Ex Parte Ennis

Board of Patent Appeals and Interferences

Aug 1, 2011

12323709 (B.P.A.I. Aug. 1, 2011)

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.
12/323,709 11/26/2008 G. Thomas Ennis NSC-6678 8263
24956 7590 08/01/2011
MATTINGLY & MALUR, PC
1800 DIAGONAL ROAD
SUITE 370
ALEXANDRIA, VA 22314
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/01/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte G. THOMAS ENNIS
____________________

Appeal 2011-006018
Application 12/323,709
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006018
Application 12/323,709
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter
a NEW GROUND OF REJECTION pursuant to our authority under 37
C.F.R. § 41.50(b).

THE INVENTION
Appellant’s claimed invention relates to a “cleaning element for
washing a vehicle and more particularly, to a cleaning element employing
synthetic grass material to contact a surface being cleaned.” Spec. 1,
para. [0001]. Independent claim 1, reproduced below, is representative of
the claimed subject matter (emphasis added):
1. A cleaning element for washing a vehicle comprising:
a support; and
a synthetic grass material mounted to said support; and
wherein said synthetic grass material is constructed of
plastic material and comprises a base having filaments in dense
clusters upstanding therefrom.

REJECTIONS
Appellant seeks review of the following rejections:
1. Rejection of claims 1-13 under 35 U.S.C. § 103(a) as being
unpatentable over Crotts (US 4,815,158; issued March 28, 1989) and
Charvat (US 3,147,503; issued September 8, 1964).
2. Rejection of claims 1, 5, 6, 8, 10, and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Burger (US 4,288,255; issued September 8, 1981)
and Crotts.
Appeal 2011-006018
Application 12/323,709
3
3. Rejection of claims 7 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Burger, Crotts, and Pecora (US 4,377,878; issued March
29, 1983).

CONTENTIONS AND ISSUES
The Examiner found that Crotts discloses the cleaning element of
claim 1, except that that Crotts’s synthetic grass material (strip bristles 5) are
not disposed in the base (bristle sections 4) in dense clusters. Ans. 3-4. The
Examiner found that Charvat discloses a technique of forming a brush that
includes filaments (brush fill material 30) disposed in a base (base region
32) in dense clusters. Ans. 4. The Examiner concluded that it would have
been obvious to modify the filaments (strip bristles 5) of Crotts into a
densely packed configuration as taught by Charvat, in order to “more
effectively maintain the desired brushing characteristics of the brush while
also providing a maximum quantity of filaments secured to the base.” Id.
Appellant argues that a person having ordinary skill in the art would not
have combined the carwasher brush of Crotts with Charvat’s rotary brush
comprised of hard bristle material designed for abrading. App. Br. 11-12.
The first issue before us is whether a person of ordinary skill in the art
would have combined Crotts and Charvat as proposed by the Examiner to
reach the subject matter of independent claim 1.
Each of the remaining two rejections relies upon the Examiner’s
finding that Burger discloses a base (15) having filaments (17) in dense
clusters. Ans. 7. Appellant argues that Burger’s filaments (17) are not
disposed in clusters, but rather are disposed as individual filaments. App.
Br. 14.
Appeal 2011-006018
Application 12/323,709
4
The second issue before us is whether Burger discloses synthetic grass
material comprised of a base having filaments arranged in dense clusters as
called for in independent claim 1.

ANALYSIS
Rejection of claims 1-13 under 35 U.S.C. § 103(a) as being unpatentable
over Crotts and Charvat
The Examiner’s rationale that the proposed modification would
“maintain the desired brushing characteristics of the brush while also
providing a maximum quantity of filaments secured to the base,” lacks the
requisite rationale underpinning. See Ans. 4; see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.’” (citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Crotts discloses a rotary top brush 2 for a vehicle washer that includes
a base (bristle section 4) having a large number of filaments (strip bristles 5)
that are thin and limp, and wash the vehicle by contacting it. Crotts, col. 1,
ll. 5-6, 54-61; col. 2, l. 67-col. 3, l. 7; figs. 1, 2, 4.1 A person of ordinary
skill in the art would recognize that Crotts’s filaments are designed to clean
without damage to the vehicle. 2

1 The numbers for elements 4 and 5 are reversed in Figure 1, but are correct
in Figure 2 as shown by the description. Crotts, col. 2, ll. 29-35.
2 See, e.g., Spec. 2, para. [0003] (mentioning desirability of cleaning without
scratching); and Ans. 7 (noting it is desirable that filaments not scratch
vehicle).
Appeal 2011-006018
Application 12/323,709
5
Charvat discloses a power driven rotary brush having wire bristle
material capable of rapid and effective cutting or abrading action on the
work. Charvat, col. 1, ll. 9-11, 19-36. Charvat discloses that the brush fill
material is packed as tightly as possible to obtain the greatest brush fill
material density, which provides as many working points as possible and
minimizes movement of the bristle material during brushing operations.3
Charvat, col. 1, ll. 19-25; col. 2, l. 57-col. 3, l. 2.
Thus, modification of the filaments (strip bristles 5) of Crotts’s rotary
top brush 2 to be densely clustered as taught by Charvat would produce a
rotary top brush 2 for a vehicle washer having filaments that minimize
movement and tend to increase the abrasive and cutting power of those
filaments. As such, the proposed modification would not “maintain the
desired brushing characteristics of the brush” as the Examiner reasoned.
Rather, the proposed modification would undesirably increase the tendency
of Crotts’s rotary top brush 2 to abrade or cut rather than to clean without
damaging. Consequently, we agree with Appellant (App. Br. 12) that a
person of ordinary skill in the art would not have modified Crotts in this
way. Given this, we cannot sustain the rejection of independent claims 1
and 8 or the respective dependent claims 2-7 and 9-13.

3 This description relates to the first embodiment of Charvat, while the
Examiner relied upon the second embodiment. However, Charvat discloses
the second embodiment is “quite similar.” Charvat, col. 3, ll. 28-31; figs. 1,
3.
Appeal 2011-006018
Application 12/323,709
6
Rejection of claims 1, 5, 6, 8, 10, and 11 under 35 U.S.C. § 103(a) as over
Burger and Crott; and rejection of claims 7 and 12 under 35 U.S.C.
§ 103(a) over Burger, Crotts, and Pecora
Independent claim 1 is directed to a cleaning element for washing a
vehicle that includes a synthetic grass material which is constructed of
plastic material, and comprises filaments upstanding in dense clusters from a
base. Similarly, independent claim 8 calls for synthetic grass material
“comprised of a base having filaments in dense clusters upstanding
therefrom.”
Appellant’s Specification does not provide a lexicographical
definition of “dense clusters” of filaments. The ordinary meaning of
“cluster” is “a number of things grouped together in association or in
physical proximity,” example “a cluster of houses.”4 Appellant’s
Specification describes that the synthetic grass material 30 includes a
plurality of filaments 34 “in dense clusters upstanding” from base 32, and
depicts the filaments 34 in a plurality of groups of more than one filament
per group upstanding from the base 32. Spec. 5, para. [0017]; fig. 4.
Consequently, a person of ordinary skill in the art would interpret
independent claims 1 and 8 to call for synthetic grass material comprised of
filaments in dense clusters (a plurality of groups of more than one filament
per group) upstanding from a base.
Burger discloses a car washing installation having a rinsing station
formed as a portal 7. Burger, col. 1, ll. 12-13; col. 3, l. 47. Portal 7 includes
a horizontal dispenser tube 9 filled with water, and brush-type outlet

4 WEBSTER’S UNABRIDGED DICTIONARY (1996) (“cluster,” n. definition 2)
available at http://lionreference.chadwyck.com.
Appeal 2011-006018
Application 12/323,709
7
openings 15 that engage adjacent upper ends of vertical filaments 17 that
hang down from vertical tube 9. Burger, col. 3, ll. 49-50, 56-59; figs. 2, 3.
Filaments 17 form a curtain configured so that the water from horizontal
tube 9 runs down as a continuous sheet. Burger, col. 3, ll. 58-65; figs. 2, 3.
Given that Burger’s filaments 17 dispense the water in a continuous sheet
and are depicted as evenly distributed across horizontal tube 9 (Burger, fig.
3), we find by a preponderance of the evidence that Burger’s filaments 17
are not disposed in a plurality of groups of more than one filament per group
as called for in independent claims 1 and 8.
As such, we cannot sustain the rejections of independent claims 1 and
8 and their respective dependent claims 5, 6, 8, 10, and 11.

NEW GROUND OF REJECTION
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Squires (US 6,299,959 B1; issued October 9,
2001).5
We first construe claim 1, and then turn to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003).
The preamble of independent claim 1 recites “[a] cleaning element for
washing a vehicle.” “Whether to treat a preamble as a limitation is a
determination ‘resolved only on review of the entire[ ] ... patent to gain an
understanding of what the inventors actually invented and intended to

5 The Board enters a new ground of rejection at its discretion, and no
inference should be drawn from a failure to exercise that discretion against
other pending claims in this application. See 37 C.F.R. § 41.50(b); see also
Manual of Patent Examining Procedure (MPEP) § 1213.02 (8th ed., rev. 8,
July 2010).
Appeal 2011-006018
Application 12/323,709
8
encompass by the claim.’” Catalina Mktg. Int’l., Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citations omitted)).
The preamble is not essential to understanding any of the terms in the
body of the claim, nor does the preamble serve as an antecedent basis for
any of the terms in the body of the claim. The body of claim 1 describes a
structurally complete invention, and if the preamble were deleted, the
structure of the claimed invention would be unchanged. See Schumer v.
Lab. Computer Sys., Inc., 308 F.3d 1304, 1310 (Fed. Cir. 2002) (If the body
of the claim “sets out the complete invention,” the preamble is not ordinarily
treated as limiting the scope of the claim.). Here, the preamble merely states
an intended use of the structure described in the body of the claim. We
conclude that the preamble does not constitute or explain a claim limitation.
See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999).
Claim 1 calls for synthetic grass material mounted to a support where
the synthetic grass material is constructed of plastic material and comprises a
base having filaments in dense clusters upstanding therefrom. Squires
discloses synthetic grass material (synthetic grass 10) mounted to a support
(fiberglass matrix 31) where the synthetic grass material is constructed of
plastic material (polypropylene of polyethylene) and comprises a base
(standard polypropylene fabric 30) having filaments in dense clusters
(grasslike surface forming fibers 20 are tufted in clusters through composite
backing sheet 30, 31) upstanding therefrom. Squires, col. 3, ll. 12-13, 15-21,
Appeal 2011-006018
Application 12/323,709
9
40-42; fig. 1.6 Because Squires discloses each element of claim 1, Squires
anticipates claim 1.
To the extent that claim 1 can be interpreted as establishing an
intended use of a cleaning element for washing a vehicle, we find that
Squires is capable of such use. Further, it appears Appellant has claimed a
new use for an old product, which does not make a claim to that old product
patentable.7 See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).

CONCLUSIONS
A person of ordinary skill in the art would not have combined Crotts
and Charvat as proposed by the Examiner to reach the subject matter of
independent claim 1.
Burger does not disclose synthetic grass material comprised of a base
having filaments arranged in dense clusters as called for in independent
claim 1.
Squires anticipates claim 1.

DECISION
We reverse the Examiner’s decision rejecting claims 1-13.

6 Reinforcing fiberglass matrix 31 is the bottom layer of synthetic grass 10,
and fabric 30 is above matrix 31. Squires, col. 3, ll. 15-21, figs. 1, 2.
Squires mistakenly reverses the reference to the two layers. Squires, col. 3,
ll. 52-56.
7 Appellant essentially admitted a new use for an old product by stating, “in
45 years nobody has come up with the idea of using synthetic grass, artificial
grass, artificial turf -- it has a number of names -- to wash a car until Mr.
Ennis [Appellant].” Transcript of Oral Hr’g, July 14, 2011, at 4, ll. 10-13.
Appeal 2011-006018
Application 12/323,709
10
We enter a new ground of rejection for claim 1 as being anticipated by
Squires.

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 Appellant, 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. . . .

REVERSED, 37 C.F.R. § 41.50(b)

nlk