Ex Parte Nguyen et al

Patent Trial and Appeal Board

Sep 19, 2017

13718427 (P.T.A.B. Sep. 19, 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.
13/718,427 12/18/2012 KC NGUYEN A0269 1339
99653 7590 09/21/2017
Moser TahnaHa / An sell T imiterl
EXAMINER
1030 Broad Street BAKER, ADAM D
Suite 203
Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KC NGUYEN, BENG SIM CHUAH, ADELINE AI LIN KUNG,
MATTHEW STEVEN GROSKORTH, and
CHAYAPORN PONGTHANOMSAK
(Applicant: ANSELL LIMITED)
Appeal 2017-008513
Application 13/718,427
Technology Center 3700
Before JENNIFER D. BAHR, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
In reply to the Decision on Appeal mailed July 28, 2017 (“Decision”
or “Dec.”), Ansell Limited (Appellant) filed a Request for Rehearing
pursuant to 37 C.F.R. § 41.52, on September 1, 2017 (“Req.”), requesting
that we reconsider our Decision affirming the rejections of claims 1, 2, 5—8,
and 21—27 under 35 U.S.C. § 103(a).
Appeal 2017-008513
Application 13/718,427
ANALYSIS
In the Decision, we sustained the Examiner’s rejections of claims 1, 2,
5—8, and 21—27. Dec. 10. We designated the affirmance as new grounds of
rejection, pursuant to 37 C.F.R. § 41.50(b), because although we agreed that
the cited references failed to disclose the recited “additional contrast,” we
determined that this additional contrast was purely ornamental. Id. at 5—6
(citing In re Seid, 161 F.2d 229, 231 (CCPA 1947)). Appellant takes issue
with this determination. Req. 2.
Appellant first contends that “[i]n Seid, the allegedly novel features
[were] shown in the prior art,” but “[h]ere, however, the Examiner has not
established that Wilk, as modified by Povlacs and Turner, imparts the
additional contrast.” Id. (citing Seid, 161 F.2dat231).
Appellant’s argument is misplaced. The portion of Seid cited by
Appellant relates to an argument that “appellant has a novel concept of
covering the neck of the bottle while using it as a support for the display and
at the same time using the body of the bottle to form a part of the display
figure.” Seid, 161 F.2d at 231. It is to the additional argument that “the
[prior art] does not specifically describe or claim a human figure” to which
the court held that “[t]he particular shape and arrangement of the upper part
of the body in appellant’s figure . . . relate to ornamentation only and have
no mechanical function whatsoever” and “cannot, therefore, properly be
relied on here, as the appealed claims are not directed to a design but are
structural claims.” Id. (emphasis added).
Furthermore, the Examiner correctly determined that the feature—that
is, Povlacs’s projections 18 and Turner’s projections 20—are shown in the
prior art. See Final Act. 3—5. Appellant’s argument fails to apprise us that
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Appeal 2017-008513
Application 13/718,427
we overlooked or misapprehended any matter in the Decision. See 37
C.F.R. § 41.52(a)(1).
Appellant also contends that “[t]he additional contrast imparted to the
plurality of diamond-shaped raised features in the present case is not merely
ornamentation” because the “features are highlighted on the inventive
condom by using different colors for the first elastomeric layer and the inner
elastomeric coating,” “darker colors indicate the height of the raised features
on the surface of the condom with respect to each other,” and “the additional
contrast imparted to the plurality of diamond-shaped raised features alert a
user to the fact that the condom has raised feature [s] which can improve
stimulation and conveys the intended purpose of the device.” Req. 2-4
(emphasis omitted).
Appellant’s arguments fail to set forth any mechanical function of the
recited additional contrast. Highlighting, indicating height, and alerting are
not mechanical functions. Nor has Appellant persuasively set forth how the
additional contrast conveys the intended purpose of the claimed condom or
facilitates use of the condom, as was determined in the prior Board decisions
cited by Appellant.1 See id. 3^4. To the extent that the contrast in color
conveys to the user a feature of the product, it is “useful and intelligible only
to the human mind,” and, thus, cannot impart patentability. Cf. In re Lowry,
32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395,
1399 (CCPA 1969)).
1 We further note that the two decisions cited by Appellant have not been
designated as precedential, and, therefore, are not binding on this panel.
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Application 13/718,427
As explained in the Decision, the Specification sets forth that “the
patterns and color of the raised features provide different appearances when
viewed from a plan perspective” and “Appellant. . . explains that that the
difference in colors ‘form[s] an aesthetically pleasing pattern.’” Dec. 5—6
(citing Spec. 18, 23—25, 36; quoting Appeal Br. 5) (emphasis added).
Thus, the recited “additional contrast” relates to ornamentation only and,
therefore, cannot be relied upon for patentability. Appellant’s arguments
amount to mere unsupported attorney argument, and fail to apprise us that
we overlooked or misapprehended any matter in the Decision.
DECISION
We have granted Appellant’s Request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes thereto.
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)(iv).
DENIED
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