Ex Parte Goers

Patent Trial and Appeal Board

Mar 9, 2017

12946197 (P.T.A.B. Mar. 9, 2017)

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.
12/946,197 11/15/2010 Brian D. Goers 67129US002 9440
32692 7590 03/13/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
03/13/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN D. GOERS
Appeal 2015-005493
Application 12/946,197
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—20. Appeal Br. 13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and designate our affirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
Appeal 2015-005493
Application 12/946,197
CLAIMED SUBJECT MATTER
Claims 1, 17, 19, and 20 are independent. Claim 1 is reproduced
below.
1. An abrasive disc for use with a sanding tool, the sanding
tool having either five or eight dust collection holes, the
abrasive disc defining exactly six openings, the exactly six
openings arranged for substantial alignment with the five or
eight dust collection holes provided in the sanding tool.
REJECTIONS
Claims 1—9 are rejected under 35 U.S.C. § 102(b) as anticipated by
Long (US 5,989,112, iss. Nov. 23, 1999).
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Long.
ANALYSIS
Claims 1—9 as anticipated by Long
The Examiner found that Long discloses an abrasive disc for use with
a sander that has five or eight dust collection holes, taking the position that
the claimed exactly six openings can be any six of the eight holes of Long’s
pattern. Final Act. 2; Ans. 5. In other words, the Examiner interpreted
“exactly six holes” as not requiring “only 6 holes” and therefore that the
claim limitation is satisfied by any six holes disclosed by Long, even if Long
discloses two additional holes. Final Act. 2; Ans. 5.
We interpret the limitation of “the abrasive disc defining exactly six
openings” to mean that the claimed abrasive disc includes six openings, no
more and no less. This meaning is consistent with the plain meaning of the
words of this limitation. The Examiner’s interpretation reads the word
“exactly” out of claim 1.
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An ordinary meaning of “exactly” includes “in a manner or measure
or to a degree or number that strictly conforms to a fact or condition.”
Merriam-Webster, http://www.merriam-webster.com/ dictionary/exactly
(last visited Feb. 22, 2017). This meaning is consistent with Appellant’s
Specification, which discloses an embodiment in which “the hole pattern 12
contains precisely six openings (i.e. no more and no less).” Spec. 7:7—9.
Appellant discloses that other embodiments of abrasive disc 10 may include
additional openings, but these openings do not affect the dust collecting
capability of the sanding tool and may include small apertures, perforations,
or openings that are not configured for alignment with the dust collection
holes 4, 8 of a sanding tool. Id. at 7:9-13.
We determine that claim 1 is limited to the embodiment illustrated in
Figures 3—6 with exactly six openings, 16, 18, 20, 22, 24, 26. This meaning
is clear from the language of claim 1 that the abrasive disc defines “exactly
six openings” as discussed above. It also is clear from the language of other
claims that refer back to “the six openings.” Claim 2 recites “wherein the
six openings include two circular openings having different sizes.” Claim 9
recites “wherein a fifth one of the six openings is a first circular opening.”
The Examiner and Appellant agree that Long discloses an abrasive
disc with eight holes 1—8. Ans. 5—6; Final Act. 2; Appeal Br. 2—3; Reply Br.
2—3; see Long, 1:57—61, Fig. 1 (holes 1—8). The Examiner’s interpretation
of claim 1 as encompassing an abrasive disc with eight openings as in Long
is unreasonably broad and inconsistent with our interpretation of claim 1.
As a result, Long’s disc with eight holes does not define “exactly six
openings,” as claimed. Appeal Br. 6—7; Reply Br. 2—3. Thus, we do not
sustain the rejection of claim 1 as anticipated by Long.
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Application 12/946,197
Claims 1—20 as unpatentable over Long
Claims 1—9 and 11—16
Appellants argue claim 1 and its dependent claims 2—9 and 11—16 as a
group. See Appeal Br. 7—12. We select claim 1 as representative. Claims
2—9 and 11—16 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Long discloses an abrasive disk with a hole
pattern of eight holes and determined it would have been an obvious design
expedient to modify Long’s disc to have a different number of holes, such as
the six holes recited in claim 1, depending on the number of holes in a back
up pad, the size of the back up pad, and work being done. Final Act. 3^4.
We determine that Long’s teachings render obvious an abrasive disc
with exactly six openings, as recited in claim 1, as an obvious design choice
in view of Long’s teachings, as explicated in Appellant’s briefs, for making
universal discs for five- and eight-hole patterns. Appeal Br. 8; Reply Br. 6.
We start our analysis of such designs with the Admitted Prior Art in
Figures 1 and 2 of Appellants’ disclosure, which are reproduced below.
Figure 1 shows sanding tool mounting surface 2 with a five-hole 5
dust collector pattern. Spec. 1:23—27. Figure 2 illustrates sanding tool
mounting surface 6 with an eight-hole 8 collector pattern. Id. at 1:27—29.
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FIG. 1 FIG. 2
PRIOR ART PRIOR ART
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Application 12/946,197
Long discloses that an abrasive disc for use with such five- and eight-
hole dust collection system sanding tools can be designed by aligning a hole
that is common to both discs. Long, 3:39-41. We find that each abrasive
disc includes a pattern of holes that corresponds to dust collection holes 4, 8,
shown in Figures 1 and 2. See Spec. 1:16—22. Claim 1 does not recite any
dimensions or locations for the dust collection holes of the sanders.
Each abrasive disc has holes corresponding to dust collector holes 4, 8
in Figures 1 and 2, and each disc includes a common hole at the 12 o’clock
position (12:00 below). Long teaches to align the common holes and then
trace the five holes 4 of the Figure 1 pattern onto the disc with eight holes 8.
Long, 3:42-44. We annotated Figure 2 of Long to show how five holes 4 of
an abrasive disc for a five-hole dust collector (Figure 1) align with the eight
holes 8 of a disc for an eight-hole sander (Figure 2) according to Long’s
teachings, and we reproduce it below.
PRIOR ART PRIOR ART
Figure 2 is annotated with shaded circles to show how the five holes 4
of Figure 1 align with the eight holes 8 of Figure 2, as Long teaches. These
five shaded circles annotated on Figure 2 correspond to the pattern in Figure
1 of Appellant’s disclosure for a prior art five-hole dust collector.
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Long teaches that the eight holes 8 may be enlarged or elongated to
embrace nearby holes 4 of the five-hole pattern. Id. Thus, a skilled artisan
presented with these patterns would expand those of the eight holes 8 that
are nearest to the five holes 4. Hole 8 at the twelve o’clock (12:00) position
would expand to include the blue hole 4 that is virtually coterminous with it.
Holes 8 at the five o’clock (5:00) and seven o’clock (7:00) positions
can be enlarged in diameter or elongated to capture the nearby shaded hole
4. Id. at 2:7—13. For holes 8 at the one o’clock (1:00), three o’clock (3:00),
nine o’clock (9:00), and eleven o’clock (11:00) positions, a skilled artisan
has finite options. Holes 8 at the one o’clock and eleven o’clock positions
can be enlarged in diameter or elongated downwardly to encompass nearby
holes 4 (shaded in blue). Alternatively, holes 8 at the three and nine o’clock
positions can be enlarged in diameter or elongated upwardly to encompass
nearby holes 4 (shaded in blue). Or, the one o’clock and three o’clock holes
8 can be elongated toward one another to encompass the shaded hole 4 that
lies equidistant between them. A similar elongation of holes 8 at the nine
o’clock and eleven o’clock positions encompasses a shaded hole 4 lying
equidistant between them. This elongation produces a disc with six holes.
Even if such elongation in the third alternative removes slightly more
of the abrasive disc, any possible disadvantage would be outweighed by the
more simplified manufacturing of a disc with fewer holes and greater ease in
mounting and aligning the longer elongated holes onto five- and eight-hole
dust collectors. See id. at 2:16—24. Moreover, such elongation does not
appear to remove any more sanding disc than the enlarged circular holes 3, 7
that are illustrated in Figure 1 of Long, in any case. See Ans. 3, 8—9. Thus,
we do not view the rejection as contrary to the teachings of Long.
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We are not persuaded by Appellant’s argument that Long requires a
disc with eight holes. See Appeal Br. 8. As discussed above Long teaches
that simplified manufacturing and ease of alignment are considerations in a
universal sanding disc design. Long, 2:22—29. Long teaches that holes of
one sanding disc are enlarged to encompass holes of the other disc pattern.
Appellant does not direct us to any teaching in Long that would dissuade a
skilled artisan from combining holes of the eight hole pattern as part of the
process of enlarging those holes to encompassing the holes of the five-hole
pattern where appropriate based on the respective patterns and hole spacing,
weighing any advantages or disadvantages of doing so. Id. at 2:7—47.
To the extent that the omission of openings provides an indicia of
non-obviousness, as Appellant argues (Appeal Br. 9; Reply Br. 7), Long
teaches this feature by teaching the advantages of universal sanding discs
with less holes (i.e., eight holes) than the total of holes of individual discs
(i.e., thirteen). The Examiner proposes to optimize this teaching further by
combining some holes of the eight hole disc, where appropriate. Ans. 8.
Such a six hole disc would work with five or eight hole dust collectors.
Thus, we sustain the rejection of claims 1—9 and 11—16.
Claims 10 and 17
As modified according to the third alternative discussed above, the
sanding disc would include two pairs of elongated openings of different size
with first and second circular openings located at the twelve and six o’clock
positions and when bisected by an axis produce a symmetrical pattern of six
openings as recited in claims 10 and 17. Thus, Long’s teachings render
obvious a six opening, symmetrical design as recited in claim 10.
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Appellant’s attorney argument that a six opening pattern that aligns
with five and eight hole sanding tools produces unexpected results (Appeal
Br. 9; Reply Br. 7—8) is not persuasive. In re Geisler, 116 F.3d 1465, 1470,
1471 (Fed. Cir. 1997) (lawyers’ arguments unsupported by factual evidence
do not establish unexpected results). Moreover, Long teaches universal
discs with symmetrical hole patterns of circular and elongated openings of
different sizes. Long, Figs. 1, 2. Long also teaches to enlarge holes of one
disk pattern to encompass holes of another disk pattern and to combine holes
of the patterns that are near to one another through such enlargement. Id. at
1:57—2:50, 3:32—53. As discussed above, combining prior art patterns leads
to expected results where some holes of the five-hole pattern lie equidistant
between two holes of the eight-hole pattern because extending holes of the
eight-hole pattern connects all three holes, reducing the total holes to six.
Thus, we sustain the rejection of claims 10 and 17. We also sustain
the rejection of claim 18, which depends from claim 17 and is not argued
separately by Appellant. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 19
The Examiner’s finding that Long teaches two circular openings as
holes 1, 4 that are arranged 180 degrees from one another, as recited in claim
19, is not supported by a preponderance of evidence. Final Act. 6; Ans. 8.
In Figures 1 and 2 of Long, holes 1 and 5 are shown as being 180 degrees
apart, but in Figure 1, there are no elongated holes as required by claim 19,
and in Figure 2, hole 5 is not circular as required by claim 19. Nor has the
Examiner explained sufficiently how Long teaches the first and second pairs
of elongated openings with intersecting major axes as claimed. See Appeal
Br. 10; Reply Br. 10—11. Thus, we do not sustain the rejection of claim 19.
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Claim 20
For the reasons discussed above for claim 1, we determine that Long’s
teachings render obvious an abrasive disc having less than eight openings,
two of which are circular, sized differently, and arranged 180 degrees from
one another, as recited in claim 20. As discussed above for claim 1, Long’s
teachings render obvious an abrasive disc with six openings, four of which
would be elongated to encompass the adjacent holes 4 of a five-hole pattern.
The other two holes would be circular. The circular hole at the twelve
o’clock position would be enlarged to encompass the nearby hole 4. The
hole at the six o’clock position would not be enlarged because no hole is
adjacent to it, as indicated by the absence of a shaded circle in the annotated
version of Figure 2 of Appellant’s Prior Art, which is reproduced above.
Appellant’s arguments regarding the alleged indicia of non­
obviousness and unexpected results are not persuasive for the reasons
discussed above. Thus, we sustain the rejection of claim 20.
Because our analysis and affirmance of the rejections of claims 1—18
and 20 extend beyond that employed by the Examiner, the affirmance of
those rejections is designated as a new ground of rejection under 37 C.F.R.
§ 41.50(b), in order to provide Appellants with a fair opportunity to respond
to the additional findings and rationales set forth therein.
DECISION
We reverse the rejection of claims 1—9 as anticipated by Long.
We affirm the rejection of claims 1—18 and 20 as unpatentable over
Long and designate our affirmance as a new ground of rejection under 35
C.F.R. § 41.50(b).
We reverse the rejection of claim 19 as unpatentable over Long.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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