Ex Parte Palushaj

Patent Trial and Appeal Board

Jul 14, 2017

14062550 (P.T.A.B. Jul. 14, 2017)

United States Patent and Trademark Office
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.
14/062,550 10/24/2013 Simon Palushaj 01016-0027 5083
109973 7590
Bejin Bieneman PLC
300 River Place
Suite 1650
Detroit, MI 48207
EXAMINER
NGUYEN, DUNG V
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
docket @ b2iplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON PALUSHAJ
Appeal 2015-006200
Application 14/062,550
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1—20. App. Br. 4—5. Appellant’s
counsel presented oral arguments on July 6, 2017. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-006200
Application 14/062,550
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a reinforced abrasive abrading
and grinding device for sanding hard floors and surfaces, for example
cement, stone or imitation stone.” Spec. 1:16—18. Claims 1 and 15 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. An abrasive hard surface preparation device for use with
a rotary device, the abrasive hard surface preparation device
comprising:
a rotatable housing;
at least two adjacent abrasive elements each abrasive
element including abrasive particles, the abrasive element
operatively mounted to the housing for substantially continuous
contact with the hard surface, and positioned at an acute angle
rearward from the normal motion of the housing with respect to
the housing, and the at least two abrasive elements being
separated from one another such that adjacent abrasive elements
do not contact one another wherein the abrasive particles are
configured to wear off during use.
REFERENCES RELIED ON BY THE EXAMINER
Palushaj US 7,081,047 B2 July 25,2006
Castonguay WO 2006/039811 A1 Apr. 20,2006
THE REJECTIONS ON APPEAL
Claims 15—20 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the applicant regards as the invention.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Castonguay and Palushaj.
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Application 14/062,550
ANALYSIS
The rejection of claims 15—20 as being indefinite
The Examiner references independent claim 15 and specifically its
recitation of “the abrasive material” and “do not contact another housing” as
rendering the claim indefinite. Final Act. 2. Appellant states, “[t]he
Applicant will address the rejections under 35 U.S.C. § 112, second
paragraph, after a decision regarding the present appeal.” App. Br. 5.
Lacking any explanation as to how the Examiner’s conclusion might be
wanting, we affirm the Examiner’s rejection of claim 15, and dependent
claims 16—20, as being indefinite.
The rejection of claims 1—20
as unpatentable over Castonguay and Palushaj
Appellant argues claims 1, 5, and 15—17 separately. App. Br. 5—15.
We likewise separately address these claims. Remaining claims 2-4, 6—14,
and 18—20 stand or fall with their respective parent claim. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1
Claim 1 recites an abrasive hard surface preparation device
comprising, among other limitations, “at least two adjacent abrasive
elements”, and “the abrasive element operatively mounted to the housing for
substantially continuous contact with the hard surface.”1 Emphasis added.
Claim 1 also recites that this abrasive element is “positioned at an acute
1 It is unclear if “the abrasive element” is a reference to a single such
element or a plurality of them. However, we need not resolve this matter
when addressing the Examiner’s obviousness rationale.
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Application 14/062,550
angle rearward from the normal motion of the housing with respect to the
housing.” Emphasis added.
The Examiner relies on the teachings of Castonguay for disclosing
these limitations.2 Final Act. 3^4. More specifically, the Examiner relies on
Castonguay for disclosing “two adjacent abrasive elements 8” with “each
abrasive element 8 including an abrasive material 6 positioned obliquely
with respect to the housing.” Final Act. 3; see also Castonguay Figs. 1—3.
Regarding the “acute angle” limitation, in light of the Examiner’s
correlation of Castonguay’s items 8 and 6 to the recited abrasive element, we
note that Castonguay Fig. 3 illustrates such items as forming an acute angle
with housing 2. Appellant is not persuasive that this is not the case or that
Castonguay fails to teach this limitation.
Appellant contends that the Examiner failed “to describe how the
spring blade 8 of Castonguay is ‘operatively mounted’” for “substantially
continuous contact with the hard surface” as recited, and thus the Examiner
failed to present a “prima facie case of obviousness of claim 1.” App. Br. 5—
6; see also Reply Br. 2—3. As indicated above, the Examiner relies on
Castonguay for this limitation3 (Final Act. 3) and Castonguay discusses and
illustrates how spring blade 8 is mounted to follow a surface profile of the
workpiece. See, e.g., Castonguay Figs. 1—3 and associated discussion. We
thus disagree with Appellant’s assessment that there is no discussion of how
2 The Examiner relies on the secondary reference to Palushaj for disclosing
an abrasive element “having abrasive particles 22 configured to wear off
during use.” Final Act. 4 (referencing Palushaj 2:3—12 and 3:64 to 4:15).
Appellant does not dispute this teaching of Palushaj.
3 Appellant also asserts that Palushaj fails to remedy “this deficiency of
Castonguay” but Palushaj was not relied on by the Examiner for disclosing
this limitation. App. Br. 5; Final Act. 4.
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Application 14/062,550
Castonguay’s blade is mounted in order to achieve the recited “substantially
continuous contact with the hard surface.”
Appellant also contends that Castonguay fails to disclose the
limitation of “substantially continuous contact with the hard surface”
because “Castonguay specifically teaches that the abrasive tool 6 bounces on
the surface of the stone.” App. Br. 6; see also Reply Br. 3—6. Appellant
contends, “Castonguay specifically sets forth a desire for ‘roughing or
texturing the surface’” of the stone and “Castonguay is directed toward a
bouncing abrasive tool 6.” App. Br. 6—7 (referencing Castonguay 1:25,
2:26—27, 10:18—24, 16:1—5). According to Appellant, the recited
“substantially continuous contact” limitation “would smooth the artificial
stone, contrary to the stated desire in Castonguay to create [a] rough and
antique appearance.” App. Br. 7; see also Reply Br. 3.
It is not disputed that Castonguay discusses “roughing” the stone as
Appellant contends. However, this is only a part of Castonguay’s teaching
because in addition to discussing “roughing,” Castonguay also discusses
“polishing” the work surface.4 See, e.g., Castonguay Abstract, 3:22—31,
4:8—9, 10:2—3. To this end, Castonguay discloses springs 8 with “tensional
give that enables them to urge the abrasive tools 6 toward the surface of the
stone material” thereby allowing the spring to “adapt and bend” as needed.
Castonguay 11:15—18. In other words, the tension in springs 8 urges the
tools against the stone surface and as such, they operate in a manner to resist
any bouncing that might normally arise. This is consistent with
4 We are instructed by our reviewing court that one skilled in the art is able
to read a reference for all that it teaches. See Beckman Instruments, Inc. v.
LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989); In re Chapman,
357 F.2d 418, 424 (CCPA 1966).
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Application 14/062,550
Castonguay’s disclosure that the aging of the stone/workpiece is “mostly by
friction but also by impact” and that the amount of “impact” “depends on the
biasing means and the operating conditions used, among other factors.”
Castonguay 10:21—24; see also Ans. 3. Castonguay further recites such
steps as “allowing the abrasive tool to follow a surface profile of the stone
while roughing and/or polishing the surface thereof’ and “maintaining
contact between the abrasive tool and the surface of the stone until aged.”
Castonguay 4:7—12 (emphasis added).
In view of the above teachings in Castonguay, we are not persuaded
the Examiner erred in finding that Castonguay teaches the limitation of “the
abrasive element operatively mounted to the housing for substantially
continuous contact with the hard surface.”
Appellant further contends that Castonguay “teaches away” from a
feature that “would smooth the hard surface instead of creating a rough and
antique appearance” and that any modification of Castonguay to do so
“would render Castonguay unsatisfactory for its intended purpose.” App.
Br. 7; see also Reply Br. 6. However, although Castonguay indeed
discusses “roughing” a surface (see supra), Castonguay also discusses
“polishing” a surface (see supra), and Appellant does not explain how a
polished surface is not a smooth surface. We are consequently not
persuaded by either of Appellant’s contentions.
Appellant additionally contends, “the established function of the
abrasive tool 6 of Castonguay is to bounce on an artificial stone to create a
rough appearance.” App. Br. 8. However, as indicated above, this is only a
partial representation of the teachings of Castonguay. Such assertion does
not take into account the additional teachings in Castonguay regarding the
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Appeal 2015-006200
Application 14/062,550
polishing of the work surface. We thus disagree with Appellant that the
established function of Castonguay is limited to bouncing/impacting the
stone because Castonguay is also directed to biasing a tool toward a stone so
as “to follow a surface profile of the stone” (i.e., “maintaining contact” with
the stone) such that the aging process occurs “mostly by friction but also by
impact.” Castonguay 4:8—11; 10:21—22; see also Castonguay 11:15—18.
In summation, and based on the record presented, we are not
persuaded the Examiner erred in rejecting claim 1, and dependent claims 2—
4 and 8—14, as being obvious over Castonguay and Palushaj.
Claim 5
Claim 5 depends from claim 1 and recites the additional limitation of
“the abrasive element having a width and a length and the width is greater
than the length and the abrasive element is a blade.” Emphasis added. The
Examiner’s Final Office Action is silent regarding this highlighted language
and, when this silence is noted by Appellant (see App. Br. 9), the Examiner
states, “[hjowever, as shown in Fig. 27 of Castonguay, the width of the
spring blade is greater than the length.” Ans. 3. No further explanation or
analysis is forthcoming from the Examiner on this point.
Appellant contends that parent claim 1 recites the limitation of the
abrasive element being mounted “for substantially continuous contact with
the hard surface” and that the embodiment disclosed in Figure 27 of
Castonguay does not satisfy this limitation. Reply Br. 8; see also id. at 9.
The Examiner does not explain how this identified embodiment satisfies all
the limitations of claim 5, or “how/why it is being modified” to meet such
limitations. Reply Br. 8—9. We agree with Appellant. The Examiner’s
silence fails to provide the requisite “articulated reasoning with some
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Appeal 2015-006200
Application 14/062,550
rational underpinning to support the legal conclusion of obviousness.”
Reply Br. 8—9 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).
Accordingly, we reverse the Examiner’s rejection of claim 5, and its
dependent claims 6 and 7, as being obvious over Castonguay and Palushaj.
Claim 15
Appellant’s arguments regarding independent claim 15 track those
discussed above regarding independent claim 1. App. Br. 10-13; see also
Reply Br. 7. For similar reasons, we are not persuaded by such arguments.
We sustain the Examiner’s rejection of claim 15 as being obvious over
Castonguay and Palushaj.
Claim 16
Claim 16 depends from claim 15 and, like claim 5 discussed above,
recites the additional limitation of the abrasive element having a width and a
length “and the width is greater than the length.” For reasons like those we
expressed in connection with claim 5, we agree with Appellant that the
Examiner’s silence regarding how the Examiner relies on the various
embodiments of Castonguay, including that of Figure 27, to satisfy all of the
limitations of dependent claim 16 and its parent claim is not sufficient to
warrant a rejection of this claim. App. Br. 13—14. We reverse the
Examiner’s rejection of claim 16, and dependent claims 17—20, as being
obvious over Castonguay and Palushaj.5
5 Claim 17 recites the additional limitation of “the acute angle is between 25
degrees and 60 degrees.” The Examiner finds that “discovering an optimum
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Appeal 2015-006200
Application 14/062,550
DECISION
The Examiner’s rejection of claims 15—20 as being indefinite is
affirmed.
The Examiner’s rejection of claims 1—4 and 8—15 as being obvious
over Castonguay and Palushaj is affirmed.
The Examiner’s rejection of claims 5—7 and 16—20 as being obvious
over Castonguay and Palushaj is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
value of a result effective variable involves only routine skill in the art.”
Final Act. 5; see also Ans. 4. Appellant does not address the Examiner’s
reliance on a result effective variable, or whether Castonguay discloses such
a variable (such as due to the flexing of spring 8 as depicted in Figure 3 of
Castonguay and discussed therein). Instead, Appellant presents arguments
similar to those provided with respect to claim 1 that were not found
persuasive. App. Br. 14—15. Nevertheless, claim 17 depends from claim 16
and, because we reverse the Examiner’s rejection of parent claim 16, such
reversal likewise extends to dependent claim 17.
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