11248248 (B.P.A.I. Nov. 2, 2010)

Ex Parte Pratt

Board of Patent Appeals and InterferencesNov 2, 2010

11248248 (B.P.A.I. Nov. 2, 2010)

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. 11/248,248 10/13/2005 Samuel S. Pratt 8383.007.US0000 9696 77407 7590 11/02/2010 Novak Druce & Quigg LLP 300 New Jersey Ave, NW Fifth Floor Washington, DC 20001 EXAMINER HARTMANN, GARY S ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 11/02/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte SAMUEL S. PRATT ____________________ Appeal 2009-007544 Application 11/248,248 Technology Center 3600 ____________________ Before JENNIFER D. BAHR, KEN B. BARRETT, and FRED A. SILVERBERG, Administrative Patent Judges. SILVERBERG, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-007544 Application 11/248,248 STATEMENT OF THE CASE Samuel S. Pratt (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s claimed invention is directed to an apparatus for compacting and forming depressions in the ground including a liner formed of non-earth adhering material (Spec.1: 2-7 and Spec. 2: 13-Spec. 3: 3). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An apparatus for compacting and forming depressions along a tract of ground being worked, comprising: a support means; a drum mounted on said support means for rotational movement about an axis thereof', and a liner formed of a material having earth adherent retarding properties containing an internal mold release mounted on the entire circumference a cylindrical surface of said drum, having a base section disposed on said cylindrical surface and a plurality of outwardly projecting sections directly engageable with the ground being worked. THE REJECTIONS The following rejections by the Examiner are before us for review: 1. Claims 1-5, 7, 8 and 22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Moorhead (US 3,832,079, issued Aug. 27, 1974). 2. Claims 6 and 9-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead. 2 Appeal 2009-007544 Application 11/248,248 3. Claims 1-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Moorhead in view of Yates (US 5,511,901, issued Apr. 30, 1996). ISSUE The issue before us is whether the Examiner erred in finding that Moorhead describes “a liner formed of a material having earth adherent retarding properties containing an internal mold release,” as called for in independent claim 1 (Reply Br. 1, App. Br. 4-5). ANALYSIS Anticipation rejection of claims 1-5, 7, 8 and 22 over Moorhead Appellant contends that Moorhead does not describe “a liner formed of a material having earth adherent retarding properties containing an internal mold release,” as called for in independent claim 1 (Reply Br. 1, App. Br. 4-5). Appellant contends that “any release agent substance of any film, coating or drum component . . . cannot without further evidence simply be construed as having earth adherent retarding properties” (Reply Br. 1). The Examiner found (1) that “Moorhead meets all claim limitations regarding the liner material” (Ans. 3), (2) Moorhead describes “a liner . . . formed of material (polytetrafluoroethylene), which meets all recitations regarding material properties” (id.). Claim 1 calls for, inter alia, “a liner formed of a material having earth adherent retarding properties containing an internal mold release.” Moorhead describes a process for impressing concrete with a patterned surface (col. 2, ll. 32-59). Moorhead describes that “the blades 20 3 Appeal 2009-007544 Application 11/248,248 and 22 can have a coating of tetrafluorethylene (teflon [sic, TEFLON]) on its surface to enhance the release properties thereof” (col. 5, ll. 33-36; see also col. 4, ll. 11-14). Moorhead is silent as to whether the polytetrafluoroethylene surface coating, which is stated as enhancing the release from concrete, includes both (1) material having earth adherent retarding properties and (2) an internal mold release. As such, it becomes incumbent upon the Examiner to provide an adequate basis in fact and/or technical reasoning that would support a finding that Moorhead's polytetrafluoroethylene surface coating includes both a material having earth adherent retarding properties and an internal mold release, as called for in claim 1. The Examiner’s broad findings, as set forth supra, that Moorhead meets all of the claim limitations regarding the liner material and that Moorhead describes a liner which meets all recitations regarding material properties does not provide the requisite adequate basis in fact and/or technical reasoning. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) Thus, we are constrained to reverse the rejection of independent claim 1, and claims 2-5, 7, 8 and 22, which depend therefrom. Obviousness rejection of claims 6 and 9-21 over Moorhead The Examiner has not provided any additional findings or rationale regarding Moorhead’s liner other than the findings set forth supra regarding independent claim 1. 4 Appeal 2009-007544 Application 11/248,248 Thus, we are constrained to reverse the rejection of claims 6 and 9-21, which depend from independent claim 1. Obviousness rejection of claims 1-22 over Moorhead and Yates The Examiner has not relied on Yates for any teaching that would remedy the deficiency in Moorhead (Ans. 4, 6) as set forth supra regarding independent claim 1. Thus, we are constrained to reverse the rejection of claims 1-22 over Moorhead in view of Yates. CONCLUSION The Examiner has erred finding that Moorhead describes “a liner formed of a material having earth adherent retarding properties containing an internal mold release,” as called for in independent claim 1. DECISION The decision of the Examiner to reject claims 1-22 is reversed. REVERSED JRG NOVAK DRUCE & QUIGG LLP 300 NEW JERSEY AVE, NW FIFTH FLOOR WASHINGTON, DC 20001 5