Ex Parte Thysell

Patent Trial and Appeal Board

May 5, 2016

11079081 (P.T.A.B. May. 5, 2016)

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).
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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
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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.
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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
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