Ex Parte Queen et al

Board of Patent Appeals and Interferences

Feb 25, 2011

11549291 (B.P.A.I. Feb. 25, 2011)

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.
11/549,291 10/13/2006 Donna R. Queen 09820001AA 6735
30743 7590 02/25/2011
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
XAVIER, VALENTINA
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
02/25/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONNA R. QUEEN and GIA L. OWENS
____________

Appeal 2009-009237
Application 11/549,291
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009237
Application 11/549,291

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STATEMENT OF THE CASE
Donna Queen and Gia Owens (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting under 35 U.S.C.
§ 103(a) claims 1-9, 11-15 and 18-22 as unpatentable over Struthers (US
7,159,257 B1, issued Jan. 9, 2007) and Vadis (US 2005/0120963 A1,
published Jun. 9, 2005). Claims 10, 16, 17, 23 and 24 have been canceled.
We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to disposable protective covers for
household and personal items. Spec. 1, ll. 9-10 and figs. 1A and 1B.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A disposable protective cover for a to-be-protected planar
or generally planar surface, comprising:
a first exterior surface comprising a first adhesive that
detachably adheres to the to-be-protected surface, the first
surface having a surface area at least covering the
to-be-protected surface; and
a second exterior surface comprising a second adhesive;
the first surface and the second surface disposed
outwardly from each other.

SUMMARY OF DECISION
We AFFIRM.

OPINION
The obviousness rejection over Struthers and Vadis
With respect to the rejection of independent claim 1 over the
combined teachings of Struthers and Vadis, Appellants argue that the
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Application 11/549,291

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Examiner’s conclusion of obviousness is based on improper hindsight
because “the Examiner now has had the benefit of Applicants’ claims and
specification.” Reply Br. 2. According to Appellants, because (1) Struthers
discloses “protecting furniture from a dog” and Vadis fails to disclose
“protecting furniture”; and (2) Struthers does not require “shak[ing] the sofa
to dislodge the cat or dog,” the Examiner’s conclusion of obviousness is
based on improper hindsight. See App. Br. 16 and 18.
At the outset, we first note that Appellants appear to be attacking the
teachings of Struthers and Vadis individually, rather than the combination of
Struthers and Vadis. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co, 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Second, obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, as noted by the
Examiner, the disclosure of Vadis was used to merely show the use of a low-
tack adhesive on a surface for attracting debris. See Ans. 8.
Furthermore, it is well recognized that any judgment on obviousness
is in a sense necessarily a reconstruction based upon hindsight reasoning.
But so long as it takes into account only knowledge which was within the
level of ordinary skill at the time the claimed invention was made, and does
not include knowledge gleaned only from the applicant’s disclosure, such a
reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971). In this case, like the Examiner, we find that Struthers discloses a
disposable protective cover 10 comprising a first exterior surface 34
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Application 11/549,291

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including a first adhesive 40 that detachably adheres to furniture (to-be-
protected surface), a second exterior surface 20 including a surface 38 that
attracts and holds pet hair, wherein the first and the second surface are
disposed outwardly from each other. Ans. 4. See also Struthers, col. 7, ll.
59-65; col. 10, ll. 1-4; and fig. 8. We further agree with the Examiner that
Struthers fails to disclose that the second exterior surface 20 includes a low-
tack adhesive. Ans. 4. However, the Examiner found, and we agree, that
Vadis discloses a habitat including a surface 118 having a low-tack adhesive
120 for collecting debris. Ans. 4. See also Vadis ¶¶ 53 and 54 and fig. 11.
Hence, Appellants’ invention is nothing more than Struthers’ disposable
protective cover 10 in which the electrostatic microfibers 38 (See Figure 8 of
Struthers) have been replaced with the low-tack adhesive 120 of Vadis.
Therefore, modifying the disposable protective cover of Struthers to include
the low-tack adhesive of Vadis would not have been uniquely challenging to
a person of ordinary skill in the art, because it is no more than “the simple
substitution of one known element for another.” KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The modification appears to be the product
not of innovation but of ordinary skill and common sense. Moreover,
Appellants have not alleged, much less shown, that the modification of
Struthers to include the low-tack adhesive of Vadis would have been beyond
the skill of a person of ordinary skill in the art.
In conclusion, we agree with the Examiner that one of ordinary skill
in the art would have found it obvious to use the low-tack adhesive of Vadis
“on a top surface [20] of the cover [10] taught by Struthers . . . in order to
attract insects, debris and fleas.” Ans. 6. Therefore, the Examiner has set
forth a reasonable rationale underlying the conclusion of obviousness. As
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Application 11/549,291

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such, we conclude that the Examiner did not rely on impermissible
hindsight, as Appellants urge, but rather relied on the knowledge of those
skilled in the art at the time of the invention.
With respect to the Declaration under 37 C.F.R. § 1.132 of Gia L.
Owens, filed Oct. 12, 2007 (hereafter “First Owens Declaration”), we agree
with the Examiner that the arguments presented are not commensurate with
the scope of the Examiner’s Rejection. Specifically, the First Owens
Declaration refers to the combined teachings of Struthers and Smith (US
4,852,517, issued Aug. 1, 1989), whereas the Examiner’s final rejection is
based on the combined teachings of Struthers and Vadis. See paragraphs 2
and 3 of the First Owens Declaration, App. Br. 24-3. Therefore, we find the
First Owens Declaration unpersuasive.
The Declaration under 37 C.F.R. § 1.132 of Gia L. Owens, filed Jan.
30, 2008 (hereafter “Second Owens Declaration”) merely states that: (1)
Struthers and Vadis disclose different inventions (a pet bed cover and a
cricket-keeping habitat, respectively); (2) Struthers does not disclose that
the pet bed cover needs to be shaken to dislodge a dog or cat; and (3)
maintaining dogs and cats is different from crickets. See paragraphs 3-7 of
the Second Owens Declaration, App. Br. 24-1 and 24-2. However, all of
these statements essentially mirror the arguments presented in the Appeal
and the Reply Brief and have been discussed supra. Hence, we find the
Second Owens Declaration unpersuasive as well.
In conclusion, for the foregoing reasons, the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Struthers and Vadis is sustained.
With respect to claims 2-9, 11-15 and 18-22, Appellants do not
present separate arguments for patentability of these claims. App. Br. 16-18.
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Application 11/549,291

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Accordingly, the rejection of claims 2-9, 11-15 and 18-22 is likewise
sustained.

DECISION
The decision of the Examiner is affirmed as to claims 1-9, 11-15 and
18-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls

WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190