Ex Parte Martin

Patent Trial and Appeal Board

Jul 25, 2018

14270502 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/270,502 05/06/2014 Sherry Lou Martin
24314 7590 07/27/2018
JANSSON MUNGER MCKINLEY & KIRBY LTD.
601 Lake Avenue
3rd Floor
RACINE, WI 53403
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.
MAR-102US 5052
EXAMINER
BLADES, JOHN A
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
07/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@janlaw.com
thaase@janlaw.com
janlaw@janlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHERRY LOU MAR TIN
Appeal2017-008329
Application 14/270,502
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1---6, 9--11 and 17. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a method for making a decorative work of art.
Claim 1 is illustrative:
1. A method of making a decorative work of art, the
method comprising:
Appeal2017-008329
Application 14/270,502
Gerard
Barban
Martin
• providing a planar main member sized as intended
for the work of art, the main member having front and
back surfaces;
• applying a frame to the front of the main member
about the edges thereof;
• applying a two-dimensional graphical decorative
work to the front surface of the main member;
• applying a substantially clear viscous adhesive
liquid layer directly onto and over the decorative work of
art, such liquid layer extending to the frame;
• applying a shatterable clear glass pane onto the
adhesive layer while the adhesive layer is still in the form
of a viscous liquid, the pane having a perimeter edge
sized and positioned to leave a margin between the frame
and the perimeter edge;
• striking the pane with a hammer or other striking
implement sufficiently to shatter the pane into a
multiplicity of shattered glass pieces while the adhesive
layer is still in the form of a viscous liquid and cause not
only shattering but also a spreading apart of the shattered
glass pieces with respect to one another to cover the
entire main member within the frame, including the
margin, and achieve mosaic-like spacing of the glass
pieces over the two-dimensional graphical decorative
work;
• thereafter allowing the liquid adhesive layer to
solidify with the shattered glass pieces in place, the
pieces bonded thereunder with respect to the decorative
work, leaving unfilled spaces between adjacent shattered
glass pieces; and
• filling the spaces between the adjacent shattered
glass pieces with grout to complete a mosaic look.
The References
us 3,516,893
US 2006/0207715 Al
US 2008/0276927 Al
2
June 23, 1970
Sept. 21, 2006
Nov. 13, 2008
Appeal2017-008329
Application 14/270,502
The Rejections
Claims 1-6, 9-11 and 17 stand rejected under 35 U.S.C. § 103 over
Gerard in view of Barban and Martin. 1
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 1.
Gerard makes a decorative laminated panel by adhesively bonding a
color design-printed acetate fabric (14) between a backing sheet (13) and a
layer of tempered glass (12) by using, on each side of the acetate fabric (14),
an adhesive (16, 17) which acts as at least a partial solvent for the acetate
fibers such that the acetate fabric (14) and the adhesive layers (16, 17)
virtually unite into a single layer (167) and the acetate fabric (16)'s colored
design transfers to the tempered glass (12) without the design's color or
pattern being destroyed (col. 1, 11. 32-38; col. 2, 11. 43---66; Figs. 2, 3). To
further enhance the panel's aesthetic effect the tempered glass (12) can be
shattered by impaction to break it into a multitude of individual, contiguous
pieces or particles (12a) that present a mosaic effect ( col. 3, 11. 1-13; Fig. 4).
"As such, the shattered glass still retains its panel form, with the individual
particles being bonded to the backing sheet 13 by the adhesive layer 167"
(col. 3, 11. 6-8; Fig. 5).
Barban makes a free-standing glass plate by a) applying to a support
surface (2) within a frame (3) an adhesive (4) that cannot adhere to the
1 The Examiner's statement of the rejection includes canceled claims 7, 8,
13-15 and 18-21 (Final Act. 3). Also, the Examiner apparently no longer
maintains a rejection of claim 17 under 35 U.S.C. § 112(b) (which includes
canceled claims 14 and 15) (Final Act. 2).
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Application 14/270,502
support surface (2), b) placing on the adhesive (4) a tempered glass plate (1)
which is smaller than the frame (3), c) fracturing the tempered glass plate (1)
using a burin and a hammer to produce glass fragments, d) forming gaps
between the glass fragments by sliding them along the adhesive ( 4 ),
e) pressing the glass fragments toward the support surface (2) to cause them
to sink into the adhesive and cause the adhesive to rise through the gaps,
f) hardening the adhesive (4) to consolidate the glass fragments, and
g) removing the consolidated tempered glass plate (1) from the frame (3)
(i1i120-32; Fig. 2). The consolidated tempered glass plate (1) can be joined
to a second plate (14) or bonded between the second plate (14) and a third
plate (15) (i1i139-41 ).
Martin makes a decorative screen (10) by applying a substantially
clear adhesive layer (22) to a decorative design (20) on a main member (12),
placing shattered glass pieces (26), preferably individually, onto the
adhesive layer (22) such that they substantially cover the design (20) and
have only small spaces between them, and applying grout (28) to
substantially fill the spaces between the pieces (26) (i1i1 31, 44; Figs. 1, 7, 8).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner concludes that "[i]t would have been obvious to
combine the teachings of Barban with those of Gerard, in order to allow for
a different decorative & structural effect when creating a mosaic glass
decorative panel" (Final Act. 4 ), "it would have been obvious for one of
ordinary skill to combine the known technique of Barban with the teachings
of Gerard, in order to predictably modify the decorative effect that can be
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Application 14/270,502
created over the decorative panel using a technique known in the art"
(Ans. 6) and "it would have been obvious for one of ordinary skill in the art
to combine the teachings of Martin with those of Gerard & Barban, in order
to obtain the visual, tactile and structural benefits of grouting gaps between
pieces" (Final Act. 4).
That rationale for combining the references does not establish that the
references would have provided one of ordinary skill in the art with an
apparent reason to arrange Gerard's glass pieces (12a) using Barban's
method modified such that instead of sinking the glass pieces into adhesive
to cause the adhesive to rise through gaps between the pieces to form
Barban' s desired consolidated tempered glass plate ( 1 ), unfilled spaces are
left between adjacent shattered glass pieces as required by the Appellant's
independent claim, and those spaces are filled with grout based upon
Martin's disclosure of filling spaces between shattered glass pieces (26) on a
main member (12) to form part of a decorative screen (10).
Thus, the Examiner's rejection appears to be based upon
impermissible hindsight in view of the Appellant's disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art").
Accordingly, we reverse the rejection.
DECISION
The rejection of claims 1---6, 9--11 and 17 under 35 U.S.C. § 103 over
Gerard in view of Barban and Martin is reversed.
The Examiner's decision is reversed.
REVERSED
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