Ex Parte Bowman

Patent Trial and Appeal Board

Dec 11, 2018

14216484 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/216,484 03/17/2014
27939 7590 12/11/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Michael Bowman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BPMDL0074MB (11051U) 1085
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
12/11/2018 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 MICHAEL BOWMAN
Appeal2017-009978
Application 14/216,484
Technology Center 3700
Before LINDA E. HORNER, JEREMY M. PLENZLER, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-5, 8-14, and 17. No other claims are pending. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse and institute a new ground of rejection within the
provisions of37 C.F.R. § 41.50(b) (2018).
1 According to Appellant, the real party in interest is Medline Industries, Inc.
Appeal Br. 2.
Appeal2017-009978
Application 14/216,484
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A decorative bandage, comprising:
a backing layer defining a first major face and a second
major face;
an adhesive disposed along one of the first major face or
the second major face;
a pad disposed along the one of the first major face or the
second major face;
another of the first major face or the second major face
comprising one or more design elements defining a writing
surface appearance;
the writing surface appearance comprising a blackboard
appearance.
THE REJECTIONS
Claims 1, 3-5, 8, 13, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of Levin (US 2002/0040202 Al; publ. Apr. 4,
2002) and Baldwin (US 6,150,609; iss. Nov. 21, 2000).
Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable in view of Levin and Aeri (US 2015/0239614 Al; publ. Aug.
27, 2015).
Claims 11, 12, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable in view of Levin and Gilbert (US 4,867,150; iss. Sept. 19,
1989).
ANALYSIS
In the rejection of independent claim 1, the Examiner finds that
Levin's disclosures of a bandage on which a person can write messages
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Application 14/216,484
teaches each limitation of claim 1, including the "one or more design
elements defining a writing surface appearance," but the Examiner states
that Levin does not teach "the writing surface appearance comprising a
blackboard appearance." Final Act. 2-3 (citing Levin ,r,r 11-12, Fig. 1).
The Examiner cites Baldwin as evidencing that the "[blackboard
appearance] element was known to be an alternate writing surface
configuration in the art." Final Act. 4. Appellant does not contest the
Examiner's findings regarding Levin or that Baldwin evidences a
blackboard, but Appellant argues that Levin and Baldwin are non-analogous
art and that the Examiner therefore erred in combining the references.
Appeal Br. 9-16. Appellant's contentions are each related to the
"blackboard appearance" recited in claim 1.
We begin our analysis with claim interpretation. Medichem, S.A. v.
Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("The first step in both
[ anticipation and obviousness] analyses is a proper construction of the
claims."). Here, independent claim 1 recites "one or more design elements
defining a writing surface appearance; the writing surface appearance
comprising a blackboard appearance." Claim 1 provides that one or more
"design elements" define a "writing surface appearance," and claim 1 further
limits the writing surface appearance to a particular appearance-the recited
"blackboard appearance." Consistent with the claim language, Appellant's
Specification expressly states that "writing surface appearances" such as a
blackboard appearance "can be printed on the backing layer," and the
Specification describes different color options, borders, and other variations
that can be part of the appearance. Spec. ,r 26; see Spec. ,r 43 (stating that
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Application 14/216,484
design elements can provide a form of decoration, graphic, image, or other
ornamentation).
Although we consider each and every claim limitation, a limitation
reciting printed matter that is not functionally or structurally related to the
physical substrate holding the printed matter does not lend any patentable
weight to the patentability analysis. In re DiStefano, 808 F.3d 845, 848
(Fed. Cir. 2015) (citing In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
A limitation claims printed matter when the limitation claims the content of
information (id.) or, stated differently, the limitation recites an element for
what it communicates to the human mind (id. at 850). Accord In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969) (explaining that printed matter
relates to matter that is "useful and intelligible only to the human mind"). If
it is determined that a limitation claims printed matter, we must then
determine if the matter is functionally or structurally related to the associated
physical substrate. DiStefano, 808 F.3d at 851. If it is determined that a
claim recites printed matter that is not functionally related to its substrate,
the printed matter is owed no patentable weight. Id. To analyze the
patentability of a claim that includes nonfunctional printed matter, we do not
strike out the printed matter and analyze a "new" claim, but we simply do
not give the printed matter any patentable weight: "[the printed matter] may
not be a basis for distinguishing prior art." DiStefano, 808 F.3d at 848.
Under controlling case law, we determine that the recited "blackboard
appearance" is printed matter that is not functionally or structurally related
to its substrate (the claimed backing layer). Specifically, as stated in the
Specification, "where the writing surface appearance comprises a blackboard
appearance, the blackboard appearance can include a black or grey plane
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Application 14/216,484
inscribed with a border," and "[t]he border can define a wood frame or metal
frame appearance." Spec. ,r 26. In other words, the Specification indicates
coloring the writing surface black or grey with a border having the
appearance of wood or metal is intended to evoke a blackboard appearance
in people's minds. Id.; see Bernhart, 417 F.2d at 1399 (printed matter is
"useful and intelligible only to the human mind"). The "blackboard
appearance" is therefore printed matter, and, as evidenced in part by the
alternative "appearances" described in the Specification, the recited design
elements and appearances are merely ornamental with no structural or
functional relationship to the backing layer. See Spec. ,r 26 ( describing a
"whiteboard appearance" as an alternative to a "blackboard appearance" and
describing different color and border options).
As noted above, the Examiner finds that Levin's disclosures of
bandages having a writing surface satisfy each limitation of claim 1 except
that Levin does not teach "the writing surface appearance comprising a
blackboard appearance." Final Act. 2-3 ( citing Levin ,r,r 11-12, Fig. 1 ).
Because the recited "blackboard appearance" is not entitled to patentable
weight, it cannot be the basis for distinguishing the prior art. DiStefano, 808
F.3d at 848; see also Carman Industries, Inc. v. Wahl, 724 F.2d 932, 939
n.13 (Fed. Cir. 1983) ("Utility patents afford protection for the mechanical
structure and function of an invention whereas design patent protection
concerns the ornamental or aesthetic features of a design."). We agree with
the Examiner's findings that Levin discloses each limitation of claim 1,
including a design element defining a writing surface appearance, except
that "Levin does not teach that the writing surface appearance compris[ es] a
blackboard appearance." Final Act. 3.
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We disagree with Appellant's arguments that the "blackboard
appearance" recited in claim 1 distinguishes the prior art2 (see Appeal Br. 17
( addressing dependent claims 9 and 10 by arguing that neither Levin nor
Aeri teaches a "decorative bandage comprising a blackboard appearance" as
recited in independent claim 1 ), 18 ( arguing the same regarding Levin and
Gilbert with respect to dependent claims 11, 12, and 14); see also Appeal Br.
9--17 ( addressing claim 1 without addressing the Examiner's findings
regarding Levin)). As explained above, the recited nonfunctional printed
matter (the "blackboard appearance" element) cannot distinguish the prior
art. DiStefano, 808 F.3d at 848. Based on the Examiner's findings
regarding the disclosures of Levin, which we adopt as our own, we
determine that independent claim 1 is unpatentable under 35 U.S.C.
§ 102(a). Because the basis for our rejection differs from that provided by
the Examiner, however, we designate our determination as a new ground of
rejection in accordance with 37 C.F.R. § 4I.50(b).
Appellant's contentions regarding dependent claims 3-5, 8-14, and 17
each relate to the "blackboard appearance" recited in claim 1 and, therefore,
are also unpersuasive. We note that each of dependent claims 3-5, 8, 13,
and 1 7 recites additional nonfunctional printed matter directed to an
"appearance," and for the same reasons discussed above regarding the
blackboard appearance of claim 1, the elements recited in those dependent
claims cannot distinguish the prior art. Accordingly, based on the
Examiner's findings regarding the disclosures of Levin, we determine that
2 Because the Examiner cited Baldwin as evidencing the recited "blackboard
appearance" which is not entitled to patentable weight, Appellant's
arguments regarding Baldwin are moot.
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dependent claims 3-5, 8, 13, and 17 are unpatentable under 35 U.S.C.
§ 102(a), and we designate our determination as a new ground of rejection.
We also note that claims 9 and 10 recite nonfunctional printed matter with
the recitations of printed matter appearing on a sticker-specifically, the
recited "one of a letter, symbol, character, or number" ( claim 9) and "on of
letters A through Z or numbers one through nine and zero" ( claim 10)
constitute nonfunctional printed matter. Based on the Examiner's findings
regarding the combined teachings of Levin and Aeri, we conclude that
dependent claims 9 and 10 would have been obvious under 35 U.S.C. § 103,
and we designate our conclusion as a new ground of rejection. Based on the
Examiner's findings regarding Levin and Gilbert, we conclude that
dependent claims 11, 12, and 14 would have been obvious under 35 U.S.C.
§ 103, and we designate our conclusion as a new ground of rejection.
DECISION
We reverse the Examiner's rejections of claims 1, 3-5, 8-14, and 17.
We enter a new ground of rejection of claims 1, 3-5, 8, 13, and 17 under 35
U.S.C. § 102(a) as being unpatentable in view of Levin. We enter a new
ground of rejection of claims 9 and 10 under 35 U.S.C. § 103 as being
unpatentable in view of Levin and Aeri. We enter a new ground of rejection
of claims 11, 12, and 14 under 35 U.S.C. § 103 as being unpatentable in
view of Levin and Gilbert.
Section 4I.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
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Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
See 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
37 C.F.R. § 4I.50(b)
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