Ex Parte THYSELL

Patent Trials and Appeals BoardApr 21, 2016

13101224 - (D) (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/101,224 05/05/2011 Hakan THYSELL 22850 7590 04/25/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 379937US8CONT 4557 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 04/25/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAKAN THYSELL Appeal2013-006668 1 Application 13/101,2242 Technology Center 3700 Before KEVIN W. CHERRY, BRUCE T. WIEDER, and MATTHEWS. MEYERS, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hakan Thysell (Appellant) seeks review under 35 U.S.C. Â§ 134 of a final rejection of claims 1-10, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our decision references the Appellant's Appeal Brief ("Appeal Br."), filed September 6, 2012, Appellant's Reply Brief ("Reply Br."), filed April 23, 2013, and the Examiner's Answer ("Ans."), mailed February 28, 2013. 2 Appellant's brief identifies HTC Sweden AB, as the real party in interest for this appeal (Appeal Br. 1 ). Appeal2013-006668 Application 13/101,224 Appellant's claimed invention relates to a method for maintaining a hard, smooth surface (Spec. 1, 11. 24--29). Claim 1, the sole independent claim, is illustrative of the subject matter on appeal and is reproduced below. 1. A method for maintaining a gloss of a hard, smooth polymer floor surface at or above an initial value of the gloss of the hard, smooth polymer floor surface, the polymer floor surface comprising polymer materials, including vinyl, polyurethane, epoxy, acrylic or other plastic material, or linoleum, the method compnsmg: treating the hard, smooth polymer floor surface with a flexible pad comprising an open, lofty, three dimensional non- woven web of fibers, in the presence of abrasive particles, bonded to the pad, on a contact surface between the pad and the hard, smooth polymer floor surface; and repeating the treating step on the hard, smooth polymer floor surface that was previously treated in the treating step as part of a regular daily maintenance routine to maintain the gloss at or above the initial value, wherein the treating step is performed in the presence of water on the contact surface, the abrasive particles comprise diamond particles, and the diamond particles have an average diameter of 0.1 to 30 Âµm. (Appeal Br. 11, Claims App.). Rejection Claims 1-10 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hoover (US 2,958,593, iss. Nov. 1, 1960) and McDonell (EP 0 562 919 Al, pub. Sept. 29, 1993). 2 Appeal2013-006668 Application 13/101,224 ANALYSIS Appellant argues claims 1-10 as a group. Appeal Br. 4--9. We select claim 1 as representative and claims 2-10 rise or fall with claim 1. See 37 C.F.R. Â§ 41.37(c)(iv). We are not persuaded by Appellant's argument that Hoover fails to disclose "repeating the treating step on the hard, smooth polymer floor surface that was previously treated in the treating step as part of a regular daily maintenance routine," as recited in claim 1 (Appeal Br. 5---6; Reply Br. 6-7). We agree with the Examiner that Hoover teaches using its pad to treat a floor (Ans. 6-7 (citing Hoover, col 8, 11. 14, 33, col. 9, 11. 53-55)). We further agree with the Examiner that, given the nature of floor cleaning and Hoover's disclosure that the pad can be used "day after day," that a person of ordinary skill would understand that the polishing can be done on a daily basis (id. at 7-8). Appellant's efforts (Reply Br. 6-7) to argue that the statements in Hoover only disclose that the pad can be used over again and not that the same floor can be treated ignores the Examiner's reasoning that bridges the gap between that disclosure and what it would suggest to a person of ordinary skill. Indeed, we disagree with Appellant's suggestion that the Examiner's reasoning is conclusory (Appeal Br. 6). On the contrary, we find that the Examiner has provided sufficient reasoning why Hoover accounts for this element-Hoover informs us that the pad can be used "day after day" and a person of ordinary skill would understand that the floor must be treated based on use (Ans. 7 (citing Hoover, col. 8, 11. 15, 34)). Given the level of skill in the art, as evidenced by the art of record, we agree with the Examiner that a person of ordinary skill reviewing Hoover's disclosure with the 3 Appeal2013-006668 Application 13/101,224 knowledge that the floor must be treated based on use would have a reasonable expectation that repeating the treatment step as part of a daily maintenance routine would be successful. Appellant has presented no evidence or argument that this would require undue experimentation. The conclusion of obviousness does not require certainty but, rather, requires only a reasonable expectation of success. See In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("Obviousness does not require absolute predictability of success ... [f]or obviousness underÂ§ 103, all that is required is a reasonable expectation of success" (citations omitted)). Thus, we find the Examiner's reasoning to be sufficient. Appellant's arguments (Reply Br. 7) about the label, "inherent," that the Examiner used at times fails to acknowledge the Examiner's alternative reasoning that daily treatment was "within the level of one of ordinary skill" (Ans. 7). Because we agree with the Examiner's alternative reasoning, Appellant's arguments regarding inherency fail to apprise us of reversible error by the Examiner. As for Appellant's argument that the Examiner conflates the "scouring" and "polishing" examples of Hoover (Reply Br. 7-8), we do not see how that is relevant to the question of whether Hoover suggests daily use for several reasons. First, the Examiner relies on the different examples to show that Hoover contemplates using the pads repeatedly as part of floor maintenance. It is certainly acceptable to rely on the varied teachings of a reference to demonstrate that the reference would suggest repeating the treating step of claim 1. See Belden Inc. v. Berk-Tek LLC, 805 F .3d 1064, 1076 (Fed. Cir. 2015) (noting that "[a] reference must be considered for everything it teaches by way of technology and is not limited to the 4 Appeal2013-006668 Application 13/101,224 â€¢ 1 â€¢ â€¢ â€¢ â€¢ ,..l "t.... ,..l â€¢ " ( 1 â€¢ â€¢ part1cu1ar mvent1on it is uescnumg anu attemptmg to protect ~ a1teratlon m original) (emphases omitted) (quoting EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985))). Second, Appellant's claims draw no distinction between "scouring" and "polishing." Instead, claim 1 only recites "repeating" the "treating" step so as to "maintain the gloss at or above an initial value." As the Examiner notes, removing the old wax, as would occur during "scouring," would produce a level of gloss (Ans. 7). Despite Appellant's assertions to the contrary (Appeal Br. 5), Appellant provides no evidence to support its contention that the Examiner's assertion that scouring would also improve gloss is in error. Hoover also discloses polishing would also produce a level of gloss (Hoover, col. 9, 11. 60-61). Both examples would fall within the scope of Appellant's claims. Given this broad scope, we do not agree the Examiner erred in considering both examples together. We are also not persuaded by Appellant's argument that McDonell teaches away from the combination with Hoover (Appeal Br. 6-8; Reply Br. 8-9). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although Appellant is correct that McDonell does criticize Hoover, Appellant misrepresents that McDonell suggests that Hoover is inappropriate for polishing floors generally (see Appeal Br. 7). Instead, McDonell only states that Hoover "while finding wide ranging use" is not by itself "suitable for polishing or crystallizing marble floors" (McDonell, col. 3, 11. 46-50). We do not find McDonell' s comments on the suitability of 5 Appeal2013-006668 Application 13/101,224 Hoover for polishing marble floors would have discouraged a person of ordinary skill from taking the teachings regarding available abrasive particles in McDonell and combining them with Hoover for polymer floors as claimed by Appellant. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (no teaching away when reference does not criticize or discredit use). Appellant also makes various arguments that it would not have been obvious to select diamonds from the list of abrasive particles recited in McDonell for several reasons (Appeal Br. 8-9; Reply Br. 8-9). First, Appellant argues that McDonell is drawn to marble floors and is not relevant to polymer floor maintenance (Appeal Br. 8). We do not agree. Both Hoover and McDonell relate to floor maintenance, so we find they are both in same field of endeavor as Appellant and are analogous art to the claimed invention. See In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). Second, Appellant submits that a person of ordinary skill would not have combined Hoover and McDonell, because McDonell involves altering the floor surface by crystallizing, while Hoover involves leaving the floor surfaces unaltered (Appeal Br. 8-9). However, the Examiner relies on McDonell only for its teaching that diamonds can be incorporated into a lofty pad, not the method of treatment (Ans. 8). Appellant has not shown how the Examiner erred in relying on McDonell for this technology that it discloses, or why a person of ordinary skill would believe that this technology would have no application outside of the realm of re-crystalizing marble floors. See Belden, 805 F.3d at 1076. Third, Appellant argues that a person of ordinary skill would not have selected diamond from out of the list of abrasives listed in McDonell without 6 Appeal2013-006668 Application 13/101,224 impermissible hindsight (Appeal Br. 9; Reply Br. 8-9). \Ve do not agree. The Examiner has provided articulated reasoning with rational underpinning to support the combination (Ans. 6, 9-10). As the Examiner explained, McDonell teaches that diamonds are among the suitable particles that can be incorporated into a lofty pad and a person of ordinary skill would have been motivated to incorporate diamonds into the lofty pad of Hoover for improved wear characteristics (Ans. 6). Appellant offers no evidence to rebut this conclusion. Thus, Appellant fails to carry its burden to show that the Examiner erred. Finally, Appellant argues for the first time in the Reply Brief that Hoover fails to teach "treating the hard, smooth polymer floor surface," as recited in claim 1, because Hoover discloses treating the wax layer on the surface of a "polymer floor" (Appeal Br. 5-6; Reply Br. 5). We do not agree with Appellant's implicit contention that the claims require that the "polymer floor" have no wax on it. Indeed, many of the examples in the Specification dealing with "polymer floors" all have flooring wax on them (see Spec. 25, 1. 20-28, 1. 2). Thus, we do not agree with Appellant that the wax layer is not part of the "polymer floor." Accordingly, we sustain the rejection of claims 1-10. 7 Appeal2013-006668 Application 13/101,224 DECISION The Examiner's decision to reject claims 1-10 is affirmed. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 8