Ex Parte Peltz et al

Patent Trial and Appeal Board

Sep 5, 2017

14143653 (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.
14/143,653 12/30/2013 JAMIE B. PELTZ TRUE-45893US2 6634
86378 7590 09/07/2017
Pearne Rr frnrHnn T T P
EXAMINER
1801 East 9th Street HULS, NATALIE F
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
2856
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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMIE B. PELTZ and ROBERT F. GOLOWNIA
Appeal 2017-000970
Application 14/143,653
Technology Center 2800
Before CHUNG K. PAK, LINDA M. GAUDETTE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 28-41. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2017-000970
Application 14/143,653
Appellant’s1 invention is best illustrated by independent claim 28,
reproduced below:
28. A combination comprising a wall and a transparent
or translucent sheet, the sheet being located adjacent the wall,
the sheet being provided with a paint coating, the combination
further comprising a plurality of different primer coating
patches located between the wall and the paint coating, the
plurality of different primer coating patches being selected from
the group consisting of patches of white and gray primer
coatings.
Appellant (see generally Appeal Brief) appeals the following
rejections:
(a) claims 32, 33, 36, and 40 rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
(b) claims 28-41 rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Winter (US 2006/0257609 Al, published
November 16, 2006) and Cojic (US 7,014,466 B2, issued March 21, 2006)
OPINION
Rejection under 35 U.S.C. § 112, first paragraph (written description
requirement)
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.
1 Appellant is the Applicant, TRUE HUE, LLC. TRUE HUE, LLC is also
identified as the real party in interest. App. Br. 1.
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Application 14/143,653
See also AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010).
This inquiry ... is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the
written description requirement varies depending on the nature
and scope of the claims and on the complexity and
predictability of the relevant technology.
Id.
Original claims are also part of the original disclosure. In re Gardner, 475
F.2d 1389, 1391(CCPA 1973); In re Benno, 768 F.2d 1340, 1346 (Fed. Cir.
1985). Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991).
Claims 32 and 33
The Examiner contends that the sheets recited in claims 32 and 33 are
not the same as the substrate recited in claim 28, from which these claims
depend. Final Act. 8. According to the Examiner, the sheet recited in claim
28 has a paint coating on it and there is nothing in the original disclosure to
support the size of the primer patches covering at least 80% or no more than
50% than a front or back surface of a sheet provided with a paint coating of
claim 28. Id.
We disagree with the Examiner’s interpretation of the claims for the
reasons given by Appellant. App. Br. 2. The Examiner does not question
that there is written descriptive support for providing primer patches over
translucent or transparent sheets. Ans. 8. Instead, the Examiner asserts that
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there is no written descriptive support for providing primer patches over a
painted sheet as recited in claim 28. Id. First, claim 28 recites that the sheet
is provided with a paint coating. There is no language in the claim that
requires the paint to be applied directly onto the sheet. Second, the language
of the claim provides for the different primer coating patches be located
between the wall and the paint coating. Third, the Examiner has not
identified, nor do we discern, any basis for according a more narrow
interpretation to claim 28 as excluding the embodiments described on pages
6 to 7 of the Specification and illustrated by Figures 2 and 4. See App. Br. 2.
On this record, the Examiner has not adequately explained why this portion
of the Specification is insufficient to provide adequate descriptive support
for the subject matter of claims 32 and 33.
Claims 36 and 40
The Examiner also contends there is nothing in the original disclosure
to support different primer coating patches printed or coated on the sheets as
recited in claims 36 and 40. Final Act 8—9.
We disagree. As noted by Appellant, the Specification discloses that
primer patches may be deposited or coated onto the top surface of substrate
(sheet) using application methods such as roll coating, rotogravure, screen
printing, lithography, or other processes known in the art. App. Br. 2—3;
Spec. 12. The Examiner has not adequately explained why this portion of
the Specification is insufficient to provide written descriptive support for the
subject matter of claims 36 and 40.
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Application 14/143,653
Accordingly, we reverse the Examiner’s rejection of claims 32, 33,
36, and 40 under 35 U.S.C. § 112, first paragraph, as lacking written
descriptive support for the reasons presented by Appellant and given above.
Prior Art Rejection under 35 U.S.C. § 103(a)
In arguing claims 28-41, Appellant does not initially argue any claim
separate from the other. App. Br. 3—6. Appellant then presents separate
arguments for claims 32, 36, and 39, and relies on the arguments presented
for claims 36 and 39 to address claim 40. Id. at 6—7. Accordingly, we select
independent claim 28 as representative of the subject matter before us for
review on appeal. Claims 29—31, 33—35, 37, 38, and 41 stand or fall with
claim 28. We address the arguments presented for claims 32, 36, and 39
separately. Claim 40 stands or falls with claims 36 and 39.
We have reviewed each of Appellant’s arguments for patentability.
However, a preponderance of the evidence supports the Examiner’s position
that the subject matter of claims 28—41 is unpatentable. Accordingly, we
AFFIRM the Examiner’s prior art rejection for the reasons explained in the
Answer, and we add the following for emphasis.
Independent claim 28 is directed to a combination comprising a wall
and a transparent or translucent sheet.
The Examiner finds Winter discloses a structure comprising a
transparent/translucent sheet having a paint coating that can be placed on a
wall for the comparative illustration of paint color. Final Act. 10; Winter
Figure 4a, 10, 36, 44. The Examiner acknowledges that Winter does not
disclose the use of a plurality of different primer coating patches as claimed.
Final Act. 10. The Examiner finds Cojic teaches a primer selection system
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that uses a plurality of different primer coating patches arranged behind a
paint coating on a transparent sheet. Id. at 10-11; Cojic, Figure 1, col. 2,11.
5—29, col. 3,11. 48—66. The Examiner determines that it would have been
obvious to one of ordinary skill in the art to modify the structure of Winter
by incorporating Cojic’s primer patches behind Winter's painted transparent
sheet for the purpose of allowing the viewer to choose a primer which
affords the intended topcoat the optimal color development. Final Act. 11;
Cojic, col. 2,11. 20-39, col. 3,11. 48-66.
Alternatively, the Examiner finds Cojic discloses a primer selection
system comprising all limitations of claim 28 (a transparent or translucent
sheet, the sheet being provided with a paint coating, a plurality of different
primer coating patches adjacent to the sheet, the plurality of different primer
coating patches consisting of patches of white and gray primer coatings)
except for placement on a wall. Ans. 11; Cojic, col. 3,11. 60-65. The
Examiner relies on Winter as teaching the combination of a paint swatch
with a wall and concludes it would have been obvious to one skilled in the
art to combine these teachings to get an idea of how a paint color of Cojic
may appear on a wall without actually applying paint to it. Ans. 11; Winter |
44.
Claim 28
Appellants argue Winter teaches a conventional paint chip which must
be opaque in order to do its job because, otherwise, the underlying wall color
can bleed through the chip and alter the visualized color, so that the viewer
no longer sees the standard color, but sees something different. App. Br. 3;
Winter 144. Thus, Appellant asserts, because the paint chip of Winter is
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opaque, the grayscale panel of Cojic behind the Winter paint chip would not
show or bleed through the Winter paint chip and would not alter the paint
chip color. App. Br. 4.
We are unpersuaded by this argument. As noted by the Examiner,
Winter does not mention or disclose the opacity of the paint used in the chip.
Ans. 6. Nor does Appellant direct us to any portion of Winter or other
evidence that supports its assertion. Appellant, at most, has provided mere
attorney arguments and such arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979). Moreover, the Examiner’s
rejection is based on a combination of teachings and these arguments do not
address the Examiner’s reasons for combining the cited art.
Appellant argues Cojic does not teach anything attached to or
displayed on a wall. App. Br. 4. According to Appellant, Cojic teaches
against placing the grayscale primers against the wall for visualization
because it is not used in any way to compare paint on a wall against paint on
the primer panel. App. Br. 5.
We find these arguments also unavailing. As noted by the Examiner.
Cojic’s primer selection system is used to determine color development as a
function of underlying primer. Ans. 8; Colic, col. 1,11. 14—23. Appellant
has not adequately explained why one skilled in the art would not have been
capable of adapting Colic’s primer selection system for use in the structure
of Winter if one skilled in the art is desirous of viewing how the paint is
affected by a diversity of primers. Appellant has not adequately explained
why one skilled in the art would not have been capable of providing the
structure of the combined teachings on a wall when both Winter and Cojic
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disclose placing the respective devices on a surface for evaluation by the
viewer. Winter 144 (disclosing application of the structure on a wall);
Colic, col. 3,11. 48—53 (discussing application of the primer selection system
on a panel). Again, Appellant’s arguments do not address the combination
of references as presented by the Examiner.
Appellant argues that combining the teachings of the cited art would
destroy the utility of each reference and frustrate their respective purposes.
App. Br. 5—6. Specifically, Appellant argues that using Cojic’s grayscale
panel with Winter’s opaque paint chip would destroy the utility of the Cojic
panel of visualizing a selected paint at less than half the film thickness of
complete hide. App. Br. 5; Cojic col. 1,11. 14—17. On the other hand,
Appellant argues inserting the grayscale panel of Cojic between the Winter
device and the wall would prevent the Winter device from adhesively
attaching to the wall, thus destroying its utility. App. Br. 5; Winter || 10,
44.
We also find these arguments unavailing for the reasons provided by
the Examiner. Ans. 9—10.
Appellant’s arguments above are premised on Winter’s paint being
opaque. We have addressed the issue of the opaqueness of Winter’s paint
above.
Appellant’s arguments are also premised on bodily incorporation and
are not focused on the Examiner’s reason for combining the cited art. “The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference. . . .
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
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425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
As noted by the Examiner, both Winter and Cojic disclose the use of a
transparent/translucent layer which is painted on one side. Final Act. 10—11;
Winter Figure 4a, Tflf 10, 36, 44; Cojic col. 3,11. 48—66. The Examiner finds
it would have been obvious to one of ordinary skill in the art to modify the
structure of Winter by incorporating Cojic’s primer patches behind Winter’s
painted transparent sheet for the purpose of allowing the viewer to choose a
primer which affords the intended topcoat the optimal color development.
Final Act. 11; Cojic, col. 1,11. 14—17. Thus, the Examiner provided a
reasonable basis for one skilled in the art to arrive to the claimed invention
from the cited art. Appellant has not adequately explained how combining
the teachings would destroy the purpose of both Winter and Cojic of
assisting a viewer in selecting the appropriate shade of paint. Winter 12;
Cojic, col. 1,11. 18-23.
While Appellant argues the transparent plastic film of Winter is to
permit the observer to view the glossy finish of the paint through the
transparent film, Winter also contemplates alternatively directly viewing the
surface of the paint. App. Br. 6; Winter || 36, 37.
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Claim 32
Claim 32 requires that the plurality of different primer coating patches
of a size to cover at least 80% of a front or back surface of the transparent or
translucent sheet.
The Examiner contends that Appellant has not shown the criticality of
covering a surface of the translucent/transparent sheet as claimed. Ans. 12.
Appellant argues the size of Cojic’s primer patches is irrelevant
because Winter’s paint chip is opaque and the viewer would be unable to see
Cojic’s primer patches through the opaque paint chip of Winter. App. Br. 6.
We again refer Appellant to our previous discussion regarding the
issue of opaqueness. We further note Winter recognizes that color swatches
should be large enough for the viewer to readily evaluate and appreciate
from a distance. Winter 13. Thus, one skilled in that art would have been
capable of determining the size of the viewing area that would be best to
visually determine the desired color development.
Claim 36
Claim 36 requires that the plurality of different primer coating patches
are printed or coated on the sheet. Claim 39 requires that the primer coating
patches are fixed on the transparent or translucent sheet (note that claim 40,
dependent from claim 39, indicates that the language of claim 39 includes
coating).
We have considered Appellant’s arguments presented with respect to
claims 36 and 39 (App. Br. 7) but do not find them persuasive of reversible
error. Appellant’s arguments do not address the reasons presented by the
Examiner for combining the teachings of the cited art. Moreover, Cojic
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discloses coating the primer material on a surface. Cojic, col. 3,11. 48—53.
Given that Cojic discloses placing the painted translucent sheet over the
primer material {id. at col. 3,11. 64—65), Appellant has not adequately
explained why one skilled in the art, using no more than ordinary creativity,
would not have been capable of coating the primer material onto a surface of
the translucent material. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”); see In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(skill is presumed on the part of one of ordinary skill in the art); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969).
Accordingly, we affirm the Examiner’s prior art rejection of claims
28-41 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
Alternative Reasoning in Support of the Rejection
In addition to the above, the Examiner presents alternative reasoning
for determining claims 28-41 are unpatentable over the combination of
Winter and Cojic. See Ans. 11. The portion of Colic relied upon by the
Examiner in support of this alternative reasoning was pointed out to
Appellant in the Final Action. Compare Final Act. 11 (citing to Cojic, col.
3,11. 48—66) with Ans. 11.
Appellant does not dispute the merits of the alternative reasoning
advanced by the Examiner. See Reply Brief dated October 11, 2016.
Instead, Appellant argues this is a new issue raised for the first time by the
Examiner because the only stated ground of rejection in the final rejection is
based on Winter in view of Cojic, not Cojic in view of Winter. Reply Br. 4.
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Thus, Appellant contends it is not proper to insert a new argument at this
stage of the proceedings. Id. We take this to mean that Appellant considers
the Examiner’s alternative reasoning to be a new ground of rejection.
An obviousness analysis based on the collective teachings of the
references does not depend on the order in which the references are listed in
the statement of the rejection. See In re Bush, 296 F.2d 491, 496 (CCPA
1961):
In a case of this type where a rejection is predicated on
two references each containing pertinent disclosure which has
been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition, that the
rejection is stated to be on A in view of B instead of on B in
view of A, or to term one reference primary and the other
secondary.
We detect no error, nor does Appellant point to any error, in the
Examiner’s position that one skilled in the art would have modified Cojic’s
primer selection system by placing it on a wall to get an idea of how a paint
color of Cojic may appear on a wall. Ans. 11; Reply Br. 4.
While Appellant argues that the Examiner’s alternative reasoning is a
new issue (new ground), Appellant did not avail itself of the provision set
forth in 37 C.F.R. § 41.40 (a), which states:
Any request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an
examiner’s answer must be by way of a petition to the Director
under § 1.181 of this title filed within two months from the
entry of the examiner’s answer and before the filing of any
reply brief. Failure of appellant to timely file such a petition
will constitute a waiver of any arguments that a rejection must
be designated as a new ground of rejection.
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Instead, Appellant filed a Reply Brief in timely fashion without presenting
substantive arguments addressing the disputed new issue (rejection).
Therefore, Appellant waived any arguments that the Examiner’s alternative
line of reasoning in support of the rejection based on the combination of
Colic and Winter is a new ground of rejection.
Accordingly, we affirm the Examiner’s rejection claims 28—41 under
35 U.S.C. § 103(a) over the combined teachings of Winter and Cojic for the
alternative reasons presented by the Examiner.
DECISION
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph is
reversed.
The Examiner’s prior art rejection of claims 28-41 under 35 U.S.C.
§ 103(a) over Winter and Cojic is affirmed.
TIME PERIOD
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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