Ex Parte Thatcher et alDownload PDFPatent Trial and Appeal BoardMar 31, 201711548287 (P.T.A.B. Mar. 31, 2017) Copy Citation 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. 11/548,287 10/11/2006 David K. Thatcher THT-002U 5160 52966 7590 S chramm-Personal-ACT Michael R. Schramm 350 West 2000 South Perry, UT 84302 EXAMINER HAIL, JOSEPH J ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): mikeschramm @ besstek. net mschramm @juneaubiosciences.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID K. THATCHER and REED C. STOKES Appeal 2015-002163 Application 11/548,287 Technology Center 3700 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—25. Claims 26 and 27 are withdrawn. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is identified as David K. Thatcher. App. Br. 2. Appeal 2015-002163 Application 11/548,287 Claimed Subject Matter Claim 1, reproduced below, illustrates the claimed subject matter. 1. A self-contained powered mopping and cleaning machine for use in replacing a conventional mop and mop bucket without said machine occupying a three-dimensional space greater than that which would otherwise be occupied by said replaced conventional mop and mop bucket, and for use in mopping, cleaning, vacuuming, squeegeeing, and drying a portion of a floor in a single pass without reusing cleaning fluid such that used cleaning fluid is not placed onto a cleaned floor by said machine, said machine having a cleaning fluid tank, a dirty fluid recovery tank, a vacuum device, a electrical battery, a machine function control apparatus, a machine steering apparatus, and a floor cleaning head, wherein said machine fits within a three dimensional spatial envelope of 26 inches by 30 inches by 54 inches. Rejections Claims 1—24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson et al. (US 4,196,492, issued Apr. 8, 1980). Final Act. 2—3. Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Johnson, Gurstein (US 5,584,094, issued Dec. 17, 1996), and McCormick (US 6,226,832 Bl, issued May 8, 2001). Final Act. 3^4. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments (App. Br. 3—7; Reply Br. 2—8). Appellants’ arguments do not apprise us of error in the Examiner’s findings or conclusions. We adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and in the Answer. We highlight and address specific arguments and findings for emphasis as follows. 2 Appeal 2015-002163 Application 11/548,287 Appellants argue claims 1—24 as a group. App. Br. 3—5. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Appellants argue that the subject matter of claim 1 is not obvious due to the existence of one of the objective indicia of nonobviousness, namely commercial success. App. Br. 3. In support of the “commercial success of the Mopit™ floor scrubbing, mopping, and cleaning machine (Mopping Machine),” Appellants cite “appellant’s July 3, 2010 declaration which further included the Lofthouse, Porter, Pritchard, and Sachs Mopping Machine customer declarations, as again documented in appellant’s July 13, 2011 declaration, as again documented in appellant’s June 7, 2012 declaration, and as further clarified in appellant’s July 3, 2013 declaration.” Id. Appellants contend that there is a nexus between the claims and the commercial success because the “commercial success is expressly attributable to the sales of the Mopping Machine” that falls within the scope of the claims. Id. at 4. Appellants also quote four customer declarations stating that reasons for leasing the Mopping Machine “included the ability to mop, sweep, vacuum, and squeegee dry a floor in a single pass and more especially, the ability to store the Mopping Machine in a small maintenance closet or other small area where a mop and bucket have traditionally been stored.” App. Br. 4 (emphasis omitted). Appellants also contend that the “Mopping Machine holds a 100% market share as there is no comparable competing mopping machine that comports to the disclosed and claimed invention.” Id. We consider all evidence in support of Appellants’ assertions of commercial success due to sales of Appellants’ Mopping Machine. “In the ex parte process of examining a patent application, however, the PTO lacks 3 Appeal 2015-002163 Application 11/548,287 the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sales constitute commercial success.” In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.” Id. at 140. We have carefully considered Appellants’ arguments and the declarations submitted in support. We agree with the Examiner that Appellants’ evidence does not establish commercial success due to the novel features of the invention claimed. Ans. 4—5. Appellants’ declarations have not provided sufficient information upon which we may determine whether the mopping machines sold were commercially successful. The most recent declaration with sales numbers describes gross sales increasing from $89,625 in 2007 to $186,554 during only a portion of 2011. July 13, 2011 Declaration of David K. Thatcher under 37 C.F.R. § 1.132 (hereinafter, the “2011 Thatcher Declaration” or “2011 Thatcher Decl.”), at 2. Gross sales revenue was based on yearly unit sales ranging from 75 (in 2007) to 106 (in 2009). Id. The 2011 Thatcher Declaration provides a range for retail sales prices, and also states that lease arrangements are offered, without specifying a number of products being leased. See id. The declaration further asserts: In all of my attendance at various tradeshows and in my reviewing of floor maintenance industry related news, I have not seen offered for sale a Mopping Machine like mine that provides for mopping, cleaning, sweeping, vacuuming, and squeegee drying of a floor surface functions (especially in a single pass) in a compact size and weight so as to be able to occupy a space normally reserved for a conventional mop and bucket. Thus I believe that my above noted sales comprised substantially 100% of the market for such Mopping Machine. 4 Appeal 2015-002163 Application 11/548,287 Id. Appellants’ sales evidence provides no indication of whether the number of units sold represents a substantial quantity in a relevant market. As in Ex parte Jella, Appellants’ “proof of unit sales does not indicate whether the numbers sold were a substantial quantity in the relevant market.” 90 USPQ2d 1009, 1017 (BPAI 2008) (precedential); see also In re Huang, 100 F.3d 135, 40 (Fed. Cir. 1996) (“Although Huang’s affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market.”); In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[Information solely on numbers of units sold is insufficient to establish commercial success.”); Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026— 27 (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing of commercial success because “[wjithout further economic evidence ... it would be improper to infer that the reported sales represent a substantial share of any definable market”), overruled on other grounds in Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1358 (Fed. Cir. 1999). Appellants’ declaration that “the Mopping Machine holds a 100% market share as there is no comparable competing machine that comports to the disclosed and claimed invention” (App. Br. 4; see also 2011 Thatcher Deck 2) fails to provide relevant context to put into perspective Appellants’ sales numbers. We agree with the Examiner that “Appellants] [have] not demonstrated how much of the market has left mops and buckets for the claimed apparatus.” Ans. 5. “Similarly, Appellants] [have] neither proven how much of the market has left larger machines with the same features, nor 5 Appeal 2015-002163 Application 11/548,287 [have] Appellants] proven how much of the market has left smaller or similarly sized machines with more or less features.” Id. Appellants contend their mopping machine is not in the same market as these products, even though there may be cross-elasticity of demand. See Reply Br. 4—6. Without deciding whether sales of Appellants’ product that falls within the claims may constitute its own “market” according to some measures, in this case, the lack of evidence as to the share of Appellants’ sales within a broader market with competing products precludes us from making any meaningful determination as to whether Appellants’ sales represent commercial success. Appellants assert that they “have used the objective and rational guideline of the claimed subject matter — i.e. the bounds of the claims — to define the market breadth.” Reply Br. 7. Although we allow for the possibility of proving commercial success in a market defined by the claim, and in which an applicant for patent shows 100 percent market share in such a market, for example with a truly disruptive product that has no competition, we need not decide what evidence might be necessary in such a case. Here, Appellants acknowledge the product sold has competition (see Reply Br. 4—6),2 and it is evident that a broader market could be defined that would provide context for Appellants’ sales figures. Accordingly, for the reasons discussed above and by the Examiner, we are not apprised of error in the Examiner’s finding that Appellants have not established commercial success, as we consider Appellants’ evidence of commercial success to be weak, at best. Appellants do not challenge the 2 We note also that the evidence relied on by Appellants to show a nexus to the claimed features compares Appellants’ product to other products such as a conventional mop bucket. See App. Br. 4 (quoting “Lofthouse, Porter, Pritchard, and Sachs Mopping Machine customer declarations”). 6 Appeal 2015-002163 Application 11/548,287 Examiner’s conclusion of obviousness separate from the challenge to the Examiner’s findings on commercial success. Nonetheless, in evaluating the conclusion of obviousness anew in light of all the evidence, and in light of Appellants’ arguments, we agree with the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Johnson. Thus, we sustain the rejection of representative claim 1, and, for the same reasons, the rejection of claims 2—24, which are not argued separately. Appellants argue the rejection of claim 25 is in error for the same reasons argued in support of claims 1—24. App. Br. 5—7. For the same reasons as claim 1, we sustain the rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable over Johnson, Gurstein, and McCormick. DECISION We affirm the Examiner’s decision to reject claims 1—25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation