Ex Parte Brown et al

Board of Patent Appeals and Interferences

Jul 31, 2006

10068574 (B.P.A.I. Jul. 31, 2006)

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not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER JAMES BROWN and DARRELL MICHAEL GRAMS
____________

Appeal No. 2006-1513
Application No. 10/068,574
Technology Center [3600]
____________

ON BRIEF1
____________

Before OWENS, CRAWFORD, and LEVY, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 21-33, which are all of the claims pending in
this application.
We AFFIRM-IN-PART and enter a New Ground of Rejection under
37 CFR § 41.50(b).

1 The Oral Hearing scheduled for June 8, was waived by appellants in a communication received,
via fascimile, on June 5, 2006.
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BACKGROUND
The appellants’ invention relates to an animal decoy and a
method for making an animal decoy (specification, page 1).
Claim 21 is representative of the invention, and is reproduced as
follows:
21. A decoy comprising a three dimensional main body and a
photograph containing animal features non-adhesively
incorporated into said main body.

The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Palmer 3,029,541 Apr. 17, 1962
Tryon 3,707,798 Jan. 2, 1973

Claims 21-26, 28 and 29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tryon.
Claims 27 and 30-33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Tryon in view of Palmer.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (mailed November 19,
2003) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed September 2, 2003) and reply
brief (filed December 21, 2005) for the appellants’ arguments
thereagainst.
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Only those arguments actually made by appellants have been
considered in this decision. Arguments which appellants could
have made but chose not to make in the brief have not been
considered. See 37 CFR § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the briefs along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we make the
determinations which follow. We begin with the rejection of
claims 21-26, 28 and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Tryon. We turn first to claim 21.
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467

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(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
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The examiner's position (final rejection, page 2) is that
although Tryon uses an adhesive to attach the photograph to the
main body, it would have been obvious to employ other means to
attach the photographs, since the function is the same.
Appellants' position (brief, page 5) is that the claim
requires the photograph containing the animal features to be non-
adhesively incorporated into the main body. Appellants argue
that the rejection fails because the examiner has not cited any
reference that would teach or suggest non-adhesively
incorporating the photograph containing the animal features into
the main body. The examiner responds (answer, page 4) that:

The photos could be mounted by other means such as
tacks, nails, clamps, paper clips, rivets, hook and
loop fasteners, to name a few common ways to mount the
photo to the main body. . . . if one did not have any
adhesive, no stores were open and one wanted to go
hunting for ducks or geese, then any of the above old
and well known attachment means could be used to attach
the photos to the main body.

From our review of the record, we find that Tryon refers to
adhesively securing the printed photographs are applied to the
body and wing with a suitable adhesive. The reference is silent
as to securing the photographs in any manner other than with
adhesives. In our view, the disclosure of securing the
photographs, through the use of an adhesive is not, in and of
itself, a teaching or suggestion to secure the photographs in a
non-adhesive manner. The examiner’s unsupported opinion is not a
substitute for evidence. Accordingly, we find that Tryon fails
to establish a prima facie case of obviousness of claim 21. The
rejection of claim 21, along with claims 22-26 under 35 U.S.C.
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§ 103(a) is reversed.
We turn next to independent claim 28. The claim recites
“[a] decoy having a three dimensional main body formed from a
plastic material and said main body having on its exterior
surfaces a screen printed photograph containing animal features.”
Appellants assert (brief, page 6) that “[t]his claim is
allowable because Tryon does not teach or suggest a decoy having
a main body with a screen printed photograph containing animal
features on the decoy exterior surfaces.”
We note at the outset that claim 28, unlike claim 21, does
not recite that the photographs are attached in a non-adhesive
manner. From our review of Tryon, we find that in describing the
photographs taken, Tryon discloses that Kodachrome™ pictures are
taken and that a four-color separation is made of each color
picture. Following this, layouts are made. The layouts are
printed on Scott Vellum Offset paper with Capital Inks, yellow,
red, blue and black employed in the printing process (col. 3,
lines 1-9). From the disclosure of Tryon, we find that the use
of a four-color separation refers to the separate printing of one
color at a time, which is done in a screen printing process.
Thus, we find that Tryon teaches or suggests the use of a screen
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From our review of Tryon, we find that when the photographs
are taken of a bird for use in the decoy, the photographs taken
are used to make the layouts, which are printed. From the
disclosure of making layouts from the photographs, we find that
the making of layouts is silent as to whether the layouts are
made from selecting photographs from among the group of
photographs taken, or whether photographs, or portions thereof,
are combined by a correction process. As a result, we would have
to resort to speculation to find that Tryon teaches or suggests
printing of the photographs. Accordingly, we are not persuaded
by appellants’ assertion (brief, page 6) that Tryon is totally
silent on the concept of screen printing. The rejection of claim
28 under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 29, which depends from claim 28.
Appellants assert (brief, page 6) that the claim recites that the
photograph contains corrections to allow the photograph to be
screen printed, and argue that Tryon does not teach this because
Tryon discloses trimming off excess material. The examiner’s
position (final rejection, page 3) is that “Tryon does not
disclose the photographs containing corrections, but it would
have been obvious to employ corrections in the photos to make the
decoy as realistic as possible.”
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the use of corrections for allowing a photograph to be screen
printed onto the main body of the decoy. The examiner may not
resort to speculation or unfounded assumptions to supply
deficiencies in establishing a factual basis. See In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). Stated
differently, the subjective opinion of the examiner as to what is
or is not obvious, without evidence in support thereof, does not
provide a factual basis upon which the legal conclusion of
obviousness can be reached. We therefore find that the examiner
has failed to establish a prima facie case of obviousness of
claim 29. The rejection of claim 29 under 35 U.S.C. § 103(a) is
reversed.
We turn next to the rejection of claims 27 and 30-33 under
35 U.S.C. § 103(a) as being unpatentable over Tryon in view of
Palmer. We begin with claim 27. We reverse the rejection of
claim 27, which depends from claim 21, because although Palmer
would have suggested to an artisan having a decoy head that is
attachable to the decoy body, Palmer does not disclose attaching
a photograph to the decoy in a non-adhesive manner. Accordingly,
Palmer fails to make up for the deficiencies of Tryon. The
rejection of claim 27 under 35 U.S.C. § 103(a) is reversed.
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From Palmer’s disclosure (col. 1, lines 30-33) of providing
a decoy of knockdown construction for transport in a compact
condition, and Tryon’s disclosure (col. 1, lines 35-38) that
silhouette type decoys are preferred because they can be knocked
down for easy storage when not in use, we find a suggestion of
providing Tryon’s decoy with a detachable head decoy. In
addition, from Palmer’s disclosure of a decoy having a body and
an orifice and a head with a flange that is insertable into the
orifice, we find that an artisan would have been motivated to
provide Tryon’s decoy with a head that is insertable into the
body. We are not persuaded by appellants’ assertion (brief, page
7) that the advantage of such a feature would be lost in Tryon
once the photograph is attached to the head and body portion,
because claim 30 does not recite a photograph attached to the
head of the decoy. Rather the claim recites that a photograph is
We turn next to independent claim 30. Appellants assert
(brief, page 7) that neither reference teaches or suggests a
decoy having a main body with a photograph containing animal
features incorporated therein. Appellants acknowledge that
although Palmer shows a main body having an orifice and a decoy
having a head with a flange insertable into the orifice, that
there is no motivation to modify Tryon to provide this feature.
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We enter a New Ground of Rejection (37 CFR § 41.50(b)) of
claim 21 under 35 U.S.C. § 103(a) as being unpatentable over
Tryon in view of either Cromett (U.S. Patent No. 6,157,865) or
Culp (U.S. Patent No. 6,057,012). As we found,
incorporated into the body of the decoy. From all of the above,
we find that the teachings of Tryon and Palmer would have
suggested the language of claim 30. The rejection of claim 30
under 35 U.S.C. § 103(a) is affirmed. As claims 32 and 33 have
not been separately argued by appellants, they fall with claim
30, from which they depend. The rejection of claims 32 and 33
under 35 U.S.C. § 103(a) is affirmed.
We turn next to claim 31. Appellants assert (brief, page 7)
that the references do not teach or suggest a plurality of heads
that are insertable into the body. From our review of the
record, we are in agreement with the examiner (answer, pages 4-5)
that from the disclosure of having an insertable head in Palmer,
it would have been obvious to have provided a plurality of heads
so that if one was lost, another could be inserted in its place.
We add that it would have been an obvious duplication of parts to
provide extra decoy heads in the kit. The rejection of claim 31
under 35 U.S.C. § 103(a) is affirmed.
supra, with
respect to claim 21, Tryon discloses that the photographs are
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secured to the decoy using an adhesive. Appellants assert
(brief, page 5) that “the rejection fails because the Examiner
has not cited any reference which would teach or suggest non-
adhesively incorporating the photograph containing the animal
features into the main body.” These two prior art references,
located by the Board, teach attaching pictures or photographs to
objects such as curios or propane tanks, through the use of non-
adhesive processes (see col. 2, line 37; col. 3, lines 15-17, and
col. 1, lines 42-45 of Cromett and col. 3, lines 12 and 13; col.
4, lines 7 and 8, and col. 1, lines 66 and 67 of Culp). From the
disclosures of Cromett and Culp, we find that an artisan would
have found it obvious to have secured the photographs of Tryon to
the decoy without the use of adhesives as an obvious substitution
of equivalent means for connecting the photograph to the decoy.
We add that because we are primarily a Board of review, that
we have only applied the prior art to independent claim 21. We
leave it to the examiner to determine whether this prior art
and/or other prior art should be applied to any or all of the
other claims whose rejection has been reversed in this decision
on appeal.
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Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
within two months from the date of the original decision of the
Board."
In addition to affirming the examiner's rejection(s) of one
or more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b) (effective September 13, 2004).
37 CFR § 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial
review."
37 CFR § 41.50(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
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Should the appellants elect to prosecute further before the
examiner pursuant to 37 CFR § 41.50(b)(1), in order to preserve
the right to seek review under 35 U.S.C. §§ 141 or 145 with
respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.

CONCLUSION
To summarize, the decision of the examiner to reject claims
21-27 under 35 U.S.C. § 103(a) is reversed. The decision of the
examiner to reject claims 28-33 under 35 U.S.C. § 103(a) is
affirmed. In addition, we have entered a New Ground of Rejection
of claim 21; 37 CFR § 41.50(b).

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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)(1)(iv).

AFFIRMED IN PART; 37 CFR § 41.50(b)

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2006-1513
Application No. 10/068,574

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