Ex Parte Merten et al

Board of Patent Appeals and Interferences

Apr 28, 2011

11281259 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/281,259 11/17/2005 David J. Merten NEW10-GN007 7532
11773 7590 04/29/2011
Taft Stettinius & Hollister LLP
425 Walnut Street
Suite 1800
Cincinnati, OH 45202-3957
EXAMINER
SPISICH, MARK
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/29/2011 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 DAVID J. MERTEN and JAY Z. MUCHIN
________________

Appeal 2009-009270
Application 11/281,259
Technology Center 3700
________________

Before SALLY C. MEDLEY, MICHAEL P. TIERNEY and STEFAN
STAICOVICI, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 2009-009270
Application No. 11/281,259

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, David J.
Merten and Jay Z. Muchin [hereinafter “Appellants”] and the Shur-Line
Company, a Newell Rubbermaid Company and a division of Irwin Industrial
Tools [hereinafter “Rubbermaid”], under 35 U.S.C. § 134(a), from a final
rejection of claims 2 and 5-14, the only claims on appeal. We have
jurisdiction under 35 U.S.C. § 6(b).
Based on the specific facts of this case, we vacate the appeal and
forward the application to the Interference Section of the Board of Patent
Appeals and Interference (“BPAI”) for its consideration.

References Relied on by the Examiner
Gueret U.S. 5,357,647 Oct. 25, 1994
Polzin et al. U.S. 5,339,484 Aug. 23, 1994
Janssen U.S. 4,191,792 Mar. 4, 1980
Franchina et al. U.S. 2005/0008872 A1 Jan. 13, 2005

The Invention
This invention pertains to a paint roller cover having a non-stick
coating applied to at least a portion of the cover‟s paint applicator or fabric.
Independent claims 2 and 5, which are illustrative of the claimed
invention, are reproduced below:
2. A paint applicator comprising,
a handle,
a paint application element operatively connected to the
handle, and
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a non-stick coating provided on at least a portion of the
paint application element wherein the paint application element
is a paint roller cover.

5. The paint applicator according to claim 2 wherein the
non- stick coating comprises a fluoropolymer resin.

(App. Br. Claims App‟x 10).

The Rejections on Appeal
1. Claims 2, 5, 7, 9, 12 and 14 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Franchina (Ans. 3).
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as being obvious over
Franchina in view of Janssen (Ans. 4).
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as being obvious over
Franchina in view of Polzin (Ans. 4).
4. Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as being
obvious over Franchina in view of Gueret (Ans. 4).
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being obvious over
Franchina (Ans. 5).

B. FINDINGS OF FACT
Franchina (DuPont)
1. Franchina names various co-inventors including Richard W.
Thompson and Justine G. Franchina and is assigned to E.I. du Pont de
Nemours and Company [hereinafter “DuPont”] (See cited US 2005/0008872
A1, which subsequently issued as U.S. 7,258,925).
2. Franchina „925 claims priority benefit of a provisional application
filed on July 11, 2003. (Franchina „925, cover sheet).
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3. Franchina „925 claim 1 reads as follows:
1. A paint applicator comprising a paint-carrying substrate
surface comprising a fabric, fibers, or filaments which is
coated or treated with a fluoroacrylate polymer or
copolymer, a fluorourethane polymer or copolymer, or a
mixture thereof, said surface carrying a water based latex
paint.

4. Franchina identifies “increased cleanability” as a benefit of rollers,
paintbrushes and other applicators having its coating fluoracrylate and
fluorourethane (Franchina „925, 2:18-25).

Appellants (Merten and Muchin)
5. Appellants Merten and Muchin submitted a declaration under
37 C.F.R. § 1.132 attesting that they are co-inventors of the present patent
application and that they “are also the inventors of any and all subject matter
disclosed in [Franchina] U.S. Published Patent Application 20050008872
A1” which corresponds to their patent application (App. Br. App‟x A).
The § 1.132 contains Exhibits A-E.
6. As explained in Exhibits B and D, Appellants were hired by
Rubbermaid (Shur-Line) to develop paint product concepts.
7. A confidentiality agreement dated May 20, 2002 was executed by
Appellant Muchin and Richard Thompson (a DuPont employee and
Franchina co-inventor) (App. Br. Ex. E).
8. Exhibit B is an e-mail authored by Mr. Thompson on June 6, 2002
and sent to other DuPont employees regarding “Rubbermaid Paint Rollers.”
That same day, Mr. Thompson forwarded this e-mail to both Appellants.
(App. Br. Ex. B).
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9. Exhibit D is an e-mail authored by Mr. Thompson on
November 13, 2002 and sent to several DuPont employees (including
Franchina co-inventor Justine G. Franchina) as well as to both Appellants
regarding “Rubbermaid paint rollers Teflon® brand development and
product opportunity.” Exhibit D.
10. Richard Thompson‟s email of November 13, 2002 acknowledges
Appellant‟s prior communication of “the possible addition of a Teflon®-like
product to be applied to their rollers for possible benefits of easy clean up,
lint control, easier coating of paint, etc.” (Exhibit D, email from Richard
Thompson).

C. ANALYSIS
The Examiner‟s rejections of the appealed claims are based in whole
or in part on Franchina, which is available as prior art under 35 U.S.C.
§ 102(e)(Ans. 3-5). According to the Examiner, Franchina discloses
Appellants‟ claimed paint applicator in the form of a roller where the
applicator surface is treated with a non-stick coating. (Ans., 3).
Appellants contend that Franchina is not available as a reference
against their claimed subject matter. Specifically, Appellants contend that
Franchina represents their own prior work and thus is not “by another” as
required under § 102(e) (App. Br. 4, Reply Br. 6).
A party may demonstrate that the claimed invention was not “by
another” by showing derivation. Derivation is shown by establishing a prior
conception of the claimed subject matter and a communication of that
conception to the other alleged inventive entity that is sufficient to enable
the other entity to construct and successfully operate the claimed invention.
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Brand v. Miller, 487 F.3d 862, 869 (Fed. Cir. 2007). Conception is
demonstrated through evidence of a definite and permanent idea of the
complete and operative invention. Id. at n. 4.
According to Appellants, they were the first to conceive the claimed
invention and they communicated this conception to a Franchina co-inventor
(App. Br. 5, Reply Br. 8). As evidence of prior conception and
communication, Appellants have filed a declaration with attached exhibits
that purport to show: 1) an existing relationship between the Appellants and
Richard Thompson, a Franchina co-inventor (Exhibit E, confidentiality
agreement); 2) emails from Richard Thompson acknowledging Appellants‟
prior communication of “the possible addition of a Teflon®-like product to
be applied to their rollers for possible benefits of easy clean up, lint control,
easier coating of paint, etc.” (Exhibit D, email from Richard Thompson).
The confidentiality agreement and emails attached to the declaration show
dates that precede the July 11, 2003 effective filing date of the Franchina
patent. On its face, Appellants‟ declaration and attached exhibits present
sufficient evidence of an earlier conception combined with communication
of the conception to a Franchina co-inventor.
Both Appellants and Franchina have claims directed to paint rollers
having fluoropolymer coatings. Both Appellants and Franchina describe
their fluoropolymer coated rollers as having improved cleanability.
(Appellants‟ Spec. ¶ 11 Franchina‟925 patent, 2:5-7). Appellants declare
that they were the inventors of the subject matter disclosed in the Franchina
application.
We understand Appellants‟ 37 C.F.R. §1.312 declaration as alleging
that Appellants invented the subject matter of Franchina, including that
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which is claimed by Franchina. We construe Appellants‟ declaration to be a
request to declare an interference. The suggestion of an interference
however, requires a statement under 37 C.F.R. §41.202 as opposed to the
filing of a 37 C.F.R. §1.312 declaration. While the information contained in
a Rule 312 declaration may be sufficient to operate as a Rule 202 statement,
that is not necessarily the case as a Rule 202 statement provides information
not required by Rule 312, for example the identification of one or more
counts and an explanation of how the claims correspond to one or more
counts.
We have reviewed the declaration and its attached exhibits as well as
the claims of both the Appellants and Franchina. Based on the particulars of
this case we exercise our discretion in the interests of justice and vacate the
appeal (a non-final agency action) and forward the application to the
Interference Section of the BPAI for its consideration.

D. ORDER
1. The rejection of claims 2, 5, 7, 9, 12 and 14 under 35 U.S.C. § 102(e)
as being anticipated by Franchina is vacated.
2. The rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious
over Franchina in view of Janssen is vacated.
3. The rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious
over Franchina in view of Polzin is vacated.
4. The rejection of claims 6 and 13 under 35 U.S.C. § 103(a) as being
obvious over Franchina in view of Gueret is vacated.
5. The rejection of claim 8 under 35 U.S.C. § 103(a) as being obvious
over Franchina is vacated.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Based on the specific facts of this case, this appeal is
VACATED

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