Ex Parte Dumond et al

Patent Trial and Appeal Board

Nov 1, 2013

11504266 (P.T.A.B. Nov. 1, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/504,266 08/15/2006 Robert A. Dumond 6674-0104 3591
50811 7590 11/01/2013
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
11/01/2013 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 PATENT TRIAL
AND APPEAL BOARD
____________
Ex parte ROBERT A. DUMOND and TIMOTHY F. LESSARD
____________
Appeal 2012-005063
Application 11/504,266
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection under 35 U.S.C. § 103(a) of claims 1-8, 10-15, and 17-23 as
obvious over Nelson ʼ4301 with Chien;2 and of claims 9 and 16 as obvious
over Nelson 430, Chien, and Nelson ʼ408.3 We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).

1 US 2002/0127430 A1 published September 12, 2002. Nelson ʼ430 shares
a common inventor with the present case on appeal.
2 US 5,775,016 patented July 7, 1998.
3 US 6,395,408 B1 patented May 28, 2002.
Appeal 2012-005063
Application 11/504,266

2
Claim 1 is illustrative of the claimed subject matter:
1. A decorative laminate, comprising:
a core layer having at least one sheet of paper impregnated with a
resin; and

a decorative layer having at least one sheet of paper with at least first
and second geometric patterns printed thereon, which first geometric pattern
is printed using a first photoluminescent material, and which second
geometric pattern is printed using a second photoluminescent material;

wherein the first photoluminescent material produces a first color
when exposed to ultraviolet light, and the second photoluminescent material
produces a second color when exposed to ultraviolet light, which second
color is different from the first color.

Each independent claim (i.e., claims 1, 10, 17, 20, and 22) similarly
requires a first and a second photoluminescent material producing two
different colors in a decorative laminate, or in a method for making a
decorative laminate (Claims App’x).
Appellants rely upon the same arguments regarding the use of two
different photoluminescent colors for each independent claim, and do not
present any separate arguments for any specific claim (Br. 6-11).
Accordingly, we select claim 1 as representative.
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that the claimed subject
matter of representative claim 1 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 rejections for these claims for
Appeal 2012-005063
Application 11/504,266

3
essentially those reasons expressed in the Answer, and we add the following
primarily for emphasis.
It is well established that “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418. Furthermore, an improvement in
the art is obvious if “it is likely the product not of innovation but of ordinary
skill and common sense.” Id. at 421.
We are not persuaded by Appellants’ arguments that there is no
suggestion of using more than one photoluminescent material in the applied
prior art (Br. 8). There is no dispute that Nelson ʼ430 discloses the claimed
subject matter of a decorative laminate and method of forming such a
laminate except for an explicit teaching of using two different
photoluminescent materials/colors as recited in each independent claim.4
The Examiner relies upon Chien mainly to exemplify that photoluminescent
materials that produce a variety of colors are well known (e.g., Ans. 5).

4 We also agree with the Examiner that the claimed design may be properly
characterized as nonfunctional descriptive material (e.g., Ans. 13). In the
context of prior art rejections, a distinction over the prior art based on
nonfunctional descriptive material is patentably inconsequential. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).
Appeal 2012-005063
Application 11/504,266

4
We have no doubt that the use of two different photoluminescent
materials in order to produce two different colors in a decorative laminate
would have been within the level of ordinary creativity in the art based on
the applied prior art of Nelson ʼ430, with or without Chien. See Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We
therefore hold that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.”).5
Appellants have not presented any persuasive reasoning or evidence
that the use of two photoluminescent materials/colors in Nelson ʼ430 would
not have been within the level of skill in the art as discussed above and in
the Examiner’s Answer.
Appellants also contend that the “utility [of providing safety
information to a bowler] is not possible with either prior art reference”
(Br. 8). This is not persuasive, since the decorative laminate as claimed (and
method of forming same) is not limited to any particular application.
Furthermore, Nelson ʼ430 exemplifies a wide variety of uses for its
decorative laminate, including for bowling lanes (Nelson ʼ430 Abstract).
The Examiner’s decision is affirmed.

5 See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.”).
Appeal 2012-005063
Application 11/504,266

5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
tc