Ex Parte Grant

Board of Patent Appeals and Interferences

Jun 14, 2010

10417661 (B.P.A.I. Jun. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte WILLIAM K. GRANT
_____________

Appeal 2009-004665
Application 10/417,661
Technology Center 2600
______________

Decided: June 14, 2010
_______________

Before ROBERT E. NAPPI, JOHN C. MARTIN, and JOESPH F.
RUGGIERO, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004665
Application 10/417,661

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 7, 12 through 17, and 24 through 36.
We affirm.
INVENTION
The invention is directed to a method of decorating and design using
modular surface treatment elements. See pages 2 and 3 of Appellant’s
Specification. Claim 7 is reproduced below:
7. A method of design using a color - tone matrix of modular
surface treatment materials, the color - tone matrix comprising
modular surface treatment units having a first color and a sequential
array of tonal variations within said first color, and modular surface
treatment units having a second color different from the first color,
and a sequential array of tonal variations within said second color,
wherein each modular surface treatment unit consists of a single color
and tonal intensity, said method comprising selecting first and second
modular surface treatment units from said matrix and applying said
selected first and second modular surface treatment units to a surface,
wherein the tonal intensity and color of the first modular surface
treatment unit complements the tonal intensity and color of the second
modular treatment unit.

REFERENCES
Masuda US 2002/0063721 A1 May 30, 2002
Seitz, Jr. US 2002/0175942 A1 Nov. 28, 2002
Menner US 2002/0184232 A1 Dec. 5, 2002

REJECTIONS AT ISSUE
The Examiner has rejected claims 7, 12 through 17, and 24 through 36
under 35 U.S.C. § 103(a) as being unpatentable over Masuda in view of
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Seitz and Menner. The Examiner’s rejection is on pages 3 through 7 of the
Answer.1
ISSUES
Appellant argues on pages 5 through 10 of the Appeal Brief2 that the
Examiner’s rejection of claims 7, 29, and 30 is in error. Appellant argues
that there is no motivation to combine the references and, even if there was
proper motivation, the references do not teach the limitations of the claimed
invention. Specifically, Appellant argues that Masuda: discloses classifying
color or paint; is not used for design; and does not disclose specifying two or
more modular surface treatments where the colors are complementary. Brief
6. Appellant states that Seitz teaches a system which allows a user to
visualize a combination of tiles regardless of whether they are
complementary and as such does not limit a decorator to choosing only
among surface treatments which complement the tonal intensity and color of
each other. Brief 7. Appellant argues that the third reference, Menner, does
not use a color or tone matrix to determine whether a color is
complementary or not. Brief 7. Appellant concludes that the combination
of the references does not teach a color-tone matrix of modular surface
treatment units as claimed. Brief 7. Additionally, Appellant argues that the
Examiner’s reason for combining the references is hindsight. Brief 8.
Appellant’s arguments group claims 12 through 17 and 31 through 34
together on pages 8 and 9 of the Brief but rely upon the same arguments

1 Throughout this decision we refer to the Examiner’s Answer dated July 23,
2008.
2 Throughout this decision we refer to the Appeal Brief dated April 18, 2008
and Reply Brief dated September 23, 2008.
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presented with respect to claim 7. Similarly, Appellant’s arguments group
claims 24 through 28, 35, and 36 but rely upon the arguments presented with
respect to claim 7.
Thus, Appellant’s contentions present us with the two issues:
a) Did the Examiner err in finding that the combination of the references
renders obvious the design method which makes use of a color tone matrix
as claimed?
b) Did the Examiner establish a sufficient rationale to show that the skilled
artisan would have combined the teachings of the three references?

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416

FINDINGS OF FACT
1. Masuda teaches a classification method for metallic paint colors
using a hue-tone value to represent the color. Figure 3 depicts a
matrix of hue and tone. Abstract, Figure 3, and paragraphs 0033,
0054, and 0055.
2. Masuda’s invention is useful as part of a computer-based design
tool and allows a designer to search for a color he or she desires.
Paragraphs 0004, 0009, and 0054.
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3. Seitz teaches a method of permitting a purchaser of a floor covering
or other surface treatment, to manipulate and visualize the surface
covering in a simulation. Abstract.
4. The method of Seitz facilitates the marketing of colored and
patterned carpet tile products for installation in different patterns.
The visualizations are provided by downloading pattern images of
floor coverings having different patterns and colors. See Figures 26,
27, 41, and 44, and paragraphs 0082 and 0094.
5. Menner teaches a design method of identifying decorative products
based upon matching paint color. One of the purposes of Menner’s
system is to allow a computer to aid in determining complementary
colors. Thus, Menner also teaches the desirability of designing
using complementary colors. Abstract and paragraph 0025.

ANALYSIS

Rejection of claims 7, 29 and 30.
First issue.
Appellant’s arguments have not persuaded us that the Examiner erred
in finding that the combination of the references renders obvious the design
method which makes use of a color tone matrix as claimed. Representative
independent claim 7 recites a method of using a tone matrix having surface
treatments of a first color with a sequential array of tones and surface
treatments of a second color with a sequential array of tones. The method
recited in claim 7 involves selecting first and second surface treatments,
where the tonal intensity and color of the first surface treatment
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complements the tonal intensity and color of the second surface treatment.
We note, contrary to Appellant’s arguments on page 7 of the Brief and pages
2 and 3 of the Reply Brief, the tone matrix is not recited as being limited to
color and tones that are complementary, rather the recited method involves
using the recited matrix to select colors and tones that are complementary.
Thus, the matrix can also include colors and tones that are not
complementary.
The Examiner has found that Masuda teaches a matrix of a first color
and an array of tonal variations within that color and a second color with
tonal variations within the second color. Answer 3. We concur with the
Examiner’s findings as they are supported by ample evidence. Fact 1.
Further, contrary to Appellant’s assertions on page 6 of the Brief, Masuda is
directed to using the color matrix as part of a method of design. Fact 2. The
Examiner has found that Seitz teaches a system where a user can select
surface treatments of different colors and that Menner teaches a method of
finding complementary colors. Answer 4. These findings are supported by
the evidence. Facts 3 through 5. Thus, we find that the Examiner has shown
that the prior art teaches it was known in design systems to present a matrix
of colors of varying tones, to select two surface treatments having different
colors, and to select colors which complement each other as claimed.
Accordingly, the Appellant’s arguments directed to the first issue have not
persuaded us of error in the Examiner’s rejection of representative
independent claim 7.
Second issue.
Appellant’s arguments have not persuaded us that the Examiner erred
in establishing a sufficient rationale to show that the skilled artisan would
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combine the teachings of the three references. The Examiner states that the
skilled artisan would combine Masuda and Seitz to allow a user to preview
the tiles before being applied and that applying the teachings of Menner
would allow the coordination of colors. Answer 4. Further, the Examiner
states:
[B]oth Seitz and Menner deal with methods to select surface
products (see abstract of Seitz and p. 1, section 0008 of Menner).
Masuda deals with a method of classifying a surface product, paint,
with the eventual purpose being to preview a surface product color
(see section 0058). All 3 deal with some method of using a computer
to select and preview material to be applied to a surface. The Seitz
and Menner references both provide advantages of color selection not
found in the Masuda reference. The Seitz invention, for instance, is
advantageous because it allows a preview of tiles, while the Masuda
reference only allows preview of single paint colors. The Menner
reference is further advantageous because it can be used to coordinate
complementary colors and enhance aesthetic appeal, while the Seitz
and Masuda references stop short of finding complementary colors.
One skilled in the art, attempting to improve on the color
classification and preview system of Masuda, would certainly look to
other known color preview techniques in order to tile and coordinate
colors to be applied to a surface.

Answer 11-12. We consider the Examiner to have established that
combining the systems of these three teachings is nothing more than using
known methods to produce their known (predictable) results and as such to
have established that the combination of the teachings would have been
obvious. Accordingly, Appellant’s arguments directed to the second issue
have not persuaded us of error in the Examiner’s rejection of representative
independent claim 7. Thus, we sustain the Examiner’s rejection of
independent claim 7 and claims 29 and 30 grouped with claim 7.

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Rejection of claims 12 through 17 and 31 through 34.
Representative claim 12 recites a matrix of different colors and
different tonal intensities. Claim 12 further recites that the method involves
specifying one or more of the modular surface treatments where each surface
treatment has either the same color or tonal intensity as the other surface
treatments. Thus, claim 12 is similar to claim 7 in that it recites a matrix of
color and tonal intensities and selecting one of them for application to a
surface. However, claim 12 is broader in that it does not contain a limitation
directed to selecting a second color that is complementary.
Appellant’s arguments have not persuaded us of error in the rejection
of representative independent claim 12. As discussed above Appellant’s
arguments have not persuaded us that the Examiner erred in finding that the
references make obvious a design method which makes use of a color tone
matrix or that the Examiner erred in combining the references. Accordingly,
we sustain the Examiner’s rejection of representative claim 12 and claims 13
through 17 and 31 through 34 which are grouped with claim 12.

Rejection of claims 24 through 28, 35, and 36
Representative claim 24 recites a matrix of different colors and
different tonal intensities of carpet tiles. Claim 24 further recites that the
method involves specifying carpet tiles from the matrix wherein for each
specified carpet tile the color and tonal variation complements one another.
Thus, claim 24 is similar to claim 7 in that it recites a matrix of color and
tonal intensities and selecting one of them for application to a surface. As
with claim 7, claim 24 does not recite that the tone matrix is limited to color
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and tones that are complementary, rather the recited method involves using
the matrix to select colors and tones that are complementary
Appellant’s arguments have not persuaded us of error in the rejection
of representative independent claim 24. As discussed above, Appellant’s
arguments have not persuaded us that the Examiner erred in finding that the
references make obvious a design method which makes use of a color tone
matrix or that the Examiner erred in combining the references. We
additionally note that the Examiner finds, on pages 3 and 4 of the Answer,
that the limitation of selecting carpet tiles (which have a color) is taught by
Seitz, a fact which is not contested and is supported by evidence. Fact 4.
Accordingly, we sustain the Examiner’s rejection of representative claim 24
and claims 25 through 28, 35, and 36 which are grouped with claim 24.

CONCLUSION
Appellant has not persuaded us of error in the Examiner’s rejection of
claims 7, 12 through 17, and 24 through 36.

ORDER
The decision of the Examiner to reject claims 7, 12 through 17, and 24
through 36 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)(1)(iv).

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Application 10/417,661

AFFIRMED

ELD

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