Ex Parte Beachy

Patent Trial and Appeal Board

Apr 2, 2015

12774691 (P.T.A.B. Apr. 2, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARVIN E. BEACHY
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Appeal 2013-001678
1

Application 12/774,691
Technology Center 3600
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Request”) on March 23,
2015, of the Decision (“Decision”) mailed February 5, 2015. In the
Decision, we affirmed the following rejections made by the Examiner: the
rejection of 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, iss. Aug. 6, 1985); the rejection of
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 the rejection of

1
Appellant states, “[t]he real party in interest is . . . Marvin Beachy.”
Appeal Brief filed Nov. 19, 2012 (“Appeal Br.”) 2.
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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). See Decision 5.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request includes
certain points, in particular, which Appellant believes the Board
misapprehended or overlooked in reaching its Decision.
For the following reasons, we deny Appellant’s Request.
DISCUSSION
In the Decision, we state, “[f]or 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” of error. Decision 4. Appellant
argues we erred because Beachy’s top plate 18 is, in fact, unsuited for acting
as a paint roller tray. Request 4–7. Initially, we note that even if
Appellant’s Request establishes that Beachy’s top plate 18 cannot function
as a paint roller tray, Appellant would not show our Decision is erroneous.
Rather, Appellant must show that the Appeal Brief establishes persuasively
that Beachy’s top plate 18 cannot act as a paint roller tray. Regardless,
neither the Appeal Brief nor the Request provides any evidence tending to
show that Beachy’s top plate 18 cannot act as a paint roller tray. For
example, Appellant does not cite any evidence providing a definition for a
“paint roller tray.” Thus, Appellant does not establish persuasively that a
paint roller tray is a tray required to hold a quantity of paint for delivery to a
roller (as Appellant argues), as opposed, for example, to being simply a
surface upon which a paint roller may be set. Based on the foregoing,
Appellant’s argument is unpersuasive.
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In the Decision, we state, “[b]ecause the Examiner relies on Beachy to
disclose the claimed paint roller tray (see Answer [mailed Oct. 12, 2012,] 6),
Appellant’s argument that Ledford does not disclose the paint roller tray (see
Appeal Br. 13) is unpersuasive.” Decision 4. Appellant argues we erred,
because:
Applicant is not arguing [in the Appeal Brief] that
Ledford does not disclose the paint roller tray.
Clearly, element 72 of Ledford is described as “a
painter’s roller paint tray[”] at column 3, line 36 of
the ’954 patent. Rather, Applicant suggests that
the paint roller tray of Ledford does not provide an
upper gripping surface for either of the ladder rung
and a top shelf of a step ladder and is not a
structural element of the mounting device as is the
paint tray 38 of the present invention.
Request 8 (emphasis omitted); see also id. at 7–8. We are not persuaded of
error. As pointed out in the Decision, the Examiner relies on Beachy, and
not Ledford, to disclose the claimed paint roller tray. See Decision 4. For
example, the Examiner states:
Beachy shows a [sic] the platform 22 having a
width sized to fit between first and second side
rung supports of a ladder and with his platform
disposed beneath either of his ladder rung and a
top shelf of his step ladder, with a paint receptacle
means 18,26 disposed above either of his rung and
his top shelf with his paint receptacle 18,26
providing an upper gripping surface for either of
his ladder rung and a top shelf of the step ladder
for mounting his paint receptacle in a gripping
manner within the frame of his ladder.
Answer 6 (emphasis added). Thus, Appellant’s argument that Ledford does
not show the claimed paint roller tray providing the specific upper gripping
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surface is not persuasive, inasmuch as the Examiner relies on Ledford to
disclose such claimed features.
In the Decision, we state, “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.”
2
Decision 4. Appellant argues we erred, because:
In the present invention, the paint roller tray 38
provides an upper gripping surface for the ladder
rung or top shelf of a step ladder and is a structural
element of the mounting device. This eliminates
the need for the upper plate 18 of Beachy, the
platform 12 of Tyson[,] or the frame 51, tube 62,
footplate 22 and stub arm 68 of Ledford to attach
the paint receptacle (in this case the paint roller
tray 38) to the ladder. As the present invention
provides the same functionality (attaching a paint
roller tray to a ladder) as the suggested
combination using at least one less element, the
motivation to make the suggested combination is
not found.
Request 8–9 (emphasis and citations omitted). We are not persuaded of
error. The transitional term “comprising,” which is recited in claim 1 from
which each of the remaining claims depends, is inclusive or open-ended, and
therefore does not exclude or preclude additional, unrecited elements. See,
e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004).

2
A relevant definition of “preclude” is “to exclude or debar from
something.” http://dictionary.reference.com/browse/preclude, last accessed
March 26, 2015. Thus, the Board’s statement may be read as follows:
“Inasmuch as Appellant does not establish persuasively that claim 1
excludes any of the structure in the prior art references cited by the
Examiner, the argument is unpersuasive.”
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Thus, even assuming arguendo that the Examiner’s proposed combination of
references results in a structure with at least one more element than claimed,
such a structure would still render obvious Appellant’s claims comprising
specific elements.
In the Decision, we state that, “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 . . . could have combined the elements as claimed, or
substituted one known element for another, using known methods with no
change in their respective functions,’” and therefore the Examiner’s
proposed combination renders the claims obvious in accordance with KSR
(Decision 5). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007); see
also id. 5–6. Although we have carefully reviewed Appellant’s argument
(see Request 9–11), we are not persuaded of error, and reiterate that the
combination of references renders the claims obvious for the reasons set
forth in the Decision (see Decision 4–5). For example, Appellant argues,
there is a “lack of any suggestion or teaching in the cited art of the use of a
paint roller tray both as a paint receptacle and as a structural element
providing both the needed rigidity to support the mounting device and an
upper gripping surface for the ladder rung or top shelf of a step ladder”
(Request 10–11) and that “[n]othing in the prior art teaches or suggests using
a paint roller tray to provide a gripping surface” (id. 11). However, as stated
above, we agree with the Examiner’s finding that “Beachy shows . . . a paint
receptacle means 18,26 disposed above either . . . his rung . . . [or] his top
shelf . . . [, and] providing an upper gripping surface for either . . . his ladder
rung . . . [or] top shelf of the step ladder for mounting his paint receptacle in
a gripping manner within the frame of his ladder” (Ans. 6). We note that to
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the extent that Appellant argues characteristics of the invention that are not
claimed, (e.g., “[n]othing in the prior art teaches or suggests using a paint
roller tray . . . to provide the rigidity to be used as a structural element to
support itself as a paint reservoir and paint rolling surface,” Request 11
(emphasis added)), we are not persuaded by such arguments.
DECISION
We have carefully considered Appellant’s arguments set forth in the
Request, but, for the foregoing reasons, we do not find Appellant’s
arguments persuasive to show error in the Board’s Decision.
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).
DENIED
rvb