Ex Parte ThysellDownload PDFPatent Trial and Appeal BoardMay 5, 201611079081 (P.T.A.B. May. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111079,081 03/15/2005 Hakan Thysell 22850 7590 05/09/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 328214US8 2225 EXAMINER MORGAN, EILEEN P ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 05/09/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAKAN THYSELL Appeal2013-006757 1 Application 11/079 ,081 2 Technology Center 3700 Before KEVIN W. CHERRY, BRUCE T. WIEDER, and MATTHEWS. MEYERS, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hakan Thysell (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1-10, 12, 13, 16, 19, and 36-43, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appellant's Appeal Brief ("Appeal Br."), filed September 6, 2012, Appellant's Reply Brief ("Reply Br."), filed April 23, 2013, and the Examiner's Answer ("Ans."), mailed February 26, 2013. 2 Appellant's brief identifies HTC Sweden AB, as the real party in interest for this appeal (Appeal Br. 1 ). Appeal2013-006757 Application 11/079,081 Appellant's claimed invention relates to a method for maintaining a hard, smooth surface (Spec. 1, 11. 23-27). Claim 1, the sole independent claim, is illustrative of the subject matter on appeal and is reproduced below. 1. A method of maintaining a gloss on an uncoated surface of a stone material, including marble, terrazzo, or polished concrete, at or above an initial value, the method compnsmg: providing a flexible pad of an open, lofty, three dimensional nonwoven web of fibers having diamond particles bonded thereto on a contact surface and dispersed within the flexible pad; treating the uncoated surface of the stone material by applying pressure and relative motion between the contact surface of the flexible pad and the uncoated surface of the stone material, in the absence of an effective amount of crystallization agent; and repeating the treating step as part of a regular daily maintenance routine to maintain the gloss at or above the initial value. (Appeal Br. 14, Claims App.). Rejections Claims 1-10, 12, 13, 16, 19, and 36-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hoover (US 2,958,593, iss. Nov. 1, 1960) and McDonell (EP 0 562 919 Al, pub. Sept. 29, 1993). Claims 1-10, 12, 13, 16, 19, and 36-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hood (US 2004/0098923 Al, pub. May 27, 2004). 2 Appeal2013-006757 Application 11/079,081 ANALYSIS Appellant argues claims 1-10, 12, 13, 16, 19, and 36-43 as a group (Appeal Br. 4--10). We select claim 1 as representative and claims 2-10, 12, 13, 16, 19, and 36-43 rise or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv). Obviousness over Hoover and McDonell We are persuaded by Appellant's argument that the Examiner failed to provide adequate reasoning for the combination of Hoover and McDonell given that McDonell teaches away from using the pad of Hoover for treating stone floors (Appeal Br. 6-8; Reply Br. 6-7). McDonell states that: Nonwoven abrasive pads such as disclosed by Hoover, et al., and McAvoy, et al., and McGurran, while finding wide ranging use, by themselves have not been suitable for polishing or crystallizing marble floors. This is clear from the continued and persistent use of non-abrasive-filled nonwoven pads in combination with an [sic] ancillary abrasive agents (such as slurries) for polishing marble, or the use of steel wool pads alone for crystallizing marble floors by those skilled in the art of marble floor maintenance. (McDonell, 3, 11. 46-50). The Examiner submits that this is not relevant because the rejection only relies on McDonell's teachings that diamonds are equivalent to silicon carbide and aluminum oxide (Ans. 9). Although McDonell teaches that diamonds can be used with lofty pads such as Hoover's, the Examiner has not provided adequate explanation why a person of ordinary skill would take this particular teaching from McDonell and modify Hoover for use with uncoated stone floors in light of McDonell' s criticism of Hoover. See In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) ("It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position[] to the exclusion of other parts 3 Appeal2013-006757 Application 11/079,081 necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art."). Without such explanation, we cannot find that the Examiner has provided adequate articulated reasoning with rational underpinning to support the rejection. See In re Kahn, 441 F .3d 977, 988 (Fed. Cir. 2006). Thus, we cannot sustain the rejection of claim 1-10, 12, 13, 16, 19, and 36-43 based on the combination of Hoover and McDonell. Obviousness over Hood We are also persuaded by Appellant's argument that Hood fails to account for "treating the uncoated surface of the stone material ... and repeating the treating step as part of a regular daily maintenance," as recited in claim 1 (Appeal Br. 9-10; Reply Br. 10-11). The Examiner concedes that Hood fails to disclose such a step, but reasons that Hood describes using its abrasive pads on stone and floors can be made of stone and "the pad can be used day after day and the choice of treating the floors daily, weekly, monthly, would be determined by use and foot traffic" (Ans. 10-11). Given Hood's disclosure, we find this reasoning insufficient to show that a person of ordinary skill would understand that Hood accounts for this step of the claimed method. As Appellant correctly notes (Reply Br. 10-11 ), Hood describes abrading work pieces such as metal components, plastic components, particle board, camshafts, crankshafts, furniture, and turbine blades (Hood i-f 63). The Examiner fails to explain why a person of ordinary skill would have a reasonable expectation that an abrasive pad designed for abrading turbine blades would be suitable to daily use on a stone floor. Without such reasoning, we cannot sustain the rejection of claim 1 as obvious over Hood. Accordingly, we do not sustain the rejection of claims 2-10, 12, 13, 16, 19, and 36-43 as unpatentable as obvious over Hood. 4 Appeal2013-006757 Application 11/079,081 DECISION The Examiner's decision to reject claims 1-10, 12, 13, 16, 19, and 36-43 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation