Ex Parte Traylor

Board of Patent Appeals and Interferences

Jul 29, 2005

09751609 (B.P.A.I. Jul. 29, 2005)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MARC TRAYLOR

Appeal No. 2005-1393
Application No. 09/751,609

ON BRIEF

Before KIMLIN, WALTZ and KRATZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20.
Claim 1 is illustrative:
1. A paintbrush holder comprising:
a clamp for engaging a rim of a paint can;
a magnet for engaging a ferrule of a paintbrush; and
a resilient member having a proximal portion attached to the
clamp and having a distal portion attached to the magnet wherein
the resilient member has a force constant selected to produce a
displacement of the distal portion when the paintbrush is
subjected to a mechanical shock so that the paintbrush does not
slide off the magnet.
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The examiner relies upon the following reference as evidence
of obviousness:
Nagy 3,729,158 Apr. 24, 1973
Appellant's claimed invention is directed to a paintbrush
holder comprising a magnet that engages a ferrule of the
paintbrush. The holder also comprises a resilient member having
a proximal portion attached to a clamp which engages the paint
can, and a distal portion that is attached to the magnet. The
resilient member possesses a force constant which produces
displacement of its distal portion when the paintbrush is
subjected to mechanical shock such that the brush does not slide
off the magnet.
Appealed claims 1-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Nagy.
Appellant submits that the appealed claims "do not stand or
fall together" (page 4 of principal brief, first paragraph).
However, only claim 14, and claims 10, 17 and 20 as a group, are
separately argued by appellant. Accordingly, claims 1-9, 11-13,
15, 16 and 18-20 stand or fall together, as do claims 10, 17
and 20.
We have thoroughly reviewed each of appellant's arguments
set forth in the principal and reply briefs on appeal. However,
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we are in complete agreement with the examiner that the claimed
subject matter would have been obvious to one of ordinary skill
in the art within the meaning of § 103 in view of the applied
prior art. Inasmuch as we fully concur with the examiner's
reasoned analysis and application of the prior art, as well as
his cogent disposition of the arguments raised by appellant, we
will adopt the examiner's reasoning as our own in sustaining the
rejection of record.
As explained by the examiner, Nagy, like appellant,
discloses a paintbrush holder comprising a clamp for engaging the
rim of a paint can, a magnet for engaging a ferrule of a
paintbrush, and a resilient member having a proximal portion
attached to the clamp and a distal portion attached to the
magnet. Appellant contends that vertical leg 24 of Nagy is rigid
and not resilient, as presently claimed. However, as noted by
the examiner, Nagy expressly discloses that member 24 is
"bendable" (column 1, line 52). While appellant maintains that
Nagy "uses the word 'bendable' to describe the permanent
deformation of the flat-faced metal strap from a straight line
into an L-shape" (page 2 of Reply Brief, first paragraph), there
is no factual support for such interpretation of the word
"bendable" used by Nagy. Contrary to appellant's argument, we
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Application No. 09/751,609
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are persuaded that Figure 2 of Nagy depicts member 24 as bendable
and resilient under an applied force.
Appellant also contends that leg 24 of Nagy does not have
the claimed "force constant selected to produce a displacement of
the distal portion when the paintbrush is subjected to a
mechanical shock so that the paintbrush does not slide off the
magnet" (claim 1). We agree with the examiner, however, that it
is reasonable to conclude that bendable leg 24 of Nagy inherently
possesses such a force constant. It is significant, and
apparently not appreciated by appellant, that the appealed claims
are drafted in broad language which specifies no magnitude for
the force constant, displacement and mechanical shock.
Consequently, since the appealed claims encompass an unlimited
range of magnitudes for the force constant, displacement and
mechanical shock, and we agree with the examiner that bendable
leg 24 of Nagy has some force constant which produces a
displacement of the distal portion when subjected to some
mechanical shock, we find that the claim language does not serve
to distinguish the claimed resilient member from leg 24 of Nagy.
Although appellant submits that most of the force between the
paintbrush and can of Nagy would be transformed into compression
or tension in leg 24, and would not result in a significant
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displacement of the distal portion of leg 24, all that is
required is that leg 24 of Nagy experience some, or any,
displacement when subjected to any mechanical shock to meet the
claimed invention.
As for separately argued claim 14, appellant has not
addressed the examiner's finding that member 46 is a magnet
holder, and that member 46, together with leg 24 and a portion of
the clamp as 28, 30 and 32, all constitute a single molded
structure (see page 10 of Answer).
Concerning the recitation in claim 10 that "the resilient
member limits acceleration of the paintbrush to no more than 0.75
g," we agree with the examiner that it would have been a matter
of obviousness for one of ordinary skill in the art to determine
the design of the resilient member which optimizes the
acceleration of the paintbrush. In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980).
As a final point, we note that appellant bases no argument
upon objective evidence of nonobviousness, such as unexpected
results.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv) (effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
THOMAS A. WALTZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-1393
Application No. 09/751,609
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Sinsheimer, Schiebelhut & Baggett
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