Ex Parte CoteyDownload PDFPatent Trial and Appeal BoardOct 17, 201613628508 (P.T.A.B. Oct. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/628,508 09/27/2012 19407 7590 10/17/2016 Fitch, Even, Tabin & Flannery, LLP 120 South La Salle Street, Suite 1600 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Richard S. Cotey 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. 9262-102462-us (10541-U) CONFIRMATION NO. 3018 EXAMINER WALSHON, SCOTT R ART UNIT PAPER NUMBER 1788 MAILDATE DELIVERY MODE 10/17/2016 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 RICHARD S. COTEY1 Appeal2015-004604 Application 13/628,508 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's maintained final rejection of claims 1-13. 2 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the Real Party in Interest is Medline Industries, Inc. Appeal Brief filed October 27, 2014, ("App. Br.") 3. 2 Appellant cancelled claims 15-17 in a Response filed with the Appeal brief on October 27, 2014, and pending claims 18-20 stand withdrawn from consideration. Final Office Action entered May 21, 2014, ("Final Act.") 2. Appeal2015-004604 Application 13/628,508 CLAIIvIED SUBJECT IvIA TTER Appellant's claimed invention is generally directed to an apparatus comprising a flexible sheet comprised of a foil of antimicrobial copper that is configured to retroactively wrap conformably about at least one predetermined touch surface, and a securement mechanism that is configured to secure the flexible sheet to the predetermined touch surface. Spec. Abstract. Claim 1 is illustrative: 1. An apparatus comprising: a flexible sheet comprised of a foil of antimicrobial copper configured to retroactively wrap conformably about at least one predetermined touch surface; a securement mechanism configured to secure the flexible sheet to the predetermined touch surface such that the foil of antimicrobial copper serves as an antimicrobial touch surface in substitution for at least a portion of the at least one predetermined touch surface. App. Br. 9 (Claims Appendix.) REJECTIONS The Examiner maintains the following final rejections3: Claims 1-7, 11, and 12 under 35 U.S.C. § 102(b) as anticipated by Thomas (US 3,582,452, issued June 1, 1971) as evidenced by Gibbins et al. (US 2010/0190004 Al, published July 29, 2010). Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Thomas and Gibbins. 3 Examiner's Answer entered January 12, 2015 ("Ans."). As the claims were cancelled, the Examiner has withdrawn prior pending rejections of claims 15-17. Ans. 3. 2 Appeal2015-004604 Application 13/628,508 Claim 10 under 35 U.S.C. § 103(a) as obvious over Thomas and Burke (US 3,596,134, issued July 27, 1971). Claim 13 under 35 U.S.C. § 103(a) as obvious over Thomas and Grossman (US 2009/0261010 Al, published October 22, 2009). DISCUSSION Having carefully reviewed the Examiner's rejections in light of arguments advanced by Appellant in the Appeal Brief and Reply Brief, 4 we are not persuaded that the Examiner errs reversibly in finding that claims 1- 7, 11, and 12 were anticipated and concluding that claims 8, 9, 10, and 13 are unpatentable for obviousness. We add the following for emphasis. Rejection of Claims 1-7, 11, and 12 as Anticipated by Thomas The Examiner finds in essence that Thomas discloses a flexible sheet comprised of copper foil configured to wrap conformably about at least one surface to be decorated (predetermined touch surface), and a pressure sensitive adhesive (securement mechanism), used to secure the flexible sheet to the surface to be decorated (predetermined touch surface). Final Act. 4. The Examiner finds that the copper foil disclosed in Thomas, when secured to the surface to be decorated (predetermined touch surface), substitutes for a portion of the surface to be decorated (predetermined touch surface), and constitutes an antimicrobial touch surface. Final Act. 4-5. The Examiner relies on Gibbins as providing evidence that all copper is antimicrobial. Final Act. 5. Appellant argues that "Thomas without exception teaches coating his metallic surface with a decorative coating of one sort or another," which 4 Reply Brief filed March 12, 2015 ("Reply Br."). 3 Appeal2015-004604 Application 13/628,508 covers the metallic surface with a decorative finish, thus masking it beneath the decorative finish and preventing it from being used as an antimicrobial touch surface. App. Br. 6-8. In response to this argument, the Examiner determines that because Thomas' decorative coating is applied to the copper foil metallic sheet in a pattern, the coating to provide decoration is discontinuous and covers only a portion of the exposed copper foil surface, and that the uncoated portion of the copper foil constitutes an antimicrobial touch surface. Ans. 5. Under 35 U.S.C. § 102, to establish anticipation, a single prior art reference must describe, either expressly or under the principles of inherency, each and every element of a claimed invention. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The prior art reference must describe the claimed invention with sufficient specificity to allow one skilled in the art to readily envisage the claimed invention from the prior art reference. In re Schaumann, 572 F.2d 312, 315 (CCPA 1978). Turning to Thomas, we find it discloses a self-adhering flexible metallic decorative article comprising a metallic sheet, which is preferably a foil of copper, bonded to a first surface of a substrate with an adhesive, and a pressure sensitive adhesive on the second surface of the substrate, which attaches the article to an area to be decorated. Thomas col. 1, 11. 12-19, 11. 61-62; col. 2, 11. 42-50. It is undisputed that Thomas discloses that the surface of the copper foil that is not adhered to the substrate-the exposed surface-can be optionally coated with a clear or pigmented coating "so as to make it accept decorative finishes." Thomas col. 2, 11. 23-26; App. Br. 6- 8. Thomas further discloses that the exposed surface of the copper foil is decorated in any desired pattern using techniques such as rotogravure; 4 Appeal2015-004604 Application 13/628,508 flexographic, offset, or screen printing; and flocking. Thomas col. 2, 11. 29- 32. Rotogravure and flexography are printing processes, and flocking involves depositing small fiber particles onto a surface, which is essentially a process of printing with fibers. 5 Although Thomas does not specify the nature of the decorative pattern made on the copper foil, the decoration could be printed directly on the copper foil, or, if the optional coating is applied, printed on the coating. Also, while not explicitly specified in Thomas, the pattern could be formed by either printing or decorating the entirety of the foil or coating with sections having different pigments or colors (as Appellant asserts (Reply Br. 4)), or a pattern could be formed by printing or decorating only particular portions of the foil (as the Examiner asserts (Ans. 5)). Given the limited alternatives for forming a decorative pattern in accordance with Thomas' disclosures, one of ordinary skill in the art would have readily envisaged all such alternatives, including a copper foil on which a decorative pattern is directly applied only to particular portions of the foil and there are portions of the foil not covered by the printing or decorating and these exposed portions would be capable of serving as an antimicrobial touch surface, as recited in claim 1. Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001) ("[T]he disclosure of a small genus may anticipate the species of that genus even if the species are not themselves recited."); See also In re Petering, 301F.2d676, 682 (CCPA 1962); In re Schaumann, 572 F.2d at 315. 5 See, e.g., www.dictionary.com/browse/rotogravure?s=t, www.dictionary.com/browse/flexography?s=t, www.dictionary.com/browse/flocking?s=t (visited October 8, 2016). 5 Appeal2015-004604 Application 13/628,508 Ivforeover, Appellant fails to establish that the Examiner erred in finding that Thomas discloses that the optional coating and decorative pattern are applied to the copper foil after it is laminated or adhered to the substrate, and that the intermediate structure that exists before the laminate is optionally coated and decorated corresponds to the claimed apparatus. Ans. 4-5. Although Appellant argues that this intermediate structure is a mere transitory state during the manufacturing process, and is at best an accidental and unintended example of an antimicrobial touch surface (Reply Br. 3--4), formation of this intermediate would have been intended as a necessary step in producing the decorative article, not merely accidental. The fact that the initially prepared copper foil laminate subsequently undergoes further modification (coating and decoration) does not negate anticipation. An "intermediate structure" that was both "intended and appreciated" in the prior art may nonetheless anticipate. In re Mullin, 481 F.2d 1333, 1335-36 (CCPA 1973) (citing In re Herbert, 461F.2d1390 (CCPA 1972) ("It matters not one whit that it was intended to be and appreciated as being an intermediate structure rather than an end use item."); In re Johnson, 162 F.2d 924, 928 (CCPA 1947) ("In our opinion the fact that Braunbeck intends his flaky product [i.e., an intermediate product,] to be reduced to flour and applicants intend the same flaky product not to be reduced to flour does not entitle applicants to a patent on the flaky product.") Accordingly, we find, as did the Examiner, that Thomas anticipates claim 1 within the meaning of 35 U.S.C. § 102(b ). Rejections of claims 8, 9, 10, and 13 as Obvious Appellant relies on his or her contentions that the Examiner erred in rejecting the base claim, independent claim 1, from which claims 8, 9, 10, 6 Appeal2015-004604 Application 13/628,508 and 13 depend. App. Br. 8. Because we are unpersuaded of reversible error in the Examiner's rejection of claim 1 as anticipated by Thomas, Appellant's position as to these grounds of rejection is without merit. Accordingly, we sustain the rejections of claims 8, 9, 10, and 13 under 35 U.S.C. § 103(a). DECISION In view of the foregoing, the Examiner's rejection of claims 1-7, 11, and 12 under 35 U.S.C. § 102(b) is AFFIRMED, and the Examiner's rejections of claims 8, 9, 10, and 13 under 35 U.S.C. § 103(a) are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l). AFFIRMED 7 Copy with citationCopy as parenthetical citation