Ex Parte Bradshaw et al

Board of Patent Appeals and Interferences

Feb 27, 2012

11187343 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS A. BRADSHAW,
VARTAN MAILYAN, and JORGE A. NASH
____________

Appeal 2009-013913
Application 11/187,343
Technology Center 3600
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Dennis A. Bradshaw et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 5,1 10, 11, 13,

1 Appellants note that the Final Office Action, mailed February 21,
2008, does not explicitly state that claim 5 is included in this ground of
rejection; however, Examiner Dondero confirmed in a telephone call with
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Application 11/187,343

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15, 16, 18, 21, 23-27, 34, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Asbury (US 4,917,327, iss. Apr. 17, 1990) and a public use more than
one year prior to the filing of the present application as evidenced by the
“Statement of Sharon Nelson,” dated November 11, 2007.2 See Ans. 3-8.
Appellants cancelled claims 4 and 31-33. The Examiner withdrew claims 3,
14, 17, and 22 from consideration and objected to claims 6-9, 12, 19, 20, and
28-30 as dependent upon a rejected base claim. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to: an apparatus for
automatically splicing an unwinding roll of material to a stationary roll of
material, such as tape (Br. 21 and Spec. 1); a method of splicing a first,
running tape to a second, stand-by tape (Br. 25); a splicing element for use
in splicing a first, running tape being dispensed from a tape dispensing
device to a second, standby tape (Br. 28); and a roll of tape (Br. 29). Claim

Appellants’ representative on September 15, 2008 that claim 5 was included
in this ground of rejection. See Br. 11.
2 Although in Appellants’ Brief, they also argued against the rejection
of claims 1, 2, 10, 11, 13, 15, 16, 23-27, and 34 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1, 2, 10, 11, 13, 16, 17, 21-25, and 30 of then copending U.S. Patent
Application Serial No. 11/202,673 (now US 7,461,808, issued Dec. 9, 2008)
as set forth on pages 7-8 of the Final Office Action mailed February 21,
2008, the Examiner withdrew this rejection in the Answer in view of
Appellants’ filing of a terminal disclaimer on April 25, 2008. See Ans. 11-
12.

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1, reproduced below with italics added, is illustrative of the subject matter
on appeal.
1. An apparatus comprising:
a first, running spool of tape having a trailing
end portion and a first splicing element secured to
the trailing end portion;
a second, stand-by spool of tape having a leading
end portion and a second splicing element secured
to the leading end portion; and
wherein the second splicing element is made of a
self-supporting material and has at least one
aperture sized to receive the tape from the first
spool and a peripheral portion bounding at least a
portion of the aperture, whereby the tape being
dispensed from the first spool can be introduced
into the aperture by inserting the tape through a
gap in the peripheral portion;
wherein when the tape from the first spool is
inserted in the aperture and the first spool becomes
depleted of tape, the first splicing element engages
the second splicing element so as to splice the tape
from the first spool to the tape from the second
spool.

Br. 21.

OPINION
The Examiner found that Asbury discloses the subject matter of
independent claim 1 substantially as claimed, but that Asbury fails to
disclose that “the tape being dispensed from the first spool can be introduced
into the aperture by inserting the tape through a gap in the peripheral portion
. . . .” Ans. 3. To teach the element missing from Asbury, the Examiner
turned to the “Statement of Sharon Nelson” as prior art disclosing “the
public use of a splicing element.” Ans. 3-4.
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The “Statement of Sharon Nelson” (hereinafter “Nelson”) was
included in an Information Disclosure Statement filed with an amendment,
on November 19, 2007, during the prosecution of the present application.
The disclosure in Nelson was sworn to by a manager for the assignee, Adalis
Corporation. Nelson attached photocopies of photographs of two different
splicing elements as Exhibits A and B and explained that the two splicing
elements were “believed to have been brought to the attention of sales
representatives of Adalis in the late 1990’s by certain customers of Adalis”
and were “believed to have been used by the customers before being
obtained by Adalis.” Nelson 1. Nelson also provided a brief explanation of
the significance of each of the splicing elements shown in Exhibits A and B,
but stated that it could not be “determine[d] whether the splicing elements
shown in Exhibits A and B were ever publicly used.” Nelson 2.
Appellants dispute that Nelson discloses evidence of a public use and
is prior art to the present application under 35 U.S.C. § 102(b).3 Br. 12.
35 U.S.C. § 102(b) states, in pertinent part, that “[a] person shall be
entitled to a patent unless – (b) the invention was . . . in public use or on sale
in this country, more than one year prior to the date of the application for
patent in the United States.” Our reviewing court has established that “[t]he

3 Appellants state that “it is unclear whether the Examiner considers
Nelson to be prior art under 35 U.S.C. § 102(a) or (b)” (Br. 13) and
therefore, Appellants address Nelson under both sections of the statute (Br.
14-18, 18-19). However, the Examiner’s rejections set forth that “Nelson
discloses the public use of a splicing element . . .” (emphasis added), and
does not discuss whether Nelson was “known or used by others” under 35
U.S.C. § 102(a). See Ans. 3-4, 5-6. Thus, the Examiner applied Nelson
under the standards of 35 U.S.C. § 102(b), not 35 U.S.C. § 102(a), and we
will only address Appellants’ arguments with respect to 35 U.S.C. § 102(b).
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proper test for the public use prong of the [35 U.S.C.] § 102(b) statutory bar
is whether the purported use: (1) was accessible to the public; or (2) was
commercially exploited.” See Br. 14 (citing to Invitrogen Corp. v. Biocrest
Manufacturing L.P., 424 F.3d 1374, 1380 (Fed Cir. 2005) (citations
omitted)).
First, with respect to whether the purported use disclosed in Nelson
was accessible to the public, Appellants assert that Nelson does not provide
evidence that the splicing elements shown in Exhibits A and B were ever
accessible to the public, because the disclosure of the splicing elements
shown in Exhibits A and B to the Adalis sales representatives by Adalis’
customers was a mere visual display. Br. 14 (citing to Motionless Keyboard
Co. v. Microsoft Corp., 486 F.3d 1376, 1385 (Fed. Cir. 2007) (“In essence,
these disclosures visually displayed the keyboard design without putting it
into use. In short, the Cherry Model 5 was not in public use as the term is
used in section 102(b) because the device, although visually disclosed . . .
was never connected to be used in the normal course of business to enter
data into a system.”). Since the splicing elements shown in Exhibits A and
B of Nelson were not put into use for their intended purpose, e.g., were not
secured to rolls of tape to splice together a running roll of tape to a standby
roll of tape (see Br. 14, 15), we agree with Appellants that Nelson does not
provide evidence of accessibility to the public and thus, fails to establish
public use under 35 U.S.C. § 102(b) with respect to the first part of the test.
Second, with respect to the whether the purported use disclosed in
Nelson was ever commercially exploited, Appellants argue that Nelson does
not provide evidence that the splicing elements were ever commercially
exploited, because Nelson states that Adalis does not have any direct
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knowledge of how their customers actually used the splicing elements. Br.
15 (citing to Nelson ¶ 2). Appellants also argue that Nelson does not
indicate any use or commercial exploitation of the splicing elements by
Adalis, because Nelson only indicates that the photographs of the splicing
elements were possessed by Adalis’ litigation counsel and the in-house
counsel of Adalis’ parent company. Br. 16 (citing to Nelson ¶ 2). We agree
with Appellants that Nelson does not provide evidence of commercial
exploitation and thus, fails to establish public use under 35 U.S.C. § 102(b)
with respect to the second part of the test.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 2, 5, 10, 11, 13, 15, 16, 18, 21, 23-27, 34, and 35 under 35
U.S.C. § 103(a) as unpatentable over Asbury and a public use more than one
year prior to the filing of the present application as evidenced by Nelson.

DECISION
We reverse the Examiner’s rejection of claims 1, 2, 5, 10, 11, 13, 15,
16, 18, 21, 23-27, 34, and 35.

REVERSED

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