Ex Parte Varner

Board of Patent Appeals and Interferences

Jul 23, 2007

10254295 (B.P.A.I. Jul. 23, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD VARNER
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Appeal 2006-2709
Application 10/254,295
Technology Center 1700
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Decided: July 23, 2007
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Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1-10, the only claims that remain pending in this application. We
have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2006-2709
Application 10/254,295

Appellant's application is directed to an invention involving a method of
treating a surface with a wax material. Wax with a carrier or solvent is spray
applied to a surface that has some crevices or pores; that is, the surface is
textured or patterned, such as a painted vehicle surface. Then, a wiper blade
is contacted with the surface and drawn across it in a wiping action resulting
in partial separation of carrier liquid from the particles of wax while forcing
wax particles into surface pores and/or crevices. Claim 1 is illustrative and
reproduced below:
1. A method for improving the specularity of a surface, comprising
the steps of:
(a) applying a wax material suspended in a carrier or solvent by
spraying onto the surface, wherein the surface includes at least textures or
patterns;

(b) providing a wiper blade having a flexible panel including a
lip formed along the lower edge; and

(c) drawing the lip of the wiper blade across the surface,
wiping away the carrier or solvent and leaving the wax material in pores and
crevices of the textured or patterned surface.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Tomingas US 3,649,987 Mar. 21, 1972
Yeiser US 6,159,551 Dec. 12, 2000

Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yeiser in view of Tomingas.
Appellant does not separately argue the rejected claims in the Brief.
Thus, we select claim 1, as the representative claim on which we decide this
appeal.
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Appeal 2006-2709
Application 10/254,295

We refer to the Brief and Answer for the respective positions of
Appellant and the Examiner. We affirm the stated rejection for the reasons
set forth in the Answer. Moreover, we are in substantially complete
agreement with the Examiner’s fact finding and the rebuttal of Appellant's
arguments set forth in the Brief, as presented in the Answer. Accordingly,
we adopt the Examiner’s position, as set forth in the Answer, as our own and
add the following for emphasis only.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. Teleflex, Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1396 (Fed. Cir.
2006); see also DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006)(“The motivation need not be found in the references sought to be
combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself.”).
The analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
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Appeal 2006-2709
Application 10/254,295

skill in the relevant field to combine the elements” in the manner claimed.
KSR, 127 S. Ct. at 1732, 82 USPQ2d at 1389.
Here, the Examiner has furnished an explicit analysis, including
findings of fact, in accord with these principles, including a convincing line
of reasoning in support of a determination of a prima facie case of
obviousness in the Answer.
As for the argued claim 1 requirement for leaving wax in surface
pores and crevices, we note that Appellant acknowledges that it is well
known in the art that vehicle painted surfaces include pores/crevices
(Specification 5 and 22).1 Furthermore, we agree with the Examiner that
using the wiper of Tomingas to dry the vehicle surface of Yeiser after
application of sprayed wax particles in a water carrier as a substitute for the
towel drying of Yeiser would have been obvious to one of ordinary skill in
the art at the time of the invention from the combined teachings of the
references. Moreover, this modified method would have been expected to
result in applied wax particles being forced into the vehicle painted surface
crevices and pores. See Answer at pp. 5 and 6.
Appellant's argument that the combined teachings of the applied
references would not have suggested the use of a wiper blade instead of a
chamois for drying a surface having an aqueous sprayed on wax applied
thereto are effectively rebutted by the Examiner (Answer 8). In this regard,

1 1 It is axiomatic that admitted prior art, including prior art found in an
Applicant's Specification, may be used in determining the patentability of a
claimed invention and that consideration of the prior art cited by the
Examiner may include consideration of the admitted prior art found in the
Specification. In re Nomiya, 509 F.2d 566, 570-571, 184 USPQ 607, 611-
612 (CCPA 1975); In re Davis, 305 F.2d 501, 503, 134 USPQ 256, 258
(CCPA 1962).
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Appeal 2006-2709
Application 10/254,295

Tomingas teaches that using sponges or chamois as in the prior art to dry
surfaces is time consuming and requires repeated strokes in comparison to
the single stroke required of the wiper blade taught by Tomingas (Tomingas;
col. 1, ll. 5-25). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395.
In further regard to this matter, Appellant asserts that the alleged blunt
sponge-like apparatus of Tomingas would not force wax particles into the
vehicle surface crevices and pores (Br. 8). This argument is not persuasive
for reasons articulated by the Examiner (Answer 11-13). We only add that
Appellant has not substantiated this argument with any evidence, much less
persuasive and compelling evidence establishing unexpected or unpredict-
able results for the claimed method over that expected by an artisan of
ordinary skill from the applied prior art teachings.

CONCLUSION
The decision of the Examiner to reject claims 1-10 under 35 U.S.C.
§ 103(a) as being unpatentable over Yeiser in view of Tomingas 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)(1)(iv)(2006).

AFFIRMED

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