Ex Parte Becker

Board of Patent Appeals and Interferences

Jun 1, 2009

10865658 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS BECKER
____________________

Appeal 2008-005716
Application 10/865,658
Technology Center 3700
____________________

Decided:1 June 1, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, MICHAEL W. O'NEILL and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-3, 5-35, 37-57 and 59-89. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to an advertisement device and a method for
delivering that device by mail. Claim 1 is illustrative of the claimed subject
matter and is reproduced below:

1. An advertisement device for direct mail delivery to a
recipient, said device comprising:

a substantially flat synthetic panel having a back side, a
front side, and a thickness sufficient to maintain integrity of the
synthetic panel, wherein at least one of said back side and said
front side has a pattern related to a theme of at least one of a
product and a service, said pattern being printed using an
indelible ink formulated for printing on synthetic materials.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Pelaez US 3,986,283 Oct. 19, 1976
Büchler US 4,506,823 Mar. 26, 1985
Greathouse US 4,915,522 Apr. 10, 1990
Santorsola US 5,669,165 Sep. 23, 1997
Gick US 5,735,453 Apr. 7, 1998
Aamodt US 6,325,969 B1 Dec. 4, 2001
Huff US 6,499,654 B1 Dec. 31, 2002
The Appellant relies on the following as evidence of non-obviousness:
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Declaration under 37 C.F.R. § 1.132 of Thomas Becker, filed February 22,
2005, (hereafter “Decl.”).
Claim 83 stands rejected under 35 U.S.C. §102(b) as being anticipated
by Pelaez. Ans. 3. Claims 1-3, 18, 20, 22-25, 29, 30, 32-35, 41, 45-47, 51,
52, 54-57, 65-67, 71, 75, 76, 78, 82, 84, 85 and 86 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pelaez and Greathouse. Ans. 4.
Claims 5-13, 26, 28, 38-40, 48, 50, 59, 61-64, 72 and 74 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Pelaez, Greathouse, and
Büchler. Ans. 7. Claims 14-17, 19, 21, 37, 42-44 and 68-70 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Pelaez, Greathouse,
Büchler, and Aamodt. Ans. 9. Claims 27, 49 and 73 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Pelaez, Greathouse, Büchler,
and Santorsola. Ans. 9. Claims 31, 53 and 77 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pelaez, Greathouse, and Huff. Ans. 10.
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Pelaez, Greathouse, Buchler, and Aamodt. Ans. 11. Claims 79-81 and
87-89 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Pelaez in view of Gick. Ans. 11.

ISSUES
Appellant argues that the Examiner erred by rejecting claim 83 as
being anticipated by Pelaez. Appellant asserts that since the post card of
Pelaez includes a bold relief it is not “substantially flat” as required by claim
83. App. Br. 16. In light of this contention, the first issue presented is:
Has Appellant established that the term “substantially flat” excludes a
post card having the bold relief described in Pelaez?
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Also with respect to claim 83, Appellant contends that since Pelaez
describes the surfaces of the post card of Pelaez as having bold relief, being
raised, or rough those surfaces are not “adapted to receive printing thereon
using an indelible ink formulated for printing on synthetic materials such
that no substantial material degradation of the printing occurs during
handling,” as required by claim 83. In light of this contention, the next issue
presented is:
Has Appellant established that the surface features of Pelaez would
render the Pelaez post card incapable of receiving printing thereon using an
indelible ink formulated for printing on synthetic materials such that no
substantial material degradation of the printing occurs during handling?
It is noted that Appellant alleges that Pelaez teaches away from the
subject matter of claim 83. App. Br. 16-17. Since teaching away is irrelevant
to anticipation this argument is not addressed further with respect to the
rejection of claim 83 as being anticipated by Pelaez. See Seachange Intern.,
Inc. v. C-COR, Inc. 413 F.3d 1361, 1380 (Fed. Cir. 2005).
Also with respect to claim 832, Appellant contends that the “material
degradation” limitation imparts a structural limitation into claim 83, namely
that the synthetic panel is capable of receiving a specific type of indelible
ink, i.e., ink formulated for printing on synthetic materials for enhanced
adhesion and practical durability. App. Br. 18. We take this as an argument
that the Pelaez post card would not be capable of receiving an indelible ink
formulated for printing on synthetic materials for enhanced adhesion and
practical durability and would therefore not be capable of receiving an ink

2 Arguments directed toward claim 38 on page 17 of the Appeal Brief are
clearly intended to instead be directed toward claim 83.
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wherein no material degradation of the printing occurs during handling as
required by claim 83. In light of this contention, the next issue presented is:
Has Appellant established that the Pelaez post card would not be
capable of receiving an indelible ink formulated for printing on synthetic
materials for enhanced adhesion and practical durability and would therefore
not be capable of receiving an ink wherein no material degradation of the
printing occurs during handling?
Appellant argues the rejected claims 1-3, 18, 20, 22-25, 29, 30, 32-35,
41, 45-47, 51, 52, 54-57, 65-67, 71, 75, 76, 78, 82, 84, 85 and 86 as a group.
App. Br 18-24. Claim limitations present only in claims 82 and 85, however,
are the subject of separate comment within that argument. App. Br. 20-21.
We select claim 1 as the claim representative of Appellant’s arguments
pertaining to claims 1-3, 18, 20, 22-25, 29, 30, 32-35, 41, 45-47, 51, 52, 54-
57, 65-67, 71, 75, 76, 78, 84, and 86, and claims 2-3, 18, 20, 22-25, 29, 30,
32-35, 41, 45-47, 51, 52, 54-57, 65-67, 71, 75, 76, 78, 84, and 86 will stand
or fall with claim 1. We select claim 82 as the claim representative of
Appellants arguments directed to claims 82 and 85 and claim 85 will stand
or fall with claim 82. 37 C.F.R. § 41.37(c)(1)(vii). Although Appellant
provides a separate subhead pertaining to the rejection of claims 5-13, 26,
28, 38-40, 48, 50, 59, 61-64, 72 and 74, Appellant does not present any
substantive arguments pertaining specifically to these claims. Appellant
instead relies upon the arguments presented pertaining to their respective
parent claims 1, 33, and 55. App. Br. 25. Although Appellant provides a
separate subhead pertaining to the rejection of claims 14-17, 19, 21, 37, 42-
44 and 68-70, Appellant does not present any substantive arguments
pertaining specifically to these claims. Appellant instead relies upon the
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arguments presented pertaining to their respective parent claims 1, 33, and
55. App. Br. 25-26. Although Appellant provides a separate subhead
pertaining to the rejection of claims 27, 49 and 73, Appellant does not
present any substantive arguments pertaining specifically to these claims.
Appellant instead relies upon the arguments presented pertaining to their
respective parent claims 1, 33, and 55. App. Br. 26. Although Appellant
provides a separate subhead pertaining to the rejection of claims 31, 53 and
77, Appellant does not present any substantive arguments pertaining
specifically to these claims. Appellant instead relies upon the arguments
presented pertaining to their respective parent claims 1, 33, and 55. App. Br.
27. Although Appellant provides a separate subhead pertaining to the
rejection of claim 60, Appellant does not present any substantive arguments
pertaining specifically to this claim. Appellant instead relies upon the
arguments presented pertaining to parent claim 55. App. Br. 27-28.
Regarding claim 1, Appellant reiterates the argument set forth with
respect to claim 83, that Pelaez fails to teach or suggest that the synthetic
panel is “substantially flat.” Appellant further contends that Pelaez teaches
away from this feature. App. Br. 19. Appellant also contends that Pelaez
teaches away from using indelible ink. App. Br. 19. Appellant concludes that
since Pelaez teaches away from using a substantially flat panel and indelible
ink there would be no motivation to combine Pelaez with Greathouse. App.
Br. 20. In light of this contention, the next issue presented is:
Has Appellant established that Pelaez would have led one of ordinary
skill in the art away from using a synthetic panel that is substantially flat and
indelible ink as required by claim 1?
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Additionally, regarding claim 1, Appellant contends that a
substantially flat synthetic panel mandates the use of specialized printing
materials and techniques and the subject matter produced by inking or
writing with an ink pen as described by Pelaez is not reasonably read as
“printed.” App. Br. 20; Decl. para. 7 and 8. In light of these contentions, the
next issue presented is:
Has Appellant established that the “printed” pattern of claim 1
excludes a pattern that is applied to the synthetic panel by the writing or
inking techniques described in Pelaez?
Appellant argues that the combination of Pelaez and Greathouse is the
product of impermissible hindsight on the part of the Examiner because
Greathouse is not directed to the same technology or to solving a similar
problem as Pelaez. In light of this contention, the next issue presented is:
Has Appellant established that the Examiner improperly relied upon
hindsight to conclude that the subject matter of claim 1 would have been
obvious to one of ordinary skill in the art?
Appellant argues that Appellant’s commercial success evidences that
the pending claims are non-obvious in view of the teachings of Pelaez and
Greathouse. App. Br. 22-24. In light of this contention the next issue
presented is:
Has Appellant established that the evidence of commercial success
provided in the declaration filed February 22, 2005 is sufficient to establish
that the Examiner erred by concluding that claim 1 was obvious over Pelaez
and Greathouse?
Regarding claim 82, Appellant argues that because Pelaez teaches a
“rough” surface Pelaez does not disclose the claimed non-porous surface and
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therefore teaches away from such a surface. App. Br. 20-21. Appellant also
reiterates the argument set forth with respect to claim 1 regarding the
interpretation of the term “printing.” In light of these contentions the next
issue presented is:
Has Appellant established that Pelaez does not disclose the claimed
non-porous surface since Pelaez discloses a rough surface?
Claims 79-81, and 87-89 are argued as a group. We select claim 79 as
the representative claim and claims 80, 81, and 87-89 will stand or fall with
claim 79. 37 C.F.R. § 41.37(c)(1)(vii). Appellant asserts that for the same
reasons advanced for claims 1, 33 and 55 Pelaez fails to teach or suggest a
“substantially flat synthetic panel” having “a pattern related to a theme of at
least one product and a service” in which the pattern is “printed using an
indelible ink formulated for printing on synthetic materials” as recited in
claims 79, 87, 88, and 89 and Gick fails to cure this deficiency. In light of
these contentions, the next issue presented is:
Has Appellant established that the combination of Pelaez and Gick
fails to teach or suggest a panel that is “substantially flat” synthetic panel
having a pattern “printed” thereon using an “indelible ink” as recited in
claims 79?

FINDINGS OF FACT
1. Pelaez discloses an advertisement device (col. 1, l. 39) for direct mail
delivery to a recipient (col. 2, ll. 18-19), said device comprising: a
substantially flat (See cross sectional view depicted in figs. 2 and 3)
synthetic panel (“card” having a “plaque-like construction”; col. 1, ll. 4-
5, 61-63) having a back side (Figs. 4 and 5), a front side (Fig. 1), and a
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thickness sufficient to maintain integrity of the synthetic panel (the card
is intact when received by the recipient; col. 1, ll. 9-15), wherein at least
one of said back side and said front side has printing thereon (at 21a and
11 respectively; col. 1, l. 65 – col. 2, l. 3; col. 2, ll. 36-40); wherein said
synthetic panel receives printing thereon using an indelible ink
formulated for printing on synthetic materials such that no substantial
material degradation of said printing occurs during handling (the inking
writing or printing on the card is present when delivered to the recipient
and is intended to be permanent; See col. 1, l. 65 – col. 2, l. 3; col. 2, ll. 9-
15, 36-40).
2. The term “printing” is used in the claims as both a noun and a verb. The
noun form of the term “printing” may have multiple meanings, for
example: 1. The art, process, or business of producing printed material by
means of inked type and a printing press or by similar means; 2. Matter
that is printed; 3. Written characters not connected to one another and
resembling those appearing in print. The verb form of the term printing
may also have multiple meanings, for example: 1. To press (a mark or
design, for example) onto or into a surface. 2a. To make an impression on
or in (a surface) with a device such as a stamp, seal, or die. b. To press (a
stamp or similar device) onto or into a surface to leave a marking. 3a. To
produce by means of pressed type, an electronic printer, or similar means,
on a paper surface. THE AMERICAN HERITAGE® DICTIONARY OF THE
ENGLISH LANGUAGE, FOURTH EDITION. (2000).
3. The Specification provides:
The synthetic panel member of the advertisement device (100,
200) will generally be printed with alphanumeric and graphic
information. The use of a synthetic panel makes it necessary to
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utilize specialized printing materials and techniques, such as
silk screening printing processes, sheet fed or web offset
printing, web letter press printing, gravure printing, or printing
utilizing ink jet printing technology. The printing inks are
generally formulated for printing on the synthetic materials (as
opposed to paper-type substrates) for enhanced adhesion and
practical durability. Examples of the synthetic formulated
printing inks include those manufactured and sold
commercially…

P. 6, ll. 20-27.
4. Greathouse demonstrates that indelible ink is suitable for more
permanently marking a plastic sheet than removable ink. Col. 1, ll. 48-52.
5. Thomas Becker, the declarant, has established he is an expert in the field
of printing. Decl. para. 1-3.
6. Mr. Becker has established that the ShipShape direct marketing article,
the subject of the present application, has enjoyed significant commercial
success since its first commercial use in August 2003. Decl. para. 5, 13-
16, and 20.
7. Mr. Becker supervised a series of experiments to compare the
effectiveness of the ShipShape article to a control article. In these
experiments the control article was made from a rectangular card stock or
other pulp material and printed with a pattern related to a theme of a
produce or service. Each ShipShape article was made from synthetic
materials to form a non-rectangular synthetic panel, printed on a flat
surface thereof with a corresponding pattern related to the theme of the
produce or service using indelible ink formulated for printing on
synthetic materials. The ShipShape article and the control article bore the
same commercial sales offer and terms. Decl. para. 11 and 12.
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8. Mr. Becker contends that there is a direct connection between the
commercial success of the ShipShape article and the “invention claimed
in the claims” because the ShipShape article is “based on the methods
and devices defined by the claims.” Decl. para. 17.
9. Mr. Becker contends that the commercial success of the ShipShape
article is not the result of heavy promotion or advertising by ShipShape
or other factors extraneous to the merits of the claimed invention. Decl.
para. 18.
10. Büchler demonstrates that it was known in the art to provide a card
whose shape deviates from the customary (rectangular) shape of a letter
card (col. 10, ll. 1-3; Figs. 7, 8, 10) and to provide an eyelet or hole for
suspension (col. 9, ll. 63-68).
11. Aamodt demonstrates that it was known in the art to provide paper with
antimicrobial agents in order to promote a sterile environment. Col. 1, ll.
56-65.
12. Santorsola demonstrates that it was known in the art to provide a
grommet 22 in a hole (col. 1, ll. 23-24).
13. Huff demonstrates that the use of shrink-wrap was known in the art. Col.
1, ll. 44-46.
14. Gick demonstrates that it was known in the art to provide post cards with
a non-rectangular shape. Figs. 1, 3.

PRINCIPLES OF LAW
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). Yet,
choosing to define an element functionally, i.e., by what it does, carries with
it a risk. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). As stated in
Swinehart:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
439 F.2d at 213.
While features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus must be distinguished from the
prior art in terms of structure rather than function. See e.g., In re Schreiber,
128 F.3d at 1477-78.
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). Although an
inventor is indeed free to define the specific terms used to describe his or her
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invention, this must be done with reasonable clarity, deliberateness, and
precision. Where an inventor chooses to be his own lexicographer and to
give terms uncommon meanings, he must set out his uncommon definition
in some manner within the patent disclosure so as to give one of ordinary
skill in the art notice of the change. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (internal quotations and citations omitted).
Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181 (Fed. Cir. 1993).
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, … would be led in a direction divergent from the path
that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). A prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983). However, “the prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
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otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195,
1201.
When a patentee asserts that commercial success supports its
contention of nonobviousness, there must of course be a sufficient
relationship between the commercial success and the patented invention.
The term "nexus" is often used, in this context, to designate a legally and
factually sufficient connection between the proven success and the patented
invention, such that the objective evidence should be considered in the
determination of nonobviousness. The burden of proof as to this connection
or nexus resides with the patentee. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, (Fed. Cir. 1988)

ANALYSIS
Regarding claim 83, the term substantially in the phrase “substantially
flat” means that the claimed panel is not required to be perfectly flat. The
surface features visible in the cross sections depicted in figures 2 and 3 of
Pelaez are not significant enough to preclude the Pelaez card from being
reasonably read as “substantially flat” within the broadest reasonable
interpretation of that term. Ans. 13. As the Examiner points out, claim 1, and
therefore dependent claim 5, also contains the limitation, “substantially flat.”
Claim 5 reads on the embodiment depicted in Figures 3, 4A, and 4B of the
Specification wherein, like Pelaez, the panel has surface features, such as
scores (Spec. p. 7, ll. 23), which render it not perfectly flat. Ans. 13. Thus, it
was reasonable for the Examiner to conclude that the phrase, “substantially
flat” as used by Appellant does not exclude the card of Pelaez because of the
“rough” surface of the card or “bold relief” present thereon.
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Also regarding claim 83, the Examiner correctly notes that the claim
does not require a specific ink, only the capability of receiving printing using
an indelible ink formulated for printing on synthetic materials. Ans. 14. To
determine if Pelaez discloses this capability we must first construe the terms
“printing” and “indelible ink.”
Appellant advances a definition of the term printing narrower than the
ordinary and customary meaning of the term. Cf. Fact 2 and Decl. Para. 7.
Although Appellant is free to limit the definition of a term which may have
multiple meanings, such as printing, to require something more specific,
such as “impressing” (Decl. Para. 7) Appellants definition must be set out
within the Specification. See In re Paulsen, 30 F.3d at 1480. While the
Specification states that “the use of a synthetic panel makes it necessary to
utilize specialized printing materials and techniques,” the list that follows
this statement (See Fact 3) is exemplary of such techniques and not limiting
of the definition of the term “printing.” Where the Specification has given
specific examples of procedures falling under the term printing and
Appellant has chosen to employ much broader language within the claim it
would be improper to import limitations from those specific examples in the
Specification into the claims. Although the claims are interpreted in light of
the specification, limitations from the specification are not read into the
claims. Thus the term “printing” is afforded its ordinary and customary
meaning. The term “printing” is not confined to any one fixed or rigid
meaning. See Fact 2. In fact, not only are there a number of definitions of the
term, the definitions themselves are open ended, covering processes
“similar” to those specifically associated with the term “printing.” Given this
latitude, the processes termed inking, writing, printing, and impressing that
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are described in Pelaez all constitute “printing” within the broadest
reasonable interpretation of that term. It is noted that Appellants contend that
“inking” is a step in a printing process where the inked type face is
transferred to paper. Decl. Para. 7. While this may be an acceptable or
common definition of the term “inking” it does not describe the process
Pelaez is referring to when using that term. The “inking” in Pelaez is not a
first step of a printing technique as Appellant suggests, but instead yields the
final printed card. Col. 1, l. 67 – col. 2, l. 3.
Regarding the phrase “indelible3 ink,” while Pelaez does not
specifically use the term “indelible” or state that no material degradation of
the printing occurs during handling, these are inherent characteristics of the
ink and card of Pelaez. The printed matter on the card of Pelaez is intended
to be more or less permanent. See Fact 1. Pelaez intends for the recipient to
be able to discern the message or design on the card. If the recipient is to be
able to do so, a necessary characteristic of the ink used by Pelaez is that no
material degradation of the printing produced by that ink occurs during
handling. Ans. 15. Additionally, Pelaez, like Appellant, also intends for the
card and ink to be “more or less permanent” (See Fact 1), which necessarily
requires an ink that is durable enough to be visible by the recipient for a
practical amount of time after receipt. An ink having this characteristic is
“indelible” within the broadest reasonable interpretation of that term.
Additionally, since Pelaez’s ink is applied, and adheres, to a synthetic panel,
the ink is necessarily formulated for printing on synthetic materials.
Based on our construction of the terms “printing” and “indelible ink”
Pelaez discloses the actual performance of the function recited in claim 83,
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namely “receiv[ing] printing [on the synthetic panel] using an indelible ink
formulated for printing on synthetic materials such that no substantial
material degradation of said printing occurs during handling.” Pelaez
therefore also discloses a device that is capable of performing those
functions.
Regarding claim 1, the Examiner has introduced the Greathouse
reference to show that the terminology, “indelible ink” was well-known in
the art. Ans. 16. Greathouse is cited only to explicitly demonstrate what
Pelaez implicitly taught was known in the art, that indelible ink is suitable
for more or less permanently marking a plastic sheet. Fact 4; Ans. 16. Above
we have noted that Pelaez encourages, as opposed to discourages, using a
“substantially flat panel,” “indelible ink” and “printing.” See Fact 1. Pelaez
therefore does not teach away from any of these limitations as Appellant
suggests. App. Br. 19-20.
The fact that the plastic card of Pelaez is intended to receive different
printed matter than the plastic sheets of Greathouse does not establish that
Pelaez and Greathouse are directed to differing technologies as Appellant
suggests. App. Br.22. It is not the subject of the writing or printing of Pelaez
and Greathouse that defines the technology with which each one is
concerned. Furthermore, since Pelaez alone would have suggested the
claimed invention, the teachings of Greathouse do not provide any essential
support for the Examiner’s conclusion that the subject matter of claim 1
would have been obvious to one having ordinary skill in the art. Thus
Appellant has not established that the Examiner improperly relied upon

3 The term “indelible” was not found in the original disclosure.
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hindsight to reach the conclusion that the subject matter of claim 1 would
have been obvious to one having ordinary skill in the art.
As noted above, we have found the subject matter of the claims on
appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and Appellant furnishes evidence of
secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. See, for example, In re Eli Lily
& Co., 902 F.2d, 943, 945 (Fed. Cir. 1990). We are also mindful that the
objective evidence of nonobviousness in any given case may be entitled to
more or less weight depending on its nature and its relationship with the
merits of the invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538
(Fed. Cir. 1983). To be given substantial weight in the determination of
obviousness or nonobviousness, evidence of secondary considerations must
be relevant to the subject matter as claimed, and therefore we must
determine whether there is a nexus between the merits of the claimed
invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986).
In paragraph 10, Mr. Becker states that his invention has prompted the
U.S. Postal Service to establish a new postal classification category and
awarded Mr. Becker a best in class award. Awards can sometimes be an
indicator of nonobviousness. Accordingly, we credit appellant’s claimed
subject matter with some commercial success based on the award.
In paragraphs 11-15 and in Exhibit B, Becker states commercial
success has been demonstrated based on marketing experiments. Actually,
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we view these tests as representing an intended showing of unexpected
results based on experiments comparing the claimed subject matter to prior
art. However, in our view the prior art used in the tests was an ordinary
paper postcard and did not represent the closest prior art such as a postcard
corresponding to the Palaez disclosure. It is well settled that an applicant
relying on comparative tests to rebut a prima facie showing of obviousness
must compare his claimed invention to the closest prior art. See In re
Deblauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Thus, Appellant evidence in
paragraphs 11-15 and summarized in Exhibit 2 is entitled to little weight.
Mindfully of our duty to weigh all evidence anew, and crediting
Appeallant’s evidence of a best in class award as some evidence of
nonobviousness, when balancing this evidence against a strong case of
obviousness, it is our conclusion of law that the evidence for obviousness
outweighs the evidence against obviousness.
Regarding the limitation of claim 82 requiring the synthetic panel to
have a non-porous4 surface, read in light of the Specification, the term is
used to mean synthetic materials which are typically less porous than those
of natural origin. See Spec. p. 5, ll. 17-18. Thus, the synthetic plastic nature
of the material used by Pelaez is sufficient to establish that Pelaez’s chosen
material is non-porous within the broadest reasonable interpretation of that
term. Roughness describes a characteristic independent of porosity. The
rough surface of the card of Pelaez therefore does not mandate a porous
surface as Appellant suggests. App. Br. 20. Nor does the presence of a rough
surface criticize or discredit using such a surface and therefore does not
teach away from it. App. Br. 21.
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Appellant contends that neither Bücher, Aamodt, Santorsola, Huff,
nor Gick cures the alleged deficiencies of Pelaez and Greathouse. Appellant
does not contest any of the Examiner’s specific findings with respect to
Bücher, Aamodt, Santorsola, Huff, or Gick. App. Br. 25-28; Facts 10-14.
Appellant’s arguments with respect to claims 5-17, 19, 21, 26-28, 31, 37-40,
42-44, 48-50, 53, 59, 61-64, 68-70, 72-74, and 77 are therefore unpersuasive
for the reasons indicated above.
With regard to the rejection of claim 79, Appellant’s arguments (App.
Br. 28) set forth with respect to claim 1 have been fully addressed above.
For the reasons discussed above, these arguments are also unpersuasive with
respect to the rejection of claim 79.

CONCLUSION OF LAW
On the record before us, Appellant has not established that that the
term “substantially flat” excludes a post card having the bold relief described
in Pelaez. Appellant has not established that the surface features of Pelaez
would render the Pelaez post card incapable of receiving printing thereon
using an indelible ink formulated for printing on synthetic materials such
that no substantial material degradation of the printing occurs during
handling. Appellant has not established the Pelaez post card would not be
capable of receiving an indelible ink formulated for printing on synthetic
materials for enhanced adhesion and practical durability and would therefore
not be capable of receiving an ink wherein no material degradation of the
printing occurs during handling. Appellant has not established that Pelaez
would have led one of ordinary skill in the art away from using a synthetic

4 The term “non-porous” was not found in the original disclosure.
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panel that is substantially flat and indelible ink as required by claim 1.
Appellant has not established that the “printed” pattern of claim 1 excludes a
pattern that is applied to the synthetic panel by the writing or inking
techniques described in Pelaez. Appellant has not established that the
Examiner improperly relied upon hindsight to conclude that the subject
matter of claim 1 would have been obvious to one of ordinary skill in the art.
Appellant has not established that the evidence of commercial success or
unexpected results provided in the declaration executed February 15, 2005 is
sufficient to establish that the Examiner erred by concluding that claim 1
was obvious over Pelaez and Greathouse. Appellant has not established that
Pelaez does not disclose the claimed non-porous surface since Pelaez
discloses a rough surface. Appellant has not established that the combination
of Pelaez and Gick fails to teach or suggest a panel that is “substantially flat”
synthetic panel having a pattern “printed” thereon using an “indelible ink.”

DECISION
For the above reasons, the Examiner's rejection of claims 1-3, 5-35,
37-57 and 59-89 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Vsh

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