Ex Parte Summons et al

Patent Trial and Appeal Board

Nov 15, 2013

12053865 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WAYNE L. SUMMONS, ELLIOT P. SUMMONS,
and HEATHER E. BURIK
____________________

Appeal 2011-013718
Application 12/053,865
Technology Center 3700
____________________

Before: EDWARD A. BROWN, LYNNE H. BROWNE, and
BART A. GERSTENBLITH, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013718
Application 12/053,865

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to systems and methods of providing
individual quantities of custom colored sealing compound. Claims 1, 11 and
16 are independent claims. Claim 1 is reproduced below:
1. A system for providing custom colored
sealant; the system comprising:
a dispensing container, having a first open
end portion that is in open fluid communication
with an open interior compartment;
a quantity of sealant base solution disposed
within the interior compartment of said dispensing
container;
a nozzle, having an open interior portion and
opposite first and second end portions, said first
end portion being shaped and sized to be secured
with the open end portion of said dispensing
container so that the interior compartment of said
dispensing container is placed in open fluid
communication with the interior portion of said
nozzle;
a supplemental container having an interior
portion that is at least partially filled with a
quantity of sealant thickener; and
a quantity of at least one coloring agent.

PRIOR ART
Tune
Denny
US 5,735,320
US 6,372,270 B1
Apr. 7, 1998
Apr. 16, 2002
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GROUND OF REJECTION
Claims 1-3 and 7-20 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Tune and Denny.1

OPINION
Appellants argue claims 1-3 and 7-20 as a group. See App. Br. 4-10.
We select independent claim 1 as the illustrative claim and claims 2, 3, and
7-20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Tune discloses every element of independent
claim 1 except for a qualtity of at least one coloring agent. See Ans. 3. The
Examiner finds that “Denny describes how to introduce and mix a coloring
agent to a container to obtain a mixture with the desired finish color.” Id.
(citing Denny, col. 10, ll. 39-53). Based on these findings the Examiner
concludes that it would have been obvious “to introduce a coloring agent in
the device of Tune to give the user an indication of how concentrated is the
mixture within the container as taught by Denny.” Id. In particular, the
Examiner finds that Tune discloses “a quantity of resin or sealant solution.”
Id.
Appellants argue that Tune fails to disclose a sealant base solution as
claimed. See Br. 7. In support of this argument, Appellants contend that “a
sealant, as that term is characterized within the specification, is quite
different from the epoxy adhesive disclosed within the Tune reference.” Id.
In response to this argument, the Examiner notes that “[a]lthough the claims

1 The rejections of claims 4-6 have been withdrawn by the Examiner. Ans.
2.
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Application 12/053,865

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are interpreted in light of the specification, limitations from the specification
are not read into the claims.” Ans. 4 (citing In re Van Geuns, 988 F.2d 1181
(Fed. Cir. 1993)). We agree and note that Appellants’ Specification does not
assign or suggest a particular definition of the claim term “sealant” or
otherwise indicate that the term is being used in a manner other than its
ordinary and customary meaning. Rather, Appellants’ Specification states
“[i]t must be understood, however, that the examples of thickening agents
and sealant base solutions disclosed above are merely representative of a
virtually infinite number of variations in raw materials and formula-
proportions that could yield a similar final result for one skilled in the art of
formulating sealants.” Spec., para. [0042] (emphasis added).
In determining the ordinary and customary meaning of the claim term
“sealant” as viewed by a person of ordinary skill in the art, it is appropriate
to consult a general dictionary definition of the word “sealant” for guidance.
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). An
ordinary and customary meaning of the word “sealant” is “a substance that is
put on a surface in order to protect it from air, water, etc.”2 Tune’s floor
finishing products (Tune, col. 1, l. 21) are “sealants” in accordance with this
ordinary and customary meaning of this claim term in that they protect
flooring they are applied to. Further, the Examiner finds that “the use of two
part epoxy for sealing is well known.” Ans. 4. Appellants have provided no
convincing argument or evidence that this finding is not correct. Thus,
Appellants’ argument is not persuasive.

2 Merriam-Webster.com, © 2013, accessed at http://www.merriam-
webster.com/dictionary/sealant (last visited Nov. 6, 2013).
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Appellants further argue that “obviousness can only be established by
combining or modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation to do so.”
Br. 7. This argument, and the argument regarding a lack of suggestion or
motivation that follows on page 9 of the Brief, is foreclosed by KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid
requirement of a teaching or suggestion or motivation to combine known
elements in order to show obviousness. KSR, 550 U.S. at 415. The Court
noted that an obviousness analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418.
Appellants’ argument that the applied references do not identify the
problems to which Appellants’ invention is directed is similarly foreclosed
by KSR. See Br. 8-10. See KSR, 550 U.S. at 420 (noting that the
obviousness analysis is not constrained by the problem the patentee was
trying to solve).
Further, while Appellants assert that “[i]t is the unexpected results of
the combination of claimed elements that has made the claimed method a
tremendous commercial success, creating a new niche in the sealant
industry” (Br. 9), we see no evidence of unexpected results, or of
commercial success. See In re Pearson, 494 F.2d 1399, 1405, 181 USPQ
641, 646 (CCPA 1974)(attorney's arguments in a brief cannot take the place
of evidence)(citation omitted).
For these reasons, we sustain the Examiner’s rejection of claim 1, and
claims 2, 3, and 7-20 which fall therewith.
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DECISION
The Examiner’s rejection of claims 1-3 and 7-20 is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

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