Ex Parte Smythe

Board of Patent Appeals and Interferences

May 15, 2012

11387106 (B.P.A.I. May. 15, 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.
11/387,106 03/22/2006 Timothy Smythe 4429
7590 05/15/2012
Clifford Kraft
320 Robin Hill Dr.
Naperville, IL 60540
EXAMINER
GLESSNER, BRIAN E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
05/15/2012 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 TIMOTHY SMYTHE
____________________

Appeal 2010-003227
Application 11/387,106
Technology Center 3600
____________________

Before: JOHN C. KERINS, KEN B. BARRETT, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003227
Application 11/387,106
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-4, 8-11, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Ritchie (US 5,131,198, iss. Jul. 21, 1992) and Hoffman
(US 4,977,718, iss. Dec. 18, 1990). We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A drywall corner bead comprising:
an elongated semi-rigid non-metal flange with a constant
cross-section inelastically bendable along a centerline to form
any angle;
a covering layer on a room-facing surface of said semi-rigid
flange, said covering layer capable of directly receiving paint or
texture.

OPINION
For independent claims 1, 8, and 11, the Examiner found that Ritchie
describes a drywall corner bead that has a constant cross-section flange that
is inelastically bendable along a centerline, and has a covering layer capable
of receiving paint or texture. Ans. 3, 5, and 6-7. The Examiner found that
Ritchie does not describe the corner bead having non-metallic (or plastic)
flanges. Ans. 4, 5, 7; see also Ritchie, col. 2, ll. 53-54 (“The core strip is
preferably a galvanized steel strip”). However, the Examiner found that
Hoffman describes a non-metallic (plastic) drywall corner bead flange. Ans.
4, 5, 7. The Examiner concluded that it would have been obvious to replace
the metal flange in Ritchie with the plastic flange in Hoffman, in order to
“prevent corrosion,” “enhance retention of the [flange] in the bent position,”
Appeal 2010-003227
Application 11/387,106
3
and, for claim 11, “be able to be repeatedly bent to a plurality of different
angles.” Id.
Appellant argues that Ritchie and Hoffman are each missing various
features of the claimed and/or disclosed invention. App. Br. 7-8, Reply Br.
2. These arguments fail because they do not address what features are
purported to be missing from the Examiner’s proposed combination. See In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references”).
Appellant argues that Ritchie teaches away from a “simple paper
layer.” App. Br. 7. First, the claims do not require a “simple paper layer.”
Second, Appellant does not point to any passage in Ritchie that criticizes,
discredits, or otherwise discourages any particular paper layer configuration.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach
away from claimed subject matter merely by disclosing a different solution
to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed).
Appellant next argues that Ritchie and Hoffman teach away from each
other and from the claimed invention. App. Br. 8. However, Ritchie and
Hoffman teach alternative drywall corner beads, not away from each other.
See Fulton 391 F.3d at 1201; DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away […] if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”)
Appeal 2010-003227
Application 11/387,106
4
Lastly, Appellant argues that neither Ritchie nor Hoffman teach
“completely inelastic bending.” Reply Br. 2. However, the claims do not
require “completely inelastic bending.” Appellant has not set forth any
persuasive arguments as to why the Examiner’s proposed combination fails
to meet the claimed bending requirements.
Reviewing Appellant’s arguments in both briefs, we are not apprised
of error in the Examiner’s rejection.

DECISION
We affirm the Examiner’s decision regarding claims 1-4, 8-11, and
13. 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

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