Ex Parte 6289548 et al

Board of Patent Appeals and Interferences

May 24, 2007

90006595 (B.P.A.I. May. 24, 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The opinion in support of the decision being entered today is not binding
precedent of the Board.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
_______________

Ex parte JOHN S. CAPOCCIA
______________

Appeal 2007-1365
Reexamination Control 90/006,595
Patent 6,289,548
Technology Center 1700
_______________

Decided: May 24, 2007

Before FRED E. McKELVEY, Senior Administrative Judge, and MICHAEL
P. TIERNEY, and MARK NAGUMO, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. '' 134 and 306
(2006) from the Examiner's final rejection of claims 1-20 in the above-
identified reexamination proceeding.
We affirm.

Appeal 2007-1365
Reexamination Control 90/006,595
Patent 6,289,548

I. STATEMENT OF THE CASE
A request for reexamination was filed on April 9, 2003 by patent
owner for reexamination of its U.S. Patent 6,289,548 (the ‘548 patent)
issued September 18, 2001 to John S. Capoccia. The ‘548 patent is
exclusively licensed to TexMaster Tools Inc.
Patentee’s invention relates to patterned synthetic sponges for
painting. More particularly, the invention relates to a synthetic sponge that
has a pattern that simulates a natural sea sponge when creating faux paint
finishes.
As explained in the background section of the ‘548 patent, broken
pattern finishes were popular in the 1930’s. Such finishes were produced by
“sponging” or “ragging” techniques where a sponge or rag was used to
disturb a freshly painted wall to produce a broken pattern. (‘548, col. 1, ll.
21-26).
The ‘548 patent states that sea sponges produce the “most pleasing
specialty faux finishes.” (Id. at col. 1, ll. 42-44). Sea sponges however, are
described as scarce and expensive. (Id.). The ‘548 patent attempts to mimic
sea sponge finishes by using synthetic sponges where material is removed
from the face of the synthetic sponge to create ragged edges. (Id. at col. 2,
ll. 41-44).
There are three independent claims on appeal, claims 1, 8 and 15, all
of which are directed to synthetic sponges having a pattern that simulates a
natural sea sponge when faux painting. Claim 1 is representative of the
independent claims on appeal and reads as follows:
A patterned synthetic sponge, which comprises:
a synthetic sponge formed from an open cell elastomeric
material and bearing a pattern having ragged, torn edges, being at
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least about 0.5" in depth, said patterned synthetic sponge simulating a
natural sea sponge when creating faux paint finishes therewith.

(Br., Claims Appdx.).
The Examiner has set forth three (3) prior art rejections. The
rejections are as follows:
i) Claims 1, 5-8 and 12-14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Australia Published Patent
Application 1,405 (the “Australian application”).

ii. Claims 1-3, 5-10, 12-17, 19 and 20 rejected under 35
U.S.C. § 103(a) as being unpatentable over Wakat, U.S. Patent
5,713,095 (“Wakat”) in view of the Australian application.

iii. Claims 4, 11 and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wakat and the Australian
application and further in view of Moilanen, U.S. Patent
2,994,899 (“Moilanen”).

Patentee (Capoccia) generally contends that the prior art references
fail to describe making a synthetic sponge mimic a natural sponge. (Br. at
10). Patentee contends that the prior art references teach “cutting” a pattern
on a sponge or roller and do not describe a tearing action, which would
create Patentee’s claimed ragged, torn edge pattern that helps simulate a
natural sea sponge paint finish. (Br. at 10-11). Additionally, Patentee states
that the prior art references fail to recognize that the depth of the pattern is
important. (Br. at 11-12).
The Examiner found that the Australian application teaches that any
desired pattern character may be formed on the face of a sponge by
removing portions of the face. (Ans. at 3). The Examiner further found that
one of ordinary skill in the art would understand how to modify the pattern
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depth on the sponge face to achieve the desired pattern character. (Ans. at
4). The Examiner further finds that one of ordinary skill in the art would
recognize that Australian application Figure 1 depicts a non-linear pattern
and that the cutting of a sponge would produce a “torn” or “ragged” edge,
giving those terms their broadest reasonable construction. (Ans. at 5).
We affirm the Examiner’s rejections.

ISSUE
The issue is whether Patentee has shown that the Examiner erred in
rejecting the claims. Specifically, the issue is:
Has Patentee demonstrated that the Examiner was incorrect in
finding that one of ordinary skill in the art would have been
able to follow the teachings of the prior art and remove portions
of a synthetic sponge face for its desired effect?

FINDINGS OF FACT
A. Patentee’s ‘548 Specification and Claims
1) Patentee’s claims on appeal are directed to synthetic sponges having a
pattern on their face that simulates a natural sea sponge when creating a faux
paint finish. (Br., Independent claims 1, 8 and 15).

2) Broken pattern finishes were popular in the 1930’s and were produced
by “sponging” or “ragging” techniques where a sponge or rag was used to
disturb a freshly painted wall to produce a broken pattern. (‘548, col. 1, ll.
21-26).

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3) Sea sponges are said to produce the “most pleasing specialty faux
finishes.” (Id. at col. 1, ll. 42-44).

4) Sea sponges are said to be scarce and expensive. (Id.).

5) Patentee alleges that it is able to simulate the desired affect of a
natural sea sponge with synthetic sponges having ragged, torn edges that are
at least about 0.5 inches in depth. (‘548, col. 2, ll. 40-45 and claim 1).

B. Prior Art
Australian Published Patent Application 1,405
6) The Australian application is directed to improvements in tools for
producing decorative finishes on painted walls. (Australian Application,
Title).

7) The Australian application states that pattern effects on fresh paint
cannot be produced using flat face sponge pads. (Id. at col. 1, ll. 15-16).

8) The Australian application teaches that natural and artificial sponges
can be used to create desired patterns. (Id. at col. 2, ll. 1-16).

9) According to the Australian application, “[a]ny desired pattern
character is formed on the face of the pad by removing portions of the face
or attaching pieces of like material to the face . . .” (Id. at col. 2, ll. 10-12).

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10) The Australian application teaches that the patterned face may be a
shape pattern complementary to the pattern of floral or any other desired
pattern required to be produced on a painted surface. (Id. at col. 2, l. 24 to
col. 3, l. 4).1

11) The Australian application specifically states:

The thus produced type face may be a shape pattern
complementary to the pattern of floral or other figure character
required to be produced on the plastered or painted surface; or it
may be a rib, curl, wove, reticulated, checker-like, or any other
pattern.

(Col. 2, l. 24 to col. 3, l. 4).

12) The Australian application informs the person of ordinary skill in the
art that:
It will be understood that the sponge face may be etched in any
desired design, for instance, interlaced circles, ashlar pattern, or
otherwise.

(Id. at col. 3, ll. 25-29).

1 The Australian application specifically states:

The thus produced type face may be a shape pattern
complementary to the pattern of floral or other figure character
required to be produced on the plastered or painted surface; or it
may be a rib, curl, wove, reticulated, checker-like, or any other
pattern.

(Col. 2, l. 24 to col. 3, l. 4).
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Wakat, U.S. Patent 5,713,095
13) Wakat states that sponge and rag painting are popular and are
“considered aesthetic to a great number of people.” (Wakat, col. 1, ll. 10-
12).

14) Wakat states that “sponge painting and rag rolling are labor intensive
methods and hence are expensive.” (Id. at col. 1, ll. 14-15).

15) Wakat describes a bifurcated paint roller where the paint roller has
two roller portions that rotate independently of each other. (Wakat,
Abstract).

16) Wakat describes its invention as follows:
Another object of the present invention is to provide a hand tool
which is uniquely bifurcated. Specifically, the hand tool
includes a pair of roller portions spaced transversely from each
other. Each roller portion is rotatable independently from the
other roller portion. By randomly rolling the paint-dipped
roller portions on a surface, a sponge or rag rolling effect is
achieved where each roller has a paint of a different color or
characteristic.

(Id. at col. 1, ll. 40-47).

17) Wakat states that its bifurcated paint roller “provides a quick and easy
method of achieving an effect identical to sponge or rag painting.” (Wakat,
Abstract).

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18) Wakat teaches that its rollers may have nap portions such as that
depicted in Wakat Fig. 10 depicted below:

Wakat Figure 10 depicted above contains:
159 Roller portion
160 Cylindrical base for engaging the cage
162 Nap portions formed of mohair having irregular
Peripheries

(Id. at col. 7, line 66 to col. 8, line 12 and Fig. 10).

19) Wakat teaches that the nap portions in Fig. 10 may be formed of
synthetic material including urethane foam. (Id. at col. 11. ll. 51-54).

20) Wakat teaches that its nap portions may be from 0.125 inches up to .5
inches in height. (Id. at col. 9, ll. 16-23).

21) Wakat states that its bifurcated rollers provide the illusion that a
substrate has been sponge painted while in fact the substrate has been
quickly painted. (Id. at col. 11, ll. 58-61).

22) Wakat states that its bifurcated rollers provide a thicker paint coat
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than that applied by sponge painting. (Id. at col. 11, ll. 62-65).

Moilanen, U.S. Patent 2,994,899
23) Moilanen is directed to a device for painting corners. (Moilanen, col.
1, ll. 8-13).

24) Moilanen describes a pair of sponges that are spaced slightly apart and
mounted to a common annular core. (Id. at col. 2, ll, 2-27 and Fig. 2, part
15).
PRINCIPLES OF LAW
An invention which would have been obvious is not patentable under
35 U.S.C. § 103. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1745-46, 82
USPQ2d 1385, 1400 (2007). The facts underlying an obviousness inquiry
include:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In addressing the
findings of fact, “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR at 1739, 82 USQP2d at 1395. As explained in KSR:
One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of
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invention a known problem for which there was an obvious
solution encompassed by the patent’s claims.

KSR at 1742, 82 USPQ2d at 1397.
Consistent with the principles established in Graham and followed in
KSR, the “discovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). In particular, where the
general conditions of the claims are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955). As explained in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR at 1742, 82 USPQ2d
at 1397.
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the prior art. Applicant’s may be sustained their burden by showing that
where the Examiner relies on a combination of disclosures, the Examiner
failed to provide sufficient evidence to show that one having ordinary skill
in the art would have done what Applicant did. United States v. Adams, 383
U.S. 39 (1966); In re Fridolph, 134 F.2d 414, 416, 57 USPQ 122, 124
(CCPA 1943) (does the prior art suggest doing the thing which the appellant
has done?)

ANALYSIS
There are three grounds of rejection on appeal, each of which is based
on obviousness under 35 U.S.C. § 103. The Examiner’s rejections and
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Patent Owner’s response thereto are discussed below.

i) The Rejection of Claims 1, 5-8 and 12-14 over the Australian
Application

Claims 1 and 8 are independent claims with claims 6 and 7 depending
from claim 1 and 12-14 depending from claim 8. Claims 1 and 8 are
directed to patterned synthetic sponges formed from synthetic open cell
elastomeric material and having an outer surface that bears a pattern having
ragged torn edges, being at least about 0.5 inches in depth. The sponge of
claims 1 and 8 simulates a natural sea sponge when contacting a wall surface
for creating faux finishes. Patentee’s dependent claims require the synthetic
sponge be formed from polyurethane, polyester or polyether (claims 5 and
12), have a pattern depth of from 0.5 to 0.75 inches (claims 7 and 14) and
that the pattern be formed using a rotating grinding wheel (claims 6 and 13).
The Examiner found hat the Australian application discloses the
“invention substantially as claimed with the exception of a particular depth.”
(Ans. at 3-4). The Examiner further found that one of ordinary skill in the
art would modify the depth of the pattern depending upon the type of pattern
desired. (Ans. at 4). The Examiner still further found that one of ordinary
skill in the art would have formed the artificial sponge using Patentee’s
claimed materials (polyurethane, polyester or polyether) due to the ready
availability of the materials and cost. (Id.). The Examiner states that the use
of the grinding wheel of claims 6 and 13 does not distinguish the resulting
torn sponge from the sponges described in the Australian application. (Id.).
Patentee contends that the Australian application fails to distinguish
between artificial and natural sponges. From this, Patentee contends that the
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Australian application “is devoid of any teaching to make a synthetic sponge
mimic a natural sponge nor how to accomplish such a task.” (Br. at 10).
One of ordinary skill in the art knows that sponge painting is popular
and considered aesthetic to a great number of people. One of ordinary skill
in the art also knows that natural sponges may be scarce and expensive.
Further, one of ordinary skill in the art knows that the use of natural
sponges, as opposed to artificial sponges on rollers, is labor intensive and
expensive. The Australian application teaches one of ordinary skill in the art
that any desired paint pattern may be formed using an artificial sponge that
has had an appropriate amount of material removed from its face. Based
upon the facts presented, we find that one of ordinary skill in the art would
have been aware that there was a known problem with natural sea sponges
for which there was an apparent solution, i.e., using artificial sponges that
had pieces removed from their faces so that the paint pattern created by the
artificially sponge mimics that of an natural sea sponge.
Patentee contends that the sponges described in the Australian patent
are patterned by cutting “away material,” which leaves smooth edges as
opposed to Patentee’s ragged, torn edges. (Br. at 11). Patentee states that
ragged edges created by tearing yield a natural sponge-like affect when used
in creating faux paint finishes. (Id.). As evidenced by the Australian
application, a person of ordinary skill in the art would have understood the
cause and effect relationship of removing portions from the face of the
sponge and the paint pattern created. Specifically, we find that one of
ordinary skill in the art could implement the teachings of the Australian
application and remove material from the face of an artificial sponge in the
manner necessary to achieve any desired “sponging” paint finish.
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Patentee presented to the Examiner some paint rollers and samples.
Patentee maintains that the paint rollers and samples it provided to the
Examiner demonstrate that there is a difference between torn edges and cut
edges. The Examiner was not impressed. We have reviewed the paint roller
samples Patentee provided the Examiner. Patentee is correct that the torn
artificial sponges provide a different paint pattern than artificial sponges that
have material removed to leave smooth edges. However, whatever one is
supposed to learn from the paint rollers and samples, would not negate the
Examiner's finding that one of ordinary skill in the art would have been able
to implement the teachings of the Australian application and remove the
material from the surface of the artificial sponge to produce any desired
pattern, i.e., would have understood that a smooth edge on a paint roller
leaves a different paint pattern from that of a paint roller having torn edges.
KSR at 1740, 82 USPQ2d at 1396 (“If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.”).
As to dependent claims 5-7 and 9-12, Patentee states:
With respect to appealed claims 5, 12, and 19, Australia ‘405
does not mention types of elastomeric materials, such as those
listed in this claim. With respect to appealed claims 6, 13, and
20, Australia ‘405 only mentions cutting. It specifically, does
not recognize the use of a grinding wheel in order to tear away
sponge material. With respect to appealed claim 7, there is no
teaching in Australia ‘405 that depth of pattern is important, nor
even a design variable.

(Br. at 11). Note, claims 19 and 20 were not rejected over the Australian
reference alone.
I'd put n. 2 right here as text. The Patentee admits that “foam rollers
were known prior to his invention.” (Br. at 12). Patentee does not dispute
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that its claimed materials, e.g., polyurethane sponges, or the use of a
grinding wheel to remove material2 were unknown to one of ordinary skill in
the art or provided unexpected benefits. Further, we can assume that
Patentee may be correct in stating that the depth of the torn edge is not
recited in the Australian application. The Australian application however,
instructs one of ordinary skill in the art to remove sufficient material such
that the desired pattern is created. Patentee’s arguments have been
considered but they do not sufficiently rebut the findings of fact made by the
Examiner. Patentee has done no more than follow the teachings of the prior
art and combine known elements to yield predictable results. Specifically,
one of ordinary skill in the art would have used artificial sponges on rollers
with portions of the sponge face removed in place of natural sea sponges as
the use of the artificial sponges results in reduced labor and material costs as
compared to natural sea sponges. Cf., KSR at 1739, 82 USPQ2d at 1395.
We conclude that Patentee has failed to demonstrate that the Examiner erred
in rejecting claims 1, 5-8 and 12-14 as obvious over the Australian
application.

2 Patentee’s recitation of a grinding wheel to produce the claimed sponge is a
product-by-process claim as the product is defined at least in part in terms of
the method or process by which it is made. Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 158 n., 9 USPQ2d 1847, 1855, n. (1989). In
construing such a claim, the Federal Circuit has held that “[i]f the product in
a product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985).
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ii) The Rejection of Claims 1-3, 5-10, 12-17, 19 and 20 over
Wakat, U.S. Patent 5,713,095 in view of the Australian
application

The Examiner found that the Australian application describes forming
a patterned sponge. (Ans. at 4). The Examiner further found that Wakat
discloses a patterned roller that may be made of foam absorbent material and
that Wakat describes the use of irregular patterns on the surface of the roller.
(Id.). The Examiner still further found that Wakat teaches that rollers can be
made to paint corners (“corner rollers”). The Examiner concluded that one
of ordinary skill in the art would have adapted the device of Wakat to paint
corners with a sponge painting pattern. (Id.).
Patentee contends that Wakat “is not related to making a synthetic
sponge mimic a natural sponge . . .” (Br. at 12). Patentee asserts that Wakat
fails to show or render obvious its claimed invention. Patentee also asserts
that the Australian application fails to remedy the deficiencies of Wakat.
(Id.).
Wakat describes adding nap portions to the face of a paint roller
where the added nap portion is up to .5 inches in height. (Wakat at col. 9, ll.
16-23). These additional nap portions are used to create irregular shape
patterns. (Id. at Fig. 24-37). Further, Wakat states that its bifurcated paint
roller “provides a quick and easy method of achieving an effect identical to
sponge or rag painting.” (Id., Abstract). One of ordinary skill in the art
would understand that Wakat teaches the use of artificial sponges, foam
paint rollers, to achieve a painting effect identical to that of natural sea
sponges.
The Australian application describes the use of tools for producing
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decorative finishes on painted walls. The Australian application teaches that
artificial sponges can be used to create desired patterns. In particular, the
Australian application teaches that any desired pattern can produced on
painted surfaces by painting with sponges that had sufficient portions of the
sponge face removed. Based upon the teachings of the prior art, one of
ordinary skill in the art would have understood that a desired paint pattern
may be created by removing portions from the surface of a paint roller to
achieve the desired sponge painting effect.
Patentee contends that the Australian application teaches away from
Patentee’s claimed beveled corner roller as required by claims 2, 3, 9, 10, 16
and 17. (Ans. at 12). In particular, Patentee states that the Australian
application describes its edges as substantially flat in order to avoid overlap
marks. (Id.). Patentee states that Wakat shows a beveled corner roller.
(Id.). One of ordinary skill in the art would have understood that the use of a
beveled roller would aid in the painting of corners and that the Australian
application does not teach otherwise.
Patentee argues that the prior art references fail to describe the use of
a rotating grinding wheel to tear the face of the sponge as required by claims
6, 13, and 20. (Br. at 12). As discussed above, Patentee’s grinding wheel
recitation is a product-by-process limitation. Patentee has failed to
demonstrate that the use of a grinding wheel creates a sponge face surface
that is distinct from that suggested by the prior art, i.e., removing surface
material such that the resulting surface creates the desired paint effect.
Patentee also contends that the prior art fails to show the depth of the
pattern, such as the 0.5 inches to 0.75 inches set forth in Patentee’s claim 7.
Wakat however, describes the use of 0.5 inch nap portions to create irregular
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paint patterns. And even more to the point is that the Australian application
teaches removing a sufficient amount of material from the surface of the
sponge to create a desired effect. The Patentee has failed to come to grips
with the fact that the Examiner has rejected on a combination of references
and that all the relevant teachings must be considered. One skilled in the art
would have been able to implement the teachings of the prior art and remove
the necessary amount of material to achieve any desirable natural sea sponge
paint effect.

iii) The Rejection of Claims 4, 11, and 18 over
Wakat, U.S. Patent 5,713,095 and Australian
application and further in view of Moilanen, U.S. Patent
2,994,899

Claims 4, 11 and 18 require a pair of spaced-apart pattern sponges.
Patentee contends that claim 4 is novel by virtue of its dependency on
claim 1 and is silent as to claims 11 and 18. (Ans. at pages 4-5). For the
reasons provided above with respect to claim 1, we likewise affirm the
rejection as to claims 4, 11, and 18.

CONCLUSION
Patentee has failed to demonstrate that the Examiner erred in rejecting
claims 1-20 over the cited prior art references. We AFFIRM the Examiner's
final rejection of claims 1-20.

AFFIRMED

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MUELLER AND SMITH, LPA
MUELLER-SMITH BUILDING
7700 RIVERS EDGE DRIVE
COLUMBUS OH 43235

mg
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