Ex Parte Schnoebelen

Patent Trial and Appeal Board

Feb 21, 2013

12362521 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/362,521 01/30/2009 JOHN E. SCHNOEBELEN JR. MAEE 2 13176-1-1 1270
89707 7590 02/21/2013
FAY SHARPE / SHURTECH
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
THOMAS, ALEXANDER S
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
02/21/2013 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 PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN E. SCHNOEBELEN, JR.
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Appeal 2012-000090
Application 12/362,521
Technology Center 1700
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Before BRADLEY R. GARRIS, RICHARD TORCZON, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000090
Application 12/362,521

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Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 78, 80-85, 87-89, and 91-93 as
unpatentable over Goltz (G 9418708 U1, published July 13, 1995; as
translated) in view of Alef (US 3,752,304, issued Aug. 14, 1973), Jones
(US 4,420,520, issued Dec. 13, 1983), and Griffin (US 4,696,706, issued
Sept. 29, 1987). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appellant claims a paint mask package comprising a plurality of paint
mask sheets with each sheet having an adhesive area and a non-adhesive
area, the plurality of paint mask sheets being stacked to form a pad which in
turn forms the package, and the pad or package presenting each uppermost
sheet for grasping between a thumb and fingers by the non-adhesive area for
removing the uppermost sheet from the pad or package (independent claim
78; see also independent claims 81, 83, 84, 85, 87, and 91). In a broader
embodiment, the paint mask package presents individual sheets "for
removing from said package by grasping said non-adhesive area"
(independent claim 93).
Representative claim 78 reads as follows:
78. A paint mask package for masking corner areas of a
window adjacent work pieces to be painted, comprising:
said paint mask package including a plurality of paint
mask sheets, wherein each of said plurality of paint mask sheets
comprises:
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°;
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said sheets include an inner edge;
said sheet includes a non-adhesive area on said
bottom face along said inner edge;
said sheet includes an adhesive on said bottom face
wherein said adhesive includes an area extending completely
from said first and second outer edges toward said non-adhesive
area;
said non-adhesive area extends completely from
said inner edge towards said adhesive area wherein said sheet
includes a single line of demarcation between said adhesive
area and said non-adhesive area;
said non-adhesive area includes at least two non-
adhesive outside corners;
said plurality of paint mask sheets comprising a stack of
paint mask sheets wherein individual paint mask sheets having
said non-adhesive area along said inner edge being releasably
oriented one directly on top of another to form a pad;
a first said pad and a second said pad nestled together to
provide said paint mask package; and,
said pad presents each uppermost said sheet for grasping
and wherein said non-adhesive outside corners facilitate said
grasping between a thumb and fingers by said non-adhesive
area on said bottom face and said top face for removing from
said package.
The Examiner concludes that it would have been prima facie obvious
to provide the L-shaped paint mask sheets of Goltz with a non-adhesive area
in view of Alef, to stack the resulting sheets in pad form in view of Jones,
and to provide the resulting pad(s) in a package in view of Griffin (Ans. 4-
6).
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Application 12/362,521

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Further, the Examiner indicates (1) that the claim recitation of
grasping the non-adhesive area with one hand and/or with a thumb and
fingers constitutes a statement of intended use rather than an additional
structural feature and, in any event, (2) that the paint mask package resulting
from the combined prior art would possess the capability of being grasped in
the manner recited by the rejected claims (id. at 6).
Appellant argues that the applied references contain no teaching or
suggestion of the claim feature wherein the package presents the non-
adhesive area of an uppermost sheet for grasping between a thumb and
fingers for removing the sheet (see, e.g., App. Br. 14, 15, 16, 18, 19).
Correspondingly, Appellant argues that the claim recitation concerning this
feature is not merely intended use but in fact lends an additional structural
feature to the claimed package (id. at para. bridging 18-19) and that the
combined references would not result in this claim feature except by
impermissible hindsight (id. at 15).
We agree with Appellant that representative independent claim 78
requires a structural limitation in the form of a package which presents the
non-adhesive area of an uppermost sheet for grasping between a thumb and
fingers for removing the sheet from the package. The claim language
describing this limitation is not merely a statement of intended use as the
Examiner believes. Rather, this claim language defines a functional
capability of the package (i.e., the capability of being grasped between a
thumb and fingers in the recited manner).
Moreover, the record of this appeal supports Appellant's argument that
the applied references contain no teaching or suggestion of this argued claim
feature. As previously indicated, the Examiner states that "the sheets in the
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combined prior art product, wherein the adhesive covers only a portion of
the sheets, are capable of being removed by one hand and thus meet the
instant claim limitations" (Ans. 6). However, the Examiner has not
embellished this statement with any specific explanation of how and why the
applied references would have been combined so as to result in a package
having the functional capability under consideration. Based on the record
before us, the Examiner's unembellished statement is conclusory and
therefore unconvincing.
For the above stated reasons, we will not sustain the Examiner's § 103
rejection of claims 78, 80-85, 87-89, 91, and 92.
However, we will sustain the § 103 rejection of independent claim 93.
As conceded by Appellant (see App. Br. 14), claim 93 does not require the
above discussed functional capability wherein the package presents the non-
adhesive area of an uppermost sheet for grasping between a thumb and
fingers for removing the sheet from the package. Instead, claim 93 defines a
broader requirement wherein the package presents individual sheets "for
removing from said package by grasping said non-adhesive area." Appellant
has not provided this appeal with any reasonably specific argument
concerning claim 93 and therefore has failed to reveal error in the
Examiner's rejection of this claim.

The decision of the Examiner is affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

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Application 12/362,521

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ORDER
AFFIRMED-IN-PART

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