Ex Parte MacCormick

Patent Trial and Appeal Board

Jun 15, 2016

12284785 (P.T.A.B. Jun. 15, 2016)

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.
12/284,785 09/25/2008 Anna MacCormick 6345 4439
7590 06/16/2016
Thomas N. Phung
Jacobson and Johnson
Suite 285
One West Water Street
St. Paul, MN 55107-2080
EXAMINER
CRANDALL, JOEL DILLON
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
06/16/2016 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 ANNA MacCORMICK
____________

Appeal 2014-006179
Application 12/284,7851
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–19 under 35 U.S.C. § 103(a) as unpatentable
over Booth (US 2004/0158949 A1, pub. Aug. 19, 2004) and Barker
(US 5,920,943, iss. July 13, 1999). We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.

1 According to the Appellant, “[t]he real party in interest is Anna
MacCormick.” Appeal Br. 3.
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Application 12/284,785

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Claimed Subject Matter
Claims 1 and 2 are the independent claims on appeal. Claim 1,
reproduced below, with added emphasis, is illustrative of the subject matter
on appeal.
1. A crack and groove stain and paint tool comprising:
a handle;
a stiff but flexible flat blade, said handle and said blade
comprising a one piece member integrally formed from a single
piece of stiff but bendable material, said blade and handle
resiliently deflectable in response to a pressure on the handle,
said blade having a first face and a second face separated by a
substantially straight edge with said edge positioned transverse
to said handle, said blade having a thickness that is thinner at the
edge than at a junction with the handle;
a backing fabric directly secured to said blade and
extending from a first surface area of said first face over said
edge to a first surface area of said second face with the ends of
the backing fabric running substantially parallel to the edge of
the blade and extending at least an inch upward from the edge of
the blade while leaving a second surface area of said first face
and a second surface area of said second face of said blade free
of backing fabric, said backing fabric having a stain or paint
holding nap thereon, said nap comprising a plurality of flexibly
resilient fibers that flex and bend during use and returns back to
their original shape after use, said plurality of fibers each
extending from the backing fabric in a direction substantially
perpendicular to the backing fabric; and
staples securing the backing fabric to the blade.

ANALYSIS
The Appellant argues that the combination of teachings from Booth
and Barker, as proposed by the Examiner, does not result in a paint tool
having a blade with first and second faces, where each face includes a first
surface area having a backing fabric secured thereto and a second surface
Appeal 2014-006179
Application 12/284,785

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area free of backing fabric, as required by independent claims 1 and 2. See
Appeal Br. 8–13; Reply Br. 4–12. The Appellant’s argument is persuasive.
The Examiner’s rejection relies on a finding that Booth’s applicator
(painting tool) 10, as depicted in Figures 2 and 3, includes a blade having
faces with first and second surface areas, as required by the claims.2 See
Final Act. 2–5; see also Booth, para. 24. Figures 2 and 3 are perspective and
cross-sectional views, respectively, of an embodiment of Booth’s invention.
See Booth, paras. 11–13. The Examiner supports the finding by annotating
multiple copies of Figure 3 with arrows and dotted lines to identify portions
of Booth’s painting tool 10 that correspond to the structures of independent
claims 1 and 2. Final Act. 2–4. Notably, the Examiner identifies by
annotation the portions of Booth’s painting tool 10 that correspond to the
claimed blade faces, including a second surface area free of backing fabric.
Id. at 4.
The Appellant persuasively contends that the portions of Booth’s
paint tool 10 that the Examiner finds as corresponding to the claimed second
surface area of the blade faces are not part of Booth’s blade (i.e., blade 14).
See Appeal Br. 8–12; Reply Br. 5–6. As pointed out by the Appellant, the
Examiner finds that Booth’s “fabric [(i.e., applicator pad 24)] is shown
extending the length of the blade in Figure 3.” Appeal Br. 8 (emphasis
omitted) (citing Final Act. 3). The Appellant correctly points out that this
finding contradicts another of the Examiner’s findings. See Reply Br. 5.
More particularly, there is a contradiction in finding that Booth’s fabric 24
extends the length of blade 14 and also finding that Booth’s fabric 24 does

2 The Examiner relies on Barker solely to teach using staples to fasten
components of a brush. See Final Act. 5 (citing Barker, col. 5, ll. 53–56).
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Application 12/284,785

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not extend the length of blade 14. See id. Notably, the claim requirement
that the blade has faces with a second surface area free of backing fabric
would not read on the former finding, but would read on the latter finding.
The Examiner appears to arbitrarily identify the portion of painting
tool 10 just above fabric 24 to be part of Booth’s blade. Moreover, the
Examiner’s annotations and associated explanations are inadequately
supported by Booth’s disclosure. At best, the Examiner explains that Booth
describes blade faces as “preferably flat,” which implies that a face of the
blade “can be a shape other than flat.” See Ans. 6–7. Although Booth’s
paragraph 27 describes that “front and back faces 16, 18 [of blade 14] are
preferably planar and parallel to one another,” that does not adequately
support the Examiner’s finding that the painting tool of Booth’s Figure 3
discloses blade faces with second surface areas free of backing fabric. For
example, Booth, in paragraph 27, also describes that “blade 14 presents a
front face 16, an opposite back face 18, opposing side faces 20 and an end
face 22.” And, the portions of Booth’s painting tool 10 that the Examiner
identifies as second surface areas free of backing fabric are not directed to
faces 16, 18, 20, or 22. See Booth, Figs. 2–3. Stated otherwise, in Figures 2
and 3, Booth’s applicator pad (backing fabric) 24 entirely covers blade faces
16, 18, 20, and 22. As such, the portions of Booth’s painting tool 10 that the
Examiner identifies as blade faces with second surface areas free of backing
fabric appear to be part of handle 12. See Appeal Br. 9.
Thus, the Examiner’s rejection of claims 1–19 as unpatentable over
Booth and Barker is not sustained.

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Application 12/284,785

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DECISION
We REVERSE the Examiner’s decision rejecting claims 1–19.

REVERSED