Ex Parte Moore

Patent Trial and Appeal Board

Sep 5, 2017

14198295 (P.T.A.B. Sep. 5, 2017)

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.
14/198,295 03/05/2014 Heath Moore 59899.00400 9310
20322 7590 09/07/2017
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
09/07/2017 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):
IPDOCKET @ swlaw.com
chauff @ swlaw.com
dgiancaterin @ swlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATH MOORE
Appeal 2016-008676
Application 14/198,295
Technology Center 2800
Before ADRIENE LEPIANE HANLON, DONNA M. PRAISS, and
AVELYN M. ROSS, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 1—17 and 19—21 under 35
U.S.C. § 103(a) as unpatentable over Royals1 in view of Miles.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 US 2009/0053485 Al, published February 26, 2009 (“Royals”).
2 US 4,125,658, issued November 14, 1978 (“Miles”).
Appeal 2016-008676
Application 14/198,295
The claimed subject matter is directed to a stencil panel for applying
paint to a surface and a method of applying a multi-color paint pattern to a
surface using one or more stencil panels.
According to the Appellant, stencils are known to be used for painting
a surface. The Appellant discloses that stencils are also known to include
indicia indicating the color of paint to be applied to each opening in a
stencil. A problem is said to arise, however, when more than one coat of
paint is applied to a stencil because the coat(s) of paint may cover the
indicia. If the indicia designates a paint color to be applied to certain
openings in a stencil, “covering the indicia makes it time consuming for an
operator to review the painting plans or diagram ... to determine which
paint color goes onto the surface under each opening.” Spec. 12. The
claimed stencil panel is said to solve that problem. Spec. 116.
Claims 1 and 10 are reproduced below from the Claims Appendix of
the Appeal Brief dated February 25, 2016 (“App. Br.”). The limitation at
issue is italicized.
1. A stencil panel for applying paint to a surface, the panel
having one or more forms that can be removed to create
openings through which the surface is exposed, and indicia on
or adjacent to each form that is visible when covered with
paint.
10. A method of applying a multi-color paint pattern on a
surface, the method comprising:
(d) applying one or more stencil panels according to
claim 1 on the surface;
(e) removing one or more first forms from the one or
more stencil patterns to expose a first portion of the
surface and painting the first portion of the surface a first
color;
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Application 14/198,295
(f) removing one or more second forms from the one or
more stencil panels to expose a second portion of the
surface, and painting the second portion of the surface a
second color.
App. Br. 14.
B. DISCUSSION
The Examiner finds Royals discloses a stencil panel 100 having forms
101—103 that can be removed to create openings through which a surface is
exposed. The Examiner finds the stencil panel includes indicia 508 on or
adjacent each form. However, the Examiner finds Royals does not disclose
that the indicia is visible when covered with paint. Final 3.* 3
The Examiner finds Miles discloses a stencil panel 1 having one or
more openings 3 through which a surface is exposed and indicia 7 adjacent
to those openings that is visible when covered with paint. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify the stencil panel of Royals to include the indicia taught by Miles.
Final 3.
The Appellant argues that “Royals teaches progressively adding stains
or colors one atop the other.” App. Br. 6. In contrast, the Appellant argues
that “[t]he present invention teaches a stencil that permits one color of paint
to be applied to one portion of a surface, and other single colors of paint to
the other portions of the surface.” App. Br. 6. Neither claim 1 nor claim 10,
however, recites that openings in the stencil panel receive a single
application of paint or a single paint color. See Ans. 2 (concluding that
3 Final Office Action dated July 2, 2015.
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Application 14/198,295
“[njothing in claim 10 precludes the additional teachings of Royals to paint
over the first portion [of the surface] with the second color as well”).4
The Appellant also argues that the indicia in Miles is used for spatially
separating the disclosed stencil panels. App. Br. 8. The Appellant argues
that “Miles does not teach ... the raised or depressed indicia, or fluorescent
indicia that can be seen through paint as claimed herein.” App. Br. 8.
Significantly, claim 1 does not recite that the indicia is raised,
depressed or fluorescent. Claim 1 merely recites that the indicia “is visible
when covered with paint.” App. Br. 14. The Examiner finds that indicia or
perforation 7 in Miles would be visible when covered with paint. Final 3,6.
The Appellant has failed to show otherwise.
Claim 7 depends from claim 1 and recites that “the indicia is a
depression.” App. Br. 14. The Examiner finds that indicia or perforation 7
in Miles is a depression within the scope of claim 7. Final 4. The Appellant
does not direct us to any evidence demonstrating that the Examiner’s finding
is erroneous.
Finally, in the Appeal Brief, the Appellant does not direct us to any
error in the Examiner’s conclusion that it would have been obvious to one of
ordinary skill in the art to modify the stencil panel of Royals “to include
indicia, as taught by Miles, which would be visible when covered with paint
so that the stencil would be reusable even if the original surface were no
longer visible.” Final 3. Rather, the Appellant argues that “[e]ven if Royals
and Miles were combined, the combination would lack numerous claims of
4 Examiner’s Answer dated July 15, 2016.
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Appeal 2016-008676
Application 14/198,295
the present invention.” App. Br. 9. The Appellant then lists the limitations
of claims 1—3, 6—8, 10-12, 15, 17, and 19-21. App. Br. 9-10.
The Appellant’s argument does not demonstrate reversible error in the
Examiner’s factual findings or legal conclusions as to claims 1—3, 6—8, 10-
12, 15, 17, and 19—21. See Final 3—5. As the Court stated in In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011), 37 C.F.R. § 41.37 requires “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”
In the Reply Brief, the Appellant argues for the first time on appeal
that “[i]f the perforations 7 of Miles were added to Royals, Royals would
only include perforations on the bottom comers of each stencil to align the
stencil panels with one another. . . . There would be no indicia ‘on or
adjacent to each form’ as is presently claimed.” Reply Br. 2.* 5 The
Appellant also presents arguments directed to claims 2, 3, 6, 11, 12, 20, and
21. Reply Br. 3—5.
Significantly, the Appellant’s arguments do not respond to arguments
raised in the Examiner’s Answer. Moreover, the Appellant does not show
good cause why the arguments could not have been raised in the Appeal
Brief. Thus, the Appellant’s arguments presented for the first time in the
Reply Brief are untimely and will not be considered on appeal. See 37
C.F.R. §41.41(b)(2) (2015).
C. DECISION
The Examiner’s decision is affirmed.
5 Reply Brief dated September 15, 2016.
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Appeal 2016-008676
Application 14/198,295
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).
AFFIRMED
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