Garland Industries, Inc.

Patent Trials and Appeals BoardAug 24, 2021

2021001413 (P.T.A.B. Aug. 24, 2021)

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. 16/046,463 07/26/2018 Melissa Rus GARI 200118US02 1078 69082 7590 08/24/2021 ULMER & BERNE, LLP ATTN: DIANE BELL 600 VINE STREET SUITE 2800 CINCINNATI, OH 45202-2409 EXAMINER AHMAD, CHARISSA L ART UNIT PAPER NUMBER 3635 NOTIFICATION DATE DELIVERY MODE 08/24/2021 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): ipdocketing@ulmer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MELISSA RUS Appeal 2021-001413 Application 16/046,463 Technology Center 3600 ____________ Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 49–54, 57–63, 67, 68, 70, and 71.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Garland Industries, Inc. Appeal Br. 4. 2 Claims 1–48 are cancelled. Appeal Br., Claims App.; see Ans. 3. The Examiner indicated claims 55, 56, 64–66, and 69 as allowable if rewritten in independent form. Ans. 4. Appeal 2021-001413 Application 16/046,463 2 STATEMENT OF THE CASE Claimed Subject Matter The disclosure in the Appellant’s Specification “relates to a stair tread cover for protecting stairs and other surfaces during construction, moving, painting, or other activities, and a method of manufacturing the stair tread cover.” Spec. ¶ 11. Claims 49 and 57 are the independent claims on appeal. Appeal Br., Claims App. Claim 57, reproduced below with paragraphing added, is illustrative of the claimed subject matter. 57. A stair tread cover suitable for temporarily at least partially covering a step in a staircase, wherein the step includes a stair tread having a stair tread nose and a stair riser and wherein the stair tread nose extends over the stair riser; said stair tread cover comprising a sheet of material and a position-retaining material connected to said sheet of material; said sheet of material formed of a material selected from the group consisting of paperboard, fiberboard, and cardboard; said sheet of material having a top surface, a bottom surface, a front edge, a back edge, a first side edge, and a second side edge; said sheet of material including a first crease and a second crease, both said first crease and said second crease extending between said first side edge and said second side edge; said first crease and said second crease positioned parallel to one another; said sheet of material configured to be foldable along said first crease and said second crease to form a first panel, a second panel and a third panel; said second panel having a longitudinal length that extends from said front edge of said sheet of material to said first crease; said third panel having a longitudinal length that extends from said back edge of said sheet of material to said second crease; Appeal 2021-001413 Application 16/046,463 3 said second crease positioned on said top surface of said sheet of material; said first panel having a longitudinal length that extends from said first crease to said second crease; said first and third panels configured to be foldable relative to one another; said first panel configured to be placed over a top surface of the stair tread; said second panel configured to be positioned at least partially about an outer front surface of the stair tread nose when said first panel is placed over the top surface of the stair tread; said third panel configured to be positioned at least partially over a front surface of the stair riser when said first panel is placed over the top surface of the stair tread; an angle of 60-120° exists between top planes of said first and third panels when said first panel is placed over the top surface of the stair tread and said third panel is positioned at least partially over the front surface of the stair riser; said top plane of said first panel and a top plane of said second panel in a non-planar relationship to one another when said first panel is placed over the top surface of the stair tread and said second panel positioned at least partially about the outer front surface of the stair tread nose; said first, second and third panels having a same width; said longitudinal length of said second panel less than said longitudinal length of said first panel; said first panel and said second panel having the same thickness; said position-retaining material connected to said bottom side of said sheet of material, said position-retaining material configured to facilitate in temporarily maintaining said stair tread cover in position on the stair when said first panel is placed over the top surface of the stair tread, said position- retaining material positioned on said first panel and spaced from said second panels and said third panel. Appeal 2021-001413 Application 16/046,463 4 References The prior art relied upon by the Examiner is: Name Reference Date Bergmann et al. (“Bergmann”) US 4,783,939 Nov. 15, 1988 Ruzhin US 9,732,533 B2 Aug. 15, 2017 Doyle US 2013/0236676 A1 Sept. 12, 2013 Rejections3 Claims 49–52, 57–60, 67, 70, and 71 are rejected under 35 U.S.C § 103 as unpatentable over Ruzhin and Doyle. Claims 53, 54, 61–63, and 68 are rejected under 35 U.S.C § 103 as unpatentable over Ruzhin, Doyle, and Bergmann. ANALYSIS Independent claims 49 and 57 call for a stair tread cover having a sheet of material configured to be foldable to form first, second, and third panels and a position-retaining material connected to a bottom side of the sheet of material and positioned on the first panel and spaced from the second and third panels. See Appeal Br., Claims App.; see also Appeal Br. 37. The claimed “stair tread cover [is] suitable for temporarily at least partially covering a step in a staircase, wherein the step includes a stair tread having a stair tread nose and a stair riser and wherein the stair tread nose extends over the stair riser.” Appeal Br., Claims App. 3 The Examiner withdrew the rejections of claims 49–52 and 54–71 under 35 U.S.C. § 103 as unpatentable over Hussey and Ruzhin; Hussey, Ruzhin, and Doyle; and Hussey, Ruzhin, Doyle, and Bergmann. Ans. 3–4. Appeal 2021-001413 Application 16/046,463 5 The Examiner’s rejection of independent claims 49 and 57 is based on the combined teachings of Ruzhin and Doyle. Final Act. 8–11. The Examiner finds that Ruzhin teaches substantially all of the subject matter of independent claims 49 and 57. Final Act. 8–9. Saliently, the Examiner finds that Ruzhin’s Figures 3E and 4A show a stair tread cover with first, second, and third panels, where the first panel is configured to be placed over a top surface of a stair tread, the second panel is configured to be positioned about an outer front surface of a stair tread nose, and the third panel positioned over a front surface of a stair riser. Final Act. 8–9. In view of these findings, we understand the Examiner to find that tread protection portion 324 corresponds to the claimed “first panel,” first riser protection portion 322 corresponds to the claimed “second panel,” and second riser protection portion 326 corresponds to the claimed “third panel.” See Ruzhin Fig. 3E. The Examiner finds that Ruzhin teaches tape strips on the top surface of the stair tread cover. See Ans. 5. Indeed, Ruzhin teaches adhering tape 340 to the top surface of tread protection portion 324 over slits 328 so that a portion of tape 340 passes through slits 328 and adheres to stair tread 304. Ruzhin col. 5, ll. 36–40, Figs. 3D, 3E. Notably, tape 340 holds stair protection device 320 to stair 302 and protects the portion of stair tread 304 that is underneath slits 328. Ruzhin col. 5, ll. 40–42. The Examiner finds Ruzhin fails to teach an adhesive or tacky region positioned on the bottom surface of the first panel. Final Act. 9. Applying the Examiner’s finding to the language recited in independent claim 57, the Examiner finds that Ruzhin fails to teach a “position-retaining material connected to said bottom side of said sheet of material” and “positioned on Appeal 2021-001413 Application 16/046,463 6 said first panel and spaced from said second panels [sic] and said third panel.” Appeal Br., Claims App. Claim 49 recites similar language (i.e., “single position-retaining material connected to said bottom side of said single sheet of material” and “positioned on said first panel and spaced from said second panels [sic] and said third panel”). Appeal Br., Claims App. The Examiner relies on Doyle’s teaching of adhesive 302 on the bottom surface of a floor and baseboard cover to remedy the deficiency of Ruzhin’s teachings. Final Act. 9 (citing Doyle Fig. 3). The Examiner determines “it would have been obvious to one of ordinary skill in the art to modify the stair tread cover of Ruzhin to have at least one adhesive or tacky region on the bottom surface of the tread . . . as suggested and taught by Doyle.” Final Act. 9–10. According to the Examiner, “[p]lacing adhesive or tacky material on the bottom surface would be an obvious alternative, which would allow the user to simply stick the cover to the stairs without having to apply separate pieces of tape as Ruzhin does.” Final Act. 10 (emphasis added). The Examiner determines that “[t]his would make installation of the cover faster and easier since there is no need for additional materials, i.e., tape, or need for an additional step of cutting tape pieces for placement on the cover.” Ans. 4. As best understood, the Examiner’s reasoning is that substituting or replacing Ruzhin’s tape strip(s) on the top surface of its stair tread cover –– for example, a single strip of tape over a single slit (see Ruzhin Fig. 7B, slit 728B, tread protection device 724A) –– with an adhesive region on the bottom surface of the stair tread cover in view of Doyle’s teaching of adhesive 302 on the bottom surface of a floor and baseboard cover would Appeal 2021-001413 Application 16/046,463 7 have been obvious to one of ordinary skill in the art. See Ans. 5 (citing Ruzhin col. 7, ll. 52–54, Figs. 2, 7A–C). The Appellant argues that the Examiner’s conclusion of obviousness is improper because “Doyle would not teach one skilled in the art to apply an adhesive to the bottom surface of the tread protection portion of the stair protection device of Ruzhin.” Appeal Br. 37. The Appellant submits that “[i]f Doyle was to motivate one skilled in the art, it would be to apply an adhesive on the bottom surface of the first and second riser protection portions of the stair protector device.” Appeal Br. 38. Additionally, “if the adhesive is positioned on the bottom surface of first and second riser protection portions 222, 226, the slots 228 would still need to be covered by an adhesive or other type of material to protect the stair located beneath the slots.” Reply Br. 4. The Appellant has the better position. Doyle teaches a floor and baseboard protective cover 100 for protecting a hallway 102 with walls 104. Doyle ¶ 15, Fig. 1. Protective cover 100 includes smooth upper surface 202 and bottom surface 300. Doyle ¶¶ 10, 11, 16, Figs. 2, 3. In some embodiments, bottom surface 300 is textured to provide a relatively high coefficient of friction compared to the upper surface 202, which helps keep protective cover 100 in place after being properly positioned. Doyle ¶ 16. In these embodiments, bottom surface 300 generally adheres to floor 108 (e.g., a carpeted hallway) and prevents protective cover 100 from sliding. Doyle ¶ 17. In some embodiments, Doyle teaches using a strip of adhesive 302 (e.g., adhesive tape with a release layer) against wall 104 and/or baseboards 106 to keep baseboard protectors 208, 212 properly positioned and, more generally, the Appeal 2021-001413 Application 16/046,463 8 protective cover from traversing the hallway due to gradual creep during use. See Doyle ¶¶ 16, 18, Figs. 1, 2. In view of the foregoing, we understand Doyle to teach a skilled artisan to help keep its protective cover properly positioned during a construction project and/or while moving furniture and equipment in a home by applying an adhesive on the cover’s bottom surface to a vertical structure (e.g., wall) and/or a material having a high coefficient of friction on the protective cover’s bottom surface to generally adhere to a horizontal structure (e.g., a carpeted hallway). See Doyle ¶¶ 2, 16. We do not understand Doyle to teach a skilled artisan to apply an adhesive to a protective cover’s bottom surface where the adhesive is designed to be placed on a horizontal surface, such as a stair tread. The Examiner’s rejection relies on Doyle to teach this unsupported finding. For the purposes of this appeal only, even if we were to agree with the underlying premise in the Examiner’s rejection that Doyle teaches applying adhesive 302 to a protective cover’s bottom surface where the adhesive is designed to be placed on a stair tread, a complication arises. Namely, the Examiner fails to adequately explain on the record if, as a result of the proposed modification of Ruzhin’s tread protection portion, the tread protection device’s slits would have been left exposed. For example, if single slit 728B were to be left exposed, then a significant portion of stair tread 304 that is underneath slit 728 would be unprotected. See Ruzhin col. 5, ll. 40–42, Fig. 7B. And, this unprotected surface of stair tread 304 would be subject to substantial wear, which runs counter to the purpose of Ruzhin’s construction protection sheet. Appeal 2021-001413 Application 16/046,463 9 Thus, we do not sustain the Examiner’s rejection of independent claims 49 and 57, and dependent claims 50–52, 58–60, 67, 70, and 71 under 35 U.S.C. § 103 as unpatentable over Ruzhin and Doyle. Further, the Examiner fails to rely on Bergmann in any manner that would remedy the deficiency in the Examiner’s rejection of the independent claims as discussed above. Thus, we do not sustain the Examiner’s rejection of dependent claims 53, 54, 61–63, and 68 under 35 U.S.C. § 103 as unpatentable over Ruzhin, Doyle, and Bergmann. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 49–52, 57–60, 67, 70, 71 103 Ruzhin, Doyle 49–52, 57–60, 67, 70, 71 53, 54, 61–63, 68 103 Ruzhin, Doyle, Bergmann 53, 54, 61–63, 68 Overall Outcome 49–54, 57–63, 67, 68, 70, 71 REVERSED