Ex Parte Hann

Board of Patent Appeals and Interferences

Sep 23, 2009

10981126 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KERRY HANN
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Appeal 2009-003449
Application 10/981,126
Technology Center 3700
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Decided: September 23, 2009
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

WILLIAM F. PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003449
Application 10/981,126

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STATEMENT OF CASE
This is an appeal from the Final Rejection of claims 1-12. Claims 13-
18 are cancelled. These are the only claims in the application. We have
jurisdiction over the appeal under 35 U.S.C. §§ 134 and 6.
The claimed subject matter is directed to a multi-surface roller suited
to painting uneven surfaces such as clapboard shingled structures. Spec. 2, ¶
[0006].
Claims 1 and 7, reproduced below, are further illustrative of the
claimed subject matter.
1. A paint roller having a first end and a second end,
comprising:
a first generally cylindrical surface to apply paint, the
first surface having a first circumference at a first point;
a second generally cylindrical surface to apply paint, the
second surface having a second circumference at a second point
located at the first end, wherein the first circumference is
greater than the second circumference and the first generally
cylindrical surface area is larger than the second generally
cylindrical surface area; and a third surface that transitions the
first surface to the second surface, the third surface to apply
paint.

7. A paint roller having a first end and a second end,
comprises:
a first surface to paint a sloped region of a first clapboard
shingle;
a second surface to paint a portion of a second clapboard
shingle adjacent to the first clapboard shingle, the second
surface having a portion at the first end and the second surface
area being smaller than the first surface area; and
a third surface between the first and second surfaces to
paint an under surface of the second clapboard shingle.
Appeal 2009-003449
Application 10/981,126

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REFERENCES
The references of record, relied upon by the Examiner as evidence of
anticipation and obviousness are:
Fiedler, Jr. US 2, 293,438 Sep. 14, 1943
Weihrauch US 5,779,610 Jul. 14, 1998
Forkner US 5,410,773 May 2, 1995
Mead et al. US 7,090,421 B1 Aug. 15, 2006

Claims 1, 3-7, and 9-10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Fiedler, Jr.
Claims 1-3 and 5-10 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Weihrauch.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weihrauch in view of Forkner.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weihrauch in view of Mead.
ANALYSIS
It is our finding that Fiedler, Jr. discloses a roller device for installing
glazing compound or putty on a window. The Examiner refers us to the
Figure 6 embodiment of Fiedler, Jr.. The Figure 6 embodiment shows a
generally frustoconical surface (88), a central cylindrical-shaped structure
(86), and a barrel-shaped structure (90) of generally bulbous shape to give a
slightly different curvature to the face putty (92). See page 2, column 1,
lines 33-47. We are in agreement with the Appellant that Fiedler, Jr. does
not anticipate independent claim 1 or independent claim 7. First of all,
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Application 10/981,126

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glazing surface (88) is not generally cylindrical. Instead, it has a
frustoconical shape. Nor is bulbous barrel-shaped roller (90) of cylindrical
shape. Furthermore, Fiedler, Jr. is manufactured of hard material such as
wood, plastic, rubber, or metal and is not disclosed as designed to carry or
distribute paint. See p. 2, col. 2, l. 75-p. 3, col. 1, l. 1. The ability of the
roller to transfer paint is thus merely incidental to the real purpose disclosed
in Fiedler, Jr. For these reasons the Appellant has established that the
Examiner erred in finding Fiedler, Jr. anticipates claims 1, and 3-6.
With regard to claims 7, 9, and 10 it is unclear how the roller of
Fiedler, Jr. has the correct geometry to paint both the face of a clapboard
shingle and the underside or edge thereof. Furthermore, as discussed above,
Fiedler, Jr. is not really suitable for applying paint. Therefore, the Appellant
has established that the Examiner erred in finding that Fiedler, Jr. anticipates
claims 7, 9, and 10.
Turning to the rejection of claims 1-3 and 5-10 as anticipated by
Weihrauch, Appellant has established that the Examiner erred in rejecting
these claims under § 102. Weihrauch is directed to a roller paint application
device configured so that random patterns can be formed with a single roller.
The first embodiment of Weihrauch disclose a typical paint roller with
an outside plush covering (12) wherein a sleeve (21) of rigid plastic is placed
thereover so that the fleece of roller (12) extends through radial openings
(22) provided in the sleeve. This embodiment is described in column 3,
lines 39-61.
The second embodiment of Weihrauch is the one relied upon by the
Examiner. It features a smooth, relatively hard roller made of rubber or
plastic (11) upon which sleeve parts (21a, 21b, and 21c) can be situated.
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Application 10/981,126

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The sleeve parts are covered with a plush covering (23) for carrying and
applying paint. While the sleeve parts are generally cylindrical, the roller,
which is relied upon as the claimed second, smaller diameter cylinder, is not
for the purpose of painting, as the Examiner readily admits. The Examiner
relies upon an accidental use of this surface for painting. Furthermore, it is
unknown if the transition structure formed by the side of rollers (21a, 21b,
and 21c) are actually capable of carrying and applying paint. Thus, to a
preponderance of the evidence, claims 1 and 7 can not be said to lack
novelty over the Weihrauch reference. In applying the additional teachings
of Forkner and Mead, the Examiner does not articulate any reason to modify
Weihrauch’s carrying body 11 so as to carry paint. Thus, the rejections of
claim 11 and 12 under § 103 as unpatentable over Weihrauch in view of
Forkner and Weihrauch in view of Mead, respectively, are also reversed.
REJECTION UNDER 37 C.F.R. § 41.50(b)
Claims 1, 2, and 4 are rejected under 35 U.S.C. § 102 as anticipated
by Forkner. Forkner discloses a paint roller to accommodate elongated
articles for ease of painting these articles. See Forkner col. 1, ll. 6-9.
Among the elongated structures contemplated as paintable by the Forkner
apparatus are all manner of pipes, parallelepiped picket fence members,
wrought iron rods, and the like. See col. 1, ll. 37-39. Various recesses are
provided in the middle of the roller with shapes such as arcuate, square, and
rectangular in accordance with the selected workpiece shape. See col. 1, ll.
42-45. With reference to Figure 5, in the right-most figure thereof, the
rectangular recess disclosed therein permits the simultaneous coating of both
the front and sides of a picket fence member. See col. 3, ll. 65-67.
Therefore, this embodiment of Forkner discloses a large diameter, generally
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cylindrical surface at either end, a second generally cylindrical surface in the
center, and a transition surface therebetween, with the transition surface
specifically configured to paint the side of the picket. Therefore, Forkner
clearly anticipates the subject matter of claims 1, 2 and 4.
Claims 5-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forkner. As noted above, Forkner clearly discloses that
various recesses may be provided in the middle of the roller in accordance
with the selected workpiece shape and size. In our view, it is within the skill
of the art to select and provide the recess and the transition surface of
Forkner so that clapboards, including the underside thereof, can be painted,
if in fact, Forkner does not already disclose a structure that could paint both
the surface and the edge of the clapboard in the embodiment of Figure 5. We
further note that the cover material (20) and resilient body (21) provide a
degree of resiliency to accommodate various geometric imperfections in the
workpiece. See col. 3, ll. 32-45. This would allow compression of portions
of Forkner’s roller during painting of clapboards.
Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over
Forkner in view of Mead. Forkner has been discussed above. Mead
discloses a pressurized paint system for use with a roller. In our view it
would have been obvious to a person of ordinary skill in the art to apply the
teaching of Mead to the roller disclosed in Forkner as the combination of
two prior art devices ready for improvement with predictable results.
CONCLUSION
The rejection of claims 1, 3-7, and 9-10 as anticipated by Fielder, Jr.
is reversed.
Appeal 2009-003449
Application 10/981,126

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The rejection of claims 1-3, 5-10 are rejected under 35 U.S.C. 102(b)
as being anticipated by Weihrauch is reversed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Weihrauch in view of Forkner is reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Weihrauch in view of Mead is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b) new rejections
have been entered as follows:
Claim 1, 2, and 4 are rejected under 35 U.S.C. § 102 as being
anticipated by Forkner.
Claims 5-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forkner.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Forkner in view of Mead.
NEW REJECTIONS UNDER 37 C.F.R. § 41.50(b)

This decision contains new grounds 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 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
Appeal 2009-003449
Application 10/981,126

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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 37 C.F.R. § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. § 41.50(b)

mev

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