Ex Parte Koenig

Board of Patent Appeals and Interferences

Sep 27, 2011

10692703 (B.P.A.I. Sep. 27, 2011)

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.
10/692,703 10/24/2003 Joseph M. Koenig JR. TRI4546P0161US 9791
32116 7590 09/27/2011
WOOD, PHILLIPS, KATZ, CLARK & MORTIMER
500 W. MADISON STREET
SUITE 3800
CHICAGO, IL 60661
EXAMINER
RACHUBA, MAURINA T
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
09/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH M. KOENIG, JR.
____________________

Appeal 2009-014254
Application 10/692,703
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JOHN C. KERINS, and
STEVEN D. A. MCCARTHY, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014254
Application 10/692,703
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-12. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a
NEW GROUND OF REJECTION pursuant to our authority under 35 U.S.C.
§ 41.50(b).
The claims are directed to a sanding block. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A sanding block comprising an abrasive grit bonded to a
flexible, compressible, polymeric foam core, the sanding block
conforming, when viewed macroscopically before the sanding
block becomes worn, substantially to a block having two
expansive sides and two adjacent sides, wherein a given one of
the expansive sides is abrasive, wherein the given one of the
expansive sides has two opposite edges, at each of which one of
the adjacent sides adjoins the given one of the expansive sides,
wherein a given one of the opposite edges, when viewed
macroscopically before the sanding block becomes worn, is a
sharp edge, and wherein the other one of the opposite edges,
when viewed macroscopically before the sanding block
becomes worn, is a curved edge.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kingman
Hays
Meyer
US 2,386,900
US 2,553,254
US 5,429,545
Oct. 16, 1945
May 15, 1951
Jul. 4, 1995

REJECTIONS
Claims 1, 2, 5, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kingman and Meyer. Ans. 3.
Appeal 2009-014254
Application 10/692,703
3
Claims 3, 4, 6-8, and 10-12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kingman, Meyer, and Hays. Ans. 4.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have reached the determination that the applied prior art does not establish
the prima facie obviousness of the claims on appeal. Therefore the
rejections on appeal are reversed. Additionally, we enter a NEW GROUND
OF REJECTION of all claims on appeal under 37 C.F.R. § 41.50(b). Our
reasons follow.
We agree with Appellant that the Examiner’s proposed combination
of Kingman and Meyer is not well founded. We agree with Appellant that
Kingman utilizes a core of rigid material so that Kingman may be used for a
scraping function. App. Br. 4. Therefore the replacement of the rigid core
of Kingman with a soft, foam-like body as disclosed in Meyer would not
have been obvious to one of ordinary skill. Since all the rejections on appeal
are bottomed on the combination of Kingman and Meyer, the Examiner’s
rejections on appeal are reversed.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection. Claims 1-12 are rejected under 35 U.S.C. § 103 as
unpatentable over the prior art sanding block disclosed on pages 1 and 2 of
Appellant’s Specification in view of Kingman and Hays.
Appeal 2009-014254
Application 10/692,703
4
The prior art sanding block disclosed in Appellant’s Specification is
described thusly:
As sold by Trim-Tex, Inc. of Lincolnwood, Illinois, and
admitted here to constitute prior art, a sanding block of the second
known type has abrasive grit bonded to a core, which is made of a
flexible, compressible, polymeric foam. The sanding block is a
six-sided block having two expansive sides, to each of which
abrasive grit is bonded, two adjacent sides, to each of which
abrasive grit is bonded, and two lateral sides, which do not have
abrasive grit and at which the core is exposed. Each adjacent side
meets each expansive side at two opposite edges. The sanding
block has comparatively coarser, abrasive grit bonded to a given
one of the expansive sides and to a given one of the adjacent sides
and comparatively finer, abrasive grit bonded to the other one of
the expansive sides and to the other one of the adjacent sides.
Spec. 1, l. 22 – Spec. 2, l. 7. This acknowledged prior art differs from the
claimed subject matter in that it does not specifically disclose a sharp edge
and an opposite curved edge.
Kingman, on the other hand discloses an abrasive block comprising
one sharp-edged profile and three curved-edged profiles of different radii.
As explained in Kingman, these profiles are designed to fit different surfaces
that are to be abraded. Kingman 2, col. 2, ll. 7-63. In our view, Kingman
clearly teaches that abrasive blocks for manual use can have sharp-edged or
curved corner surfaces of either straight or curved profile to ideally match
the surfaces designed to be manually abraded. Id. In our view, this is the
use of a known technique taught by Kingman to improve a similar device,
i.e., the prior art sanding block admitted in Appellant’s Specification. We
further note that Kingman teaches radiused edges of different sizes adapted
to conform to the geometry of various curved intersecting surfaces. This is
evidence of a recognition in the art that curved edges can be of different
radii. Accordingly, one of ordinary skill would find the Appellant’s
Appeal 2009-014254
Application 10/692,703
5
limitation of a ⅛th inch radius to be a matter of choice for one of ordinary
skill in this art.
Finally, Hays teaches that it is old in the art to provide a sanding block
with either an obtuse or an acute angle. See Figs. 1 and 2. Therefore Hays
renders a sanding block with an acute angled edge of from 55 to 70 degrees
prima facie obvious. Here again, this is a known technique or feature that
can be used to improve an existing device with predictable results.

DECISION
The rejections on appeal under 35 U.S.C. § 103 are reversed.
A new rejection of claims 1-12 under 35 U.S.C. § 103, pursuant to 37
C.F.R. § 41.50(b) has been entered by the Board.
This decision contains a new ground 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 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 proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
REVERSED; 37 C.F.R. § 41.50(b)
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