Ex Parte Chen

Patent Trial and Appeal Board

Sep 30, 2016

13225420 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/225,420 09/03/2011
26250 7590 10/04/2016
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-004 1488
EXAMINER
KING,ANITAM
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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
Appeal2014-008457
Application 13/225,420
Technology Center 3600
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert Chen (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject under 35 U.S.C. § 112, first paragraph, claims
1-20 for lack of written description1; and under 35 U.S.C. § 103(a): (1)
claims 1, 5, 6, 11, 15, and 16 as unpatentable over Welles (US 3,300,164;
iss. Jan. 24, 1967) and Picken (US 2009/0051257 Al; pub. Feb. 26, 2009),
(2) claims 2--4, 7-10, 12-14, and 17-20 as unpatentable over Welles,
1 The Examiner includes only independent claims 1 and 11 in the heading of
the rejection. Final Act. 3; see also Ans. 2. Claims 2-10 and 12-20 depend,
either directly or indirectly, from claims 1 or 11 and thus incorporate the
subject matter rejected by the Examiner for lacking written description
support.
Appeal2014-008457
Application 13/225,420
Picken, and Weng (US 2010/0252709 Al; pub. Oct. 7, 2010); and (3) claims
1-20 as unpatentable over Chen (TW M380071UI; pub. May 11, 2010)2,
Welles, and Picken. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "adhesive fastening devices."
Spec. para. 2, Figs. 1, 4. Claims 1 and 11 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An adhesive supporting device comprising:
a translucent adhesive pad having an adhesive rear face for
adherence to a surface and a flexible front face, the adhesive pad
having a pad perimeter;
a supporting element comprising a support, and a
substantially rigid backing plate integrally formed therewith or
bound thereto, the backing plate having a plate perimeter smaller
than the pad perimeter and a rear plate face permanently bound
by UV-cured glue approximately centrally to the flexible front
face of the adhesive pad such that the plate perimeter is inboard
of the pad perimeter.
ANALYSIS
Written Description
Claims 1-20
The Examiner determines:
The limitation of a translucent adhesive pad cited now in
independent claims 1 and 11 constitutes new matter.
[Appellant's] specification, page 8, paragraph 23, states that the
backing sheet and pad are preferably transparent, not translucent
2 We derive our understanding of this reference from an English translation
filed January 9, 2013, which is available in the electronic file wrapper of the
underlying application. All references to the text of Chen are to portions of
the translation.
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Application 13/225,420
as indicated in the claimed subject matter. The terms transparent
and translucent, according to Webster's II, New Riverside
University Dictionary, are respectively defined as: capable of
transmitting light so that objects or images beyond can be clearly
perceived; and admitting and diffusing light so objects beyond
cannot be clearly perceived and thus, are not synonymous in
meanmg.
Final Act. 2-3; see also Ans. 7.
New or amended claims that introduce elements or limitations not
supported by the as-filed disclosure violate the written description
requirement. See, e.g., In re Lukach, 442 F.2d 967, 968-69 (CCPA 1971).
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ). Specifically, the Specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562---63;
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en bane).
The written description requirement of 35 U.S.C. § 112, first
paragraph, applies to all claims including original claims that are part of the
disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal
Circuit, "[a]lthough many original claims will satisfy the written description
requirement, certain claims may not." Ariad, 598 F.3d at 1349; see also
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343--46 (Fed.
Cir. 2005); Regents of the University of Cal. v. Eli Lilly & Co., 119 F.3d
1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in the
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Application 13/225,420
original disclosure does not satisfy the written description requirement if it
fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350;
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002)
(holding that generic claim language appearing in ipsis verbis in the original
Specification did not satisfy the written description requirement because it
failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d
1164, 1170 (Fed. Cir. 1993) (rejecting the argument that "only similar
language in the [S]pecification or original claims is necessary to satisfy the
written description requirement").
Appellant's Specification describes that "[t]he backing sheet and pad
are preferably transparent, which allows UV light directed from the backing
sheet side to shine through and fully expose the entire contact area between
[t]he backing plate and middle layer, for maximum bonding quality and
strength." Spec. para. 23 (emphasis added); see also Final Act. 2-3; Ans. 7;
Br. 8-9.
Upon review of Appellant's disclosure at paragraph 23, we agree with
the Examiner that "the difference between transparent and translucent is that
transparent means to let light pass through while translucent lets some light
go in but not all of it." Ans. 7. 3 We further agree with the Examiner that
3 Objects vary in how they transmit light. Transparent objects allow light to
travel through them. Materials like air, water, and clear glass are called
transparent. When light encounters transparent materials, almost all of it
passes directly through them. Glass, for example, is transparent to all visible
light. Translucent objects allow some light to travel through them. Materials
like frosted glass and some plastics are called translucent. When light strikes
translucent materials, only some of the light passes through them. The light
does not pass directly through the materials. It changes direction many times
and is scattered as it passes through. Therefore, we cannot see clearly through
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"the limitation of UV light to shine through" "lends the pad being
transparent more so than translucent since translucent lets some light go in
but not all of it and transparent allows light to pass through." Id.; see also
Br. 9.
For the above reasons, the Examiner correctly determines that the
present application does not reasonably convey to those skilled in the art that
Appellant had possession of the subject matter as now claimed as of the
filing date of the application, specifically, that the terms "transparent" and
"translucent" are synonymous. We therefore sustain the Examiner's
rejection of claims 1 and 11 as failing to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. See Ariad, 598 F.3d at
13 51 (confirming that the test for compliance with the written description
requirement of 35 U.S.C. § 112 is "whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date"). Claims
2-10 and 12-20 depend, either directly or indirectly, from claims 1 or 11
containing subject matter for which the present application does not provide
written description support, as discussed supra, and thus incorporate this
subject matter lacking written description support. Consequently, for the
reasons discussed supra, we summarily sustain the rejection of claims 2-10
and 12-20 for lack of written description.
them, and objects on the other side of a translucent object appear fuzzy and
unclear. See http://www.doe.virginia.gov/testing/sol/standards_docs/
science/201 O/lesson_plans/ grade5/force_motion_energy/sess_5 .3c. pdf
(emphasis added) (last visited Sept. 13, 2016).
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Obviousness over Welles and Picken
Claims 1, 5, 6, 11, 15, and 16
The Examiner finds that Welles discloses the limitations of claims 1
and 11 substantially as claimed including a backing plate. See Final Act. 3
(citing element 24 of Welles as the "backing plate."). 4
Appellant contends that Welles "does not even have a 'backing plate'.
Welles' 'flattened portion 24' is merely a surface or a plane. A 'plate' is a
three-dimensional article with thickness and depth for providing structure ...
. A surface is two-dimensional and has no thickness, and provides no
strengthening or structure." Br. 14.
Welles discloses: (1) "[t]he split ring 18 ... may be annular in cross
section and flattened somewhat at 24 as illustrated in FIGURE 4" (Welles,
2:36-39); (2) "[t]o facilitate the riveting the ring 18 has a flattened portion
24 to increase the area of contact with sheet 20" (Welles, 2:67---69); (3)
"front side 31 of the mounting sheet 20 and the split ring 18 are positioned
with respect to each other so that the sheet 20 is in substantial tangential
relationship with the outer curvature of ring 18 i.e., at flattened portion 24 of
ring 18" (Welles, 3:1--4); and (4) "a rivet 22 is applied so as to secure ring
18 at a point intermediate like portions 28 and 30 to the sheet member 20 at
the point of tangential contact i.e., at portion 24" (Welles, 3: 10-13).
Upon review of Welles' disclosure, a skilled artisan would not
consider the flattened portion/point of tangential contact 24 of ring 18 of
Welles to constitute a "backing plate" as recited in claims 1 and 11. See In
re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) ("Although the PTO
4 The Examiner relies on Picken for the disclosure of "a UV curable adhesive."
See Final Act. 3--4.
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must give claims their broadest reasonable interpretation, this interpretation
must be consistent with the one that those skilled in the art would reach.").
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1, 5, 6, 11, 15, and 16 as unpatentable over
Welles and Picken.
Obviousness over Welles, Picken, and Weng
Claims 2--4, 7-10, 12-14, and 17-20
The Examiner's rejection of claims 2--4, 7-10, 12-14, and 17-20 as
unpatentable over Welles, Picken, and Weng is based on the same
unsupported finding discussed above with respect to the rejection of claims 1
and 11. See Final Act 6-7. The Examiner does not rely on Weng to remedy
the deficiency of Welles. Accordingly, for reasons similar to those
discussed above for the rejection of claims 1 and 11, we do not sustain the
Examiner's rejection of claims 2--4, 7-10, 12-14, and 17-20 as unpatentable
over Welles, Picken, and Weng.
Obviousness over Chen, Welles, and Picken
Claims 1-20
The Examiner finds that Chen discloses the limitations of claims 1
and 11 substantially as claimed "except for the limitation of the adhesive
pad being translucent." Final Act. 4--5. The Examiner finds that "Welles
teaches an adhesive supporting device ( 10) having a translucent adhesive
pad (20)." Id. at 5. The Examiner concludes that it would have been
obvious to modify the pad of Chen "to have included the translucent pad as
taught by Welles, since such a modification would have merely involved the
substitution of one well known material for another based on the material's
suitability for the intended use, which would not have yielded any
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Application 13/225,420
unpredictable results." Final Act. 5. The Examiner further finds that "Chen
in view of Welles disclose the claimed invention except for the limitation of
the rear plate face being permanently bounded by UV-cured glue." Id. The
Examiner notes that "this limitation is not afforded any patentable weight
because it is drawn to a process of making as opposed to a structural
limitation, however, art will be applied to show obviousness." Id. The
Examiner finds that "Picken teaches a shelf assembly having an attachment
portion ( 416b) bonded to an attachment region ( 414d) by a UV curable
adhesive." Id. The Examiner concludes that it would have been obvious "to
have modified the adhesive bond between the rear plate face of the backing
plate and the flexible front face of the adhesive pad" of Chen and Welles
"for the purpose of providing an alternative, mechanically equivalent means
for providing a rapid bonding between the rear plate face and the flexible
front face." Id. at 5---6.
Appellant contends that Chen's "flat holder base" 11 fails to constitute
"a substantially rigid backing plate," as claimed because "nowhere is the
material of Chen's 'flat holder base' even disclosed or its
rigidity/flexibility even mentioned." Br. 19.
In response to Appellant's argument, the Examiner finds:
[T]he Chen reference inherently teaches that the backing plate
(11) is substantially rigid because in the drawings in Chen, the
backing plate ( 11) and the hook tip ( 111) are made of the same
material and the hook tip is used for hanging things, such as
keychain, clothes, and backpacks (page 4, lines 14-16), in order
for this objects to be supported by the hook tip and for this
reason, it is clear that the hook tip, which is integrally formed
with the backing plate (11 ), m[u]st be formed of a material with
a high degree of rigidity in order to support the weight of the
objects listed above.
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Application 13/225,420
Ans. 8-9. The Examiner's findings and conclusions are based on rational
underpinnings. Appellant does not apprise us of error in the Examiner's
findings or conclusions.
Appellant further contends that "[ t ]he advantages provided by the
rigidity of the present invention's 'substantially rigid backing plate', and that
rigidity in relation to the other functional elements, are key aspects of the
present invention" and "[i]f the backing plate was instead flexible, as Chen's
'flat base holder' may be, this benefit [i.e., "[t]he substantial rigidity of the
backing plate contribut[ing] to the ... pulling force normal to the wall at the
center of the device]" could not be realized. Br. 19-21 (emphasis added).
Appellant's arguments are not persuasive because they amount to
unsupported attorney argument, and thus are entitled to little, if any, weight.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
As discussed above, the Examiner's findings and conclusions for why
Chen's backing plate 11 would be considered "substantially rigid" are based
on rational underpinnings. Further, the "advantages" of the substantially
rigid backing plate of the subject invention are not claimed. See Br. 26, 27,
Claims App. Limitations not appearing in the claims cannot be relied upon
forpatentability. In re Self, 671F.2d1344, 1348(CCPA1982).
Appellant contends that "Chen's device has six layers, all serving
different purposes and necessarily made of different materials." Br. 21.
According to Appellant, "Five of these layers lie behind the bond of his
plastic thin film to his flat holder base" and "[a]ll five of these would need to
be translucent in order to obtain the presently claimed 'translucent adhesive
pad'." Id.
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Appellant's argument is not persuasive because it amounts to
unsupported attorney argument, and thus is entitled to little, if any, weight.
See In re De Blauwe, 736 F.2d at 705. Further, Appellant's argument is an
individual attack on the references rather than a challenge to the Examiner's
combination of the teachings of Chen, Welles, and Picken. See In re Merck
& Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA
1981) (one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references).
Appellant contends that ( 1) " [ t] he importation of Well es' flexible pad
as a substitute for Chen's pad would result in a device incapable of one of
Chen's stated objectives and is an unreasonable combination." Br. 21. In
particular, Appellant contends that "[a]mong Chen's primary objectives are
'to provide a reusable wall hook which is one hundred percent water proof
and 'which has a printed ink pattern (or carbon pattern) therein that is well
protected against water and wear"' (citing Chen 5:11-15); (2) "Welles' pad
provides no means for providing such protection"; and (3) "Welles discloses
'printing of labels' in conjunction with the alternative use of an aluminum
sheet for his flexible pad ... , which would only be visible if the label was
stuck to the exposed front surface of the flexible sheet, in direct conflict with
the objectives of Chen" (citing Welles, 2:61). Br. 21.
Appellant further contends that "Chen extols the improvement that his
device makes over prior art adhesive pads by leaving no 'residual adhesive'
such as that left by double-sided adhesives like Welles" (citing Chen, 4:21-
25) and "[i]t is clear that using the adhesive pad of Welles would eliminate
that touted improvement and render [Chen's] device unsatisfactory for at
least that intended purpose." Id. at 22.
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Appellant also contends that the Examiner fails to provide reasons
with rational underpinnings to combine Chen with Welles and Picken. Br.
22.
At the outset, to the extent that Appellant is arguing the references
must be capable of bodily incorporation in order to combine their teachings,
the test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of a primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). "Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." Id. (citations omitted); see also Ans. 9.
Here, as pointed out by the Examiner "the Welles reference was used
to teach that a pad could be made of a translucent polymer (polyethylene)
only, the pad in Chen is constructed of the [sic.] a polyethylene as well."
Ans. 10 (citing Chen, 7:8-10). The Examiner is proposing "a simple
substitution of one known element for another to obtain a predictable result."
See id. The Examiner further is proposing to modify Chen and Welles with
the UV curable "adhesive" of Picken. See Final Act. 5-6; see also Ans. 5. 5
The Examiner articulates adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to make the proposed modifications. See Final Act. 5---6; see also
5 Appellant contends "Appellant makes no claim to the 'process of making'
UV-cured glue, but does deserve that patentable weight be given to the use of
UV-cured glue in combination with the other structures claimed in claims 1
and 11." Appeal Br. 9-10. In response to Appellant's argument, the
Examiner states that "although it was stated that the process of forming the
glue, that is, UV-cured, was not afforded any patentable weight, the examiner
provided a teaching reference to Picken that teaches bonding of two objects
together using a UV curable adhesive." Ans. 7.
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Ans. 5. Appellant does not provide persuasive evidence or arguments
apprising us of error in the Examiner's reasoning for modifying the
teachings of Chen with Welles and Picken.
Appellant further does not apprise us as to why the Examiner's
proposed modifications would not be considered simple substitutions that
yield predictable results. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). "[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." Id. at 417.
Moreover, the proposed modification of the pad of Chen with the
translucent pad of Welles and the further proposed modification of Chen and
Welles with the UV curable adhesive of Picken do not appear to be uniquely
challenging. Appellant does not explain with any specificity why a person
of ordinary skill in the art would not have had an expectation of success in
making the combination. See In re 0 'Farrell, 853 F.2d 894, 903 (Fed. Cir.
1988) (noting that all that is required is a reasonable expectation of success,
not absolute predictability of success).
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claims 1 and 11 as unpatentable over Chen, Welles,
and Picken. As for dependent claims 2-10 and 12-20, these claims are not
separately argued by Appellant. See Appeal Br. 16-22. Consequently, we
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also sustain the Examiner's rejection of claims 2-10 and 12-20 as
unpatentable over Chen, Welles, and Picken. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-20 for
lack of written description.
We REVERSE the decision of the Examiner to reject claims 1, 5, 6,
11, 15, and 16 as unpatentable over Welles and Picken.
We REVERSE the decision of the Examiner to reject claims 2--4, 7-
10, 12-14, and 17-20 as unpatentable over Welles, Picken, and Weng.
We AFFIRM the decision of the Examiner to reject claims 1-20 as
unpatentable over Chen, Welles, and Picken.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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