2020003608 (P.T.A.B. Nov. 27, 2020)

Thomas Power

Patent Trials and Appeals BoardNov 27, 2020

2020003608 (P.T.A.B. Nov. 27, 2020)

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. 15/361,114 11/25/2016 Thomas Power 25198-P48820US00 8115 1059 7590 11/27/2020 BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l. 40 KING STREET WEST 40TH FLOOR TORONTO, ONTARIO M5H 3Y2 CANADA EXAMINER SHABLACK, JOHNNIE A ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 11/27/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipprocessingcentre@bereskinparr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS POWER Appeal 2020-003608 Application 15/361,114 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, JAMES A. WORTH, and TARA L. HUTCHINGS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Thomas Power. Appeal Br. 3. Appeal 2020-003608 Application 15/361,114 2 STATEMENT OF THE CASE Subject Matter on Appeal The Appellant’s “disclosure relates to devices used to protect persons and property in the vicinity of welding and grinding operations, and the use of screens, curtains or shields for this purposes.” Spec. ¶ 1. Claims 1 and 10 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A welding screen, comprising a primary barrier, the primary barrier made of magnetic sheet. References The prior art relied upon by the Examiner is: Name Reference Date Steiner et al. (“Steiner”) US 4,085,789 Apr. 25, 1978 Golay US 4,475,249 Oct. 9, 1984 Selgrad US 6,206,079 B1 Mar. 27, 2001 Blume US 6,707,361 B2 Mar. 16, 2004 Bandyopadhyay et al. (“Bandyopadhyay”) US 6,872,325 B2 Mar. 29, 2005 Fredin US 8,985,182 B2 Mar. 24, 2015 Ogden, Jr. et al. (“Ogden”) US 2009/0134963 A1 May 28, 2009 Gould US 2013/0087292 A1 Apr. 11, 2013 Rejections Claims 1, 2, 5, and 8 are rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay and Ogden. Appeal 2020-003608 Application 15/361,114 3 Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay and Bandyopadhyay. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay and Blume. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay and Selgrad. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over Steiner in view of Golay and Gould. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over Fredin in view of Golay. ANALYSIS For the rejection of independent claim 1, the Examiner finds that Steiner teaches a welding screen including a primary barrier made of fiberglass or asbestos. Final Act. 2–3. However, the Examiner also finds that Steiner fails to teach that the primary barrier is “made of magnetic sheet,” as recited in independent claim 1. Id. at 3. To remedy this deficiency, the Examiner determines: [I]t would have been obvious to one having ordinary skill in the art at the time of the invention to select a flexible magnetic sheet material for the primary barrier since it has been held to be 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 design choice. In re Leshin, 125 USPQ 416. Further, Golay discloses that it is desired to utilize flexible magnetic sheet material in welding applications in order to attract metallic particles (Golay[,] col 1, lines 38-42). One would be motivated to modify the material of Steiner such that it is made from flexible magnetic sheet in order to attract metallic particles, as taught by Golay as being desired in Appeal 2020-003608 Application 15/361,114 4 welding applications so that the flexible magnetic sheeting is used as a safety barrier within a welding splatter protection device, to magnetically attract and collect welding and grinding byproducts. Id. at 3–4. As best understood, the Examiner reasons that Golay’s use of a flexible magnetic sheet in a welding application supports a rationale that Golay’s flexible magnetic sheet is a suitable replacement for the primary barrier in Steiner’s welding screen. By way of background, Golay teaches a flexible magnetic sheet applied to the inside surface of a welding face mask that functions as a lung protector in welding applications by attracting minute airborne metallic particles between the inner surface of a welder’s face mask and the welder’s nose and mouth to clean the air for a welder to breathe. Golay col. 1, ll. 24– 28, 38–42, 54–58. Steiner, in contrast, teaches a welding screen for shielding welding working locations from the “ever-present hazard of burns and property ignition from the sparks inherent with the welding operation.” Steiner col. 1, ll. 5–13. Steiner teaches that fiberglass or asbestos is a suitable shielding material for use as welding screen. Id. at col. 6, ll. 20–23. The Appellant argues that a person skilled in the art would not recognize from Golay’s teachings that a magnetic sheet material would be a suitable material for use in the welding screen of Steiner. See Appeal Br. 7– 9. In support of this argument, the Appellant contrasts the function of Golay’s magnetic sheet for use as a lung protector (i.e., air filter) and the function of Steiner’s material for use as a welding screen (e.g., fire and flame resistance). Id. at 7–8. The Appellant also distinguishes the proximity of the threat between Golay’s air filter, which is “mere fractions of an inch from [a] wearer’s nose and mouth,” and Steiner’s welding screen, which Appeal 2020-003608 Application 15/361,114 5 may be “one to several feet away.” Id. at 8. The Appellant contends that “it would not be obvious to a person skilled in the art that a welding screen made of the flexible magnetic air filter material of Golay has the capability (e.g. magnetic strength) to . . . filter minute airborne particles from anything but the smallest layer of air next to the flexible magnetic air filter – which would make the air filtration useless to nearby people and environment.” Id. at 8–9. The Appellant’s argument is persuasive. The Examiner seems to support a replacement rationale by relying on Golay for the broad teaching that a magnetic sheet is a material known both in welding applications and also to attract metallic particles. See Ans. 3–9; see, e.g., id. at 4 (“the [E]xaminer applied Golay for the teaching of a magnetic sheet in welding applications”; “Golay . . . provides the benefit of attracting metallic particles”). However, the Examiner does not adequately establish that a person of ordinary skill in the art would understand Golay’s magnetic sheet, which is used as an air filter in close proximity to a user’s mouth and nose, to be sufficient to protect against burns and property ignition in a welding screen application, as required by Steiner. The Examiner appears to address the foregoing by stating that “[t]he inside of a welder’s mask is frequently exposed to the heat and flames in an area having welding done, as it is designed to be flipped up while still on the user’s head.” Id. at 6–7. First, the Examiner’s statement is speculative. Second –– and without agreeing to the validity of the statement –– the ability to move the inside of a welding mask and consequently, magnetic sheeting along with it, away from a user’s face does not support the notion that magnetic sheeting protects against the hazards of sparks from a welding operation. Appeal 2020-003608 Application 15/361,114 6 For the foregoing reasons, we determine that the Examiner fails to adequately establish on this record why one of ordinary skill in the art would understand that magnetic sheeting is a suitable material for a welding screen. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and dependent claims 2, 5, and 8 as unpatentable over Steiner in view of Golay. Further, the Examiner fails to rely on Ogden, Bandyopadhyay, Blume, Selgrad, or Gould in any manner that would remedy the deficiency in the Examiner’s rejection of claim 1. Thus, we likewise do not sustain the Examiner’s rejections of dependent claims 3, 4, 6, and 7. For the rejection of independent claim 10, the Examiner finds that Fredin teaches a portable free standing welding splatter protection device including a partial dome of flexible sheeting to protect against welding and grinding byproducts. Final Act. 7–8. However, the Examiner also finds that Fredin’s flexible sheeting material is not a “flexible magnetic sheeting to magnetically attract and collect welding and grinding byproducts,” as recited in independent claim 10. See id. at 8. To remedy this deficiency, the Examiner relies on substantially the same reasoning as provided for the rejection of claim 1; i.e., that Golay’s flexible magnetic sheet is a suitable replacement for the primary barrier of Fredin’s welding splatter protection device. Id. at 8–9. Similar to Steiner’s welding screen, Fredin’s welding splatter protection device comprises a material suitable to protect against fires or explosions in hazardous environments. See Fredin col. 1, ll. 9–13 (explaining that welding generates sparks or slag that may cause fire), col. 3, l. 11 (explaining that the flexible substrate, which defines the welding screen, is made from suitable materials). Therefore, for similar reasons as Appeal 2020-003608 Application 15/361,114 7 discussed above, we do not sustain the Examiner’s rejection of independent claim 10 as unpatentable over Fredin in view of Golay. New Ground of Rejection We reject claim 1 under 35 U.S.C. § 102(a1)/(a2) as anticipated by Womack (US 5,269,524, iss. Dec. 14, 1993). Independent claim 1 recites, “[a] welding screen, comprising a primary barrier, the primary barrier made of magnetic sheet.” Appeal Br., Claim App. Womack discloses a self-supporting device having a primary barrier made of a magnetic sheet 24. Womack Fig. 1, col. 2, l. 58 (Womack’s reference number 24 is described as magnetic sheeting material 24.). Although Womack’s self-supporting device is a game board (id.), “[i]t is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Further, we note that the Appellant’s Specification supports the finding that Womack’s magnetic sheeting material 24 corresponds to the claimed “magnetic sheet.” The Specification at paragraph 18, with added emphasis, describes: The ferromagnetic sheeting material can be of various commercially available types, usually formed using of magnetic particles/powders embedded within a resin, rubber and/or plastic layer (referred generally as a polymer bonded magnets). New magnetic sheeting material is created, but the use of any magnetic sheeting material for the purpose of the primary barrier in a welding screen should be considered within the scope of the present disclosure. Flexible magnetic sheeting is typically used as signage or labelling which can be adhered to ferrous metal surfaces; but is not known to be used . . . as Appeal 2020-003608 Application 15/361,114 8 primary material in a welding screen to protect against welding byproducts. Also, we note that paragraph 18 acknowledges that the use of the magnetic sheeting material as a protection mechanism against welding byproducts is the distinguishing characteristic between the magnetic sheeting material in the prior art and the invention of the present application. In view of the foregoing, we determine that claim 1 is anticipated by Womack. CONCLUSION We REVERSE the Examiner’s rejections of claims 1–8 and 10 under 35 U.S.C. § 103. We enter a NEW GROUND OF REJECTION of claim 1 under 35 U.S.C. § 102 (a1)/(a2) as anticipated by Womack pursuant to our authority under 37 C.F.R. § 41.50(b). 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 the Appellant, 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 prosecution 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. Appeal 2020-003608 Application 15/361,114 9 In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 5, 8 103 Steiner, Golay 1, 2, 5, 8 3, 4 103 Steiner, Golay, Ogden 3, 4 3, 4 103 Steiner, Golay, Bandyo- padhyay 3, 4 3, 4 103 Steiner, Golay, Blume 3, 4 6 103 Steiner, Golay, Selgrad 6 7 103 Steiner, Golay, Gould 7 10 103 Fredin, Golay 10 1 102(a1)/(a2) Womack 1 Overall Outcome 1–8, 10 1 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). REVERSED; 37 C.F.R. § 41.50(b)