Ex Parte MartinezDownload PDFPatent Trial and Appeal BoardOct 31, 201713881240 (P.T.A.B. Oct. 31, 2017) Copy Citation 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. 2 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 3 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. 4 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. 5 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 6 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 7 Copy with citationCopy as parenthetical citation