Ex Parte Chen

Patent Trial and Appeal Board

Aug 10, 2016

13152312 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/152,312 06/03/2011
26250 7590 08/12/2016
FRANCIS EDWARD MARINO
394 MEREDITH NECK ROAD
MEREDITH, NH 03253
FIRST NAMED INVENTOR
Albert CHEN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
UM-001 6613
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
08/12/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
frank@marinopatents.com
patenter@metrocast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT CHEN
Appeal2014-007259
Application 13/152,312
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert Chen (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1, 4--17, and 19 under 35 U.S.C. § 103(a) as unpatentable
Meccia (US 2003/0008095 Al, pub. Jan. 9, 2003), Pontecorvo (US
2003/0006603 Al, pub. Jan. 9, 2003), and Chiba (US 2002/0077420 Al,
pub. June 20, 2002). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-007259
Application 13/152,312
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A notepad comprising:
an adhesive layer comprised of an oil-impregnated
thermoplastic rubber having a thickness from 0.5 mm to 2.0 mm;
a face layer permanently adhered to the adhesive layer and
having a planar outer dry-erase surface, the face layer comprising
graphics which indicate a plurality of evenly spaced holes
adjacent one edge thereof and which indicate a plurality of binder
rings inserted through said holes to emulate a bound notebook;
and
the adhesive and face layers together comprise a
peripheral shape having a plurality of evenly-spaced rounded
bumps protruding from said one edge adjacent said graphics,
each of said rounded bumps surrounding one of said binder rings.
DISCUSSION
The Examiner finds that Meccia, Pontecorvo, and Chiba disclose or
suggest all of the limitations of independent claim 1. See Final 1A..ct. 2--4. In
particular, the Examiner finds that "Pontecorvo teaches a similar whiteboard
wherein 'the whiteboard components need not be rectangular in shape. They
could be round, triangular or any other shape, to impart design, art or logo
features, as desired'." Id. at 3 (emphasis omitted).
Appellant argues that Pontecorvo' s
vague blanket statement that his device "could be any other
shape" is [not] a teaching of "graphics which indicate a plurality
of evenly spaced holes adjacent one edge thereof and which
indicate a plurality of binder rings inserted through said holes
and a plurality of evenly-spaced rounded bumps protruding from
said on edge adjacent said graphics, each of said rounded bumps
surrounding one of said binder rings."
Appeal Br. 13-14 (emphasis omitted).
2
Appeal2014-007259
Application 13/152,312
Responding to this argument, the Examiner cites In re Seid for the
proposition that "the particular artwork and shape conforming to the artwork
was deemed to be purely ornamental, since matters relating to ornamentation
only, which have no mechanical function, cannot be relied upon to
patentably distinguish the claimed invention from the prior art." Ans. 2; see
In re Seid, 161 F.2d 229, 231 (CCPA 1947).
The Examiner's citation is not on point. In Seid, the allegedly novel
features where shown in the prior art. In re Seid, 161 F.2d at 231 ("[t]hat
concept, however, is old in the patent to Kirchner et al., wherein the
cardboard figure representing the upper half of the human body conceals the
bottle neck and is supported thereon, while the body of the bottle represents
the lower half of the human display figure"). Here, the Examiner provides
no example of any item having "a plurality of evenly-spaced rounded bumps
protruding from said one edge" as evidence that the claimed shape was
known in the art. Appeal Br. 28.
Further, although a change of shape does not make a product
nonobvious where the claimed shape is not of functional significance and
accomplishes the same purpose as the prior art shape (In re Dailey, 357 F.2d
669, 672----673 (CCP A 1966)), such is not the case here. The Specification
states that the invention is "a notepad that is shaped as and has graphics that
emulate the lined pages of a bound notebook to give a 'first glance'
indication to potential note-takers that the device is for such note-taking."
Spec. i-f 1. Thus, the shape of the notepad has functional significance in that
it conveys the intended purpose of the device.
Moreover, the Examiner does not explain why one skilled in the art
would choose the particular shape claimed. The only evidence of a reusable
adhesive notepad having the claimed shape is Appellant's Specification.
3
Appeal2014-007259
Application 13/152,312
Thus, we agree with Appellant that the Examiner relies upon improper
hindsight.
For these reasons, we do not sustain the Examiner's decision rejecting
independent claim 1, and claims 4--16 which depend therefrom. The
Examiner's decision rejecting independent claims 17 and 19 is defective for
the same reasons. Accordingly, we do not sustain the Examiner's decision
rejecting claims 1 7 and 19.
DECISION
The Examiner's rejection of claims 1, 4--17, and 19 is REVERSED.
REVERSED
4