Ex Parte Fellinger

Patent Trial and Appeal Board

Apr 25, 2013

11528272 (P.T.A.B. Apr. 25, 2013)

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.
11/528,272 09/27/2006 Thomas J. Fellinger 7556-2 6375
29602 7590 04/26/2013
JOHNS MANVILLE
10100 WEST UTE AVENUE
PO BOX 625005
LITTLETON, CO 80162-5005
EXAMINER
NGUYEN, DUNG V
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
04/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS J. FELLINGER
____________

Appeal 2011-000670
Application 11/528,272
Technology Center 3700
____________

Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1-20 and 22-32. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal 2011-000670
Application 11/528,272

2
CLAIMED SUBJECT MATTER
Claims 1, 27, and 29 are independent. Claim 1 is reproduced below:
1. A roller for a rotary scrubber comprising:
a cylindrical body having at least an outer surface
defining a plurality of longitudinal ribs, each rib defining at
least one edge;
wherein the cylindrical body is comprised of a
polyurethane material having a durometer hardness of between
about 60A and about 85D.

REJECTIONS
Claims 1, 12, 29, 30, and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tomita (US 4,566,911; iss. Jan. 28, 1986) and Kellie (US
6,091,918; iss. Jul. 18, 2000).
Claims 1, 7, 17, 29, 30, and 32 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Krongold (US 2,169,206; iss. Aug. 8, 1939) and Kellie.
Claims 2-4, 7-11, 13-16, 18-20, 22, 27, and 31 are rejected under 35
U.S.C. § 103(a) as unpatentable over Tomita or Krongold and Kellie.
Claims 5, 6, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tomita or Krongold and Kellie.
Claims 23-26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Tomita, Kellie, and Evensen (US 5,365,628; iss. Nov. 22, 1994).
ANALYSIS
Claims 1, 12, 29, 30, and 32 unpatentable over Tomita and Kellie
Appellant argues claims 1, 12, and 29 as a group. App. Br. 4-5. We
select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). The
Examiner found that Tomita discloses a roller with a cylindrical body and an
outer surface with longitudinal ribs but does not disclose a polyurethane
Appeal 2011-000670
Application 11/528,272

3
body having a durometer hardness of between about 60A and about 85A.
Ans. 3. The Examiner found that Kellie discloses a roller with a cylindrical
body 62 comprising a polyurethane material having a durometer hardness of
about 50 to 75 Shore A and determined that it would have been obvious to
substitute Kellie’s material for the material of Tomita to achieve predictable
results of removing material from the surface of an article where Tomita and
Kellie both teach a roller. Ans. 3-4.
Appellant argues that Kellie relates to an apparatus for removing
excess developer liquid from an imaging substrate in a liquid electrographic
imaging system and is not analogous art. App. Br. 5. This argument does
not apprise us of error in the Examiner’s finding that Kellie is in the field of
Appellant’s endeavor in that both define rollers for removing a material from
a surface (Ans. 6) or explain why Kellie is not at least reasonably pertinent
to the problem addressed by Appellant of removing excess insulation.
Appellant asserts that the Examiner has not established why a skilled
artisan would substitute the roller material of Tomita with a polyurethane
material having durometer hardness of about 50 to 70 Shore A because
Tomita relates to fine finishing using a porous elastic material while Kellie
relates to removing excess developer liquid from an imaging substrate of a
liquid electrographic imager. App. Br. 5. This argument does not persuade
us of error in the Examiner’s determination that it would have been obvious
to substitute a known polyurethane material of Kellie in Tomita to achieve
predictable results of removing material from a surface of an article on the
basis of suitability for the intended use of Tomita’s roller. Ans. 3-4, 6-7.
Tomita and Kellie disclose devices that remove material from surfaces and
Tomita uses a material with desired flexibility and strength. Col. 2, ll. 9-24.
Appeal 2011-000670
Application 11/528,272

4
Claims 30 and 32 depend from claims 1 and 29 respectively and recite
a durometer hardness of between about 75D and 85D. Appellant argues that
this range greatly exceeds the hardness values of Kellie of between 10 to 90
Shore A, because 90 Shore A hardness is equivalent to about 39 Shore D so
Kellie does not disclose ranges of about 75D and 85D. Id. We agree. The
Examiner has not provided any findings for these claims. See Ans. 3-4, 6-7.
We sustain the rejection of claims 1, 12, and 29, but do not sustain the
rejection of claims 30 and 32.
Claims 1, 7, 17, 29, 30, and 32 unpatentable over Krongold and Kellie
The Examiner found that Krongold discloses a roller and a cylindrical
body and longitudinal ribs and Kellie to disclose a polyurethane material
with a durometer hardness of about 50 to about 70 Shore A. The Examiner
determined that it would have been obvious to substitute Kellie’s material
for Krongold’s roller material to achieve the predictable result of removing
material from a surface of an article. Ans. 4.
Appellant argues that Kellie is not analogous art because Kellie relates
to a device for removing excess developer liquid from an imaging substrate.
App. Br. 7. As discussed supra, this argument does not apprise us of error
in the Examiner’s finding that Kellie is from the same field of endeavor or
explain why Kellie is not at least reasonably pertinent to the problem
addressed by Appellant of removing excess insulation.
Appellant also argues that there is no reasonable basis to modify the
cleaner of Krongold with a polyurethane material of Kellie because Kellie’s
apparatus removes excess developer fluid while Krongold relates to cleaning
a windshield. Id. Appellant contends that the proposed modification must
be based on impermissible hindsight. Id. These arguments do not apprise us
Appeal 2011-000670
Application 11/528,272

5
of error in the Examiner’s reasons for substituting one known element,
Kellie’s polyurethane material, for another known material, Krongold’s
material. See Ans. 4, 6-7. Both references disclose rollers that remove
fluids and materials from surfaces. This is not impermissible hindsight.
Claims 30 and 32 depend from claims 1 and 29 respectively and recite
a durometer hardness of between about 75D and 85D. Appellant argues that
the claimed range exceeds Kellie’s hardness of 10 to 90 Shore A because 90
Shore A is equivalent to about 39 Shore D. App. Br. 6. We agree. The
Examiner has not made any findings as to claims 30 and 32. Ans. 3-4, 6-7.
We sustain the rejection of claims 1, 7, 17, and 29, but do not sustain
the rejection of claims 30 and 32.
Claims 2-4, 7-11, 13-16, 18-20, 22, 27, and 31 unpatentable over Tomita or
Krongold and Kellie
Appellant again argues that Kellie is not analogous art and that there
is no reasonable basis to modify Tomita with Kellie’s polyurethane material.
App. Br. 9. These arguments are not persuasive for the reasons discussed
supra for the rejection of claim 1 as obvious over Tomita and Kellie.
Appellant also argues that Kellie does not disclose a hardness of about
75D to 85D as recited in claim 31 or a durometer hardness of about 75D as
recited in claim 22. App. Br. 10. We agree. The Examiner has not made
any findings as to claims 22 and 31. Ans. 4-5.
We sustain the rejection of claims 2-4, 7-11, 13-16, 18-20, and 27, but
do not sustain the rejection of claims 22 and 31.
Claims 5, 6, and 28 unpatentable over Tomita or Krongold and Kellie
Appellant traverses the rejection of claims 5, 6, and 28 based on their
dependence from claims 1 or 27. App. Br. 11. Because we sustain the
Appeal 2011-000670
Application 11/528,272

6
rejection of claims 1 and 27 as unpatentable over Tomita or Krongold and
Kellie, these arguments are not persuasive. We sustain the rejection of
claims 5, 6, and 28.
Claims 23-26 unpatentable over Tomita, Kellie, and Evenson
Claims 23-26 depend from claim 1. Appellant argues that Evensen
does not cure the deficiencies of Tomita and Kellie noted above. App. Br.
11. Because we sustain the rejection of claim 1 as unpatentable over Tomita
and Kellie, there are no deficiencies for Evensen to cure. We sustain the
rejection of claims 23-26.
DECISION
We AFFIRM the rejection of claims 1, 12, and 29 and REVERSE the
rejection of claims 30 and 32 as unpatentable over Tomita and Kellie.
We AFFIRM the rejection of claims 1, 7, 17, and 29 and REVERSE
the rejection of claims 30 and 32 as unpatentable over Krongold and Kellie.
We AFFIRM the rejection of claims 2-4, 7-11, 13-16, 18-20, and 27
and REVERSE the rejection of claims 22 and 31 as unpatentable over
Tomita or Krongold and Kellie.
We AFFIRM the rejection of claims 5, 6, and 28 as unpatentable over
Tomita or Krongold and Kellie.
We AFFIRM the rejection of claims 23-26 as unpatentable over
Tomita, Kellie, and Evenson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
Appeal 2011-000670
Application 11/528,272

7

mls