Ex Parte Kimball et alDownload PDFPatent Trial and Appeal BoardApr 29, 201311447694 (P.T.A.B. Apr. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES F. KIMBALL, DANIEL R. BULLIS JR., ERIC J. MINOR, DOUGLAS S. RODENKIRCH and TODD J. BAKKEN ____________ Appeal 2010-011722 Application 11/447,694 Technology Center 2800 ____________ Before CHARLES F. WARREN, JEFFREY T. SMITH and BRADFORD E. KILE, Administrative Patent Judges. KILE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011722 Application 11/447,694 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. §134 from a final rejection of claims 3 and 21-36. App. Br. at 2. Claim 1 has been canceled and claims 2 and 4-20 have been withdrawn from consideration. Id. We have jurisdiction under 35 U.S.C. § 6. Appellants’1 (James F. Kimball et al.) invention is directed to “a stencil for use in applying a design to a [soft] surface.” Spec. 2, para. [0010], ll. 23-24. Claim 21 is illustrative of the subject matter on appeal and is reproduced below: 21. A stencil for use in applying a design to a soft surface, comprising: a first layer and a second layer disposed adjacent the first layer, each layer independently comprising a barrier layer or an absorbent layer, the first layer and the second layer having a cutout portion to provide a passage for a decor product to pass therethrough; and a support layer comprising an adherent material that comprises an adherent mesh-like material disposed adjacent the second layer for releasable securement and attachment to the soft surface, the support layer spanning the cutout portion to allow the decor product to substantially pass therethrough and be deposited on the soft surface and to releasably secure the stencil to the soft surface due to the mesh-like structure of the support layer. 1 Appellants identify the real party in interest as S.C. Johnson & Son, Inc. App. Br. 1. Appeal 2010-011722 Application 11/447,694 3 App. Br. Clms. App’x at 3. The Examiner relies on the following references in rejecting the appealed subject matter: Budden US 3,929,068 Dec. 30, 1975 Hahn US 5,193,457 Mar. 16, 1993 Appellants request review of the following rejection advanced on Appeal by the Examiner (Ans. 3): Claims 3 and 21-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hahn and Budden.2 OPINION A. Obviousness – Claims 3 and 21-36 Independent claim 21, with reference to the Specification paras. [00106], [00107], [00109], [00131] and [00132] and FIGs. 5, 6, 13 and 15, discloses and claims “a stencil . . . for use in applying a design to a soft surface.” App. Br. 2; Spec., pgs. 30, 31 and 38; App. Br. Clms. App’x at 3. Appellants’ FIG.s 13 and 15, reproduced below, disclose plan and cross-sectional views of one embodiment of a stencil in accordance with the claimed invention: 2 Appellants argue claims 3 and 21-36 as a group with respect to patentability under 35 U.S.C. § 103(a). We select independent claim 21 as a representative claim and all dependent claims will stand or fall with our consideration of independent claim 21 unless independently argued. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appeal 2010-011722 Application 11/447,694 4 Figure 13 depicts a plan view of a stencil 230 including a cutout portion 234 and an adherent support layer 236. Spec. at 37, para [00129]. Figure 15, taken along section line 15 – 15 in Figure 13, illustrates “[t]he stencil 230 includes an absorbent top layer 252, a liquid barrier layer 254, and cutout portions 234, and may be disposed adjacent a carpet 259.” Id. at [00132]. The stencil further includes a support layer 236 comprising a woven or non-woven mesh material such as for example cheesecloth that allows décor product to pass therethrough. Id. The Specification describes adherent materials usable with the support layer 236 to adhere the stencil to Appeal 2010-011722 Application 11/447,694 5 an underlying soft surface. Spec. at 30, paras. [00106-00107] at 31, para. [00109] and at 38, paras. [00131- 00132]. The Examiner rejects claim 21 over a combination of the teachings of Hahn and Budden. Ans. 3. The Hahn patent is directed to using a silk screening process to provide a framelike baked opaque frame layer onto a periphery of a pane of auto glass. Hahn, col. 1, ll. 11- 23. The Budden patent is directed to stencils with multiple layers and an adhesive coating to mount the stencil onto a wall surface prior to applying decorative paint. Budden, col. 2, ll. 3-17. Figures 1 and 2 of the Budden patent are reproduced below: Appeal 2010-011722 Application 11/447,694 6 Figure 1 of the Budden patent discloses a plan view of a stencil including a first sheet 1 including a layer 2 of polyethylene laminated between two sheets of kraft paper 3 and 4. Budden, col. 1, ll. 46-48. Cuts 9 define a design area operable to receive paint or the like to be applied to an underlying surface. Id., col. 1, ll. 57-60. An adhesive coating 5 is applied to the sheet 1 and serves to attach the stencil to a wall surface to receive a painted design. Id., col. 2, ll. 3-7. The Examiner finds that Hahn “teach[es] a stencil 22 for use in applying a design to a soft surface comprising a film layer 24 having a cutout portion to provide a passage for a décor product to pass there through.” Ans. 3. The Examiner also finds that Hahn discloses “a support layer in the form of a mesh-like silk screen fabric material 23 disposed adjacent the film layer 24 and spanning the cutout portion to allow the decorative material to substantially pass there through and be deposited on the substrate due to the mesh-like structure of the silk screen fabric material.” Id. at 3-4. With respect to the support layer recited in Appellants’ claim 21 the Examiner finds: [T]he present specification does not disclose any particular adherent material for the support layer except for the support layer being made of a mesh- like material. Since the support layer 23 of Hahn et al. is made of a mesh-like material, it can be reasonably assumed that it is adherent the same way as that of the mesh-like material used in the present invention. Id. at 4. The Examiner further finds that “the film layer 24 of Hahn et al. is a single layer as opposed to the first and second layers as recited.” Id. As for stencil multiple layers the Examiner finds that Budden discloses a stencil Appeal 2010-011722 Application 11/447,694 7 with a first layer 3 made of craft paper, and thus is absorbent, and a second layer 2 made of polyethylene, comprising a barrier layer. Ans. at 4. The Examiner concludes that: It would have been obvious to one of ordinary skill in the art . . . to provide the stencil of Hahn et al with the first and second layers of absorbent and barrier materials as taught in the stencil of Budden in place of the single film layer as a simple substitution of one known composite stencil layer for a single film layer in order to predictably result in a construction of a composite stencil sheet that is substantially paint impervious so as to allow the stencil to be used repeatedly over multiple applications. Id. at 4-5. Appellants assert that (a) the Hahn patent teaches away from the Examiner’s proposed combination, (b) the combination asserted by the Examiner would impermissibly render the invention of the Hahn reference unsatisfactory for its intended purpose, and (c) it was factual error to allege that the proposed construction is reasonable given the undesirability of such a construction. App. Br. 3-7; Rep. Br. 4-5. Appellants conclude by asserting that the Examiner has failed to establish a prima facie case of obviousness of the pending claims. Rep. Br. at 6. We are not persuaded that Appellants have demonstrated error in the Examiner’s obviousness determination. Appellants argue that Hahn teaches away from modifying the single layer stencil of Hahn with a multilayer construct comprising an absorbent and barrier materials because “the art teaches that leaving residual ink on such a printing screen is detrimental to the performance of the printing screen.” App. Br. 3. However, Appellants offer no explanation why Hahn’s stencil configuration would militate against Appeal 2010-011722 Application 11/447,694 8 using a layer comprising an absorbent and barrier materials. Appellants present a conclusion without an underlying rationale. Hahn does not provide specific limitations on the stencil film. A person of ordinary skill in the art would have reasonably expected that the stencil film of Hahn could have been formed from a multilayer construct. Accordingly, we agree with the Examiner’s finding that it would have been obvious to substitute a multilayer composite stencil layer for a single film layer. Ans. 4-5. We are not persuaded by Appellants’ argument that: replacing the single-layer film of Hahn et al. with a layer of Kraft paper and polyethylene from Budden would render the printing screen of Hahn et al. unsatisfactory for its intended purpose because it could not withstand the repeated exposure to a liquid ink and a doctor blade and the pressure associated therewith. App. Br. 5 Contrary to Appellants’ argument, Hahn does not disclose requiring the stencil to withstand a repeated exposure to a liquid ink and a doctor blade and the pressure associated therewith. Hahn discloses that after printing on a first glass substrate the “silkscreen printing stencil, is selected or changed so that now the two other glass sheet edges coincide with the outside boundary lines of the printing area.” Hahn, col. 2, ll. 37-40. A(i). Obviousness – Claim 3 In addition to Appellants’ arguments addressed above Appellants separately argue that the Examiner has failed to establish a prima facie case of obviousness with respect to dependent claim 3. App. Br. 7. Claim 3 depends from claim 21 and adds the recitation that “the absorbent layer is hydrophilic.” App. Br. Clms. App’x at 1. The Examiner Appeal 2010-011722 Application 11/447,694 9 points out that the disclosed Kraft paper in Budden is capable of absorbing moisture and is “hydrophilic in nature.” Ans. 9. Appellants have not convinced us that the Examiner’s conclusion is in error in the context of an obviousness rejection. A(ii). Obviousness – Claim 24 Claim 24 adds to the recitations of claim 21 that “the barrier layer is paper.” App. Br. Clms. App’x at 4. Appellants assert that the Budden patent specifically discloses use of Kraft paper as an absorbent layer and therefor it cannot also be used as a barrier layer. The Examiner points out that Appellants own application disclosure indicates that paper can be used as a barrier layer and also the absorbent layer can be a paper. Ans. 9. We find no error in the Examiner’s analysis and reasoning. A(iii). Obviousness – Claims 25-273 Claims 25 through 27 recite a sequence of claims directed to the composition of the absorbent layer. App. Br. Clms. App’x at 4. The Examiner points out that the Markush group of materials recited in claim 25 includes paper and that Kraft paper is disclosed by Budden. Accordingly, Hahn and Budden meet the terms of claim 25. Finally, we acknowledge that Appellants have cited for the first time in their Appeal Brief United States Patent Nos. 5,485,781; 5,273,780 and 4,268,545 as evidence of various aspects of silk-screening auto glass. These patents were not presented to the Examiner for consideration prior to 3 Appellants do not present substantive arguments addressing claims 26 and 27. App. Br. 8. We select claim 25 as representative and limit our discussion to claim 25. Appeal 2010-011722 Application 11/447,694 10 filing of Appellants’ Appeal Brief. As such, this evidence is outside the scope of our consideration. 37 C.F.R. § 41.33(d)(2) (2011). Accordingly, we affirm the Examiner’s rejection of claims 3 and 21- 36 under 35 U.S.C. § 103(a) as unpatentable over Hahn and Budden for the reasons given above and presented by the Examiner. ORDER The Examiner’s rejection of claims 3 and 21-36 is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R. § 1.136(a)(1)(iv)(2011). AFFIRMED tj Copy with citationCopy as parenthetical citation