Ex Parte Brett

Board of Patent Appeals and Interferences

Apr 28, 2006

10029818 (B.P.A.I. Apr. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOYCE BRETT
____________

Appeal No. 2006-0160
Application No. 10/029,818
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD and BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of the sole claim
pending in this application.
We REVERSE.
Appeal No. 2006-0160 Page 2
Application No. 10/029,818

BACKGROUND
The appellant's invention relates to a method of displaying jewelry, such as
rhinestone jewelry, on a person at a location on which a cosmetic is typically applied on
said person, the method including using an adhesive bandage, applying an adhesive
deposit in a viscous state on the surface of the gauze pad portion of the bandage
opposite the side to be applied to the person’s skin such that the adhesive flows within
venting openings in the bandage, applying a rhinestone jewelry display onto the
adhesive deposit, allowing the adhesive deposit to cure to permanently attach the
jewelry display thereto and attaching the adhesive bandage, with attached rhinestone
jewelry display on the person. A copy of the claim under appeal is set forth in the
appendix to the appellant's brief.

Applied Prior Art

Arginsky Des. 340,988 Nov. 2, 1993
Vesey 6,455,752 Sep. 24, 2002
Amen-Ra A 6,472,039 Oct. 29, 2002

The following rejections are before us for review.
The claim stands rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter which was not described in the specification in such a way as to
Appeal No. 2006-0160 Page 3
Application No. 10/029,818

reasonably convey to one skilled in the art that appellant, at the time the application was
filed, had possession of the claimed invention.
The claim also stands rejected under 35 U.S.C. § 103 as being unpatentable
over Vesey in view of Arginsky and Amen-Ra A.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding this appeal, we make reference to the examiner’s answer
(mailed April 27, 2004), first supplemental examiner's answer (mailed April 8, 2005) and
second supplemental examiner’s answer (mailed May 3, 2005) for the examiner's
complete reasoning in support of the rejection and to the appellant's brief (filed February
25, 2004), first reply brief (filed May 11, 2004), second reply brief (filed April 22, 2005)
and third reply brief (filed May 13, 2005) for the appellant's arguments thereagainst.
The unusual number of reply briefs and supplemental answers in the record of this
application subsequent to the brief and first reply brief is in large part the result of the
inexplicable and seemingly unfounded statement on page 1 of appellant’s first reply
brief to the effect that the rejection under 35 U.S.C. § 112, first paragraph “is apparently
withdrawn.”
Appeal No. 2006-0160 Page 4
Application No. 10/029,818

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations, which follow.
We turn our attention first to the rejection under 35 U.S.C. § 112, first paragraph.
The basis of the examiner’s rejection, as set forth on page 3 of the answer, is that “[f]irst
and second adhesive deposits were never shown or disclosed.” In light of appellant’s
explanation on page 3 of the brief that the present application discloses two adhesives,
one (the one on extending adhesive strips 10, 22) deposited by the manufacturer of the
adhesive bandage and the other (adhesive 34) by the appellant in preparation of
arranging for a jewelry display using the bandage, the examiner clarified the rationale
for the rejection as follows:
Appellant did not disclose that the adhesive was applied on
the strips, nor could appellant have any control of that step,
as that is done by the adhesive bandage manufacturer. The
adhesive surface could be applied as the laterally extending
strips are formed, or the laterally extending strips could have
a basic adhesive property and not need adhesive to be
applied [answer, page 7; first supplemental answer, page 3].

The examiner’s position is not well founded. There is no requirement in 35
U.S.C. § 112 that each step recited in a method claim be controlled by appellant. We
likewise find no prohibition therein against appellant including as part of a method claim
Appeal No. 2006-0160 Page 5
Application No. 10/029,818

steps directed to the provision of disclosed properties of an article used in the method
disclosed in appellant’s specification. In this case, appellant’s specification (e.g., page
2) was sufficiently clear in its disclosure that the strips of the adhesive bandage
extending from the gauze pad are “adhesive strips” (i.e., strips having adhesive on one
surface thereof) to convey to one of ordinary skill in the art that the laterally extending
strips have adhesive deposit applied to at least one surface thereof. Inasmuch as the
claim is not specific to the manner in which such adhesive deposit is applied thereto, the
subject matter of the claim finds full support in appellant’s application as filed. The
rejection is not sustained.
We turn our attention next to the rejection of the claim as being unpatentable
over Vesey in view of Arginsky and Amen-Ra A. While appellant’s brief illustrates an
inexplicable confusion with regard to the basis (i.e., obviousness) of the prior art
rejection, appellant’s brief (page 4) correctly recognizes the deficiency in the applied
prior art of any teaching or suggestion to apply an adhesive deposit when in a viscous
state on the display surface of the Vesey bandage, flowing said adhesive deposit into
the venting openings of said display surface, as called for in appellant’s claim.
Vesey discloses a kit containing components for making decorated adhesive
bandages. The kit contains one or more adhesive bandages, of the type described by
appellant, comprising a backing strip 2, a layer of adhesive 3 on the body-contacting
surface thereof, an absorbent pad 4 and a pair of release tabs 5, 6. According to Vesey
Appeal No. 2006-0160 Page 6
Application No. 10/029,818

(column 5, line 21), the backing of the bandage is preferable clear and, if made from a
film or foam, is preferably perforated (column 3, lines 27-28). In light of Vesey’s
disclosure of perforations in the backing strip, the examiner’s application of Arginsky for
this feature would appear to be superfluous.
Vesey’s kit further includes a plurality of decorative elements 11 which may be
selected from adhesive stickers and adhesive tattoos. Adhesive stickers are typically
supplied on a sheet of release paper 15, with each sticker comprising a substrate
printed on one face and carrying an adhesive layer 13 on the other face thereof. Vesey
discloses that the adhesive material for the decorative elements is a pressure sensitve
adhesive and teaches, in the Example discussed in columns 5 and 6, applying the
adhesive to the release strip, evaporating the volatiles from the adhesive emulsion in an
oven and laminating a plasticized polyvinyl chloride film (the substrate) to the adhesive
to form a release paper-adhesive laminate which is then printed on the face of the
substrate opposite the adhesive with a decorative pattern which is then cured.
Following curing, the sheet containing the decorative patterns is kiss-scored in
registration with the pattern on the laminate. The adhesive stickers can then be
removed from the release paper and secured to the display surface of the bandage.
Amen-Ra A discloses an appliqué for application to a body part, such as a nail,
the appliqué comprising a thin flexible film having an array of decorative rhinestones
adhesively secured on an upper surface thereof and having a self-adhesive layer on a
Appeal No. 2006-0160 Page 7
Application No. 10/029,818

bottom surface thereof. Amen-Ra A teaches that the adhesive used for securement of
the rhinestones or other materials on the upper surface of the appliqués “may be those
adhesives known in the art which will not dissolve the polymeric substrate and which will
act to secure the rhinestones or other materials to the upper surface of the substrate in
a secure manner” (sentence bridging columns 4 and 5).
Arginsky, a design patent, simply discloses an adhesive bandage having
decorative indicia thereon. Figure 1 of the patent appears to illustrate venting openings
in the adhesive strip in the central region thereof where the gauze pad is typically
located.
None of the cited references teaches or suggests applying an adhesive deposit,
when in a viscous state, on the display surface of a bandage, flowing the adhesive
deposit into the venting openings therein, as called for in appellant’s claim. It follows
that the combined teachings of the applied references are insufficient to establish a
prima facie case of obviousness of the subject matter of appellant’s claim. The rejection
is not sustained.

Appeal No. 2006-0160 Page 8
Application No. 10/029,818

CONCLUSION
To summarize, both of the examiner’s rejections are REVERSED.

REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0160 Page 9
Application No. 10/029,818

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