Ex Parte Beachy

Patent Trial and Appeal Board

Feb 3, 2015

12774691 (P.T.A.B. Feb. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARVIN E. BEACHY
____________

Appeal 2013-0016781
Application 12/774,691
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of
claims 1, 2, 5, and 7.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to the Specification, Appellant invented “a device for
removably attaching a standard paint roller tray to either a ladder or a step

1 Appellant identifies the inventor, Marvin Beachy, as the real party in
interest. See Appeal Br. 2.
2 Our decision references Appellant’s Specification (“Spec.,” filed May 5,
2010), Appeal Brief (“Appeal Br.,” filed Aug. 6, 2012), and Reply Brief
(“Reply Br.,” filed Nov. 7, 2012), as well as the Examiner’s Answer
(“Answer,” mailed Oct. 12, 2012).
Appeal 2013-001678
Application 12/774,691

2

ladder[,] . . . . easily removed and reattached for . . . filling or cleaning
. . . .[,] easily adaptable to a variety of paint roller trays . . . . [, and able to]
maintain a level orientation at all times.” Spec. 4, l. 18 – 5, l. 1. Claim 1,
which we reproduce below, is representative of the appealed claims.
1. A paint roller tray mounting device,
comprising:
a platform, said platform having a width sized to
fit between first and second side rung supports of a
ladder, a length sufficient to support a paint roller
tray and having a recess in an upper surface, said
recess being sized and shaped to provide a
gripping surface for a ladder rung;
at least two securing hooks, said hooks having a
hooking end and an attaching end and being
symmetrically attached at said attaching end
adjacent opposite edges of said platform;
said securing hooks being sized and shaped to
extend from at least a lower surface of said
platform to a surrounding upper edge of said paint
roller tray;
said hooks having a tightening device for urging
said paint roller tray and said platform together;
and
wherein said platform is disposed beneath either of
said ladder rung and a top shelf of a step ladder,
said paint roller tray is disposed above either of
said rung and said top shelf, said securing hooks
are disposed over said surrounding upper edge,
said tightening device is tightened and said paint
roller tray is secured to either of said rung and said
shelf with said paint roller tray providing an upper
gripping surface for either of said ladder rung and
a top shelf of a step ladder and structural element
of said mounting device.
Appeal Br., Claims App.
Appeal 2013-001678
Application 12/774,691

3

REJECTIONS AND PRIOR ART
Appellant appeals the following rejections made by the Examiner:
claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over Ledford
(US 5,191,954, iss. Mar. 9, 1993), Beachy (US 5,636,817, iss. June 10,
1997), and Tyson (US 4,533,018, Aug. 6, 1985);
claim 2 under 35 U.S.C. § 103(a) as unpatentable over Ledford,
Beachy, Tyson, and Mason (US 2,641,382, iss. June 9, 1953); and
claim 5 under 35 U.S.C. § 103(a) as unpatentable over Ledford,
Beachy, Tyson, and Fry (US 3,580,440, iss. May 25, 1971).
ANALYSIS
Independent claim 1 requires, “said paint roller tray is secured to
either of said rung and said shelf with said paint roller tray providing an
upper gripping surface for either of said ladder rung and a top shelf of a step
ladder and structural element of said mounting device.” Appeal Br., Claims
App.
We have carefully considered Appellant’s arguments. See Appeal Br.
9–23; see also Reply Br. 3–14. Nonetheless, we are not persuaded that the
Examiner errs in the rejection of claim 1. Thus, we sustain claim 1’s
rejection.
For example, Appellant argues that, contrary to the Examiner’s
findings (see Answer 6), Beachy’s top plate 18 is not a “paint roller tray,”
and thus even though Beachy’s “top plate 18 ha[s] elliptical depression 94 to
provide an upper gripping surface for either of the ladder rung and a top
shelf of a step ladder” (Appeal Br. 12), the Examiner does not establish that
any reference teaches claim 1’s limitation “said paint roller tray providing an
Appeal 2013-001678
Application 12/774,691

4

upper gripping surface for either of said ladder rung and a top shelf of a step
ladder and structural element of said mounting device” (see id. at 12–13).
In this case, even assuming that Beachy does not describe top plate 18
as a tray for a paint roller, the claim language at issue relates to the use of
Beachy’s top plate 18. “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). The Examiner identifies certain structure in Beachy (see Answer
6), which Appellant concedes does “provide an upper gripping surface for
either of the ladder rung and a top shelf of a step ladder” (Appeal Br. 12).
Thus, the claim language at issue at most describes an arguably-new use for
Beachy’s structure. For the rejection to be in error, Beachy’s top plate 18
must be unsuited for acting as a paint roller tray. Inasmuch as Appellant
does not establish that Beachy’s top plate 18 is unable to act as a paint roller
tray, we are not persuaded that the rejection is in error.
Because the Examiner relies on Beachy to disclose the claimed paint
roller tray (see Answer 6), Appellant’s argument that Ledford does not
disclose the paint roller tray (see Appeal Br. 13) is unpersuasive.
Appellant argues that the claim “omits elements in the prior art,” and
thus is nonobvious. Appeal Br. 13. Inasmuch as Appellant does not
establish persuasively that claim 1 precludes any of the structure in the prior
art references cited by the Examiner, the argument is unpersuasive.
Appellant argues the Examiner “has indulged in ‘impermissible
hindsight’” (Appeal Br. 14; see also id. at 14–19), because the prior art does
not suggest or teach the Examiner’s proposed combination of references (see
Appeal Br. at 15). In KSR, the Supreme Court emphasized “the need for
Appeal 2013-001678
Application 12/774,691

5

caution in granting a patent based on the combination of elements found in
the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–16 (2007).
The Court discussed circumstances in which a patent might be determined to
be obvious without an explicit application of the teaching, suggestion, or
motivation test. In particular, the Supreme Court reaffirmed that, “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416. In
this case, we agree with the Examiner that “[a]ll the claimed elements were
known in the prior art” (Answer 6), and thus “one of ordinary skill in the art
could have combined the elements as claimed, or substituted one known
element for another, using known methods with no change in their
respective functions. Such a combination would have yielded predictable
results to one of ordinary skill in the art” (id.). Thus, Appellant’s argument
is unpersuasive.
Appellant’s further arguments are similarly unpersuasive (see Appeal
Br. 19–23).
Based on the foregoing, we sustain the rejection of claim 1. We also
sustain the rejections of claims 2, 5, and 7, dependent from claim 1, which
Appellant argues are allowable for the same reasons as claim 1. See Appeal
Br. 21.
DECISION
For the above reasons, we AFFIRM the Examiner’s rejections of
claims 1, 2, 5, and 7.
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).
Appeal 2013-001678
Application 12/774,691

6

AFFIRMED
llw