12566374 (P.T.A.B. Oct. 20, 2016)

Ex Parte Hamilton

Patent Trial and Appeal BoardOct 20, 2016

12566374 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/566,374 0912412009 Sheila Hamilton 22429 7590 10/24/2016 HAUPTMAN HAM, LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 713-2719 2284 EXAMINER KARLS, SHAYLYNN ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 10/24/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@ipfirm.com pair_lhhb@firsttofile.com EAnastasio@IPFirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHEILA HAMIL TON Appeal2014-005016 Application 12/566,374 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 8, 10, 11, 14, 15, and 21-24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to a cleaning surface. Spec., Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A contact cleaning surface comprising: a cleaning surface; wherein at least a part of the cleaning surface is microscopically roughened for enhancing collection and/or Appeal2014-005016 Application 12/566,374 removal of small contaminating particles from a contaminated surface, the microscopically roughened surface includes indentations on the cleaning surface, the indentations having a cross-sectional diameter and depth of less than five microns (5,000 nm). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Haba Sakaizawa Kerchiss Lindner US 2002/0023307 Al US 6,560,426 B2 GB 2 151 988 A DE 101 08 205 Al REJECTIONS Feb.28,2002 May 6, 2003 July 31, 1985 Sept. 12, 2002 Claims 1-5, 8, 10, 11, 14, and 15 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Sakaizawa and Lindner. Claims 1-5, 8, 10, 11, and 15 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kerchiss and Lindner. Claims 6 and 7 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over either Sakaizawa or Kerchiss, in view of Lindner. Claims 1-8, 10, 11, 14, 15, and 21-24 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Haba, Sakaizawa and Lindner. OPINION All of the Examiner's rejections are predicated on the Examiner's reliance on Lindner to support the assertion that it would have been obvious to provide any of the devices of the primary references with indentations sized to satisfy the requirements of independent claims 1 and 21. The objective ofLindner's indentations is to corral liquid glue on a horizontal 2 Appeal2014-005016 Application 12/566,374 surface. Lindner, Abstract. While we recognize that familiar items may have obvious uses beyond their primary purposes, we are not apprised of any reasoning or evidence to demonstrate that grooves such as Lindner' s would be useful "to capture and collect particles" as the Examiner repeatedly suggests. Final Act. 4, 5, 7. Nor are we apprised of any need fulfilled by providing indentations of that particular size in the prior-art devices the Examiner proposes to modify. Pointing out that the small contaminating particles recited in claims 1 and 21 relate to an intended use of the claimed device (Ans. 3) misses the point of Appellant's argument: there is no rational reason made of record for incorporating Lindner' s indentations to capture particles in the manner suggested by the Examiner. "[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we agree with Appellant that none of the rejections can be sustained on the basis set forth by the Examiner. See App. Br. 8-14. DECISION The Examiner's rejections are reversed. REVERSED 3