Ex Parte Job

Board of Patent Appeals and Interferences

Aug 27, 2002

08603331 (B.P.A.I. Aug. 27, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 47

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD D. JOB
_____________
Appeal No. 2001-2509
Application 08/603,331
______________
ON BRIEF
_______________
Before KIMLIN, LIEBERMAN and DELMENDO, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 24-28,
30-32, 37-39 and 45. Claims 43 and 44 have been allowed by the
examiner. Claims 33-36 and 40-42, the other claims remaining in
the present application, have been withdrawn from consideration.
Claim 24 is illustrative:
24. A monolithic device, being the same material
throughout, said device comprising a body having a top
and a bottom, two sides, a front and a back, wherein
said bottom opposes said top, said body having a handle
Appeal No. 2001-2509
Application No. 08/603,331
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at said top and a flexible straight edge at said
bottom, said handle being directly above said flexible
straight edge, wherein, at all points at a given height
above said bottom, the shortest distance between said
front and said back is less than the shortest distance
between said two sides.
In the rejection of the appealed claims, the examiner relies
upon the following references:
Tupper 2,900,656 Aug. 25, 1959
Loos 4,297,761 Nov. 03, 1981
Priore 4,970,749 Nov. 20, 1990
Ballantyne 30,518 Dec. 03, 1930
(Austrialian Patent)
Appellant’s claimed invention is directed to a monolithic
device comprising a handle and a flexible straight edge blade for
moving flowable materials. According to the present
specification, scrapers or squeegees of the prior art present
problems by having separate blade and handle sections. Appellant
states that “[o]ften the blade, especially when wet and slippery,
slips in the slot” (page 1 of the specification, last paragraph).
The presently claimed device, on the other hand, “is a
monolithic scraper or squeegee having tapered or thinned edge so
as to be flexible to conform to surface irregularities . . .”
(page 2 of the specification, third paragraph).
Appeal No. 2001-2509
Application No. 08/603,331
3
Appealed claims 24-28, 32, 38, 39 and 45 stand rejected
under 35 U.S.C. § 102 as being anticipated by Ballantyne. Claims
30 and 31 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ballantyne. Claim 37 stands rejected under
35 U.S.C. § 103 as being unpatentable over Ballantyne in view of
Tupper. In addition, claims 24, 25, 31 and 45 stand rejected
under 35 U.S.C. § 102 as being anticipated by Loos. Also, claims
24, 25, 27, 28, 31, 32, 38 and 45 stand rejected under 35 U.S.C.
§ 102 as being anticipated by Priore.
Appellant submits at page 6 of the principal brief that
claims 24, 26-28, 31, 32 and 39 stand or fall together, as do
claims 25 and 38. Also, appellant states that claims 30, 37 and
45 are to be considered independently.
We have thoroughly reviewed each of appellant’s arguments
for patentability. However we are in substantial agreement with
the examiner’s application of the prior art and disposition of
the arguments raised by appellant. Accordingly, inasmuch as we
find that the examiner’s rejections are free of reversible error,
they will be sustained.
We consider first the examiner’s rejection of claims 24-28,
32, 38, 39 and 45 under § 102 over Ballantyne. The principal
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Application No. 08/603,331
4
argument advanced by appellant is that Ballantyne does not
disclose the claimed monolithic device since the device of
Ballantyne has a reinforcing wire in its interior. Appellant
accurately points out that Ballantyne indicates that the rubber
and reinforcement wire are molded together. In particular,
Ballantyne discloses that “[t]he implement consists of solid
rubber moulded about a reinforcement of suitable material”
(column 1, lines 14-16).
We agree with the examiner that the presence of
reinforcement wire in the device of Ballantyne does not
disqualify it as monolithic as the term “monolithic” is used in
appellant’s specification and defined in appellant’s Exhibit A.
First, appellant uses the term monolithic to describe a device
whose handle and blade are formed out of one, not separate
materials, but nowhere does appellant’s specification state or
suggest that the material of the device should be uniform
throughout its interior. Secondly, the second definition given
for “monolithic” in the dictionary of appellant’s Exhibit A and
the most pertinent here is “cast as a single piece”. Manifestly,
the device of Ballantyne is cast as a single piece, i.e., the
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5
device which exits the mold is a single, unitary rubber device.
Appellant has not produced any factual support for the argument
that because the device of Ballantyne is made of two materials,
wire and rubber, it is not monolithic (page 6 of principal brief,
last paragraph).
As for the examiner’s rejection of claim 30 under § 103 over
Ballantyne, we are in complete agreement with the examiner that
one of ordinary skill in the art would have found it obvious to
determine the particular durometer value which optimizes the
particular application of the device. It is well settled that
the determination of a result effective variable is a matter of
obviousness for one of ordinary skill in the art. In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Regarding
claim 31, the examiner has properly not addressed the features of
this claim since appellant, as noted above, does not group claim
31 separately in the brief. In any event, we find that it would
have been prima facie obvious for one of ordinary skill in the
art to employ a conventional thermoplastic material as the blade
in a squeegee or scraper-like device.
We also concur with the examiner that it would have been
obvious for one of ordinary skill in the art to utilize the anti-
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Application No. 08/603,331
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static material of Tupper in the rubber device of Ballantyne to
render the device anti-static as required by claim 37.
We further concur with the examiner that Ballantyne
describes the orientation of the thickened section above the
straight edge recited in claim 25, at least to the unspecified
extent disclosed in the present specification. Also, as pointed
out by the examiner, the Exhibit A referred to by appellant
provides a dictionary meaning for the term “monolithic” but does
not demonstrate that “the thickened section is not parallel to
the flexible straight edge”, as argued at page 9 of the principal
brief. Apparently, appellant did not submit the Exhibit
mentioned in the brief.
Regarding separately argued claim 45, due to the relative
nature of the claim language “so that the device may be held
easily”, we agree with the examiner that the device of Ballantyne
meets the claim limitation. While appellant is correct in
stating that the function of a claim feature must be considered
in determining its patentability, there is no definition in the
present specification of the limitation “easily” such that the
claimed device is distinguishable over the device of Ballantyne.
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Application No. 08/603,331
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Concerning the examiner’s § 102 rejection over Loos,
appellant has not refuted the examiner’s factual finding and
analysis based upon interpreting the thickness of blade 18 to
define its front and back.
Turning to the examiner’s rejection under § 102 over Priore,
we are in complete agreement with the examiner that the “semi-
rigid” quality of Priore’s blade meets the claim requirement of
being “flexible”. Quite simply, we perceive no meaningful
distinction between materials which are semi-rigid and flexible.
As a final point, we note that appellant bases no argument
upon objective evidence of nonobviousness, such as unexpected
results, which would serve to rebut the rejections based on
§ 103.
In the event of further prosecution of the subject matter at
bar, such as by way of a continuing application, we strongly
recommend that the examiner consider a rejection under § 103, as
well as § 102, over Ballantyne under the rationale that it would
have been obvious for one of ordinary skill in the art to
eliminate the reinforcing wire of Ballantyne along with its
attendant function. In re Thompson, 545 F.2d 1290, 1294, 192
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Application No. 08/603,331
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USPQ 275, 277 (CCPA 1976); In re Kuhle, 526 F.2d 553, 556, 188
USPQ 7, 9 (CCPA 1975); In re Marzocchi, 456 F.2d 790, 793, 173
USPQ 228, 229-30 (CCPA 1972); In re Larson, 340 F.2d 965, 969,
144 USPQ 347, 350 (CCPA 1965).
In conclusion, based on the foregoing, and the reasons
well-stated by the examiner, the examiner's decision rejecting
the appealed claims is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROMULO DELMENDO )
Administrative Patent Judge )
vsh
Appeal No. 2001-2509
Application No. 08/603,331
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DONALD D. JOB
393 BEACON STREET
LOWELL MA, 01850