Ex Parte Bohr

Patent Trial and Appeal Board

Apr 15, 2014

11607755 (P.T.A.B. Apr. 15, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/607,755 11/30/2006 Jeffrey S. Bohr 68952-2 9273
86318 7590 04/16/2014
Lech Law, LLC
P.O. Box 3473
Dublin, OH 43016
EXAMINER
EVANISKO, LESLIE J
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
04/16/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte JEFFREY S. BOHR
____________

Appeal 2012-000122
Application 11/607,755
Technology Center 2800
____________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000122
Application 11/607,755

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-7 and 9-17. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter:
1. A method for applying a design on a surface,
comprising:
laying out a first screen on a ground surface, the first
screen comprising a first layer comprising mesh and a second
layer affixed to and at least partially covering the first layer,
thereby being imprinted with a first design;
securing the first screen to the ground surface;
applying a first color to the ground surface through the
first screen; and
removing the first screen.

Independent claim 9 is directed to a design application kit that
includes a storage container; at least one screen comprising a first layer
comprising mesh and a second layer affixed to and at least partially covering
the first layer; a plurality of stakes; at least one applicable color; color
remover; and instructions (Claims App’x).
The Examiner maintains the following rejections:
(a) Claims 10, 11, 14, and 15 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;1

1 Appellants do not appeal the rejection under § 112, first paragraph, of
claims 10, 11, 13, and 14, or the prior art rejections as they apply to these
claims (Br. 4, 6). We accordingly treat these claims as withdrawn from the
appeal. Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008). As noted
in Manual of Patent Examiner Procedure § 1215.03, cited in Ghuman at
1480, “[a] withdrawal of the appeal as to some of the claims on appeal
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Application 11/607,755

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(b) Claims 1-7 and 10-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over DuBois (US 2006/0130679 A1, published June 22,
2006) in view of Deas (US 2005/0229421 A1, published Oct. 20, 2005); and
(c) Claims 9 and 14-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of DuBois, Deas, Hiatt (US
2003/0032570 A1, published Feb. 13, 2003) and White (US 3,888,009,
issued June 10, 1975).

Appellant argues the claims as a group in each ground of rejection,
and focuses on independent claims 1 and 9 (Br. generally). Accordingly,
claims 2-7 and 10-13 stand or fall with respect to claim 1, while claims 14-
17 stand or fall with claim 9.
ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claims 1 and 9 is unpatentable under
§ 103 in view of the applied prior art. Accordingly, we will sustain the
Examiner’s prior art rejections, and we add the following primarily for
emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.

operates as an authorization to cancel those claims from the application or
reexamination proceeding and the appeal continues as to the remaining
claims.”
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Application 11/607,755

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Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise 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.” Id. at 418.
We are not persuaded by Appellant’s main argument that Dubois does
disclose a screen and that there is no reason to combine the screen of Deas
with the automated cutting system of Dubois (e.g., Br. 9). Likewise,
Appellant’s arguments that, contrary to the Examiner’s position, Deas does
not use the terms “screen” and “stencil” interchangeably (Br. 10), and that
the Examiner is relying upon impermissible hindsight (e.g., Br. 11, 12), are
also not persuasive.
A preponderance of the evidence supports the Examiner’s position
that “even if the stencil of Dubois” cannot be considered a screen (Ans. 14),
Dubois still exemplifies that it was known to use a stencil to apply design
indicia to a field/ground surface (e.g., Dubois, ¶ [0045]), while Deas
exemplifies that it was known in the prior art to use a multilayer screen
printing stencil process to apply designs to a surface (e.g., Ans. 13).
It is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Appellant has not provided persuasive reasoning or credible evidence
why one of ordinary skill in the art would not have, using no more than
ordinary creativity, predictably used any known stencil, such as the screen
print stencil which uses a screen as a first layer and a second layer to imprint
the design as exemplified in Deas, for applying a design on a ground surface
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Application 11/607,755

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as exemplified in Dubois (e.g., Ans. 14; Br. generally). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”).
Appellant has likewise not shown reversible error in the Examiner’s
determination that it would have likewise been prima facie obvious to
assemble a kit with the needed components to apply a multilayer screen print
indicia to a ground surface as recited in independent claim 9 (e.g., Ans. 16
(“Clearly one of ordinary skill in the art would recognize the desirability of
containing the various elements for using the field stencil to be arranged in a
kit to provide a portable, self-contained, and easy-to-use system for marking
fields and other surfaces.”).)
Therefore, we affirm the Examiner’s § 103 rejections of all the claims
on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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