Ex Parte Pung et al

Board of Patent Appeals and Interferences

May 22, 2012

10958852 (B.P.A.I. May. 22, 2012)

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.
10/958,852 10/05/2004 David John Pung CM2789M 2508
27752 7590 05/23/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KARLS, SHAY LYNN
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
05/23/2012 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 DAVID JOHN PUNG, HUGH JOSEPH O'DONNELL,
EDWARD PHILLIP ALLIE, VINCENT SEAN BREIDENBACH,
JEFFREY LEN OSBORNE, and NICOLA JOHN POLICICCHIO
____________________

Appeal 2010-004663
Application 10/958,852
Technology Center 3700
____________________

Before JAMES DONALD SMITH, Chief Administrative Patent Judge,
STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent
Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David John Pung et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3 and 9-16. An oral hearing was held
on April 18, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
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Application 10/958,852

2
THE INVENTION
Appellants’ claimed invention pertains to “cleaning pads and cleaning
implements for cleaning hard surfaces, and in particular floors.” Spec. 1:15-
16, 2:21-27. The cleaning pad has a scrubbing strip for scrubbing tough
stains with the strip located, according to Appellants, such that it “does not
make contact with the surface to be cleaned during the normal cleaning
operation.” Id. at 3:21-27. Claim 1, reproduced below with emphasis
added, is representative of the subject matter on appeal.
1. A cleaning implement comprising:
a handle;
a head portion pivotally attached to the handle and
comprising an upper surface and a lower surface connected to
the upper surface by side edges; and
a cleaning pad removably attached to the head portion,
the cleaning pad comprising an absorbent layer which extends
over the lower surface of the head portion and a thermoplastic
film scrubbing strip on a side edge of the head portion, said
scrubbing strip comprising an abrasive material with a
plurality of protrusions formed integrally with and extending
outwardly from the film, and outwardly from the side edge of
the cleaning implement.

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1, 3, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takabayashi (EP 1 212 972 A2, pub. Jun. 12, 2002),
Herbig (US 4,324,016, iss. Apr. 13, 1982) and Guthrie (US 6,132,841, iss.
Oct. 17, 2000); and
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2. Claims 1, 3, 10, 11, and 16 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Policicchio (US 6,101,661, iss. Aug. 15,
2000), Herbig, and Guthrie.

The Final Rejection (mailed Sep. 18, 2009) contains five other
rejections not explicitly addressed on appeal by either the Examiner or
Appellants. Those unaddressed rejections concern dependent claims and are
based on the underlying combinations applied to independent claim 1 in the
two rejections list above. See, e.g., Fin. Rej. 6 (“Claim 2 is rejected under
35 U.S.C. [§] 103(a) as being unpatentable over Takabayashi (‘972), Herbig,
and Guthrie (‘841) or Policicchio (‘661) , Herbig and Guthrie (‘841) as
applied to claim 1 above and both further in view of Hart (USPN
6507972).”) (bolding omitted). Those unaddressed rejections turn on the
same issues as the two argued rejections of claim 1, therefore our decision
likewise is dispositive as to those remaining rejections.

OPINION
Claim 1, the sole independent claim on appeal, calls for, inter alia, a
“cleaning pad comprising . . . a thermoplastic film scrubbing strip on a side
edge of the head portion.” The Examiner found that Takabayashi discloses a
scrubbing strip comprising a thermoplastic resin but “fails to teach using the
thermoplastic resin as the basis for making a thermoplastic film.” Ans. 3-4.
The Examiner proposes to modify the thermoplastic resin of Takabayashi’s
scrubbing layer so that it forms a thermoplastic film scrubbing layer similar
to that of Guthrie. Id. Because the Examiner’s articulated rejection based
on the modification of Policicchio and the accompanying reasoning are
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substantially similar to that of the rejection based on Takabayashi (Ans. 5-6,
8-9), we focus our discussion on the Takabayashi combination. Appellants
challenge the Examiner’s reasoning underlying the conclusions of
obviousness. See, e.g., App. Br. 4-6, 7 (addressing the Takabayashi
modification); Reply Br. 2-3 (same).
We have reviewed the Examiner’s grounds of rejection and responses
to Appellants’ arguments, and determine that the Examiner has failed to set
forth adequate articulated reasoning with rational underpinning to support
the conclusions of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited approvingly in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)).
The Examiner reasons that “the air laid nonwoven thermoplastic scrim
of Takabayashi and the thermoplastic film of Guthrie are both cleaning
devices that clean/scrub equally well and therefore it would have been
obvious to substitute the film for the scrim or vice versa.” Ans. 7. However,
the Examiner also reasons that one would have modified the form of
Takabayashi’s scrubbing surface through routine optimization “to optimize
performance of the cleaning device.” Ans. 4-5. The Examiner’s reasons
seemingly are contradictory. The optimization rationale suggests that a film
is better than the “scrim” of Takabayashi rather than an equal, thus
undermining the articulated substitution rationale. On the other hand, if the
two forms perform equally well, it is unclear to us, and the Examiner has not
adequately explained, why one would have selected the film form as the
optimum form.
The Examiner also reasons that it would have been obvious to modify
a thermoplastic resin scrubbing layer so that it forms a thermoplastic film
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Application 10/958,852

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“since it has been held within the general skill of a worker in the art to select
a known material on the basis of its suitability for the intended use as a
matter of obvious engineering choice.” Ans. 4 (citing In re Leshin, 277 F.2d
197 (CCPA 1960). However, the Examiner’s proposed modification
involves a selection of the form of the material rather than a selection of the
material itself –a thermoplastic material in the form of fibers in an air-laid
surface versus a thermoplastic material in the form of a film. See Ans. 7
(citing Takabayashi, para. 24; Guthrie, col. 3, ll. 1-21). Thus, the
Examiner’s reliance on Leshin for the proposition that the selection of a
material is an obvious engineering choice fails to explain why one of
ordinary skill in the art would have found it obvious to modify the form of
the thermoplastic material so as to arrive at a film.
On the record before us, we cannot sustain the Examiner’s rejections
based on the modification of either Takabayashi or Policicchio.

DECISION
The decision of the Examiner to reject claims 1-3 and 9-16 is
reversed.

REVERSED

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