Ex Parte Nevison

Board of Patent Appeals and Interferences

Jan 2, 2009

11161152 (B.P.A.I. Jan. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DALE C. H. NEVISON
____________

Appeal 2008-5954
Application 11/161,152
Technology Center 1700
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Decided: January 2, 2009
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-3. Claim 4 has
been withdrawn for consideration. Claim 1 is illustrative:
1. A process for fabricating lateral drain openings into the top surface
of a mat, said process comprising:

molding a mat having a top surface and a bottom surface such that
channels subdivide the mat top surface into mat segments, wherein the
channels have a floor and a lateral wall surface and wherein a rib is
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Application 11/161,152

perpendicularly molded into the bottom surface of the mat below each
channel; and

removing material from the floor of at least one channel, at least one
of its lateral wall surfaces and its underlying rib to a depth which is below
the bottom surface of the mat such that at least one lateral wall surface has a
drain opening positioned upon the lateral wall surface, rather than being
horizontally oriented, such that the top surface of the mat covers the drain
openings and such that drainage is permitted from the top surface of the mat
to below the bottom surface of the mat.

The Examiner relies upon the following references as evidence of
obviousness:
Wycech US 4,964,514 Oct. 23, 1990
Rosan US 5,833,386 Nov. 10, 1998
Shannon US 2003/0141621 A1 Jul. 31, 2003

Appellant's claimed invention is directed to a process for making
lateral drain openings in the top surface of a mat. The process entails
removing at least one of the lateral wall surfaces of channels formed within
the top surface of a molded mat such that a drain opening is formed in the
lateral wall surface and a top surface of the mat covers the drain opening.
Appealed claims 1-3 stand rejected under 35 U.S.C. § 112, first
paragraph, written description requirement. Claims 1-3 also stand rejected
under 35 U.S.C. § 112, second paragraph. In addition, claims 1-3 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosan in view
of Shannon and Wycech.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we agree with Appellant that the
Examiner's § 112 rejections are not sustainable. On the other hand, we fully
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concur with the Examiner that the claimed subject matter would have been
obvious to one of ordinary skill in the art within the meaning of § 103 in
view of the applied prior art. Accordingly, we will sustain the Examiner's
§ 103 rejection for essentially those reasons expressed in the Answer.
We consider first the Examiner's § 112, first paragraph rejection of
claims 1-3. According to the Examiner, the claim 1 recitation "such that the
top surface of the mat covers the drain opening and such that the drainage is
permitted from the top surface of the mat to below the bottom surface of the
mat" does not find original descriptive support in the Specification as filed.
The Examiner offers the following analysis:
The term "cover" (or "cover") refers to placing or
setting a cover or covering over (something; e.g.,
an object), and the structural material between the
top of the drain opening 58 and the top surface 34
of the mat does not "cover" the drain opening 58
because the drain opening is plainly visible and is
not covered (or covered over) by anything (and the
drain opening 58 should not be covered (or
covered over) by anything in order to permit
drainage of liquid). (Ans. 6, last sentence).

We do not agree with the Examiner's limited interpretation of the
claim language "such that the top surface of the mat covers the drain
opening." In our view, the claimed step of removing material from the
lateral wall surface of the channel produces an opening 58 that is not limited
to a line that coincides with the sidewall 56 at the top surface (see Fig. 6c of
Specification). The drain opening continues from that line to an area under
the top surface. Consequently, we agree with Appellant that the original
Specification reasonably conveys to one of ordinary skill in the art the
concept of providing a drain opening in the lateral wall of the channel that is
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covered by the top surface of the mat. We do not subscribe to the
Examiner's reasoning that portions of the drain opening cannot be visible to
be fairly considered covered by the top surface of the mat. Certainly, an
object may be covered but still visible based on the nature of the covering
material.
Turning to the Examiner's § 112, second paragraph, rejection, the
Examiner explains that "it is not clear how the mat can cover the drain
opening and still allow for drainage from the top surface of the mat to below
the bottom surface of the mat" (Ans. 4, penultimate para.). From our
discussion above with respect to the § 112, first paragraph, rejection, it
should be evident that we find that the claim language, when read in light of
the Specification, would be readily understood by one of ordinary skill in the
art as encompassing an embodiment depicted by the Specification as a top
surface of the mat covering a drain opening that extends under the top
surface of the mat.
We now consider the Examiner's § 103 rejection. There is no dispute
that Rosan, like Appellant, discloses a process for fabricating drain openings
into the top surface of a mat formed by a molding process. Appellant
contends, however, that the most obvious error in the § 103 rejection is the
Examiner's conclusion that the drainage openings 12 in Rosan are covered
by the top surface of the mat. Appellant maintains that "[i]t is clear from
Rosan's Figure 5D that his drain openings 12 are not covered" (Br. 12).
We are not persuaded by Appellant's argument. We agree with the
Examiner that when Rosan's Figures 5A and 5D are read in conjunction with
Figure 3, drainage openings 12, like Appellant's drain openings, extend into
cavities 20 which underlie the top surface of the mat. It is of no moment that
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all of the lateral wall of Rosan's channels may be removed to form the
drainage openings, since the reference openings, like Appellant's openings,
do not begin and end at the absolute surface of the channel walls, but extend
beyond a geometric line defining the surface. Also, it can be seen from
Appellant's Figure 6c that the drainage opening extends inwardly towards
surface 46 from the line defined by 58. Moreover, we have no doubt that
one of ordinary skill in the art would have found it obvious to remove only a
portion of the channel wall depicted in Figure 5A of Rosan to permit access
to cavity 20.
We also find no merit in Appellant's argument that Rosan "fails to
disclose a rib perpendicularly molded into the bottom surface of the mat
below each channel" (Br. 15, second para.). We agree with the Examiner
that feature 18 of Rosan reasonably qualifies as such a rib (see Figure 5A).
Appellant's argument based on Rope is irrelevant since Rope has not
been cited by the Examiner and the Examiner does not rely upon cut out 36
of Rosan for the claimed drain opening.
Concerning separately argued claims 2 and 3, we fully concur with the
Examiner that both Shannon and Wycech are analogous art since Shannon is
directed to the same field of endeavor, namely, floor coverings or mats, and
Wycech is reasonably pertinent to the problem of removing material from a
plastic sheet in selected areas. Appellant has apprised us of no reason why it
would have been unobvious for one of ordinary skill in the art to use the
robotic means of Shannon to remove material from the molded mat of
Rosan, nor to employ the robotically-controlled heated blade of Wycech to
form the mat of Rosan.
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As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the applied
prior art.
In conclusion, based on the foregoing, the Examiner's rejections under
§ 112, first and second paragraphs, are reversed. However, for the reasons
set forth above and those well-stated by the Examiner, the Examiner's § 103
rejection of the appealed claims is sustained. Consequently, the Examiner's
decision rejecting the appealed claims is affirmed.
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)(effective
Sept. 13, 2004).
AFFIRMED

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GREGORY T. ZALECKI
12900 HALL ROAD
SUITE 400
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