Ex Parte Nesbitt

Patent Trial and Appeal BoardAug 30, 2013

11151020 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/151,020 06/13/2005 Daniel Frederick Nesbitt DFN-003M 6243 26868 7590 08/30/2013 Hasse & Nesbitt LLC 8837 Chapel Square Drive Suite C CINCINNATI, OH 45249 EXAMINER CANFIELD, ROBERT ART UNIT PAPER NUMBER 3635 MAIL DATE DELIVERY MODE 08/30/2013 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 DANIEL FREDERICK NESBITT ____________________ Appeal 2011-009917 Application 11/151,020 Technology Center 3600 ____________________ Before PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and BARRY L. GROSSMAN, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009917 Application 11/151,020 2 STATEMENT OF CASE Appellant seeks review of the Examiner’s rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over Mills (US 6,098,351; iss. Aug. 8, 2000) and Prochaska (US 5,341,931; iss. Aug. 30, 1994). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention Appellant’s claimed invention relates to a protected wooden post. Spec., para. [0009]. Claim 1, reproduced below, is the sole independent claim on appeal: 1. An article of manufacture consisting of a protected wooden post for positioning within the ground to an intended depth, the protected wooden post consisting of a wooden post having a length, a first embedded end, a second upper end, and a ground-level position intermediate the first and second ends, and a transparent hardened protective coating covering the peripheral surface of a portion of the length of the wooden post intermediate the first end and the second end, wherein the portion extends from at least proximate the ground-level position to a second position toward the second end. OPINION The Examiner found that Mills discloses an article of manufacture as claimed, including a hardened protective coating (shrink-wrapped thermoplastic), except that the hardened protective coating of Mills is not transparent as claimed. Ans. 3-4. The Examiner found that Prochaska discloses that transparent shrink-wrapped thermoplastic was well-known. Appeal 2011-009917 Application 11/151,020 3 Ans. 4. The Examiner concluded that it would have been obvious to modify the article of manufacture of Mills by substituting Prochaska’s transparent thermoplastic material for the thermoplastic material of Mills as equivalent materials. Id. Appellant presents three arguments that the rejection fails to state a prima facie obviousness case with regard to claims 1, 2, and 5.1 Br. 9-10. First, Appellant argues that the shrink-wrapped thermoplastic material of Mills does not correspond to a coating as claimed because shrink-wrapped thermoplastic material “can be shrunken around an object without melting to or adhering to the surface of the object.” Br. 10. Even if Appellant’s assertion were true, claim 1 does not call for the protective coating to melt or to adhere to the surface of the wooden post. Rather, claim 1 calls for the coating to cover the peripheral surface of a specified portion of the length of the wooden post. As such, Appellant’s assertion is unpersuasive because it is not commensurate in scope with claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Further, Appellant’s argument is based upon a mischaracterization in that Mills does not disclose application of shrink-wrap to an object without melting or adhering to that object. Rather, Mills discloses forming a shrink- wrap “coating” by wrapping shrink-wrappable material 2 around the relevant portion of a post 1 and heating by a propane gas torch 5 or similar device, causing the wrap to shrink and form a moisture impermeable barrier around 1 Appellant presents an argument for claim 1 only. Br. 9-10. We select independent claim 1 as representative, and claims 2 and 5 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2011-009917 Application 11/151,020 4 post 1. Mills, col. 2, l. 55; col. 2, l. 65 - col. 3, l. 10; col. 3, ll. 36-42; Fig. 1; see also Ans. 4-5. Second, Appellant argues that Mills discloses that a plastic sheathing (collar 27) is inserted over the shrink-wrapped fence post to protect the shrink-wrapped exterior of the post from abrasion by such devices as lawn mowers and weed whips. Br. 10 (citing Mills, col. 2, ll. 5-9; col. 3, ll. 54- 56). According to Appellant, such disclosure demonstrates that the shrink- wrap of Mills is “not capable of providing the benefit of the claimed hardened coating; that being, protecting the base of the embedded post from wear from mechanical abrasion caused by the use of mechanical string trimmers that use a nylon string to cut grass and weeds around the base of the embedded post.” Br. 10 (citing Spec., para. [0021].). We assess claim 1 in light of this assertion. Claim 1 is directed to an article of manufacture consisting of, inter alia, a protected wooden post and a transparent hardened protective coating covering a specified portion of that post. The Specification does not provide a lexicographical definition of the claim term “hardened protective coating.” “Hardened” is commonly understood to mean “made hard,” “coating” is commonly understood to mean “any substance spread over for cover or protection,” and “protective” is commonly understood to mean “affording protection; sheltering; defensive.”2 Taken in the context of claim 1, the common meaning of these terms suggests a hardened protective coating as claimed is any substance 2 “Hardened,” adj.; “coating,” n., definition 1; “protective,” adj. WEBSTER’S NEW UNIVERSAL UNABRIDGED DICTIONARY (Deluxe 2d ed. 1983). Appeal 2011-009917 Application 11/151,020 5 that is made hard and protects or preserves the portion of the wooden post it covers. Consistent with this ordinary meaning, the Specification describes that the protected post “can prevent marring and damage of the underlying wood of the post near the base when grass 66 or other vegetation is trimmed using a string trimmer.” Spec., para. [0023]. However, Claim 1 is broader than this description in that claim 1 does not recite that the hardened protective coating prevents marring and damage of the wood of the post. Because the language of claim 1 is broader than this description in the Specification, this description in the Specification is not imported as a limitation of claim 1. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). If Appellant wanted to claim that the coating provides protection against mechanical abrasion, such limitation should have been included in claim 1. Halliburton Energy Servs., Inc. v. M-L LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (emphasizing that claim language should “provide a clear- cut indication of the scope of subject matter embraced by the claim” and noting “that the patent drafter is in the best position to resolve the ambiguity in the patent claims”). Therefore, Appellant’s argument that the coating of Mills does not provide protection from mechanical abrasion is unpersuasive because it is not commensurate in scope with claim 1. See In re Self, 671 F.2d at 1348. As explained supra, after melting and subsequent solidifying, the shrink-wrapped coating of Mills protects the applied portion of the post from moisture. Therefore, the shrink-wrapped coating of Mills corresponds to a hardened protective coating as claimed. Appeal 2011-009917 Application 11/151,020 6 Third, Appellant argues that Prochaska “contributes nothing to the rejection, since Prochaska does not describe a single example of a particular thermoplastic material, or teach or suggest that such shrunk-wrapped thermoplastic material is a protective coating as provided in Applicant’s claims.” Br. 10. The Examiner’s finding is that transparent shrink-wrap was well- known as evidenced by Prochaska. See Ans. 4. Indeed, Prochaska discloses that outer transparent wrapper 16 is “of transparent, shrink wrapped thermoplastic material as is well known in the art.” Prochaska, col. 5, ll. 23- 25. Appellant’s argument that Prochaska does not disclose a specific example of a transparent shrink-wrapped thermoplastic material does not directly address the correctness of the Examiner’s finding. To the extent that Appellant’s argument can be seen as a contention that Prochaska’s shrink-wrap is not a protective coating as claimed, such argument is not persuasive. Prochaska’s wrapper 16 is formed tightly around and “protects” sleeve 12 and liner 14. Prochaska, col. 5, ll. 19-25; Figs. 1, 2. Consequently, we sustain the rejection of claims 1, 2, and 5. Regarding claim 3, Appellant additionally argues that the Final Rejection fails to specifically address the features of dependent claim 3. Br. 11. Claim 3 depends indirectly from independent claim 1, and recites wherein the transparent hardened protective coating comprises a binder that is selected from the group consisting of: oxygen-reactive binders, including alkyds, epoxy esters, urethane alkyds, and silicone alkyds; acrylic lacquers; heat conversion binders, including hot melt materials, organisols and plastisols; co-reactive binders, including epoxies and polyurethanes; and inorganic binders, including post- Appeal 2011-009917 Application 11/151,020 7 cured silicates, self-curing water silicates, and self-curing solvent- based silicates. Appellant’s contention that the Examiner did not address these limitations is unpersuasive because the Examiner found that the protective coatings of Mills and Prochaska correspond to a hot melt material as claimed. See Ans. 7. As such, we sustain the rejection of claim 3. DECISION We affirm the Examiner’s decision to reject claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over Mills and Prochaska. 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 rwk/rvb