Ex Parte Rivard et al

Patent Trial and Appeal Board

Feb 22, 2016

12022408 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/022,408 01/30/2008
32692 7590 02/24/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Allen J. Rivard
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.
63659US002 5632
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
02/24/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ALLEN J. RIVARD and GALEN A. FITZEL
Appeal2014-000616
Application 12/022,408
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Allen J. Rivard and Galen A. Fitzel (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, 4,
6-10, and 13-21. 1 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Claims 3, 5, 11, and 12 have been cancelled. Br. 13-14 (filed May 28,
2013).
Appeal2014-000616
Application 12/022,408
CLAIMED SUBJECT MATTER
The claimed invention relates to an apparatus and system for enabling
the quick and easy changing of surface modifying articles relative to a power
tool assembly. Spec. p. 1, 11. 9-11.
Claims 1, 13, and 20 are independent. Independent claim 1 is
illustrative of the claimed invention and reads as follows:
1. An apparatus comprising:
an adapter body having a first major surface and a second
major surface opposing the first major surface;
wherein the first major surface includes a releasable
attachment mechanism comprising one of hook and loop
attachment elements for releasable meshing engagement to a
matable attaching mechanism of a flexible surface modifying
article; and
wherein the second major surface is adapted to engage a
surface of a driving assembly; and
wherein the adapter body has a constn1ction such that
when the mating attaching mechanism of the flexible surface
modifying article is peeled from meshing engagement from the
mating attachment mechanism, tighter meshing engagement
therebetween is inhibited because the adapter body resists
bending.
Br. 13.
REFERENCES RELIED ON BY THE EXAMINER
Young
Beaudry
Edinger
us 3,703,739
US 6,227 ,959 B 1
US 6,394,887 B 1
REJECTIONS ON APPEAL
Nov. 28, 1972
May 8, 2001
May 28, 2002
Claims 1, 2, 4, 6-9, 13-18, and 20 are rejected under 35 U.S.C.
§ 103 (a) as unpatentable over Edinger and Young.
2
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Application 12/022,408
Claims 10, 19, and 21 2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Edinger, Young, and Beaudry.
ANALYSIS
The rejection of claims 1, 2, 4, 6--9, 13-18, and 20 as unpatentable over
Edinger and Young
The Examiner finds that Edinger discloses most of the limitations of
independent claims 1, 13, and 20 including "an abrasive tool with a drive
member 12 with attaching means, an adapter 32 with attachment means on
both sides to attach to the drive member and a sanding member 24, the
adapter having a stiffening portion 37 to keep from bending." Final Act. 2
(citing Edinger, col. 3, 1. 25). The Examiner notes that "[a]lthough Edinger
prefers to mount abrasive article via adhesive, Edinger does disclose using
hook and loop for attachment of one surface to another. Id. (citing Edinger,
col. 4, 1. 58). Moreover, the Examiner relies on Young for "teach[ing] a
sanding member with an adapter having hook and loop attachment means to
attach sanding member including where there are plural attachment elements
34 around periphery to attach sanding member." Id. at 2-3. The Examiner's
conclusion is that it would have been obvious to one of ordinary skill in the
art at time invention was made "to substitute the adhesive attachment area of
Edinger with hook and loop attachment area (taught at col. 4, line 58),
2 The Examiner's listing of claim 20 on page 3 of the Final Action appears
to be a typographical error. See Final Act. 3 (mailed December 28, 2012).
The instance of "20" on page 3 of the Final Action should be "21" inasmuch
as claim 21 (which depends from claim 20) recites the discussed feature, i.e.,
the absence of a fastening element.
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Appeal2014-000616
Application 12/022,408
including a plurality of smaller attachment members around periphery, as
taught by Young, in order to simplify attachment and eliminate unnecessary
material." Id. at 3. The Examiner also "takes Official Notice of the
equivalence of using adhesive or hook and loop in the fastening art for the
use of attachment of one member to another, and the choice of either would
be within the level of ordinary skill." Id.
Appellants assert that "Edinger provides 'an adapter that adapts
between hook or loop or other non-adhesive releasable attachment on a first
surface and releasable adhesive based attachment on a second surface.'" Br.
8 (citing Edinger, col. 1, 11. 53-57) (emphasis omitted). Appellants argue
that "the very purpose of Edinger's adapter 30 is to adapt adhesive backed
abrasive articles." Id. Appellants thus argue that "face 32 of adapter 30
would not, contrary to the Office Action's contentions, include hook or loop,
since Edinger clearly teaches away from this configuration." Id.
We are not persuaded that Edinger teaches away from a hook and loop
attachment that mates with a flexible surface modifying article as recited in
claim 1. "A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). By itself, the statement in Edinger that hook and loop
arrangements are more expensive is not the kind of teaching that would lead
one in a divergent direction from the claimed invention. Edinger, col. 1, 11.
43--45. Indeed, an abrasive pad with hook and loop attachments on both
sides of an abrasive pad is known and used by Young, as relied upon by the
Examiner, which evidences the known desirability of this feature.
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Application 12/022,408
Appellants do not show that the Examiner's proposed substitution would
have been beyond the level of ordinary skill in the art. Neither do
Appellants provide any persuasive reason why the results of the substitution
would have been unpredictable. Thus, we are not apprised of error in the
Examiner's determination that such a substitution would have been obvious.
Appellants also argue that modifying Edinger to include "hook or loop
to affix face 55 to magnetic sheet 56 runs contrary to logic and Edinger's
disclosure since the very purpose of abrasive sheet 54 is to add magnetic
material (e.g., 56) and an attachment mechanism (e.g., hook and loop of face
57) to commercially available abrasive sheets." Br. 9 (citing Edinger, col. 4,
1. 58; Figs. 2, 3 and 6.
We are not persuaded by Appellants' argument on this point.
Edinger's use of releasable adhesive backed abrasive sheets rather than hook
and loop backed abrasive sheets is based on cost not on an inability to use
hook and loop backed abrasive sheets. See Edinger, col. 1, 11. 41--4 7.
Where, as here, a proposed modification simultaneously has both advantages
and disadvantages (increased cost), the reason or motivation to combine the
teachings is not necessarily obviated. See Medi chem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006). "That a given combination would not
be made by businessmen for economic reasons does not mean that persons
skilled in the art would not make the combination because of some
technological incompatibility. Only the latter fact would be relevant." In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Here, Appellants provide
no persuasive reason why a person of ordinary skill in the art would not have
combined the teachings of the references as the Examiner proposes.
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Appeal2014-000616
Application 12/022,408
In view of the above, and having carefully considered all of
Appellants' arguments, we do not agree that the positions taken by the
Examiner with respect to the unpatentability of claims 1, 13, and 20 are in
error. This being the case, we sustain the Examiner's rejection of these
claims, as well as of claims 2, 4, 6-9, and 14--18, dependent therefrom, as
unpatentable over Edinger and Young.
The rejection of claims 10, 19, and 21 as unpatentable over Edinger, Young,
and Beaudry
The Examiner relies on Beaudry to teach "a sanding element attached
to an adapter, wherein adapter (110) is attached to driving member (D) via a
threaded fastener (G)." Final Act. 3. The Examiner's position is that "[t]he
back-up surface does not have fastening elements since a threaded member
is used." Id. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art at time invention was made "to substitute the
attachment means of Edinger with a threaded fastener, as taught by Beaudry,
in order to more securely couple adapter to tool," and that "the choice of
either is within the level of ordinary skill." Id.
Appellants argue that "[t]he ready switching between abrasive units
would be subverted if, as the Office Action suggests, Edinger were to
include a threaded fastener as taught by Beaudry in lieu of the hook or loop
material of face 34." Br. 11. Appellants argue that, moreover, "[i]ncluding
a retainer bolt such as described by Beaudry for securing adapter 30 would
thus, require additional steps which Edinger seeks to avoid." Id.
We are not persuaded by Appellants' arguments. The substitution
proposed by the Examiner would neither subvert the ready switching of
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Application 12/022,408
Edinger nor require additional steps. Specifically, as seen in Figure 7 of
Beaudry, the threaded fastener G is used in conjunction with hook and loop
attachments 116 so that "sanding disk 114 may be quickly and easily
replaced as it becomes worn without the necessity for replacing the disk-
shaped body 100 of the sanding sponge 1 O." Beaudry, col. 6, 11. 22-26; Fig.
7. Thus, if Edinger' s adapter were modified to include a fastener,
replacement of a sanding disk using the hook and loop attachments would
not be affected. Moreover, fastening Beaudry's sanding sponge 10 to sander
D requires the step of threading fastener G to sander D, which is the same
number of steps as attaching the hook and loop elements on the device of
Edinger to the adapter. As such, Appellants do not persuasively explain how
additional steps would be required or how the alleged additional steps would
be so undesirable that the Examiner's proposed combination would not have
been obvious.
For the foregoing reasons, we are not apprised of error in the
Examiner's combination of Edinger, Young, and Beaudry. Accordingly, we
sustain the rejection under 35 U.S.C. § 103(a) of claims 10, 19, and 21 as
unpatentable over Edinger, Young, and Beaudry.
DECISION
The decision of the Examiner to reject claims 1, 2, 4, 6-9, 13-18, and
20 under 35 U.S.C. §103(a) as being unpatentable over Edinger and Young
is affirmed.
The decision of the Examiner to reject claims 10, 19, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Edinger, Young, and Beaudry
is affirmed.
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Appeal2014-000616
Application 12/022,408
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
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