Ex Parte Barss

Patent Trial and Appeal Board

Jul 13, 2017

13889929 (P.T.A.B. Jul. 13, 2017)

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.
13/889,929 05/08/2013 JAMES BARSS 63427-000078/US/COB 8097
27572 7590 07/17/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
07/17/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES BARSS
(Applicant: Comfortex Corporation)
Appeal 2016-007014
Application 13/889,9291
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision finally rejecting claims 25^40 and 43^49. We have
jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
1 According to Appellant, the real party in interest is Comfortex
Corporation. Appeal Br. 1.
2 Our Decision refers to the Appellant’s Specification filed May 8, 2013
(“Spec.”), the Appeal Brief filed Nov. 3, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed May 5, 2016 (“Ans.”), and the Reply Brief filed
July 5, 2016 (“Reply Br.”).
Appeal 2016-007014
Application 13/889,929
The subject matter on appeal relates to methods of making a plurality
of foldable, collapsible window shades (see, e.g., claims 25, 36, and 43).
Appellant discloses that conventional processes to produce “single-cell”
honeycomb window coverings involve producing oversized stacks of cells,
or bolts, which are placed in inventory until they are cut to a desired width
and length to meet a customer’s order. Spec. 1 8. Appellant discloses this
process requires skilled labor and results in substantial waste. Id. In view of
this, Appellant discloses a process that eliminates waste otherwise created by
cutting large bolts and eliminates additional costs due to handling and
storing the large bolts. Id. | 56. The process also permits faster conversion
of customer orders to deliverable goods. Id.
Independent claim 25 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.3 The limitation at issue is italicized.
25. A method of making a plurality of foldable, collapsible
window shades, each shade formed of a plurality of elongated
preforms cut from a continuously moving narrow strip of
elongated flexible material and subsequently stacked and
bonded together to form a respective continuous array,
comprising:
depositing colorant onto a first portion of said moving
continuous strip of flexible material;
thereafter cutting said first portion of moving colorant-
coated strip into at least one set of preforms, each preform
having a first combination of color, pattern and length, and each
set of such preforms, when stacked and bonded together,
forming a continuous array having the color, pattern, height and
width substantially corresponding to a first customer-specified
shade;
thereafter, without interruption of the continuous
movement of said continuous strip, repeating said depositing
and cutting steps on a second portion of said moving strip to
3 Appeal Br. (Claims Appendix) 31—32.
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Application 13/889,929
produce a second set ofpreforms, each preform of said second
set having a second combination of color, pattern and length
different from said first combination, and such second set of
preforms, when stacked and bonded together, forming a
continuous array having the color, pattern, height and width
substantially corresponding to a second customer-specified
shade.
The claims on appeal stand rejected as follows:
(1) claims 25-29, 32, 3AA0,4 and 43^19 under 35 U.S.C. § 103(a)
as unpatentable over Yu,5 as evidenced by Huang,6 in view of Goodhue,7
Ridgway,8 and Romeo;9
(2) claim 30 under 35 U.S.C. § 103(a) as unpatentable over Yu, as
evidenced by Huang, in view of Goodhue, Ridgway, and Romeo and further
in view of Barss;10
(3) claim 31 under 35 U.S.C. § 103(a) as unpatentable over Yu, as
evidenced by Huang, in view of Goodhue, Ridgway, and Romeo and further
in view of Corey;11 and
(4) claims 25 and 33 under 35 U.S.C. § 103(a) as unpatentable over
Goodhue in view of Ridgway and Romeo.
4 Although the Examiner does not list claim 34 in the statement of the
rejection, the Examiner presents a rejection for claim 34 at page 7 of the
Examiner’s Answer and at pages 7—8 of the Final Office Action dated June
3,2015.
5 Yu, US 2006/0185787 Al, published August 24, 2006 (“Yu”).
6 Huang, US 5,630,900, issued May 20, 1997 (“Huang”).
7 Goodhue, US 5,714,034, issued February 3, 1998 (“Goodhue”).
8 Ridgway, US 6,286,920 Bl, issued September 11, 2001 (“Ridgway”).
9 Romeo et al., US 5,516,385, issued May 14, 1996 (“Romeo”).
10 Barss et al., US 2007/0251637 Al, published November 1, 2007
(“Barss”).
11 Corey et al., US 6,634,409 B2, issued October 21, 2003 (“Corey”).
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Application 13/889,929
B. DISCUSSION
Rejection of Claims 25—29, 32, 34—40, and 43—49
Claims 25—29, 32, 34^40, and 43^49 under 35 U.S.C. § 103(a) as
unpatentable over Yu, as evidenced by Huang, in view of Goodhue,
Ridgway, and Romeo. Appellant argues claims 25, 36, and 44, as a group,
and claim 43 separately. We select claim 25 as representative of the first
group for resolving the issues on appeal, and address Appellant’s arguments
as to claim 43 separately.
The dispositive issue on appeal is whether Appellant has identified a
reversible error in the Examiner’s determination that the combination of Yu,
as evidenced by Huang, in view of Goodhue, Ridgway, and Romeo discloses
or suggests repeating depositing and cutting steps on a portion of a moving
strip, without interruption of the continuous movement of the strip, to
produce a second set of preforms having a second combination of color,
pattern, and length different from a first combination of color, pattern, and
length for a first set of preforms, as recited in claim 25. Appellant’s
arguments12 do not identify such an error.
The Examiner finds Yu discloses a method of making cellular shade
material including, among other things, cutting strip material into preforms
of a desired length, stacking preforms together, and bonding the preforms to
form a continuous assembled array of preforms having a length and width
corresponding to a desired height and width. Ans. 2. The Examiner cites
Huang as further evidence of such a process. Id. at 3. The Examiner finds
Yu does not disclose that the length and number of material are determined
12 Appeal Br. 6—21; Reply Br. 3—8.
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Application 13/889,929
by a window to be covered, but finds Goodhue teaches that window
dimensions can be used to determine the length and width of a blind made
from preforms. Id.
The Examiner further finds Yu does not disclose that once a first job
is finished, a second job is commenced without interruption of a continuous
movement of the material to be cut. Id. The Examiner finds Goodhue
discloses an extra stacker to take the position of a first stacker when a first
job is complete, so the production process is not interrupted. Id. at 3^4. In
view of the Examiner’s finding that Yu does not disclose coloring its strip
material, Ridgway is cited by the Examiner for a disclosure of printing on
Venetian blind slats to form an overall image on a blind. Id. at 4. After
finding that Yu does not disclose whether its cutting roller is capable of
cutting strips of varying lengths, the Examiner finds Romeo discloses cutting
cellular shade material with a cutting roller having a clutch so the cutting
roller may cut material to a desired length. Id. at 4—5.
Appellant argues that the combination of applied references do not
disclose or suggest repeating depositing and cutting steps on a portion of a
moving strip, without interruption of the continuous movement of the strip,
to produce a second set of preforms having a second combination of color,
pattern, and length different from a first combination of color, pattern, and
length for a first set of preforms, as recited in independent claims 25 and 36.
These arguments are unpersuasive of reversible error in the
Examiner’s rejection.13 An obviousness analysis “need not seek out precise
13 Appellant cites declarations at pages 10, 13, 18, and 26 of the Appeal
Brief to support their arguments. The Examiner at page 14 of the
Examiner’s Answer held that these declarations under 37 C.F.R. § 1.132
were filed in the parent application, not in this application and, therefore, are
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teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398,418 (2007).
As discussed above, the Examiner finds the applied references
disclose structures for performing the processes recited in claims 25 and 36.
For example, the Examiner finds Yu discloses a process for producing
cellular shade material from strip material, Goodhue discloses an extra
stacker so a second job may be started without interruption, Ridgway
discloses a printer for varying the pattern on individual members of a blind,
and Romeo discloses a cutting roller with a clutch so material may be cut to
a desired length (Final Act. 2—6). We adopt those findings as our own.
Based on these findings, the Examiner concludes it would have been
obvious to modify Yu in view of Goodhue, Ridgway, and Romeo. Ans. 3—5.
A preponderance of the evidence supports this conclusion.
Although the applied references do not explicitly disclose producing a
second set of preforms, which differs from a first set in a combination of
color, pattern, and length, without interrupting the continuous movement of
a continuous strip, as recited in claim 25, one of ordinary skill in the art
would have readily inferred such an operation from the applied references.
The Examiner finds “Goodhue teaches that the window dimensions can be
used to determine the preform length and number of preforms used to make
a blind.” Ans. 3. This finding is supported by the disclosure of Goodhue,
not part of the record. Because Appellant has not filed a timely petition to
overturn the Examiner’s holding, the declarations are not before us. See also
MPEP § 201.06(c)(IX).
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Application 13/889,929
which teaches that “the width of the outer sheets (the horizontal dimension
in FIG. 6) corresponds to the length of a window covering with horizontal
slats.” Goodhue 7:58—62. Moreover, Yu discloses the feeding rate of a
preform through its process is controlled according to the desired length of
material to be cut. Yu 133.
Appellant has neither asserted nor provided any credible evidence that
the proposed modification would have been beyond the capabilities of a
person of ordinary skill in the art. Absent such an assertion supported by
evidence, we “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ,” and find a person of ordinary skill
in the art would overcome those difficulties within their level of skill. KSR,
550 U.S. at 418. Based upon the disclosures of the applied references, as
well as the general knowledge that window shades must be sized to fit the
window they are to cover, one of ordinary skill in the art would have
inferred from the combined references that sets of preforms may differ from
one another in at least their size because the sets of preforms may be
configured to cover windows of different sizes.
Moreover, the combined references provide a process for producing a
first set of preforms and for immediately producing a second set of preforms
that differs at least in length from the first set without interruption of the
process. Specifically, Goodhue discloses a second stacker to avoid
interruption in a window shade manufacturing process and that preforms
have a length corresponding to a window length, and Yu and Romeo
disclose structures for cutting material for a preform to a desired length.
Goodhue 6:37—44; Yu Tflf 6, 33; Romeo 19:31—20:4. Therefore, when one
job is complete for a first set of preforms meant for a window of a first size
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and a second job is required for window having a second size, the process
provided by the combination of the applied references is useful for
producing both sets of preforms without interruption to movement of the
material from which the preforms are cut. To the extent the applied
references do not explain the conversion of a window size to the cut length
of a preform and the height of stack of preforms, the Examiner explains how
one of ordinary skill in the art would have undertaken this task in view of the
applied references. Ans. 14—15. We discern no error in that explanation.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton” and would not have been impeded by such a task that evidently
falls within their level of skill. KSR, 550 U.S. at 421.
Appellant asserts dependent claim 44 “recites a method that includes,
in substantially all material aspects, the same above-identified steps as
independent claims 25 and 36.” Appeal Br. 11. This is incorrect because
claim 44 recites that a second continuous array having a height and width
substantially corresponding to a customer-specified shade is produced
without interrupting the movement of a continuously moving strip. Appeal
Br. 37. Claim 44 does not require that the combination of color, pattern, and
length of the second array, or second set of preforms, differs from the
combination of color, pattern, and length for a first array, or set of preforms,
as recited in claims 25 and 36. In fact, claim 44 encompasses a process in
which a second array identical to a first array is produced without
interruption of the movement of the continuously moving material, which is
suggested by the combination of applied references (i.e., the process of the
combined references produces, without interruption, a second set of
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preforms for a window having the same size as a window for a first set of
preforms).
Appellant further argues one of ordinary skill in the art would not
have modified Yu in view of Ridgway because Ridgway is directed to
printing upon Venetian blinds made of semi-rigid slats, which is not
applicable to foldable, collapsible shades that would need to be held under
tension during a printing process. Appeal Br. 18—19, 23—24; Reply Br. 10.
This argument is unpersuasive. As stated by the Examiner, one of ordinary
skill in the art would have been able to modify the conditions for
successfully printing upon the material of Yu. Ans. 17. As noted above,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. Therefore, differences between the
materials for a Venetian blind and the materials for a cellular shade would
not have prevented one of ordinary skill in the art from adapting the printer
of Ridgway to the process of Yu unless such a modification would have
been beyond their skill. Appellant has neither argued such nor provided any
evidence in the record to support such an argument.
In addition, Appellant argues Yu teaches away from Goodhue because
Yu criticizes the placement of Goodhue’s cutter. Appeal Br. 22; Reply Br.
9. This argument is unpersuasive because the Examiner does not rely upon
Goodhue for the position of its cutter and Yu’s criticism does not amount to
a teaching away from the combination of the references. As stated by the
Examiner, a combination that results in something inferior for the same use
does not constitute a teaching away. Ans. 16.
Appellant further contends there is a long felt need addressed by the
claimed invention. Appeal Br. 25—27. Appellant’s evidence of long felt
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need is premised upon various references discussing the conventional
process in which shades are cut from oversized bolts, which results in
significant waste.14 Id. Although Appellant asserts Yu is directed to the
conventional process,15 Appellant provides no evidence in the record to
support this assertion. Moreover, as discussed above, Yu discloses that its
process feeds material at a proper rate so the material is cut to a desired
length. Yu 133. Thus, Yu itself demonstrates a capability for cutting
preforms to length, which would minimize waste. Based on the foregoing,
the Appellant’s evidence of long felt need is entitled to little weight. A
preponderance of the evidence supports the Examiner’s obviousness
determination for claims 25, 36, and 44. Appellant does not argue
dependent claims 26—29, 32, 34, 35, 37-40, and 45 49 separately from
claims 25, 36, and 44. Id. at 27.
Appellant argues independent claim 43 separately, asserting it would
not have been obvious to modify Yu in view of Ridgway because Ridgway
is directed to printing upon the semi-rigid slats of Venetian blinds, not
flexible strips for a cellular shade, as argued above for the combination
based upon Yu. Appeal Br. 27—28. For the reasons discussed above with
regard to claims 25, 36, and 44, this argument is unpersuasive.
For these reasons and those discussed in the Examiner’s Answer, the §
103 rejection of claims 25—29, 32, 34-40, and 43^49 over Yu, as evidenced
by Huang, in view of Goodhue, Ridgway, and Romeo is sustained.
14 Again, as indicated earlier, the Declarations of Colson and Corey which
Appellant references are not of record. As such, these Declarations are not
before us in this appeal.
15 Appeal Br. 12
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Rejections of Claims 3 0 and 31
Appellant does not advance separate arguments directed to the
Examiner’s additional findings and conclusions based upon Yu, as
evidenced by Huang, in view of Goodhue, Ridgway, and Romeo and further
in view of Barss or Corey. Id. at 29. Therefore, we sustain the Examiner’s §
103(a) rejections of claims 30 and 31.
Rejection of claims 25 and 33
Claims 25 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goodhue in view of Ridgway and Romeo. Appellant
argues Goodhue does not disclose or suggest repeating depositing and
cutting steps on a portion of a moving strip, without interruption of the
continuous movement of the strip, to produce a second set of preforms
having a second combination of color, pattern, and length different from a
first combination of color, pattern, and length for a first set of preforms, as
recited in claim 25. Id. at 29-30. For the reasons discussed above, the
combination of Goodhue, Ridgway, and Romeo suggests the process of
claim 25 and one of ordinary skill in the art would infer from the combined
disclosures that the process would produce a first set of preforms and then a
second set of preforms that differs from the first in a combination of color,
pattern, and length, without interrupting the continuous movement of a strip,
so the sets of preforms could be used for windows of different sizes.
Appellant further contends there would have been a lack of reason to
combine Goodhue and Ridgway for the same reasons Appellant argues
above that it would not have been obvious to combine Yu and Ridgway. Id.
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at 30. This argument is unpersuasive for the reasons discussed above with
regard to the combination based upon Yu.
For these reasons and those discussed in the Examiner’s Answer, the §
103(a) rejection of claims 25 and 33 over Goodhue in view of Ridgway and
Romeo is sustained.
DECISION
The decision of the Examiner is affirmed.
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).
AFFIRMED
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