Ex Parte Johnson

Patent Trial and Appeal Board

Oct 17, 2018

14178850 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/178,850 02/12/2014
65215 7590 10/19/2018
NEUSTEL LAW OFFICES, LTD.
2534 SOUTH UNIVERSITY DRIVE
SUITE4
FARGO, ND 58103
FIRST NAMED INVENTOR
Corey A. Johnson
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.
IREN-001 4819
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
michael@neustel.com
j ason@neustel.com
patents@neustel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY A. JOHNSON
Appeal2018-000655
Application 14/178,850 1
Technology Center 1700
Before MARK NAGUMO, A VEL YN M. ROSS, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3 and 7-23. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellant is the Applicant, Irenic Solutions, LLC, which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 2.
Appeal2018-000655
Application 14/178,850
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a masking system for
protecting the interior surface of a bore during painting processes. Spec.
2:21-23. Appellant explains that, in known prior art, sheets of gasket
material rolled into a tubular sleeve solved certain problems. Id. at 5 :3---6.
Appellant states, however, that when gasket material absorbs liquid, various
problems occur such as loss of resiliency or the material falling out of the
bore. Id. at 5:6-9. Appellant asserts that its invention improves upon the art
by making use of a hydrophobic sheet for masking. Id. at 6:4--8. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of forming a masking product for a
bore in an object, comprising:
providing a hydrophobic sheet having an initial
shape, a first surface and a second surface opposite of
said first surface;
forming said hydrophobic sheet into a hydrophobic
tubular shield, wherein said hydrophobic tubular shield
has an exterior diameter less than an interior diameter of
said bore when in an intermediate state;
retaining said hydrophobic tubular shield in said
intermediate state prior to positioning within said bore;
inserting said hydrophobic tubular shield into said
bore; and
terminating said step of retaining said hydrophobic
tubular shield to allow said hydrophobic tubular shield to
expand from said intermediate state to a final state,
wherein said final state of said hydrophobic tubular
shield has a diameter greater than said intermediate state
of said hydrophobic tubular shield and wherein an outer
2 In this Decision, we refer to the Final Office Action (mailed February 8,
2017 ("Final Act.")), the Appeal Brief (filed June 26, 2017 ("Appeal Br.")),
and the Examiner's Answer (mailed August 25, 2017 ("Ans.")).
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Appeal2018-000655
Application 14/178,850
surface of said hydrophobic tubular shield is in contact
with an interior surface of said bore;
cleaning said object with said hydrophobic tubular
shield positioned within said bore of said object;
painting said object with said hydrophobic tubular
shield positioned within said bore of said object, wherein
the hydrophobic properties of said hydrophobic tubular
shield prevent paint from being absorbed by said
hydrophobic tubular shield and repel paint from said
interior surface of said bore of said object.
Appeal Br. 21 (Claims App.).
REJECTION AND REFERENCES
On Appeal, the Examiner maintains the rejection of claims 1-3 and 7-
23 under 35 U.S.C. § 103 as unpatentable over Levit et al. (US
2007/0137818 Al; pub. June 21, 2007) ("Levit") in view of Applicant's
Admitted Prior Art (Spec. 4:24--5:5) ("AAPA") and Kano et al. (US
4,871,585; issued October 3, 1989 ("Kano")). Final Act. 3. The Examiner
also refers to Kanda et al., Interface Property and Apparent Strength of
High-Strength Hydrophilic Fiber in Cement Matrix, Journal of Materials in
Civil Eng., 5-13 (1998) ("Kanda") as providing evidence in support of the
rejection of claim 14. Id. at 7.
ANALYSIS
The Examiner rejects, for example, claim 1 as obvious over Levit in
view of the AAPA and Kano. Final Act. 3. The Examiner finds that Levitt
teaches a gasket material whose surfaces are covered in a hydrophobic
material such as rubber. Id. (citing, e.g., Levit ,r,r 11-20, 83-84); Ans. 3--4.
The Examiner finds that Levit does not teach using the Levit gasket material
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Application 14/178,850
in the manner recited by claim 1, but the Examiner finds that, according to
the AAP A, it was known in the art to use gasket material in such a manner.
Final Act. 4. The Examiner determines that it would have been obvious to
use the Levit gasket material in the manner described by AAP A and as
recited by claim 1 because "such gasket materials and such methods of
preparation / insertion are well known by one of ordinary skill in the art to
provide predictable protective performance for bores." Id. The Examiner
also relies on Kano for teaching cleaning and painting while a bore is
masked. Id. at 4--5.
Appellant argues that the Examiner characterizes the AAP A too
broadly and erroneously applies the AAP A to supply "apparent reason for
one of ordinary skill in the art to utilize Levit as the 'hydrophobic sheets' of
claims 1, 21, and 23 ." Appeal Br. 10. Appellant also argues that the AAP A
referred only to gasket materials that were not hydrophobic. Id.
We agree with Appellant that the Examiner erred by characterizing
the AAPA too broadly. The AAPA refers to gasket materials but also
explains that the prior art gasket materials experienced problems due to
liquid absorption. Spec. 4:24--5: 13. Appellant's stated invention seeks to
overcome the problems of the AAP A gasket materials by use of hydrophobic
sheets. Id. at 6:4--8.
The Examiner states only one reason to combine Levit and the AAP A:
"since such gasket materials and such methods of preparation/insertion are
well known ... to provide predictable protective performance for bores."
Final Act. 4. The Examiner does not provide evidence supporting that use of
hydrophobic gasket materials were well known to protect bores while
painting. The Examiner also does not explain and support with evidence
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Application 14/178,850
why a person having ordinary skill in the art would have had reason to select
hydrophobic gasket material based on the teachings of the AAPA for this
purpose. To the contrary, Appellant's discussion of the AAPA indicates that
use of hydrophobic materials for this purpose was not known, and the other
cited references do not discuss bore protection. Because the Examiner has
not adequately explained a rationale for combining Levit with the AAPA3,
we do not sustain the Examiner's rejection of claim 1.
3 Appellant also provides evidence of long-felt need. Appeal Br. 14--19. We
note that, at least in some respects, the Examiner's consideration of
Appellant's evidence supporting long-felt need is inadequate. For example,
the Examiner states that Appellant's submitted declarations do not establish
that "an art recognized problem existed in the art for a long period of time
without a solution." Ans. 5. But the December 16, 2016, Declaration of
Marie Schumacher, for example, explains difficulties Ms. Schumacher
encountered for twelve years painting bores as a professional painter prior to
using the CleanBore product. Similarly, the December 19, 2016,
Declaration of George Prather states that he encountered difficulties with
prior products for five years including difficulties due to foam collecting
water, and the December 21, 2016, Declaration of Charles K. Riese ("Riese
Deel.") describes problems with prior products that would not function in
the wash booth.
The Examiner also criticizes the declarations as not adequately describing
the CleanBore product. Ans. 6. We agree with the Examiner that the
declarations are not ideal in that they do not have sections that describe the
use of the Cleanbore product and cleanly match Cleanbore to the claims'
recitations. As a whole, however, the four declarations provide information
describing the CleanBore product as having features equivalent to claim
recitations (see, e.g., Riese Deel. ,r 2) and indicate that it is claimed features
of the present invention that provide advantage over prior products (see, e.g.,
id. ,r 5). The Examiner's critique of evidence not presented (Ans. 6-7) does
not squarely address the evidence that was presented.
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The other independent claims on appeal, claims 21 and 23, require
similar use of a hydrophobic sheet. Because the Examiner's treatment of
these claims and of the dependent claims on appeal does not cure the error
addressed above, we also do not sustain the rejection of these claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-3 and 7-23.
REVERSED
We also note that the declarants all appear reasonably well-qualified to opine
on the state of the art. Each declarant has experience in painting processes
and each had difficulty with prior art methods when painting bores.
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