Ex Parte Collier

Patent Trial and Appeal Board

Jun 14, 2016

11117053 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/117,053 04/28/2005
25007 7590 06/16/2016
LAW OFFICES OF DALE R HALLING
3595 E. FOUNTAIN BL VD SUITE M2
COLORADO SPRINGS, CO 80910
FIRST NAMED INVENTOR
Michael Robert Collier
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.
HFS-0501 6304
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
khalling@hallingip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ROBERT COLLIER
Appeal2015-000986
Application 11/117 ,053
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal 1 under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 21-27.2 We have jurisdiction pursuant
to 35 U.S.C. § 6.
Appellant's claimed invention is directed to a textile having a
patterned reflective film and a method of producing a reflective design on a
1 Appellant identifies Harmony Fastening Systems, Inc. a Colorado
corporation, as the real party in interest (App. Br. 3). We refer to the
unnumbered pages of the Brief by assigning ascending whole numbers to the
pages in the order in which the pages appear beginning with the numeral 1
for the first page.
2 This is the second appeal involving this Application (see the Board
Decision rendered March 1, 2013 in Appeal No. 2011-005053).
Appeal2015-000986
Application 11/117 ,053
textile by applying a laser so as to carbonize the top surface of the polymer
layer of a reflective film such that the reflective film has reduced reflectivity
where the laser is applied. The design pattern may comprise "text or
graphics" (Spec. 6; see Fig. 2, element 34 ). Appellant acknowledges that
garments with reflective material attached for increasing the visibility and
safety of a wearer "after dark" are known and that the use of heat activated
adhesives is one typical technique for attaching the reflective material (Spec.
1-2).
According to Appellant, "[i]t is thought that the laser beam partially
ablates and partially carbonizes the surface of the reflective material" (Spec.
6). The reflective film is disclosed as including "tiny glass beads reflectors
embedded in a polymer" (id.). Appellant indicates that the disclosed
invention is concerned with the visual appearance or "aesthetic appeal of
garments having a reflective film" and "[t]he patterned area commonly
retains some of its reflective attributes after being patterned (id.). Thus, the
claimed carbonization of the reflective film polymer includes a partial
carbonization of the surface of the reflective film polymer so as to retain at
least some of the beneficial features of the reflective film.
Appellant explains that "[t]o achieve adequate results, the laser
intensity and dwell on a particular spot need to be precisely set or the laser
may not sufficiently mark the reflective film or it may bum through the
reflective film" (id.).
2
Appeal2015-000986
Application 11/117 ,053
Claim 21 is illustrative and reproduced below:
21. A method of producing a reflective design on a textile, comprising
the steps of:
selecting a textile;
adhering a reflective film using heat to the textile, wherein the reflective
film includes a plurality of glass beads embedded in a polymer layer; focusing
a laser on a top surface of the reflective film; applying the laser to the top
surface of the reflective film for a predetermined time and a predetermined
intensity, wherein a top surface of the polymer layer is carbonized and the
reflective film has diminished reflectivity where the laser is applied.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Billingsley
Costin
Lightle
us 5,738,746
us 5,990,444
us 6,153,128
Apr. 14, 1998
Nov. 23, 1999
Nov. 28, 2000
The Examiner maintains the following grounds of rejection:
Claims 24 and 27 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Claims 21-27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Billingsley, as evidenced by Lightle, in view of Costin.
We affirm the stated rejections for substantially the fact finds and
reasons as set forth by the Examiner in the Final Rejection and in the
Examiner's Answer.
Written Description Rejection
The burden of showing that the claimed invention is not described in
the specification rests on the Examiner. In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996); In re Wertheim, 541 F.2d 257, 262-265 (CCPA 1976). The
Examiner meets this burden by adducing "evidence or reasons why persons
3
Appeal2015-000986
Application 11/117 ,053
skilled in the art would not recognize in the disclosure a description of the
invention defined by the claims." Wertheim, 541 F.2d at 263-64.
The Examiner has determined that the rejected appealed claims fail to
comply with the written description requirement because the Specification,
as filed, furnishes no written descriptive support for "completely carbonizing
the top surface" as required by claim 24 and for the "completely carbonized
surface" limitation of claim 27 (Ans. 2). In particular, the Examiner has
determined that Appellant's Specification description of "partially
carbonizing the surface of the reflective material" with a laser and
Appellant's disclosed observation that the surface that is carbonized "looks
black" are insufficient to establish that Appellant was in possession of the
subject matter of claim 24 and/or claim 27 in light of the aforementioned
limitations (Ans. 2; Spec. 6-7).
Thus, the Examiner has advanced evidence and reasoning as to why
artisans would not recognize a description of the invention as now claimed
in the originally filed disclosure.
Rather than providing argument that focuses on the lack of written
description rejection advanced by the Examiner, Appellant presents
contentions to the effect that the claim language meets the definiteness
requirements under the second paragraph of 35 U.S.C. § 112, arguments that
address a ground of rejection that is not maintained by the Examiner (App.
Br. 7-8). 3 Consequently, these arguments are off the mark and unavailing
3 Because a rejection under the second paragraph of 35 U.S.C. § 112 is not
before us for review, we take no position on the merits of Appellant's
contentions advocating for a favorable determination as to the compliance of
certain appealed claims with the definiteness requirements of the second
paragraph of 35 U.S.C. § 112.
4
Appeal2015-000986
Application 11/117 ,053
as to demonstrating substantive error in the lack of written description
rejection before us for that reason alone, as well as for the reasons advanced
by the Examiner (Ans. 5-6).
In this latter regard and even if Appellant's argument could have been
taken as being directed to the Examiner's written description rejection,
Appellant's argument indicates no reversible error in the Examiner's factual
determination as to the lack of written descriptive support in the
Specification, as filed, for the limitations in question for reasons advanced
by the Examiner in the Answer (id.).
While it may have been obvious to completely carbonize a surface in
a pattern area of the reflective film with a laser, Appellant has not described
such an embodiment in the Specification as filed. See, e.g., Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) ("One shows
that one is "in possession" of the invention by describing the invention, with
all of its claimed limitations, not that which makes it obvious").
Accordingly, upon due consideration of Appellant's argument and the
Specification description and evidence of record brought to bear on the lack
of written description rejection before us, we find that the weight of the
evidence supports the Examiner's lack of written description determination
with respect to the rejected appealed claims.
It follows that we shall affirm the Examiner's lack of written
description rejection of claims 24 and 27.
5
Appeal2015-000986
Application 11/117 ,053
Obviousness Rejection
After a careful review of the opposing positions furnished by
Appellant and the Examiner and the evidence of record bearing on the
obviousness rejections before us, we determine that Appellant's arguments
are insufficient to identify reversible error in the Examiner's obviousness
rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we affirm the Examiner's obviousness rejection for substantially the fact
findings and reasons as set forth by the Examiner in the Answer. We add the
following for emphasis.
Appellant argues rejected claims 21 and 24 together as a group,
presents additional argument as to dependent claims 22 and 23 together as
another group, and argues claims 25-27 separately. We select claim 21 as
the representative claim for the first presented claim grouping, claim 22 as
the representative claim for the second claim grouping, and claim 25 as the
representative claim for the third claim grouping. We consider the
respective representative claims separately to the extent warranted by the
arguments presented.
The Examiner has determined that Billingsley teaches or suggests a
method for adhering a retroreflective film to clothing (a provided textile) by
heat wherein the reflective film applique includes glass beads (microspheres)
embedded in a binder (polymer) layer (Ans. 3; Billingsley, col. 7, 11. 19-
55+; Fig. 3). Billingsley teaches that the reflective film can be applied to
clothing articles such as vests, pants, shoes, socks, belts, etc., as well as
other non-clothing substrates, such as backpacks, bags, etc. (col. 7, 11. 56-
67).
6
Appeal2015-000986
Application 11/117 ,053
The Examiner has determined that representative claim 21 differs
from Billingsley in that Billingsley does not disclose focusing and applying
a laser for marking (carbonizing) the reflective film polymer layer as
required by claim 21 (Ans. 3).
The Examiner applies the additional teachings of Lightle to evince
that the visually distinctive marking of retroreflective films for the
conveyance of information (numbers, letters) is known, however, the
Examiner observes that Lightle employs an ablative technique for removing
some portions of a metallic layer in accomplishing such without explicitly
describing or teaching the laser induced carbonization of a top surface of a
polymer (binder) layer of the reflective film as required by representative
claim 21 (Ans. 3; Lightle, col. 12, 11. 46---63).
As for the use of a laser for marking/scribing (carbonizing) a polymer
material surface of a reflective film to form a pattern/ reflective material
design on the surface, the Examiner turns to the teachings of Costin (Ans. 3-
5). The Examiner finds, inter alia, that (Ans. 3--4):
Costin discloses a laser method and system of scribing
graphics. Concerning the steps of forming a design and
carbonization thereof, Costin discloses an apparatus that is
computer controlled wherein a graphic can be scanned in with
the laser being computer controlled (cols. 5-6, lines 31 +;col.
33, lines 8+ ). The method as disclosed by Costin is controlled
to substantially avoid complete carbonization, melting, and/or
burnthrough of the material (abstract; col. 2 7, lines 19+ ).
Regarding the materials for use, Costin discloses fabrics,
plastics, leather, wood, metals, ceramics, glass, and the like
(col. 25, lines 27+; col. 28 bridged to 29, lines 59+).
Based on the disclosures and teachings set forth in the applied
references, the Examiner has further determined that (Ans. 5):
7
Appeal2015-000986
Application 11/117 ,053
Given that Billingsley discloses a launderable
retroreflective applique that provides at least a partial
reflectivity from a glass bead embedded in a polymer matrix
and Costin discloses an at least partial reflective material such
as glass and carbonizable materials such as plastics without
damaging the material to produce designs, it would have been
obvious to one of ordinary skill in the art to use the method of
Costin to mark the material of Billingsley resulting in the
desired design.
In other words, the Examiner maintains that one of ordinary skill in
the art would have been led to the proposed modification of Billingsley' s
method based on the combined teachings of the applied references by
applying a laser for marking the polymer/binder layer of the reflective
material of Billingsley as taught by Costin to be a known scribing technique
for similar materials in order to provide for producing decorative or other
identifying markings on a surface of the retroreflective applique of
Billingsley as would have been suggested by Costin (Ans. 5; see Costin, col.
24, 1. 24---col. 25, 1. 9; col. 26, 1. 60- col. 36, 1. 13 ).
Concerning representative claim 21, Appellant argues that Costin does
not teach focusing the laser on the surface of the material but rather teaches
away from such while maintaining that none of the applied references alone
or, in combination, teach or suggest: (1) "focusing a laser on the top surface
of a reflective film" and/or (2) "creating a carbonized marking on a
reflective film" (App. Br. 10-12). These arguments are not persuasive of
substantive error in the Examiner's obviousness rejection of representative
claim 21 for substantially the reasons set forth by the Examiner (Ans. 3-5,
13-16).
In this regard, we observe that the Examiner does not rely on either
Billingsley or Lightle for teaching carbonization of a top surface of a
8
Appeal2015-000986
Application 11/117 ,053
polymer layer via application of a laser. Nor has Appellant directly disputed
the Examiner's rationale for the proposed modification of Billingsley; that
is, for applying a design to the retroreflective applique of Billingsley via the
computer controlled laser scribing/marking technique taught and suggested
by Costin for the purpose of furnishing a desired pattern/design thereto.
After all, furnishing and applying desirable designs/patterns to appliques
borne by wearable materials, such as the articles of clothing being made by
Billingsley that include retroreflective appliques on the surface thereof,
would have been well within the skill of the art and attended by expected
results as taught by Costin with respect to scribing a wide variety of
materials, including articles of clothing. Moreover, the Examiner has
reasonably found that at least some (partial) carbonization of the polymer
binder material employed in the retroreflective applique of Billingsley would
have occurred upon imputing a laser design/pattern to the surface of the
applique of Billingsley via the method taught by Costin (Final Office Act. 6,
7, 15, 18; Ans. 3-7, 14, and 15; Costin, col. 1, 1. 65---col. 3, 1. 49; col. 5, 1.
40- col. 6, 1. 22; col. 13, 11. 55----67; col. 27, 11. 38-57; col. 28, 1. 32---col. 30, 1.
25). See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (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.").
We are not persuaded of substantive error in the Examiner's
obviousness rejection of claim 21 by Appellant's contention that Costin
defocuses the laser beam and teaches away from focusing a laser on a top
surface rather than teaching focusing a laser onto the top surface of the
9
Appeal2015-000986
Application 11/117 ,053
material substantially for the reasons set forth by the Examiner (Final Office
Act. 19-20; Ans. 15-16; see Costin, col. 6, 1. 28, col. 7, 1. 6; col. 11, 11. 1-26;
col. 13, 11. 52-53; col. 15, 11. 52-67, col. 27, 11. 55-57). In this regard, we
further observe that Appellant does not disclose any particular laser, laser
focus distance, or laser laser-induced spot size on a surface as a definition
for what is meant by a focused laser. Rather, Appellant provides general
statements in the disclosure of the subject Specification concerning the laser
focusing limitation, such as "[a] laser beam is focused onto the reflective
film to form a pattern on a surface of the reflective film", "[t]he computer 16
directs a laser 18 and associated optics to focus the laser beam 20 onto a
surface 22 of the reflective film 12" and "the laser is focused onto the
reflective film with the appropriate power and dwell settings to create the
design, which ends the process at step 114" (Spec. 3, 6, 8: Figs 1, 3).
Consequently, Appellant's argument suggesting that Costin fails to teach
focusing the laser onto a material surface; that is, focusing a laser such that a
design pattern is imparted to the surface (as indicated by Appellant's
disclosure) is not persuasive of substantive error in the Examiner's
obviousness rejection for reason as set forth by the Examiner (Ans. 14--16).
As for the Declaration under 37 C.F.R. § 1.132 by Robert Holt (Holt
Deel.) and the Declaration under 37 C.F.R. § 1.132 by Michael R. Collier
(Collier Deel.), we determine that the Declaration evidence furnished by
Appellants together with Appellant's argument is insufficient to outweigh
the evidence of obviousness presented by the Examiner for the reasons set
forth by the Examiner (Ans. 6-12).
In particular, we concur with the Examiner that the gross sales
information for a product (Laser-Brite Series pet collar of Coastal Pet
10
Appeal2015-000986
Application 11/117 ,053
Products, Inc.) presented by Mr. Collier (the named inventor) is not
sufficient to establish commercial success for the identified product without
information with respect to market share, much less establish commercial
success for a product that is a due to argued features of any of the claims on
appeal (Ans. 8-12). Commercial success or other secondary considerations
may presumptively be attributed to the claimed invention only where "the
marketed product embodies the claimed features, and is coextensive with
them." Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Phillip Morris, Inc.,
229 F.3d 1120, 1130 (Fed. Cir. 2000)). The commercial success must be
due to claimed features, and not due to unclaimed features. Joy Techs., Inc.
v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990), aff'd., 959 F.2d 226, 228
(Fed. Cir. 1992).
We are mindful of the Pet Business Magazine (Dec. 2008)
identification of a Laser-Brite Series pet collar of Coastal Pet Products, Inc.
as a "product of the year" as stated by Mr. Collier and as inferentially
referred to by Mr. Holt in their respective Declarations (Collier Deel. i-fi-12, 3;
Holt Deel. i-fi-12, 10). However, the industry recognition as to the identified
pet collar referred to in the Declarations is not accompanied by a detailed
technical analysis attaching the merits of this award to any particular
identified novel and purportedly non-obvious features of representative
claim 21 and/or any other claims on appeal in this application. After all,
Appellant bears the burden of production when presenting secondary
evidence that is argued as tending to show the non-obviousness of the
claimed subject matter.
11
Appeal2015-000986
Application 11/117 ,053
Appellant argues that the Examiner did not properly evaluate the
Declaration evidence (App. Br. 9-10). However, Appellant has not
explained, with any degree of particularity, why the Examiner's analysis of
the evidence is flawed. Mr. Holt has not furnished any technical analysis
explaining how the Coastal Pet's Laser Brite pet collar embraces any of the
particularly argued novel and asserted to be non-obvious features of
representative claim 21 and/or any other claims on appeal, much less
established that he is qualified as an expert to opine on such matters, and/or
articulated how the "award" was merited based on such embraced novel
features of Appellant's claimed subject matter (Holt Deel. i-fi-12, 7, 10).
Accordingly, we concur with the Examiner that the proffered
evidence, as presented in the Declarations and argued in the Appeal Brief,
fails to outweigh the evidence tending to establish the obviousness of the
claimed subject matter marshalled by the Examiner.
On this record, we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art to employ the laser scribing
technique of Costin to impart a design/pattern to the surface of the
retroreflective applique of Billingsley in a manner as required by
representative claim 21, and correspondingly, claim 24, which is grouped
together therewith.
Concerning separately grouped representative claim 22 and claim 23,
we concur with the Examiner that a step of forming a plurality of carbonized
dots on the top surface of the polymer layer would have been suggested to
one of ordinary skill in the art based on Billingsley' s teachings with respect
to the use of a binder (polymer) layer as part of the retroreflective applique
coupled with the teachings of Costin with respect to forming dot matrix
12
Appeal2015-000986
Application 11/117 ,053
and/or gray scale patterns with the laser scribing technique taught or
suggested by Costin (Ans. 4; Costin, col. 26, 11. 33+; col. 28, 11. 12+).
Appellant's arguments parallel the arguments made with respect to claim 21
and does not serve as a substantive separate argument (App. Br. 12-13).4
For reasons advanced by the Examiner in the Answer and as discussed
above, this argument is not persuasive of harmful error in the Examiner's
obviousness rejection.
Concerning representative product claim 25, Appellant presents
arguments against the Examiner's obviousness rejection of this claim that
parallel the arguments made against the Examiner's rejection of
representative method claim 21 (App. Br. 13). For reasons discussed above
and in the Examiner's Answer, Appellant's arguments with respect to the
Examiner's proposed combination of the teachings of the applied references
fall short in identifying harmful error in the Examiner's rationale for the
proposed modification of Billingsley; that is, for applying a design/pattern to
the retroreflective applique of Billingsley via the laser scribing/marking
technique taught and suggested by Costin for the purpose of furnishing a
desired marking pattern thereto that is formed by partial carbonization of the
binder/polymer surface.
On this record, we affirm the Examiner's rejection of claims 21-27
under 35 U.S.C. § 103(a) as being unpatentable over the applied references.
4 In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.
13
Appeal2015-000986
Application 11/117 ,053
CONCLUSION/ORDER
The Examiner's decision to reject the appealed claims is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
14