the consumer in
marketing such a kit, and would provide a sufficient amount of
diamond paste to achieve the desired result, while still keeping
the overall cost manageable.
(Ans. 4; cf. Spec. 122).
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In the above regard, size of a container is not ordinarily a patentable
feature. In re Rose, 220 F.2d 459, 463 (CCPA 1955) (“size of the article
under consideration [] is not ordinarily a matter of invention”) (citation
omitted); see also Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346, (Fed.
Cir. 1984); In re Kirke, 40 F.2d 765, 767 (CCPA 1930). In this instance,
Appellant has not disclosed how the claimed kit functions differently due to
the claimed amount of resurfacing compound, other than to disclose that a
kit with more resurfacing compound will last longer depending on consumer
intended usage (Spec. 122). Appellant discloses that 2-4 ml will last a very
long time for the average consumer before compound 20 is depleted while
10 ml will suffice for a consumer having multiple tungsten jewelry pieces.
Less than 25 ml is said to suffice for most practical applications while 25
ml—50 ml would be associated with consumers having collections of
tungsten jewelry (Id). Thus, claim 1 recites a range that encompasses
multiple smaller ranges each of which is optimal for a different type of
consumer end use, with the upper end of the range being most suitable for
consumers who are more akin to commercial end users in that they own
“collections of tungsten jewelry.” (Id.). The Examiner reasonably
determined that a skilled artisan would modify the size of the container of
Kushner based on the intended usage and cost to a consumer of a kit with an
expensive diamond paste (Ans. 4).
The Appellant also argues that the claimed tungsten resurfacing
compound with diamond powder of at least 1000 grit size is not taught or
suggested by the applied art (App. Br. 12—13). However, we agree with the
Examiner that
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As for the specific size of the diamond powder particles used in
the mixture for cleaning surfaces, the range of grit size is found
in the prior art and it would have been obvious to a person of
ordinary skill in the art to have arrived at a suitable grit size for
polishing a specific metal[](tungsten) by mere routine
experimentation.
(Final Act. 4).
We further agree with the Examiner that “[s]uch grit size would be
regarded as a results effective variable, depending upon the degree of
treatment desired to achieve a particular finish.” (Ans. 3). Indeed, the
Appellant appears to confirm the Examiner’s conclusion in stating that
In practice substantially all commercially available grit sizes
will be suitable for polishing tungsten, with factors such as
polishing method, polishing time, desired surface finish, and
cost being relevant factors in this determination.
(App. Br. 13).
The Appellant further argues that the Examiner “fails to elaborate on
what type of experimentation would yield these results.” (Reply Br. 7).
However, it is evident that merely utilizing different grit size is all that is
required.
The Appellant argues that claimed binder which is a semi-solid at
ambient temperatures is not taught or suggested in the applied art (App. Br.
13—14). According to the Appellant, Kushner teaches away from the claim
because it uses a pumping spray nozzle for dispensing “a liquid cleaning
agent such as an alcohol based cleaner” (App. Br. 14), and that if the
suggested change to Kushner is made, “it would no longer be suitable for
eyeglasses, sunglasses, mirrors, cell phones, computer screens and would
destroy the intended purpose of this cleaner.” (Reply Br. 9).
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Application 13/751,241
However, Kushner discloses that body portion of the device has a
reservoir suitable for enclosing agents that is a liquid, gel, or a dry cleaning
agent. (Kushner, col. 3,11. 14—18). Accordingly, utilizing anon-liquid
agent/compound is encompassed within the disclosure of Kushner. As also
noted above, it would have been obvious to a person of ordinary skill in the
art to have selected a cleaning agent/compound that would be suitable for
cleaning the particular jewelry material.
The Appellant further argues that it is not clear that SU ’ 175 discloses
a “binder which is a semi-solid at ambient temperatures” as claimed because
While the petroleum jelly is certainly disclosed, the presence of
the other binder elements (Glycerin and Syntanol) in the
secondary reference change the composition and there seems to
be no teaching of the “binder which is a semi-solid at ambient
temperatures” as the examiner suggests.
(App. Br. 14; see also Reply Br. 8).
This argument is also unpersuasive. SU ’175 discloses a “DIAMOND
PASTE,” and further discloses that the compound is “syringe paste” (SU
’175, Title, pg. 1) thereby indicating that it is semi-solid and gel-like, and
not a pure liquid or solid.
Accordingly, in view of the above, we affirm the Examiner’s
obviousness rejection of claim 1.
Claims 3 and 4
Claim 3 depends from claim 1, and recites that “the binder is one of a
vegetable fat, and animal fat, petroleum jelly, and mixtures thereof.” Claim
4 depends from claim 3, and further recites that “the binder is a vegetable
fat.” The Appellant argues that “[i]t is not clear how the examiner is
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Application 13/751,241
addressing this claimed construction of the binder” considering SU ’175
discloses a binder that is a combination several different components (App.
Br. 15).
As the Examiner finds, SU ’175 specifically discloses Vaseline®,
which is a petroleum jelly, thereby satisfying claim 3, which recites that the
binder may be petroleum jelly. However, as to claim 4, we agree with the
Appellant that it is not clear how the Examiner addresses this limitation as
there is no mention of “fat” in either the Final Action or the Answer.
Accordingly, we affirm the rejection with respect to claim 3, but reverse
with respect to claim 4.
Claims 5 and 6
The Appellant argues that the grit size of the diamond powder recited
in these claims is not disclosed, and that “[t]he examiner fails to explain
what a ‘suitable grit size’ would be.” (App. Br. 16). However, as discussed
supra relative to claim 1, we agree with the Examiner that “it would have
been obvious to a person of ordinary skill in the art to have arrived at a
suitable grit size for polishing a specific metal[](tungsten) by mere routine
experimentation” (Final Act. 4), and that “[sjuch grit size would be regarded
as a results effective variable, depending upon the degree of treatment
desired to achieve a particular finish.” (Ans. 3). Accordingly, we do not
find the Appellant’s argument persuasive, and affirm the rejection of these
claims.
Claims 7 and 8
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As to claims 7 and 8 that each recite a certain percentage range for the
diamond powder by volume of the resurfacing compound, the Appellant
admits that the percent range SU ’175 anticipates the claimed range up to
40% (App. Br. 16—17). However, the Appellant poses the inquiry
why would one of ordinary skill in the art in reading this
reference as a whole look to the extreme upper ranges of this
secondary reference and select an extreme example rather than
the express operative example given when attempting to
combine this with the spray cleaning system of the primary
reference?
(App. Br. 16—17).
We are not apprised of Examiner error on this point because not only
does SU ’175 anticipate the claimed range as conceded by the Appellant,
which is all that is required, the Appellant also improperly seeks to narrow
the scope of its disclosure to a preferred embodiment. The rejection of these
claims is affirmed.
Claim 9
The Appellant further argues that whereas claim 9 recites that “the
diamond powder is about 50% by volume of the resurfacing compound,”
SU ’ 175 only discloses diamond grit of up to only 40% so that the claim
extends beyond the extreme outer range of the secondary reference (App. Br.
17). However, the pertinence of this line of reasoning is not entirely clear
because this rejection is, again, based on obviousness. Firstly, although SU
’175 discloses a 40% by volume diamond powder, it does not specify the
metal for which such composition and polishing technique would be
suitable. As such, we agree with the Examiner that “it would have been
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obvious to a person of ordinary skill in the art to have arrived at a suitable
grit size for polishing a specific metal[](tungsten) by mere routine
experimentation.” (Final Act. 4). Second, there appears to be no criticality
with respect to the recited 50% volume of diamond powder in polishing
tungsten in view of the Appellant’s own explanation that “all commercially
available grit sizes will be suitable for polishing tungsten.” (App. Br. 13).
Accordingly, we do not find the Appellant’s argument persuasive, and
affirm the rejection of claim 9.
Claim 10
The Appellant argues that claim 10 recites that the container holds
less than 10 ml of the resurfacing compound, but Kushner teaches
commercial brand cleaners that are 6 fl. oz., which are over the claimed size
(App. Br. 17). However, this argument is unpersuasive because as
discussed, “the size of the container would be seen as one of obvious design
choice” (Ans. 4), and, moreover, size is not ordinarily a patentable feature.
In re Rose, 220 F.2d at 463. Accordingly, the rejection of claim 10 is
affirmed.
Claims 11—15, and 18
As to claims 11—15, and 18, the Appellant relies on arguments with
respect to claims addressed supra (App. Br. 18). Accordingly, we affirm the
Examiner’s rejection with respect to claims 11, 12, 14, 15, and 18.
However, we reverse the rejection with respect to claim 13, which recites
that the binder is a vegetable fat.
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Claims 2, 19, and 20
The Examiner rejects claims 2, 19, and 20 as unpatentable over the
combination of Kushner, SU ’175, and Fitzgerald (Final Act. 3). Claims 2
and 19 recite that the kit further includes “a plurality of swabs for removing
the resurfacing compound from the container.” Claim 20 depends from
claim 19. The Examiner finds that Fitzgerald “discloses a jewelry surfacing
kit comprising a swab for removing a compound. To incorporate a set of
swabs to facilitate application, distribution, or removal of polishing
compound during treatment, would have been obvious in view of
Fitzgerald.” (Final Act. 3).
Claim 2
The Appellant initially relies on unpersuasive arguments already
discussed supra (App. Br. 19). The Appellant also argues that Fitzgerald
“does not add anything further” relative to the rejection of claim 1, and does
not disclose the recited “plurality of swabs” for removing “tungsten jewelry
‘resurfacing compound from the container. (App. Br. 19—20). According
to the Appellant, Fitzgerald merely discloses “a single brush that can be used
to apply silver polish.” (App. Br. 20).
The Appellant’s arguments are unpersuasive as they largely argue
Fitzgerald individually whereas the rejection is based on a combination of
references. Fitzgerald clearly teaches a swab or brush 16 for dispensing a
polishing compound 17 for jewelry (Fitzgerald, col. 3,11. 60-64; Fig. 7).
Thus, incorporation of a swab in a kit for cleaning jewelry such as that
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disclosed in Kushner would have been obvious to one of ordinary skill in the
art to facilitate application of the agent/compound.5 As such, we agree with
the Examiner that
The use of a swab or dauber to dispense the resurfacing
compound is adequately taught by Fitzgerald. The use of
several such swabs to dispense the resurfacing compound in
multiple applications, is seen as an obvious duplication of parts.
It is the Examiner’s view that to simply incorporate one or more
swabs into the kit in Kushner to facilitate application,
distribution, and/or removal of polishing compound during
treatment, would have been obvious in view of Fitzgerald.
(Ans. 5).
Accordingly, we affirm the Examiner’s rejection with respect to claim
2.
Claims 19 and 20
The Appellant relies on arguments submitted with respect to claims 2,
7, and 8 (App. Br. 20-21). However, as discussed above, those arguments
are unpersuasive. Accordingly, we affirm the Examiner’s rejection with
respect to claim 19, but reverse the Examiner’s rejection with respect to
claim 20 for the reason discussed infra.
Claim 20
The Appellant correctly observes that claim 20 recites that “the binder
is a fat.” (App. Br. 24). Because it is not clear how the Examiner addresses
this limitation, we reverse this rejection with respect to claim 20.
5 The language stating that the swabs are “for removing the compound from
the container” is merely a statement of intended use for the swabs.
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CONCLUSIONS
1. The Examiner’s rejections of claims 1—3, 5—12, and 14—19 are
AFFIRMED.
2. The Examiner’s rejections of claims 4, 13, and 20 are
REVERSED.
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)(l)(iv).
AFFIRMED-IN-PART
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