11324411 (B.P.A.I. Aug. 4, 2009)

Ex Parte Schnoebelen

Board of Patent Appeals and InterferencesAug 4, 2009

11324411 (B.P.A.I. Aug. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOHN E. SCHNOEBELEN JR. ____________ Appeal 2009-004301 Application 11/324,411 Technology Center 1700 ____________ Heard: July 23, 2009 Decided: August 05, 2009 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 65, 66, 68-70, 79-81, and 83-87. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2009-004301 Application 11/324,411 Statement of the Case Appellants claim a method of masking the corners of a window frame preparatory to painting the frame comprising providing a plurality of L- shaped sheets 6 having a bottom face with adhesive zones 22, 24 and non- adhesive areas 26, 28 and applying a sheet to each corner of a window pane in the window frame by grasping with only one hand the non-adhesive area of the sheet between a user’s thumb on one side of the sheet and a finger on the opposing side of the sheet and installing with only one hand each sheet to each corner of the window pane (Figs. 1-3). Representative independent claim 69 reads as follows: 69. A method of masking a plurality of corners in a window frame, comprising: providing a plurality of sheets, each sheet of said plurality of sheets having opposite bottom and top faces and at least a first and a second outer edge, said at least first and second outer edges intersecting at an angle of 90°, said sheet includes an inner edge, said sheet includes an adhesive on said bottom face extending from said first and second outer edges toward said inner edge; applying one said sheet to each corner of a window pane in the window frame; applying masking tape from a first said sheet inner edge to at least a second said sheet inner edge along an edge of the window frame; wherein said sheet being L-shaped and having first and second legs that are generally rectangular in shape and at right angles to one another; said sheet includes a non-adhesive area on said bottom face, wherein said non-adhesive area extends continuously from said adhesive to and continuously along said inner edge; and, 2 Appeal 2009-004301 Application 11/324,411 said applying of each of said sheet includes grasping with only one hand said non-adhesive area of said sheet between a user's thumb on one side of said sheet and a finger on an opposing side of said sheet and installing with only one hand each said sheet to each corner of the window pane. The Examiner relies on the following references as evidence of obviousness: Carpenter 2,996,041 Aug. 15, 1961 Alef 3,752,304 Aug. 14, 1973 Jones 4,420,520 Dec. 13, 1983 Holmberg 4,590,109 May 20, 1986 Love 5,056,191 Oct. 15, 1991 Iwabuchi 6,040,026 Mar. 21, 2000 Nakib 2002/0004133 A1 Jan. 10, 2002 Goltz G9418708 July 13, 1995 (hereafter German reference ‘708) Appellant relies on the Declaration of record by Jose Martinez under 35 C.F.R. § 1.132 as evidence of non-obviousness. However, in view of our disposition of this appeal, we need not discuss this Declaration evidence. The Examiner rejects claims 68, 69, 79-81, 83, and 86 under 35 U.S.C. § 103(a) as being unpatentable over Nakib in view of Alef, German reference ‘708 and Carpenter and correspondingly rejects all appealed claims over these references and further in view of Jones or Love in combination with Holmberg or Iwabuchi. Issue Has Appellant shown error in the Examiner’s conclusion that it would have been obvious for one with ordinary skill in this art to apply sheets in a 3 Appeal 2009-004301 Application 11/324,411 window frame via the claim 69 step “installing with only one hand each said sheet to each corner of the window pane”? Findings of Fact The Examiner “agree[s] that the references cited do not expressly state that one [would] employ a single hand to apply the masking material to the corners of the window assembly” (Ans. 13). Principles of Law Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousnesss. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Analysis Appellant argues that none of the applied references contains any teaching or suggestion of installing with only one hand a sheet to each corner of a window pane as required by each of the independent claims on appeal (App. Br. 22, 23; Reply Br. 6, 7). We agree. The Examiner has expended commendable effort in finding and applying prior art references in an attempt to establish a prima facie case of obviousness with respect to the features required by Appellant’s method claims. Nevertheless, the clear deficiency of the Examiner’s effort is that the applied references do not teach and would not have suggested the claim step “installing with only one hand each said sheet to each corner of the window pane” (claim 69). For this reason, the Examiner’s obviousness conclusion regarding this claim step must be regarded as a merely conclusory statement without rational underpinning. 4 Appeal 2009-004301 Application 11/324,411 Under these circumstances, the record before us does not establish a prima facie case for the obviousness conclusion under consideration. Conclusions of Law Appellant has shown error in the Examiner’s conclusion that it would have been obvious for one with ordinary skill in this art to apply sheets in a window frame via the claim 69 step “installing with only one hand each said sheet to each corner of the window pane”. Accordingly, we cannot sustain the Examiner’s § 103 rejections of claims 68, 69, 79-81, 83, and 86 over Nakib in view of Alef, German reference ‘708 and Carpenter or of all appealed claims over these references and further in view of Jones or Love in combination with Holmberg or Iwabuchi. Order The decision of the Examiner is reversed. REVERSED ssl FAY SHARPE/HENKEL 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115-1843 5