Ex Parte Bauer

Board of Patent Appeals and Interferences

Apr 5, 2012

10926418 (B.P.A.I. Apr. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER BAUER
____________

Appeal 2010-011141
Application 10/926,418
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-011141
Application 10/926,418

2
DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-7, 9-12, and 18.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Claims 1, 2, 9, and 11 are representative of the invention and are reproduced
below from the Claims Appendix to the Appeal Brief:
1. A housing of a household appliance, comprising walls bounding
the housing, and a colored plastic film at least locally covering said walls.

2. The housing according to claim 1, wherein said film consists of a
thermoplastic material.

9. A method for applying a decoration to a household appliance having walls,
which comprises the steps of producing a plastic film bearing the decoration,
and applying the plastic film to the walls of the household appliance.

11. The method according to claim 9, which comprises applying the film to
individual wall elements of the appliance, and subsequently fitting the wall
elements provided with film to the appliance.

Appellant requests review of the following grounds of rejection (App. Br. 4-
5):
1. claims 1-4, 6 and 9-11 under 35 U.S.C. §102(e) as anticipated
by Benitz3 (Ans.4 3);

1 Final Office Action mailed Aug. 19, 2009.
2 Appeal Brief filed Dec. 7, 2009, as modified by the Supplemental Appeal Brief
filed Jan. 7, 2010 (referred to collectively as “App. Br.”).
3 US 2003/0008096 A1, pub. Jan. 09, 2003.
4 Examiner’s Answer mailed Apr. 9, 2010.
Appeal 2010-011141
Application 10/926,418

3
2. claims 5, 7 and 12 under 35 U.S.C. §103(a) as unpatentable over
Benitz in view of Knop5 (Ans. 3-4); and
3. claim 18 under 35 U.S.C. §103(a) as unpatentable over Benitz in view
of Knop (Ans. 4-5).
Appellant presents separate arguments in support of patentability of
independent claims 1 and 9, as well as dependent claims 2 and 11. (See App. Br.
5-6.) The remaining claims subject to the first ground of rejection, all of which are
dependent, stand or fall with either independent claim 1 or claim 9. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010). Appellant’s traversal of the second and third grounds of
rejection is based on the same arguments made in support of patentability of claims
1 and 9. (See App. Br. 6-7.) More specifically, Appellant’s arguments in support
of patentability of appealed claims 1-7, 9-12, and 18 raise the following issues for
our consideration:
Did the Examiner reversibly err in finding that (1) Benitz discloses a
“plastic” film as recited in claims 1 and 9, (2) the “film” as recited in claim 2 reads
on Benitz’ multilayer structure, and (3) Benitz teaches a method which includes a
step of applying the film to individual wall elements of the appliance prior to
fitting the wall elements to the appliance as recited in claim 11?
We answer each of these questions in the negative for the reasons explained
below.
As found by the Examiner (Ans. 3), Benitz discloses a decorative magnetic
facing material comprising a multi-layered construction, wherein the layers include
a bottom layer of flexible, thermoplastic material and a layer of vinyl having a
design or pattern imprinted directly thereon (Benitz ¶ [0028]).

5 US 5,538,576, issued July 23, 1996.
Appeal 2010-011141
Application 10/926,418

4
Appellant contends one of ordinary skill in the art would understand the
claim term “plastic” as referring to a material that “is not only pliable, but []
amenable to shape modifications such as by stretching, temperature variation or the
like.” (App. Br. 5.) Appellant argues Benitz’ “‘thermoplastic permanent magnet
material’ is not malleable or stretchable and is thus not ‘plastic’ as defined in claim
1” (id. at 5) and claim 9 (id. at 6).
Because Appellant’s argument lacks evidentiary support, it is not persuasive
of error in the Examiner’s finding of anticipation as to appealed claims 1 and 9.
Appellant has not directed us to, nor do we find, any evidence which supports a
narrow interpretation of the claim term “plastic” as limited to a stretchable
material. Moreover, even if we were to adopt Appellant’s proposed interpretation
of the claim term “plastic,” Appellant has not directed us to evidence which
supports a finding that Benitz’ “flexible” thermoplastic permanent magnet material
(Benitz ¶ [0028]) is not “plastic.” The Specification discloses that “[t]he film
preferably consists of a thermoplastic material.” However, Appellant has not
directed us to portions of the Specification which provide a description of a
“thermoplastic material” that distinguishes over the thermoplastic material of
Benitz. The argument by counsel cannot take the place of evidence. In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997).
Appellant argues the claim phrase “consists of” in appealed claim 2 limits
the colored plastic film of claim 1 to a thermoplastic material which cannot be
anticipated by Benitz’ multilayer structure. (App. Br. 5-6.)
We have reviewed Appellant’s claims and Specification, but do not find any
basis for interpreting the “film” as recited in appealed claim 2 as limited to a single
layer structure. The layers of Benitz’ structure are made from a thermoplastic
magnetic material and vinyl (Benitz ¶ [0028]). With the exception of the argument
Appeal 2010-011141
Application 10/926,418

5
discussed above in connection with claims 1 and 9, Appellant has not explained
why Benitz’ thermoplastic magnetic material and vinyl are not “thermoplastic
material” within the meaning of appealed claim 2. We additionally note that we
find no basis for interpreting claim 2 as precluding the presence of a design or
pattern imprinted directly on the thermoplastic material, as in the vinyl layer of
Benitz’ structure, since appealed claim 2 requires the presence of a substance
which provides color to the thermoplastic material (claim 1 (“colored plastic
film”); cf. Spec. 9:9-15 (“Films that are suitable for the purposes of the present
invention are commercially. . . . available in many different colors . . . , for
example with a decoration imitating wood grain.”)).
With respect to appealed claim 11, Appellant argues Benitz “inten[ds] to
apply the decorative facing material after the wall elements of the appliance are
assembled to the appliance” (App. Br. 6), while the claim requires applying the
film to the wall elements prior to assembly.
We agree with the Examiner’s assessment of Benitz as failing to explicitly
teach that the decorative material must be applied to assembled (or unassembled)
wall elements (Ans. 6). One of ordinary skill in the art would have recognized that
application of Benitz’ decorative material could only occur at one of two times—
before or after assembly of the wall elements. Given the limited number of
possible assembly options, we perceive no error in the Examiner’s finding of
anticipation as to claim 11. Cf. Eli Lilly and Co. v. Zenith Goldline Pharms., Inc.,
471 F.3d 1369, 1376 (Fed. Cir. 2006) (explaining that a finding of anticipation was
proper in In re Schaumann, 572 F.2d 312 (CCPA 1978) and In re Petering, 301
F.2d 676 (CCPA 1962), where the prior art “spelled out a definite and limited class
of compounds that enabled a person of ordinary skill in the art to at once envisage
each member of this limited class”).
Appeal 2010-011141
Application 10/926,418

6
In conclusion, because Appellant has failed to persuade us of reversible error
in the Examiner’s rejections of appealed claims 1-7, 9-12, and 18, we sustain all
three grounds of rejection.

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

ssl