Ex Parte Timofeev

Board of Patent Appeals and Interferences

May 29, 2007

09230439 (B.P.A.I. May. 29, 2007)

The opinion in support of the decision being entered today was 1
not written for publication and is not binding precedent of the Board. 2
3
4
UNITED STATES PATENT AND TRADEMARK OFFICE 5
_____________ 6
7
BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
_____________ 10
11
Ex parte MIKHAIL MIKHAILOVICH TIMOFEEV 12
_____________ 13
14
Appeal No. 2006-2796 15
Application No. 09/230,439 16
Technology Center 3600 17
______________ 18
19
Decided: May 29, 2007 20
_______________ 21
22
Before TERRY J. OWENS, JENNIFER D. BAHR, and ANTON W. FETTING, 23
Administrative Patent Judges. 24
25
OWENS, Administrative Patent Judge. 26
27
28
29
DECISION ON APPEAL 30
The Appellant appeals from a rejection of claims 18-20, 22, 27-30 and 32-31
35. Claim 31, which is the only other pending claim, stands objected to as 32
dependent from a rejected base claim but allowable if rewritten in independent 33
form. 34
35
Appeal 2006-2796
Application 09/230,439

2

THE INVENTION 1
The Appellant claims a self-cleaning facing structure adapted to be fixed to 2
an outdoor stair step, and an outdoor stair step having the self-cleaning facing 3
structure. Claim 18 is illustrative: 4
18. A self-cleaning facing structure adapted to be fixed to an outdoor stair 5
step, said facing structure comprising: 6
a beam-like working member made of a resilient material and having 7
an exposed treading surface adapted to be tread upon by pedestrians; 8
a horizontal fastening member projecting from a rearward facing 9
surface of the working member; and 10
a vertical fastening member projecting from a downward facing 11
surface of the working member; 12
wherein the horizontal and vertical fastening members are integrally 13
formed with the beam-like working member as a single unit; 14
wherein the horizontal fastening member is adapted to be mounted on 15
a horizontal tread surface of the step, and the vertical fastening member is 16
adapted to be mounted on a vertical tread surface of the step; 17
wherein the horizontal fastening member is adapted to have a 18
horizontal facing material applied thereon, and the vertical fastening 19
member is adapted to have a vertical facing material applied thereon; and 20
wherein a modulus of elasticity E of the resilient material of the 21
working member and a thickness H of the working member satisfy E/H < k, 22
where k is a constant having a value of 1011 Newtons per cubic meter. 23
24
THE REFERENCES 25
Naka ‘951 US 4,318,951 Mar. 9, 1982 26
Naka ‘294 US 4,321,294 Mar. 23, 1982 27
Naka ‘797 US 4,455,797 Jun. 26, 1984 28
Aidan US 5,073,430 Dec. 17, 1991 29
Nelson US 5,806,253 Sep. 15, 1998 30
Kemper US 6,047,506 Apr. 11, 2000 31
32
33
34
Appeal 2006-2796
Application 09/230,439

3

THE REJECTIONS 1
The claims stand rejected under 35 U.S.C. § 102 as follows: claims 18-20 2
and 22 over Nelson; claims 18 and 20 over Kemper; claims 18-20 and 22 over 3
Aidan; claims 18-20, 22, 27-30 and 32-35 over Naka ‘797; claims 18-20 and 22 4
over Naka ‘951; and claims 18-20 and 22 over Naka ‘294. 5
OPINION 6
We affirm the rejections over Naka ‘951, Naka ‘294 and Naka ‘797 and 7
reverse the rejections over Nelson, Kemper and Aidan. 8
The Appellant states that the claims are grouped together (Br. 8). Regarding 9
the affirmed rejections, we therefore limit our discussion to one claim, i.e., 10
claim 18. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 11
Rejection over Naka ‘951 12
Naka ‘951 discloses a stair edge cover (11) that is made of flexible synthetic 13
resin, a flexible rubber or the like and comprises an edge bead cushion (13), a thin 14
tread side fixing tongue (14) and a thin riser side fixing tongue (15) (col. 2, ll. 29-15
32). 16
The Appellant argues that Naka ‘951 affixes a stair mat, not a facing 17
material, to the tread side fixing tongue, and does not affix anything to the riser 18
side fixing tongue (Br. 16-17; Reply Br. 5; Supp. Reply Br. 2). During patent 19
prosecution, claims are to be given their broadest reasonable interpretation 20
consistent with the Specification, as the claim language would have been read by 21
one of ordinary skill in the art in view of the Specification. See In re Zletz, 893 22
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 23
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). The Appellant’s Specification 24
does not define “facing material”. The dictionary definitions of “facing” include 25
Appeal 2006-2796
Application 09/230,439

4

“an ornamental or protective layer”.1 Hence, because the Naka ’951 stair mat is an 1
ornamental or protective layer, the broadest reasonable interpretation of the 2
Appellant’s claim term “facing material”, in view of the Appellant’s Specification, 3
includes the Naka ‘951 stair mat. Regardless, the Appellant’s claim 18 requires 4
that the horizontal and vertical fastening members are adapted to, i.e., capable of, 5
have facing material applied thereon. The fixing tongues in the Naka ‘951 figures 6
appear to be capable of having stair facing materials in general affixed to them by a 7
technique such as adhesive bonding. 8
The Appellant argues that none of the applied references discloses the 9
recited relationship between modulus of elasticity E of the resilient material of the 10
working member and a thickness H of the working member (Reply Br. 6). The 11
thickness H of the working member, as disclosed in the Appellant’s Specification, 12
is the maximum distance from the bottom to the top of the working member, and 13
equals the sum of the thicknesses of the facing material, fastening member and 14
adhesive (Spec. 3, 7; figs. 1-3). Like the Appellant’s resilient material of the 15
working member, the Naka ‘951 edge cover is elastic (“a flexible synthetic resin, a 16
flexible rubber, or the like”, col. 2, ll. 29-30). Hence, the Naka ‘951 edge cover 17
appears to have a modulus of elasticity comparable to that of the Appellant’s 18
resilient material of the working member. Also, like the Appellant’s facing 19
structure, the Naka ‘951 edge bead cushion is approximately the thickness of the 20
combined fixing tongue (14, which corresponds to the Appellant’s horizontal 21
fastening member), adhesive (col. 3, ll. 6-9) and tread mat (12, which corresponds 22
to the Appellant’s horizontal facing material) (figs. 1, 2, 5). Consequently, because 23
Naka ‘951 uses a conventional facing material that appears to be comparable to the 24

1 Webster’s New Collegiate Dictionary 410 (G. & C. Merriam 1973).
Appeal 2006-2796
Application 09/230,439

5

Appellant’s facing materials and, therefore, has a comparable thickness, it appears 1
that, like the Appellant’s facing structure, the Naka ‘951 edge bead cushion (which 2
corresponds to the Appellant’s working member and appears to have a comparable 3
modulus of elasticity) has a ratio of E (modulus of elasticity) to H (sum of the 4
thicknesses of the facing material (tread mat), fastening member (fixing tongue) 5
and adhesive) in the Appellant’s range. Also, the Appellant’s claim 18 merely 6
requires that the horizontal fastening member is adapted to have a horizontal facing 7
material thereon. As discussed above, the Naka ‘951 edge bead cushion appears to 8
have a modulus of elasticity comparable to that of the Appellant’s working 9
member. Also, in both the Appellant’s (fig. 1) and Naka ‘951 (figs. 1, 2, 5) 10
devices, the height of the working member (Naka ‘951 edge bead cushion) is about 11
equal to the sum of the thicknesses of the horizontal facing material (Naka ‘951 12
tread mat), fastening member (Naka ‘951 fixing tongue) and adhesive. 13
Consequently, it appears that, like the Appellant’s horizontal fastening member, 14
the Naka ‘951 fixing tongue is adapted to, i.e., capable of, having a facing material 15
applied thereon such that the edge bead cushion has the Appellant’s recited E/H 16
ratio. 17
The Appellant argues that the Naka ‘951 stair mat is not intended for an 18
outside step where ice is formed (Supp. Reply Br. 3). The Naka ‘951 disclosure 19
that the stair mat is “adapted to be installed on stairs, especially stairs arranged on 20
the inside of a building” (col. 1, ll. 5-7) indicates that the stair mat is not limited to 21
an inside step, but also can be adapted to be fixed to an outdoor stair step. 22
The Appellant argues that the applied references do not disclose a 23
self-cleaning device (Reply Br. 2-3). The E/H ratio in the Appellant’s claim 18 is 24
based upon the modulus of elasticity and the thickness of the working material 25
made of a resilient material. Like the Appellant’s working member resilient 26
Appeal 2006-2796
Application 09/230,439

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material, the Naka ‘951 edge bead cushion is elastic (col. 2, ll. 29-30) and, as 1
discussed above, is capable of having an H value comparable to that of the 2
Appellant’s working member. Moreover, the Naka ‘951 edge bead cushion has a 3
hollow interior that gives it additional flexibility (col. 2, ll. 33-36; fig. 2). Hence, it 4
appears that, like the Appellant’s working member (Spec. 4, 6), the Naka ‘951 5
edge bead cushion can flex when stepped on by a pedestrian (col. 4, ll. 58-60) such 6
that it is self cleaning. 7
The Appellant argues that Naka ‘951 does not disclose a working member 8
having an exposed treading surface adapted to be tread upon by pedestrians (Reply 9
Br. 3-4). The Naka ‘951 surface having serrations (17, col. 2, ll. 37-40; fig. 2) is 10
exposed and is adapted to be tread upon by pedestrians (col. 4, ll. 58-60). 11
We therefore are not convinced of reversible error in the rejection over 12
Naka ‘951. 13
Rejection over Naka ‘294 14
Naka ‘294 discloses a stair mat comprising a flexible synthetic resin edge 15
cushion cover (31) (which corresponds to the Appellant’s working member) 16
having at its lower edge an integral downward skirt (36) (which corresponds to the 17
Appellant’s vertical fastening member (col. 3, ll. 57-60)). A connecting sheet base 18
member (33) (which corresponds to the Appellant’s horizontal fastening member 19
and appears to be made of the same material as the edge cushion cover (col. 3, 20
ll. 51-53)) has a hook-shaped rib (40) in a catching groove (37) on the lower 21
surface of the edge cushion cover (col. 4, ll. 6-25; 41-46). 22
The Appellant argues that Naka ‘294 discloses a stair mat, not a facing 23
structure (Br. 17-18; Reply Br. 5; Supp. Reply Br. 3). That argument is not 24
persuasive for the reason given above regarding the rejection over Naka ‘951. 25
Appeal 2006-2796
Application 09/230,439

7

The Appellant argues that Naka ‘294 does not disclose that the main body 1
(14, figs. 1, 2) is adapted to have horizontal facing material applied thereon 2
(Br. 18). In the embodiment in figure 3, connecting sheet base member 33 is 3
adapted to have applied thereon a tread mat (32) which corresponds to the 4
Appellant’s facing material. 5
The Appellant argues that the Naka ‘294 connecting sheet base member (33) 6
must be attached to the edge cushion cover (31) (Br. 18). During patent 7
prosecution, claims are to be given their broadest reasonable interpretation 8
consistent with the Specification, as the claim language would have been read by 9
one of ordinary skill in the art in view of the Specification. See Zletz, 893 F.2d at 10
321, 13 USPQ2d at 1322; Sneed, 710 F.2d at 1548, 218 USPQ at 388. The 11
Appellant’s Specification does not define “integral”. The ordinary meanings of 12
that term include “formed as a unit with another part”.2 The Appellant’s 13
Specification (4:3-6) indicates that the working material and the fasteners can be 14
made of different materials. Moreover, the recitation in the Appellant’s claim 31 15
that the horizontal and vertical fastening members that are integrally formed with 16
the resilient working member are made of aluminum (which, the Appellant states, 17
is more rigid than the resilient material (Spec. 6:6-10)) indicates that the 18
Appellant’s claim term “integrally formed” encompasses working members and 19
fasteners that are joined together. Thus, because the Naka ‘294 edge cushion cover 20
and connecting sheet base member form a unit when combined, the combination is 21
integral as that term is most broadly construed in view of the Appellant’s 22
Specification. 23

2 Webster’s New Collegiate Dictionary 600 (G. & C. Merriam 1973).
Appeal 2006-2796
Application 09/230,439

8

The Appellant argues that none of the applied references discloses the 1
recited relationship between modulus of elasticity E and thickness H (Reply Br. 6) 2
or discloses a self-cleaning device (Reply Br. 2-3), and that the Naka ‘294 stair mat 3
is not intended for an outside step where ice is formed (Supp. Reply Br. 3). Those 4
arguments are not convincing for the reasons given above with respect to the 5
rejection over Naka ‘951. 6
The Appellant argues that none of the applied references discloses an 7
exposed treading surface adapted to be tread upon by pedestrians (Supp. Reply Br. 8
2). The non-skid top (16) of the Naka ‘294 edge cushion cover (31) (col. 3, ll. 66-9
68; fig. 3) is exposed and is adapted to be tread on by pedestrians. 10
Accordingly, we are not convinced of reversible error in the Examiner’s 11
rejection over Naka ‘294. 12
13
Rejection over Naka ‘797 14
Naka ‘797 discloses a stair nosing (10) comprising an edge bead 15
cushion (12) integrally formed with an edge base (11) having a vertical riser 16
cover (16) integrally formed at its front edge (col. 2, ll. 16-17, 25-28). The edge 17
bead cushion is made of soft synthetic resin or semi-hard synthetic resin (col. 2, 18
ll. 53-54), is elastic and has a tooth-shaped non-skid top surface (25) (col. 3, ll. 3-19
7). The edge base preferably is thin and may be extruded from hard synthetic resin 20
(col. 2, ll. 25-26, 33-35). 21
The Appellant argues that Naka ‘797 attaches carpet, not facing structure, to 22
the edge base (Br. 19; Reply Br. 5; Supp. Reply Br. 3). That argument is not 23
persuasive for the reason given above regarding the rejection over Naka ‘951. 24
The Appellant argues that because the Naka ‘797 edge base (81, fig. 6) and 25
the vertical riser cover extend from the edge base instead of the edge base cushion, 26
Appeal 2006-2796
Application 09/230,439

9

there is no disclosure of a horizontal fastening member projecting from a rearward 1
facing surface of a working member (the Naka ‘797 edge base cushion) and a 2
vertical fastening member projecting from a downwardly facing surface of the 3
working member (Br. 20-21). Claim 18 requires “a horizontal fastening member 4
projecting from a rearward facing surface of the working member” and “a vertical 5
fastening member projecting from a downward facing surface of the working 6
member”. In the embodiment shown in the Naka ‘797 figure 2, the edge base (11) 7
(which corresponds to the Appellant’s horizontal fastening member) projects from 8
a rearward facing surface of the edge base cushion (12) (which corresponds to the 9
Appellant’s working member), and the riser cover (16) projects from a downward 10
facing surface of the edge base cushion. In the embodiment shown in the 11
Naka ‘797 figure 6, the edge base (81) (which corresponds to the Appellant’s 12
horizontal fastening member) projects from a rearward facing surface of the edge 13
base cushion (12) (which corresponds to the Appellant’s working member), and 14
the riser cover (16) projects from a downward facing surface of the edge base 15
cushion. 16
The Appellant argues that the Naka ‘797 edge base and riser cover are not 17
integrally formed with the edge base cushion (Br. 20). The Naka ‘797 riser 18
cover 16 is integrally formed with edge base 11, and edge base 11 is integrally 19
formed with edge base cushion 12 (col. 2, ll. 16-17, 25-27). Edge base 81 has the 20
structure of edge base 11 except for the omission of a positioning groove (13) 21
(col. 5, ll. 37-39). Hence, edge base 81 also is integrally formed with the edge base 22
cushion. 23
The Appellant argues that none of the applied references discloses the 24
recited relationship between modulus of elasticity E and thickness H (Reply Br. 6). 25
Appeal 2006-2796
Application 09/230,439

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That argument is not convincing for the reason given above with respect to the 1
rejection over Naka ‘951. 2
The Appellant argues that Naka ‘797 does not disclose an exposed treading 3
surface adapted to be tread upon by pedestrians (Reply Br. 3). The Naka ‘797 4
tooth-shaped non-skid top (25) of the edge bead cushion is exposed and is adapted 5
to be tread upon by pedestrians (col. 3, ll. 3-7; fig. 2). 6
For the above reasons we are not convinced of reversible error in the 7
rejection over Naka ‘797. 8
Rejection over Nelson 9
Nelson discloses a stair nosing (1) comprising a rigid base member (2) 10
having horizontal (21) and vertical (22) flanges, and a flexible tread (3) having 11
flaps (30) (col. 2, ll. 47-50, 63; fig. 2). The flexible tread is fastened to the rigid 12
base member by ribs (31) that interlock with serrations (28) in a groove (27) in the 13
base member, and by flexible flaps (33) that are at the end of the ribs and engage 14
the walls of the groove (col. 3, l. 61 – col. 4, l. 5; figs. 3, 4). The base member is 15
made of metal, preferably aluminum, or rigid synthetic material, and the tread 16
member is made of flexible synthetic resin such as vinyl resin (col. 4, ll. 6-9). 17
The Examiner argues that Nelson’s base member (2) corresponds to the 18
Appellant’s working member (Answer 3). That is incorrect because Nelson’s base 19
member does not have an exposed treading surface adapted to be tread upon by 20
pedestrians. Instead, it is covered by a flexible tread member (3) (col. 2, ll. 47-49). 21
The Examiner argues that the aluminum of which Nelson’s base member can be 22
made (col. 4, ll. 6-7) has a modulus of elasticity less than 1011 N/m2 (Answer 4). 23
The Appellant asserts that the modulus of elasticity of aluminum is 7x1011 N/m2 24
(Br. 12). Actually, the modulus of elasticity of aluminum at room temperature 25
Appeal 2006-2796
Application 09/230,439

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appears to be about 6.9x1010 N/m2.3 The Examiner argues that “[t]he modulus of 1
elasticity for various synthetic resins is on the order serving to satisfy the 2
relationship presented within the language of claim 18” (Answer 8). Nelson’s 3
synthetic resin is rigid (col. 4, ll. 6-7), whereas the Appellant’s working member is 4
resilient. The Examiner has not provided evidence that a rigid synthetic resin 5
necessarily has a modulus of elasticity less than 1011 N/m2. Also, the Examiner has 6
not explained why there is reason to believe that Nelson’s aluminum or rigid 7
synthetic base member has the E/H ratio required by the Appellant’s claims. 8
The Examiner argues alternatively that Nelson’s flexible tread member (3), 9
serrated ribs (31) and flaps (33) correspond to the Appellant’s working member 10
(Answer 4). That is incorrect because those parts are not adapted to have 11
horizontal and vertical facing material applied thereon. Instead, the flexible tread 12
member’s flaps (30) fit over Nelson’s laminate flooring (6) (col. 2, ll. 63-64; 13
figs. 4, 5) which corresponds to the Appellant’s facing material. 14
The Examiner, therefore, has not established a prima facie case of 15
anticipation of the Appellant’s claimed invention by Nelson. 16
Rejection over Aidan 17
Aidan discloses a tile edging trim strip comprising a body (1) with a plate-18
like anchorage portion (2) and an integral edge portion (3) having a first abutment 19
part (4) at its outer end and a rigid extension (29) perpendicular to the plate-like 20
anchorage portion (col. 4, ll. 4-14; col. 5, ll. 46-48; fig. 3). The body is extruded 21
from semi-rigid polyvinyl chloride (col. 6, ll. 21-22). 22

3 See http://www.engineeringtoolbox.com/young-modulus-d_773.html;
http://zone.ni.com/devzone/cda/ph/p/id/250.
Appeal 2006-2796
Application 09/230,439

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The Examiner argues that Aidan’s semi-rigid polyvinyl chloride edge 1
portion corresponds to the Appellant’s working member and has a modulus of 2
elasticity less than 1011 N/m2 (Answer 4-5). The Examiner, however, has not 3
explained why there is reason to believe that Aidan’s semi-rigid polyvinyl chloride 4
edge portion has the E/H ratio required by the Appellant’s claims. 5
Hence, the Examiner has not established a prima facie case of anticipation of 6
the Appellant’s claimed invention by Aidan. 7
Rejection over Kemper 8
Kemper discloses a stair edge tread angle member (1) having a tread 9
limb (2) and an abutment limb (3) (col. 4, ll. 3-7). The tread angle member 10
advantageously can be made of aluminum (col. 3, ll. 38-39). 11
The Examiner argues that Kemper’s aluminum has a modulus of elasticity 12
less than 1011 N/m2 (Answer 6). That argument is not convincing because the 13
Appellant has asserted that the modulus of elasticity of aluminum is 7x1011 N/m2 14
(Br. 12) and the Examiner has provided no evidence to the contrary. Moreover, the 15
Examiner has not explained why there is reason to believe that Kemper’s 16
aluminum tread angle member has the E/H ratio required by the Appellant’s 17
claims. 18
Therefore, the Examiner has not established a prima facie case of 19
anticipation of the Appellant’s claimed invention by Kemper. 20
DECISION 21
The rejections under 35 U.S.C. § 102 of claims 18-20 and 22 over Nelson, 22
claims 18 and 20 over Kemper, and claims 18-20 and 22 over Aidan are reversed. 23
The rejections under 35 U.S.C. § 102 of claims 18-20, 22, 27-30 and 32-35 over 24
Naka ‘797, claims 18-20 and 22 over Naka ‘951, and claims 18-20 and 22 over 25
Naka ‘294 are affirmed. 26
Appeal 2006-2796
Application 09/230,439

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). 2
AFFIRMED 3
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hh 12
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