Ex Parte 7914167 et al

Patent Trial and Appeal Board

Apr 26, 2017

90013550 (P.T.A.B. Apr. 26, 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.
90/013,550 08/12/2015 7914167 KWK-04380/03 1839
32692 7590 04/27/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HOTALING, JOHN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/27/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN G. PETERSEN
Appeal 2017-005700
Reexamination Control 90/013,550
Patent No. US 7,914,167 B2
Technology Center 3900
Before MARC S. HOFF, STEPHEN C. SIU, and ERIC B. CHEN
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 21—37 and 39.1 Claims 1—9, 11, 13—20, and 38 are confirmed in the
present proceeding. We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.
We affirm.
The ’167 patent issued to Petersen on March 29, 2011, and is assigned
to 3M Innovative Properties Company. The ’167 patent is a surface
modifying apparatus, such as a non-motorized or motorized sanding tool.
1 Claims 1—9, 11, 13—20, and 38 stand confirmed as patentable. Claims 10,
12, and 40 have been cancelled.
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Reexamination Control 90/013,550
Patent No. 7,914,167 B2
An illumination system provides an intensity and incidence angle on the
working surface that facilitates visual inspection of defects and blemishes on
the surface being modified. See Abstract.
Claim 21 illustrates the claims on appeal:
21. A surface sanding apparatus comprising:
a housing assembly including a major surface attachable to a surface
sanding abrasive article; and
a source of illumination coupled to the housing assembly and operable
for projecting a beam of light to an area to be illuminated on a working
surface adjacent at least a portion of a periphery of the housing assembly
with sufficient intensity and at a generally consistent and shallow angle
thereby creating shadows, by defects located at and below the surface to be
sanded, that are visually discemable,
wherein the housing assembly includes: a rotary portion defining a
major surface to be connected to a surface sanding article, a stationary
portion, a handle is pivotally connected to the stationary portion for pulling
the housing assembly over a working surface, and a source of motive power
on the stationary portion for driving the rotary portion; wherein the source of
illumination is coupled to the stationary portion to project the beam to the
area adjacent the periphery of the rotary portion.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
List US 2,641,721
Matechuk US 5,239,783
Hall US 5,250,139
Guertler GB 2 429 181 A
Throughout this Decision, we refer to Appellant’s Appeal Brief
(“App. Br.,” filed Oct. 11, 2016), the Reply Brief (“Reply Br.,” filed Dec. 2,
June 9, 1953
Aug. 31, 1993
Oct. 5, 1993
Aug. 19, 2005
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Reexamination Control 90/013,550
Patent No. 7,914,167 B2
2016) and the Examiner’s Answer (“Ans.,” filed Nov. 14, 2016) for their
respective details.
REJECTIONS
Claims 21, 23, 28—36, and 39 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over List and Matechuk (“First Ground of Rejection”).
Claims 21, 23—25, 28—37,2 and 39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over List, Matechuk, and Hall (“Second
Ground of Rejection”).
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over List, Matechuk, Hall, and Guertler (“Third Ground of
Rejection”).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over List and Matechuk (“Fourth Ground of Rejection”).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over List, Matechuk, and Hall (“Fifth Ground of Rejection”).
ISSUES
Appellant’s arguments present us with the following issues:
1. Does the combination of List, Matechuk, and Hall teach or fairly
suggest a source of illumination projecting a beam of light at a generally
2 The Statement of Rejection in the Examiner’s Answer includes claim 37 in
this ground of rejection. Ans. 9. Claim 37 was omitted from the statement
of claims rejected in the Appeal Brief.
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Reexamination Control 90/013,550
Patent No. 7,914,167 B2
consistent and shallow angle thereby creating shadows that are visually
discemable?
2. Does the combination of List, Matechuk, and Hall teach or fairly
suggest coupling the source of illumination to the stationary portion of the
housing assembly?
3. Does the combination of List, Matechuk, and Hall teach or fairly
suggest a source of illumination in close proximity to and at a fixed height
relative to the major surface?
PRINCIPLES OF LAW
In KSR v. Teleflex, the Supreme Court emphasized “the need for
caution in granting a patent based on the combination of elements found in
the prior art,” and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR Inti Co. v. Teleflex Inc, 550 U.S. 398, 415
(citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)),
and reaffirmed principles based on its precedent that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
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Patent No. 7,914,167 B2
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGSImporters Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995).
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Patent No. 7,914,167 B2
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a),
the Board may rely on less than the total amount of evidence relied on by the
Examiner without designating it as a new ground of rejection. In re Bush,
296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA
1966).
ANAFYSIS
Second ground of Rejection, Claims 21,23-25,28-37, and 39 over
Fist, Matechuk, and Hall
We are not persuaded by Patent Owner’s various arguments against
the propriety of the Examiner’s rejection.
Patent Owner’s argument that Hall does not provide guidance
concerning positioning of a light on an apparatus that includes stationary and
movable components is not persuasive. See App. Br. 8. The Examiner
looks to Matechuk, rather than Hall, for a teaching concerning such
positioning.
Patent Owner’s argument that the combination of Fist and Matechuk
would not motivate the skilled artisan to relocate the light from Matechuk’s
shaft to its sanding head is not germane to the Examiner’s rejection. See
App. Br. 8; Ans. 7. The Examiner’s Answer does not propose such a
modification, and in any case, the test of obviousness is what the combined
disclosures of Fist, Matechuk, and Hall would have suggested to the skilled
artisan, rather than what would result from the mere bodily incorporation of
an element from one reference into another reference.
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With respect to Hall, we agree with the Examiner that Hall teaches the
use of a light source at a shallow angle in order to create shadows made by
visually discernible surface imperfections. See Ans. 22. Patent Owner is
correct that Hall, having been introduced, must be relied upon for all it
teaches. See Reply Br. 4. We do not agree with Patent Owner’s implication
that a skilled artisan reading Hall would be discouraged from following the
path pursued by the present invention. See App. Br. 8—9. We find that Hall
teaches that mounting a light at differing heights or differing angles of
declination will produce qualitatively different shadows. See Hall col. 4:4—
9. Hall further teaches that the skilled artisan may wish to select the
appropriate light height and/or declination angle depending on the type of
surface to be worked. See Hall col. 4:10-21. We, therefore, agree with the
Examiner that modifying List and Matechuk in view of the teachings of
Hall, to include a source of illumination at a generally consistent and
shallow angle thereby creating visually discemable shadows, would have
amounted to no more than the combination of familiar elements according to
known methods, yielding predictable results. See Ans. 5, 22; See KSR, 550
U.S. at 416.
We conclude that the Examiner did not err in combining List,
Matechuk, and Hall to achieve the invention under appeal. We sustain the
§ 103(a) rejection of representative claim 21, as well as claims 23—25, 28—
37, and 39 not argued separately.
Fifth ground of Rejection, Claim 22 over List, Matechuk, and Hall
We are not persuaded by Patent Owner’s argument that the
combination of List, Matechuk, and Hall fails to teach a source of
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illumination at a fixed height. See App. Br. 13—14. Rather, we agree with
the Examiner that List teaches a source of illumination in close proximity at
a fixed height relative to the major surface. Ans. 5; see List Pig. 1. We,
therefore, sustain the Examiner’s § 103(a) rejection of claim 22 over List,
Matechuk, and Hall.
Third ground of Rejection, claims 26 and 27 over List, Matechuk,
Hall, and Guertler
Patent Owner relies on the arguments made with respect to the Second
Ground of Rejection, asserting that “the disclosures of Guertler do not
overcome the above-discussed deficiencies in the ground of rejection based
on List, Matechuk[,] and Hall.” App. Br. 10. Because we do not agree with
Patent Owner’s argument that such deficiencies arise, we sustain the
§ 103(a) rejections of claims 26 and 27 for the same reasons expressed
supra, with respect to the rejection of independent claim 21.
Other Rejections
Because our decision is dispositive regarding unpatentability of all
appealed claims, we need not reach the merits of the Examiner’s decision to
also reject the appealed claims over the first Ground of Rejection and
fourth Ground of Rejection, other than as incorporated by the Examiner into
the grounds of rejection that include the Hall reference. See Beloit Corp. v.
Valmet Oy, 742 P.2d 1421, 1423 (Led. Cir. 1984) (approving ITC’s
determination based on a single dispositive issue, and not reaching other
issues not decided by the lower tribunal).
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Patent No. 7,914,167 B2
CONCLUSIONS
1. The combination of List, Matechuk, and Hall fairly suggests a
source of illumination projecting a beam of light at a generally consistent
and shallow angle thereby creating shadows that are visually discemable.
2. The combination of List, Matechuk, and Hall fairly suggests
coupling the source of illumination to the stationary portion of the housing
assembly.
3. The combination of List, Matechuk, and Hall teaches a source of
illumination in close proximity to and at a fixed height relative to the major
surface.
ORDER
The Examiner’s decision to reject claims 21—37 and 39 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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Appeal 2017-005700
Reexamination Control 90/013,550
Patent No. 7,914,167 B2
For Patent Owner:
3M Innovative Properties Company
P.O. Box 33427
St. Paul, MN 55133-3427
Cc: Third Party Requester,
DINSMORE & SHOHL LLP
P.O. Box 7021
Troy, MI 48007-7021
2nd Third Party Address - Name change not of record
Gifford, Krass, Sprinkle, Anderson & Citkowski, PC
POBOX 7021
TROY, MI 48007-7021
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