Ex Parte Clohessy et al

Patent Trial and Appeal Board

Mar 31, 2016

13199314 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/199,314 08/24/2011 Thomas J. Clohessy
4955 7590 04/04/2016
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET, P 0 BOX 224
MONROE, CT 06468
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.
814-289.004-1 8209
EXAMINER
FORD, GISELE D
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. CLOHESSY and EDWIN PETTERSEN
Appeal2014-003046
Application 13/199,314
Technology Center 3600
Before ANNETTE R. REIMERS, MARK A. GEIER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas J. Clohessy and Edwin Pettersen (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1, 2, 4-7, 11, and 15-19 as unpatentable over Daxon
(US 7,985,143 Bl; iss. July 26, 2011) and Kessler (US 6,635,331 B2; iss.
Oct. 21, 2003); (2) claims 3 and 20 as unpatentable over Daxon, Kessler, and
McKay (US 6,458,442 B 1; iss. Oct. 1, 2002); (3) claim 8 as unpatentable
over Daxon, Kessler, and Putt (US 7,329,451 B2; iss. Feb.12, 2008); and (4)
claims 9, 10, and 12-14 as unpatentable over Daxon, Kessler, and Munoz
(US 2005/0088020 Al; pub. Apr. 28, 2005). We have jurisdiction under 35
U.S.C. § 6(b).
Appeal2014-003046
Application 13/199,314
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to mats, particularly mats placed
over a flat surface, such as a floor or the canvas surface of a fighting ring or
the like." Spec. 1, 11. 10-11; Figs. 3, 4, 5.
Claim 1, the sole independent claim, is representative of the claimed
subject matter and recites:
1. A mat comprising:
Claim 1
a first mat section having:
an upper layer having an upper surface, the
upper surface including a cutout area, and
a lower layer having a lower surface and an
upper surface, the upper surface including fasteners
attached thereto in a space defined by said cutout
area of said upper layer; and
a second mat section having a lo\'l/er surface
including fasteners that are removably attached to
the fasteners on the upper surface of the lower layer
of the first mat section, the second mat section
having a perimeter that fits within the cutout area of
the first mat section.
ANALYSIS
Obviousness over Daxon and Kessler
The Examiner finds that Daxon discloses the limitations of claim 1
except Daxon "does not disclose the lower surface as including fasteners that
are removably attached to the fasteners on the upper surface of the lower
layer of the first mat section." Final Act. 2. The Examiner finds that
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"Kessler teaches fasteners (13 can be a strip of loop material, col. 5, lines
21-23) on the bottom surface of the second mat section." Id. The Examiner
concludes that it would have been obvious "to use the loop fasteners of
Kessler on the second mat section [of Daxon] as well as the hook fasteners
of Kessler (23) on the upper surface of the first mat section [of Daxon] to
further secure the second mat section into the cutout area of the first mat
section." Id. at 3.
Appellants contend that "the asserted combination of Daxon and
Kessler does not render the claimed invention obvious, at least because the
references teach away from making this combination, and the combination
would render the Daxon reference unsuitable for it[s] intended purposes."
Appeal Br. 5. Specifically, Appellants contend:
[T]he stated purpose[] of Daxon of allowing the display region
70 to be removed relative to the mat by holding the rest of the
mat stationary while pulling the tie string could not be achieved
if Daxon was modified in the manner argued by the Office. Any
modification of Daxon to include the use of loop fasteners of
Kessler on the "second mat section", as well as the hook fasteners
of Kessler on the upper surface of the "first mat section" to
"further secure the second mat section into the cutout region of
the first mat section" (emphasis added, final Office Action, page
3, lines 3--4) would be contrary to the teaching of Daxon and
would make the teaching of Daxon inoperative.
Id. at 7. Appellants further contend:
Daxon already utilizes two different elements (tie string 22 and
protrusions 86) to secure the display region 70 to the mat. There
would have been no reason for a person of ordinary skill in the
art to make the modification proposed by the Office in order to
duplicate the function already being served by two other features
in Daxon.
Reply Br. 2.
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Application 13/199,314
Appellants' arguments are not persuasive. The Examiner makes it
clear in the response to Appellants' arguments that the proposed
modification of Daxon with the hook and loop fasteners of Kessler is not "to
duplicate the function already being served by two other features in Daxon,"
but "to serve an entirely different purpose, which is to further secure the
removable mat." Ans. 2 (emphasis added); see also Reply Br. 2. The
Examiner's findings as to why a skilled artisan would have combined the
references are objectively reasonable and based on rational underpinnings.
Appellants do not apprise us of error in the Examiner's findings or
conclusions.
In addition, we fail to see how adding the hook and loop fasteners of
Kessler to the respective first and second mat sections of Daxon would
hinder/prevent display region 70 from being removed "by holding the mat
stationary while pulling the tie string [22]." See Appeal Br. 7; see also
Daxon; col. 6; 11. 36-38. We agree with the Examiner; "[a]lthough [Daxon]
uses a tie string (22) to aid in the removal of the display region (70), the
removal process would not be changed with the addition of the hook and
loop fasteners [of Kessler]." Ans. 2. As such, Appellants do not apprise us
of how the Examiner's proposed modification of Daxon with the hook and
loop fasteners of Kessler "would render Daxon unsatisfactory for its
intended purpose." Reply Br. 2; see also Appeal Br. 7-8.
Further, Appellants do not establish that the prior art teaches away
from the claimed invention because Appellants do not demonstrate that "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
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Application 13/199,314
Gurley, 27 F.3d at 553. As discussed infra, Daxon merely discloses an
alternative (displaying an advertisement on an opposing mat 10 face), which
is not, by itself, sufficient to demonstrate a teaching away. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of [the
disclosed] alternatives because such disclosure does not criticize, discredit,
or otherwise discourage the solution claimed .... "). Additionally,
Appellants do not direct us to any discussion in Daxon that criticizes,
discredits, or otherwise discourages ( 1) the use of hook and loop fastener's
on the mat; or (2) further securement of the second mat section into the
cutout area of the first mat section. Moreover, the Examiner notes that
"Daxon does not specifically teach that the use of fasteners, such as hook
and loop fasteners, would hinder the effectiveness of his invention." Ans. 2.
As such, the combined teachings of Daxon and Kessler do not teach away
from the subject invention.
Appellants contend:
[I]t is a clear stated purpose of Daxon to be able to present
advertisements on both sides of the mat surface. As a result, a
person of skill in the art would be motivated away from
incorporating the fasteners of Kessler as asserted by the Office.
Doing so would require hook or loop fasteners on both sides of
the mat, including the side that is face up displaying the
advertisement, which would both detract from the surface area
available to display the advertisement and would compromise
the use of the mat to absorb fluid, as a hook and loop fastener
would not absorb fluid, unlike a sponge material. See Daxon,
column 7, lines 27-28. In addition, because the mat according
to Daxon already includes four leg engaging recesses 40, the area
to display advertisements would be even further reduced if that
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space also included the hook and loop fasteners on both sides as
the Office suggests.
Appeal Br. 7-8.
Appellants' arguments are not persuasive. At the outset, as discussed
above, the combined teachings of Daxon and Kessler do not teach away
from the subject invention. Further, Appellants' contention that including
hook or loop fasteners on the side of Daxon's mat displaying the
advertisement "would both detract from the surface area available to display
the advertisement and would compromise the use of the mat to absorb fluid"
amounts to unsupported attorney argument, and thus is entitled to little, if
any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(holding that arguments and conclusions unsupported by factual evidence
carry no evidentiary weight). Daxon discloses:
Comer mat 10 preferably not only includes an upper surface area
for display of advertising indicia I but preferably has alternative
advertising indicia I on an opposing mat 10 face, so that the mat
10 body can be inverted to display the alternative advertising
indicia I. Alternatively, removable display region 70 has an
opposing display region face displaying alternative advertising
indicia I, so that display region 70 also can be inverted to display
the alternative advertising indicia I.
Daxon, col. 6, 11. 40-48 (emphasis added). A reference disclosure is not
limited only to its preferred embodiments, but is available for all that it
discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976). We agree with the Examiner that Daxon's
disclosure of displaying an advertisement on an opposing mat 10 face "is
presented as an option and consequently the hook and loop fasteners are not
necessarily required on both sides of the mat." Ans. 3.
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Moreover, even assuming arguendo that adding the hook and loop
fasteners of Kessler to Daxon's mat would result in "disadvantages ... in the
system of Daxon," as alleged by Appellants (see Reply Br. 2; see also
Appeal Br. 8), we note that "[a] known or obvious [product] does not
become patentable simply because it has been described as somewhat
inferior to some other product forthe same use." In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). "The fact that the motivating benefit comes at the
expense of another benefit ... should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another."
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 1 as unpatentable over Daxon and Kessler.
Claims 2, 4, 6, 11, and 15-18
Appellants do not present arguments for claims 2, 4, 6, 11, and 15-18
separate from those presented above for claim 1. See Appeal Br. 12.
Accordingly, for the reasons discussed above for claim 1, we likewise
sustain the Examiner's rejection of claims 2, 4, 6, 11, and 15-18 as
unpatentable over Daxon and Kessler. 1
1 Claim 4 depends from claim 2, which depends from claim 1, and claim 15
depends from claim 1. See Appeal Br. 16-17, Claims App. Each of claims
4 and 15 recites: "the upper surface of the second mat section." See id. We
note that there is insufficient antecedent basis for "the upper surface" of the
second mat section in the claims.
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Claim 5
The Examiner finds that "Daxon discloses a mat wherein the lower
surface of the lower layer of the first mat section is configured to minimize
slipping of the mat when the mat is placed on another surface (via fastening
means 20)." Final Act. 3.
Appellants contend:
[T]he fastening means 20 (i.e., tie string 22, as stated in column
5, lines 37-38) does not configure the asserted "lower surface of
the lower layer of the first mat section" (i.e., cavity bottom wall
82 according to the Office's claim 1 rejection) to minimize
slipping of the mat when the mat is placed on another surface.
Appeal Br. 9.
Appellants' argument is persuasive. The Examiner fails to establish
by evidence or sufficient technical reasoning how the lower surface of lower
layer 82 of the first mat section of Daxon is configured via fastening means
20 to minimize slipping of the mat when the mat is placed on another
surface. See Final Act. 3; see also Ans. 3.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 5 as unpatentable over Daxon and Kessler.
Claim 7
For the reasons set forth infra in the new ground of rejection under 35
U.S.C. § 112, second paragraph, the limitation "the upper layer of the first
mat section has an upper surface with a carpet-like material attached thereto"
in dependent claim 7 is unclear, thereby rendering claim 7 indefinite. This
limitation is critical to deciding the propriety of the prior-art rejections.
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Having determined that claim 7 is indefinite, we cannot sustain the
rejection of this claim under 35 U.S.C. § 103(a) because to do so would
require speculation as to the scope of the claim. In re Steele, 305 F.2d 859,
862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection
of indefinite claims under 35 U.S.C. § 103(a), because the rejection was
based on speculative assumptions as to the meaning of the claims).
Accordingly, we do not sustain the Examiner's rejection of claim 7 as
unpatentable over Daxon and Kessler.
Claim 192
The Examiner finds:
Daxon in view of Kessler discloses a mat wherein the second mat
section includes a flexible sheet (lower sheet 16) forming the
lower surface upon which the fasteners (of Kessler) are attached
and another sheet (upper sheet 16) forming the upper surface of
the second mat section, the two sheets bonded to each other to
form the second mat section (via a spongy urethane foam, col. 7,
lines 22-25).
Final Act. 5.
Appellants contend:
[T]he Office's interpretation of Daxon relative to claim 19 is not
consistent with the Office's interpretation of Daxon relative to
independent claim 1, from which claim 19 depends. In rejecting
claim 1, the Office has asserted that the "second mat section"
2 Despite our New Ground of Rejection of claim 19 under 35 U.S.C. § 112,
second paragraph, below, the following analysis is based on the Examiner's
interpretation of the claim notwithstanding the indefinite language of claim
19.
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relates to the display region 70 in Daxon. In column 7, lines 22-
28, the display region 70 is discussed as a separate entity from
the high friction sheet material 16, and there is no mention of the
two being related. Thus, the Office is in essence asserting two
distinct features of Daxon are considered to teach "the second
mat section" within claim 19, which incorporates the features of
claim 1.
Appeal Br. 11.
Appellants' arguments are persuasive. Claim 19 recites, in relevant
part, "the second mat section includes a flexible sheet forming the lower
surface upon which the fasteners are attached and another sheet forming the
upper surface of the second mat section." Appeal Br. 18, Claims App.
(emphasis added). The Examiner finds that display region 70 of Daxon
constitutes "a second mat section (Fig. 11, the removable portion of element
14 shown) having a lower surface." See Final Act. 2. Daxon discloses: "A
layer of high friction sheet material 16 optionally is adhesively bonded to the
mat 10 upper and lower surfaces." See Daxon, col. 7, 11. 22-23; see also id.
Fig. 7; Final Act. 5; Ans. 4; Appeal Br. 11. Based on Daxon's disclosure,
we acknowledge that high friction sheet material 16 of Daxon could
constitute "a layer of high friction material [another sheet] adhesively
bonded to the upper surface [of the second mat section (display region 70)]."
See Ans. 4; see also Daxon, Fig. 7. However, claim 19 further requires that
the second mat section (display region 70) includes a "flexible sheet forming
the lower surface." Appeal Br. 18, Claims App. (emphasis added). The
Examiner does not direct us to any discussion in Daxon regarding the lower
surface of display region 70 (the second mat section) including a flexible
sheet forming the lower surface. See Final Act. 5; Ans. 4; see also Appeal
Br. 11. Further, the Examiner does not establish through sufficient technical
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reasoning that the lower surface of display region 70 (the second mat
section) necessarily includes a flexible sheet forming the lower surface. See
Final Act. 5; Ans. 4. As such, the Examiner fails to establish that Daxon
discloses the second mat section including a flexible sheet forming the lower
surface, as recited in claim 19.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 19 as unpatentable over Daxon and Kessler.
Obviousness over Daxon, Kessler, and McKay
Claim 3
Dependent claim 3 recites "the fluid absorbent material [of the second
mat section] is a felt-like material." See Appeal Br. 16, Claims App. The
Examiner finds that "Daxon in view of Kessler discloses a mat formed of a
fluid absorbent material, but does not disclose the material as being of a felt-
like material. McKay teaches the use of felt as a top layer of fluid absorbing
material (16, col. 3, [11.] 51-56)." Final Act. 6. The Examiner concludes:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to use a felt rather than the
spongy polyurethane foam ofDaxon, since it has been held to be
within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice (see MPEP 2144.04), and
because felt would perform the same way as the moisture
absorbing material disclosed by Daxon.
Id. The Examiner further concludes: "This change in materials would still
provide for a rough and slip-resistant (these are relative terms in the art)
surface, as is the intention of Daxon' s mat surface." Ans. 5.
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Appellants contend:
Modifying Daxon as suggested by the Office, such as to utilize a
top layer of felt instead of a top layer of rough surface 14 for
frictionally engaging boxer shoes (Daxon, column 5, lines 40-
42) would run counter to this purpose of Daxon, and as a result,
would not have been an obvious modification to a person having
ordinary skill in the art, particularly in view of the fact that Daxon
already provides means for dealing with fluids (the fluid
collecting pan 30 described from column 5, line 42 to column 6,
line 2) while still utilizing a rough, high-friction top surface to
reduce slipping.
Appeal Br. 12.
Appellants' argument is not persuasive. Appellants' argument is an
attack on the references individually rather than a challenge to the
Examiner's combination of the teachings of Daxon, Kessler, and McKay.
See In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642
F.2d 413 (CCPA 1981) (holding that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references). McKay discloses
The bibulous layer 16 is designed to absorb liquid from a shoe
or object which contacts its upper face 22. Therefore, when a
person walks across the uppermost cleaning sheet and contacts
the upper face 22 of the uppermost bibulous layer 16, the
bibulous layer 16 absorbs liquid from the person's shoes. Also,
the bibulous layer [16] is preferably tough enough to withstand
wiping of shoes on its upper surface 22. As will be clear to those
of skill in the art, the bibulous layer 16 may be constructed from
any of a variety of materials. For example, non-woven substrates
such as spunlace, airlaid, wet laid, rayon, polyester, melt blown
felt or any other non-woven fabric may be used; woven fabrics
may also be used for particular applications.
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McKay, col. 3, 11. 44--56 (emphasis added); see also Final Act. 6. In other
words, McKay discloses a fluid absorbent felt material that is tough enough
to withstand wiping of shoes (a frictionally engaging surface).
Consequently, we agree with the Examiner that modifying Daxon and
Kessler to include the felt of McKay "would still provide for a rough and
slip-resistant[] surface, as is the intention of Daxon's mat surface." See
Ans. 5. Appellants do not provide any persuasive evidence or argument to
the contrary. See Appeal Br. 12. "Attomey[s'] argument in a brief cannot
take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA
197 4) (citation omitted).
Further, Daxon discloses that mat 10 includes "several boxer anti-slip
means including a rough surface for frictionally engaging boxer shoes, and a
fluid collecting pan having a pan." See Daxon, col. 1, 11. 28-31 (emphasis
added); see also id. at col. 5, 11. 40-42. As such, it would appear that
modifying Daxon and Kessler to include the fluid absorbent felt material of
McKay would provide additional means for dealing with fluids (anti-slip
means), which would lend to Daxon's purpose to "prevent slipping on the
mat." See Final Act. 6; Ans. 5; Appeal Br. 12.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claim 3 as unpatentable over Daxon, Kessler, and McKay.
Claim 20
Claim 20 depends from claim 19. See Appeal Br. 18, Claims App.
The Examiner does not rely on McKay in any manner that would result in
overcoming the above-noted deficiency of the rejection of claim 19 based on
Daxon and Kessler. See Final Act. 6-7. As such, we do not sustain the
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Examiner's rejection of claim 20 as unpatentable over Daxon, Kessler, and
McKay. 3
Obviousness over Daxon, Kessler, and Putt
Claim 8
For the reasons set forth infra in the new ground of rejection under 35
U.S.C. § 112, second paragraph, the limitation "the upper layer of the first
mat section has an upper surface with a carpet-like material attached thereto"
in dependent claim 7 is unclear, thereby rendering claim 7 indefinite.
Having determined that claim 7 is indefinite, we cannot sustain the
rejection of claim 8, which depends from claim 7, under 35 U.S.C. § 103(a)
because to do so would require speculation as to the scope of the claims.
See In re Steele, 305 F.2d at 862-63.
Accordingly, we do not sustain the Examiner's rejection of claim 8 as
unpatentable over Daxon, Kessler, and Putt.
Obviousness over Daxon, Kessler, and Munoz
Claims 9, 10, and 12-14
Appellants do not present arguments for claims 9, 10, and 12-14
separate from those presented above for claim 1. See Appeal Br. 14.
Accordingly, for the reasons discussed above for claim 1, we likewise
sustain the Examiner's rejection of claims 9, 10, and 12-14 as unpatentable
over Daxon, Kessler, and Munoz.
3 As claim 20 depends from claim 19, it incorporates the indefinite subject
matter. See New Ground of Rejection, below; see also note 2, above.
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NEW GROUNDS OF REJECTION
Indefiniteness Rejections
Claims 7 and 8
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
7 and 8 under 35 U.S.C. § 112, second paragraph, for failure to particularly
point out and distinctly claim the subject matter of the invention.
Independent claim 1 recites "a first mat section having: an upper layer
having an upper surface." Appeal Br. 16, Claims App. Claim 7 depends
from claim 1. Id. at 17. The recitation in claim 7 of "wherein the upper
layer of the first mat section has an upper surface" is unclear as to whether
"an upper surface" of the upper layer of the first mat section of claim 7 is the
same "upper surface" or a different "upper surface" than the one recited in
claim 1. As such, the term "an upper surface" in claim 7 is unclear and the
claim is indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1210 (BP AI
2008) (precedential) (holding that "[t]he claimed 'sheet feeding area' is
amenable to two plausible definitions" and renders the claims indefinite).
Claim 8 depends from claim 7 and thus incorporates the indefinite
subject matter.
Accordingly, for the reasons discussed supra, we determine that
dependent claims 7 and 8 are indefinite. Therefore, pursuant to our authority
under 37 C.F.R. § 41.50(b), we reject claims 7 and 8 under 35 U.S.C. § 112,
second paragraph, as indefinite.
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Claims 19 and 20
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
19 and 20 under 35 U.S.C. § 112, second paragraph, for failure to
particularly point out and distinctly claim the subject matter of the invention.
Claim 19 depends from claim 1 and recites "the upper surface of the
second mat section." See Appeal Br. 18, Claims App. There is insufficient
antecedent basis for "the upper surface" of the second mat section in claim
1. 4 As such, claim 19 is unclear in its recitation of "the upper surface of the
second mat section."
Claim 20 depends from claim 19 and thus incorporates the indefinite
subject matter.
Accordingly, for the reasons discussed supra, we determine that
claims 19 and 20 are indefinite. Therefore, pursuant to our authority under
37 C.F.R. § 41.50(b), we reject claims 19 and 20 under 35 U.S.C. § 112,
second paragraph, as indefinite.
Obviousness over Daxon and Kessler
Claim 5
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
5 under 35 U.S.C. § 103(a) as unpatentable over Daxon and Kessler. At the
outset, we agree and adopt as our own the Examiner's findings and
conclusions regarding the combined teachings of Daxon and Kessler in
reference to claim 1. See Final Act. 2-3. Claim 5, which depends from
4 We note that claim 1 does recite an "upper surface" with respect to the
upper and lower layers of the first mat section. See Appeal Br. 16, Claims
App.
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claim 1, recites that "the lower surface of the lower layer of the first mat
section is configured to minimize slipping of the mat when the mat is placed
on another surface." Appeal Br. 16, Claims App. Daxon discloses: "A layer
of high friction sheet material 16 optionally is adhesively bonded to the mat
10 upper and lower surfaces." See Daxon, col. 7, 11. 22-23 (italics added),
Fig. 7. A skilled artisan would recognize that the lower surface of lower
layer 82 of the first mat section 14 of Daxon' s mat 10 could be configured
via high friction sheet material 16 to minimize slipping of the mat when the
mat is placed on another surface. See Daxon, Figs. 7, 11. As such, based on
the foregoing reasons, we conclude that claim 5 is unpatentable over the
combined teachings of Daxon and Kessler.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, 4, 6,
11, and 15-18 as unpatentable over Daxon and Kessler.
We REVERSE the decision of the Examiner to reject claims 5, 7, and
19 as unpatentable over Daxon and Kessler.
We AFFIRM the decision of the Examiner to reject claim 3 as
unpatentable over Daxon, Kessler, and McKay.
We REVERSE the decision of the Examiner to reject claim 20 as
unpatentable over Daxon, Kessler, and McKay.
We REVERSE the decision of the Examiner to reject claim 8 as
unpatentable over Daxon, Kessler, and Putt.
We AFFIRM the decision of the Examiner to reject claims 9, 10, and
12-14 as unpatentable over Daxon, Kessler, and Munoz.
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We enter new grounds of rejection, pursuant to 37 C.F.R. § 41.50(b),
of claims 7, 8, 19, and 20 under 35 U.S.C. § 112(a), second paragraph, and
of claim 5 under 35 U.S.C. § 103(a) as set forth supra. 5
Regarding the affirmed rejection(s), 37 CPR§ 41.52(a)(l) provides
"Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b), which provides that "new ground[s] of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
5 The exercise of authority under 3 7 C.F .R. § 41. 50(b) to enter a new ground
of rejection is discretionary. As such, with respect to the remaining pending
claims in the present application, no inference should be drawn from a failure
to exercise that discretion. See Manual of Patent Examining Procedure
§ 1213.02, 9th Ed. (March 2014).
18
Appeal2014-003046
Application 13/199,314
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. § 141or145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for rehearing
thereof.
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)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
19