Ex Parte Pahl et al

Patent Trials and Appeals Board

Mar 29, 2019

13412955 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/412,955 03/06/2012
32692 7590 04/02/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Thomas E. Pahl
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.
67122US004 7479
EXAMINER
MORGAN, EILEEN P
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 THOMAS E. PAHL, JOHN G. PETERSEN, and
MICHAELP. WALD
Appeal2017-009914
Application 13/412,955
Technology Center 3700
Before DANIEL S. SONG, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Thomas E. Pahl et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-8, 10-13, 16, 19, and 20
under 35 U.S.C. § 103(a) as unpatentable over Petersen (US 2009/0325470
Al, published Dec. 31, 2009), Carter (US 2002/0155283 Al, published Oct.
1 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2015-000724. See Decision ("Dec."), dated January 4,
2017. In that Decision, the adverse decision of the Examiner was
AFFIRMED. Following that Decision, Appellants reopened prosecution.
Appeal2017-009914
Application 13/412,955
24, 2002) and Making Sense of Sandpaper. 2 Claims 9, 14, 15, 17, and 18
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a coarse abrasive article."
Spec. 1 :24 ( emphasis added).
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A sheet of coarse sandpaper, comprising:
(a) a flexible backing layer having opposed first and
second major surfaces;
(b) an adhesive make coat on the second major surface;
( c) coarse abrasive particles at least partially embedded in
the make coat, thereby defining a coarse abrasive surface; and
( d) an exposed non-slip coating layer on the first major
surface, wherein the nonslip coating layer comprises a base resin
that comprises an amorphous hydrocarbon polymer or
copolymer or a mixture thereof, and an effective amount of a
tackifying resin, and wherein the non-slip coating layer has a
thickness of at least about 20 microns and no greater than about
50 microns.
2 The website article Making Sense of Sandpaper is provided by the
Examiner in the Non-Final Office Action. See Non-Final Office Action 7-9
("Non-Final Act."), dated Mar. 10, 2017. According to the Examiner, the
article is also available at http://www.jamarco.com/91bTechnical/sandpaper
/Making%20Sense%20of>/o20Sandpaper% 20-% 20Page%202 % 20-
%20Fine% 20Woodworking.htm. See id. at 6.
2
Appeal2017-009914
Application 13/412,955
ANALYSIS
As an initial matter, the Examiner contends the Board's prior Decision
dated January 4, 2017 did not address the Examiner's rejection that if the
term "coarse abrasive" is defined only by Appellants' Specification to be
abrasive sized P 100 or less, then the Examiner takes the position that it
would have been obvious to one of ordinary skill in the art at time invention
was made to use any known abrasive particle size, such as P 100 or less in
the product of Petersen, dependent on the workpiece being abraded and the
desired finish. See Ans. 7; see also id. at 8; Final Act. 4--5.
However, the Board did address this alternative position posed by the
Examiner. See Dec. 5. In particular, the Board stated:
[A]lthough Petersen's Example A of a grade of P150 "is just one
example," the Examiner fails to provide sufficient evidence or
technical reasoning that a grade of "P 100 or less" is "a slight
variation [in] the particle size in Petersen's Example A" that
would "constitute[] an obvious mechanical expedient at the time
of [Appellants'] invention."
Dec. 5 (citing Ans. 4, 6; Reply Br. 9 of Appeal No. 2015-000724).
The Board acknowledges that Petersen discloses "any abrasive
particles [] may be used with this invention." Petersen ,r 66. 3 However, the
Board clarified in the prior decision that Appellants' Specification expressly
defines the term "coarse" to mean "having a PEP A P grade, as outlined by
the Federation of European Producers of Abrasives and as tested in
accordance with the ISO 6344 standard, of P 100 or lower ( with a lower
grade corresponding to larger particles)." Dec. 4; Spec. 11:32-12:2.
3 We note that Petersen "is incorporated by reference in its entirety" in the
subject application. Spec. 15:7-10; see also Dec. 3, n.2.
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Application 13/412,955
Appellants' Specification further describes "non-coarse" abrasive articles to
include FEPA grades of P150 and P180. See Spec. 22:1-23.
The Examiner takes the position that Petersen's disclosure that "any
abrasive particles may be used" means that "any suitable abrasive including
the physical make up, the shape and size [ can be used]. Therefore, the broad
meaning of 'coarse abrasive' in claim 1 appears to be met." Non-Final Act.
2 ( emphasis added); see also Dec. 5. However, the Examiner does not give
proper effect to the phrase "coarse" abrasive particles. Stated differently, the
Examiner's interpretation appears to render meaningless or superfluous the
phrase "coarse" abrasive particles. Claims are construed with an eye
towards giving effect to all terms in the claim. See Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions that render phrases in claims superfluous); In re Prater, 415
F.2d 1393, 1404 (CCPA 1969) ("claims yet unpatented are to be given the
broadest reasonable interpretation consistent with the specification").
In this case, Petersen merely includes examples of what has been
described in Appellants' Specification as "non-coarse" abrasive particles,
such as P150 and P320. See Petersen ,r,r 80, 83, 84; see also Dec. 4--5; Spec.
22:1-23. Petersen is silent as to any examples of"coarse" abrasive particles
as defined by Appellants' Specification (i.e., aFEPAP grade ofPlOO or
lower). See Dec. 5 ("Petersen is silent regarding 'coarse' abrasive particles
with a grade of 'PlOO or lower."' (citing Reply Br. 7-9 of Appeal No. 2015-
000724)). In addition, the Examiner does not provide sufficient evidence or
technical reasoning to establish that a skilled artisan would have been
motivated to use "coarse" abrasive particle, as defined by Appellants'
4
Appeal2017-009914
Application 13/412,955
Specification, in the product of Petersen. 4 Non-Final Act. 2-3, 4--5; see also
Ans. 7-8; Dec. 5.
Thus, as to the Examiner's rejection based on Petersen alone5 (see
Non-Final Act. 3 ("[I]t would have been obvious to one of ordinary skill in
the art at time invention was made to use any known abrasive particle size,
such as PIOO or less in the product of Petersen alone")), this rejection has
already been considered by the Board and the claims were all subject to a
final rejection that the Board reversed in the prior proceeding. See Dec. 3---6.
We agree with Appellants that this issue has "already been reviewed, found
lacking, and overturned, by the Board" in the prior Board decision and that
the Examiner errs in raising this same issue in the subject appeal. See
Appeal Br. 5---6; see also Dec. 3-6. 6
In the Non-Final Office Action, the Examiner takes an alternative
approach by combining the teachings Petersen and Making Sense of
Sandpaper. See Non-Final Act. 3. In particular, the Examiner finds that
"Making Sense of Sandpaper teaches a sandpaper using abrasive grit from
coarse to fine (first paragraph) and in particularly uses a coarse sanding grit
of 80 ( equivalent to Pl 00-see chart)." Non-Final Act. 3--4; see also Making
4 The Examiner does not direct us to any discussion in Petersen about
"Petersen's disclosure[] clearly [being] directed to sandpaper of any or all grit
size[s]." Non-Final Act. 3.
5 The Examiner relies on the teachings of Carter for dependent claim 20. See
Non-Final Act. 4.
6 Appellants are correct that because the Board found the Examiner failed to
establish that Petersen disclosed the "coarse abrasive particles" of claim 1 and
because "this finding was sufficient in and of itself to overturn the obviousness
rejection, there was no need for the Board to consider the issue of unexpected
results in the previous Appeal." See Appeal Br. 8 (footnote omitted).
5
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Application 13/412,955
Sense of Sandpaper, 1 ("coarse paper, perhaps 80-grit or 100-grit."); 3,
comparison chart. The Examiner concludes it would have been obvious "to
use coarse abrasive particle size, such as 80 grit/P 100 in the product of
Petersen, for more strictly abrasive purposes to remove material rather than
smooth the workpiece ('Don't Skip Grits ... ['] paragraph in website
article)." Non-Final Act. 4. The Examiner also concludes "[i]f it is desired
to quickly remove material from a workpiece, it would have been obvious to
utilize a course grit sandpaper" in Petersen "as this would be more efficient
than abrading the workpiece a much longer period of time with a finer grit
sandpaper in keeping with the teaching of Making Sense of Sandpaper." Id.
at 3.
Appellants do not address the Examiner's rejection of Petersen and
Making Sense of Sandpaper. In fact, Appellants acknowledge that they "did
not argue the issue of whether it would have been obvious to change the size
of Petersen's abrasive." Reply Br. 5; see also id. at 6. Thus, Appellants do
not apprise us of Examiner error.
However, Appellants contend that "the non-obviousness of the
claimed invention rests on the foundation of unexpected results" and that "a
sufficient showing has been made of secondary considerations in the form of
unexpected results, that rebut any finding of obviousness." Reply Br. 6; see
also id. ("[T]he showing of unexpected results, as presented in the
application as filed and as discussed in detail in the Appeal Brief, is
sufficient to rebut a finding of obviousness of the claimed invention based
on the cited references, including Making Sense of Sandpaper."); id. at 5;
Appeal Br. 7-10.
6
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Application 13/412,955
The Examiner takes the position that according to MPEP 716.02(e),
an affidavit or declaration must be submitted in order to demonstrate
unexpected results and as "[ n Jo such affidavit or declaration of facts exists"
for the subject application, Appellants have not presented any evidence of
unexpected results. See Non-Final Act. 9. However, Appellants correctly
point out MPEP 2145 states that rebuttal evidence, such as unexpected
results, "can be presented in the specification ... or by way of an affidavit."
See MPEP 2145; In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
In this case, there is evidence of a comparison to the closest prior art.
In fact, Appellants point out that "[ t ]he Examiner has designated Petersen
(US2009/0325470) as being the closest prior art" and that "[A]ppellant[s']
submit[] that the Working Examples and Comparative Examples [in the
Specification] provide a proper comparison with the disclosures of
Petersen." Appeal Br. 9. In particular, Appellants' Comparative Example 1
incorporates a non-slip material comprising "a carboxylated styrene-
butadiene rubber," which is the same non-slip material found in Examples 4
and 5 of Petersen, with "coarse" abrasive particles having a PEP A P80
rating. See Spec. 21:6-32; see also Petersen ,r,r 88, 89; Appeal Br. 9. In this
Example, it was found that in normal hand sanding tests with "coarse"
sandpaper (i.e., sandpaper having a FEPA P80 rating) and a non-slip
material of carboxylated styrene-butadiene rubber, "loose coarse particulates
appeared to significantly decrease the non-slip property of the non-slip
coating." See Spec. 21:6-32 (emphasis added); see also Appeal Br. 9.
Based on this evidence, we agree with Appellants that Comparative
Example 1 demonstrates a non-slip material (i.e., carboxylated styrene-
butadiene rubber) that "was found satisfactory by Petersen when used with
7
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Application 13/412,955
abrasive particles that were not coarse abrasive particles [ e.g., Pl 50], 7
exhibited unsatisfactory deterioration in non-slip performance when used in
combination with coarse abrasive particles [i.e., P80]." Appeal Br. 9
(underlining added). We further agree with Appellants that Comparative
Example 1 is illustrative of a "problem solved by [Appellants] (the effect of
coarse abrasive particles on non-slip performance) [that] was not
appreciated by Petersen, and that a representative non-slip material that was
found satisfactory by Petersen was found to be unsatisfactory when used
with coarse abrasive particles." Id. (emphasis added). Thus, Appellants
have presented evidence of unexpected results, that when weighed with the
evidence of obviousness, is sufficient to support a conclusion of non-
obviousness. See Appeal Br. 10; see also Reply Br. 3---6.
For these reasons, we do not sustain the Examiner's rejection of
claims 1-8, 10-13, 16, 19, and 20 as unpatentable over Pertersen, Carter,
and Making Sense of Sandpaper.
DECISION
As discussed above, the Examiner's rejection of claims 1-8, 10-13,
16, 19, and 20 in view of the teachings of Petersen for the limitation "coarse
abrasive particles" has already been reviewed and REVERSED by the Board
in the prior Board decision (i.e., Appeal No. 2015-000724).
7 Paragraph 83 of Petersen discloses that "[c]omparative Example A was 3M
grade P 150 216U" paper. See Petersen ,r 83. Further, paragraph 88 of
Petersen discloses that "[ e ]xample 4 was 216U sandpaper" and paragraph 89
of Petersen discloses that "[e]xample 5 was the same as Example 4." See
Petersen ,r,r 88, 89.
8
Appeal2017-009914
Application 13/412,955
We REVERSE the decision of the Examiner to reject claims 1-8, 10-
13, 16, 19, and 20 as unpatentable over Petersen, Carter, and Making Sense
of Sandpaper.
REVERSED
9