Ex Parte Merten et al

Patent Trial and Appeal Board

Jul 16, 2013

12288813 (P.T.A.B. Jul. 16, 2013)

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.
12/288,813 10/23/2008 David J. Merten NEW10-GN007-D1 5439
11773 7590 07/17/2013
Taft Stettinius & Hollister LLP
425 Walnut Street
Suite 1800
Cincinnati, OH 45202-3957
EXAMINER
SPISICH, MARK
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
07/17/2013 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 DAVID J. MERTEN and JAY Z. MUCHIN
________________

Appeal 2011-006788
Application 12/288,813
Technology Center 3700
________________

Before STEFAN STAICOVICI, EDWARD A. BROWN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006788
Application 12/288,813

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 2 and 4-13. App. Br. 3. Claim 3 has been withdrawn.
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and
denominate our affirmance as a NEW GROUND OF REJECTION.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to paint applicators and more
particularly to paint applicators including a paint application element which
has a non-stick coating.” Spec., para. [0002]. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. A paint applicator comprising,
a handle,
a paint application element operatively connected to the
handle,
a non-stick coating provided on at least a portion of the
paint application element; and
said paint application element carrying a paint thereon
prior to application to a substrate surface.

REFERENCES RELIED ON BY THE EXAMINER
Hoffman US 5,122,195 Jun. 16, 1992
Gueret US 5,462,798 Oct. 31, 1995
Franchina1 US 2005/0008872 A1 Jan 13, 2005
Gunn WO 99/23903 May 20, 1999

THE REJECTIONS ON APPEAL
1. Claims 1, 2 and 4-6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Gunn. Ans. 4.

1 Franchina matured into U.S. 7,258,925 on Aug. 21, 2007.
Appeal 2011-006788
Application 12/288,813

3
2. Claims 1, 2, 4-6 and 8-11 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Franchina. Ans. 4.
3. Claims 1, 2 and 4-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gueret and Gunn. Ans. 5.
4. Claims 8-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gueret, Gunn and Hoffman. Ans. 5.
5. Claims 7, 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Franchina. Ans. 6.

ANALYSIS
The rejections of claims 1, 2, 4-6 and 8-11 as anticipated by Franchina and
of claims 7, 12 and 13 as obvious over Franchina
Appellants’ arguments with respect to Franchina do not address
whether the subject matter disclosed therein anticipates or makes the
claimed limitations obvious. App. Br. 7-10, 13. Instead, Appellants argue
that “all of the relevant teachings and disclosures of the '872 reference
[(Franchina)] that relate to those rejections are based upon the inventors'
own work [and accordingly], the '872 reference may not be used as a
reference against the present application.” App. Br. 7. Appellants have filed
a Declaration and additional evidence in support of this contention. App. Br.
7-10; see also Appendix A and Exhibits A-E accompanying Appellants’
Appeal Brief.
Appellants also acknowledge that the present case “is a divisional
application of U.S. Serial No. 11/281,259, which is currently under appeal.”2
App. Br. 3. Appellants state that “it is believed that the outcome of that

2 Hereinafter, we refer to U.S. Serial No. 11/281,259 as the “parent
application.”
Appeal 2011-006788
Application 12/288,813

4
appeal could directly affect, would be directly affected by, or would have a
bearing on the Board’s decision in the instant appeal.” App. Br. 3.
Appellants, in this earlier appeal (Appeal No. 2009-009270) of the
parent application, presented identical arguments as those presented here to
the effect that Franchina may not be used as a reference against that
application for similar reasons as stated above. In the earlier appeal,
Appellants also submitted the same Declaration and the additional evidence,
as here, in support of their contention. Based on this submitted evidence, the
Board in the earlier appeal “vacate[d] the appeal and forward[ed] the
application to the Interference Section of the Board of Patent Appeals and
Interference ("BPAI") for its consideration.” See page 2 of the Decision in
that appeal mailed April 29, 2011. An Interference was declared (number
105,804) with Count 1 being “[a] paint applicator according to claim 5 of
U.S. Application 11/281,259 or claim 1 of U.S. Patent 7,258,925” and also
stating that “None” of the claims from either document fail to correspond to
Count 1. See Declaration of Interference dated April 28, 2011.
Claims 2 and 5 of the parent application are as follows:
2. A paint applicator comprising,
a handle,
a paint application element operatively connected to the
handle, and
a non-stick coating provided on at least a portion of the
paint application element, wherein the paint application element
is a paint roller cover.
5. The paint applicator according to claim 2 wherein the
non-stick coating comprises a fluoropolymer resin.
Claim 1 of U.S. 7,258,925 (Franchina) is as follows:
1. A paint applicator comprising a paint-carrying substrate
surface comprising a fabric, fibers, or filaments which is coated
Appeal 2011-006788
Application 12/288,813

5
or treated with a fluoroacrylate polymer or copolymer, a
fluorourethane polymer or copolymer, or a mixture thereof, said
surface carrying a water based latex paint.
Some time after the Interference was declared, Appellants requested
and were granted judgment in this matter adverse to them. See Request for
Adverse Judgment. With respect to the Count, Franchina is thus regarded as
having priority to Appellants’ parent application. Appellants thereafter
abandoned the parent application. See Notice of Abandonment mailed June
25, 2012.
In the present matter, pending claim 1 differs from parent claim 2 in
two respects. First, pending claim 1 lacks the limitation found in parent
claim 2 that “the paint application element is a paint roller cover.” Second,
pending claim 1 includes the additional limitation of “said paint application
element carrying a paint thereon prior to application to a substrate surface”
that is not found in parent claim 2.3
Because present claims 1, 2 and 4-13 do not correspond exactly with
the above Count, we provide Appellants with an opportunity to respond to
the rejection of present claims 1, 2 and 4-13 by issuing a New Ground of
Rejection under 35 U.S.C. § 102(g). Accordingly, we provide Appellants
with an opportunity to address any such discrepancy to show that the
presently claimed invention was first made by Appellants, and not by
another, and was not abandoned, suppressed or concealed.
Also, in the present matter before us, the Examiner has rejected all the
claims under either a § 102(e) rationale or under a single-reference § 103(a)

3 However, with respect to this second matter, we note the similarity of this
additional limitation to the last element of issued claim 1 of Franchina '925
(supra), i.e., “said surface carrying a water based latex paint.”
Appeal 2011-006788
Application 12/288,813

6
rationale in view of Franchina. Ans. 4, 6. As previously indicated,
Appellants’ arguments in response to both rejections do not address the
subject matter of Franchina such as by indicating how Franchina does not
anticipate Appellants’ claims or does not make Appellants’ claims obvious.
App. Br. 7-10, 13. Instead, Appellants repeat the arguments set forth in the
earlier appeal to the extent that Franchina is “based upon the inventors' own
work [and accordingly Franchina] may not be used as a reference against the
present application.” App. Br. 7. In view of the Interference Decision
establishing the priority of Franchina, Appellants have not adequately
rebutted the Examiner’s rejection (see Ans. 6) nor have Appellants
persuaded us of Examiner error in the current rejection of Appellants’
present claims under either § 102(e) or § 103(a) in view of Franchina.
Accordingly, we sustain the Examiner’s rejections of claims 1, 2, 4-6 and 8-
11 as anticipated by Franchina and of claims 7, 12 and 13 as obvious over
Franchina.
The Examiner has also rejected Appellants’ claims based on different
references. Ans. 4-6. In view of our sustaining the rejections of all the
claims on appeal in view of Franchina, any further discussion of the
additional rejections of these same claims is deemed to be cumulative and
will not be addressed. See 37 C.F.R. § 41.50 (a)(1).

DECISION
The Examiner’s rejections of claims 1, 2 and 4-13 are affirmed.
We also enter a new ground of rejection for reasons different
from/additional to those stated by the Examiner, and pursuant to our
Appeal 2011-006788
Application 12/288,813

7
authority under 37 C.F.R. § 41.50(b), we designate our rejection as a new
ground of rejection in order to afford Appellants a fair opportunity to
respond.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” 37
C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

hh