Ex Parte Walther et al

Patent Trial and Appeal Board

Mar 22, 2018

13961631 (P.T.A.B. Mar. 22, 2018)

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.
13/961,631 08/07/2013 Linda Walther BPMDL0067LW (10821U) 7152
27939 7590
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
YIP, WINNIE S
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
03/22/2018 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 LINDA WALTHER, ETHAN ABERNATHEY, and
MICHAEL TURTURRO
Appeal 2017-006581
Application 13/961,6311
Technology Center 3600
Before MICHAEL C. ASTORINO, SHEILA F. McSHANE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner’s decision rejecting claims 1—16 and 21—24. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, “[t]he real party in interest is Medline
Industries Inc.” Appeal Br. 2.
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Application 13/961,631
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants’ invention “relates generally to medical devices, and
more particularly to crutches.” Spec. 12. More specifically, the invention
relates to an autographable crutch having a marking receiving coating. Id. at
Abstract, 117.
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and reproduced below.
1. A device, comprising:
a crutch comprising one or more vertical crutch columns,
a hand grip, and a body-engaging beam; and
a marking receiving coating at least partially covering the
one or more vertical crutch columns, the marking
receiving coating to accept a marking from a
marking instrument.
Rejections
I. Claims 1—3 and 6—13 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated Johnson (US 2006/0096627 Al, published
May 11,2006).
II. Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson.
III. Claims 14—16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson and Conte (US 6,026,833, issued Feb. 22, 2000).
IV. Claims 1—13 and 21—24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson and Schilo (US 2010/0320102 Al, published
Dec. 23,2010).
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Application 13/961,631
V. Claims 1—13 and 21—24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson and Wood (US 2011/0011517 Al, published
Jan. 20, 2011).
VI. Claims 14—16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson, Schilo or Wood, and Conte.2
ANALYSIS
Rejection I
Independent claim 1 and dependent claims 6—12
The Appellants argue that the Examiner erred in finding that Johnson
discloses a “marking receiving coating to accept a marking from a marking
instrument,” as required by claim 1. See Appeal Br. 12—17; Reply Br. 10—
11. The Appellants’ argument is not persuasive of Examiner error.
At the outset, we note that the Specification explains that a “marking
receiving coating” may have certain characteristics depending on the
embodiment. See Spec. 117. The Specification describes that “a ‘marking
receiving coating’ is a special coating configured to receive markings from a
marking instrument where those markings dry quickly, are at least semi­
permanent, and are not readily altered mechanically by, for example,
smearing or smudging, unless otherwise designated in limited
embodiments.” Id. For example, the Specification describes an embodiment
where the “marking receiving coating can be adapted so that pencil markings
2 The Appellants assert that this ground of rejection is based on “Johnson
combined with Schilo, further combined with Wood, and still further
combined with Conte.” Appeal Br. 3. However, this ground of rejection is
based on Johnson, combined with Schilo or Wood, and further combined
with Conte. Final Act. 10—11.
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Application 13/961,631
are at least semi-permanent and do not smudge readily.” Id. 121. The
Specification also explains that markings may come from various
instruments (e.g., a pen, an ink pen, a marker, a dry erase marker, indelible
or non-permanent marker, and chalk). Spec. Tflf 18, 21, 22, 33. Moreover,
the Specification describes that the marking receiving coating may take
various forms, including an example where the marking receiving coating
comprises paint. Id. 130; see also Appeal Br., Claims App. (claim 2).
Turning to the Examiner’s rejection of claim 1, the Examiner finds
that Johnson discloses a crutch having a frame and “a coating[, which] is
power sprayed or painted over the frame of the crutch.” Final Act. 2—3.
Indeed, Johnson describes, “[i]n addition to selecting a particular design to
enhance the aesthetic appearance of the underarm cover and hand grip cover,
the crutch can be painted or powder coated with a particular color to better
coordinate with the selected design for the covers.” Johnson 148 (emphasis
added).
In sum, the Specification describes an embodiment where the marking
receiving coating comprises paint, and Johnson discloses coating a crutch
with paint. Accordingly, the Examiner has a sound basis for belief that the
paint on Johnson’s crutch is a “marking receiving coating” as required by
claim 1. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“When the PTO
shows [a] sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.”); see also In re Best, 562 F.2d 1252, 1254—55 (CCPA 1977)
(explaining that where claimed and prior art products are identical or
substantially identical, the burden is upon appellants to prove that the prior
art products do not inherently possess the characteristics of the claimed
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product because the PTO is unable to perform the necessary comparative
testing). In other words, there is a sound basis for belief that the paint on
Johnson’s crutch may receive markings from various marking instruments,
such as an ink pen, a marker, and/or a pencil. See Ans. 13, 14—15.
The Appellants acknowledge that Johnson discloses that its crutch is
painted, but argue that “contrary to the assertions of the Office Action,
Johnson’s paint is not a marking receiving paint.” Appeal Br. 21 (citing
Johnson 148). The Appellants assert that Johnson disposes paint either
under or in the powder coat. See id. The Appellants’ argument is not
persuasive of Examiner error.
First, the Appellants fail to offer a cogent explanation how Johnson
discloses disposing paint under the powder coat. And, we disagree with the
Appellants that Johnson discloses disposing paint under the powder coat.
Second, although Johnson discloses that the powder coat may have a color
determined by pigment (Johnson | 50), Johnson’s disclosure is not solely
directed to a powder coat with a pigment. As discussed above, Johnson
explains that “the crutch can be painted or powder coated with a particular
color.” Id. at 148 (emphasis added). Here, the term “or” is a disjunctive
term that indicates that the crutch can be “powder coated” or “painted.”
The Appellants allege that Johnson’s disclosure lacks words related to
“marking,” such as, “decorative” and “message.” Appeal Br. 13—16. The
Appellants contend that the lack of the terms, and those like them, suggests
that Johnson’s coating is not designed to accept markings. See id. However,
this contention does not explain how Johnson’s paint does not possess the
ability to receive a marking from a marking instrument, such as, an ink pen,
a marker, and/or a pencil.
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The Appellants contend that Johnson’s powder coating is not designed
to be a “marking receiving coating to accept a marking from a marking
instrument,” as required by claim 1. See Appeal Br. 13—17 (citing Johnson
41, 49). The Appellants’ contention is persuasive. In this case, the
Examiner fails to offer a sound basis for believing that Johnson’s powder
coating corresponds to the “marking receiving coating to accept a marking
from a marking instrument,” as required by claim 1. However, with regard
to the rejection of claim 1, this is a harmless error. As discussed above,
Johnson’s crutch is coated with a paint. And, we determine that the
Examiner’s finding that Johnson’s paint corresponds to the “marking
receiving coating to accept a marking from a marking instrument,” as
required by claim 1, is adequately supported.
Thus, we sustain the Examiner’s rejection of independent claim 1 as
anticipated by Johnson. We also sustain the rejection of claims 6—12, which
depend either directly or indirectly from claim 1, as they are not separately
argued. See Appeal Br. 12.
Dependent claim 2
Claim 2, which depends from claim 1, recites “the marking receiving
coating comprising paint.” Appeal Br., Claims App. For the reasons
discussed above, we sustain the Examiner’s rejection of dependent claim 2
as anticipated by Johnson.
Dependent claim 3
Claim 3, which depends from claim 2, recites “the paint comprising
epoxy.” Id. Johnson does not disclose that its paint includes epoxy. See id.
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at 23. Thus, we do not sustain the Examiner’s rejection of dependent claim
3 as anticipated by Johnson.
Dependent claim 13
Claim 13, which depends from claims 1 and 11, requires the marking
receiving coating to receive the marking from an ink pen without smearing.
See Appeal Br., Claims App. The Appellants argue that Johnson does not
teach “[sjmearing, smears, or other alterations to markings.” Id. at 26. The
Appellants’ argument is not persuasive of Examiner error. As discussed
above, we determine that the paint on Johnson’s crutch may receive
markings from various marking instruments, such as an ink pen. See
Ans. 13. And, the Appellants’ argument does not address how Johnson’s
paint does not inherently possess the ability to receive a marking from an ink
pen without smearing. Thus, we sustain the Examiner’s rejection of
dependent claim 13 as anticipated by Johnson.
Rejection II
The Examiner finds that Johnson fails to disclose a marking receiving
coating paint with a matte finish or an enamel, as required by claims 4 and 5,
respectively. See Final Act. 4. Indeed, although Johnson discloses a
marking receiving coating comprising a paint (see Johnson 148), Johnson is
silent as to whether the paint comprises a matte finish or an enamel.
Additionally, the Examiner’s conclusion of obviousness for claims 4
and 5 is based on Johnson’s disclosure in paragraph 50, which describes
materials used for powder coating (e.g., epoxy, urethane resin). See Final
Act. 4—5; see also Ans. 19-20. As discussed above, we determine that the
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Examiner fails to offer a sound basis for believing that Johnson’s powder
coating corresponds to the “marking receiving coating to accept a marking
from a marking instrument,” as required by claim 1. As such, the
Examiner’s rejection of claims 4 and 5 is not adequately supported.
Thus, we do not sustain the Examiner’s rejection of claims 4 and 5 as
unpatentable over Johnson.
Rejection III
The Appellants do not separately argue the Examiner’s rejection of
claims 14—16 as anticipated by Johnson (Rejection I). See Appeal Br. 12.
Notably, claim 14 depends from claim 1, and claims 15 and 16 depend from
claim 14. Id. at Claims App. As discussed above, we have sustained the
Examiner’s rejection of claim 1 as anticipated by Johnson (Rejection I).
Thus, we sustain the Examiner’s rejection of claims 14—16 as
unpatentable over Johnson and Conte (Rejection III).
Rejections IV and V
Claim Interpretation
The Examiner, in the alternative, construes claims 1—13 and 21—24, as
requiring “a combination of a crutch with a marking instrument.” Final
Act. 8. We disagree with this construction. Claim 1 is directed to a device,
including a crutch and a marking receiving coating. See Appeal Br., Claims
App. Claim 1 recites “a marking receiving coating ... to accept a marking
from a marking instrument” {id.), however this recitation is directed to the
function of the “marking receiving coating,” i.e., “to accept a marking from
a marking instrument.” Claim 1, and this recitation specifically, does not
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call for a mark on the marking receiving coating or a marking instrument.
However, other claims call for a mark on the marking receiving coating
(e.g., claim 21), but not a marking instrument. See id.
Johnson in view of Schilo (Rejection IV)
The Appellants argue that the combined teachings of Johnson and
Schilo would not have resulted in the subject matter of claim 1. See Appeal
Br. 17—19. The Appellants’ argument is based on a premise that “it is not
clear under the disclosed circumstances how Schilo’s footwear or coating
would be combined with Johnson’s protective coating to achieve
Appellants’] invention.” Id. at 18; see also Reply Br. 11—12. The
Appellants’ argument is not persuasive of Examiner error as the argument is
not responsive to the Examiner’s rejection. The Examiner does not combine
Schilo’s footwear or coating with Johnson’s protective coating; rather, the
rejection adds markings, as taught by Schilo, to the paint (i.e., marking
receiving coating) on Johnson’s crutch to let a person design an article as
desired. See Final Act. 6—8; see also Ans. 16, 17 (“One skill[ed] in the art
would simply add a marking on a coated surface on the crutch of Johnson by
a marker as taught by Schilo.”). Here, we determine that the Examiner’s
conclusion of obviousness articulates reasoning with rational underpinning.
Furthermore, we note that a disclosure that anticipates under 35
U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for
anticipation is the epitome of obviousness. See In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
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Thus, we sustain the Examiner’s rejection of claim 1 as unpatentable
over Johnson and Schilo. We also sustain the rejection of claims 6—12,
which depend either directly or indirectly from claim 1, as they are not
separately argued. See Appeal Br. 12.
Further, we note that the Appellants’ arguments for the rejection of
claims 2 and 13 are similar to the unpersuasive arguments presented for the
rejections of claim 1 (Rejection IV) and claim 13 (Rejection I), respectively.
Appeal Br. 21—22, 26. For similar reasons as discussed above, we sustain
the Examiner’s rejection of claims 2 and 13 as unpatentable over Johnson
and Schilo.
The rationales for the Examiner’s rejection of claims 3—5 as
unpatentable over Johnson and Schilo appear to be substantially similar to
the rationales for the Examiner’s rejection of claim 3 as anticipated by
Johnson (Rejection I) and/or claims 4 and 5 as unpatentable over Johnson
(Rejection II). Compare Final Act. 3, 4—5 with id. at 6—8. For similar
reasons as discussed above, we do not sustain the rejection of claims 3—5 as
unpatentable over Johnson and Schilo.
Johnson in view of Wood (Rejection V)
The rationale for the Examiner’s rejection of claims 1—13 and 21—24
as unpatentable over Johnson and Wood is substantially similar to the
rationale for the Examiner’s rejection of claims 1—13 and 21—24 as
unpatentable over Johnson and Schilo (Rejection IV). Compare Final Act.
6—8 with id. at 8—10. As such, we understand that the Examiner proposes to
add markings, as taught by Wood, to the paint (i.e., marking receiving
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Application 13/961,631
coating) on Johnson’s crutch to let a person design an article as desired. See
id. at 8—10; see also Ans. 17—19.
As pointed out by the Appellants, Wood teaches marking a shrink-
film structure, then applying heat to the marked shrink-film to shrink it
around an article (e.g., a crutch). Appeal Br. 19; see also Wood 111. Here,
the Examiner’s rationale is not adequately supported because Wood does not
teach marking a coating on an object; rather Wood teaches marking an
intermediary structure, which later covers an object after shrinking the
intermediary structure with heat. See Appeal Br. 19-20; Wood Figs. 3, 6.
As such, we determine that the Examiner’s rationale for modifying
Johnson’s coating to include a mark, as taught by Wood, lacks rational
underpinning.
However, as discussed above, we have sustained the rejection of
claims 1, 2, and 6—13 as anticipated by Johnson alone. And, we note that a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See Pearson, 494 F.2d at 1402; and In re Fracalossi, 681 F.2d
at 794. As such, for this reason, the Examiner’s error is harmless for the
rejection of claims 1, 2, and 6—13 over an obviousness rejection that includes
Johnson. However, given the failure to adequately support a combination of
Johnson and Wood discussed above, and with Wood relied upon for the
teaching of the “marking” claim limitation, the rejection of claims 21—24
cannot stand.
Thus, we sustain the Examiner’s rejection of claim 1, and dependent
claims 6—12, as unpatentable over Johnson and Wood. We do not sustain
the Examiner’s rejection of claims 21—24 as unpatentable over Johnson and
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Wood. Further, we note that the Appellants’ arguments for the rejection of
claims 2 and 13 are similar to the unpersuasive arguments presented for the
rejection of claims 1 and 13 (Rejection I), respectively. See Appeal Br. 22,
26—27. For similar reasons as discussed above, we sustain the Examiner’s
rejection of claims 2 and 13 as unpatentable over Johnson and Wood.
The rationales for the Examiner’s rejection of claims 3—5 as
unpatentable over Johnson and Wood appear to be substantially similar to
the rationales for the Examiner’s rejection of claim 3 as anticipated by
Johnson (Rejection I) and/or claims 4 and 5 as unpatentable over Johnson
(Rejection II). Compare Final Act. 3, 4—5 with id. at 8—10. For similar
reasons as discussed above, we do not sustain the rejection of claims 3—5 as
unpatentable over Johnson and Wood.
Rejection VI
The Appellants do not separately argue the Examiner’s rejection of
claims 14—16 as unpatentable over Johnson, Schilo or Wood, and Conte.
See Appeal Br. 12. Claim 14 depends from claim 1, and claims 15 and 16
depend from claim 14. Id. at Claims App. As discussed above, we have
sustained the Examiner’s rejection of claim 1 as unpatentable over Johnson
and Schilo (Rejection IV) and as unpatentable over Johnson and Wood
(Rejection V).
Thus, we sustain the Examiner’s rejection of claims 14—16 as
unpatentable over Johnson, Schilo or Wood, and Conte.
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DECISION
We AFFIRM the Examiner’s decision rejecting:
claims 1, 2, and 6—13 under 35 U.S.C. § 102(a)(1) as
anticipated Johnson (Rejection I);
claims 14—16 under 35 U.S.C. § 103 as unpatentable over
Johnson and Conte (Rejection III);
claims 1, 2, 6—13, and 21—24 under 35 U.S.C. § 103 as
unpatentable over Johnson and Schilo (Rejection IV);
claims 1, 2, and 6—13 under 35 U.S.C. § 103 as unpatentable
over Johnson and Wood (Rejection V); and
claims 14—16 under 35 U.S.C. § 103 as unpatentable over
Johnson, Schilo or Wood, and Conte (Rejection VI).
We REVERSE the Examiner’s decision rejecting:
claim 3 under 35 U.S.C. § 102(a)(1) as anticipated Johnson
(Rejection I);
claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over
Johnson (Rejection II);
claims 3—5 under 35 U.S.C. § 103 as unpatentable over Johnson
and Schilo (Rejection IV);
claims 3—5 and 21—24 under 35 U.S.C. § 103 as unpatentable
over Johnson and Wood (Rejection V).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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