Ex Parte White

Board of Patent Appeals and Interferences

Aug 19, 2009

10109932 (B.P.A.I. Aug. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARTH WHITE
____________

Appeal 2009-001520
Application 10/109,932
Technology Center 3700
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Decided: August 19, 2009
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001520
Application 10/109,932

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STATEMENT OF THE CASE
Barth White (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-3, 5-9, 11, 13-16, and 18. Claims 4,
10, 12, 17, and 19 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a faux painting tool. The
tool 1 is made of a body 45, a handle 5, a support member 20 with a
coupling means 15, a support member 35 with a carrier member 30, and an
application material 50. Spec. 4:26 to 5:2, fig. 1. The coupling means 15
connects the handle 5 to the body 45 and allows the handle 5 to rotate. Spec.
6:18-25. Rotating the handle 5 causes the handle to lock or unlock from a
particular orientation relative to the body 45. Id.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A faux painting tool comprising:
a planer body;
an elongated handle having a first and
second end;
a first support member having a coupling
means and a second support member having a
carrier member, said support members extending
from a back surface of said planer body, said first
end of the handle being rotatably engaged by said
coupling means and said second end of the handle
being removably engaged by the carrier member,
wherein the coupling means includes two spaced
couplings rotatably engaging the first end of the
handle, and wherein rotating the handle in a first
direction about its length releases the handle and
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rotating the handle in a second opposite direction
about its length secures the handle in a desired
orientation relative to the planer body; and
an application material covering a front
surface of said planer body, said material
removably attached to the back surface of said
planer body.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Grubbs US 2,625,702 Jan. 20, 1953
Spresny US 4,059,864 Nov. 29, 1977
Graham US 4,455,705 Jun. 26, 1984
Dye US 5,687,448 Nov. 18, 1997
Hintz US 6,493,899 Dec. 17, 2002

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1, 2, and 6-8 as unpatentable over Hintz, Grubbs, and
Dye; claim 3 as unpatentable over Hintz, Grubbs, Dye, and Graham; claim 5
as unpatentable over Hintz, Grubbs, Dye, and Spresny; claims 9 and 13-15
as unpatentable over Hintz, Grubbs, Dye, and Spresny; claim 11 as
unpatentable over Hintz, Grubbs, Dye, Spresny, and Graham; claim 16 as
unpatentable over Dye and Hintz; and claim 18 as unpatentable over Dye,
Hintz, and Grubbs.

SUMMARY OF DECISION
We AFFIRM.

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ISSUES
Appellant argues claims 1, 2, and 6-8 as a group, and claims 9 and 13-
15 as a group. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2008),
claims 2 and 6-8 stand or fall with representative claim 1, and claims 13-15
stand or fall with claim 9.
Appellant argues that the Examiner, in each rejection, has failed to
show a teaching, suggestion, or motivation to combine the references, and
has instead relied on impermissible hindsight. Further, Appellant argues that
the Examiner has made each combination using non-analogous art. The
issues presented in the appeal are as follows:
(1) Has Appellant demonstrated that Dye is non-analogous prior art? In
particular, is Dye's description of a cement finishing hand tool with an
adjustable handle analogous prior art to a faux painting hand tool?
(2) Has Appellant demonstrated that the Examiner erred in combining the
faux painting tool with a fixed handle described in Hintz with the
adjustable handle described in Dye, by failing to provide a proper
teaching, suggestion, or motivation to combine the references?
(3) Has Appellant demonstrated that Graham is non-analogous prior art?
In particular, is Graham's description of a cleaning hand tool with a
handle that facilitates attachment of an extension handle analogous
prior art to a faux painting hand tool?
(4) Has Appellant demonstrated that the Examiner erred in combining the
faux painting tool with a fixed handle described in Hintz with the
handle having a threaded aperture for receiving an elongated handle
described in Graham, by failing to provide a proper teaching,
suggestion, or motivation to combine the references?
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(5) Has Appellant demonstrated that Spresny is non-analogous prior art?
In particular, is Spresny's description of a cleaning hand tool with an
extendable handle analogous prior art to a faux painting hand tool?
(6) Has Appellant demonstrated that the Examiner erred in combining the
adjustable handle described in Dye with a replaceable faux painting
application material as described in Hintz, by failing to provide a
proper teaching, suggestion, or motivation to combine the references?

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 The Examiner found that Dye describes a hand tool that is used to
apply a medium to a planar surface. Ans. 14. Particularly, the
Examiner found that Dye describes an adjustable cement finishing
tool. Ans. 4-5. Appellant has not contested this finding.
FF2 The Examiner found that Dye describes an adjustable tool that has an
adjustable handle (arm 90) with respect to the base (float 12). Ans. 5.
The user can adjust the angle of the float 12 relative to handle 90 by
rotating handle 90 clockwise, engaging the locking mechanism of
swiveling member 50, or by rotating handle 90 counterclockwise,
loosening the locking mechanism of swiveling member 50. Id. The
adjustability of the handle with respect to the base allows a user to
attain an even finish. Id. Appellant has not contested this finding.
FF3 A common concern in the hand tool art is of comfort and ease of use
for the user of the tool. See Hintz, col. 2, ll. 35-37 (designed to ease
the pain of a user's wrist); Grubbs, col. 1, ll. 1-9 (designed to provide
access to difficult-to-reach areas); Graham, col. 1, ll. 35-40 (designed
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to provide an easy-to-remove component); and Spresny, col. 1, ll. 7-
17 (designed to eliminate undue and repeated bending).
FF4 The Examiner found that Graham describes a hand tool for cleaning,
with a handle having an internal threaded bore to accommodate a
handle extension. Ans. 7, 15. Appellant has not contested this
finding.
FF5 The Examiner found that the purpose of Graham's elongated handle,
attachable to handle 25 via internal screw threads 36, is to allow a user
to reach hard-to-reach places. Ans. 7, 15-16. Appellant has not
contested this finding.
FF6 Graham describes a cleaning tool that applies cleaner to a surface.
Col. 1, ll. 46-52.
FF7 The Examiner found that Spresny describes a hand tool for cleaning
with an elongated, telescoping tubular handle 12. Ans. 7. Appellant
has not contested this finding.
FF8 The Examiner found that the purpose of the elongated handle
described in Spresny is to allow a user to reach hard-to-reach areas.
Ans. 7. Appellant has not contested this finding.
FF9 The Examiner found that Hintz describes a pad or material removably
affixed to a planar body. Ans. 12, 18. By being removable, the pad is
readily replaced. Id. Appellant has not contested this finding.

PRINCIPLES OF LAW
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
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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. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id. at 417.
Furthermore, when determining if a reference is analogous art, one
must consider more than just the field of endeavor:
A reference is reasonably pertinent if, even
though it may be in a different field from that of
the inventor's endeavor, it is one which, because of
the matter with which it deals, logically would
have commended itself to an inventor's attention in
considering his problem. In other words, “familiar
items may have obvious uses beyond their primary
purposes.”
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
(citations omitted).

ANALYSIS
Issue (1) - Is Dye Analogous Prior Art?
The Examiner found that Dye describes an adjustable hand tool. FF1.
The handle is adjustable because it gives a greater utility to the device, in
particular, the ability to achieve a more even finish. FF2. Appellant argues
that Dye is non-analogous art because Dye describes a cement finishing tool,
not a faux painting tool. Appeal Br. 13.
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A cement finishing tool, being a hand tool useful in applying a
medium to a surface (see FF1), would naturally commend itself to the
attention of a person considering a faux painting hand tool, which also
applies a medium to a surface. Both devices are in the field of simple hand
tools, and apply similar principles in design and use. Whether the cement
tool or the painting tool applies a smooth or rough surface is dependent on
the nature of the application pad, and has nothing to do with the body or
handle.
Further, the design of the adjustable handle described in Dye (see
FF2) provides a solution to the problem of hand tools being uncomfortable
or not easy to use (see FF3). In particular, adjustable handles allow the user
to set the handle at an angle best suited to the position of the surface to
which he or she is applying the medium. Therefore, Dye's adjustable hand
tool is within Appellant's field of endeavor and provides a solution to a
problem known in the field of endeavor.

Issue (2) - Rationale for Combining Hintz, Grubbs, and Dye
The Examiner found that Hintz describes a faux painting tool with a
base having an applicator material, but with a fixed handle, lacking the
coupling means, carrier member, and rotatable handle of claim 1. Ans. 3.
However, the Examiner found that Grubbs describes a tool with handle (11)
rotatably connected to a base at a coupling means (12), and a carrier member
(13), but does not describe the handle rotating and securing in a desired
orientation relative to the body. Ans. 4. Moreover, the Examiner found that
Dye describes an adjustable tool with a planar body 12 with a coupling
means 50 rotatably engaging a first end of a handle 90, wherein rotating the
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handle in one direction allows the handle 90 to engage coupling means 50,
and wherein rotating the handle 90 in the other direction allows the handle
90 to disengage coupling means 50, allowing a user to lock body 12 at a
desired angle relative to body (12). Ans. 5. The Examiner combined the
faux painting tool in Hintz and the adjustable handles in Grubbs and Dye for
providing ease-of-use to the user, from the adjustable handle. Ans. 5, 13.
Appellant does not contest either the Examiner’s findings or the Examiner’s
proposed combination of Hintz and Grubbs. Appellant argues that the
Examiner has not provided any suggestion or motivation for combining the
Hintz and Dye references. Appeal Br. 11. Thus, according to Appellant, the
Examiner relied on impermissible hindsight in making the combination.
Appeal Br. 12.
As noted by the Supreme Court, “[a] factfinder should be aware, of
course, of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. Rigid preventative rules that deny
factfinders recourse to common sense, however, are neither necessary under
our case law nor consistent with it.” KSR, 550 U.S. at 421 (internal citations
omitted). The Supreme Court has explicitly rejected application of a rigid
formula insisting on a teaching, suggestion, or motivation (TSM) to
demonstrate obviousness. See KSR, 550 U.S. at 415 ("[w]e begin by
rejecting the rigid [TSM] approach of the Court of Appeals.").
In this case, the Examiner has provided ample reasoning, with rational
underpinning, to provide Hintz with an adjustable handle as describe in Dye.
The Examiner has demonstrated that the adjustable handle described in Dye
would provide greater ease-of-use if incorporated to the fixed handle
described in Hintz. Ans. 5, 13; FF2. The modification proposed by the
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Examiner is nothing more than applying a technique used to improve the
usability of one device and improving a similar device in the same way. See
KSR, 550 U.S. at 417. Taking the adjustable handle of Dye and applying it
to the fixed handle of Hintz would involve nothing more than ordinary
creativity well within the technical grasp of a person of ordinary skill in the
art. In addition, Appellant has pointed to nothing in either of the references
that would discourage a person of ordinary skill in the art from substituting
an adjustable handle for a fixed handle.

Issue (3) - Is Graham Analogous Prior Art?
The Examiner found that Graham describes a hand tool for cleaning,
with a handle having an internal threaded bore to accommodate a handle
extension. FF4. The Examiner found that the purpose of the handle
extension is to allow a user to reach hard-to-reach places. FF5. Appellant
argues that Graham is non-analogous art because Graham deals with
cleaning devices, not faux painting devices. Appeal Br. 15.
A cleaning tool, being a hand tool useful in applying a medium to a
surface (see FF6), would naturally commend itself to the attention of a
person considering a faux painting hand tool, which also applies a medium
to a surface. Both devices are in the field of simple hand tools, and apply
similar principles in design and use. Whether the cleaning tool or the
painting tool applies a particular medium to a particular surface is dependent
on the nature of the application pad and its intended use, and has nothing to
do with the body or handle.
Further, the design of the handle allowing an extension described in
Graham (see FF5) provides a solution to the problem of hand tools being
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uncomfortable or not easy to use (see FF3). In particular, elongated handles
allow the user to reach high places. See FF5. Therefore, Graham's hand tool
is within Appellant's field of endeavor and provides a solution to a known
problem in the field of endeavor.

Issue (4) - Rationale for Combining Hintz, Grubbs, and Graham
As explained in our discussion of Issue (2) above, the Examiner
concluded that Hintz, Grubbs, and Dye render obvious the claimed faux
painting tool with an adjustable handle as called for in claim 1. Ans. 6.
However, the Examiner found that this combination did not describe a
threaded aperture for the tubular handle, in order to provide an elongated
handle, as recited in claim 3. Id. Therefore, the Examiner combined the
faux painting tool in Hintz, as modified by Grubbs and Dye, with Graham's
handle (25) with internal screw threads (36) for accepting an extension, for
providing the user with an ability to reach hard-to-reach places. FF5.
Appellant argues that the Examiner has not provided any suggestion
or motivation for combining the Hintz and Graham references. Appeal Br.
14. Thus, according to Appellant, the Examiner has relied upon
impermissible hindsight in making the combination. Appeal Br. 14-15.
However, the Supreme Court has explicitly rejected application of a rigid
formula insisting on a teaching, suggestion, or motivation (TSM) to
demonstrate obviousness. See KSR, 550 U.S. at 415 ("[w]e begin by
rejecting the rigid [TSM] approach of the Court of Appeals.").
In this case, the Examiner has provided ample reasoning, with rational
underpinning, for making the combination. Specifically, the Examiner has
demonstrated that the handle accepting an extension in Graham would
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provide greater ease-of-use if incorporated to the fixed handle described in
Hintz because the extension would allow a user to reach hard-to-reach
places. FF5. The modification proposed by the Examiner is nothing more
than applying a technique used to improve the usability of one device and
improving a similar device in the same way. See KSR, 550 U.S. at 417.
Taking the handle accepting an extension in Graham and applying it to the
handle of Hintz would involve no more than ordinary creativity, well within
the technical grasp of a person of ordinary skill in the art.

Issue (5) - Is Spresny Analogous Prior Art?
The Examiner found that Spresny describes a hand tool for cleaning,
with a handle having an elongated, telescoping tubular handle. FF7. The
Examiner found that the purpose of the elongated handle is to allow a user to
reach hard-to-reach places. FF8. Appellant argues that Spresny is non-
analogous art because Spresny deals with cleaning devices, not faux painting
devices. Appeal Br. 16.
A cleaning tool, being a hand tool useful in manipulating a surface,
would naturally be brought to the attention of a person considering a faux
painting hand tool, which also manipulates a surface. Both devices are in
the field of simple hand tools, and apply similar principles in design and use.
Whether the cleaning tool or the painting tool manipulates the surface in a
particular way is dependent on the nature of the application pad and its
intended use, and has nothing to do with the body or handle.
Further, the design of the telescoping handle described in Spresny (see
FF7) provides a solution to the problem of hand tools being uncomfortable
or not easy to use (see FF3). In particular, elongated handles allow the user
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to reach hard-to-reach places. See FF8. Therefore, Spresny's hand tool is
within Appellant's field of endeavor and provides a solution to a known
problem in the field of endeavor.

Issue (6) - Rationale for Combining Dye and Hintz
With respect to claim 16, the Examiner found that Dye describes an
adjustable tool with a planar body 12 with a coupling means 50 having two
spaced portions 52, 54 rotatably engaging a first end of a handle 90, wherein
rotating the handle in one direction allows the handle 90 to engage coupling
means 50, and wherein rotating the handle 90 in the other direction allows
the handle 90 to disengage coupling means 50, allowing a user to lock body
12 at a desired angle. Ans. 11. However, while the Examiner found that
Dye describes an application material 16, the Examiner did not find that Dye
describes a removably attachable application material. Ans. 12. Therefore,
the Examiner found that Hintz described a faux painting pad 36 removably
attachable to body 14. FF9. The Examiner concluded it would have been
obvious to combine the adjustable cement finishing tool in Dye with the
removable faux painting pad of Hintz, to allow for replacement and/or repair
of the application material. Ans. 12 and 18.
Appellant argues that the Examiner has not provided any suggestion
or motivation for combining the Dye and Hintz references. Appeal Br. 18.
Thus, according to Appellant, the Examiner has relied upon impermissible
hindsight in making the combination. Id. However, the Supreme Court has
explicitly rejected application of a rigid formula insisting on a teaching,
suggestion, or motivation (TSM) to demonstrate obviousness. See KSR, 550
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U.S. at 415 ("[w]e begin by rejecting the rigid [TSM] approach of the Court
of Appeals.").
In this case, the Examiner has provided ample reasoning, with rational
underpinning, to make the modification. Specifically, the Examiner has
demonstrated that the replaceable application pad in Hintz would allow a
user to replace or repair the application pad. FF9. The modification
proposed by the Examiner is nothing more than applying a technique used to
improve the usability of one device and improving a similar device in the
same way. See KSR, 550 U.S. at 417. Replacing the fixed application pad
of Dye with the replaceable application pad of Hintz would involve no more
than ordinary creativity, well within the technical grasp of a person of
ordinary skill in the art.

CONCLUSIONS
(1) Appellant has not shown that Dye is non-analogous prior art with
respect to the invention of claim 1, or claims 2 and 6-8, which stand or
fall with claim 1. Appellant's similar arguments for claim 9, claims
13-15, which stand or fall with claim 9, and claims 16 and 18 likewise
are not persuasive.
(2) Appellant has not shown that the Examiner failed to articulate
reasoning with some rational underpinning for combining the faux
painting tool of Hintz with the adjustable handle arrangement of Dye,
with respect to claim 1, or claims 2 and 6-8, which stand or fall with
claim 1. Appellant's similar argument for claim 9, and claims 13-15,
which stand or fall with claim 9, likewise are not persuasive.
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(3) Appellant has not shown that that Graham is non-analogous prior art
with respect to the invention of claim 3. Appellant’s similar argument
for claim 11 likewise is not persuasive.
(4) Appellant has not shown that the Examiner has failed to articulate
reasoning with some rational underpinning for combining the faux
painting tool of Hintz with the adjustable handle of Graham, with
respect to claim 3. Appellant's similar argument for claim 11 likewise
is not persuasive.
(5) Appellant has not shown that Spresny is non-analogous prior art with
respect to claim 5. Appellant’s similar arguments for claim 9, and 13-
15, which stand or fall with claim 9, likewise are not persuasive.
(6) Appellant has not shown that the Examiner has failed to articulate
reasoning with some rational underpinning for combining the faux
painting tool of Hintz with the adjustable handle of Spresny, with
respect to claim 5. Appellant's similar arguments for claim 9, and
claims 13-15, which stand or fall with claim 9, likewise are not
persuasive.
(6) Appellant has not shown that the Examiner has failed to articulate
reasoning with some rational underpinning for combining the
adjustable tool of Dye with the removable application pad of Hintz,
with respect to claim 16. Appellant’s similar argument for claim 18
likewise is not persuasive.

DECISION
The Examiner's decision is affirmed as to claims 1-3, 5-9, 11, 13-16,
and 18.
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AFFIRMED

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