Ex Parte Lionheart

Patent Trial and Appeal BoardNov 27, 2018

13910051 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/910,051 06/04/2013 23565 7590 11/27/2018 Klauber & Jackson LLC 25 East Spring Valley A venue Suite 160 Maywood, NJ 07607 FIRST NAMED INVENTOR David Lionheart 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3396-1-00lN 8309 EXAMINER CARRILLO, BIBI SHARIDAN ART UNIT PAPER NUMBER 1711 MAIL DATE DELIVERY MODE 11/27/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID LIONHEART Appeal2017-002601 Application 13/910,051 Technology Center 1700 Before WESLEY B. DERRICK, JULIA HEANEY, and DEBRA L. DENNETT, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 requests review pursuant to 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 8-15 of Application 13/910,051. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 This Decision refers to the Specification filed June 4, 2013 ("Spec."), Final Rejection dated Dec. 2, 2015 ("Final Act."), Appeal Brief filed May 20, 2016 ("Br."), and Examiner's Answer dated Aug. 18, 2016 ("Ans."). 2 Appellant identifies the real party in interest as David Lionheart. Br. 2. Appeal2017-002601 Application 13/910,051 BACKGROUND The subject matter on appeal relates to a sponge for cleaning the space between tiles during installation, in preparation for grouting. Spec. ,r 1. Appellant's Specification explains that during tile laying, adhesive material applied to the surface on which the tile is laid may accumulate and enter into the space between adjacent tiles, and that it is important to remove the adhesive before it dries so that grout can later be applied to fill the space between the tiles. Id. ,r,r 2-3. The Specification describes a sponge having a flexible flange extending outwardly along an edge of the sponge that is specially adapted to enter the spaces between tiles in preparation for grouting. Id. ,r 1. Claim 8, reproduced below, is the sole independent claim on appeal: 8. A method of cleaning a linear elongated space having a longitudinal axis between two edges of adjacent tiles of a tiled surface prior to an application of grout into the elongated space, the method comprising the steps of; providing a sponge having two adjacent generally planar absorbent surfaces abutting at an internal acute angle of from about 30 degrees to about 60 degrees and comprised of an adsorbent sponge material, the sponge having at least one pre- formed flange having an longitudinal axis extending outwardly from an edge formed by the two intersecting planar absorbent surfaces, inserting the at least one pre-formed flange into the elongated space between adjacent tiles with the longitudinal axis of the pre-formed flange aligned with the longitudinal axis of the elongated space, and moving the sponge along the longitudinal axis of the elongated space to clean out material within the elongated space while contacting edges of the adjacent tiles with the sponge material of the planar absorbent surfaces to wipe the edges of the adjacent tiles. 2 Appeal2017-002601 Application 13/910,051 Br. 10 (Claims Appendix). THE REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 8-10, 12, and 15 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Daveloose. 3 Ans. 2--4. 2. Claim 11 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Daveloose and Killen. 4 Ans. 5. 3. Claims 11, 13, and 14 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Daveloose and Silverman. 5 Ans. 5. DISCUSSION The Examiner finds that Daveloose teaches a method of cleaning grout between two edges of tiles, and specifically, cleaning in long narrow concavities. Final Act. 3 ( citing Daveloose Abstract, ,r 3). The Examiner further finds that Daveloose teaches a sponge comprising an adsorbent material having at least one preformed flange prepared from a flexible material and having a longitudinal axis extending outwardly from an edge formed by two intersecting planar absorbent surfaces. Id. ( citing Daveloose ,r,r 14, 17, Fig 2C, Fig. 4). The Examiner acknowledges that Daveloose does 3 Daveloose et al., US 2010/0313375 Al, published Dec. 16, 2010 ("Daveloose"). 4 Killen, US 2005/0034263 Al, published Feb. 17, 2005 ("Killen"). 5 Silverman et al., US 2008/0216260 A 1, published Sept. 11, 2008 ("Silverman"). 3 Appeal2017-002601 Application 13/910,051 not teach cleaning prior to application of the grout, but determines that it would have been obvious to a person of ordinary skill in the art to have used Daveloose' s sponge for that purpose because Daveloose teaches using the sponge for cleaning long narrow concavities between tiles, and a skilled artisan would have recognized the importance of maintaining a clean cavity between adjacent tiles prior to applying grout so that contaminants would not interfere with the grout properly setting. Id.; Ans. 3--4 ( citing Spec. ,r 3 (recognizing, in the background section, the importance of removing accumulation of adhesive from the space between tiles so that grout can be properly applied later)). Rejection 1 Appellant argues for patentability of independent claim 8, and does not separately argue dependent claims 9, 10, 12, or 15. Br. 7. We therefore limit our discussion to claim 8 as argued by Appellant; dependent claims 9, 10, 12, and 15 stand or fall with claim 8. 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2013). Upon consideration of the evidence presented in this Appeal in light of each of Appellant's contentions, we determine that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of Appellant's claims is unpatentable over the applied prior art. Appellant argues that the rejection of claim 8 is without merit for several reasons. Br. 3-7. First, Appellant argues that Daveloose's sponge is not constructed to efficiently remove debris from an ungrouted groove because it does not have a flange as recited in claim 8. Br. 4--5. Appellant 4 Appeal2017-002601 Application 13/910,051 relies on a Declaration under 37 C.F.R. Â§ 1.132 by David Lionheart, 6 the named inventor, and a Declaration by David Barnhart. 7 Id. ( citing Ex. A and Ex. B). Appellant argues that testing performed by Mr. Lionheart as described in the Exhibit to the Lionheart Declaration 8 shows that when "a normal sponge" is used to remove adhesive from the space between ungrouted tiles, "the tiles can be moved out of their desired alignment" because "a normal sponge simply does not have the preformed flange extending outwardly from the junction of two planar absorbent surfaces at an angle of from about 30 to about 60 degrees." Br. 5. Based on the testing, Appellant asserts that use of the sponge of the present invention to remove unwanted material from the space between tiles is "unexpected in view of the inability of a normal sponge to carry out the same purpose." Lionheart Declaration ,r,r 7-8. Appellant's argument based on the Lionheart Declaration is not persuasive of reversible error because the testing is not commensurate with the scope of claim 8. For example, the "Tiling Sponge" used in Trial 2 (Lionheart Declaration, Ex. ,r 6) has a 1/8 inch rubber flange approximately 3/16 of an inch deep. Claim 8, however, requires a sponge "having at least one pre-formed flange" and is not limited to a rubber flange or any specified 6 Declaration of David Lionheart, dated Mar. 9, 2015 ("Lionheart Declaration"). 7 Declaration of David Barnhart, dated Oct. 30, 2015 ("Barnhart Declaration"). 8 The Appeal Brief cites to the Barnhart Declaration as describing this testing (Br. 5), but the Barnhart Declaration does not refer to any testing. We therefore understand the intended citation to be to the Lionheart Declaration. 5 Appeal2017-002601 Application 13/910,051 thickness or depth of flange. Further, the Lionheart Declaration does not explain how the testing of the comparative sponge in Trial 1, i.e., the "industry standard hydro sponge" relates to, or is, the sponge taught by Daveloose. Lionheart Declaration, Ex. ,r 5. Nor does it identify the "industry standard hydro sponge" as the closest prior art. Id. For at least these reasons, Appellant has not met the burden of showing unexpected results, or that the Examiner erred in determining that claim 8 is obvious in view of Daveloose. Next, Appellant argues that Daveloose does not teach a sponge having planar absorbent surfaces abutting at an angle of from about 30 to about 60 degrees, and that the Examiner's finding that Daveloose teaches planar surfaces abutting at an angle of from about 40 to 65 degrees (Final Act 3; Ans. 9 (citing Daveloose ,r 14)) is in error. Br. 5-6. This argument is not persuasive of reversible error because Daveloose ,r 14 expressly teaches that trapezoidal shapes having an acute angle of from about 40 to 65 degrees can facilitate cleaning, and describes both Figures 2A and 2C as having such a trapezoidal shape. Daveloose ,r,r 14--15. As taught by Daveloose, grip 240 can itself be a sponge, and be formed into a trapezoidal shape having the acute angle. Id. at ,r 17, Figs. 2A, 2C. Further, Appellant's argument that the angle taught by Daveloose "has nothing to do with the angle of the contacting surfaces of the tool" (Br. 6) is not supported by Daveloose, which specifically describes element 250 as a nonwoven web for cleaning a grout surface, and having a trapezoidal shape to facilitate cleaning. Daveloose ,r,r 14--15. The lower left comer of element 240 of Daveloose, as a sponge, has planar absorbent surfaces abutting at an angle of from about 40 to 65 degrees, as does the lower left comer of element 250 extending outwardly 6 Appeal2017-002601 Application 13/910,051 from an edge formed by the intersecting planar absorbent surfaces of 240. Id. at Fig. 2C. Accordingly, contrary to Appellant's contention that Appellant's shape having two absorbent planar surfaces meeting at an angle and providing a flange that extends outwardly from the sponge at the intersection of those surfaces is altogether different (Br. 6), Daveloose reasonably teaches a sponge having planar absorbent surfaces with a flange as recited in claim 8. Re} ections 2 and 3 Rejections 2 and 3 are directed at claims 11, 13, and 14, which depend from claim 8. Appellant reiterates the argument set forth above as to claim 8, and does not present substantive argument concerning Killen and Silverman. Br. 7-9. See In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011) (Rule 41.37 requires more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art). Accordingly, we affirm Rejections 2 and 3. SUMMARY We affirm the rejections of claims 8-15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7