Ex Parte Asgari

Patent Trial and Appeal Board

Feb 27, 2015

12887723 (P.T.A.B. Feb. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SEPEHR ASGARI
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Appeal 2013-002163
Application 12/887,723
Technology Center 3600
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Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.

GEIER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s rejection of Claims 1–12. App. Br. at 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2013-002163
Application 12/887,723

2
CLAIMED SUBJECT MATTER

The claimed subject matter relates to “systems and methods for
marking pavement, such as asphalt used in making roads.” Spec. ¶ 1. Claim
1 is the only independent claim and recites:
1. A method of marking pavement, comprising the steps of:
applying a first layer of liquid tar to the pavement, the
layer having a thickness of approximately between 0.01 inch
and 0.1 inch, and a width of approximately between one inch
and six inches;
placing a layer of rubber on top of and centered on the
layer of tar, the layer of rubber having at least one vertically-
oriented throughhole sized to allow liquid tar to flow
therethrough;
applying a second layer of liquid tar and reflective
elements on top of the layer of rubber sheet;
allowing enough time to pass for the first and second
layers of tar to cool and become solidified;
adhering paper to a top surface of the second layer of tar
and/or reflective elements; and
painting over the paper and an adjacent portion of the
pavement to thereby form a painted marking.

REJECTIONS ON APPEAL
The Examiner rejected Claims 1–5 and 7–12 under 35 U.S.C. § 103(a)
over Eigenmann (US 4,071,384; iss. Jan. 31, 1978) and Pacey (US
2010/0279064 A1; pub. Nov. 4, 2010).

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The Examiner also rejected Claim 6 under 35 U.S.C. § 103(a) over
Eigenmann, Pacey, and Robinson (GB 2,437,085 A; pub. Oct. 17, 2007).
1

ANALYSIS
Rejection of Claims 1–7 as
unpatentable over Eigenmann and Pacey
With respect to Claim 1, Appellant argues that Examiner erred in his
rejection because neither Eigenmann nor Pacey discloses “adhering paper to
a top surface of the second layer of tar and/or reflective elements” or
“painting over the paper and an adjacent portion of the pavement to thereby
form a painted marking.” App. Br. at 9–10. We disagree.
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991). “[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). In analyzing the issues in this Appeal,
we review the cited art for not only what it discloses, but also for what it
fairly suggests to one of ordinary skill in the art. See KSR Int’l., 550 U.S. at
418.
The Appellant’s arguments regarding the “adhering paper . . .”
limitation focus only on Pacey’s disclosure that “paint can be applied by . . .

1
Appellant has appealed this rejection only on the basis that Claim 1 is not
obvious. App. Br. at 13. As such, this Decision does not separately address
this rejection.
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Application 12/887,723

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stenciling” and on the Appellant’s submitted definition of “stencil.”
2
See
App. Br. at 10 (quoting Pacey ¶ 28). As identified by the Examiner,
however, Pacey discloses more than that. See Ans. at 5–6 (citing Pacey ¶ 6);
see also Non-Final Office Act., mailed Feb. 23, 2012 (hereinafter “Non-
Final Act.”) at 2 (citing Pacey ¶¶ 20–23, 28–31). Pacey discloses various
painting methods which may use various materials (including stencils) to
create a design. Pacey ¶ 28
3
; see also Non-Final Act. 2 (citing Pacey ¶¶ 28–
29). We agree with the Examiner that Pacey would teach or suggest to the
skilled artisan that paper may be used to create a road marking. See Non-
Final Act. at 2; Ans. at 5. Pacey also discloses that “the carrier layer [which
receives the paint] can be pressure sensitive adhesive.” Pacey ¶ 22; see
Non-Final Act. at 2. Per Appellant’s specification, “adhering” includes
simply placing the paper on a substrate having adhesive properties. See
Spec. ¶ 6 (“White paper may be applied to the side of the rubber facing up,
and the tar [the substrate for the paint] adheres the paper to the rubber.”).
From these disclosures, we agree with the Examiner that one of skill in the
art would understand Pacey to teach or suggest “adhering paper to a top
surface of the second layer of tar and/or reflective elements.” See Non-Final
Act.at 2; Ans. at 5.

2
Appellant provides a definition of “stencil” from “Dictionary.com” and
also contends that “stenciling is not adhering paper to a top surface” and that
“stenciling does not involve adhering the stencil to the road surface.” App.
Br. 10.
3
Pacey discloses that: “The paint station can be composed of a series of
spray heads that spray paint on the carrier layer. . . . For images that require
various colors such as disabled logos, warning signs, corporate logos, and
the like, the paint can be applied by screen printing, airbrush spraying,
stenciling, printed or other similar methods.” Pacey ¶ 28.
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With respect to the “painting over the paper and an adjacent portion of
the pavement . . .” limitation, Appellant argues that a stencil “is not capable
of masking an area surrounded by paint because it is not possible to support
a mask over the central area while still allowing paint to be deposited all
around the central area.” App. Br. at 10. Appellant’s arguments again focus
only on Pacey’s disclosure of a stencil and Appellant’s submitted definition
of “stencil.” See id. Appellant’s arguments again fail to account for Pacey’s
full disclosure and the implications one of ordinary skill in the art would
draw from that disclosure. As described above, Pacey discloses a variety of
methods of painting markings, logos, words, lines and other information,
including, but not limited, to stencils. See Pacey ¶¶ 6, 28; Non-Final Act. at
2 (citing Pacey ¶¶ 28–29). We again agree with the Examiner that one of
skill in the art would understand Pacey’s disclosures of painting methods to
include not just painting through holes in a stencil, but also “painting over
the paper and an adjacent portion of the pavement to thereby form a painted
marking.” See Non-Final Act. at 2; Ans. at 5.
In sum, in reaching his conclusion that Claim 1 is obvious, the
Examiner made reasonable findings regarding what Pacey would teach or
suggest to one of skill in the art. (“It would be well within the skill of one in
the art to spray a tar based road paint and glass beads onto the carrier layer
(20), provide stencil or the like on the road paint/beads, such that an
additional color and additional reflective/anti-slip particles could be painted
over the stencil and surrounding area of roadway/sidewalk to form logos,
and other useful information.” (Ans. 5)); see also Non-Final Act. at 2 (“[I]t
would have been obvious to one of ordinary skill in the art at the time the
invention was made to provide the method of marking a roadway of
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Eigenmann with the steps of applying a carrier sheet to the roadway,
painting said carrier sheet using a stencil or the like, as taught by Pacey, in
order to mark a roadway with minimal disruption to traffic.”). Appellant’s
arguments, focused on only one aspect of Pacey’s disclosures, have not
persuaded us that these findings and conclusions were in error. For all the
reasons set forth above, we affirm the Examiner’s rejection of Claim 1.
Appellant does not separately argue the patentability of dependent
Claims 2–7. See App. Br. 10–13. Therefore, we also affirm the Examiner’s
rejection of Claims 2–7. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Rejection of Claim 8 as
unpatentable over Eigenmann and Pacey
Claim 8 depends from Claim 1 and adds the limitation “wherein the
paint surrounds the paper on the pavement.” Appellant’s arguments
regarding Claim 8 are identical to those presented with respect to the Claim
1 limitation of “painting over the paper and an adjacent portion of the
pavement to thereby form a painted marking.” See App. Br. at 10–11. As
such, our reasoning with respect to Claim 1 also applies here and we
therefore affirm the Examiner’s rejection of Claim 8.
Rejection of Claims 9–12 as
unpatentable over Eigenmann and Pacey
Claim 9 depends from Claim 1 and adds “the further step of allowing
weather conditions and pressure from vehicular traffic to cause the paper to
disintegrate or peel off the top surface of the second layer.” In rejecting
Claim 9, the Examiner states that “Pacey teaches . . . using stencils or the
like, which conveniently could be removed by weather or traffic.” Non-Final
Act. at 3. The Examiner did not offer additional reasoning in his Answer,
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indicating only that “it does not seem to be patentable if nothing is done to
remove the stencil. Since the stencil is made from paper, it will naturally
disintegrate over time.” Ans. at 6.
Appellant argues that “[t]he cited references are completely silent as
to the subject matter of claim 9, and it is submitted that claim 9 is
accordingly in condition for allowance.” App. Br. at 11. With respect to the
Examiner’s answer, Appellant notes that “[t]he Examiner cites no authority
to support” his statement that “‘it does not seem to be patentable if nothing
is done to remove the stencil.’” Reply Br. at 8. We agree with the Appellant.
The Examiner’s obviousness rejection must be based on “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l., 550 U.S. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here we find that the
Examiner’s conclusory statements are not well-grounded in the record. We
find no disclosure in Pacey regarding leaving anything on the marking or the
roadway to be removed by weather or traffic. The Examiner’s justification
that the limitation of Claim 9 “does not seem to be patentable” is not
grounded in fact or law. We therefore conclude that the Examiner did not
meet his burden and reverse the Examiner’s rejection of Claim 9.
Claims 10, 11, and 12 all depend directly or indirectly from Claim 9.
For that reason, we also reverse the Examiner’s rejection of Claims 10–12.

CONCLUSION
We conclude the Examiner did not err in rejecting Claims 1–8 under
35 U.S.C. § 103(a).
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We conclude the Examiner erred in rejecting Claims 9–12 under 35
U.S.C. § 103(a).
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).
DECISION
The decision of the Examiner to reject Claims 1–8 is affirmed.
The decision of the Examiner to reject Claims 9–12 is reversed.

AFFIRMED-IN-PART

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