Ex Parte Koeller

Board of Patent Appeals and Interferences

Sep 10, 2010

10681635 (B.P.A.I. Sep. 10, 2010)

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.
10/681,635 10/08/2003 David Koeller 6112
7590 09/10/2010
David Koeller
1160 S. Wesley Avenue
Oak Park, IL 60304
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
09/10/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID KOELLER
____________________

Appeal 2009-005872
Application 10/681,635
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005872
Application 10/681,635
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to magnetic image assembly to mount on
garage door panels and a system and a method for decorating a garage door.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A magnetic cover assembly for mounting on two or
more garage door panels, the assembly comprising:
a first sheet having a first planar side and a second planar
side wherein the first planar side of the first sheet is oppositely
juxtaposed to the second planar side of the first sheet wherein
the first planar side of the first sheet is attached to the second
planar side of the first sheet with a bonding layer wherein the
first planar side of the first sheet is a first magnetic layer to
removably and magnetically attach the first sheet to a first
garage door panel wherein the first planar side of the first sheet
has a first thickness defined between a top surface and a bottom
surface of the first planar side of the first sheet wherein the
bottom surface of the first planar side contacts the first garage
door panel wherein the second planar side of the first sheet has
a second thickness defined between a front surface and a rear
surface of the second planar side of the first sheet wherein the
rear surface is adjacent to the top surface of the first planar side
of the first sheet and further wherein the first thickness is
greater than the second thickness; and
a second sheet having a first planar side and a second
planar side wherein the first planar side of the second sheet is
oppositely juxtaposed to the second planar side of the second
sheet wherein the first planar side of the second sheet is a
second magnetic layer to removably and magnetically attach the
second sheet to a second garage door panel wherein the second
sheet has a length defined by a first end and a second end
wherein the second sheet has a width defined between a top end
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and a bottom end wherein the length is greater than the width
wherein the first sheet and the second sheet align to create an
image encompassing the first garage door panel and the second
garage door panel wherein the first sheet and the second sheet
have no wires and are not electrically connectable.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Marshall
Zinbarg
Blyden
US 5,503,891
US 5,943,803
US 6,217,958 B1
Apr. 2, 1996
Aug. 31, 1999
Apr. 17, 2001
Vella US 2005/0055921 A1 Mar. 17, 2005

REJECTIONS
Claims 1-3, 7-12, and 14-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vella, Zinbarg, and Marshall. Ans. 3.
Claims 4-6, 13, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vella, Zinbarg, Marshall, and Blyden. Ans. 5.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the applied prior art establishes the prima facie
obviousness of claims 1-20. The Appellant has not rebutted the showing of
prima facie obviousness with additional evidence. Therefore, the rejections
of all claims on appeal are affirmed. Our reasons follow.
The following are our findings of fact with respect to the scope and
content of the prior art and the differences between the prior art and the
claimed subject matter.
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Vella discloses a magnetic cover assembly for mounting on a garage
door panel. The cover assembly includes a first sheet having a first planar
side of magnetic material 30 and a second planar side 40 with the second
planar side displaying a graphic representation 50. See paras. [0059]-[0064].
Further note that Figure 1a of Vella discloses three such panels or sheets
secured to a single garage door. Vella differs from the claimed subject
matter in that it does not show a garage door with four horizontal panels
stacked vertically to form a cover for the entire garage opening. Vella also
differs from the claimed subject matter in that Vella does not teach a
bonding layer between the first magnetic layer and the second layer with the
graphic representation.
Zinbarg discloses a garage door decorative cover assembly 10
attached to a garage door 12. Each of the four garage door panels 14, 16, 18,
and 20 are covered by four cover panels 32, 34, 36, and 38 one for each door
panel of the garage door 12 on which the cover assembly 10 is to be
attached. Col. 3, ll. 15-35. The panels, when considered together, form a
unified decorative design that can be customized to the size of the panels and
which depicts a seasonal holiday or celebratory theme. Col. 3, l. 65 – col. 4,
l. 5. The four cover panels 32, 34, 36, and 38 are attached to the door panels
14, 16, 18, and 20 by double-sided foam tape. Col. 4, ll. 29-36. Zinbarg
differs from the claimed subject matter in that the panels of Zinbarg are
attached to the garage door with double-sided foam tape rather than a
magnetic means. Zinbarg further differs from the claimed subject matter in
that Zinbarg does not show three layers of material making up the four cover
panels with a bonding layer as the central layer.
Marshall discloses a flexible magnet attractant display mat 10
comprised of a first sheet having a first layer, magnet attractant substrate 14-
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-a ferrous or ferrite filled polymer sheet, and a second layer composed of a
writeable display surface 12 that can have a graphic representation silk-
screened thereto, wherein the first and second layers are held together with a
bonding layer of adhesive. See col. 2, ll. 8-14, and ll. 40-61. While
Marshall teaches two layers fused together by a bonding layer in between,
Marshall does not show the first layer as having a first planar side with
magnetic material. Marshall merely discloses a first planar side containing
ferrite which permits magnet strips, marks and symbols to be attached to the
display mat.
In our view, the claimed subject matter is prima facie obvious from
the combined teachings of Vella, Zinbarg and Marshall. Vella discloses a
plurality of magnetic panels attached to a garage door. Zinbarg teaches that
each panel of an articulated garage door can have a decorative panel
attached thereto, while Marshall discloses that a multilayer panel can be
comprised of one layer with magnetic attractants, which is similar to the
magnetic layer of Vella, and a second graphic layer similar to the second
graphic layers of Zinbarg and Vella with an intermediate bonding layer
therebetween to secure the two layers together. In our view, the claimed
subject matter is merely the combination of prior art elements according to
known methods which would have yielded a predictable result.
On page 15 of the Appeal Brief, Appellant argues that none of Vella,
Zinbarg or Marshall taken singly or in combination teach two planar sides
with a bonding layer therebetween. This is erroneous. Marshall clearly
discloses two layers with a bonding layer therebetween. Appellant further
argues that the references taken singly or in combination do not teach or
suggest a first planar side of a first sheet that is a first magnetic layer. App.
Br. 15. This too is erroneous in that Vella clearly discloses such a magnetic
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layer. Appellant further argues that none of the references taken singly or in
combination teach a second sheet with a second magnetic layer. App. Br.
16. We note that Vella discloses three separate panels or sheets attached to a
single garage door. Thus, not only does Vella teach a second sheet with a
second magnetic layer, it teaches a third sheet with one also.
With respect to claim 10, Appellant argues that none of Vella, Zinbarg
or Marshall, taken singly or in combination teach or suggest a plurality of
magnetic sheets. App. Br. 18. Vella clearly discloses three magnetic sheets
in Figure 1a. While the Examiner has admitted that Vella does not disclose
a garage doors with multiple panels, Zinbarg clearly discloses this feature.
Once again Appellant argues that none of the references singly or in
combination teach a bonding layer. App. Br. 19. As noted above, this
argument is unpersuasive.
With respect to claim 15, Appellant states that none of the references
singly or in combination teach the step of printing a plurality of segmented
images on a corresponding plurality of magnetic sheets. App. Br. 19-20.
Zinbarg clearly discloses printing segmented images on corresponding
pluralities of layered cover panels for a garage door. Inasmuch as Vella
teaches fastening these cover panels to the door via magnetic attraction, the
method of claim 15 is prima facie obvious over the combination. Appellant
further argues that a person of ordinary skill would not have been motivated
to combine the references. App. Br. 22. We note that the Supreme Court
has stated that a rigid and mandatory reliance on teaching, suggestion or
motivation is incompatible with its precedent. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 402 (2007).
It is noted while reviewing Appellant’s arguments that Appellant
consistently and repeatedly argues the references individually where the
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rejection is based on a combination of references. However, non-
obviousness cannot be established by attacking references individually,
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citation omitted).
With respect to the rejection of claims 4-6, 13, 19 and 20, Blyden
teaches a decorative ornament 1 with a magnetic layer 8 and a weather
resistant first layer having a top surface 3 with an ink or printed design
thereon. Col. 3, ll. 1-18. Blyden further discloses that the design can be in
vinyl paint, illuminated paint, reflective paint or a photographic picture. See
col. 4, ll. 33-42. In our view, it would have been obvious at the time the
invention was made to have made the graphic design of Vella or Zinbarg in
the manner suggested by Blyden, that is, by printing with a protective layer
and using reflective, illuminated, or vinyl paint or a photographic image.
Accordingly, in our view, the subject matter of claims 4-6, 13, 19 and 20 is
prima facie obvious.
With respect to this rejection, Appellant individually attacks the
references and insists on a teaching, suggestion or motivation to combine
these references. See App. Br. 39-41. As noted above, these arguments are
not persuasive.

DECISION
The rejections of claims 1-20 under 35 U.S.C. § 103(a) are 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).
Appeal 2009-005872
Application 10/681,635
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AFFIRMED

nlk

David Koeller
1160 S. Wesley Avenue
Oak Park IL 60304