Ex Parte Armstrong

Board of Patent Appeals and Interferences

Sep 20, 2010

10326001 (B.P.A.I. Sep. 20, 2010)

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.
10/326,001 12/19/2002 Jay T. Armstrong CK-RE-1 4736
7590 09/20/2010
Patrick D Kelly
11939 Manchester Rd #403
St. Louis, MO 63131
EXAMINER
ELEY, TIMOTHY V
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
09/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAY T. ARMSTRONG
____________________

Appeal 2010-009709
Application 10/326,001
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and
STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Appellant’s appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-19 and 21-23 under 35 U.S.C. § 103(a)
as being as being unpatentable over Parsons (US 3,812,622, issued May 28,
1974), Simpson (US 5,274,964, issued Jan. 4, 1994) and Palmer (US
5,525,093, issued Jun. 11, 1996); and finally rejecting claims 16-18 and 21-
23 under § 103(a) as being unpatentable over Simpson and Palmer. The
Examiner has withdrawn claim 20 from consideration.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The underlying application seeks reissue of Armstrong (US
6,162,113, issued Dec. 19, 2000). Claim 1 of the underlying application,
which corresponds to claim 1 of Armstrong, and claim 16, which was newly
submitted in the reissue application, are illustrative of the claimed subject
matter:
1. A process for the in-situ cleaning of
an abrasive surface of a belt for performing one of
sanding, planing and grinding, said belt being
mounted for rotation within a housing of an
apparatus for performing one of abrasive sanding,
planing and grinding, said in-situ cleaning
process comprising the steps of:
directing dry ice particles towards the
abrasive surface of said belt while said belt is
mounted within the housing of said apparatus; and

2 The Appellant argues that the Examiner erred in withdrawing claim
20 from consideration. The withdrawal of a claim from consideration
pursuant to a restriction or election requirement is a petitionable matter not
subject to review by the Board. See In re Berger, 279 F.3d 975, 984-85
(Fed. Cir. 2002)(petitionable issues are not subject to review by the Board).
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impacting the abrasive surface of said belt
while said belt is mounted within the housing of
said apparatus with the dry ice particles, so as to
remove material generated during operation of said
apparatus and retained on the abrasive surface of
said belt, so as not to materially affect the abrasive
surface of said belt.

16. A process for cleaning an abrasive
surface of a belt for performing one of sanding,
planing and grinding, said belt being of a design
which allows mounting for rotation within a
housing of a material-working machine designed
to perform at least one abrasive operation selected
from the group consisting of sanding, planing and
grinding, wherein said abrasive operation causes
the abrasive surface of the belt to become loaded
up with material generated during said abrasive
operation, to an extent which impairs operation of
the abrasive surface of said belt on material being
treated by said belt, said process for cleaning the
abrasive surface of the belt comprising the steps
of:
a. passing dry ice particles through a
device which accelerates said dry ice particles to a
high velocity;
b. delivering said dry ice particles
traveling at high velocity to a dispensing nozzle
which can directionally control dispensing of said
dry ice particles from said nozzle;
c. using said dispensing nozzle to cause
said dry ice particles to impact the abrasive surface
of said belt, in a manner which removes material
generated during the abrasive operation from said
abrasive surface of the belt, thereby allowing said
belt which has been cleaned of such material to be
used for additional abrasive operations.
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ISSUES
The Appellant argues all of the rejected claims as a group for purposes
each ground of rejection entered by the Examiner. Claim 1 is representative
for purposes of the rejection over Parsons, Simpson and Palmer. Claim 16 is
representative for purposes of the rejection over Simpson and Palmer. See
37 C.F.R. § 41.37(c)(1)(vii).
Three issues raised in this appeal are:
First, has the Examiner articulated reasoning with some
rational underpinning sufficient to explain why one of ordinary
skill in the art would have had reason to substitute a step of
directing solid particulate blasting media toward the abrasive
surface of a belt to be cleaned as in Simpson for a step of
directing a high velocity jet of solvent and air toward the
abrasive surface as in the in-situ cleaning system of Parsons?
(See Br. 7-8; Ans. 6).
Second, has the Examiner articulated reasoning with
some rational underpinning sufficient to explain why one of
ordinary skill in the art would have had reason to substitute dry
ice particles of Palmer for the walnut shells or glass beads
disclosed by Simpson for use in cleaning an abrasive surface of
a belt? (See Br. 8-9; Ans. 7).
Third, does the probative value of the Examiner’s
evidence of obviousness outweigh the probative value of the
Appellant’s evidence and arguments concerning the existence
of secondary indicia of non-obviousness? (See Br. 10 and 14;
Ans. 9 and 11).
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FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. We adopt and incorporate by reference the Examiner’s findings
at page 6, line 1 through page 7, line 16 of the non-final Office Action
mailed February 27, 2007 (“Non-Final Rejection”).
2. We agree with the Appellant that “Parsons ′622 teaches and
requires the use of a liquid solvent, and it describes the type of equipment
needed to handle a liquid solvent.” We also agree with the Appellant that
“the entire thrust and focus of Simpson’s invention and patent involved
replacing any such liquid, with solid particulate blasting media, such as
walnut shells, or tiny glass beads, as described in column 6, lines 57-63.”
(See First Response filed June 27, 2007 (“First Response”)).
3. Palmer discloses blast cleaning the surface of an object using
gaseous carbon dioxide at an above atmospheric pressure as a carrier and
propellant to project carbon dioxide (that is, dry ice) pellets against the
surface of the object. (Palmer, col. 2, ll. 16-21).
4. Palmer also discloses blast cleaning the surface of an object
using compressed air or nitrogen as a carrier and propellant to project carbon
dioxide pellets against the surface of the object. (See Palmer, col. 1, ll. 29-
34).
5. Palmer criticizes the use of compressed air as a carrier for
carbon dioxide pellets because of the bulkiness of the equipment required
and the possible contamination of the air. Palmer criticizes the use of
nitrogen as a carrier for carbon dioxide pellets because of the bulkiness and
expense of the equipment required. (Palmer, col. 1, ll. 35-59). Nevertheless,
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Palmer appears to concede that both compressed air and nitrogen had been
successfully used as carriers for carbon dioxide pellets in blast cleaning
operations.
6. The Appellant’s counsel asserts that:
Palmer’s system did not succeed, because it
released dangerously large (even huge) quantities
of carbon dioxide, leading to major risks and
numerous actual deaths. Some of those deaths
were caused by asphyxiation, but most were
caused by explosions, since liquefied carbon
dioxide generates enormous pressures, when it
warms up. Those types of dangers can be
controlled only by using specialized additional
equipment, and that type of equipment can reduce
the risks only by some fraction.
First Response at 5.
7. The Appellant’s counsel argues that:
the Examiner’s approach and assertions
completely ignore the fact that wood-working
factories were continuing to spend large amounts
of money on buying new replacement sanding
belts, because their employees could not find any
better way -- AT THAT TIME -- to clean used
sandpaper belts. The basic and undeniable fact
that the problem was indeed well-known, and was
indeed costing wood-working factories lots of
money because no one else could figure out a
better way to actually clean sandpaper belts, is
straightforward, powerful, and even compelling
and conclusive evidence that the invention –
WHEN FIRST DISCOVERED BY THE
APPLICANT HEREIN – was not at all obvious,
to plenty of other skilled people who were indeed
looking for ways to solve the problem of how to
efficiently clean sandpaper belts.
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Br. 10.
8. The Appellant provides no evidence in the form of an affidavit,
a declaration or otherwise sufficient to prove the factual assertions made by
the Appellant’s counsel in the passages quoted in FF 6 and 7. The Appellant
has not shown that the Appellant’s counsel has sufficient personal
knowledge or expertise in the field of endeavor to testify as to these factual
assertions. The factual assertions made by the Appellant’s counsel in the
passages quoted in FF 6 and 7 have not been proven by a preponderance of
the evidence.
9. During prosecution, the Appellant provided two samples of
industrial-grade sandpaper. (Br. 14; First Response at 7). The Examiner
does not appear to dispute receipt of these samples. (See Ans. 11). An
unsworn document entitled “Submission of Samples” and consisting of four
lines of explanatory text accompanied the samples. The Appellant’s counsel
states that “one of the strips has only a partial strip of ‘loaded’ surface (i.e.,
coated with a mixture of wood dust and sap/resin), which extends only
partially across the center of that belt segment. . . . Therefore, the two ‘side
edges’ that flank the loaded strip offer an ideal way to compare the cleaned
portion of the belt (in the center) against ‘new and never used’ belt
material.” (First Response at 8 (emphasis in original)). The Appellant does
not appear to assert that the samples offer any comparison between an
abrasive surface of a belt cleaned in accordance with the subject matter of
claim 1 or claim 16, on the one hand, and an abrasive surface of a belt
cleaned in accordance with the prior art, on the other.
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ANALYSIS
First Issue
Parsons discloses a process for the in-situ cleaning of an abrasive
surface of a belt including a step of directing a high velocity jet of liquid
solvent and air towards the abrasive surface of a belt to be cleaned. (FF 1;
see also Non-Final Rejection at 6, ll. 1-8 and Parsons, col. 2, ll. 33-41).
Simpson teaches directing blast particles toward the abrasive surface of a
belt in order to clean the belt. (FF 1; see also Non-Final Rejection at 6, l. 21
– 7, l. 2). In fact, Simpson criticizes the practice of washing the abrasive
surfaces of belts using liquids and teaches replacing the liquids with solid
particulate blasting media. (FF 2; see also Simpson, col. 1, ll. 34-43 and 50-
60). In view of these facts, the reasoning articulated by the Examiner in
support of the finding of obviousness is persuasive: It would have been
obvious to replace the liquid solvents and air dispensing nozzles of Parsons
with a single dispensing nozzle; to direct blast particles towards the abrasive
surfaces of the belt; and to impact the abrasive surfaces of the belt with the
blast particles, as taught by Simpson, in order to provide a more simplified
system. (Ans. 6).
As the Examiner points out, the combination proposed by the
Examiner is not “some type of ‘hybridized’ or ‘compromise’ machine [that]
can be created by combining a wet system with a dry system” (see Br. 9).
Instead, the Examiner concludes that one of ordinary skill in the art would
have had reason to substitute a particle blast process for a liquid washing
process. The fact that Simpson criticizes liquid washing due to drying
difficulties and further teaches particle blast as an alternative is evidence that
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this substitution would have been obvious rather than a teaching away from
the substitution.

Second Issue
The Examiner concludes that it would have been obvious to further
modify Parsons’ sander cleaner, as modified in view of Simpson,
by using dry ice particles [as the solid particulate
blasting media] as taught by Palmer, Jr. instead of
walnut shells (as disclosed by Simpson et al
column 6, lines 57-60), in order to prevent work
hardening of the abrasive surface of the belt, to
provide a safer and cleaner environment, and to
save labor and expense.
(Non-Final Rejection at 7, l. 24 – 8, l. 4; see also id. at 11, l. 21 – 12, l. 2).
The Appellant argues that “there was absolutely no motivation or incentive
to combine the Palmer ′093 teachings, which were dangerous and even
lethal, with any other teachings.”
The Appellant’s argument is unpersuasive because the Appellant has
not proven that the Palmer’s teachings were “dangerous and even lethal.”
(See FF 6 and 8). Apart from this, the Appellant’s argument fails to come to
grips with the technical reasoning which actually underlies the rejections of
claims 1 and 16. The issue here does not turn on whether Palmer’s entire
disclosure may be bodily incorporated into Parson’s sander cleaner. See In
re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
The Examiner proposes substituting dry ice particles for the preferred
solid particle blasting media described by Simpson. The possibility that
Palmer’s teaching to use gaseous carbon dioxide as a carrier for the particles
might be dangerous or even lethal does not imply that one of ordinary skill
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in the art would have no reason to use dry ice particles as a solid particle
blast media for cleaning the abrasive surface of a belt. Given Palmer’s
teachings concerning the advantages of using dry ice particles over other
media as well as Palmer’s description of prior art systems using viable
gaseous carriers not suffering from the disadvantages of gaseous carbon
dioxide (see FF 4 and 5), the Examiner articulated sufficient reason for
combining the teachings of Palmer with those of Parsons and Simpson in the
fashion claimed in claim 1, and for combining the teachings of Simpson and
Palmer in the fashion claimed in claim 16, is persuasive.

Third Issue
Once the examiner produces prima facie evidence that the claimed
subject matter would have been obvious, the applicant may present
additional evidence tending to rebut the examiner’s conclusion that the
claimed subject matter would have been obvious. If the applicant presents
additional evidence to rebut the examiner’s conclusion, the examiner must
consider all of the evidence anew. If the evidence presented by the examiner
and any evidence presented by the applicant, considered anew, demonstrate
that the claimed subject matter would have been obvious to one of ordinary
skill in the art, the claim is properly rejected under section 103(a). In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the present case, however, the Appellant has presented attorney
argument in lieu of evidence. Attorney argument is of little probative value
in proving secondary indicia of nonobviousness such as unexpected results
or a long felt need met by the claimed subject matter. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
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Although the Appellant argues a long felt but unsolved need met by
the subject matter of claims 1 and 16, the Appellant has not proved facts
necessary to establish such need. (See, e.g., FF 7 and 8). In particular, the
Appellant has not provided persuasive evidence based on affidavit or
declaration testimony by someone shown to have relevant personal
knowledge that there existed a persistent need eventually met by the subject
matter of claim 1 or of claim 16 which would have been recognized by one
of ordinary skill in the art. Cf. Ex Parte Jellá, 90 USPQ2d 1009, 1019
(BPAI 2008)(summarizing the legal requirements for proving a long felt
need).
Likewise, the Appellant has not proven unexpected results from the
subject matter of claim 1 or of claim 16. Even assuming for purposes of this
appeal only the accuracy of the description of the two samples of belt
material submitted by the Appellant’s counsel (see FF 9), the samples are
entitled to little weight. The most that the Appellant’s counsel alleges is that
the samples provide a comparison between an abrasive surface cleaned in
accordance with the subject matter of claims 1 and 16, on the one hand, and
a “new and never used” abrasive surface, on the other. (See id.) Since the
samples provide no comparison between the results of the subject matter of
claim 1 or claim 16, on the one hand, and the results of the prior art, on the
other, they are not probative of unexpectedly superior results relevant to the
question of obviousness. See In re Dillon, 919 F.2d 688, 694 (Fed. Cir.
1990)(en banc)(finding alleged evidence of unexpected results to be of little
probative value, where the evidence failed to compare the results of the
claimed subject matter with the results of the prior art).
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Considering all of the evidence anew, we conclude that the evidence
supporting the Examiner’s conclusion of obviousness outweighs the
evidence and arguments presented by the Appellant.

CONCLUSIONS
The Examiner has articulated reasoning with some rational
underpinning sufficient to explain why one of ordinary skill in the art would
have had reason to substitute a step of directing solid particulate blasting
media toward the abrasive surface of a belt to be cleaned for a step of
directing a solvent and air toward the abrasive surface as in the in-situ
cleaning system of Parsons.
The Examiner has articulated reasoning with some rational
underpinning sufficient to explain why one of ordinary skill in the art would
have had reason to substitute dry ice particle for the walnut shells or glass
beads disclosed by Simpson for use in cleaning an abrasive surface of a belt.
The probative value of the Examiner’s evidence of obviousness
outweighs the probative value of the Appellant’s evidence and arguments
concerning the existence of secondary indicia of non-obviousness.
We sustain the rejections of claims 1-19 and 21-23 under § 103(a) as
being as being unpatentable over Parsons, Simpson and Palmer. We also
sustain the rejections of claims 16-18 and 21-23 under § 103(a) as being
unpatentable over Simpson and Palmer.
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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-19 and 21-
23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED

JRG

Patrick D. Kelly
11939 Manchester Rd #403
St. Louis, MO 63131
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