Ex Parte Brown

Patent Trial and Appeal Board

Dec 21, 2016

12804668 (P.T.A.B. Dec. 21, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/804,668 07/27/2010 Steven Cheyene Brown Aesthetic Coasters 2450
61364 7590 12/21/2016
ROBERT A. VANDERHYE
801 RIDGE DR.
MCLEAN, VA 22101-1625
EXAMINER
SCHATZ, CHRISTOPHER T
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
12/21/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN CHEYENE BROWN
____________

Appeal 2015-007811
Application 12/804,668
Technology Center 1700
____________

Before LINDA M. GAUDETTE, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

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Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1–6, 10, 11, 21, 29, and 30. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a method of making a drink coaster. See, e.g.,
Specification filed July 27, 2010 (“Spec.”), 2, 2nd para. According to the
Specification, a coaster made by the inventive method has the same appearance
and functionality of a coaster constructed from an expensive metal, such as brass
or bronze. Id. at 1, 2nd para. The inventive method, however, utilizes
comparatively less expensive materials. Id. Claim 1, the sole independent claim
on appeal, is reproduced below:
1. A method of making a coaster comprising: a) making a plastic
coaster body having an aesthetic substantially flat top surface and a
recessed bottom surface; b) inserting an insert having a density
significantly greater than the density of the plastic coaster body into
the recess in the recessed bottom surface of the coaster body; c)
substantially permanently adhering the insert within the recess; and d)
providing the insert and recess with a covering which will not scratch
furniture surfaces.
App. Br. 19 (Claims App’x).
The Examiner maintains the following grounds of rejection on appeal:
1. Claims 3, 10 and 11 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as indefinite.
2. Claim 21 is rejected under 35 U.S.C. § 112, fourth paragraph, as
failing to specify a further limitation of the subject matter claimed.

1 Appellant identifies the real party in interest as Canadian Sprit Inc. Appeal Brief
filed Jan. 23, 2015 (“App. Br.”), 1.
2 Final Office Action mailed Jan. 14, 2015 (“Final Act.”).
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3. Claims 1–5, 21, and 30 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Nunes (US 6,109,583, iss. Aug. 29, 2000) in view of
Kvalvog.
4. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Nunes and Kvalvog (US 6,102,352, iss. Aug. 15, 2000), and further in view of
Beaham.
5. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Nunes and Kvalvog, and further in view of Tolbert (US
2,856,727, iss. Oct. 21, 1958) and Beard (US 2005/0040310 A1, pub. Feb. 24,
2005).
6. Claims 1, 4–6, 21 and 30 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Nunes in view of Beaham (US 2,784,577, iss. Mar.
12, 1957).
7. Claims 2 and 3 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Nunes and Beaham, and further in view of Kvalvog alone, or in
combination with Lanoue (US 6,223,421 B1, iss. May 1, 2001).
8. Claim 29 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Nunes and Beaham, and further in view Tolbert and Beard.3
Rejection of claims 3, 10 and 11 under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite
Claims 3 and 11
Claims 3 and 11 require that the step of “inserting an insert . . . into . . . . the
recessed bottom surface of the coaster body” (claim 1, step b) produce a coaster

3 The Examiner has withdrawn the rejections of claims 10 and 11 under pre-AIA
35 U.S.C. § 103(a) as unpatentable over: (1) Nunes, Beaham, Mayzel, and
Applicant’s Admitted Prior Art; and (2) Nunes, Kvalvog, Mayzel, and Applicant’s
Admitted Prior Art. Examiner’s Answer mailed June 24, 2015 (“Ans.”), 2.
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having “about the same weight and feel as a similar sized coaster formed primarily
or substantially completely of brass or bronze” (claims 3, 11). App. Br. 19 (Claims
App’x). The Examiner contends the term “feel” renders claims 3 and 11
indefinite. Final Act. 2. More specifically, the Examiner maintains there is no
way to determine the scope of claims 3 and 11 “because what is a similar ‘feel’ to
one person may not be a similar ‘feel’ to another person.” Id.
Claims must “particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention.” 35 U.S.C. § 112(b); 35
U.S.C. § 112 (pre-AIA), second paragraph. In Nautilus, Inc. v. Biosig Instruments,
Inc., the Supreme Court held that the definiteness requirement of Section 112
“require[s] that a patent’s claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the scope of the invention
with reasonable certainty. The definiteness requirement, so understood, mandates
clarity, while recognizing that absolute precision is unattainable.” 134 S. Ct. 2120,
2129 (2014). “The claims, when read in light of the specification and the
prosecution history, must provide objective boundaries for those of skill in the art.”
Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). When
“faced with a ‘purely subjective’ claim phrase, we must look to the written
description for guidance.” Id. “[C]laim definiteness depends on the skill level of
an ordinary artisan. Therefore, the specification need only disclose adequate
defining structure to render the bounds of the claim understandable to an ordinary
artisan.” Telcordia Techs., Inc. v. Cisco Sys, Inc., 612 F.3d 1365, 1377 (Fed. Cir.
2010) (internal citation omitted).
The Specification discloses that the factors essential to making a coaster
“feel like it is made of the material that the . . . top surface simulates (e.g., brass,
bronze, silver, etc.)” are its “density and thickness (ultimately weight).” Spec. 5,
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2nd para. The Specification further discloses that when “the insert takes up
substantially the entire recess [in the bottom surface of the coaster body], the
center of gravity and uniformity of feel of the completed coaster [] is such as to
also simulate a coaster primarily or substantially entirely of high quality material
(such as brass).” Id.
We agree with Appellant that the above-cited disclosure in the Specification
provides an objective standard by which the ordinary artisan can understand the
scope and meaning of the subjective term “feel” in claims 3 and 11. See App. Br.
3–4. In arguing that “there is no standard for measuring the scope of the term
because what a ‘similarly sized coaster formed primarily or substantially
completely of brass or bronze’ would feel different to different people” (Ans. 3),
the Examiner fails to consider the level of skill of the ordinary artisan. We find a
person of ordinary skill in the art would be familiar with the appearance and the
weight of a coaster having a particular size and constructed of a particular metal.
An ordinary artisan, therefore, when holding a brass-colored coaster produced by
the inventive method, would be able to determine whether that coaster has the
same weight and feel to him as a similarly sized coaster constructed entirely of
brass. The fact that “brass or bronze would feel lighter to a stronger person and
heavier to a weaker person” (id.) is irrelevant.
In sum, Appellant has argued persuasively that the Examiner reversibly
erred in determining the term “feel” renders claims 3 and 11 indefinite under 35
U.S.C. 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
Claims 10 and 11
The Examiner contends claim 10 and its dependent claim 11 do not satisfy
the definiteness requirement of Section 112 due to the term “low temperature
catalytic lacquer” (claim 10). See Final Act. 2–3. The Examiner argues, more
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specifically, that “catalytic lacquer” is not a term of art and “the specification
provides no guidance as to how to interpret what is meant by a ‘catalytic lacquer’
rather than simply a ‘lacquer’.” Id. The Examiner further contends “[t]he term
‘low temperature’ is not defined by the claim, the specification does not provide a
standard for ascertaining the requisite degree, and one of ordinary skill in the art
would not be reasonably apprised of the scope of the invention.” Id. at 3.
Appellant argues the term “catalytic lacquer” is used in US 4,253,875, as
well as in the discussion of US 4,253,875 in US 5,158,604. App. Br. 5. Appellant
also argues the terms “lacquer” and “catalytic” are both common terms of art, and
the ordinary artisan would understand from the common meanings of these
individual terms that a “catalytic lacquer” is “a lacquer that has catalytic action.”
Id. at 4–5 (referencing several sources, including five US patents). Appellant
argues the term “low temperature” is “well known in the art of lacquer application”
and “simply means ‘not an elevated temperature.’” Id. at 5 (referencing several US
patents and a published US patent application).
We have reviewed the references cited by Appellant and agree with the
Examiner that US 4,253,875’s use of the term “catalytic lacquer” to describe a
specific lacquer composition for use in producing printed circuit boards does not
provide evidence that this is a known term of art. Nor has Appellant provided
persuasive evidence that one of ordinary skill in the art would understand that the
term “catalytic lacquer” has the meaning of the individual terms, and would inform
those skilled in the art as to the lacquers encompassed by the claims with
reasonable certainty. We further agree with the Examiner that the term “low
temperature” is a term of degree, the Specification fails to provide any measure by
which the ordinary artisan can distinguish between a low temperature and an
elevated temperature, and the references cited by Appellant fails to support a
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finding that one of ordinary skill in the art would understand the difference
between a low temperature and an elevated temperature in the context of a
“catalytic lacquer.” See Ans. 4–5.
In sum, Appellant has not identified reversible error in the Examiner’s
determination that the term “low temperature catalytic lacquer” renders claims 10
and 11 indefinite under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second
paragraph.
For the reasons discussed above, we reverse the Examiner’s rejection of
claim 3, but sustain the Examiner’s rejection of claims 10 and 11 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
Rejection of claim 21 under 35 U.S.C. § 112, fourth paragraph,
as failing to specify a further limitation of the subject matter claimed
Claim 21 recites: “A method as recited in claim 1 consisting essentially of
a)-d).” App. Br. 19 (Claims App’x).
35 U.S.C. § 112, fourth paragraph, states that “a claim in dependent form
shall contain a reference to a claim previously set forth and then specify a further
limitation of the subject matter claimed.” The Examiner contends claim 21 does
not further limit claim 1 because the Specification does not “provide a clear
indication of what the basic and novel characteristics actually are,” and, therefore,
“the phrase ‘consisting essentially’ [in claim 21] means the same thing as
‘comprising’ [in claim 1].” Final Act. 3.
As an initial matter, we disagree with the Examiner that the Specification
provides no indication of the basic and novel characteristics of the invention.
Based on our review of the Specification, we find the ordinary artisan would
understand that the basic and novel characteristics of the inventive reside, at a
minimum, in the use of comparatively lower-priced materials to produce a coaster
that has the look and feel of a coaster made of a more expensive material. See,
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e.g., Spec. 1, 2nd para. Moreover, in using the transitional phrase “consisting
essentially of,” claim 21 necessarily is more limited in scope than claim 1, because
“consisting essentially of” is a term of art that limits claim 21 to the recited
materials or steps “and those that do not materially affect the basic and novel
characteristic(s)” of the claimed invention, In re Herz, 537 F.2d 549, 551–52
(CCPA 1976), while the term “comprising” in claim 1 raises a presumption that the
claim is open to including any additional, unrecited steps, see In re Crish, 393 F.3d
1253, 1257 (Fed. Cir. 2004). In other words, the use of “consisting essentially of”
in claim 21 is sufficient to satisfy the requirements of 35 U.S.C. § 112, fourth
paragraph, and the Examiner erred in requiring Appellant to explicitly identify in
the Specification the materials or steps that are excluded by the “consisting
essentially of” language. Cf. PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351,
1354–55 (Fed. Cir. 1998) (explaining that the district judge was not required, as
part of claim construction, to determine whether a particular component could have
a material effect on the basic and novel characteristics of the claimed glass); id. at
1355 (“PPG was entitled to provide its own definition for the terms used in its
patent claim, including the transition phrase ‘consisting essentially of.’ . . . PPG
could have defined the scope of the phrase ‘consisting essentially of’ for purposes
of its patent by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention.” (Emphasis
added)).
In sum, for the reasons discussed above, we agree with Appellant that the
Examiner reversibly erred in rejecting claim 21 under 35 U.S.C. § 112, fourth
paragraph. See App. Br. 5–6. Therefore, we do not sustain this ground of
rejection.

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Rejections of claims 1–6, 21, 29, and 30 under pre-AIA 35 U.S.C. § 103(a)
Appellant raises several arguments in support of patentability of independent
claim 1, as well as various dependent claims. See generally, App. Br. 6–13. These
arguments have been addressed fully by the Examiner, and we agree with the
Examiner that Appellant’s arguments are unpersuasive of error in the Examiner’s
conclusion of obviousness for the reasons stated in the Answer. See Ans. 6–12.
We adopt the Examiner’s fact finding and reasoning, as set forth in the Final Office
Action and the Answer, in sustaining the above-listed rejections of claims 1–6, 21,
29, and 30 under pre-AIA 35 U.S.C. § 103(a). We add the following comments
related to issues raised by Appellant that are based on underlying disagreements
over the scope and meaning of various claim terms.
Appellant argues the Examiner erred in finding Nunes’ coaster includes “an
aesthetic substantially flat top surface” as recited in claim 1 (App. Br. 19 (“Claims
App’x)). See id. at 6. Appellant argues that in Nunes’ coaster, the surface of
transparent top component 11 is not aesthetic, rather, the aesthetics are provided by
a “piece of aesthetic indicia-containing paper 12 [that] is sandwiched between []
transparent top component 11 . . . and a plastic base 13.” Id. Appellant argues the
fact that “insert 12 can be seen through the sheet 11 does NOT magically transform
it into the top surface.” Reply Brief filed Aug. 17, 2015 (“Reply Br.”), 2.
As explained by the Examiner, “[A]ppellant’s arguments are not
commensurate with the scope of the claim because the claim does not require a
design or pattern to be printed on the surface.” Ans. 6 (emphasis added); see Spec.
4, 3rd full para. (“[I]n many circumstances, . . . and as is conventional per se, a
digital color insert, hot stamped leather insert, or embedded leather medallion, is
optionally provided on the top surface of the plastic coaster body. . . . Also if
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desired a design could be formed on the top surface of the plastic coaster body
during injection molding, or by an etching process or the like after molding.”)
Appellant’s argument that the claim 1 recitation of an “aesthetic” top surface
patentably distinguishes over the “clear and unornamented” top surface of Nunes’
coaster (Reply Br. 2) is also unpersuasive because Appellant has not explained
how the top surface, as recited in claim 1, differs structurally from the top surface
of Nunes’ coaster. See In re Seid, 161 F.2d 229, 231 (CCPA 1947) (explaining
that claim recitations relating to ornamentation only and having no mechanical
function cannot be relied on to distinguish claims in a utility patent application
over the prior art).
Appellant also argues the Examiner erred in finding Nunes’ base component
13 falls within the scope of the term “insert” as recited in claim 1. See Reply Br.
2–3.
The Specification does not define explicitly the term “insert,” but describes
one example in which the insert is a steel plate. See Spec. 6:3. The Specification
discloses that the insert need not have a particular shape, but “will typically have
substantially the same shape as the plastic body” of the coaster, “for example
square.” Id. at 7:3–5. Claim 1 requires that the insert have “a density significantly
greater than the density of the plastic coaster body,” and be insertable into, and
substantially permanently adhered within, a recess in the bottom surface of the
coaster body. App. Br. 19 (Claims App’x).
Appellant has not explained clearly why the Examiner erred in finding that
Nunes’ insert (component 13), when modified to be constructed of steel based on
the teachings of Kvalvog (Final Act. 4–5) or Beaham (id. at 5–6), would have a
density significantly greater than the density of Nunes’ plastic coaster body 11 and
would be insertable into, and substantially permanently adhered within, a recess in
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the bottom of plastic coaster body 11 (see id. at 4–6). Compare Spec. 6:7–9
(“[U]nder some circumstances one could heat or cold swage the plastic body 20,
such as at the sidewall 24, thereby deforming the plastic to trap the insert 25.”)
with Nunes 4:59–65 (“[A]s illustrated in FIG. 2--the components 11, 13 are held
together by a friction fit between the inner surface of the lip 17 [of component 11]
and the peripheral 27 of the third component 13. The frictional fit is preferably
tight and requires the use of a prying tool inserted between the lip 17 and the
surface 27 in order to dislodge the component 13 from the component 11.”) The
fact that Nunes does not use the term “insert,” but describes component 13 as
comprising a “base” (Reply Br. 2 (citing Nunes 4:35–41)) is not persuasive
because it fails to show error in the Examiner’s finding that component 13 includes
all of the features of the insert recited in claim 1.
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, we sustain the Examiner’s rejections of claims 1–6, 21, 29, and 30 under
pre-AIA 35 U.S.C. § 103(a).
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