Ex Parte Kimball et al

Patent Trial and Appeal Board

Apr 29, 2013

11447694 (P.T.A.B. Apr. 29, 2013)

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

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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and 4-20 have been withdrawn from consideration.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.
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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).
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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
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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:

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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
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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
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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
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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.
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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

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