Ex Parte ROSE

Board of Patent Appeals and Interferences

Apr 27, 2004

09354203 (B.P.A.I. Apr. 27, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.

Paper No. 27

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MACK (NMI) ROSE
__________

Appeal No. 2004-1046
Application No. 09/354,203
___________

ON BRIEF
___________

Before PAK, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2003) from the examiner’s rejection of claims 1 through 3 and 7
through 9 in the above-identified application. (Non-final
Office action mailed Mar. 23, 2001, paper 12.) Claims 4 through
6 and 10, the only other pending claims, have been allowed.
(Id.)
The subject matter on appeal relates to a “drywall bench
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[on which a step is attached] so as to provide an intermediate
platform that one may utilize to reach the top platform provided
by the bench.” (Specification, page 1, lines 4-7.) According
to the appellant, “[t]he step of the present invention also
provides a safety feature that substantially lessens the
likelihood that the drywall bench will collapse when supporting
a load.” (Id. at page 1, lines 7-9.) Further details of this
appealed subject matter are recited below in representative
claim 7, which is drafted in Jepson format:
7. In a drywall bench having a bench platform,
folding legs pivotally connected to the bench
platform, support rails connected between the folding
legs and including brackets having rollers rotatably
received thereon, step rails receiving the rollers and
thereby connecting between the support rails such that
the folding legs connected to the support rails may be
pivoted between operative and storage positions, the
rollers being capable of moving within a track
provided by the step rails such that the associated
support rails and folding legs remain connected as the
folding legs are pivoted, locking braces connected
between the bench platform and the support rails to
selectively lock the folding legs into the operative
position, and telescoping legs selectively received by
the folding legs, the improvement comprising:
a support member selectively received by at least
a portion of one of the step rails; a spacer member
extending downwardly from said support member; and a
step member extending from said spacer member such
that said step member lies substantially parallel to
the bench platform.[1]

[1] Because the claim is drafted in Jepson format, the
preamble recitations are “impliedly admitted to be old in the
art.” Cf. In re Ehrreich, 590 F.2d 902, 909-10, 200 USPQ 504,
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Application No. 09/354,203

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In addition to the appellant’s admitted prior art (Figure
1; specification, page 1, line 12 to page 3, line 27), the
examiner relies on the following prior art references as
evidence of unpatentability:
Valentino 4,222,136 Sep. 16, 1980

Hays 4,782,916 Nov. 08, 1988

Acea FR 2,407,330 May 25, 1979
(published FR application)2

Claims 1 through 3 and 7 through 9 on appeal stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of the admitted prior art (Figure 1) and Acea,
Valentino, or Hays. (Examiner’s answer mailed Jun. 14, 2002,
paper 18, pages 2-3.)
We affirm.3 Because we are in complete agreement with the
examiner’s analysis, we incorporate the reasons set forth in the
answer as our own and add the following comments for emphasis.

510 (CCPA 1979); see also 37 CFR § 1.75(e) (2003)(effective Jan.
31, 1978).

2 We attach to this decision an English language
translation of this reference, which the examiner obtained but
did not formally introduce into the record.

3 The appellant states that although the claims vary in
scope, “for purposes of expediency, they will be treated [i.e.,
argued] together.” (Appeal brief filed Nov. 23, 2004, paper 23,
p. 5.) We therefore select claim 7 from the group of rejected
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The appellant does not dispute the examiner’s determination
that there is some motivation, suggestion, or teaching in the
applied prior art that would have led one of ordinary skill in
the art to combine the admitted prior art with Acea, Valentino,
or Hays, thus arriving at a drywall bench encompassed by
appealed claim 7. Rather, the appellant argues that “[i]f the
present invention were obvious, [] it would already be in use in
the industry inasmuch as there is no practical reason, such as
cost or difficulty of manufacture that would explain its
absence” and that “the claimed combination is not obvious
inasmuch as there has been a long felt need in the art for
Applicant’s invention, and, further, Applicant has enjoyed
outstanding commercial success with his invention.” (Appeal
brief filed Nov. 24, 2003, page 9; reply brief filed Aug. 19,
2002, paper 19, page 2.)4
The appellant’s position lacks merit. The appellant does
not cite, and we are unaware of, any legal authority supporting
the notion that an examiner must show that a claimed invention

claims and decide this appeal on the basis of this claim alone.
37 CFR § 1.192(c)(7) (2003)(effective Apr. 21, 1995).

4 The appellant submits that “the argument [] focuses on
‘objective indicia of unobviousness’” and that “the present
appeal can essentially be reduced to an issue of ‘secondary
considerations’” (appeal brief, pages 5 and 9), thus conceding
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Application No. 09/354,203

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has already been used in the industry to establish a prima facie
case of obviousness under 35 U.S.C. § 103(a). Indeed, the
appellant’s argument runs directly counter to the obviousness
statute itself and confuses the provisions of 35 U.S.C. § 102
with those of 35 U.S.C. § 103.
We next consider the appellant’s arguments based on (1)
long felt need and failure of others and (2) commercial success,
both of which, if proven, are indicia of nonobviousness. It is
well settled that once a prima facie case of obviousness is
established, the burden of going forward shifts to the
applicant. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); In re Mayne, 104 F.3d 1339, 1343, 41
USPQ2d 1451, 1455 (Fed. Cir. 1997).
To overcome the examiner’s prima facie case of obviousness
based on a long-felt need and failure of others, the appellant
must provide sufficient “tangible evidence to support a
contention that [the claimed] invention actually has provided a
long-awaited, widely-accepted, and promptly-adopted solution to
the problem extant in the art, or that others [] had tried but
failed to solve that problem.” In re Mixon, 470 F.2d 1374,
1377, 176 USPQ 296, 299 (CCPA 1973).

that the examiner has established a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103.
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We are not persuaded that the appellant has met his burden
of proving long-felt need and failure of others. As evidence,
the appellant relies on the following:
1. declaration of Mack Rose filed Aug. 22, 2000, to which
were attached: (a) a letter from Don Martine of
Martine Drywall of Jan. 21, 2000 (Exhibit A); (b) Nick
Moretti, A Step in the Right Direction, WALLS &
CEILINGS (2000) (Exhibit B); (c) E-mail from John
Friley to “Mack” at mack@macksstep.com (June 29,
2000)(Exhibit C); (d) a letter from Pat Carrasco of
Rocker Chronicles to Mack’s Step Inc. (Exhibit D); a
draft article authored by Pat Carrasco (Exhibit E);
(f) E-mail from Joe Wheeler of The Construction Zone
to “Mack” at mack@macksstep.com (June 17,
2000)(Exhibit F); and (g) Mack’s Step Inc. “Sales by
Item Detail” (Jan. 1 through Aug.10, 2000)(Exhibit G);
2. declaration of Ralph J. Adkins filed Aug. 22, 2000;
3. declaration of Maxx Belton filed Aug. 22, 2000; and
4. supplemental declaration of Mack Rose filed Dec. 26,
2000, to which was attached a letter from Gary Bowman
of Bowman Master Craftsmen to Mack’s Step (Exhibit H).
There can be no question that the appellant’s relied upon
evidence suggests that certain individuals considered a specific
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commercial product, which according to the appellant falls
within the scope of the claimed invention, to be meritorious
(Exhibits A through F and H). Nevertheless, the appellant has
not identified “tangible evidence” indicating that the claimed
invention provides “a long-awaited, widely-accepted, and
promptly-adopted solution to the problem extant in the art.”5
While Exhibit G shows that the sales for a specific bench step
totaled over 400 units, these sales do not necessarily indicate
that the claimed drywall bench was widely-accepted as a solution
to the problem extant in the art. Even if the only utility for
the sold bench step is in a drywall bench, we are not told that
a sale of about 400 units over about 8 months constitutes a
significant portion of total sales of drywall benches during the
same period, i.e., that the claimed invention was in fact
widely-accepted.

5 Nor has the appellant proffered any evidence to indicate
that one of ordinary skill in the art would have considered the
advantages of the claimed invention to be truly unexpected. In
re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA 1971)
(holding that the appellants failed to rebut a prima facie case
of obviousness where the asserted differences between the
claimed foams and prior art foams were not shown to be
significant); In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139,
143 (CCPA 1973) (explaining that in order for a showing of
unexpected results to be probative evidence of nonobviousness,
an applicant must establish (1) that there actually is a
difference between the results obtained through the claimed
invention and those of the prior art and (2) that the difference
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Moreover, the appellant does not identify tangible evidence
establishing that the actual structure(s) of the sold units are
reasonably commensurate with the “support member” as broadly
recited in appealed claim 7. In this regard, we observe that
appealed claim 7 does not necessarily require the support
member, as broadly recited, to provide any of the advantages
discussed in the declarations or in the specification.
Accordingly, it cannot be said that the appellant has presented
“tangible evidence to support a contention that [the claimed]
invention actually has provided a long-awaited, widely-accepted,
and promptly-adopted solution to the problem extant in the art.”
The appellant has also failed to prove failure of others.
Although the appellant states that “buckets are commonly
employed to aid a drywaller in stepping up onto the bench
platform” and to the appellant’s knowledge “no satisfactory
alternative to the use of a bucket was introduced to the drywall
industry prior to” (emphasis added) the claimed invention (Aug.
22, 2000 declaration, page 1), we are not told that all drywall
benches suffer from the problems described in the specification.
Nor are we told that the use of buckets (or other similar
objects) was the only alternative solution. If other

actually obtained would not have been expected by one skilled in
the art at the time of invention).
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alternatives exist, there is no explanation on what these
alternatives might be and why they are considered
unsatisfactory.
As to the appellant’s argument based on commercial success,
the appellant must prove that the claimed invention is
commercially successful and that its sales directly resulted
from the merits of the claimed invention. In re Huang, 100 F.3d
135, 139-40, 40 USPQ2d 1685, 1689-90 (Fed. Cir. 1996). Not only
must the appellant provide evidence of the number of units sold
but also evidence of the actual share in a given market. Id.
As we discussed above, the appellant has not established
that the sales of a particular bench step necessarily correlate
to the sales of the claimed invention, which is directed to a
drywall bench including the recited support member. Also, the
appellant has not provided any information on actual market
share, i.e., the number of units sold versus the total numbers
of drywall benches sold during the period in question. As
appreciated by the appellant (appeal brief filed Nov. 24, 2003,
page 13)(“400 sales may not be typically appreciated as
evidencing ‘commercial success’”), information regarding the
sales of 400 units, by itself, does not prove commercial success
for the claimed drywall bench. Further, the appellant has not
established that the relied upon sales were a direct result of
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the unique characteristics (i.e., merits) of the claimed
invention and not other economic and commercial factors
unrelated to the merits of the claimed invention, such as
advertising. Id. Indeed, we note the appellant’s admission
that the sales of the bench step elements were fueled by “word-
of-mouth” and Internet advertising. (Aug. 22, 2000 declaration,
page 4.) Accordingly, the appellant has not met his burden of
proving commercial success.
For these reasons and those set forth in the answer, we
affirm the examiner’s rejection under 35 U.S.C. § 103(a) of
appealed claims 1 through 3 and 7 through 9 as unpatentable over
the combined teachings of the admitted prior art and Acea,
Valentino, or Hays.
The decision of the examiner is affirmed.

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Application No. 09/354,203

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Chung K. Pak )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

RHD/jlb

Appeal No. 2004-1046
Application No. 09/354,203

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RAY L WEBER
RENNER KENNER GREIVE BOBAK TAYLOR
& WEBER
1610 FIRST NATIONAL TOWER
AKRON OH 44308