Ex Parte Mesirow

Patent Trial and Appeal Board

Oct 31, 2012

10153281 (P.T.A.B. Oct. 31, 2012)

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.
10/153,281 05/21/2002 Laurence Mesirow 7172-1 7612
7590 10/31/2012
Susan L. Lukasik
234 S. Addison
Lombard, IL 60148
EXAMINER
RUDOLPH, VINCENT M
ART UNIT PAPER NUMBER
2671
MAIL DATE DELIVERY MODE
10/31/2012 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 LAURENCE MESIROW
____________

Appeal 2010-000531
Application 10/153,281
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
ANDREW CALDWELL, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 7-10, 12, 14, 15, 17, 21, 22, and 26-31. Claims 1-6, 11,
13, 16, 18-20, and 23-25 have been canceled. App. Br. 50.
1
We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed January 9,
2009; (2) the Examiner’s Answer mailed May 22, 2009; and (3) the Reply
Brief filed July 22, 2009.
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Invention
Appellant’s invention relates to a process for affixing a custom image
to an artificial fingernail. See Abstract. Claim 7 is reproduced below with
the key disputed limitations emphasized:
7. A method of affixing a custom image to an artificial fingernail,
said method comprising the steps of:
storing a plurality of custom images electronically as files in a
memory, with the files associated with particular users;
obtaining a selected custom image from said memory by a processor
operatively coupled to said memory, the processor including a history
module that allows users to view their past image choices, and a design
module that allows stored custom image files to be manipulated, sized,
positioned and named, wherein each particular user can select a stored
image from those in the history module, and the design module
automatically processes the selected image for printing in the appropriate
size and position;
printing said selected and processed image on a plastic material,
wherein said processor is configured to cause the printing of said selected
and processed image on said material; and
affixing said material with said image printed thereon on said artificial
nail using an adhesive.
The Examiner relies on the following as evidence of unpatentability:
Holt US 5,893,960 Apr. 13, 1999
Jang US 5,975,087 Nov. 2, 1999
Rifkin US 6,065,969 May 23, 2000
Marshall US 2002/0097259 A1 July 25, 2002
(filed Dec. 29, 2000)
Gamburg US 6,561,196 B2 May 13, 2003
(filed July 25, 2001)
Bezos US 7,082,407 B1 July 25, 2006
(filed Aug. 19, 1999)

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The Rejections
1. The Examiner rejected claims 7, 8, 10, 12, 14, 15, 17, and 26 under
35 U.S.C. § 103(a) as unpatentable over Rifkin, Marshall, and Jang.
Ans. 4-11.
2. The Examiner rejected claims 21, 22, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Rifkin, Marshall, Jang, and Holt. Ans. 11-16.
3. The Examiner rejected claims 30 and 31 under 35 U.S.C. § 103(a)
as unpatentable over Rifkin, Marshall, Jang, and Bezos. Ans. 16.
4. The Examiner rejected claims 28 and 29 under 35 U.S.C. § 103(a)
as unpatentable over Rifkin, Marshall, Jang, Holt, and Bezos. Ans. 16-17.
5. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Rifkin, Marshall, Jang, and Gamburg. Ans. 17-18.

THE OBVIOUSNESS REJECTION OVER RIFKIN,
MARSHALL, AND JANG
Regarding representative claim 7, the Examiner finds that Rifkin
discloses all the recited limitations, except for (a) storing images as files
associated with particular users, (b) naming the custom stored image, (c)
having the recited history module, and (d) affixing the material with the
image on an artificial nail using an adhesive. Ans. 4-6. The Examiner relies
on Marshall to teach associating image files with a user, naming images, and
a module that allows a user to view past images (Ans. 5), and Jang to teach
printing images on artificial nails (Ans. 6). Concerning the recitation to a
“plastic material,” the Examiner relies on Rifkin’s discussion of using “a
plasticizer containing laminate” for nails to suggest that plastic laminates for
nails were known by those skilled in the art. See Ans. 23. Additionally, the
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Examiner concludes that it would have been obvious to include the teachings
of: (a) Marshall with Rifkin to reuse images more easily and to allow for
customization of image names (Ans. 5-6) and (b) Jang for printing and
affixing an image on an artificial nail with Rifkin to permit the image to last
longer (see Ans. 6).
Appellant sets forth many arguments, including: (1) Rifkin does not
teach a nail cover that is an artificial nail, printing an image on a plastic
material, and affixing a custom image to an artificial nail; (2) placing
Rifkin’s cover on an artificial nail would be contrary to Rifkin’s teachings
and unsuitable for its intended purpose (App. Br. 17-20; Reply Br. 3-4); (3)
the Examiner provides no or an irrelevant rationale for combining Jang with
Rifkin to yield the claim elements (App. Br. 19-20); (4) neither Rifkin nor
Jang teaches printing an image on plastic material (App. Br. 20-24; Reply
Br. 4); (5) Rifkin fails to teach the recited history and design modules (App.
Br. 24-26; Reply Br. 6-9); and (6) Rifkin and Marshall fail to teach “files
associated with particular users” and an ordinary skill artisan would not
combine these references to yield the claimed invention (App. Br. 26-30).

ISSUES
Under § 103, has the Examiner erred in rejecting claim 7 by finding
that Rifkin, Marshall, and Jang collectively would have taught or suggested:
(1) files associated with particular users?
(2) a processor including: (a) history module where each particular
user can select a stored image from those in the history module and (b) a
design module that allows stored custom image files to be manipulated,
sized, positioned, and named?
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(3) printing a selected and processed image on a plastic material?
(4) affixing the material on the artificial nail?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of representative claim 7, which includes the limitations disputed
by Appellant. See App. Br. 17-30. Below, we address each disputed
recitation in claim 7 under separate headings.

Files Associated with Particular Users
Claim 7 recites storing images electronically as files, “the files
associated with particular users . . . .” Appellant contends that Rifkin does
not disclose this feature but rather makes the images available to anyone.
App. Br. 26. However, the recited “particular users” has not been defined.
See generally Specification. As such and as broadly as recited, the recited
particular users can include all the people who use the Rifkin nail designing
and printing system. Additionally, if all the users in Rifkin are the
“particular users” and the stored files are accessible to the users, the files are
also associated with the users.
Even so, the Examiner relies on the combination of Rifkin and
Marshall to meet this limitation. See Ans. 5-6, 25. Appellant asserts that
Marshall does not cure the purported deficiency in Rifkin. App. Br. 28-30.
Yet, Appellant later acknowledges that Marshall associates files with a
particular user. See App. Br. 29 (stating “Marshall can only associate files
with a particular user because Marshall’s system is based on the user . . . .”)
Also, Marshall teaches how a user can store images associated with a topic
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(e.g., capture images associated with topic “xmas traditions”). See Marshall
¶ 0056; Figs. 7-8. Because these images relate to a particular user’s
experiences, they are files “associated” with a user. Marshall further teaches
and suggests associating files with multiple users is known, since Marshall’s
system is intended to be used by different customers. See Marshall ¶ 0021;
Fig. 1A.
Appellant lastly asserts that the rejection fails to explain why an
ordinary skilled artisan would combine Marshall’s on-line memory product
teaching with Rifkin’s nail cover system. See App. Br. 29-30. We disagree.
First, the Examiner is relying on Marshall for the limited purpose discussed
above and is not suggesting to include all the features of Marshall (e.g.,
making images: (a) accessible only through an online system or (b)
exclusive to only one user) into Rifkin’s system. See Ans. 5-6, 25. As such,
many of Appellant’s assertions that the combination would defeat the
purpose of Rifkin (see App. Br. 29-30) are not consistent with the
Examiner’s presented combination. Second, the Examiner cites Marshall to
teach or suggest associating the images with particular users to reduce the
amount of time a user spends uploading and searching images. See Ans. 6.
We find this conclusion, when taking account of the inferences and creative
steps that an ordinarily skilled artisan would have employed, is supported by
articulated reasoning with some rational underpinning. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Also, this teaching to provide the
images to multiple users in no way destroys the intended purpose of Rifkin’s
game to allow users to design and print nail covers.
Third, Appellant is focusing on the wrong inquiry when stating that
“Marshall . . . is from a non-analogous art to Rifkin.” App. Br. 29. “The
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analogous-art test requires that the Board show that a reference is either in
the field of the applicant’s endeavor or is reasonably pertinent to the
problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citation omitted) (emphases added). To the extent Appellant is
asserting that Marshall or Rifkin is non-analogous art, Appellant’s field of
endeavor includes creating customizable images for users to print on
memory products (i.e., those that generate memories, such as an image of a
loved one). See Spec. 1:17-21; 2:8-12. Similarly, Marshall’s system permits
users to customize and generate products that generate memories. Abstract;
Figs. 6-10. Rifkin also is similar to Appellant’s field of endeavor
(Spec. 4:3-5) in that it permits users to customize images on a printed
product within a home setting. See Abstract.

History Module
Claim 7 also recites “each particular user can select a stored image
from those in the history module . . . .” At the outset, we note that Appellant
states that the Examiner admits Rifkin does not teach a history module. See
App. Br. 24 (stating “[t]he Examiner has admitted that Rifkin fails to teach a
history module.”). Rather, taking the rejection as a whole, the Examiner
relies on Rifkin and Marshall collectively to teach the recited history module
as well as to teach the user can select images from those stored in the history
module. See Ans. 5-6, 24. As such, any argument that the Examiner relies
solely on Rifkin to teach the recited history module (see App. Br. 24-25) is
not consistent with the Examiner’s position.
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In disputing the Examiner’s findings concerning Rifkin, Appellant
also specifically argues that a skilled artisan would not equate “memory”
with a “history module.” App. Br. 24-25. As noted above, the Examiner is
not relying exclusively on Rifkin’s memory to read on the recited history
module. See Ans. 5-6. Even so, Appellant shows that memory 30 contains
software application 100, and software application 100 contains the history
module 106. Spec. 5:5-6, 13-17; Figs. 1, 3. Thus, a history module
according to Appellant can be part of memory and mapping memory in
Rifkin to a history module would not be unreasonably broad or “improper”
when read in light of the disclosure.
Also, concerning the history module, Appellant asserts for the first
time in the Reply Brief that the Examiner has not stated a reason why an
artisan would combine Rifkin with Marshall to produce the recited history
module. See Reply Br. 7-9. While this argument is untimely and has been
waived, we further refer Appellant to our previous discussion of Marshall
and how the Examiner has provided reasons for combining Marshall with
Rifkin that do not defeat the purpose of or conflict with Rifkin. See also
Ans. 5-6, 25.

Design Module
Claim 7 also recites “[a] processor including . . . a design module that
allows stored custom image files to be manipulated, sized, positioned, and
named . . . and . . . automatically processes the selected image for printing in
the appropriate size and position . . . .” Appellant argues that “Rifkin fails to
teach or suggest a design module as set forth in the claims.” App. Br. 26.
Specifically, Appellant admits Rifkin teaches “a choice of two sizes” for the
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images but not does not teach or suggest the “other elements of claim 7.” Id.
Appellant further contends Rifkin teaches processing images for displaying
rather than for printing as claimed. Id. We disagree.
By generally stating Rifkin fails to teach or suggest a design module
“as set forth in the claims” or “other elements of claim 7,” Appellant has not
adequately specified which portions of the recited design module are not
found in Rifkin. See id. That being said, the Examiner finds that Rifkin has
a design module that manipulates, sizes, positions, and processes the image
for printing. See Ans. 5 (citing col. 4, ll. 62-65; col. 6, ll. 44-48), 24-25.
Rifkin further teaches a process that once the selection and sizing has taken
place, the images are printed on the nail covering. See col. 6, ll. 58-67.
Additionally, the Examiner does not rely solely on Rifkin to teach
these design module features and also cites Marshall (see Ans. 5-6).
Attacking Rifkin individually thus does not show nonobviousness where
rejections are based on combinations of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Printing on Plastic
Claim 7 further recites “printing said selected and processed image on
a plastic material[,]” a limitation Appellant asserts is missing from Rifkin.
App. Br. 20-24. Specifically, Appellant contends that Rifkin’s disclosed
laminate does not contain plastic, asserting the wax-treated paper that is
included in the laminate is not plastic and is also not a part of the material
that affixed to the artificial nail as recited. Id.; Reply Br. 4-6. In response,
the Examiner cites Rifkin’s teaching of a self-adhesive laminate for nails
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that includes a plasticizer, and concludes that plastic laminates were known
to those of ordinary skill in the art. Ans. 23. We agree with the Examiner.
Rifkin teaches printing images on a laminated paper or sheet. Col. 3,
l. 65 – col. 4, l. 8. Rifkin discusses laminated sheet 70 is used to generate
nail coverings and has a printed portion 72 with an adhesive base layer 65,
like wax treated paper, and a cutout layer 66 with a self-adhesive layer 86.
See col. 5, l. 64 – col. 6, l. 13; Fig. 2. This portion of Rifkin does not state
from what layers 66 and 86 are made. See id.
However, even assuming without deciding that wax is not plastic and
Rifkin does not disclose from what layers 66 and 86 are made (App. Br. 20-
24; Reply Br. 4-6), the Examiner notes (Ans. 23) that Rifkin also teaches
that self-adhesive laminates for nails are known to have a plasticizer and to
consist “of a film forming polymeric layer having pigment, a pressure
sensitive adhesive layer, and a removable preferably siliconized protective
film covering the pressure sensitive adhesive layer.” Col. 2, ll. 32-35. This
other portion of Rifkin teaches to an ordinarily skilled artisan that laminates
for nails are known to include plasticizers as well as polymeric material.
Plasticizers, as the name suggests, can be a plastic material, such as polymer
like poly(vinyl chloride) or PVC. See David F. Cadogan & Christopher J.
Howick, Plasticizers, in KIRK-OTHMER ENCYCLOPEDIA OF CHEMICAL
TECHNOLOGY (2001) (Abstract). Additionally, an ordinarily skilled artisan
would recognize a polymeric material is a plastic. See M. Xanthos & D.B.
Todd, Plastics Processing, in KIRK-OTHMER ENCYCLOPEDIA OF CHEMICAL
TECHNOLOGY (2001) (Abstract). Thus, on balance, we find that Rifkin
teaches or suggests its laminate includes plastic and thus is “a plastic
material” as broadly as recited.
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Affixing on Artificial Nails
Claim 7 additionally recites “affixing said [plastic] material with said
image printed thereon on said artificial nail using an adhesive.” Appellant
argues that: (1) Rifkin teaches nail covers, which are unsuitable as artificial
nails (App. Br. 17, 20); (2) neither Rifkin nor Jang teaches affixing images
to plastic material and then affixing the material to an artificial nail (App.
Br. 18); (3) one skilled in the art would not apply Rifkin’s nail cover to an
artificial nail because affixing Rifkin’s nail covers to the artificial nails
would be contradictory to Rifkin’s intended purpose to be easily removable
or temporary (App. Br. 18-19); and (4) the Examiner’s reliance on Jang to
teach attaching an artificial nail to a real nail does not specify how
combining the references would teach the claimed invention (App. Br. 19-
20). We are not persuaded.
As the Examiner noted, the rejection relies on Rifkin and Jang
collectively – not on Rifkin or Jang alone – to teach affixing plastic material
to artificial nails. See Ans. 6, 18; see also Final Rej. 4. Moreover, while
Rifkin teaches or suggests that the Rifkin’s laminate can be made from a
plastic (see col. 2, ll. 30-35), the Examiner has not relied upon Rifkin to
teach an artificial nail. See Ans. 6; Final Rej. 4. Rather, the Examiner cites
Jang to teach affixing images printed on a material to an artificial nail. See
id. Thus, Appellant’s argument that Rifkin’s nail cover is not equivalent to
an artificial nail (App. Br. 17) and that the Examiner failed previously to
state that Rifkin does not teach artificial nails (Reply Br. 3) is not consistent
with the Examiner’s position.
The Examiner additionally has articulated a reason with some rational
underpinning for combining Jang’s teaching with Rifkin (Ans. 6) so as to
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place a printed image on an artificial nail in order to allow the image to last
longer. See KSR, 550 U.S. at 418. We therefore disagree that the references
as combined fail to teach the claimed invention of affixing the material on
the artificial nail. See App. Br. 19; Reply Br. 3-4.
Appellant also argues that affixing Rifkin’s nail covers to the artificial
nails would be contradictory to Rifkin’s intended purpose to be easily
removable or temporary. App. Br. 18-19; Reply Br. 3-4. While Rifkin
states the system is a “game” (Abstract), Rifkin does not state the nail covers
are intended to be “easily removable.” Reply Br. 4. As noted above, Rifkin
teaches or suggests that the material for the laminate can be plastic and fails
to state or teach the laminate is “an easily destructible paper nail cover . . . .”
App. Br. 18. Furthermore, any type of image attached to a nail cover or an
artificial nail is temporary. Even assuming combining Jang’s teaching with
Rifkin would render a somewhat inferior product, we do not find that
Rifkin’s nail covering would teach one skilled in the art away from applying
Rifkin’s nail cover to an artificial nail. See In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 7 and claims 8, 10, and 12 not separately
argued with particularity.

Claim 26
Independent claim 26 has similar limitations to those in claim 7.
Appellant refers to the arguments made in connection with claim 7. App.
Br. 34. We refer to our previous discussion. Appellant additionally asserts
that modifying Rifkin to require Marshall’s online storage of materials
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defeats the purpose of Rifkin’s local compact disc (CD). App. Br. 35.
However, the Examiner has not suggested to include all the features of
Marshall into Rifkin or to bodily incorporate the online storage material into
Rifkin. See Ans. 9-10. Rather, the Examiner discusses only including an
image database as taught by Marshall that organizes material (¶ 0053) into
Rifkin’s memory but does not state that such a database must be an online
storage. See Ans. 10, 26. Thus, Appellant’s contentions that such an online
system would be “time-consuming” are not aligned with the Examiner’s
presented rejection. See App. Br. 36.
Appellant also contends Rifkin does not require a user name and
password requirement and such concepts would interfere with a girl’s ability
to use Rifkin. See App. Br. 35. We disagree and conclude that an ordinarily
skilled artisan employing inferences and creative steps would have
recognized that user names and passwords are commonplace in many
computer-based settings, including those used by young users, and are not
too complicated for younger users. See KSR, 550 U.S. at 418. Additionally,
Marshall teaches an improvement to Rifkin, which, as Appellant
acknowledges (App. Br. 35), does not include a security feature. The
Examiner further notes (Ans. 9-10, 26) that Marshall teaches using a user ID
and password for authentication purposes prior to the user obtaining access
to the application (Marshall ¶ 0042), which adds a level of security to
Rifkin’s system for the users. That is, Marshall teaches a technique for
improving security and an ordinarily skilled artisan would have recognized
that this technique would equally improve the Rifkin system in the same
manner. See KSR, 550 U.S. at 417.
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For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 26.

Claims 14, 15, and 17
Claims 14, 15, and 17 recite that the image is sized to fit onto an
artificial nail. For each of these claims, Appellant repeats many of the
arguments made concerning Rifkin’s nail covers, such as Rikfin’s nail
covers are easily damaged and Rifkin fails to teach a plastic material. App.
Br. 37-38; Reply Br. 9-10. For these arguments, we refer to the above
discussion of claim 7.
Also, concerning claims 14 and 17, Appellant asserts that Rifkin’s
teaching that the images are sized to fit onto a fingernail does not teach that
they are sized to fit on an artificial nail because artificial nails are typically
longer. App. Br. 37-38. We disagree. First, we find that Appellant’s
admission that artificial nails are typically longer than a real fingernail
illustrates that an image that is sized to fit onto a real fingernail would
equally be “sized to fit onto an artificial fingernail . . . ” as recited in claims
15 and 17 and similarly recited in claim 14. Second, the Examiner in
rejecting claim 26 relies on Rifkin’s Figure 2 to show how a laminate having
an image is adhered to a fingernail. See Ans. 8. Since the image has the
ability to be adhered to a fingernail, we also find that Rifkin’s teaching,
when combined with Jang as explained above when addressing claim 7, will
predictably yield no more than an image that is sized to fit onto an artificial
nail. See KSR, 550 U.S. at 416-17.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claims 14, 15, and 17.
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OBVIOUSNESS REJECTION OF CLAIM 21, 22, AND 27
Independent claim 27 includes similar limitations to claims 7 and 26.
Once again, Appellant refers to the previous arguments for claims 7 and 26
(App. Br. 39), and we are not persuaded for the reasons previously
discussed. Appellant also asserts one skilled in the art would not recognize
that customer storing images in a database is the same as “a database module
that manages the custom image files that are stored in the database . . . .”
App. Br. 40. Appellant further argues that: (a) Holt does not teach printing
images for use with fingernails; (b) Rifkin and Holt are from non-analogous
art; and (c) due to incompatibilities, one skilled in the art would not combine
Rifkin and Holt. App. Br. 41-43.

ISSUES
Under § 103, has the Examiner erred in rejecting claim 27 by finding
that Rifkin, Marshall, Jang, and Holt collectively would have taught or
suggested:
(a) a database module that manages the custom image files that are
stored in the database?
(b) printing said selected and processed image on a PVC, Teslin®, or
acetate material?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 27. The Examiner relies on both Rifkin and Marshall to
teach the recited database module that manages the custom image files that
are stored in the database. See Ans. 13-16, 28. In particular, and as
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previously discussed, Marshall teaches using a database to store memory
materials, including images, and assigning a pointer to the storage location.
See ¶ 0053. Thus, even assuming that storing is not considered “managing”
files, assigning a pointer to these image materials involves more than a
customer storing images and can be broadly, but reasonably mapped to “a
database module that manages the custom image files that are stored in the
database . . . .” Also, as discussed above in connection with claim 7, the
Examiner provides a reason with some rational underpinning to include such
a database as taught by Marshall in Rifkin and does not conclude that the
database must be remote. See Ans. 13-15, 28. We therefore are not
persuaded that combining these teachings would not “yield this [database
module] element of the claims.” App. Br. 40.
Additionally, concerning the recitation of printing the image “on
PVC, teslin or acetate material” in claim 27, the Examiner relies on both
Rifkin and Holt. See Ans. 11-12. Specifically, the Examiner found that Holt
teaches Teslin® laminations for adhesive labels provide excellent permanent
printed images (see col. 1, ll. 41-42, 53-61) and that modifying Rifkin’s
self-adhesive plastic laminate material, which is for use with fingernails,
with Teslin® would equally produce a laminate with excellent printed
images. See Ans. 11-12.
Thus, because the Examiner relies on Rifkin and Holt collectively
(Ans. 11-12), there is no need to show that Holt alone teaches using Teslin®
for use with fingernails. See App. Br. 42. Moreover, we disagree that these
references are incompatible, such that one skilled in the art would not
combine them. See id. Rather, an ordinarily skilled artisan would have
recognized including Holt’s teaching of using Teslin® for printing an image
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with Rifkin’s laminate would be an improvement on Rifkin’s laminate by
also providing excellent printed images. See KSR, 550 U.S. at 417.
Appellant further asserts that including such a material in Rifkin’s
system would be too expensive. App. Br. 42. Notably, the accompanying
evidence to support this contention (App. Br. 42 nn.4-5) is newly introduced
on appeal, and there is no statement in the appeal where the evidence was
entered by the Examiner. Any evidence that has not been entered by the
Examiner is not permitted in the brief. See 37 C.F.R. § 41.37(c)(1)(ix).
Even so, balancing the relative advantages and disadvantages of using
Teslin® is an engineering tradeoff well within the level of ordinary skill in
the art.
Also, as stated above, the focus of the non-analogous art test is not
whether Rikfin and Holt solve the same problem but whether Rifkin and
Holt are either in the field of the applicant’s endeavor or is reasonably
pertinent to the problem with which the inventor was concerned. See Kahn,
441 F.3d at 986-87. Both Rifkin and Holt relate to printing designated
images on adhesive laminates or are in the same field of endeavor as
Appellant.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 27 and claims 21 and 22 not separately
argued with particularity but are similar in scope (App. Br. 43).

OBVIOUSNESS REJECTION OF CLAIMS 28 AND 29
Claim 28
Claim 28 depends from independent claim 27 and recites a reports
module that generates usage reports of the more popular images selected by
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the user. Appellant argues that Bezos does not teach generating a usage
reports for popular images related to fingernails and one skilled in the art
would not consider combining this teaching with Rifkin because the result
would not be useful or are not likely to succeed. App. Br. 44.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 28 by finding
that Rifkin, Marshall, Jang, Holt, and Bezos collectively would have taught
or suggested a reports module that generates usage reports of the more
popular images that have been selected by users?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 28. The Examiner relies on both Rifkin and Bezos to
teach the recited reports module (see Ans. 17). That is, Bezos’s teaching
when combined with Rifkin teaches including a reports module for the
processor used ultimately to affix custom images to nails as recited. Thus,
attacking Bezos alone (App. Br. 44) as failing to teach generating a usage
report that relates to popular images for fingernails does not show
nonobviousness. See Merck, 800 F.2d at 1097.
Also, combining these references predictably yields no more than one
would expect – a module for reporting popular images that have been
selected by the users in Rifkin’s system – and does have utility (see App. Br.
44) such as to allow other users to view what images are currently popular
(see Ans. 17). See KSR, 550 U.S. at 417. We also disagree with Appellant
that young girls using Rifkin would not care about the images selected by
Appeal 2010-000531
Application 10/153,281

19
other girls in her community. App. Br. 44. To the contrary, many young
users are concerned with what is popular or fashionable and, as such, would
find including such a feature in Rifkin’s system desirable.
We note that the Examiner is not proposing incorporating on a
wholesale basis Bezos’s teachings into Rifkin (see Ans. 17), such that an
online system is required. See App. Br. 44. We further fail to see how
including a reports module in Rifkin would require too much complexity
such that an ordinarily skilled artisan would have been discouraged from
including the reports module feature. Additionally and as explained above,
Appellant’s assertion that Rifkin and Bezos are “not similar or analogous”
(App. Br. 44) does not demonstrate that these reference are non-analogous
art. Rifkin relates to creating custom images for users to print on memory
products, such as fingernails (e.g., the same field of endeavor as Appellant),
and Bezos is pertinent to a problem Appellant was concerned with, such as
communicating popular images to users. See Bezos, col. 5, ll. 33-39; Spec.
6:4-6.
Lastly, Appellant contends that Rifkin fails to teach naming the nails
or a “design module” that allows for image files to be named as recited in
independent claim 27, but notes the Examiner relies on Marshall, in
combination with Rifkin, to teach this limitation. App. Br. 44-45. Appellant
then asserts that Marshall and Bezos are incompatible. App. Br. 45. We
disagree. Even assuming, without deciding Marshall is “for private use,”
including a feature that shows what is popular as taught by Bezos in the
Rifkin/Marshall system would not interfere with such privacy features.
Also, we explain above when discussing claim 7 how Marshall is analogous
art and how one skilled in the art would have recognized combining
Appeal 2010-000531
Application 10/153,281

20
Marshall' with Rifkin to arrive at the claimed invention. See also Ans. 14-15
(explaining why one skilled in the art would combine these teachings). We
further discuss above how Bezos is analogous and how its teachings can be
combined with Rifkin.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claim 28.

Claim 29
Claim 29 depends from independent claim 27 and recites the history
module recommends to the user, upon request, images which other users
have selected. Appellant’s arguments are similar to those concerning claim
28, Bezos, and Rifkin. Compare App. Br. 46 with App. Br. 44-45. We find
these arguments unpersuasive and refer Appellant to our above discussion
for the details.

OBVIOUSNESS REJECTION OF CLAIMS 30 AND 31
Due their dependency from claims 7 and 26, claims 30 and 31 are
separately rejected from claim 29. However, Appellant groups claims 30
and 31 with claim 29. See App. Br. 45-46. We are not persuaded for the
reasons previously set forth.

OBVIOUSNESS REJECTION OF CLAIM 9
Claim 9 depends from claim 7. The Examiner finds that Rifkin,
Marshall, Jang, and Gamburg teach or suggest the limitations in claim 9.
Ans. 17-18. Appellant has not separately argued this rejection. See App. Br.
Appeal 2010-000531
Application 10/153,281

21
17-46. Appellant has thus not persuaded us of error, and we will summarily
sustain this rejection.

CONSIDERATION OF AFFIDAVIT PURSUANT TO 37 C.F.R. § 1.132
Appellant introduced the Mitchell Schlossman affidavit under 37
C.F.R. § 1.132 to overcome the obviousness rejection. Such an affidavit has
been entered and is included in the Evidence Appendix. Appellant argues
that the affidavit was wholly dismissed and not given proper consideration.
App. Br. 48. The Examiner counters by stating that the affidavit was
considered but was not found persuasive to overcome the prior art rejections.
See Ans. 30. We agree with the Examiner that the § 1.132 affidavit does not
provide sufficient objective evidence of nonobviousness.
Other than the mere statement that “[t]hese advancements are
surprising” in paragraph 6, this affidavit provides no factually-supported
evidence of unexpected results, commercial success, long-felt needs, or
failure of others for consideration. Moreover, the affidavit fails to clearly
state what these surprising “advancements” are, such that there is a sufficient
relationship or nexus between these surprising advancements and the
claimed invention.
As the Examiner indicates (Final Rej. 19-20), the Schlossman
affidavit discusses: (1) the invention as being “novel” (paragraph 4); (2) that
“[n]one of the cited references . . . teach the present invention” (paragraph
7); (3) “Marshall is a non-analogous reference” (paragraph 12); (4) how it
would be “inappropriate to combine Rifkin and Marshall since they are
solving different problems and their combination accomplishes nothing
practical” (paragraph 13); and (5) “[i]t is unrealistic for an artisan in the field
Appeal 2010-000531
Application 10/153,281

22
of artificial nails to consider combining a reference related to a game
(Rifkin) with a nail reference (Jang) and a computer based reference
(Marshall)” (paragraph 17). While Schlossman may have expertise in
chemistry and cosmetics (paragraph 2), the affidavit does not establish that
he has legal expertise such that these statements have persuasive value. As
such, these types of opinions which relate to legal concepts and conclusions
are entitled to little weight. See In re Carroll, 601 F.2d 1184, 1186 (Fed.
Cir. 1979) (citations omitted); see also paragraphs 22-24 of the affidavit.
Additionally, with the exception of the history module, other portions,
such as paragraphs 8-10, discuss many limitations (e.g., multiple users
should be differentiated by user name and password, stored image should be
associated only with a particular user, and in a commercial environment)
that are not found in claim 7. While the user name and password are recited
in claims 26 and 27, the other discussed limitations are not clearly found in
the disputed claims. Thus, statements made in the Schlossman affidavit
have an inadequate relationship to the claimed invention recited in the
disputed claims. Also, concerning the user name and password limitations
found in claims 26 and 27, the Examiner has not relied upon Rifkin
(paragraph 8) to reject this claim limitation. Nor has the Examiner relied
upon Gamburg to teach the limitations discussed in paragraphs 19 and 21.
The Examiner relies on Gamburg in combination with the other cited
references to teach the disputed limitations in paragraph 20. Also, we
discuss above reasons with rational underpinning for combining Holt and
Bezos with the other cited art to yield the claimed elements.
In summary, we therefore find that the § 1.132 affidavit does not
provide sufficient objective evidence of nonobviousness.
Appeal 2010-000531
Application 10/153,281

23
CONCLUSION
The Examiner did not err in rejecting claims 7-10, 12, 14, 15, 17, 21,
22, and 26-31 under § 103.

DECISION
The Examiner’s decision rejecting claims 7-10, 12, 14, 15, 17, 21, 22,
and 26-31 is 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)(1)(iv).

AFFIRMED

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Notice of References Cited

Application/Control No.

10/153,281
Applicant(s)/Patent Under Patent
Appeal No. 2010-000531
Examiner

Vincent Rudolph
Art Unit

2600

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David F. Cadogan & Christopher J. Howick, Plasticizers, Kirk-Othmer Encyclopedia of Chemical Technology (2001).

X

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M. Xanthos & D.B. Todd, Plastics Processing, Kirk-Othmer Encyclopedia of Chemical Technology (2001).

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PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
Plasticizers - Kirk-Othmer Encyclopedia of Chemical Technology - Cadogan - Wiley OnI... Page 1 of 2
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Plasticizers
1. David F. Cadoganl ,
2. Christopher J. Howick2
Published Online: 4 DEC 2000
DOl: 1O.1002/0471238961.1612011903010415.aOl
Copyright © 2001 by John Wiley & Sons, Inc.
Book Title
CHEMICAL
TECHNOLOGY
/i
Kirk-Othmer Encyclopedia of Chemical Technology
Additional Information
How to Cite
Cadogan, D. F. and Howick, C. J. 2000. Plasticizers. Kirk-Othmer Encyclopedia of Chemical
Technology.
Author Information
1
European Council for Plasticizers and Intermediates

2

European Vinyls Corporation
Publication History
1. Published Online: 4 DEC 2000
http://onlinelibrary.wiley.com/doi/l0.1002/0471238961.1612011903010415.aOl/abstract 10/19/2012
Plasticizers - Kirk-Othmer Encyclopedia of Chemical Technology - Cadogan - Wiley OnI... Page 2 of 2
• Abstract
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A plasticizer is a substance the addition of which to another material makes that material softer and
more flexible. Most often plasticizers are materials which, when added to a polymer, cause an
increase in the flexibility and workability, brought about by a decrease in the glass-transition
temperature, T g, of the polymer. The most widely plasticized polymer is poly(vinyl chloride)
(PVC) due to its excellent plasticizer compatibility characteristics, and the development of
plasticizers closely follows the development of this commodity polymer. This article provides an
overview of the important types of plasticizers which exist, and gives details of manufacture and
how different production methods and starting materials affect the properties of the plasticizers.
The mechanism of action of plasticizers is described, in terms of plasticization theory and the
chemical modifications that occur during this process, which account for the excellent performance
of some plasticizer molecules and the apparently poor softening ability of others. These effects are
used to make products that are familiar to daily life and a change of plasticizer can produce
changes in the properties of a wallcovering, a cable sheathing, etc. The current legislative and
toxicological status of plasticizers are thoroughly reviewed to provide information about the
environmental effects of this widespread use of these products.
Keywords: Plasticizers; Types; Platicizer action; Poly(vinyl chloride); Application technology;
Flexible PVC; Windshield fogging; Polymers; Rubber; Emissions; Environmental modeling
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http://onlinelibrary.wiley.com/doi/10.1002/0471238961.1612011903010415.aOl/abstract 10/19/2012
. Plastics Processing - Kirk-Othmer Encyclopedia of Chemical Technology - Xanthos - Wit... Page 1 of 2
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Plastics Processing
1. M. Xanthos,
2. D. B. Todd
Published Online: 14 NOV 2003
001: 10.1002/0471238961.1612011924011420.a01.pub2
Copyright © 2001 by John Wiley & Sons, Inc.
Book Title
CHEMICAL
TECHNOLOGY, .
,/
Kirk-Othmer Encyclopedia of Chemical Technology
Additional Information
How to Cite
Xanthos, M. and Todd, D. B. 2003. Plastics Processing. Kirk-Othmer Encyclopedia of Chemical
Technology.
Author Information
Polymer Processing Institute
Publication History
1. Published Online: 14 NOV 2003
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http://onlinelibrary.wiley.comldoiIl0.1002/0471238961.1612011924011420.a01.pub2/ab... 10/10/2012
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Processing of plastics comprises a variety of operations involving flow and shaping of polymer
melts into finished articles. For thermoplastic resins the most common processing operations are
extrusion and molding. In extrusion, solid plastic resin is melted and then shaped in a continuous
part of a defined cross-section by screw-conveying and forcing the melt to flow through a die. Die
forming is used in pipe and tubing, film, sheet, wire, and cable coating. Molding involves such
noncontinuous processes as injection molding, blow molding, rotational molding, and compression
molding, in which three-dimensional parts are made in a closed mold. Molded products are solid,
hollow, or foamed. Other thermoplastics operations include thermoforming, calendering, and
casting. In contrast to thermoplastics, thermosetting resins use low viscosity components which,
through chemical reaction, produce the solid part in the mold. Common processing methods for
thermoset systems are compression molding, transfer molding, and injection molding. Specialized
techniques developed for fiber-reinforced thermosets include open-mold processing, pultrusion,
resin transfer molding, and reaction injection molding. Specific processing methods for making
low density articles from thermoset polyurethanes are described.
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