Ex Parte Scaletta

Board of Patent Appeals and Interferences

Dec 18, 2008

11314259 (B.P.A.I. Dec. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD SCALETTA
____________

Appeal 2008-5373
Application 11/314,2591
Technology Center 1700
____________

Decided: December 18, 2008
____________

Before THOMAS A. WALTZ, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application 11/314,259, Drywall Taping Tool, filed 21 December 2005.
The specification is referred to as the “259 Specification,” and is cited as
“Spec.” The real party in interest is listed as Richard Scaletta. (Appeal Brief
filed 19 November 2007 (“Br.”), 2).
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A. Introduction
Richard Scaletta (“Scaletta”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection of claims 1-19, which are all of the pending claims.
We AFFIRM.
The subject matter on appeal relates to a drywall tape dispenser.
Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
Claim 1
A drywall tape dispenser, comprising:
a frame having first and second frame sides and at least
a first frame edge between the first and second frame
side, the first frame edge having a width;
an axle operatively connected to at least one of the first and
second frame sides,
the axle adapted to receive a roll of drywall tape;
a guide rod operatively connected to at least one of the first and
second frame sides,
the guide rod positioned below the axle;
a guide slot operatively connected to at least one of the first and
second frame sides,
the guide slot adapted to guide a length of drywall tape in
a substantially vertical direction; and
a trimmer located downstream of the guide slot; and
a container suitable for holding joint compound, wherein
the frame sits inside the container to a depth of at least
one-half of the shortest of the first and second frame
sides.
(Claims App., Br. 11-12; indentation and paragraphing added.)
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The Examiner has maintained the following grounds of rejection:2
A. Claims 1-9 and 11-19 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Wales,3 Mills, 4 and
Wagner.5
B. Claims 1 and 10 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Cavanaugh 6, Wallace,7 and
Wagner.
Scaletta has not directed arguments to the patentability of individual
claims. Accordingly, we select claim 1 to decide the appeal with respect to
these rejections. 37 C.F.R. § 41.37(c)(1)(vii).
Scaletta does not appear to contest any of the Examiner’s findings of
facts as to the prior art references. Rather, Scaletta argues that the Examiner
erred in Rejection A by failing to establish an adequate motivation to
provide the dispenser taught by Wales with an axle for the drywall tape roll
as taught by Mills; and to provide a trimmer as taught by Wagner. Scaletta
argues that the Examiner erred in Rejection B by relying on references that
teach positioning the drywall tape roll outside and above the joint compound
container rather than within the container, and by failing to establish

2 Examiner’s Answer mailed 20 December 2007 (“Ans.”).
3 Jonathan R. Wales, Apparatus for Dispensing and Applying Materials,
U.S. Patent 2,087,633 (1937).
4 Gregory B. Mills, Gypsum Wallboard Taping System, U.S. Patent
4,996,941 (1991).
5 Michael S. Wagner, Drywall Tape Mud Applicator, U.S. Design Patent
D438,770 S (2001).
6 W.T. Cavanaugh and George E. Viera, Apparatus for Applying Filler to
Tape, U.S. Patent 2,348,166 (1944).
7 Forrest E. Wallace, Dispensing Device for Dry Wall Tape and Joint
Cement, U.S. Patent 3,669,070 (1972).
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motivation to add the trimmer taught by Wagner to the dispenser taught by
Cavenaugh.
B. Findings of Fact
Findings of fact ("FF") throughout this Decision are supported by a
preponderance of the evidence of record.
The 259 Specification
1. According to the 259 Specification, the invention relates to devices
for applying joint compounded drywall tape to a wall. (Spec. 1:8-9.)
2. The 259 Specification recites a number of desirable features the
invention on appeal is intended to embody. (Spec. 2:25-3:12; [0007].)
3. Chief among these features in importance for this appeal is the
statement that “[i]t is desirable to provide a device that fits substantially
within or entirely within the container so as not to interfere with the handle
of the container or even the lid of the container, which makes moving the
container and device simpler and safe.” (Spec. 3:4-6.)
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4. Figures 1 and 2 of the 259 Specification are shown below:

{Figures 1 and 2 show embodiments of a drywall tape dispenser}8
5. In the words of the 259 Specification, “as shown in FIGURE 1 . . . the
frame 10 may fit substantially within a container . . . ” (Spec. 8:16-17.)
6. The 259 Specification continues, “[b]y ‘substantially within’ it is
meant that the frame 10 may sit inside the container to a depth of at least one
half of the shortest of the two frame sides 20, 30.” (Spec. 8:18-20.)
7. The text of the 259 Specification concludes with the caveat that that
“[i]t is intended to include all such modification and alterations in so far as
they come within the scope of the appended claims or the equivalents
thereof.” (Spec. 17:28-18:2.)

8 The text in curly braces following the Figures is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for publication
of this Decision on the USPTO website pursuant to the Freedom of
Information Act. It is not part of the Decision.
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Wales
8. Features of the dispensing device described by Wales are shown in
Figures 3 and 4, which are reproduced on below:

{Figures 3 and 4 are said to show a dispensing device.}
9. Wales describes a dispenser particularly directed to dispensing
materials such as roofing paper coated with a roofing cement to seal lapped
joints between adjacent courses of roofing paper. (Wales 1:2:22-45.)
10. Paper roll 30 is positioned between legs 20 and 21 of the bail, which
is set in container 5 (Wales 2:1:69-70), which is filled with the coating
material (id. at 53-56). The paper is fed under bail crossbar 19 and then up
through slot 14 in the lid of the container. (Id. at 68-75.)
11. Wales does not describe an axle holding roll 30, nor a trimmer.
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Cavenaugh
12. Cavenaugh Figures 1 and 2 are shown below:

{Cavenaugh Figures 1 and 2 are said to show sideviews of a tape dispenser}
13. Cavenaugh teaches a dispenser having vertical standards 15 that stand
on platform 14 where standards 15 have slots 16 for receiving mandrel 17
that rotatably supports a roll of paper tape 18. (Cavenaugh 1:2:1-5.) Guide
member 19 extends downwardly from platform 14 and contain chute 20, the
bottom of which supports a roller 21. (Id. at 11-20.) Flat guide 22 also
extends down and supports a roller 23 that guides the tape back up through a
slot 26 between gauge member 25 and blade 24 that scrapes off excess
plaster from the paper. (Id. at 27-48.)
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The Rejections and the Responses
Rejection A
The Examiner finds that Wales describes a dispenser meeting all the
limitations of claim 1 but for the axle connected to at least one of the frame
sides to hold the roll of tape, and the trimmer. (Ans. 3.) The Examiner finds
that Mills describes such an axle, and that Wagner describes such a trimmer.
(Id. at 4.) The Examiner argues that it would have been obvious to provide
the Wales device with an axle to support the roll of drywall tape. (Id.)
Similarly, the Examiner argues that it would have been obvious to provide
the Wales device with a trimmer to provide a means to cut the tape. (Id.
at 4.)
Scaletta does not appear to contest any of the Examiner’s factual
findings regarding the references. Rather, Scaletta argues that the
obviousness rejection is improper because there is no “self motivation” in
Wales “for its teachings to be combined with one or more references.”
(Br. 7.) Wales, in Scaletta’s view, lacks any disclosure of deficiencies or
shortcomings that might motivate a person having skill in the art to modify
the disclosed dispenser. (Id.) Moreover, according to Scaletta, both Mills
and Wagner teach away from the combination with Wales. (Id. at 8.) In
Scaletta’s view, there is no need in the Wales dispenser for the axle provided
by Mills9 because the roll is already supported in Wales because the roll is
inside the bucket or canister. (Id.) Scaletta also argues that the Wagner
cutter is disclosed to be useful only at the edge of a container, and that it

9 Or for the axle described by Wagner (Br. 8), although the Examiner has
not relied on Wagner for this teaching.
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would have no utility in the Wales dispenser, in which the tape exits the
container through an orifice in the middle of the lid. (Id. at 9.)
Rejection B
The Examiner finds that Cavenaugh describes a tape dispensing
device that meets all the limitations of claim 1 but for an axle “mounted on
the first or second frame sides and a trimmer downstream.” (Ans. 7.)
The Examiner reads the frame on the side surfaces of the guide
member 19 and the flat guide 22, and concludes that Cavenaugh is silent as
to a mandrel (i.e., an axle) mounted on the first or second frame sides. (Ans.
7.) The Examiner also finds that Cavenaugh does not describe a trimmer.
(Id.) The Examiner finds that Wallace describes an axle supporting a roll on
a frame side, and that Wagner describes a trimmer. (Id.) The Examiner
argues that it would have been obvious to modify the Cavenaugh dispenser
by providing the mandrel on the frame sides as shown by Wallace. (Id.)
Similarly, the Examiner argues that it would have been obvious to provide a
trimmer, as shown by Wagner. (Id.)
Scaletta argues first that modifying Cavenaugh’s dispenser in the
manner described would be physically impossible because “[t]here simply
isn’t enough free volume inside bucket 10 to house inverted mandrel 17 and
roll of paper tape 18. If such a change were effected, the Cavenaugh et al.
apparatus would not function.” (Br. 10.) Moreover, Scaletta argues that
each of Cavenaugh, Wallace, and Wagner describe a roll of tape on an axle
that is outside and above the container. (Id.) Scaletta concludes that
“combining Cavanaugh et al. with the Wallace would not arrive at the
claimed invention because such combination would not result in a tape
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dispenser having a frame that sits inside a container . . . ” (Id.) Scaletta
repeats the same argument against Wagner summarized supra.
C. Discussion
The burden is on Scaletta, as the Appellant, to prove reversible error
in the rejections of record. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie
obviousness.”) (citation omitted).
During prosecution of an application for patent, the claims are to be
read broadly. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (“the PTO
applies to the verbiage of the proposed claims the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”)
Moreover, limitations are not to be read from the specification into the
claims. In re Hiniker, 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“Although
operational characteristics of an apparatus may be apparent from the
specification we will not read such characteristics into the claims when they
cannot be fairly connected to the structure recited in the claims.”) (citation
omitted).
Scaletta’s objections are without merit. The absence of disclosures of
shortcomings or deficiencies in Wales’ patent disclosure is irrelevant to the
issue of obviousness as it is the prior art taken as a whole that must be
considered. Moreover, Scaletta has not directed our attention to any credible
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evidence that the references “teach away” from the proposed combination.
In particular, Scaletta has not shown that there are any teachings in the
reference warning the person of ordinary skill against using an axle or
trimmer in the Wales dispensing device; nor has Scaletta shown that there
are any teachings that an axle or trimmer should not, or cannot be used. Cf.
Para-Ordnance Manufacturing, Inc. v. SGS Importers International, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state
that a feature “should not” or “cannot” be used in combination with other
features in the prior art.) In any event, the Examiner explained that the axle
would help support the roll (Ans. 4)—more particularly, that the axle would
help keep the roll in position inside the canister to maintain easy feeding of
the tape (id. at 8-9). These are advantages that anyone who has pulled paper
from a roll would appreciate, and one that would have been well within the
level of ordinary skill in the relevant arts to perceive and implement.
Scaletta has failed to show any particular circumstances in the prior art
relied on by the Examiner that would have obscured these advantages from
the view of the ordinary worker. Similarly, we are not persuaded that a
person having ordinary skill in the relevant arts would have understood
Wagner’s disclosure of a trimmer in a tape-dispensing device to have been
limited to the extreme particulars of position and double-edged structure
suggested by Scaletta. Again, Scaletta has not directed our attention to any
credible evidence that the teachings of the references would have been
understood so narrowly. The evaluation of obviousness is to be conducted
against the background of the ordinary worker, who is, as the Supreme Court
observed, "a person of ordinary creativity, not an automaton." KSR Int'l Co.
v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007).
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More substantively, Scaletta construes the language in claim 1, that
“the frame sits inside the container to a depth of at least one-half of the
shortest of the first and second frame sides,” as requiring that the roll be held
inside the container. (Br. 8, 10.10) Scaletta then argues that the teachings of
references that place the axle and roll of tape “outside and above” the
container cannot lead to the claimed invention because they do not result in
or point toward this limitation. (Br. 8, 10.) Although we do not doubt that is
what Scaletta intended, the Examiner’s response, that “the claims as recited
do not require the axle be mounted inside of the bucket or container”
(Ans. 10), is correct. The 259 Specification does not define the term
“frame” in such a way that a frame cannot extend above and outside the
container. Statements such as a dispenser is provided “comprising a frame
that fits entirely inside a standard multi-gallon bucket” (Spec. 3:15-16) are,
at most, descriptions of preferred embodiments. More general statements
are found in the 259 Specification, e.g., “as shown in FIGURE 1 . . . the
frame 10 may fit substantially within a container . . . .” (Spec. 8:16-17; FF 5;
emphasis added.) The Examiner’s interpretation is also consistent with the
general descriptions of the frame (e.g., Spec. 9:18 through 10).11

10 The 259 Specification uses essentially the same language to define the
frame being placed “substantially within” the drywall compound container.
(Spec. 8:18-20; FF 6.)
11 The scope of the term “frame” as used in claim 1 is emphasized by
consideration of the device shown by Cavenaugh. There are no definitions
of the term “frame” or limitations in claim 1 that exclude the entire structure
shown in Cavenaugh Figures 1 and 2, comprising standards 15, platform 12,
guide member 19, and flat guides 22 from being regarded as a “frame.”
Viewed in this light, the Figures show that the frame sits in the container to a
depth of at least one half the frame side. As discussed infra, the Examiner’s
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As our reviewing court put the matter in a similar situation, “[w]e
decline to attempt to harmonize the applicants' interpretation with the
application and prior art. Such an approach puts the burden in the wrong
place. It is the applicants’ burden to precisely define the invention, not the
PTO's. See 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one
or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.”).” In re Morris, 127
F.3d 1048, 1056 (Fed. Cir. 1997).
Finally, we find that Scaletta’s argument that the Examiner’s
combination of Cavenaugh and Wallace would render the Cavenaugh
dispenser inoperable is not credible, as it appears to rely on substantially
copying apparent relative dimensions of various components in the
references. We are confident, however, that the ordinary mechanic would
not copy such dimensions. Rather, he or she would adapt the dimensions of
the various structures so they would continue to perform their intended
functions in the new setting. Nowhere does Scaletta direct our attention to
teachings in the prior art indicating that certain features could not be
modified as might be necessary to achieve the modifications proposed by the
Examiner without destroying the function of the Cavenaugh dispenser. As
noted supra, attributing such shallow abilities is improper, particularly
when, as shown by the variety of tape dispensers shown in the record of this
appeal, considerable mechanical ingenuity has been displayed.

suggested modification also fully supports the legal conclusion of
obviousness.
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D. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1-9 and 11-19 under
35 U.S.C. § 103(a) in view of the combined teachings of Wales, Mills, and
Wagner is AFFIRMED;
FURTHER ORDERED that the rejection of claims 1 and 10
under 35 U.S.C. § 103(a) in view of the combined teachings of Cavanaugh,
Wallace, and Wagner is AFFIRMED; and
FURTHER ORDERED that no time period for taking any
subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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