10236354 (B.P.A.I. Aug. 18, 2009)

Ex Parte Wolf

Board of Patent Appeals and InterferencesAug 18, 2009

10236354 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ANN MARIE WOLF __________ Appeal 2009-003986 Application 10/236,354 Technology Center 3700 __________ Decided: August 18, 2009 __________ Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-003986 Application 10/236,354 STATEMENT OF CASE This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). The following claim is representative. 8. A clay-like tennis court, comprising: a tennis court substrate; and granular cullet particles having a size between 0.99 millimeters to about 20 microns disposed over the tennis court substrate. Cited References Kimmel et al. US 6,464,082 B1 Oct. 15, 2002 Admission in Spec. p. 6. Admission in Spec. p. 7. Grounds of Rejection 1. Claims 8-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over “well-known tennis courts” in view of Kimmel (Answer 3). ISSUE The Examiner finds that Kimmel et al clearly taught that the recycled glass of moderate particle size may be used as an aggregate or filler in roadway paving, and smaller particles may be used as "sand" for golf course bunkers (see column 2, lines 24-28). Therefore, it would have been obvious to one of ordinary skill in the art to modify the clay-like particles with the glass cullet as taught by Kimmel et al for the purpose of reducing the cost. It is noted that Kimmel et al clearly stated that the recycled glass products 2 Appeal 2009-003986 Application 10/236,354 helps avoiding waste of material, conserve resources and are fairly inexpensive (col. 2, lines 34-42). (Ans. 3.) Appellant contends “one skilled in the art would have had no idea whether glass cullet would be suitable for tennis court construction, and, accordingly, no idea what size of cullet would provide suitable playability characteristics,” and that the cited art does not teach or suggest all claim limitations. (App. Br. 7.) The issue is: Has Appellant demonstrated error in the Examiner’s obviousness rejection and does the prior art suggest each limitation claimed? FINDINGS OF FACT 1. The Examiner finds that “[o]n pages 6 and 7 of the present application, applicant disclosed a conventional clay-like athletic surface and tennis courts having a granular surfacing material as a clay substitute in either a compacted form or an in-fill material in a carpet-like substrate.” (Ans. 3.) 2. According to the Examiner, the prior art failed to teach the use of cullet particles. (Ans. 3.) 3. According to the Examiner, Kimmel taught that “the recycled glass of moderate particle size may be used as an aggregate or filler in roadway paving, and smaller particles may be used as ‘sand’ for golf course bunkers (see column 2, lines 24-28).” Id. 4. The Examiner finds that, it would have been obvious to one of ordinary skill in the art to modify the clay-like particles with the glass cullet as taught by Kimmel et al for the purpose of reducing the cost. It is noted that Kimmel et al clearly stated that the recycled glass products 3 Appeal 2009-003986 Application 10/236,354 helps avoiding waste of material, conserve resources and are fairly inexpensive (col. 2, lines 34-42). Id. 5. The Examiner finds that: “Regarding the specific size of the cullet particles as set forth in claims 8 and 15, Kimmel et al clearly indicated that the cullet particles could be manufactured in any particular size to accommodate any desired playing environment (col. 2, lines 24-25).” (Ans. 3.) 6. The Examiner finds that: The playability (fast or slow) of the court dictates the size and/or thickness of the coating of cullet particles. For example, finer cullet particles and thicker coating may absorb the bounce of the ball more than thinner coating and larger cullet particles, thus yielding a slower playing surface. (Id. at 4.) PRINCIPLES OF LAW One rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 415-417 (2007), Sakraida v. AG Pro, Inc., 425 U.S. 273, 282 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950). As the Supreme Court pointed out in KSR, 550 U.S. at 418, “a patent composed of 4 Appeal 2009-003986 Application 10/236,354 several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Rather, the Court stated: [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does . . . because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Id. at 418-419 (emphasis added); see also id. at 418 (requiring a determination of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”) (emphasis added). ANALYSIS Claim 1 requires that the cullet be disposed over the tennis court substrate. Kimmel provides evidence that it was known to incorporate cullet as an aggregate or filler in roadway paving, and smaller particles may be used as "sand" for golf course bunkers. We do not find that the combination of the Specification’s statements regarding the prior art and Kimmel provides a sufficient reason to one of ordinary skill in the art to incorporate cullet on the surface of a tennis court substrate, or that such incorporation of cullet would have been understood by one of ordinary skill in the art to provide a suitable surface for tennis court play. 5 Appeal 2009-003986 Application 10/236,354 CONCLUSION OF LAW Appellant has demonstrated error in the Examiner’s obviousness rejection and the cited prior art does not suggest each element claimed. The obviousness rejection is reversed. REVERSED cdc QUARLES & BRADY LLP ONE SOUTH CHURCH AVENUE, SUITE 1700 TUCSON AZ 85701-1621 6