Ex Parte Koenig et al

Patent Trial and Appeal BoardAug 27, 2013

11524126 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH M. KOENIG, JR. and MARK BUDZIK ____________ Appeal 2011-010863 Application 11/524,126 Technology Center 3600 ____________ Before JAMES P. CALVE, JILL D. HILL, and BEVERLY M. BUNTING, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-6. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-010863 Application 11/524,126 2 CLAIMED SUBJECT MATTER Claims 1 and 3 are independent. Claim 1 is reproduced below: 1. For trimming an archway, a drywall-trimming strip having a nose with a tabbed edge and an opposite edge, the drywall-trimming strip having a first series of slits spaced from one another and defining a series of tabs spaced from one another along the tabbed edge, the tabs being joined to the tabbed edge of the nose by a continuous juncture extending along and defining the tabbed edge of the nose, the nose having a second series of slits extending to the continuous juncture and spaced from one another, as the slits defining the tabs are spaced from one another, wherein the nose of the drywall- trimming strip is made from a flexible, polymeric material, except for the continuous juncture, which is made from a softer, more flexible material in comparison to the polymeric material of the nose. REJECTIONS Claims 1-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Koenig, Jr. (hereinafter “Koenig”) (US 6,119,420; iss. Sep. 19, 2000) and Bifano (US 5,816,002; iss. Oct. 6, 1998). Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Koenig, Bifano, and Da Cunha (US 290,750; iss. Dec. 25, 1883). ANALYSIS Claims 1-5 as unpatentable over Koenig and Bifano The Examiner found that Koenig discloses a trimming strip having a nose 112 with a tabbed edge 114 having a first series of slits 118 spaced to define tabs 120, and an opposite flanged edge 116, 122 extending therefrom, but lacks a second series of slits in the nose. Ans. 3-4. The Examiner found that Bifano teaches a second series of slits 233 in what the Examiner Appeal 2011-010863 Application 11/524,126 3 interpreted as a strip nose and a first series of strips 232 with a continuous portion 235 therebetween to provide greater flexibility in a semi-ridged member. Ans. 4. The Examiner reasoned that it would have been obvious to modify Koenig with additional slits extending into the nose portion, as taught by Bifano, to allow for greater flexibility in the strip. Ans. 4, 5. Appellants argue that Koenig expressly teaches that adding slots to the nose portion of a trimming strip, as in the prior art, requires filling the slots with a drywall-finishing material and sanding the filled portions, so adding such slots in the nose of Koenig would render Koenig unsatisfactory for its intended purpose and change its principle of operation. App. Br. 4-51; Reply Br. 1-3(citing col. 3, l. 66 to col. 4, l. 7; col. 6, ll. 25-28; fig. 1 (prior art)). Appellants also argue that Bifano does not disclose any slits that extend into the bead 120, which forms the nose of the strip. Reply Br. 4. We agree. The Examiner has not established, by evidence or technical reasoning, a sufficient factual basis to reasonably support the conclusion that a skilled artisan would have had reason to include a second series of slits in the nose of Koenig, as recited in claims 1 and 3, when Koenig discloses such a design as disadvantageous. The Examiner’s finding that Koenig only teaches the disadvantages of slits in the tabs and not in the nose portion (Ans. 5 (citing col. 6, ll. 20-30)) is not supported by a preponderance of evidence where Koenig discloses that slits defining the tabs do not extend into the nose and thus do not have exposed portions that require the filling and sanding steps. Because the slits defining the tabs do not extend beyond the tabbed edge, into the nose, the slits do not have exposed portions that would require the filling and sanding steps discussed above. 1 Refers to the Appeal Brief filed on July 26, 2010. Appeal 2011-010863 Application 11/524,126 4 Col. 6, ll. 25-28. Koenig discloses that prior art designs with tab-defining slits extending into the nose create exposed portions that must be filled and sanded, which is a painstaking task, whereas Koenig provides a curvable drywall-trimming strip without such slits. Col. 1, 50 to col. 2, l. 12. Nor does Bifano disclose slits in a nose portion. Instead, Bifano discloses an edge strip with flanges 214, 216 extending from a bead 120. The first and second series of slits 232, 233 do not extend into the bead 120 but instead are disposed in flanges 214, 216 that extend from the bead 120. Figs. 11-13. We do not sustain the rejection of claims 1-5. Claim 6 as unpatentable over Koenig, Bifano, and Da Cunha The Examiner found that Koenig and Bifano do not teach a nose with a chamfer as recited in dependent claim 6. Ans. 5. The Examiner relied on Da Cunha to disclose a chamfered nose and not to remedy any deficiencies of Koenig and Bifano discussed supra. Id. We do not sustain the rejection of claim 6. DECISION We REVERSE the rejection of claims 1-6. REVERSED mls