Ex Parte Hobbs

Patent Trial and Appeal Board

Sep 28, 2016

13337572 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/337,572 12/27/2011
32692 7590 09/30/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Terry R. Hobbs
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.
68002US002 6064
EXAMINER
DAGENAIS, KRISTEN A
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY R. HOBBS 1
Appeal2015-000593
Application 13/337,572
Technology Center 1700
Before CHUNG K. PAK, ROMULO H. DELMENDO, and MONTE T. SQUIRE,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1-19, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The real parties in interest are said to be 3M Company and its affiliate 3M
Innovative Properties Company. Appeal Brief filed June 26, 2014 ("App. Br.") at
3.
2 Final Action entered April 24, 2014 ("Final Act.") at 2-11 and the Examiner's
Answer entered September 10, 2014 ("Ans.") at 2-7.
Appeal2015-000593
Application 13/337,572
STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of coating an aqueous
film composition comprising polyurethane and fugitive plasticizer on "substrates[,]
such as flooring, to improve the appearance and durability of the substrate." Spec.
1, 11. 7-22. Details of the appealed subject matter are recited in representative
claim 1, 3 which is reproduced below from the Claims Appendix of the Appeal
Brief (with disputed limitations in italicized form):
1. A method of forming a coating, comprising:
coating an aqueous film-forming composition comprising 15 to 100
dry weight percent polyurethane and comprising 1 to 12 wet weight
percent fugitive plasticizer, onto a surface of substrate to form a first
coating thereupon; and, allowing the coating to dry; then,
burnishing the first coating within sixty minutes of forming the first
coating.
App. Br. 10, Claims Appendix.
The Examiner maintains the following grounds of rejection4 :
1. Claims 1-3, 5, 7, 8, 12-17, and 19 under 35 U.S.C. §103(a) as
unpatentable over US 6,727,309 Bl issued to Paiva et al. on April 27, 2004
3 For purposes of this appeal, we limit our discussion to claim 1, the broadest claim
on appeal.
4 Although the Examiner's statements of rejections set forth in the Final Action and
the Answer included errors in terms of the claims being rejected and failed to refer
to Citrone in the first ground of rejection maintained in the Final Action, it appears
that the Examiner's intention is to repeat the same grounds of rejection set forth in
the Non-Final Action entered November 22, 2013 ("Non-Final Act."). Compare
the contents of the rejections set forth in the Final Action and the Answer with the
contents of the Non-Final Action. Appellants also appear to recognize such
intention in the Appeal Brief. App. Br. 5.
2
Appeal2015-000593
Application 13/337,572
("Paiva") in view of US 4,151,138 issued to Citrone et al. on April 24, 1979
("Citrone");
2. Claims 4 and 6 under 35 U.S.C. § 103(a) as unpatentable over Paiva in
view of Citrone and US 5,977,228 issued to Mauer on November 2, 1999
("Mauer");
3. Claims 9-11under35 U.S.C. §103(a) as unpatentable over Paiva in
view of Citrone and WO 03/054093 A2 published in the name of Williams on July
3, 2003 ("Williams"); and
4. Claim 18 under 35 U.S.C. §103(a) as unpatentable over Paiva in view
of Citrone and US 2009/0221212 Al published in the name of Palushaj on
September 3, 2009 ("Palushaj"). Non-Final Act. 6-14; Final Act. 2-10; Ans. 2-7.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine that a
preponderance of the evidence does not support the Examiner's determination that
the applied prior art would have rendered the subject matter recited in claims 1-19
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a). Accordingly, we are constrained to reverse the Examiner's§ 103(a)
rejections of the above claims for the reasons set forth below.
We begin our analysis by interpreting the disputed terms in claim 1. Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987) (In making a
patentability determination, analysis must begin with the question, "what is the
invention claimed?" because "[ c ]laim interpretation, ... will normally control the
remainder of the decisional process."). Generally, "the PTO must give claims their
broadest reasonable construction consistent with the [S]pecification" during
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Appeal2015-000593
Application 13/337,572
prosecution of a patent application. Jn re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). Construing the disputed terms in claims consistent
with the Specification does not mean that limitations or embodiments from the
Specification are to be read into the claims. See In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993); see also Loctite Corp. v. Ultraseal Ltd., 781F.2d861, 867
(Fed. Cir. 1985) ("Generally, particular limitations or embodiments appearing in
the specification will not be read into the claims.")
However, there are exceptions to the above general rules. When the
Specification, for example, provides definitions or disclaimers for the disputed
terms, such definitional or restricted meanings in the Specification are given to the
disputed terms in the claims. In re ICON Health & Fitness, Inc., 496 F.3d at 1379
("Therefore, we look to the specification to see if it provides a definition for claim
terms, but otherwise apply a broad interpretation."); Philips v. AWH Corp., 415
F.3d 1303, 1321 (Fed. Cir. 2005) (en bane) ("[T]he [S]pecification 'acts as a
dictionary when it expressly defines terms used in the claims or when it defines
terms by implication."'); In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)
("[A ]bsent claim language carrying a narrow meaning, the PTO should only limit
the claim based on the specification ... when those sources expressly disclaim the
broader definition."); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) ("When
the applicant states the meaning that the claim terms are intended to have, the
claims are examined with that meaning, in order to achieve a complete exploration
of the applicant's invention and its relation to the prior art.")
As correctly explained by Appellant, the Specification here provides the
definitions for the disputed terms in claim 1. App. Br. 6 and 8. Thus,
notwithstanding the Examiner's positions to the contrary, the disputed terms
"burnished" and "dry" in claim 1 are given the meanings provided in the
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Appeal2015-000593
Application 13/337,572
Specification. The definitions for the disputed terms are provided at page 2, lines
17-20 and page 3, lines 25-26 of the Specification as follows:
By burnishing a coated aqueous film-forming composition is
meant contacting a major outwardmost surface of the coated
composition with a fibrous pad that is moving a high speed (at least
1000 revolutions per minute in a rotating format, or an equivalent
speed if in a reciprocating format), driven by a motorized apparatus .
. . . By "dry" is meant dry to the touch, without being sticky or
tacky, which concept will be well understood by those of ordinary
skill.
With the above claim interpretation in mind, we evaluate the propriety of the
Examiner's §103(a) rejections. The dispositive question raised by the Examiner
and Appellant in the above§ 103(a) rejections is: Does the Examiner demonstrate
that burnishing Paiva's coating in the manner taught by Citrone would result in
burnishing the dry coating within sixty minutes of applying the coating on a
surface of a substrate, as recited in claim 1? On this record, we are constrained to
answer this question in the negative.
Here, there is no dispute that Paiva teaches a method of coating an aqueous
film-forming surface finish composition comprising polyurethane and fugitive
plasticizer on a surface of a substrate to form a first coating, as recited in claim 1.
Compare Final Act. 3 and Ans. 2 with App. Br. 5-8. Nor is there any dispute that
Paiva "is silent on [the claimed step of] burnishing the first coating [after allowing
it to dry] within sixty minutes of forming the first coating." Compare Final Act. 3
and Ans. 2 with App. Br. 5-8. To remedy this deficiency in Paiva, the Examiner
relies upon the disclosure of Citrone to show the obviousness of burnishing Paiva's
coating in the manner recited in claim 1. Final Act. 3--4 and Ans. 2-3. However,
as explained by Appellants:
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Appeal2015-000593
Application 13/337,572
Citrone states that his process involves spraying a wet coating
onto a floor and then burnishing the coating "before the coating has
dried". Elsewhere, Citrone elsewhere states that in his process a
sprayed coating is "immediately" burnished. Still elsewhere, Citrone
states that in his process "a wet, sprayed-on coating .... was burnished".
[(App. Br. 6 citing Cintrone, col. 4, 11. 56-58, col. 8, 11. 3-4, and col.
10, 11. 65-66 (footnote omitted).)
Although the Examiner subsequently refers to Paiva's disclosure of buffing (Final
Act. 11 citing col., 5, 11. 45--46) and Citrone's disclosure of using "buffing" and
"burnishing" in the same manner (Ans. 9 citing Citrone col. 4, 11. 57-58), the
Examiner's reference to Citrone still would have suggested burnishing Paiva's
coating while Paiva's coating is still wet (Final Act. 3--4 and Ans. 2-3). The
Examiner does not refer to any evidence that Paiva's coating can be burnished
while it is still dried. See Final. Act. generally. Thus, on this record, we concur
with Appellants that the Examiner does not identify any teachings in Citrone
and/or Paiva that would have suggested burnishing the "dry" coating within sixty
minutes after the coating is applied, as required by claim 1.
Accordingly, we are constrained to reverse the Examiner's decision rejecting
claims 1-19 under 35 U.S.C. § 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-19
is REVERSED.
REVERSED
6