Ex Parte Thysell

Patent Trial and Appeal Board

Apr 21, 2016

13101224 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/101,224 05/05/2011 Hakan THYSELL
22850 7590 04/25/2016
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.
379937US8CONT 4557
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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
Appeal2013-006668 1
Application 13/101,2242
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, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
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 28, 2013.
2 Appellant's brief identifies HTC Sweden AB, as the real party in interest
for this appeal (Appeal Br. 1 ).
Appeal2013-006668
Application 13/101,224
Appellant's claimed invention relates to a method for maintaining a
hard, smooth surface (Spec. 1, 11. 24--29).
Claim 1, the sole independent claim, is illustrative of the subject
matter on appeal and is reproduced below.
1. A method for maintaining a gloss of a hard, smooth
polymer floor surface at or above an initial value of the gloss of
the hard, smooth polymer floor surface, the polymer floor surface
comprising polymer materials, including vinyl, polyurethane,
epoxy, acrylic or other plastic material, or linoleum, the method
compnsmg:
treating the hard, smooth polymer floor surface with a
flexible pad comprising an open, lofty, three dimensional non-
woven web of fibers, in the presence of abrasive particles,
bonded to the pad, on a contact surface between the pad and the
hard, smooth polymer floor surface; and
repeating the treating step on the hard, smooth polymer
floor surface that was previously treated in the treating step as
part of a regular daily maintenance routine to maintain the gloss
at or above the initial value,
wherein the treating step is performed in the presence of
water on the contact surface,
the abrasive particles comprise diamond particles, and the
diamond particles have an average diameter of 0.1 to 30 µm.
(Appeal Br. 11, Claims App.).
Rejection
Claims 1-10 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).
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Appeal2013-006668
Application 13/101,224
ANALYSIS
Appellant argues claims 1-10 as a group. Appeal Br. 4--9. We select
claim 1 as representative and claims 2-10 rise or fall with claim 1.
See 37 C.F.R. § 41.37(c)(iv).
We are not persuaded by Appellant's argument that Hoover fails to
disclose "repeating the treating step on the hard, smooth polymer floor
surface that was previously treated in the treating step as part of a regular
daily maintenance routine," as recited in claim 1 (Appeal Br. 5---6; Reply
Br. 6-7). We agree with the Examiner that Hoover teaches using its pad to
treat a floor (Ans. 6-7 (citing Hoover, col 8, 11. 14, 33, col. 9, 11. 53-55)).
We further agree with the Examiner that, given the nature of floor cleaning
and Hoover's disclosure that the pad can be used "day after day," that a
person of ordinary skill would understand that the polishing can be done on
a daily basis (id. at 7-8). Appellant's efforts (Reply Br. 6-7) to argue that
the statements in Hoover only disclose that the pad can be used over again
and not that the same floor can be treated ignores the Examiner's reasoning
that bridges the gap between that disclosure and what it would suggest to a
person of ordinary skill.
Indeed, we disagree with Appellant's suggestion that the Examiner's
reasoning is conclusory (Appeal Br. 6). On the contrary, we find that the
Examiner has provided sufficient reasoning why Hoover accounts for this
element-Hoover informs us that the pad can be used "day after day" and a
person of ordinary skill would understand that the floor must be treated
based on use (Ans. 7 (citing Hoover, col. 8, 11. 15, 34)). Given the level of
skill in the art, as evidenced by the art of record, we agree with the Examiner
that a person of ordinary skill reviewing Hoover's disclosure with the
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Appeal2013-006668
Application 13/101,224
knowledge that the floor must be treated based on use would have a
reasonable expectation that repeating the treatment step as part of a daily
maintenance routine would be successful. Appellant has presented no
evidence or argument that this would require undue experimentation. The
conclusion of obviousness does not require certainty but, rather, requires
only a reasonable expectation of success. See In re 0 'Farrell, 853 F.2d 894,
903---04 (Fed. Cir. 1988) ("Obviousness does not require absolute
predictability of success ... [f]or obviousness under§ 103, all that is
required is a reasonable expectation of success" (citations omitted)). Thus,
we find the Examiner's reasoning to be sufficient.
Appellant's arguments (Reply Br. 7) about the label, "inherent," that
the Examiner used at times fails to acknowledge the Examiner's alternative
reasoning that daily treatment was "within the level of one of ordinary skill"
(Ans. 7). Because we agree with the Examiner's alternative reasoning,
Appellant's arguments regarding inherency fail to apprise us of reversible
error by the Examiner.
As for Appellant's argument that the Examiner conflates the
"scouring" and "polishing" examples of Hoover (Reply Br. 7-8), we do not
see how that is relevant to the question of whether Hoover suggests daily use
for several reasons. First, the Examiner relies on the different examples to
show that Hoover contemplates using the pads repeatedly as part of floor
maintenance. It is certainly acceptable to rely on the varied teachings of a
reference to demonstrate that the reference would suggest repeating the
treating step of claim 1. See Belden Inc. v. Berk-Tek LLC, 805 F .3d 1064,
1076 (Fed. Cir. 2015) (noting that "[a] reference must be considered for
everything it teaches by way of technology and is not limited to the
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Appeal2013-006668
Application 13/101,224
• 1 • • • • ,..l "t.... ,..l • " ( 1 • • part1cu1ar mvent1on it is uescnumg anu attemptmg to protect ~ a1teratlon m
original) (emphases omitted) (quoting EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985))). Second, Appellant's claims draw
no distinction between "scouring" and "polishing." Instead, claim 1 only
recites "repeating" the "treating" step so as to "maintain the gloss at or
above an initial value." As the Examiner notes, removing the old wax, as
would occur during "scouring," would produce a level of gloss (Ans. 7).
Despite Appellant's assertions to the contrary (Appeal Br. 5), Appellant
provides no evidence to support its contention that the Examiner's assertion
that scouring would also improve gloss is in error. Hoover also discloses
polishing would also produce a level of gloss (Hoover, col. 9, 11. 60-61).
Both examples would fall within the scope of Appellant's claims. Given this
broad scope, we do not agree the Examiner erred in considering both
examples together.
We are also not persuaded by Appellant's argument that McDonell
teaches away from the combination with Hoover (Appeal Br. 6-8; Reply
Br. 8-9). "A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Although Appellant is correct that McDonell does criticize
Hoover, Appellant misrepresents that McDonell suggests that Hoover is
inappropriate for polishing floors generally (see Appeal Br. 7). Instead,
McDonell only states that Hoover "while finding wide ranging use" is not by
itself "suitable for polishing or crystallizing marble floors" (McDonell,
col. 3, 11. 46-50). We do not find McDonell' s comments on the suitability of
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Appeal2013-006668
Application 13/101,224
Hoover for polishing marble floors would have discouraged a person of
ordinary skill from taking the teachings regarding available abrasive
particles in McDonell and combining them with Hoover for polymer floors
as claimed by Appellant. See In re Urbanski, 809 F.3d 1237, 1244 (Fed.
Cir. 2016) (no teaching away when reference does not criticize or discredit
use).
Appellant also makes various arguments that it would not have been
obvious to select diamonds from the list of abrasive particles recited in
McDonell for several reasons (Appeal Br. 8-9; Reply Br. 8-9). First,
Appellant argues that McDonell is drawn to marble floors and is not relevant
to polymer floor maintenance (Appeal Br. 8). We do not agree. Both
Hoover and McDonell relate to floor maintenance, so we find they are both
in same field of endeavor as Appellant and are analogous art to the claimed
invention. See In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
Second, Appellant submits that a person of ordinary skill would not
have combined Hoover and McDonell, because McDonell involves altering
the floor surface by crystallizing, while Hoover involves leaving the floor
surfaces unaltered (Appeal Br. 8-9). However, the Examiner relies on
McDonell only for its teaching that diamonds can be incorporated into a
lofty pad, not the method of treatment (Ans. 8). Appellant has not shown
how the Examiner erred in relying on McDonell for this technology that it
discloses, or why a person of ordinary skill would believe that this
technology would have no application outside of the realm of re-crystalizing
marble floors. See Belden, 805 F.3d at 1076.
Third, Appellant argues that a person of ordinary skill would not have
selected diamond from out of the list of abrasives listed in McDonell without
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Application 13/101,224
impermissible hindsight (Appeal Br. 9; Reply Br. 8-9). \Ve do not agree.
The Examiner has provided articulated reasoning with rational underpinning
to support the combination (Ans. 6, 9-10). As the Examiner explained,
McDonell teaches that diamonds are among the suitable particles that can be
incorporated into a lofty pad and a person of ordinary skill would have been
motivated to incorporate diamonds into the lofty pad of Hoover for
improved wear characteristics (Ans. 6). Appellant offers no evidence to
rebut this conclusion. Thus, Appellant fails to carry its burden to show that
the Examiner erred.
Finally, Appellant argues for the first time in the Reply Brief that
Hoover fails to teach "treating the hard, smooth polymer floor surface," as
recited in claim 1, because Hoover discloses treating the wax layer on the
surface of a "polymer floor" (Appeal Br. 5-6; Reply Br. 5). We do not
agree with Appellant's implicit contention that the claims require that the
"polymer floor" have no wax on it. Indeed, many of the examples in the
Specification dealing with "polymer floors" all have flooring wax on them
(see Spec. 25, 1. 20-28, 1. 2). Thus, we do not agree with Appellant that the
wax layer is not part of the "polymer floor." Accordingly, we sustain the
rejection of claims 1-10.
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Application 13/101,224
DECISION
The Examiner's decision to reject claims 1-10 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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