Ex Parte Murphy

Patent Trial and Appeal Board

Sep 30, 2016

13336345 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/336,345 12/23/2011
35301 7590 10/04/2016
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
FIRST NAMED INVENTOR
Joseph Murphy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8176-0001-1 9920
EXAMINER
CARROLL, JEREMY W
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
10/04/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH MURPHY
Appeal2014-009159
Application 13/336,345
Technology Center 3700
Before NEALE. ABRAMS, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009159
Application 13/336,345
STATEMENT OF THE CASE1
Joseph Murphy (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject under 35 U.S.C. § 112, second paragraph,
claims 1and5 for indefiniteness; to reject under 35 U.S.C. § 102(b) claims
1-9 and 14--16 as anticipated by Gringer (US 2007/0295768 Al; pub. Dec.
27, 2007); and to reject under 35 U.S.C. § 103(a): (1) claims 9 and 10 as
unpatentable over Gringer and Schmid (US 5,720,408; iss. Feb. 24, 1998),
(2) claim 11 as unpatentable over Gringer, Schmid, and Falligant (US
2,744,809; iss. May 8, 1956); and (3) claims 12 and 13 as unpatentable over
Gringer and Bloomfield (US 3,330,449; iss. July 11, 1967). Claims 17-20
have been withdrawn from consideration. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a product enabling the
application of an asphalt tar sealant to cracks in pavement, roofing and the
like, and the method of using the product." Spec. para. 2, Fig. 2. Claims 1
and 5 are independent.
1 Appellant submitted an Amendment to the claims in the Response After
Final Action. See Response After Final Act. 2-6 (filed Mar. 20, 2014); see
also Appeal Br. 1, 6 (filed June 13, 2014). In the Advisory Action, the
Examiner indicated that the proposed amendments "[would] not be entered"
because "[t]hey raise new issues that would require further consideration
and/or search." Advisory Act. 1 (mailed Apr. 3, 2014). Appellant
acknowledges that the proposed amendments have not been entered. See
Appeal Br. 1, 6. Accordingly, the claim set before us for review is the one
submitted with the Appeal Brief. See Appeal Br. 10-11, Claims App.
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Appeal2014-009159
Application 13/336,345
Claim 1 is illustrative of the claimed subject matter and recites:
1. In a product for sealing cracks in pavement, roofs, and the
like, the combination comprising:
a can having an opening for pouring the contents of the
can from the can, the can being made from a material that can
withstand heating of the contents to a temperature in excess of
275°F·
'
a spout fitted to the can for pouring heated contents from
the opening of the can;
a handle fitted to the can for tilting the can and pouring the
contents from the opening of the can; and
an asphalt tar sealant disposed in the can in heat transfer
relationship with the can, the tar sealant being a solid at room
temperature and assuming a fluid state pourable from the can
when heated to a temperature in excess of 275°F.
ANALYSIS
Indefiniteness
Claims 1 and 5
The Examiner determines that "[i]t is unclear from the preamble as to
what type of claim this is, such as an apparatus, kit or method claim."
According to the Examiner, "[a]s the preamble refers to a combination
inside of a product that can seal cracks, which could be either a chemical
composition such as tar, an apparatus for sealing cracks such as a dispenser
or a kit sold in a store that provides a dispenser with tar." Final Act. 2;
Ans. 2-3. Additionally, the Examiner states "[f]or the purpose of
examination [claims 1 and 5] will be treated as [] apparatus claim[ s ]." Id.
at 2; Ans. 3.
Appellant contends that claims of the subject invention "are to a
product, not a machine that works on a work piece in the course of using
the machine." Reply Br. 2. According to Appellant,
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Appeal2014-009159
Application 13/336,345
Both Claims 1 and 5 are directed to a product for sealing
cracks, and the product comprises a combination of four
elements: a can, a spout, a handle, and a sealant which has a solid
state at room temperature and a fluid state at an elevated
temperature for pouring.
The claims are obviously not directed to a chemical
composition since the claim elements include a can, handle,
spout, and a sealant.
The claims are not directed to a kit which implies a
collection of disassociated parts grouped together (see MPEP
2115 at end), since the sealant is "disposed in the can in heat
transfer relationship with the can" (Claim 1) or "to receive heat
within the can from a heat source external to the can" (Claim 5).
Appeal Br. 6.
Appellant's Specification describes that "[t]he present invention in
one aspect relates to a do-it-yourself (DIY) product" and "[t]he product
comprises a metal can containing the asphalt tar sealant ... and a pour
spout that is or can be connected to the top of the can." Spec. para. 7.
The Specification further describes that "the crack sealer product l 0
comprised basically of a metal can 12, and a removable spout 14 with an
integral handle 16. The metal can contains an asphalt tar sealant 18." Id. at
para. 22.
In this case, whether the claims are directed to a machine or an
article of manufacture has no bearing on our decision, because each of
independent claims 1 and 5 on its face are directed to "a combination of
four elements: a can, a spout, a handle, and a sealant." Appeal Br. 6
(emphasis added).
Accordingly, we do not sustain the Examiner's rejection of claims 1
and 5 for indefiniteness.
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Appeal2014-009159
Application 13/336,345
Claims 1-9and14-16
Anticipation by Gringer
The Examiner finds that Gringer discloses the limitations of claim 1.
Final Act. 3. Regarding the sealant, the Examiner takes the position that
"[ e ]xpressions relating the apparatus to contents thereof during an intended
operation are of no significance in determining patentability of the
apparatus claim" and "inclusion of material or article worked upon by a
structure being claimed does not impart patentability to the claims." Id.
(citing Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) and In re
Young, 75 F.2d * > 996 < (CCPA 1935), respectively).
Appellant contends that "[t]he sealant with certain physical
characteristics dealing with its solid and fluid states is expressly stated to be
a part of the product, and an element of the claims. None of the references
discloses such a sealant in the claimed combination, or for that matter, at
all." Appeal Br. 8; see also Reply Br. 3--4. In particular, Appellant
contends that "Gringer discloses a paint can with a spout and handle, but
fails to disclose any sealant at all, let alone a sealant as defined by
[Appellant] as a sealant that has a solid state at room temperature and a
fluid state at an elevated temperature for sealing cracks." Id. at 7; see also
Reply Br. 4.
At the outset, as discussed above, claim 1 is directed to "a
combination of four elements: a can, a spout, a handle, and a sealant." See
Appeal Br. 6 (emphasis added). As such, we agree with Appellant that
"[t ]he sealant is one of four primary elements," as recited in claim 1. See
id.; see also id. at 8; Reply Br. 2, 4.
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Appeal2014-009159
Application 13/336,345
Claim 1 recites a "tar sealant." Appeal Br. 10, Claims App.
(emphasis added). Additionally, claim 1 recites that the tar sealant "[be] a
solid at room temperature and assum[ e] a fluid state pourable from the can
when heated to a temperature in excess of 2 7 5 °F." Id. Gringer is directed
to a paint can including paint. See Gringer, paras. 2, 28, 29, Figs. 1, 3, 4.
Although paint is a sealant, it is not a "tar" sealant as claimed. Further, the
Examiner does not direct us to any discussion in Gringer regarding the
properties of the paint (i.e., that the paint of Gringer is capable of "being a
solid at room temperature and assuming a fluid state pourable from the can
when heated to a temperature in excess of 275°F," as claimed). See Final
Act. 3; see also Ans. 3, 8-9. As such, based on the foregoing, we agree
with Appellant that Gringer fails to disclose a tar sealant as claimed. See
Appeal Br. 7; see also Reply Br. 4. Consequently, the Examiner fails to
establish by a preponderance of the evidence that Gringer anticipates the
device of claim 1. 2
Independent claim 5 includes a similar limitation directed to a tar
sealant with similar properties (see Appeal Br. 11, Claims App.), and thus,
the Examiner's findings with respect to Gringer are deficient for claim 5 as
well. See Final Act. 3--4; see also Ans. 3--4.
2 We note that any consideration of what a skilled artisan may deem obvious
regarding the possible advantages of substituting a tar sealant for a paint
sealant is immaterial to the anticipation rejection made here and before us for
review. We further note that the Patent Trial and Appeal Board is a review
body, rather than a place of initial examination, and we therefore decline to
make a determination of what a skilled artisan may conclude; rather, we leave
it to the Examiner to determine the appropriateness of any further course of
action based on such a conclusion should there be further prosecution of this
application.
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Appeal2014-009159
Application 13/336,345
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 5 and their respective
dependent claims 2--4, 6-9, and 14--16 as anticipated by Gringer.
Obviousness over Gringer and Schmid, Gringer, Schmid, and F alligant, or
Gringer and Bloomfield
Claims 9-13
The Examiner's obviousness rejections of claims 9-13 are each based
on the same unsupported findings discussed above with respect to
independent claims 1 and 5. See Final Act. 5-8; see also Ans. 5-8. The
Examiner does not rely on Schmid, Falligant, or Bloomfield to remedy the
deficiency of Gringer. Accordingly, for reasons similar to those discussed
above for claims 1 and 5, we do not sustain the Examiner's obviousness
rejections of claims 9-13.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-16
REVERSED
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