Ex parte BRENDON G. NUNES

Board of Patent Appeals and Interferences

Dec 9, 1997

08071008 (B.P.A.I. Dec. 9, 1997)

Application for patent filed June 2, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRENDON G. NUNES
_____________
Appeal No. 95-4546
Application 08/071,0081
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and TORCZON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 95-4546
Application No. 08/071,008
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 23. After submission of the brief, the examiner found
claims 21 and 22 to be allowable over the prior art of record
(Answer, page 1). Accordingly, claims 1 through 20 and 23 remain
before us on appeal.
The disclosed invention relates to a method and apparatus
for using a computer and a color photocopier to produce a
multicolor element with indicia thereon.
Claims 1 and 15 are illustrative of the claimed invention,
and they read as follows:
1. A method of constructing a functional multicolor element
having indicia thereon, utilizing a computer and a color
photocopier, comprising the steps of:
(a) electronically creating or providing in the computer an
electronic simulation of the desired functional multicolor
element, with indicia thereon;
(b) under the control of the computer, transmitting
electronic signals from the computer to the photocopier so that
the photocopier transforms the electronic simulation of the
desired functional multicolor element onto a piece of sheet
material; and
(c) using the functional multicolor element with other
elements to produce a functioning object.
15. Apparatus for producing multicolor instrument faces,
comprising:
a computer;
a color photocopier;
Appeal No. 95-4546
Application No. 08/071,008
3
interface means for controlling said color photocopier with
said computer to effect printing of a multicolor instrument face
on a sheet of paper from electronic signals transmitted to said
color photocopier from said computer; and
automatic cutting means operatively connected to said
computer for cutting an instrument face shape from a sheet of
paper on which it has been printed by said color photocopier.
The reference relied on by the examiner is:
Morofuji et al. (Morofuji) 5,065,183 Nov. 12, 1991
Claims 1 through 5 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Morofuji.
Claims 6 through 20 and 23 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Morofuji.
Reference is made to the briefs, the answer, and the
declarations (paper numbers 5 and 8) by appellant, Brendon G.
Nunes, for the respective positions of the appellant and the
examiner.
OPINION
We have carefully considered the entire record before us,
and we will sustain the 35 U.S.C. § 102(b) rejection of claims 1
through 3, reverse the 35 U.S.C. § 102(b) rejection of claims 4
and 5, sustain the 35 U.S.C. § 103 rejection of claims 8 and 10
Appeal No. 95-4546
Application No. 08/071,008
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through 18, and reverse the 35 U.S.C. § 103 rejection of claims
6, 7, 9, 19, 20 and 23.
Evidence of secondary considerations submitted in the
declarations must always be considered with respect to a
rejection under 35 U.S.C. § 103, but such evidence is irrelevant
where the reference is anticipatory of the claimed invention
under 35 U.S.C. § 102(b). See In re Malagari, 499 F.2d 1297,
1303, 182 USPQ 549, 553 (CCPA 1974). Without novelty, evidence
of unobviousness is superfluous. See In re Spada, 911 F.2d 705,
709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. See
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440,
1444, 221 USPQ 385, 388 (Fed. Cir.), cert. dismissed, 468 U.S.
1228 (1984).
Appellant’s only argument with respect to the rejection of
claim 1 under 35 U.S.C. § 102(b) is that “web 30 of Morofuji et
al is clearly and unequivocally not a piece of sheet material”
(Brief, paper number 16, page 7). The web or plastic film 30 in
Figure 2 of Morofuji is a “sheet material,” and the
electrophotographic units 2, 3 and 4 transform “the electronic
Appeal No. 95-4546
Application No. 08/071,008
5
simulation of the desired functional multicolor element onto a
piece” of the plastic “sheet material” (column 12, line 55
through column 13, line 1). Thus, the 35 U.S.C. § 102(b)
rejection of claim 1 is sustained.
The 35 U.S.C. § 102(b) rejection of claims 2 and 3 is
sustained because the cut-off device 15 in Figure 2 of Morofuji
is a laser that cuts the picture image from plastic sheet
material 30 (column 13, lines 10 through 13). The severed
picture image is then transferred and fused to the object 51 at
station 5.
The 35 U.S.C. § 102(b) rejection of claims 4 and 5 is
reversed because Morofuji does not teach a sheet material of
paper and thus does not disclose step (e) of laminating a sheet
of paper onto a piece of more rigid sheet material prior to the
practice of step (d).
Turning to the obviousness rejection of claim 6, appellant
argues that “[t]here is absolutely no suggestion whatsoever to
one of ordinary skill in the art for any modification of Morifuji
et al to provide the method of claim 6 wherein an instrument face
is printed on a sheet of paper and then is assembled with
mechanical and electrical components to produce an operable
instrument” (Brief, paper number 16, page 10). We agree. The
Appeal No. 95-4546
Application No. 08/071,008
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obviousness rejection of claim 6 is reversed, and the obviousness
rejection of claims 7 and 23 is likewise reversed because these
claims depend from claim 6.
Claim 8 on appeal requires the copying of an instrument face
on a sheet material, and then cutting out the copied shape from
the sheet of material. The examiner is of the opinion that the
pictorial image stored by the computer in Morofuji “would have
been any design desired to be photocopied by the user” onto the
surface of the cans (Answer, page 6). In other words, it is the
examiner’s position that an instrument face (e.g., a clock face)
can be copied onto the surface of a can in Morofuji.
The first declaration (paper number 5) submitted in rebuttal
to the examiner’s position with respect to claim 8 and the other
claims found obvious by the examiner states in paragraphs 2 and
11 that the disclosed and claimed invention solved a long-felt
need in the market for “the ability to quickly and cost
effectively produce high quality instrument dials,” “multi-
colored clock dials or other instrument faces.” The second
declaration (paper number 8) indicates in paragraph 4 that “[t]he
catalog of Exhibit E describes some of the significant commercial
advantages of the products produced according to my invention and
in my view supports my earlier declaration about the unobviouness
Appeal No. 95-4546
Application No. 08/071,008
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and novelty of my invention.” Turning first to the purported
commercial success, appellant has not proven any nexus between
the statements made by his competitor in the Exhibit E catalog
and the claimed invention in claim 8. For this reason, appellant
cannot use such statements to prove commercial success of his
claimed invention. To prove long-felt need in the market,
appellant has to submit evidence that his claimed invention
filled a void in the marketplace that was not met by others in
the industry. See In re Allen, 324 F.2d 993, 996-97, 139 USPQ
492, 495 (CCPA 1963). Appellant’s opinions in the declarations
which have little relevance to the claimed invention cannot take
the place of such evidence. In view of the lack of convincing
evidence of non-obviousness, we agree with the examiner that the
pictorial image stored by the computer in Morofuji “would have
been any design desired to be photocopied by the user” onto the
surface of the cans, and that a clock face can be copied onto the
surface of a can in Morofuji. The obviousness rejection of claim
8 is sustained.
The obviousness rejection of claim 10 is sustained because
Morofuji uses a laser 15 to automatically cut a shape from the
sheet of material 30 (column 13, lines 10 through 13). The
obviousness rejection of claim 11 is sustained because it would
Appeal No. 95-4546
Application No. 08/071,008
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have been manifestly obvious to one of ordinary skill in the art
to use paper in lieu of plastic film 30 in Figure 2 of Morifuji
since it is conventional in the art to wrap paper labels around a
can, and because Morifuji explains (column 12, line 55 through
column 13, line 10) that the film 30 is in a laminated condition
prior to the cutting step. The obviousness rejection of claims
12 through 14 is sustained because Morofuji can copy a limited
number of a multicolored instrument face such as a clock onto the
surfaces of cans.
The obviousness rejection of clam 9 is reversed because
Morofuji neither teaches nor would have suggested the step of
“assembling the instrument face with other functional components
to produce an operable instrument having a face with functional
indicia thereon.”
With respect to claims 15 through 18, appellant argues
(Brief, page 13) that “there is no disclosure seen in Morofuji et
al for the particular interface means as recited therein to print
a multi-color instrument face on a sheet of paper, or the
automatic cutting means to cut the instrument face from the sheet
of paper.” For all of the reasons expressed supra in connection
with claim 11, the obviousness rejection of claims 15 and 16 is
sustained. The obviousness rejection of claim 17 is sustained
Appeal No. 95-4546
Application No. 08/071,008
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because a scanner and/or a CD ROM were conventional sources of
input data for a computer such as the one used by Morifuji. The
obviousness rejection of claim 18 is sustained because Morifuji
discloses (column 13, lines 10 through 14) that the cut-off
device 15 is a laser cutter.
The obviousness rejection of claims 19 and 20 is reversed
because we agree with appellant’s argument (Brief, paper number
16, page 12) that Morifuji is not concerned with “superimposing
functional indicia for an instrument face on a transparent
substrate over a color photograph.”
DECISION
The decision of the examiner rejecting claims 1 through 5
under 35 U.S.C. § 102(b) is affirmed as to claims 1 through 3,
and is reversed as to claims 4 and 5. The decision of the
examiner rejecting claims 6 through 20 and 23 under 35 U.S.C.
§ 103 is affirmed as to claims 8 and 10 through 18, and is
reversed as to claims 6, 7, 9, 19, 20 and 23. Thus, the decision
of the examiner is affirmed-in-part.
Appeal No. 95-4546
Application No. 08/071,008
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 95-4546
Application No. 08/071,008
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