Ex Parte Sult

Patent Trial and Appeal Board

Mar 7, 2018

12685379 (P.T.A.B. Mar. 7, 2018)

United States Patent and Trademark Office
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.
12/685,379 01/11/2010 Darrell B. Suit POL-081565C1 7290
56973 7590 03/09/2018
THE WATSON INTELLECTUAL PROPERTY GROUP, PLC
3133 HIGHLAND DRIVE
SUITE 200
HUDSONVTT.T.E, MI 49426
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
JJOVANOVIC@WATSON-IP.COM
vvasiljevic @ watson-ip.com
docketing @ watson-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRELL B. SULT
Appeal 2017-005483
Application 12/685,379
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1-13 and 19.3 We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
1 In this Decision, we refer to the Specification filed January 11, 2010
(“Spec.”), the Final Office Action mailed February 26, 2015 (“Final Act.”),
the Appeal Brief filed February 26, 2016 (“Br.”), the Corrected Claims
Appendix filed July 18, 2016 (“Claims App.), and the Examiner’s Answer
mailed October 20, 2016 (“Ans.”).
2 Appellant identifies the real party in interest as Spectra Design, Inc. Br. 3.
3 Claims 14-18 are withdrawn from consideration by the Examiner as
directed to a non-elected invention. Non-Final Office Action mailed
December 22, 2010, 2.
Appeal 2017-005483
Application 12/685,379
The subject matter on appeal relates to a particulate material in the
form of cured cuttings having a shredded and elongated configuration, and a
solid surface material comprising the same particulate material therein.
Spec. 2, 5-6. Claim 1, reproduced below from the Claims Appendix of
the Appeal Brief with key disputed limitations highlighted in italicized text,
is illustrative of the claims on appeal.
1. A particulate for incorporation into a matrix of material that
is independently curable into a solid surface material, the
particulate comprising: a plurality of separate, cured
cuttings, having a shredded and elongated configuration,
and a plurality of surfaces, defining a cutting surface area,
substantially all of the cutting surface area having a
shredded surface configuration, with the cured cuttings
having a hardness above that which allows formation of a
shredded surface configuration after curing.
REJECTIONS4
The Examiner maintains the following rejections on appeal:
Rejection I: Claims 1, 2, 4, 7, 8, 11, 12, and 19 under pre-AIA
35 U.S.C. § 103(a) as obvious over Oswitch et al. (US 3,917,790 issued
November 4, 1975) (“Oswitch”) (Final Act. 2—4); and
Rejection II: Claims 3, 5, 6, 9, 10, and 13 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Oswitch in view of Bruckbauer et al.
(US 5,244,941 issued September 14, 1993) (“Bruckbauer”) (Final Act. 4-7).
4 In the Answer, the Examiner withdrew the rejection of claims 1 and 7
under 35 U.S.C. § 103(a) as obvious over Molnar et al. (US 5,507,845
issued April 16, 1996) (“Molnar”). Ans. 5.
2
Appeal 2017-005483
Application 12/685,379
DISCUSSION
The Examiner finds that Oswitch discloses a partially cured
thermosetting polyester gel coat that is cut before final curing. Final Act. 2
(citing Oswitch 3:56-4:1). The Examiner finds that Oswitch discloses that
the gel coat is used to line a mold in which a heat-settable resin and curable
polyester resin may be cured substantially simultaneously to form a product
of the heat-settable resin having a covering of the gel coat. Final Act. 2
(citing Oswitch, Abstract).
The Examiner recognizes that Oswitch does not disclose cured
cuttings “having a shredded and elongated configuration” and cured cuttings
having a hardness above that which allows formation of a shredded surface
configuration after curing. Final Act. 3. To cure this deficiency, the
Examiner finds that change in size and shape is not patently distinct over the
prior art absent persuasive evidence that the particular configuration of the
claimed invention is significant. Final Act. 3 (citing In re Rose, 220 F.2d
459 (CCPA 1955); In re Rinehart, 531 F.2d 1048 (CCPA 1976); In re
Dailey, 357 F.2d 669 (CCPA 1966)).
Appellant argues that the Examiner has neither established that
Oswitch teaches or suggests a particulate or solid surface material that
includes a particulate comprising “a plurality of separate, cured cuttings,
having a shredded and elongated configuration” nor provided an adequate
reason to modify Oswitch to meet this claimed limitation. See Br. 6-9.
Appellant’s argument is persuasive of reversible error. As Appellant
persuasively argues, the Examiner’s reliance on In re Rose and In re
Rinehart is misplaced because the Examiner’s proposed modification in the
present appeal is more than simply a change in size of the article under
3
Appeal 2017-005483
Application 12/685,379
consideration. Br. 7-8. Moreover, as Appellant persuasively argues, the
modification of Oswitch is not a mere matter of design choice. Id. at 8.
According to Appellant’s Specification, when incorporated into a solid
surface material, its particulate maintains high internal strength and reduces
the tendency for surface defects. Spec. 2 4, 19. Oswitch does not
disclose a particulate. Rather, Oswitch discloses a pre-fabricated gel coat in
the form of a dry sheet that can be easily handled and pre-shaped for lining a
mold. Oswitch, Abstract. The pre-fabricated gel coat includes a layer of
partially cured, curable, thermosetting polyester resin, and a fibrous
reinforcing medium of thermoplastic fibers. Id. at Abstract, 3:52-63.
Oswitch teaches that the purpose of the thermoplastic fibers is to add
integrity to the gel coat while the thermosetting polyester resin is partially
cured, allowing the gel coat to be cut, trimmed, or shaped prior to final cure.
Id. at 3:66^1:2. Although Oswitch’s gel coat sheet is “cut” to fit the sheet
into a mold prior to curing, Oswitch does not teach or suggest that its sheet
is cut into a plurality of separate, cured cuttings. Id. at 6:29-33. Thus,
Oswitch’s material has a different structure and function than Appellant’s
claimed particulate. On this record, the Examiner has not established why or
how Oswitch, or the knowledge in the art, provides a reason to modify
Oswitch’s sheet structure to produce Appellant’s particulate comprising a
plurality of separate, cured cuttings, having a shredded and elongated
configuration. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of
obvious design choice precluded when claimed structure and the function it
performs are different from the prior art).
4
Appeal 2017-005483
Application 12/685,379
Because the deficiencies discussed above are present in both of the
appealed rejections,5 we do not sustain the rejections of claims 1-13 and 19
under 35 U.S.C. § 103(a).
DECISION
For the above reasons, the rejections of claims 1-13 and 19 are
reversed.
REVERSED
5 The Examiner does not rely on Bruckbauer to cure the deficiencies
discussed herein regarding Oswitch. Final Act. 4-5. In fact, the Examiner
admits that Bruckbauer does not teach that the cuttings are elongated.
Ans. 11.
5