10991375 (B.P.A.I. Aug. 30, 2012)

Ex Parte Grunst

Board of Patent Appeals and InterferencesAug 30, 2012

10991375 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte KENNETH D. GRUNST ________________ Appeal 2010-000589 Application 10/991,375 Technology Center 3600 ________________ Before STEVEN D.A. McCARTHY, JAMES P. CALVE and RICHARD E. RICE, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2 decision finally rejecting claims 1-6, 8-27, 29-37 and 39-46. The Examiner 3 rejects claims 1, 2, 4-6, 8-27, 29-37 and 39-46 under 35 U.S.C. § 103(a) as4 1 The Appellant is the real party in interest. Appeal 2010-000589 Application 10/991,375 2 being unpatentable over Takiguchi2 (JP 03147952 A, publ. Jun. 24, 1991) 1 and Nationwide Chem. Coating Mfrs., Inc., “ULTRA COAT Protective 2 Coating” Material Safety Data Sheet # 4025 (Sep. 1, 1997) (hereafter “the 3 ULTRA COAT Protective Coating MSDS”); and claim 3 under § 103(a) as 4 being unpatentable over Takiguchi, ULTRA COAT Protective Coating 5 MSDS and Neuhaus (US 6,460,302 B1, issued Oct. 8, 2002). Claims 7, 28 6 and 38 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 7 We REVERSE. 8 Claims 1 and 18 are independent. Claim 1 recites, with italics added 9 for emphasis: 10 1. A method of sealing an air gap in a band 11 joist of a building structure, the method 12 comprising: 13 applying an elastomeric paint into and over 14 an air gap between floor joists and a band joist in 15 a building structure to fill the air gap; and 16 allowing said elastomeric paint to dry and 17 provide a seal in the air gap which maintains a seal 18 during seasonal temperature changes. 19 Claim 18 describes a method including the step of “applying an elastomeric 20 paint into and over an air gap between a band joist and at least one of floor 21 joists, a floor above the band joist, a sill plate, and a top plate in a building 22 structure to fill the air gap.” 23 Takiguchi describes a method in which at least one surface, such as a 24 surface of an inner wall, outer wall, floor board, floor joist, joist, strut, 25 groundwork or foundation is coated with a paint film that contains a 26 2 All references to “Takiguchi” in this opinion will be to a translation prepared by The McElroy Translation Company in or about June 2009. The translation is of record in the file of the application underlying this appeal. Appeal 2010-000589 Application 10/991,375 3 substance that emits far-infrared radiation. (Takiguchi 2 (claim)). The paint 1 film is formed from a composition including a synthetic resin and one or 2 more substances that emit far-infrared radiation at a wavelength useful for 3 dampness prevention, fungus prevention, vermin prevention and decay 4 prevention. (Takiguchi 3-4). Takiguchi further describes applying the paint 5 with a spray gun. (Takiguchi 4). 6 ULTRA COAT Protective Coating MSDS describes a self-priming 7 coating including acrylic elastomer with urethane. The reference states that 8 the emulsion may be used on equipment, walls, pipes, holding tanks and the 9 like. The coating is applied as a latex emulsion using a brush, roller or 10 spray. The ULTRA COAT Protective Coating MSDS states that the coating 11 has excellent adhesion; and that the coating provides excellent mildew and 12 corrosion resistance. 13 The Examiner finds that Takaguchi does not expressly describe filling 14 gaps between surfaces with paint. Nevertheless, Takaguchi describes 15 spraying a paint including a synthetic resin onto a surface such as those of a 16 foundation, a bundle, a sill, a floor plate, a pillar or a floor. The Examiner 17 finds that, “[b]ecause of the nature of spraying paint the paint would 18 inherently end up in and over the gaps between these surfaces.” (Ans. 7). In 19 support of this finding of inherency, the Examiner explains that “the purpose 20 of Takiguchi also includes wanting to further protect each of the structures 21 being painted. In order to optimize this protection, Takiguchi would want to 22 cover all of the surfaces possible. This would include spraying right by the 23 gaps in order not to miss any spots.” (Ans. 8). 24 The Appellant correctly argues that neither Takiguchi nor the ULTRA 25 COAT Protective Coating MSDS teaches or suggests filling an air gap 26 Appeal 2010-000589 Application 10/991,375 4 between a band joist and a floor joist, as recited in claim 1, or an air gap 1 between a band joist and at least one of floor joists, a floor above the band 2 joist, a sill plate, and a top plate as recited in claim 18. (Reply Br. 3 and 4). 3 Suppose that a worker spraying a paint or polymer-based coating onto a 4 surface of a floor joint necessarily would spray to the edge of the surface. 5 Further suppose that a paint or polymer-based coating sprayed to the edge of 6 a floor joist would enter the gap between the floor joist and a band joist. 7 Even then, these suppositions would not imply that the worker necessarily 8 would fill the gap with the paint or polymer-based coating. Therefore, the 9 Examiner’s finding that “[b]ecause of the nature of spraying paint the paint 10 would inherently end up in and over the gaps between these surfaces” (Ans. 11 7) does not establish by a preponderance of evidence that the worker 12 necessarily would apply an elastomeric paint into and over an air gap 13 between floor joists and a band joist in a building structure to fill the air gap. 14 The Examiner additionally finds that, “when spraying areas which 15 abut each other it is customary to create a uniform look; rather than avoiding 16 the gaps, one of ordinary skill in the art would . . . make sure to fill the gaps 17 in order to keep the look unbroken [and] aesthetically pleasing.” (Ans. 7-8). 18 The Appellant correctly points out that the Examiner has not shown that one 19 of ordinary skill in the art would have been concerned with the aesthetics of 20 band joists and floor joists. (See Reply Br. 2). 21 The Examiner has not shown that either Takiguchi or the ULTRA 22 COAT Protective Coating MSDS teaches or suggests “applying an 23 elastomeric paint into and over an air gap between a band joist and at least 24 one of floor joists, a floor above the band joist, a sill plate, and a top plate in 25 a building structure to fill the air gap.” (Emphasis added.) Neither has the 26 Appeal 2010-000589 Application 10/991,375 5 Examiner articulated reasoning with some rational underpinning to explain 1 why one of ordinary skill in the art might have had apparent reason to 2 perform this step in a method of sealing an air gap in a band joist of a 3 building structure. We do not sustain the rejection of claims 1, 2, 4-6, 8-27, 4 29-37 and 39-46 under § 103(a) as being unpatentable over Takiguchi and 5 the ULTRA COAT Protective Coating MSDS. 6 In rejecting claim 3, the Examiner states that “Neuhaus is only being 7 used to teach a certain type of spraying equipment; the other features of the 8 claim are provided by Takiguchi in view of [the ULTRA COAT Protective 9 Coating MSDS], as explained above.” (Ans. 8). In other words, the 10 Examiner does not cite Neuhaus to remedy the deficiencies which the 11 Appellant points out in the combined teachings of Takiguchi and the 12 ULTRA COAT Protective Coating MSDS as applied to claim 1. We do not 13 sustain the rejection of claim 3 under § 103(a) as being unpatentable over 14 Takiguchi, the ULTRA COAT Protective Coating MSDS and Neuhaus. 15 16 DECISION 17 We REVERSE the Examiner’s decision rejecting claims 1-6, 8-27, 18 29-37 and 39-46. 19 20 REVERSED 21 22 23 mls 24 25