Ex Parte Martinez

Patent Trial and Appeal Board

Oct 31, 2017

13881240 (P.T.A.B. Oct. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/881,240 04/24/2013 Jaime A. Martinez 66386US004 4481
32692 7590 11/02/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MILANIAN, ARMAN
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAIME A. MARTINEZ
Appeal 2016-006921
Application 13/881,240
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-006921
Application 13/881,240
THE INVENTION
Appellant’s invention is a buffing wheel. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A self-contained fibrous buffing article comprising:
a buffing article that has at least one layer of a fibrous
nonwoven fabric comprising lyocell fiber; and
a pre-applied or pre-impregnated abrasive buffing
composition that is a hardened adherent coating comprising a
crosslinked binder, abrasive particles, and a lubricant.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Culler US 5,942,015 Aug. 24, 1999
DeVoe US 6,258,138 B1 July 10, 2001
Windisch US 6,352,567 B1 Mar. 5, 2002
Chen US 2003/0166387 Al Sept. 4, 2003
Hedge1
The following rejections are before us for review:
1. Claims 1, 4—9, 12, 13, and 17 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over DeVoe and Hedge.
2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeVoe, Hedge, and Culler.
3. Claims 10, 11, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over DeVoe, Hedge, and Windisch.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over DeVoe, Hedge, and Chen.
1 Raghavendra R. Hedge et al., Rayon Fibers, (2004),
http://web.archive.org/web/20081012133442/
http:// www.engr.utk.edu/ mse/T extiles/Rayon%2 Ofibers .htm.
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Appeal 2016-006921
Application 13/881,240
OPINION
Unpatentability of Claims 1, 4—9, 12, 13, and 17
over DeVoe and Hedge
Claim 1
The Examiner finds that DeVoe’s abrasive article is capable of being
a buffing article and has at least one layer of a fibrous non woven fabric.
Final Action 2. The Examiner acknowledges that DeVoe’s fabric is not
lyocell fiber, but then relies on Hedge as disclosing lyocell fiber. Id. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to use Hedge’s lyocell
fiber in DeVoe to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to create
a superior product due to various properties of lyocell. Id.
Appellant traverses the rejection by arguing, among other things, that
the Examiner’s proposed combination does not result in a buffing article
with a pre-impregnated abrasive buffing composition as claimed. Appeal
Br. 7. Appellant points out that DeVoe uses fibrous material as a backing to
support a binder and a coating of abrasive particles. Id. Appellant argues
that DeVoe’s backing 12 is not used to perform any kind of abrasion or
buffing. Id. at 8.
In response, the Examiner takes the position that DeVoe’s entire
coated abrasive article 10, which includes backing 12 and abrasive layer 14,
corresponds to Appellant’s claimed buffing article. Ans. 5.
The Examiner and Appellant disagree as to what may be encompassed
by the term “buffing article,” which as claimed includes a “pre-impregnated
abrasive buffing composition.” During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
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Appeal 2016-006921
Application 13/881,240
with the specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation
standard, claim terms are given their ordinary and customary meaning as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). However, even under the broadest reasonable interpretation, the
Board’s construction “cannot be divorced from the specification and the
record evidence.” In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011).
Furthermore, it is well settled that: “[e]ven when guidance is not provided
in explicit definitional format, the specification may define claim terms by
implication such that the meaning may be found in or ascertained by a
reading of the patent documents.” Irdeto Access, Inc. v. EchoStar Satellite
Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (internal quotations omitted).
Appellant’s Background section explains that “[bjuffmg is a finishing
process which is typically accomplished after more rigorous stock removal
treatment of the surface.” Spec. 1 (emphasis added). Generally, buffing is
performed for aesthetic purposes. Id. Buffing results in refinement of
scratches on the workpiece and yields anywhere from a uniform matte finish
to a reflective, mirror-like finish. Id. Prior to the advent of Appellant’s
invention, buffing was typically accomplished with a rotating, fibrous
buffing wheel used in conjunction with a buffing compound. Id.
According to Appellant, buffing compound heretofore has been
applied peripherally to the buffing wheel. Id. Buffing compound must be
applied frequently to achieve a consistent finish. Id. Furthermore, buffing
compound can be transferred onto adjacent surfaces leaving an undesirable
residue on the workpiece surface that must then be removed. Id. at 1—2.
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Appeal 2016-006921
Application 13/881,240
Appellant represents that previous attempts to dispose abrasive compositions
on the working surface of a buffing wheel have been unsuccessful. Id. at 2.
Appellant explains that the present invention relates to buffing wheels that
function without applying external buffing compounds to the wheel. Id.
Appellant describes the “self-contained fibrous buffing article,” which
is recited in the preamble of claim 1, as follows:
a buffing article containing a pre-applied or pre-impregnated
abrasive buffing composition to the fibrous material forming
the buffing article. The abrasive buffing composition is suitable
for cut or color buffing, and is applied to the buffing article by
the manufacturer during the initial manufacturing of the
buffing article. As such, the application of a buffing compound
to the buffing article by an operator before first using or while
using the buffing article to buff a work surface is not required.
Id. at 3 (emphasis added). Exemplary buffing wheels are illustrated in
Figures 1—3.
In contrast to buffing wheels, abrasive articles are used for more
aggressive surface treatment, such as removing oxidation or debris, and
shaping. See, e.g., Windisch, col. 1,11. 16—21. The grinding properties of an
abrasive article “can be tailored to some degree to provide a desired level of
aggressive removal of material.” Id. at col. 1,11. 32—36.
DeVoe discloses an abrasive article that uses an improved “make
coat” formulation. DeVoe, col. 1,11. 62—63. DeVoe explains that coated
abrasives comprise a flexible backing upon which a binder supports a
coating of abrasive particles. Id. at col. 1,11. 17—18. The abrasive particles
are generally oriented with their longest dimension perpendicular to the back
to provide an “optimum cut rate.” Id. at col. 1,11. 20—23. A size coat is
applied over the abrasive particles to anchor the particles to the backing. Id.
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Appeal 2016-006921
Application 13/881,240
at col. 1,11. 24—27. “Porous cloth, fabric and textile materials are frequently
used as backings for coated abrasive articles.” Id. at col. 1,11. 28—29.
In DeVoe, backing 12 “may be comprised of cloth, vulcanized fiber,
paper, nonwoven materials, fibrous reinforced thermoplastic backing,
substrates containing hooked stems, looped fabrics, metal foils, mesh, foam
backings, and laminated multilayer combinations thereof.” Id. at col. 4,
11. 32—37. DeVoe’s abrasive layer 14 comprises abrasive particles 16 that
are bonded to a major surface of backing 12. Id. at col. 4,11. 66—67. A size
coat 20 is then applied over the abrasive particles for reinforcement. Id. at
col. 5,11. 1—3. Typical abrasive particles include aluminum oxide, silicon
carbide, co-fused alumina-zirconia, diamond, ceria, titanium diboride, cubic
boron nitride, boron carbide, and garnet with an average diameter of 0.1 to
1500 microns. Id. at col. 5,11. 3—12. An exemplary structure of an abrasive
article is depicted in Figure 1. Id. at Fig. 1.
After reviewing Appellant’s Specification and Figures, and comparing
them with DeVoe, we are not persuaded that the claimed “buffing article”
can be reasonably construed to encompass the “abrasive article” of DeVoe.
See Ans. 5. For example, there is no reason to believe that DeVoe’s abrasive
article is “suitable for cut or color buffing” within the meaning of “buffing
article” and “buffing composition” as described in Appellant’s Specification.
Spec. 3. By contrast, DeVoe discloses an abrasive article with particles of
up to 1500 micron diameter, which are oriented in such a manner as to
provide an “optimum cut rate.” DeVoe, col. 1,11. 20—23. The Examiner has
now shown sufficiently that this structure for performing coarser, more
aggressive surface treatment reasonably corresponds to the claimed “buffing
article” and “buffing composition,” capable of performing cut and color
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Appeal 2016-006921
Application 13/881,240
finishing. “A construction that is unreasonably broad and which does not
reasonably reflect the plain language and disclosure will not pass muster.”
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015).
We are similarly not persuaded that merely substituting lyocell fiber for the
backing fabric of DeVoe would result in a buffing article as defined in the
Specification and as claimed in claim 1.
The Examiner’s findings of fact are not supported by a preponderance
of the evidence and, consequently, we do not sustain the rejection of claim 1.
Claims 4—9, 12, 13, and 17
Claims 4—9, 12, 13, and 17 depend, either directly or indirectly, from
claim 1 and add various dependent limitations. Claims App. The
Examiner’s rejection of these claims suffers from the same infirmity that we
have discussed above with respect to claim 1. For the same reasons, we do
not sustain the rejection of claims 4—9, 12, 13, and 17.
Unpatentability of Claims 2, 3, 10, 11, and 14—16
These claims are rejected over DeVoe and Hedge in combination with
various other references. Final Action 4—5. We have reviewed the
additional cited art and the Examiner’s findings and we determine that these
additional references do not cure the deficiencies we have noted above with
respect to the rejection of independent claim 1 from which these claims
depend. For the same reasons, we do not sustain the rejection of claims 2, 3,
10, 11, and 14-16.
DECISION
The decision of the Examiner to reject claims 1—17 is reversed.
REVERSED
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