11201337 (B.P.A.I. Jun. 25, 2009)

Ex Parte Berselli et al

Board of Patent Appeals and InterferencesJun 25, 2009

11201337 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte FRANCO BERSELLI and DIEGO MOTTALINI ________________ Appeal 2009-003508 Application 11/201,337 Technology Center 1700 ________________ Decided: 1June 25, 2009 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1 and 3, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 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). Appeal 2009-003508 Application 11/201,337 The Invention The Appellants claim a process for manufacturing a tile. Claim 3 is illustrative: 3. A process for manufacturing tile, comprising: (i) providing a body having visible objects in a transparent matrix, and (ii) inserting said body into a through hole provided in a tile, the tile being readable on both of its sides. The References Tajima (as translated) JP 63-22965 Jan. 30, 1988 Oliver GB 2,220,445 A Jan. 10, 1990 The Rejection Claims 1 and 3 stand rejected under 35 U.S.C. § 103 over Tajima in view of Oliver. OPINION We reverse the Examiner’s rejection. Issue Have the Appellants shown reversible error in the Examiner’s determination that the applied references would have rendered prima facie obvious, to one of ordinary skill in the art, making Tajima’s punched out shape such that it is transparent and includes Oliver’s heat degradable material? Findings of Fact Tajima discloses that mosaic tiles made by punching out a desired shape from a synthetic resin base tile, embedding into the punched out portion a pattern material having the shape of the punched out part, and assembling by heat pressing were commonly known (p. 2). Tajima places 2 Appeal 2009-003508 Application 11/201,337 between the base tile and the pattern material a synthetic resin rim having a color different from that of the base tile or the pattern material (pp. 4, 6). The base tile and pattern material can be made of polyvinyl chloride to which plasticizers and fillers have been added (p. 4). Oliver discloses a ceramic article, which can be a tile, made by glazing an article containing a recess, placing heat degradable material such as dried flowers, fabrics, butterflies, fishing flies, water color prints or the like in the recess, and then embedding the heat degradable material in clear thermosetting resin such that the heat degradable material appears to be an integral part of the article and under its glaze (p. 3). Analysis The Appellants argue that the Appellants’ claimed invention “provides something that is not disclosed or suggested in either applied reference, namely, a tile in which the objects sunk in the transparent matrix are visible from opposite sides of the tile” (Br. 5). The Examiner argues that “the specific use of transparent matrices with objects represents an extremely well known and common arrangement in tiles, as shown for example by Oliver” (Ans. 3). Oliver discloses heat degradable material in a transparent matrix in a recess of a tile (p. 3). The Examiner, however, has not pointed out how Oliver indicates that the use of transparent matrices with objects was an extremely well known and common arrangement in tiles. The Examiner argues that Oliver discloses a tile having a similar construction to that of Tajima and having a pattern material, which the Examiner calls an insert, formed of a transparent material with objects 3 Appeal 2009-003508 Application 11/201,337 dispersed therein (Ans. 4). Thus, the Examiner argues, inserts satisfying the Appellants’ claimed invention were known in the industry. See id. Oliver’s heat degradable material covered in a recess with clear thermosetting resin is not visible from opposite sides of the tile and, therefore, does not satisfy the Appellants’ claimed invention. Moreover, the Examiner has not established that the tiles of Tajima and Oliver, which have the differences indicated above, are similar in construction. The Examiner argues that Oliver “in no way suggests the exclusive use of transparent inserts in tiles having a recess, as opposed to a through hole” (Ans. 5). The Examiner has not established that Oliver’s silence as to the use of the disclosed heat degradable objects and clear thermosetting resin in a through hole would have led one of ordinary skill in the art to place the disclosed heat degradable objects and clear thermosetting resin in Tajima’s through hole as proposed by the Examiner. The Examiner argues that Tajima’s insert is visible from both sides of the tile, and that “in modifying the method of Tajima in view of Oliver, the transparent insert would have been initially formed, cut or punched out, and subsequently positioned within a tile having a hole therein” (Ans. 4-5). The Examiner argues that “[o]ne of ordinary skill in the art at the time of the invention would have been able to appropriately select the makeup of the pattern material (insert) as a function of the desired aesthetic effect” (Ans. 6). Prima facie obviousness of the Appellants’ claimed invention requires evidence not only that one of ordinary skill in the art would have had the ability to make the Examiner’s proposed modification to Tajima, but also 4 Appeal 2009-003508 Application 11/201,337 that such a person would have had an apparent reason for doing so. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed”). Even if one of ordinary skill in the art would have desired to obtain a desired aesthetic effect in Tajima’s tile as argued by the Examiner (Ans. 6), the Examiner has not established that the applied references themselves would have provided one of ordinary skill in the art with an apparent reason to obtain the particular aesthetic effect of a transparent matrix with objects in it as argued by the Examiner. Conclusion of Law The Appellants have shown reversible error in the Examiner’s determination that the applied references would have rendered prima facie obvious, to one of ordinary skill in the art, making Tajima’s punched out shape such that it is transparent and includes Oliver’s heat degradable material. DECISION/ORDER The rejection of claims 1 and 3 under 35 U.S.C. § 103 over Tajima in view of Oliver is reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc YOUNG & THOMPSON 209 MADISON STREET SUITE 500 ALEXANDRIA, VA 22314 5