Ex Parte Miles

Board of Patent Appeals and Interferences

Apr 10, 2007

10228898 (B.P.A.I. Apr. 10, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JODY W. MILES
____________

Appeal 2006-2714
Application 10/228,898
Technology Center 3700
____________

Decided: April 10, 2007
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
STUART S. LEVY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jody W. Miles (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 5-9. Claims 1-4, the only other claims
pending in the Application, stand allowed. We have jurisdiction over this
appeal under 35 U.S.C. § 6.
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Appellant invented a drywall sanding device comprising a V-shaped
sanding pad for sanding corners of sheetrock, drywall, and the like
(Specification 1). Claim 5 is illustrative of the invention and reads as
follows:
5. A drywall sanding device for sanding drywall
comers, comprising:
a V-shaped carrier that includes first and
second support surfaces which lie in different
planes and form an angle such that together the
first and second support surfaces form a V-shape;
a V-shaped sanding pad having first and
second outer sanding surfaces which lie in
different planes and form an angle such that
together the first and second sanding surfaces form
a V-shape and a V-shaped back for attaching to the
V-shaped first and second support surfaces of the
carrier, the V-shaped back having first and second
back surfaces which lie in different planes and
form an angle such that together the first and
second back surfaces form a V-shape;
hook and loop fasteners associated with the
drywall sanding device for securing the V-shaped
sanding pad to the V-shaped support surfaces of
the carrier; and
wherein the hook fasteners are secured to
one of the carrier or sanding pad and the loop
fasteners are secured on the other one of the carrier
or sanding pad such that when the V-shaped
support surfaces of the carrier and V-shaped
sanding pad are brought together, the hook and
loop fasteners secure the sanding pad to the carrier.

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The Examiner relies upon the following as evidence of
unpatentability:
Sims US 3,713,744 Jan. 30, 1973
Hurst US 5,056,265 Oct. 15, 1991
Matechuk US 5,605,500 Feb. 25, 1997
Evensen US 5,921,854 Jul. 13, 1999
Carter US 6,106,370 Aug. 22, 2000
Takizawa US 6,186,878 B1 Feb. 13, 2001
Loveless US 6,347,985 B1 Feb. 19, 2002
Nelson US 6,524,173 B1 Feb. 25, 2003
Deware US 6,648,737 B2 Nov. 18, 2003

Appellant seeks review of the Examiner’s rejection of claim 7 under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter Appellant regards as the
invention;1 rejection of claims 5-9 under 35 U.S.C. § 102(b) as anticipated
by Sims, with Deware, Nelson, Carter, Evensen, and Hurst cited as evidence
that Sims’ steel wool pad is a “sanding pad” as recited in Appellant’s claim
5; and rejection of claims 5-9 as unpatentable over Matechuk in view of any
of Loveless, Takizawa, and Sims.
The Examiner provides reasoning in support of the rejections in the
Final Rejection (mailed July 13, 2005) and Answer (mailed March 22,
2006). Appellant presents opposing arguments in the Brief (filed December
22, 2005) and Reply Brief (filed May 24, 2006).

1 Although the Examiner does not restate the indefiniteness rejection in the
Answer, the Examiner’s agreement (Answer 2) with Appellant’s statement
of the grounds of rejection to be reviewed (Br. 3) indicates the Examiner’s
intent to maintain the rejection.
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OPINION
The first issue before us is whether dependent claim 7 is indefinite.
The Examiner contends that claim 7 appears to be directed to a method of
assembly or forming the drywall sanding device and thus does not further
limit the claim from which it depends, namely, claim 5, which is directed to
a drywall sanding device (Final Rejection 2). Appellant, on the other hand,
points out that claim 7 does not recite any steps of assembling and contends
that claim 7 specifies that the sanding pad is V-shaped and that the V-shaped
configuration of the sanding pad is not dependent on the support structure or
carrier (Br. 12).
The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. See In re Warmerdam, 33 F.3d
1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). In determining
whether this standard is met, the definiteness of the language employed in
the claim must be analyzed, not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193
(CCPA 1977).
The claim language at issue in claim 7 is “wherein the V-shaped
sanding pad is configured to assume the V-shape and assumes the V-shape
prior to being secured to the V-shaped carrier.” Appellant’s Specification
describes the sanding pad 12 as assuming “a generally V-shape” and as
being “reinforced along the central area thereof” by a reinforcing corner
member 46 of “a V-shaped or L-shaped configuration” secured by glue,
adhesive, or other suitable means, to the interior corner 44 of the pad
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(Specification 3:2-17). One skilled in the art would understand from this
description, and the illustration in Fig. 1, that Appellant’s sanding pad 12,
reinforced by the reinforcing corner member 46, is stable in its V-shaped
configuration and, thus, will maintain the V-shape regardless of whether it is
secured to or separated from the V-shaped carrier. Consistent with that
description in the Specification, a person possessing the ordinary level of
skill in the art would understand claim 7 to be directed to the structure of the
sanding pad, not a method of assembling the sanding device, as contended
by the Examiner. Specifically, in light of Appellant’s Specification, such a
person would interpret the language at issue in claim 7 as defining the
sanding pad as stable in its V-shape, regardless of whether it is secured to
the V-shaped carrier. The rejection of claim 7 under 35 U.S.C. § 112,
second paragraph, is reversed.
The second issue presented to us is whether Sims’ steel wool pad is a
“sanding pad” as called for in Appellant’s claim 5. Appellant argues, in
essence, that Sims discloses use of the device and included pad for cleaning,
polishing, and waxing floors and walls, not for sanding or abrading the
walls, and that, consequently, the Examiner has erred in reading the
“sanding pad” of claim 5 on Sims’ steel wool pad (Br. 4-7). Appellant also
complains that the Examiner has erred in failing to explicitly construe the
term “sanding pad” on the record (Br. 4, 7-8). Appellant further argues that
the preamble language “drywall sanding device” recites essential structure
necessary to give life, meaning, and vitality to claim 5 (Br. 8). The
Examiner cites several references to support the Examiner’s position that the
steel wool pad of Sims meets the structural definition of a “sanding pad”
(Answer 3). In response, Appellant argues that the Examiner’s rejection of
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claims 5-9 over multiple references under 35 U.S.C. § 102(b) is improper
because the Examiner uses the secondary references to expand on the
meaning of the term “steel wool” (Reply Br. 1-3).
Appellant may be technically correct that the Examiner has not
expressly construed the claim terminology “sanding pad” on the record.2
Implicit in the Examiner’s rejection, however, is a construction of “sanding
pad” as being a pad having a surface recognized in the sanding art for use in
sanding or abrading surfaces. In any event, such a construction is consistent
with Appellant’s Specification. We therefore construe “sanding pad” in
Appellant’s claim 1 as a pad having a surface recognized in the sanding art
for use in sanding or abrading surfaces. The preamble language “drywall
sanding device” further limits the claimed subject matter to devices that are
capable of use in sanding drywall.
Appellant’s characterization of the Examiner’s use of the secondary
references is not accurate. The Examiner clearly uses Deware, Nelson,
Carter, Evensen, and Hurst, the secondary references cited in the statement
of the rejection, as well as several other references cited on page 5 of the
Answer, as evidence that “steel wool” is inherently capable of use as a
sanding surface and recognized as such by those of skill in the art.
Consequently, according to the Examiner (Answer 3, 5), Sims’ steel wool
pad 88 (Sims, col. 3, ll. 40-41; col. 5, l. 13) meets the “sanding pad”
limitation of claim 5. The secondary references are not used by the

2 It is noteworthy that Appellant has not offered a definition for the claim
terminology “sanding pad,” either in the Specification or in the Brief or
Reply Brief.
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Examiner in support of any proposed modification to Sims to meet the claim
language.
To serve as an anticipation when the reference is
silent about the asserted inherent characteristic,
such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence
must make clear that the missing descriptive
matter is necessarily present in the thing described
in the reference, and that it would be so recognized
by persons of ordinary skill.

Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). The Examiner’s use of the secondary
references as extrinsic evidence that steel wool is inherently capable of use
in sanding and would be so recognized by persons of ordinary skill in the art
is thus appropriate in the rejection of claims 5-9 as anticipated by Sims.
Moreover, we find that the secondary references cited by the
Examiner do evidence that steel wool is recognized by persons of ordinary
skill in the sanding art for use as a sanding surface for sanding many
different types of surfaces (Deware, col. 1, ll. 16-17, col. 2, ll. 63-67;
Evensen, col. 1, ll. 18-19, col. 6, ll. 11-19; Carter, col. 1, ll. 16-17). We
therefore conclude that Sims’ V-shaped steel wool pad 88 meets the
“sanding pad” limitation of claim 5 and that Sims’ cleaning, polishing, and
waxing device, which is capable of sanding drywall surfaces by virtue of the
abrasive steel wool pad, is a “drywall sanding device” as recited in the
preamble of claim 5.
We appreciate that Sims does not expressly disclose use of the device
for sanding, but claim 5 is directed to a device, not a method of using the
device. The recitation of an intended use for an old product does not make a
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claim to that old product patentable. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Anticipation does not require that
the reference teach what the subject application teaches, but only that the
claim read on something disclosed in the reference, i.e., that all of the
limitations in the claim be found in or fully met by the reference. Kalman v.
Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983). Further, while anticipation requires the disclosure of each and every
limitation of the claim at issue in a single prior art reference, it does not
require such disclosure in haec verba. In re Bode, 550 F.2d 656, 660, 193
USPQ 12, 16 (CCPA 1977).
For the foregoing reasons, Appellant has not demonstrated the
Examiner erred in rejecting claim 5 as anticipated by Sims, citing Deware,
Nelson, Carter, Evensen, and Hurst as extrinsic evidence that steel wool is
an art-recognized sanding surface. The rejection of claim 5, as well as
claims 6 and 8, which Appellant has not argued separately from claim 5, as
anticipated by Sims is sustained.
The third issue presented to us is whether Sims’ V-shaped pad 88
meets the limitation in claim 7 that the V-shaped sanding pad “assumes the
V-shape prior to being secured to the V-shaped carrier” (Br. 8-9). While
Sims clearly illustrates the removable pad 88 (Figs. 8 and 9) assuming a V-
shape when secured to V-shaped auxiliary tool 86, Sims gives no indication
as to whether pad 88 is stable in its V-shape when not secured to auxiliary
tool 86. Therefore, to conclude that pad 88 is stable in its V-shape when not
secured to auxiliary tool 86, as required by claim 7, and claim 9 depending
from claim 7, would require speculation. As discussed above in our reversal
of the indefiniteness rejection of claim 7, the Examiner erred in dismissing
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the language of claim 7 as being directed to the method of assembly of the
device and not a structural limitation of the claim (Answer 7). The rejection
of claims 7 and 9 as anticipated by Sims is grounded in part on this
erroneous determination and thus must also be reversed.
The fourth issue before us is whether the Examiner erred in rejecting
claims 5-9 as unpatentable over Matechuk in view of any of Loveless,
Takizawa, and Sims. More specifically, the issue raised by Appellant is
whether it would have been obvious to replace the attachment means of
Matechuk’s sanding block 10 to either the carrier 20 or the attachment body
46 with a hook and loop fastening arrangement to arrive at the invention
recited in Appellant’s claim 5 (Br. 10-11). The Examiner contends that it
would have been obvious to modify Matechuk “with hook and loop
connection as taught by anyone of Loveless, [Takizawa] or Sims in adapting
the tool with a simple, easy and fast means of detachably securing the pad,
so that it may be replaced when worn out” (Answer 4).
As pointed out by Appellant (Br. 10), the Examiner has not
adequately explained which securement, the securement of Matechuk’s
sanding block 10 to carrier 20 or the securement of sanding block 10 to
attachment body 46, the Examiner proposes to replace with a hook and loop
fastening. Furthermore, as also pointed out by Appellant (Br. 10-11), the
Examiner has not provided any evidence or rationale to support the position
that a hook and loop type fastening arrangement would have been an easier
or faster means for attaching a sanding pad 10 to Matechuk’s carrier 20 than
Matechuk’s self-aligning system of inserting carrier 20 into recess 26 of
sanding pad 10 (Matechuk, col. 3, ll. 50-69 and Fig. 1). Accordingly, absent
hindsight gleaned from Appellant’s disclosure, it is not apparent why one of
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ordinary skill in the art would have been motivated to replace the seemingly
simple and self-aligning securement arrangement of Matechuk’s pad 10 to
carrier 20 with a hook and loop fastening arrangement. Likewise, for the
reasons cited by Appellant (Br. 10), a hook and loop securement would not
have been an obvious replacement for or accompaniment to either the
frictional engagement between resilient sanding block 10 and end portions
50 of attachment body 46 under pressure caused by the block’s resilience
(Matechuk, col. 4, ll. 39-58) or the air-tight seal formed by butting of front
edges of side walls 54 of central portion 48 of attachment body 46 against
the resilient hypotenuse surface 18 of block 10 (Matechuk, col. 4, ll. 59-66).
Matechuk utilizes the resilience of the sanding block 10 to advantage in
creating a rectangular, air-tight, air receiving plenum chamber for the
vacuum attachment of the sanding device and hook and loop fasteners would
not appear to facilitate, and in fact would appear to hinder, such an
arrangement.
In light of the above, we conclude that the Examiner erred in rejecting
claim 5, and claims 6-9 depending from claim 5, as unpatentable over
Matechuk in view of any of Loveless, Takizawa, and Sims. The rejection is
reversed.
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SUMMARY
The rejections of claim 7 under 35 U.S.C. § 112, second paragraph,
and claims 5-9 as unpatentable over Matechuk in view of any of Loveless,
Takizawa, and Sims are reversed. The rejection of claims 5-9 as anticipated
by Sims is affirmed as to claims 5, 6, and 8 and reversed as to claims 7 and
9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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