Ex Parte Pahl et alDownload PDFPatent Trials and Appeals BoardMar 29, 201913412955 - (D) (P.T.A.B. Mar. 29, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/412,955 03/06/2012 32692 7590 04/02/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Thomas E. Pahl 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. 67122US004 7479 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. PAHL, JOHN G. PETERSEN, and MICHAELP. WALD Appeal2017-009914 Application 13/412,955 Technology Center 3700 Before DANIEL S. SONG, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Thomas E. Pahl et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-8, 10-13, 16, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Petersen (US 2009/0325470 Al, published Dec. 31, 2009), Carter (US 2002/0155283 Al, published Oct. 1 The subject application was previously before the Patent Trial and Appeal Board in Appeal No. 2015-000724. See Decision ("Dec."), dated January 4, 2017. In that Decision, the adverse decision of the Examiner was AFFIRMED. Following that Decision, Appellants reopened prosecution. Appeal2017-009914 Application 13/412,955 24, 2002) and Making Sense of Sandpaper. 2 Claims 9, 14, 15, 17, and 18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to "a coarse abrasive article." Spec. 1 :24 ( emphasis added). Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A sheet of coarse sandpaper, comprising: (a) a flexible backing layer having opposed first and second major surfaces; (b) an adhesive make coat on the second major surface; ( c) coarse abrasive particles at least partially embedded in the make coat, thereby defining a coarse abrasive surface; and ( d) an exposed non-slip coating layer on the first major surface, wherein the nonslip coating layer comprises a base resin that comprises an amorphous hydrocarbon polymer or copolymer or a mixture thereof, and an effective amount of a tackifying resin, and wherein the non-slip coating layer has a thickness of at least about 20 microns and no greater than about 50 microns. 2 The website article Making Sense of Sandpaper is provided by the Examiner in the Non-Final Office Action. See Non-Final Office Action 7-9 ("Non-Final Act."), dated Mar. 10, 2017. According to the Examiner, the article is also available at http://www.jamarco.com/91bTechnical/sandpaper /Making%20Sense%20of>/o20Sandpaper% 20-% 20Page%202 % 20- %20Fine% 20Woodworking.htm. See id. at 6. 2 Appeal2017-009914 Application 13/412,955 ANALYSIS As an initial matter, the Examiner contends the Board's prior Decision dated January 4, 2017 did not address the Examiner's rejection that if the term "coarse abrasive" is defined only by Appellants' Specification to be abrasive sized P 100 or less, then the Examiner takes the position that it would have been obvious to one of ordinary skill in the art at time invention was made to use any known abrasive particle size, such as P 100 or less in the product of Petersen, dependent on the workpiece being abraded and the desired finish. See Ans. 7; see also id. at 8; Final Act. 4--5. However, the Board did address this alternative position posed by the Examiner. See Dec. 5. In particular, the Board stated: [A]lthough Petersen's Example A of a grade of P150 "is just one example," the Examiner fails to provide sufficient evidence or technical reasoning that a grade of "P 100 or less" is "a slight variation [in] the particle size in Petersen's Example A" that would "constitute[] an obvious mechanical expedient at the time of [Appellants'] invention." Dec. 5 (citing Ans. 4, 6; Reply Br. 9 of Appeal No. 2015-000724). The Board acknowledges that Petersen discloses "any abrasive particles [] may be used with this invention." Petersen ,r 66. 3 However, the Board clarified in the prior decision that Appellants' Specification expressly defines the term "coarse" to mean "having a PEP A P grade, as outlined by the Federation of European Producers of Abrasives and as tested in accordance with the ISO 6344 standard, of P 100 or lower ( with a lower grade corresponding to larger particles)." Dec. 4; Spec. 11:32-12:2. 3 We note that Petersen "is incorporated by reference in its entirety" in the subject application. Spec. 15:7-10; see also Dec. 3, n.2. 3 Appeal2017-009914 Application 13/412,955 Appellants' Specification further describes "non-coarse" abrasive articles to include FEPA grades of P150 and P180. See Spec. 22:1-23. The Examiner takes the position that Petersen's disclosure that "any abrasive particles may be used" means that "any suitable abrasive including the physical make up, the shape and size [ can be used]. Therefore, the broad meaning of 'coarse abrasive' in claim 1 appears to be met." Non-Final Act. 2 ( emphasis added); see also Dec. 5. However, the Examiner does not give proper effect to the phrase "coarse" abrasive particles. Stated differently, the Examiner's interpretation appears to render meaningless or superfluous the phrase "coarse" abrasive particles. Claims are construed with an eye towards giving effect to all terms in the claim. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous); In re Prater, 415 F.2d 1393, 1404 (CCPA 1969) ("claims yet unpatented are to be given the broadest reasonable interpretation consistent with the specification"). In this case, Petersen merely includes examples of what has been described in Appellants' Specification as "non-coarse" abrasive particles, such as P150 and P320. See Petersen ,r,r 80, 83, 84; see also Dec. 4--5; Spec. 22:1-23. Petersen is silent as to any examples of"coarse" abrasive particles as defined by Appellants' Specification (i.e., aFEPAP grade ofPlOO or lower). See Dec. 5 ("Petersen is silent regarding 'coarse' abrasive particles with a grade of 'PlOO or lower."' (citing Reply Br. 7-9 of Appeal No. 2015- 000724)). In addition, the Examiner does not provide sufficient evidence or technical reasoning to establish that a skilled artisan would have been motivated to use "coarse" abrasive particle, as defined by Appellants' 4 Appeal2017-009914 Application 13/412,955 Specification, in the product of Petersen. 4 Non-Final Act. 2-3, 4--5; see also Ans. 7-8; Dec. 5. Thus, as to the Examiner's rejection based on Petersen alone5 (see Non-Final Act. 3 ("[I]t would have been obvious to one of ordinary skill in the art at time invention was made to use any known abrasive particle size, such as PIOO or less in the product of Petersen alone")), this rejection has already been considered by the Board and the claims were all subject to a final rejection that the Board reversed in the prior proceeding. See Dec. 3---6. We agree with Appellants that this issue has "already been reviewed, found lacking, and overturned, by the Board" in the prior Board decision and that the Examiner errs in raising this same issue in the subject appeal. See Appeal Br. 5---6; see also Dec. 3-6. 6 In the Non-Final Office Action, the Examiner takes an alternative approach by combining the teachings Petersen and Making Sense of Sandpaper. See Non-Final Act. 3. In particular, the Examiner finds that "Making Sense of Sandpaper teaches a sandpaper using abrasive grit from coarse to fine (first paragraph) and in particularly uses a coarse sanding grit of 80 ( equivalent to Pl 00-see chart)." Non-Final Act. 3--4; see also Making 4 The Examiner does not direct us to any discussion in Petersen about "Petersen's disclosure[] clearly [being] directed to sandpaper of any or all grit size[s]." Non-Final Act. 3. 5 The Examiner relies on the teachings of Carter for dependent claim 20. See Non-Final Act. 4. 6 Appellants are correct that because the Board found the Examiner failed to establish that Petersen disclosed the "coarse abrasive particles" of claim 1 and because "this finding was sufficient in and of itself to overturn the obviousness rejection, there was no need for the Board to consider the issue of unexpected results in the previous Appeal." See Appeal Br. 8 (footnote omitted). 5 Appeal2017-009914 Application 13/412,955 Sense of Sandpaper, 1 ("coarse paper, perhaps 80-grit or 100-grit."); 3, comparison chart. The Examiner concludes it would have been obvious "to use coarse abrasive particle size, such as 80 grit/P 100 in the product of Petersen, for more strictly abrasive purposes to remove material rather than smooth the workpiece ('Don't Skip Grits ... ['] paragraph in website article)." Non-Final Act. 4. The Examiner also concludes "[i]f it is desired to quickly remove material from a workpiece, it would have been obvious to utilize a course grit sandpaper" in Petersen "as this would be more efficient than abrading the workpiece a much longer period of time with a finer grit sandpaper in keeping with the teaching of Making Sense of Sandpaper." Id. at 3. Appellants do not address the Examiner's rejection of Petersen and Making Sense of Sandpaper. In fact, Appellants acknowledge that they "did not argue the issue of whether it would have been obvious to change the size of Petersen's abrasive." Reply Br. 5; see also id. at 6. Thus, Appellants do not apprise us of Examiner error. However, Appellants contend that "the non-obviousness of the claimed invention rests on the foundation of unexpected results" and that "a sufficient showing has been made of secondary considerations in the form of unexpected results, that rebut any finding of obviousness." Reply Br. 6; see also id. ("[T]he showing of unexpected results, as presented in the application as filed and as discussed in detail in the Appeal Brief, is sufficient to rebut a finding of obviousness of the claimed invention based on the cited references, including Making Sense of Sandpaper."); id. at 5; Appeal Br. 7-10. 6 Appeal2017-009914 Application 13/412,955 The Examiner takes the position that according to MPEP 716.02(e), an affidavit or declaration must be submitted in order to demonstrate unexpected results and as "[ n Jo such affidavit or declaration of facts exists" for the subject application, Appellants have not presented any evidence of unexpected results. See Non-Final Act. 9. However, Appellants correctly point out MPEP 2145 states that rebuttal evidence, such as unexpected results, "can be presented in the specification ... or by way of an affidavit." See MPEP 2145; In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). In this case, there is evidence of a comparison to the closest prior art. In fact, Appellants point out that "[ t ]he Examiner has designated Petersen (US2009/0325470) as being the closest prior art" and that "[A]ppellant[s'] submit[] that the Working Examples and Comparative Examples [in the Specification] provide a proper comparison with the disclosures of Petersen." Appeal Br. 9. In particular, Appellants' Comparative Example 1 incorporates a non-slip material comprising "a carboxylated styrene- butadiene rubber," which is the same non-slip material found in Examples 4 and 5 of Petersen, with "coarse" abrasive particles having a PEP A P80 rating. See Spec. 21:6-32; see also Petersen ,r,r 88, 89; Appeal Br. 9. In this Example, it was found that in normal hand sanding tests with "coarse" sandpaper (i.e., sandpaper having a FEPA P80 rating) and a non-slip material of carboxylated styrene-butadiene rubber, "loose coarse particulates appeared to significantly decrease the non-slip property of the non-slip coating." See Spec. 21:6-32 (emphasis added); see also Appeal Br. 9. Based on this evidence, we agree with Appellants that Comparative Example 1 demonstrates a non-slip material (i.e., carboxylated styrene- butadiene rubber) that "was found satisfactory by Petersen when used with 7 Appeal2017-009914 Application 13/412,955 abrasive particles that were not coarse abrasive particles [ e.g., Pl 50], 7 exhibited unsatisfactory deterioration in non-slip performance when used in combination with coarse abrasive particles [i.e., P80]." Appeal Br. 9 (underlining added). We further agree with Appellants that Comparative Example 1 is illustrative of a "problem solved by [Appellants] (the effect of coarse abrasive particles on non-slip performance) [that] was not appreciated by Petersen, and that a representative non-slip material that was found satisfactory by Petersen was found to be unsatisfactory when used with coarse abrasive particles." Id. (emphasis added). Thus, Appellants have presented evidence of unexpected results, that when weighed with the evidence of obviousness, is sufficient to support a conclusion of non- obviousness. See Appeal Br. 10; see also Reply Br. 3---6. For these reasons, we do not sustain the Examiner's rejection of claims 1-8, 10-13, 16, 19, and 20 as unpatentable over Pertersen, Carter, and Making Sense of Sandpaper. DECISION As discussed above, the Examiner's rejection of claims 1-8, 10-13, 16, 19, and 20 in view of the teachings of Petersen for the limitation "coarse abrasive particles" has already been reviewed and REVERSED by the Board in the prior Board decision (i.e., Appeal No. 2015-000724). 7 Paragraph 83 of Petersen discloses that "[c]omparative Example A was 3M grade P 150 216U" paper. See Petersen ,r 83. Further, paragraph 88 of Petersen discloses that "[ e ]xample 4 was 216U sandpaper" and paragraph 89 of Petersen discloses that "[e]xample 5 was the same as Example 4." See Petersen ,r,r 88, 89. 8 Appeal2017-009914 Application 13/412,955 We REVERSE the decision of the Examiner to reject claims 1-8, 10- 13, 16, 19, and 20 as unpatentable over Petersen, Carter, and Making Sense of Sandpaper. REVERSED 9 Copy with citationCopy as parenthetical citation