Ex Parte Bouic

Board of Patent Appeals and Interferences

Aug 22, 2007

10121491 (B.P.A.I. Aug. 22, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILLIP J. BOUIC
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Appeal 2007-1677
Application 10/121,491
Technology Center 1700
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Decided: August 22, 2007
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
PETER F. KRATZ, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 1, 3-5, 7-11, and 16-19, which
are the only claims pending in this application. We have jurisdiction
pursuant to 35 U.S.C. § 6.
According to Appellant, the invention is directed to a masking
material for masking a swage line of an article, such as a motor vehicle, to
assist painters in masking along the swage line during painting operations
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Application 10/121,491

(Br. 2). The masking material is in the form of an elongate component
having a dark colored portion and a light colored portion, with a strip of
pressure sensitive adhesive on each surface (Br. 3). Claim 1 is illustrative of
the invention and is reproduced below:
1. A masking material for masking a swage line of an article, the
material comprising an elongate body of foam material, the body having
longitudinally extending edges on opposite sides of a longitudinally
extending body portion at least two differently coloured portions and
adhesive for attaching the material to the article, wherein the material is
constructed so that a colour contrast along one longitudinal edge of the
material provides a continuous sight line to assist locating the material along
the swage line.
The Examiner has relied on the following references as evidence of
obviousness:
Alef US 3,752,304 Aug. 14, 1973
Francis EP 0 384 626 A2 Aug. 29, 1990
Siero EP 1 025 910 A2 Aug. 09, 2000

ISSUES ON APPEAL
Claims 1, 3-5, 7-10, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Siero in view of Francis (Answer 3).
Claims 11 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Siero in view of Francis and Alef (id.).
Appellant contends that Siero does not disclose a material having at
least two differently colored portions which provide a continuous sight line
along a longitudinal edge of the material, but, rather, discloses a flat piece of
paper/plastic material with a pattern on its top surface (Br. 7; Reply Br. 2).
Appellant contends that Francis does not teach or suggest a color
contrast provided along the longitudinal edge of the foam, and thus the
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Application 10/121,491

combination of Francis with Siero would not provide a continuous sight line
on the longitudinal edge as required by claim 1 on appeal (Br. 7-8; Reply Br.
3). Appellant contends that a checkered pattern on the top surface of flat
paper would not accomplish the intended function of the claimed invention
(Reply Br. 3).
Appellant contends that there is no motivation to combine the
teachings of Siero and Francis, as the combination would not lead to a useful
article and would be “nonsensical” (Br. 8).
The Examiner contends that Siero discloses a masking material
comprising an elongated body having longitudinally extending edges on
opposite top sides of a longitudinally extending body portion with at least
two differently colored portions and an adhesive for attaching the material to
an article, where the material is constructed so that a color contrast along
one longitudinal edge provides a continuous sight line (Answer 4).
The Examiner contends that the combination of Siero and Francis is
proper since both references are directed towards masking materials used to
mark off areas for painting, while Francis teaches that foam masking
material in the shape of an elongate body was known in the painting industry
(Answer 5).
Accordingly, the issues presented in the record of this appeal are as
follows: (1) does Siero disclose or suggest an elongate body masking
material, where the body has longitudinally extending edges on opposite
sides of a longitudinally extending body portion, at least two differently
colored portions, and an adhesive for attaching the material to an article,
where the material is constructed so that a color contrast along one
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Application 10/121,491

longitudinal edge provides a continuous sight line? ; and (2) are Francis and
Siero properly combined by the Examiner?1
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been sufficiently rebutted by Appellant’s arguments. Therefore, we
AFFIRM both grounds of rejection presented in this appeal essentially for
the reasons stated in the Answer, as well as those reasons set forth below.
OPINION
We determine the following factual findings from the record in this
appeal:
(1) Siero discloses an elongate “striplike material for use in spray
painting surfaces” where the material has an adhesive at a first
side and a pattern, exemplified as a checker-type pattern, on the
second side (Abstract; ¶¶ [0001], [0008], [0009], [0010], [0013],
[0014]; and Figs. 1 and 2); and
(2) Francis discloses an elongate strip of foam with an adhesive on
one side finding particular utility as a masking material in vehicle
body workshops (Abstract; col. 2, ll. 8-9; col. 3, ll. 51-56; and col.
6, ll. 3-16).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level

1 We note that, for purposes of this appeal, Appellant only argues the
patentability of claim 1 on appeal and does not address the second rejection
of claims 11 and 16 under § 103(a) over Siero in view of Francis and Alef
(Br. 5-6). Accordingly, we limit our consideration and the issues in this
appeal to those involving claim 1.
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Application 10/121,491

of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
The analysis supporting obviousness should be made explicit and should
“identify a reason that would have prompted a person of ordinary skill in the
art to combine the elements” in the manner claimed. KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1731, 82 USPQ2d 1385, 1389 (2007).
Implicit in any review of the Examiner’s obviousness analysis is that the
claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1460 n.3, 43 USPQ2d 1030, 1035 n.3 (Fed. Cir. 1997). During
prosecution before the Examiner, claims are given their broadest reasonable
interpretation as they would ordinarily be used and understood by one of
ordinary skill in the art, taking into account any enlightenment or definition
found in the specification. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). Particular embodiments appearing
in the Specification will not be read into the claims when the claim language
is broader than such embodiments, and the Examiner should only limit the
claim based on an express disclaimer of a broader definition. See Electro
Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 1054, 32 USPQ2d
1017, 1021 (Fed. Cir. 1994); and In re Bigio, 381 F.3d 1320, 1325,
72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004).
Applying the preceding legal principles to the construction of claim 1
on appeal, we determine that the broadest reasonable interpretation of the
language of claim 1 on appeal would include an elongate foam body with
longitudinally extending edges on opposite sides of a longitudinally
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extending body portion with two differently colored portions and adhesive
on the body portion, where the foam body provides a color contrast “along”
one longitudinal edge to form a continuous sight line. The language of
claim 1 on appeal includes elongate “striplike” material, exemplified by
Appellant as a “relatively thin” tape where one edge of the tape provides a
sight line (Specification 8:6-22; see Fig. 9 and text at 17:7-20). We construe
the term “a colour [sic] contrast along one longitudinal edge” to include
color portions on the edge as well as on the top or body portion of the strip
so that the sight line would be “along” the color contrast. See the
Specification 8:24-29, where it is taught that the “differently coloured
portions may comprise discrete areas of the tape” and be “along” one or both
longitudinal edges.2 Although it is exemplified that the color portion is on
the edge (Fig. 9), we find no express disclaimer of a broader definition. See
In re Bigio, supra.
In view of our claim construction above, we determine that Siero
discloses an elongate body of material with longitudinally extending edges
on opposite sides of a longitudinally extending body portion, with two
differently colored portions and an adhesive for attaching the material to an
article, where this material is constructed so that a color contrast appears
along one longitudinal edge to provide a continuous sight line, i.e., the
checkered pattern exemplified by Siero extends to the edge of the striplike

2 This comports with the definition of “along” which means “in a line
parallel with the length or direction of” (see Webster’s New Collegiate
Dictionary 32 (G.&C. Merriam Co. 1977). Thus, we determine that “along
the longitudinal edge” includes lines parallel with the length or direction of
the strip, including lines on the longitudinal edge or on the edge of the top
body portion.
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material, and thus is “along one longitudinal edge” to provide a sight line
(see factual finding (1) listed above).
We also determine the Examiner has clearly identified a reason that
would have prompted a person having ordinary skill in this art to use the
foam material taught by Francis in place of the “striplike material” disclosed
by Siero (see factual finding (2) listed above; Answer 5). See KSR, supra.
Accordingly, we determine that the Examiner has established a prima facie
case of obviousness, which case has not been adequately rebutted by
Appellant’s arguments. Therefore we affirm both grounds of rejection
presented for review in this appeal. The decision of the Examiner is
affirmed.
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).
AFFIRMED

clj

3M Innovative Properties Company
P.O. Box 33427
St. Paul, MN 55133-3427
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