Ex Parte McDonnell

Board of Patent Appeals and Interferences

Mar 8, 2010

11077144 (B.P.A.I. Mar. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH A. MCDONNELL
____________

Appeal 2009-001295
Application 11/077,144
Technology Center 3700
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Decided: March 8, 2010
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Before WILLIAM F. PATE, III, JOHN C. KERINS, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

Joseph A. McDonnell (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claim 1 under 35 U.S.C. § 103(a)
as unpatentable over Dillon (US Pub. No. 2005/0273958 A1, published Dec.
15, 2005) and Keck (US Pub. No. 2003/0121116 A1, published Jul. 3,
2003); claims 1-4 and 7 under 35 U.S.C. § 103(a) as unpatentable over
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Application 11/077,144

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Flynn (US 4,945,599, issued Aug. 7, 1990), Clarke (US 6,258,455 B1,
issued Jul. 10, 2001) and Keck; and claims 1, 5, and 7 under 35 U.S.C. §
103(a) as unpatentable over Graham (US 7,150,063 B1, issued Dec. 19,
2006), Clarke and Keck. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We REVERSE.

STATEMENT OF THE CASE
The claimed invention is directed to a cleaning tool cover having a
water repellant layer that defines a backing of the entirety of a primary
microfiber surface.

ISSUE
The dispositive issue in this appeal is whether the proposed
modification of adding a water repellant layer defining a backing of the
entirety of a primary microfiber surface would change the principle of
operation of Dillon, Flynn, and Graham, respectively.

FINDINGS OF FACT (FF)
1. Dillon discloses that the combination of the sponge 12 and cover
14 is dipped into a container containing water and a cleaning agent.
The combination is then rubbed onto the surface to be washed.
Dillon, p. 2, para. [0022].
2. Flynn discloses that the combination of a covering fabric panel 27
and sponge 18 employ normal mopping procedures which include
dipping the combination into a cleaning liquid, wringing the liquid
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Application 11/077,144

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from the sponge 18 and cleansing a surface by a reciprocating
movement of the panel 27. Flynn, col. 4, ll. 51-60.
3. Graham discloses that the mitt 10 covers a typical car wash brush
11 and the mitt 10 is capable of allowing the passage of water from
the wash brush. Graham, col. 4, ll. 18-19.

PRINCIPLES OF LAW
In relying on a combination of prior art references, the examiner’s
proposed modification cannot render a prior art reference unsatisfactory for
its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

ANALYSIS
The devices of Dillon, Flynn, and Graham require liquid to pass
through a fabric cover in order for their respective devices to operate
properly. Facts 1-3. Dillon and Flynn require liquid to pass through a cover
into the interior volume (sponge), while Graham requires liquid to pass out
of the interior volume (brush) through the cover in order for the devices to
operate as disclosed. As such, to modify the fabric covers of Dillon, Flynn,
or Graham to have a water repellant layer as proposed by the Examiner
would change the principle of operation of the disclosed devices. The
inclusion of a water repellant layer on the fabric cover would, in Dillon and
Flynn, result in a structure in which liquid could not permeate through the
cover into the underlying sponges. In Graham, the liquid delivered through
the car wash brush could not pass through the fabric mitt, as required. A
modification that renders a prior art reference unsatisfactory for its intended
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Application 11/077,144

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purpose is not one which persons of ordinary skill in the art would find to be
obvious.

CONCLUSION
The proposed modification of adding a water repellant layer defining
a backing of the entirety of a primary microfiber surface would change the
principle of operation of Dillon, Flynn, and Graham, respectively, and as
such is not sufficient to render the claims on appeal obvious.

DECISION
In summary, all of the rejections made by the Examiner are reversed
because they all are based on proposed modifications that would render a
prior art reference unsatisfactory for its intended purpose. Accordingly, the
Examiner’s decision to reject claims 1-5 and 7 is reversed.

REVERSED

mls

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