Ex Parte Pratt

Patent Trial and Appeal BoardJun 16, 2014

11248248 (P.T.A.B. Jun. 16, 2014)

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. 11/248,248 10/13/2005 Samuel S. Pratt 8383.007.US0000 9696 77407 7590 06/16/2014 Novak Druce Connolly Bove + Quigg LLP 1875 Eye St NW Suite 1100 Washington, DC 20006-5409 EXAMINER HARTMANN, GARY S ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 06/16/2014 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 SAMUEL S. PRATT ____________________ Appeal 2014-004577 Application 11/248,248 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and LYNNE H. BROWNE, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Samuel S. Pratt (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 5-9, 12-21, and 23-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-004577 Application 11/248,248 2 The Claimed Subject Matter Claim 23, reproduced below, is illustrative of the claimed subject matter.1 23. An apparatus for compacting and forming depressions along a tract of ground being worked, comprising: a support means; a drum mounted on said support means for rotational movement about the axis thereof; and a liner formed of a material having earth adherent retarding properties fixedly and permanently disposed on the entire perimeter of an earth engageable surface of said drum. Rejections I. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead (US 3,832,079, iss. Aug. 27, 1974), in view of any of Rakes (US 3,474,165, iss. Oct. 21, 1969), McLay (US 3,372,949, iss. Mar. 12, 1968), and Melton ’709 (US 2,999,709, iss. Sep. 12, 1961), and further in view of Yates (US 5,511,901, iss. Apr. 30, 1996), and Wagner (US 3,698,293, iss. Oct. 17, 1972). II. Claims 23-25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Moorhead. III. Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead and Wagner. IV. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead, Rakes, and Official Notice2. 1 The claims reproduced in “APPENDIX A” contain errors. The currently pending claims may be found in the Amendment filed Jan. 17, 2013. Appeal 2014-004577 Application 11/248,248 3 V. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead, Rakes, and Wagner. VI. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead and either McLay or Melton ’7093. VII. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead, either McLay or Melton ’709, and Wagner. VIII. Claims 1, 5-9, 12-21, and 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead, any of Rakes, McLay, and Melton ’709, and Yates. IX. Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates, Caron (US 5,796,097, iss. Aug. 18, 1998), and Moorhead. X. Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates, Caron, Moorhead, and Wagner. XI. Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates, Moorhead, and Hollon (US 6,113,309, iss. Sep. 5, 2000). 2 Ans. 5. 3 The Examiner also cited “Melton et al. (U.S. Patent[] 3,306,540”) in this and other rejections as another alternative to McLay and Melton ’709. However, we do not find a US Patent 3,306,540 issued to “Melton et al.” and decline to speculate as to the patent number intended by the Examiner. Accordingly, we do not consider this reference in reaching our decision in this appeal. In any event, the Melton references appear to be duplicative. Appeal 2014-004577 Application 11/248,248 4 XII. Claims 23-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yates, Moorhead, Hollon, and Wagner. OPINION Rejection I Appellant groups claims 1, 5-9, 12-21, and 23-25 together in contesting this rejection. See App. Br. 7-8; Reply Br. 2-3. Thus, we select claim 23 to decide the appeal as to this rejection with respect to all of claims 1, 5-9, 12-21, and 23-25. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner found that Moorhead discloses all of the features of claim 23, including the liner formed of a material (i.e., polytetrafluoroethylene (PTFE), available under the trademark TEFLON®), which, according to the Examiner, “meets all recitations regarding material properties.” Ans. 2. The Examiner also found, however, that “Wagner teaches that affixing a coating having earth adherent retarding properties (TEFLON) on a roller retards sticking.” Ans. 8. Thus, to the extent that Moorhead might be deemed as deficient vis-à-vis the claim limitation “a liner formed of a material having earth adherent retarding properties fixedly and permanently disposed on the entire perimeter of an earth engageable surface of said drum,” the Examiner determined that it would have been obvious “to have fixedly and permanently mounted the material having earth adherent retarding properties on the entire circumference in order to retard sticking without having to reapply the coating after each use.” Id. The Examiner relied upon Rakes, McLay, and Melton ’709 as evidence that PTFE and a polyethylene resin material marketed under the trademark MARLEX®, which has earth adherent retarding properties and an Appeal 2014-004577 Application 11/248,248 5 internal mold release, were known equivalent materials at the time of Appellant’s invention. See Ans. 4, 6; Rakes, col. 3, l. 45 – col. 4, l. 12; McLay, col. 2, l. 65 – col. 3, l. 30; Melton ’709, col. 3, ll. 28-47. The Examiner determined it would have been obvious to substitute the known alternative equivalent material marketed under the trademark MARLEX® for the PTFE material of Moorhead to perform the same material adherent retardant/release function.4 Ans. 4, 6. Appellant argues that Moorhead is intended only to impress and form patterns in concrete or paving material for aesthetic purposes and thus is “not an apparatus for compacting and forming depressions along a tract of ground,” as called for in claim 23. App. Br. 7-8. Appellant’s argument is not convincing. First, we note that claim 23 does not require that the claimed apparatus be for compacting and forming depressions in ground. Rather, claim 23 merely requires that the apparatus be for compacting and forming depressions, in an unspecified material, along a tract of ground. Moorhead’s apparatus is intended for such use. More importantly, however, the preamble language “for compacting and forming depressions along a tract of ground being worked” recited in claim 23 is directed merely to the intended use of the apparatus, and thus is not entitled to patentable weight. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Appellant’s implicit 4 The Examiner ostensibly relied on Yates to address a feature (i.e., the liner being comprised of a plurality of segments disposed about the circumference of the cylindrical surface of the drum in dependent claim 9) not recited in claim 23. See Ans. 7. Appeal 2014-004577 Application 11/248,248 6 reliance on the Board’s decision in the first appeal in this application5 as in any way affirming Appellant’s position with respect to any deficiency in Moorhead vis-à-vis the intended use limitation is misplaced. See App. Br. 7 (stating, “as previously asserted and perhaps acknowledged by the Board in its prior decision of November 12, 2010, . . .”). The opinion explaining the Board’s earlier decision made no reference to any such deficiency in Moorhead. Appellant argues that a person of ordinary skill in the art seeking to modify Moorhead would not reasonably be drawn to any of Wagner, Rakes, McLay, and Melton or be motivated by their disclosures to arrive at the claimed invention. App. Br. 8. According to Appellant, “[t]here is no evidence of any motivation in any of the secondary references to alter the mode of operation of Moorhead . . . to provide an entirely different structure functional to operate in a different manner to produce a different result.” Id. We reject Appellant’s arguments. The Examiner did not rely on the secondary references (Wagner, Rakes, McLay, and Melton) to modify Moorhead in a manner “to provide an entirely different structure functional to operate in a different manner to produce a different result.” Rather, the Examiner merely relied on Rakes, McLay, and Melton to show that PTFE and a polyethylene material marketed under the trademark MARLEX® were well recognized as having equivalent material adherent retarding and release properties and as being recognized functional equivalents. Appellant does not contest the Examiner’s findings and, further, does not contest the Examiner’s finding that the MARLEX® material has earth adherent retarding 5 Ex parte Pratt, Appeal 2009-007544 (BPAI Nov. 2, 2010) (http://e- foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009007544-11- 02-2010-1 Appeal 2014-004577 Application 11/248,248 7 properties and an internal mold release. Accordingly, the Examiner’s determination that it would have been obvious to substitute the material marketed under the trademark MARLEX® for the PTFE material in Moorhead has rational underpinnings. The selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 277 F.2d 197, 199 (CCPA 1960). “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (citation omitted). As discussed above, the Examiner relied on Wagner merely for its teaching that affixing a coating having earth adherent retarding properties on a roller retards sticking and determined that it would have been obvious, in view of that teaching, to fixedly and permanently mount the material having earth adherent retarding properties on the entire circumference of Moorhead’s drum in order to retard sticking without having to reapply the coating after each use. Both Moorhead and Wagner address the problem of retarding sticking of the surfacing drum or roller to the concrete being surfaced. Thus, Appellant’s argument that a person of ordinary skill in the art seeking to modify Moorhead would not look to Wagner is untenable. For the above reasons, Appellant does not apprise us of error in the Examiner’s rejection of claim 23 as unpatentable over Moorhead, in view of any of Rakes, McLay, and Melton ’709, and further in view of Yates, and Wagner. We sustain the rejection of claim 23 and of claims 1, 5-9, 12-21, 24, and 25, which fall with claim 23. Rejections II-XII Appeal 2014-004577 Application 11/248,248 8 We do not reach a determination as to the propriety of these rejections, because our affirmance of Rejection I, supra, is dispositive as to all of the claims on appeal. DECISION The Examiner’s decision rejecting claims 1, 5-9, 12-21, and 23-25 is affirmed. 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 llw