Ex Parte Pisacane

Patent Trial and Appeal Board

Aug 15, 2016

11401686 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111401,686 04/10/2006 Fred Pisacane
95996 7590 08/17/2016
Zeman-Mullen & Ford, LLP
233 White Spar Road
Prescott, AZ 86303
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.
44921.0500 5978
EXAMINER
NGUYEN, DUNG V
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
lzemanmullen@zmfiplaw.com
ktopolewski@zmfiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED PISACANE
Appeal2014-007376
Application 11/401,686
Technology Center 3700
Before LINDA E. HORNER, MARK A. GEIER, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a laminated foam mop head. Claim 1, the
sole independent claim, is reproduced below and is illustrative of the
claimed subject matter:
Appeal2014-007376
Application 11/401,686
1. A laminated foam mop head comprising:
a foam block having a top surface, a bottom surface, and
two side surfaces;
at least one fabric material, without the addition of a
binder, laminated with heat and pressure along both the complete
bottom and side surfaces of the foam block without using an
adhesive such that the shape of the foam block after lamination
retains its block shape; and
a bracket attached to the top surface of the foam block such
that the bottom and side surfaces of the foam block are drawn
upward and inward to form a mop head having an elliptical
shaped cross section and the top surface of the foam block is
pushed inward and not exposed.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Siemund
Mallory
iviattesky
us 3,406,420
us 4,050, 111
us 5,152,809
REJECTIONS
The Examiner made the following rejections:
Oct. 22, 1968
Sept. 27, 1977
Oct. 6, 1992
Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mallory and Mattesky.
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mallory, Mattesky, and Siemund.
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Application 11/401,686
OPINION
Claim 1 rejected for failing to comply with the
written description requirement
The Examiner's Answer identifies two claim limitations asserted to
lack basis in the Specification. Ans. 2. The Examiner states, "[t]he added
limitations 'without the addition of a binder' and 'such that the shape of the
foam block after lamination retains is [sic] block shape' does [sic] not have
support in the original disclosure." Id. Appellant correctly points out that
the first of these limitations was not mentioned in the Final Action. Reply
Br. 1-2; see Final Act. 2. Appellant takes the position that the rejection
based on the "without the addition of a binder" limitation "cannot be deemed
to be part of the current appeal" (Reply Br. 2), and makes no argument about
this limitation.
When an examiner presents an alleged undesignated new ground of
rejection in an Examiner's Answer, an appellant may either file a petition to
the Director seeking to reopen prosecution before the examiner to address
the alleged new ground or file a Reply Brief to address the arguments
presented in the Answer and continue with the appeal. 3 7 C.F .R. § § 41.40
and 41.41. Appellant chose, in this instance, to file a Reply Brief to
continue with the appeal. See 37 C.F.R. § 41.40(a) ("Failure of appellant to
timely file such a petition [under 3 7 C.F .R. § 1.181] will constitute a waiver
of any arguments that a rejection must be designated as a new ground of
rejection."). As pointed out above, Appellant was aware of the asserted new
ground and chose not to address it. Accordingly, in this instance, we will
decide the ground of rejection as stated in the Examiner's Answer.
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Appeal2014-007376
Application 11/401,686
Appellant made no argument concerning the substance of the
Examiner's finding that "without the addition of a binder" was new matter.
"If an appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection." Ex parte
Frye, 94 USPQ 1072, 1075-76, (BPAI 2010) (precedential). Accordingly,
the rejection of claim 1 under 35 U.S.C. § 112, first paragraph, is affirmed.
See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not
err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when
the applicant failed to contest the rejection on appeal). 1
As for the second phrase from claim 1 rejected as new matter,
Appellant argues that Figure 3 and the Specification, paragraph 6, make it
clear that the foam block with laminated fabric is block-shaped before being
attached to the bracket. Appeal Br. 5-6. The Specification, paragraph 6,
clearly states that the bottom and side surfaces of the foam block are
laminated with the fabric before the mop head is attached to the bracket, and
Figure 3 shows the foam block-shaped with fabric laminated to it before
attachment to the bracket. Therefore, we agree with the Appellant that the
limitation "such that the shape of the foam block after lamination retains its
block shape" has support in the original disclosure, and the Examiner's
1 The word "binder" does not appear in the Specification. Nor, based on our
review, is there any description of an analog to or other equivalent of a
binder. Because the Specification is silent about the use, vel non, of a
binder, if we were to consider the issue, we would find no error in the
Examiner's conclusion that the limitation "without the addition of a binder"
lacks support in the Specification.
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Appeal2014-007376
Application 11/401,686
rejection of claim 1 for lack of written description support of this phrase is
reversed.
Claim 1 rejected as obvious in view of
Mallory and Mattesky
Appellant argues that the principle reference, Mallory, fails to teach at
least one fabric material laminated with heat and pressure. Appeal Br. 7.
Appellant also argues that Mallory does not teach laminating over the
entirety of three surfaces of a block of foam. Appeal Br. 8. Turning to the
secondary reference, Appellant argues that Mattesky uses a binder which,
under the influence of heat and pressure, holds the layers together. Appeal
Br. 9 (citing Mattesky 7:47-58). Appellant also argues that the perimeter fin
seal taught by Mattesky (Figure 4) would not be useful in a mop because of
the position of the seal, and therefore that it would not be obvious to
combine Mattesky's lamination technique with Mallory. Appeal Br. 10.
The Examiner cites Mallory as teaching lamination over three sides
(Final Act. 2-3, Ans. 3-4), relying on Mallory's description of ""a web of
net-like material 36 extend[ing] over the outer side and top face of the
sponge in a conventional manner." Ans. 4 (citing Mallory 2:39--41). The
Examiner relies on Mattesky for its teaching of a method of laminating foam
12 to a web 14 with heat and/or pressure without using an adhesive, citing
Mattesky, Figures 2-5, column 4, lines 7--45, and column 6, line 49 through
column 7, line 63. Final Act. 3. The Examiner's Answer points specifically
to Mattesky' s description of a flame lamination technique employed in one
embodiment (Mattesky 4:42--45) in which lamination occurs "without the
addition of any glue, adhesive or other binding additives which might tend to
impair the permeability or free flow of water from one lamina to the other at
their respective interfaces." Ans. 4. Mattesky teaches that this flame
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Appeal2014-007376
Application 11/401,686
lamination technique can be used to laminate sheets "over their entire
abutting surfaces." Mattesky 10:28. Although Mattesky does teach
embodiments that incorporate a binder, this does not limit his broader
disclosure of an embodiment in which bonding is achieved without the
addition of a binder.
Appellant argues that Mallory does not teach lamination because
lamination requires layers to be united by an adhesive or other means.
Appeal Br. 8. Mallory undeniably teaches a fabric that extends over three
faces of a foam block to form a mop. Mattesky teaches a technique for
laminating that does not use adhesive, glue or binders. Final Act. 3. The
Examiner finds "[i]t would have been recognized by one of ordinary skill in
the art that applying the known technique taught by Mattesky to the mop
head of Mallory would have yielded predictable results and results in an
improvement mop head, namely, a mop head that would prevent separation
or disengagement of the web from the foam block." Final Act. 3. We are
not persuaded that the Examiner errs in finding it obvious to combine one of
the lamination methods of Mattesky with the mop head of Mallory to arrive
at the subject matter of claim 1, and so affirm the rejection of claim 1.
Appellant argues for the first time in the Reply Brief that Mattesky
does not teach laminating across the complete bottom and side surfaces of
the foam block. Reply Br. 5-6. This is a new argument, not raised in the
Appeal Brief, not responsive to any argument made in the Examiner's
Answer, and made without a showing of good cause why we should consider
it. The Board does not consider such arguments. 37 C.F.R. § 41.4l(b)(2).
Even if we were to consider the argument, Matte sky is relied on for the
technique of laminating across an entire surface, and Mallory for extending
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Appeal2014-007376
Application 11/401,686
fabric over a bottom and two sides of a foam block to make a mop. Final
Act. 3. Accordingly, this new argument does not address the Examiner's
rejection and so would not be persuasive.
Rejection of claims 2 & 3 as obvious in view of
Mallory, Mattesky, and Siemund
Appellant argues these two claims as a group. Appeal Br. 10-11. We
choose claim 2 as representative, with claim 3 standing or falling with claim
2. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 2 adds to claim 1 that the fabric material comprises a double-
knit, snag-resistant, polyester fabric. The Examiner cites Siemund for its
teaching of a mop head comprising a foam block 10 laminated with a
polyester fabric or fiber textile 12. Final Act. 3. See Siemund 4:67-73. The
Examiner found that it would have been obvious to use the fabric covering
taught by Siemund in the mop of Mallory and adhered as taught by
Mattesky. Final Act. 3.
Appellant does not contest that Siemund teaches the claimed fabric
but argues that this combination is in error because none of the references
teaches adhering the covering fabric on the entirety of three surfaces.
Appeal Br. 11, Reply Br. 7-8. This argument is not persuasive, since, as
discussed above, Mattesky does disclose full surface lamination and Mallory
discloses fabric covering a bottom and two sides of a foam block to make a
mop head. Accordingly, we have not been apprised of error, and the
rejection of claims 2 and 3 is affirmed.
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Appeal2014-007376
Application 11/401,686
DECISION
For the above reasons, the Examiner's rejection of claims 1-3 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv) (2009).
AFFIRMED
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