Ex Parte Dumond et alDownload PDFPatent Trial and Appeal BoardNov 1, 201311504266 (P.T.A.B. Nov. 1, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/504,266 08/15/2006 Robert A. Dumond 6674-0104 3591 50811 7590 11/01/2013 O''Shea Getz P.C. 1500 MAIN ST. SUITE 912 SPRINGFIELD, MA 01115 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 11/01/2013 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 ROBERT A. DUMOND and TIMOTHY F. LESSARD ____________ Appeal 2012-005063 Application 11/504,266 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final rejection under 35 U.S.C. § 103(a) of claims 1-8, 10-15, and 17-23 as obvious over Nelson ʼ4301 with Chien;2 and of claims 9 and 16 as obvious over Nelson 430, Chien, and Nelson ʼ408.3 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 US 2002/0127430 A1 published September 12, 2002. Nelson ʼ430 shares a common inventor with the present case on appeal. 2 US 5,775,016 patented July 7, 1998. 3 US 6,395,408 B1 patented May 28, 2002. Appeal 2012-005063 Application 11/504,266 2 Claim 1 is illustrative of the claimed subject matter: 1. A decorative laminate, comprising: a core layer having at least one sheet of paper impregnated with a resin; and a decorative layer having at least one sheet of paper with at least first and second geometric patterns printed thereon, which first geometric pattern is printed using a first photoluminescent material, and which second geometric pattern is printed using a second photoluminescent material; wherein the first photoluminescent material produces a first color when exposed to ultraviolet light, and the second photoluminescent material produces a second color when exposed to ultraviolet light, which second color is different from the first color. Each independent claim (i.e., claims 1, 10, 17, 20, and 22) similarly requires a first and a second photoluminescent material producing two different colors in a decorative laminate, or in a method for making a decorative laminate (Claims App’x). Appellants rely upon the same arguments regarding the use of two different photoluminescent colors for each independent claim, and do not present any separate arguments for any specific claim (Br. 6-11). Accordingly, we select claim 1 as representative. ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we agree with the Examiner that the claimed subject matter of representative claim 1 would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for these claims for Appeal 2012-005063 Application 11/504,266 3 essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. It is well established that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The obviousness analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. at 418. Furthermore, an improvement in the art is obvious if “it is likely the product not of innovation but of ordinary skill and common sense.” Id. at 421. We are not persuaded by Appellants’ arguments that there is no suggestion of using more than one photoluminescent material in the applied prior art (Br. 8). There is no dispute that Nelson ʼ430 discloses the claimed subject matter of a decorative laminate and method of forming such a laminate except for an explicit teaching of using two different photoluminescent materials/colors as recited in each independent claim.4 The Examiner relies upon Chien mainly to exemplify that photoluminescent materials that produce a variety of colors are well known (e.g., Ans. 5). 4 We also agree with the Examiner that the claimed design may be properly characterized as nonfunctional descriptive material (e.g., Ans. 13). In the context of prior art rejections, a distinction over the prior art based on nonfunctional descriptive material is patentably inconsequential. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Appeal 2012-005063 Application 11/504,266 4 We have no doubt that the use of two different photoluminescent materials in order to produce two different colors in a decorative laminate would have been within the level of ordinary creativity in the art based on the applied prior art of Nelson ʼ430, with or without Chien. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”).5 Appellants have not presented any persuasive reasoning or evidence that the use of two photoluminescent materials/colors in Nelson ʼ430 would not have been within the level of skill in the art as discussed above and in the Examiner’s Answer. Appellants also contend that the “utility [of providing safety information to a bowler] is not possible with either prior art reference” (Br. 8). This is not persuasive, since the decorative laminate as claimed (and method of forming same) is not limited to any particular application. Furthermore, Nelson ʼ430 exemplifies a wide variety of uses for its decorative laminate, including for bowling lanes (Nelson ʼ430 Abstract). The Examiner’s decision is affirmed. 5 See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense.”). Appeal 2012-005063 Application 11/504,266 5 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 tc Copy with citationCopy as parenthetical citation