Ex Parte Hansen

Board of Patent Appeals and Interferences

May 13, 2008

10368772 (B.P.A.I. May. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROGER A. HANSEN
__________

Appeal 2007-3424
Application 10/368,772
Technology Center 1700
__________

Decided: May 13, 2008
__________

Before BRADLEY R. GARRIS, ERIC GRIMES, and ALLEN R.
MACDONALD, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a decal
organization tool, which the Examiner has rejected as anticipated by or
obvious in view of the prior art. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
“Many products produced by industry are sufficiently complex, and
sometimes even potentially dangerous to a customer, that numerous safety
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messages, warning signs, instructions and other notices must be affixed to
the product before sale” (Spec. 1). The Specification refers to all such
signage, along with informative and decorative signs, as “decals or decal
messages” (id.).
The Specification discloses “a decal organization tool and process by
which all existing decals associated with and required for a particular
product or product model are consolidated onto a single large decal sheet”
(id. at 11). The Specification also discloses “the use of an adhesive which
leaves a permanent residue on the product and allows the manufacturer to
identify every decal placed on the product even after the decals have been
removed” (id.).
Claims 2-4, 7, 9-22, and 30-39 are pending and on appeal (Br. 4).
Claims 33 and 36 are representative and read as follows:
33. A decal organizational tool for use with a hazardous product
which requires a plurality of instructional decals for the education and
welfare of a user of the product, the decal organizational tool comprising:
an informational layer having an obverse face and a reverse face and
comprising:
a plurality of instructional decals with messages different from
one another and descriptively relating to instructional information for the
education and welfare of a user of the product, the messages being printed
on one of the obverse and reverse faces of the information layer whereby all
of the different instructional decal messages will be available to a decal
installer as a group of the plurality of decals and can be brought to the
product as a group; and
a removal cut surrounding and associated with each different
instructional decal that defines an edge of each decal and that permits
removal of each associated decal from the information layer; and
an adhesive applied to the reverse face of the information layer; and
a liner sheet releasably retained to the information layer by the
adhesive such that the plurality of decals are releasably peelable from the
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liner sheet, whereby the liner sheet, when stripped bare of the plurality of
instructional decals, becomes an indicator for the decal installer that all the
decal messages describing the product on the liner sheet have been applied
to the product, thereby assuring that the instructional decal messages will be
applied to the product for the education and welfare of the user of the
product.

36. The decal organization tool of Claim 33 wherein the adhesive
contains an additive responsive to ultraviolet light, such that when at least
one of the plurality of decals with a portion of the adhesive is adhered to the
product and the at least one decal is thereafter removed from the product, a
residue of the additive remains substantially permanently on the product to
define a visible footprint on the product and matched to the at least one decal
when the ultraviolet light is incident on the product, thereby confirming that
a decal message was applied to the product.

The Examiner has rejected claims 2-4, 7, 30, 33, and 34 under 35
U.S.C. § 102(b) as anticipated by Kruchko.1 The Examiner has rejected
claims 2-4, 7, 9-22, and 30-39 under 35 U.S.C. § 103(a) as obvious in view
of Kruchko and Mocilnikar.2 Appellant has argued each of the claims
rejected for anticipation separately and has argued the claims rejected for
obviousness in twelve groups (Br. 31). The claims argued as a group will
stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
ANTICIPATION
The Anticipation Issue
Claims 2-4, 7, 30, 33, and 34 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Kruchko. The Examiner’s position is that Kruchko
discloses a product meeting all the structural limitations of the rejected

1 Kruchko, U.S. Patent 5,389,476, issued Feb. 14, 1995.
2 Mocilnikar et al., U.S. Patent 5,346,259, issued Sept. 13, 1994.
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claims and the “intended use phrases such as ‘for use’, ‘for the education’,
‘will be available’, etc. have not been given any patentable weight because
said phrase[s] are not deemed to be of positive limitation” (Ans. 4).
Appellant responds that the rejected claims contain limitations relating
to what is printed on the decals on the claimed tool, and those limitations
should be given patentable weight in the anticipation analysis (App. Br. 21-
23, 27-29).
In view of these conflicting positions, the anticipation issue presented
is: Do the printed matter limitations recited in the rejected claims
distinguish the claimed decal organization tool from the decal product
disclosed by Kruchko?

Findings of Fact Relating to Anticipation
1. Kruchko discloses a method of making life-sized decals in which a
photographic image is digitized and the background of the desired image is
digitally removed or masked (Kruchko, col. 3, l. 39 to col. 4, l. 9).
2. The digitized image is divided into image sections separated by
registration lines (Kruchko, abstract and col. 4, ll. 32-52).
3. “The image sections are printed onto sheets of a clear medium
removably laminated to a backing sheet to form a decal. . . . The clear
medium is preferably laminated to the backing sheet by an adhesive which
remains on the clear medium after it is removed from the backing sheet.”
(Kruchko, col. 5, ll. 13-20.)
4. “The printed decal sheets are then die-cut to permit the image
sections to be easily removed from the backing sheet. . . . [T]he die-cut rule
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can be constructed to leave a border 42 of the clear medium around the
image sections. . . . When the image sections are reassembled on a wall, the
border 42 will be the same color as the wall.” (Kruchko, col. 5, ll. 24-41.)

Discussion of the Anticipation Issue
Based on our findings and those of the Examiner, Kruchko anticipates
claims 2-4, 7, 30, and 33. Claim 33 is the broadest of these claims. Claim
33 is directed to a “decal organization tool” comprising two layers (an
information layer and a liner sheet) held together by an adhesive. Kruchko’s
product comprises a clear medium laminated to a backing sheet by an
adhesive (FF 3). Claim 33 also requires that the information layer has a
plurality of decals printed on it, and that each decal is surrounded by a
removal cut. The clear medium of Kruchko’s product has a plurality of
decals (image sections) printed on it (FF 3), and the decals are surrounded
by a removal cut (FF 4).
Thus, Kruchko’s product meets all of the structural limitations of
claim 33. The remainder of claim 33’s description is directed either to the
intended use of the claimed product or to nonfunctional printed material that
is entitled to no weight in determining patentability.
Specifically, the preamble of claim 33 states that the claimed product
is “for use with a hazardous product which requires a plurality of
instructional decals for the education and welfare of a user of the product.”
This preamble language does not limit the structure of the claimed product
(although it might help define the printed content of the decals, an issue we
will get to shortly). “[W]here a patentee defines a structurally complete
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invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention, the preamble is not a claim limitation.” Rowe
v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
The same is true of the claim language stating that
the liner sheet, when stripped bare of the plurality of
instructional decals, becomes an indicator for the decal installer
that all the decal messages describing the product on the liner
sheet have been applied to the product, thereby assuring that the
instructional decal messages will be applied to the product for
the education and welfare of the user of the product.
Although this language appears in the body of the claim, it also does nothing
more than recite an intended use for the claimed product (or what is left of it
after the decals are removed) and therefore is not a structural limitation.
Claim 33 also states that the decals are printed on the information
layer “whereby all of the different instructional decal messages will be
available to a decal installer as a group of the plurality of decals and can be
brought to the product as a group.” This claim language merely states the
result of a structural limitation; specifically, having a plurality of decals
printed on a single sheet. “A ‘whereby’ clause that merely states the result
of the limitations in the claim adds nothing to the patentability or substance
of the claim.” Texas Instruments, Inc. v. U.S. International Trade Comm.,
988 F.2d 1165, 1172 (Fed. Cir. 1993).
Finally, claim 33 states that the claimed product includes “a plurality
of instructional decals with messages different from one another and
descriptively relating to instructional information for the education and
welfare of a user of the product” to which the decals are intended to be
attached. The weight to be given to this claim limitation is the central issue
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in this appeal. The Examiner gives this limitation no patentable weight
(Ans. 4); Appellant cites In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983), as
supporting his position that the printed content of the decals distinguishes
the claimed product from the prior art (App. Br. 28-29).
Appellant argues that claim 33 meets the Gulack test because
the instructional information is related to the decals in at least
two ways. First, the decals support the instructional
information. See [Gulack]. (Federal Circuit held that digits have
a functional relationship with the band on which they are
printed in part because the band supports the digits). Second,
the decals are sized and shaped to be applied to particular
locations on the product to which the instructional information
relates. Accordingly, the instructional information would not
achieve its purposes of promoting the education and welfare of
a user of the product without the decals, and the decals would
not provide the desired result without the instructional
information. Thus, the instructional information does have a
functional relationship with the substrate, that is, the decals
themselves.
(App. Br. 29.)
We agree with Appellant that Gulack provides the appropriate test for
determining whether limitations defining descriptive material should be
given patentable weight, but disagree with Appellant on how the instant
claims fare under that test. The invention claimed in Gulack comprised
“three key elements: (1) a band . . .; (2) a plurality of individual digits
imprinted on the band or ring at regularly spaced intervals; and (3) an
algorithm by which the appropriate digits are developed.” Id. at 1382. The
band was printed with the digits generated by the algorithm and could be
used “to perform magic tricks or to display various aspects of number
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theory.” Id. at 1383. The claims had been rejected as obvious based on
prior art that taught a band with different material printed on it. Id. at 1384.
The court stated that limitations reciting printed matter cannot be
ignored but “[w]here the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability. Although the printed matter must be
considered, in that situation it may not be entitled to patentable weight.” Id.
at 1385 (footnote omitted). The “critical question is whether there exists any
new and unobvious functional relationship between the printed matter and
the substrate.” Id. at 1386.
In Gulack, the court held that the substrate and printed matter had
such a relationship because the looped structure of the substrate and the
particular digits printed on it interrelated to give the claimed article a
property it would not have had if either the structure or the digits were
changed. Therefore, the content of the printed matter was held to produce a
nonobvious difference between the claimed product and the prior art.
We disagree with Appellant’s position that the printed matter and
substrate of claim 33 share a “novel and unobvious functional relationship”
like that of the product in Gulack. The printed matter and the substrate of
the article defined by claim 33 have the same relationship as any other decal
(or set of decals) has with its substrate: the decal is printed on one layer of
the substrate, and the other layer of the substrate provides a backing from
which the decal can be peeled when a user wants to apply it to something.
There is nothing “novel and unobvious” about that relationship.
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In our view, the facts of this case are more similar to those of In re
Ngai, 367 F.3d 1336 (Fed. Cir. 2004). The claims at issue in Ngai were
directed to a kit that differed from the prior art only in the content of printed
instructions that were included with it. Id. at 1337. The court held that the
claimed kit did not meet the Gulack test: “In Gulack, the printed matter
would not achieve its educational purposes without the band, and the band
without the printed matter would similarly be unable to produce the desired
result. Here, the printed matter in no way depends on the kit, and the kit
does not depend on the printed matter. All that the printed matter does is
teach a new use for an existing product.” Id. at 1339.
The same analysis holds here. The instant Specification states that
decals are peeled off their liner sheet when a user wants to apply them (Spec.
5-6, 20). Whether the decals are on individual sheets or on one big sheet
does not change the relationship between the printed matter and the
substrate. Just as in Ngai, all the printed matter defined by claim 33 does is
teach a new use for a known product – a substrate comprising multiple
decals. Cf. Ex parte Nehls, 2008 WL 258370 (BPAI 2008, precedential)
(particular nucleic acid sequences in a computer database are nonfunctional
descriptive material because they are not functionally related to the
computer system that compares a target sequence to sequences in a
database).
Claim 34 depends from claim 33 and “further includ[es] a support
device for holding the information layer and the liner sheet in an upright
orientation for the convenience of the decal installer.”
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Appellant argues that “[i]t is clear from inspection that Kruchko does
not teach or disclose the claimed support device” (Br. 30).
The Examiner responds that a “surface on which the decal tool is laid
on will provide as a supporting device” (Ans. 4). That may well be true,
since the intended use language of claim 34 is not a claim limitation, and all
the claim actually requires is a device capable of supporting the article of
claim 33 in an upright orientation.
The issue with respect to anticipation, however, is whether Kruchko
discloses such a device. The Examiner has pointed to no specific passage in
Kruchko that describes the disclosed decal product combined with a device
that is capable of holding it in an upright orientation. We are therefore
compelled to reverse the rejection of claim 34 for anticipation.
Claim 30 is similar to claim 33 but adds two limitations:
• “a border associated with each of the plurality of instructional
decals that at least partially surrounds one of the plurality of instructional
decals, each border of adjacent decal being spaced from one another by an
intervening gap,” and

• “a product match margin located in at least one of the intervening
gaps and contacting the border of one of the decals, the product match
margin matching the predetermined color of the product such that when the
decal is affixed to the product and is viewed at a distance from the product
by a human viewer, the product match margin will color match the
predetermined color of the product and no portion of the decal outside the
associated border visually color contrasts substantially with product, thereby
effectively visually concealing any irregular margin between the border and
the removal cut.”
The Specification states that the border associated with the decals can
take a variety of forms: among other things, it can be a “simple line border”
or a “filled interior border . . . in which the border is literally defined by the
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darkened or colored background of the decal message” (Spec. 20). Claim 7
depends on claim 30 and specifies that the border is a “line border.”
The Specification describes the “product match margin” as a margin
surrounding the decal message(s) that is either colored to match the product
to which the decal is intended to be applied, or is “transparent so that . . . the
color of the product will be visible through such transparent margin” (Spec.
13). Claims 2-4 depend on claim 30 and specify that the product match
margin is colored.
We agree with the Examiner that Kruchko’s product has both a border
and a product match margin, as required by claim 30. Kruchko teaches that
the decals are die-cut “to leave a border 42 of the clear medium around the
image sections” (FF 4). The instant Specification expressly teaches that
product match margins can be transparent.
Appellant argues that Kruchko’s product lacks a “product match
margin” because the registration marks disclosed by Kruchko for use in
reassembling the life-size decal “must be visually distinguishable from the
product in order to be useful in ensuring proper registration” (id. at 22).
This argument is unpersuasive, because Kruchko teaches that, because of the
transparent border, “[w]hen the image sections are reassembled on a wall,
the border 42 will be the same color as the wall” (Kruchko, col. 5, ll. 24-41);
i.e., Kruchko’s border 42 is a product match margin.
Kruchko’s product also has a border associated with each decal. As
shown in Kruchko’s figures, the border is a simple line border (see, e.g.,
Kruchko, Fig. 4A). The figures are line drawings rather than photographs,
but in any event, even if the images on the decals were photographs, the
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edge of each image would form what the instant Specification refers to as a
“filled interior border”; i.e., a border that is “literally defined by the
darkened or colored background of the decal.”
Appellant argues that Kruchko “does not disclose Applicant’s claimed
continuous border surrounding the ‘information.’ The arm or leg which has
been properly treated by the Examiner as being the ‘information’ . . . cannot
also be read as being Applicant’s claimed ‘border,’ which is described in
Applicant’s claim as spaced from the ‘information.’” (App. Br. 21-22.)
This argument is unpersuasive. Claim 30 requires the borders of
adjacent decals to be spaced from each other, but does not require the border
of a given decal be spaced from any other part of the decal. Claim 30
therefore encompasses the “filled interior border” described in the
Specification.
Finally, Appellant argues that the printed matter limitations of claim
30 distinguish it from the prior art for the same reason as claim 33’s printed
matter limitations. For the reasons discussed above, we disagree.
Claims 2-4 differ from the product expressly disclosed by Kruchko, in
that the claims require a colored border rather than Kruchko’s transparent
border. Claim 7 may also differ from Kruchko’s express disclosure, in that a
line border (as required by claim 7) would not necessarily result from
following the digital photographic process described by Kruchko.
In each case, however, the difference between what is claimed and
what is taught in the prior art is no more than a difference in the content of
printed matter. When that is the case, the Gulack test applies: the claimed
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product is unpatentable over the prior art unless the substrate and the printed
matter have a “new and unobvious functional relationship.”
We do not find such a relationship here. A colored decal margin has
the same functional relationship to its substrate as a transparent margin, and
the same is true of a line border and a filled interior border. Making part of
a product one printed matter color rather than another, or surrounding part of
a product with a particular type of printed matter border, without more, does
not render the product patentable over prior art that is otherwise identical.

OBVIOUSNESS
The Obviousness Issue
Claims 2-4, 7, 9-22, and 30-39 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Kruchko and Mocilnikar. The Examiner
reasons that Mocilnikar discloses an adhesive that contains an additive
responsive to ultraviolet light, and it would have been obvious to use
Mocilnikar’s adhesive in Kruchko’s decal product (Ans. 5).
Appellant responds that Mocilnikar’s adhesive can be combined with
Kruchko’s decal product only with the benefit of hindsight based on the
instant disclosure, and therefore the references do not support a prima facie
case of obviousness (Br. 34-35).
In view of these conflicting positions, the obviousness issue presented
is: Would it have been obvious to a person of ordinary skill in the art to use
the ultraviolet-detectable adhesive disclosed by Mocilnikar as the adhesive
in the decal product disclosed by Kruchko?

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Findings of Fact Relating to Obviousness
5. Mocilnikar discloses a tamper-proof label (Mocilnikar, col. 1, ll. 5-
7).
6. Mocilnikar’s label includes, among other things, “an aggressive
adhesive layer on the back of the label in order to permanently adhere to
goods” (Mocilnikar, col. 3, ll. 16-18).
7. Mocilnikar describes the adhesive layer more specifically as “a
white pigmented pressure sensitive, ultra cross-linked acrylic adhesive layer
44. . . . The acrylic adhesive layer 44 has high shear characteristics,
temperature resistance up to approximately 220° C, and leaves a residue
producing a footprint which appears bluish-white when illuminated with a
365 nanometer (nm) blacklight source.” (Mocilnikar, col. 5, ll. 48-59.)
8. The instant Specification characterizes Mocilnikar’s technique as
“utilizing ultraviolet light and an appropriate light-sensitive additive”
(Specification 10).
9. Mocilnikar discloses that appropriate acrylic adhesives were
commercially available (Mocilnikar, col. 5, l. 65 to col. 6, l. 2).

Discussion of the Obviousness Issue
Based on our findings and those of the Examiner, we conclude that a
person of ordinary skill in the art would have considered it obvious to use
Mocilnikar’s acrylic adhesive in Kruchko’s decal product. Mocilnikar
discloses that acrylic adhesives were known and commercially available at
the time the instant application was filed (FF 7, 9). Mocilnikar also
discloses that the acrylic adhesives are aggressive adhesives that will
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permanently adhere a label to a substrate (FF 6). In view of these
disclosures, a person of ordinary skill in the art would have considered it
obvious to combine the known, commercially available adhesive disclosed
by Mocilnikar with the decal product disclosed by Kruchko in order to allow
for permanent mounting of the full-size decal created by Kruchko’s product.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007). “[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious,” the relevant question is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 1740.
Here, the combination of Mocilnikar’s adhesive with Kruchko’s decal
product is no more than the predictable use of prior art elements – an
adhesive and a sheet of decals – according to their established functions.
The evidence of record also shows that the Mocilnikar’s adhesive contains
an additive responsive to ultraviolet light, as recited in claim 36 and other
claims on appeal. Those claims are therefore prima facie unpatentable under
§ 103 based on the cited references.
Appellant argues the claims in several groups (Br. 31). The first
group argued is claims 30, 33, and 38. We will consider claim 33 to be
representative of this group; claim 38 will stand or fall with claim 33. 37
C.F.R. § 41.37(c)(1)(vii). Although Appellant grouped claim 30 with claims
33 and 38, he also presented separate arguments for claim 30, which we also
address below.
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Appellant argues that Kruchko does not teach or suggest certain
limitations of claim 33 (Br. 35-37) and “Mocilnikar fails to disclose or
suggest the missing elements” (id. at 38). As discussed above with regard to
the rejection under 35 U.S.C. § 102(b), however, we find that Kruchko
anticipates claim 33. Anticipation is the epitome of obviousness. Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Although Appellant grouped claims 30 and 33 together, he also
argued that claim 30 contains additional limitations (Br. 39). Appellant
argues that the printed matter limitations of claim 30 are not taught by
Kruchko. This argument is addressed above with respect to the rejection for
anticipation.
Appellant also argues that claim 30 would not have been obvious
because Mocilnikar does not teach a product match margin and that the
products of Kruchko and Mocilnikar are so different that a person of
ordinary skill in the art would not have been led to combine them (Br. 39-
40). These arguments are not persuasive because, as discussed above, the
teaching of a product match margin is provided by Kruchko and we
conclude that the combination of Mocilnikar’s adhesive and Kruchko’s decal
product would have been a predictable use of prior art elements, and
therefore obvious.
We therefore affirm the rejection of claims 30 and 33 as unpatentable
under 35 U.S.C. § 103 in view of Kruchko and Mocilnikar. Claim 38 falls
with claims 30 and 33.
Appellant argues claims 2, 3, and 4 separately but the argument is
similar for each claim: Appellant argues, essentially, that the references do
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not teach a product match margin that is colored (Br. 40-43). With respect
to claim 7, Appellant argues that the references do not teach or suggest a line
border around decals (id. at 43-44).
Each of these arguments is unpersuasive for the reason discussed
above with respect to the anticipation rejection: For printed matter to be
entitled to patentable weight under In re Gulack it must have a “new and
unobvious functional relationship” with its substrate. A colored product
match margin and a line border do not meet the Gulack test because they
have the same functional relationship to their substrate as a transparent
margin and a filled interior border, and therefore are not entitled to
patentable weight. These printed matter limitations therefore do not
patentably distinguish the claimed product from the product that is made
prima facie obvious by the prior art.
With respect to claim 9, which requires that the decal have a colored
background, Appellant argues that the references do not teach a colored
background or concealing an irregular margin around one (with a product
match margin) (id. at 44-45).
These arguments are unpersuasive. Kruchko discloses that its decals
are derived from photographs, so they would have backgrounds of several
different colors. Necessarily, at least part of the background (i.e., the
photograph enlarged to form the decal) would be a different color from any
surface the decal would be mounted on. Appellant’s argument with respect
to the product match margin has been addressed already.
Appellant argues claims 10, 16, 36, and 39 as a group (Br. 31). Claim
36 is representative of these claims, and is directed to the product of claim
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33 with an adhesive that contains an additive responsive to ultraviolet light.
Appellant argues that the cited references do not suggest including an
ultraviolet-responsive additive in an adhesive in order to address the
potential product liability issue caused by missing decals (id. at 46-48)
This argument is not persuasive. It is true that neither Kruchko nor
Mocilnikar discusses product liability litigation or missing decals on
hazardous products. But the prior art does not have to suggest combining
references for the same reason that a patent applicant combined them in
order to support a prima facie case of obviousness. See KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1741-42 (2007) (“In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. . . . [A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.”). See also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990)
(“[T]he statement that a prima facie obviousness rejection is not supported if
no reference shows or suggests the newly-discovered properties and results
of a claimed structure is not the law.”).
The fact that Mocilnikar’s acrylic adhesive leaves a residue that is
visible under ultraviolet light, and that this property can be advantageous for
decals on hazardous products, is not the only reason that those of skill in the
art would combine it with Kruchko’s decal product. As discussed above,
Mocilnikar also discloses that the adhesive was commercially available and
permits permanent mounting of a label (or decal) on a substrate. Those of
ordinary skill in the art would have considered it obvious to use the adhesive
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for its properties as an adhesive, whether or not it was responsive to
ultraviolet light.
Appellant also argues that
[a]nother important purpose of Applicant’s invention as recited
particularly in Claim 36, and which is associated with the
claimed printed matter limitations, is providing an assembly
and transport mechanism that assures that all the essential decal
messages required by a specific hazardous product arrive as a
group so they will be available as a group to the installer at the
site to be affixed to the hazardous product.
(Br. 48-49.)
As we understand it, Appellant’s argument is that the claimed product
is distinguished from the prior art because of the printed matter contents of
the decals that are printed on it. This argument is unpersuasive for the
reasons discussed above.
Appellant argues claims 11, 12, 17, and 37 as a group (Br. 31) but also
presents separate argument with respect to claim 12, which is addressed
below. Claim 37 is representative of these claims, and is directed to the
product of claim 36 where “each removal cut has continuous regular edges
except for a predetermined irregularity zone unique to each of the plurality
of decals.” Appellant argues that the irregularity zone, combined with the
ultraviolet-responsive adhesive, allows a manufacturer to prove that a
specific label had been attached to a product (Br. 51-52). Appellant argues
that the cited references do not teach that recited structure because the “term
‘regular edge’ describes substantially regular geometric configurations, such
as square, rectangles,” etc., whereas Kruchko has “virtually random” edges
and Mocilnikar lacks an irregularity zone (id. at 52).
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The instant Specification does not define the terms “continuous
regular edge” or “irregularity zone,” although the Specification refers to
Figure 7 as exemplary. Figure 7 shows two decals that are rectangular with
rounded corners, and that have two or three square protrusions on the bottom
edge. The Specification states that the “combination of protrusions and the
spacing between the protrusions allow the creation of a specific footprint
unique to each decal message” (Spec. 30). The Specification also states that
the irregularity zone can take a variety of forms (id. at 30-31).
In our opinion, the decals disclosed by Kruchko meet the limitations
of claim 37. The edge of each of the decals is continuous, in that a removal
cut completely surrounds each decal (Kruchko, col. 5, ll. 30-42). Each of
the decals includes protruding areas that contain registration marks 34 and
that help to create a specific footprint unique to each decal (id. at col. 5, ll.
48-52; Fig. 4A). To the extent that the term “regular edge” limits the scope
of the claim, Kruchko’s exemplary embodiments include decals that have
edges that are straight lines (e.g., at the points where the different decals are
intended to be overlapped), and a straight edge would reasonably appear to
be a “regular edge” (id. at Fig. 4A). The language of claim 37, when given
its broadest reasonable interpretation consistent with the Specification,
encompasses the product made prima facie obvious by the prior art.
Appellant argues “Claim 12 contains a further limitation and does not
stand or fall with” claims 11, 17, and 37 (Br. 53). Claim 12 specifies that
the irregularity zone is “in the product match margin such that each
irregularity zone blends with the predetermined color of the product and is
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substantially visually concealed when the decal is adhered to the product.”
Appellant argues that
neither Kruchko nor Mocilnikar disclose Applicant’s
irregularity zone positioned on the margin of the decal message
and wherein the irregularity zone is provided with the color of
the product so as to make the structural features of the
irregularity zone virtually unnoticeable on both liner sheet and
on the product by having them blend closely with the
predetermined color.
(Br. 53.) Appellant presents a similar argument with respect to claims 21
and 22, which also require that the irregularity zone “blends with the product
predetermined color and is visually concealed when the plurality of decals is
adhered to the product” (see Br. 55-56).
This argument is not persuasive. The protruding areas containing the
registration marks 34 shown in Kruchko’s exemplary embodiments meet the
limitations of an irregularity zone and are located completely in the
transparent margins of the decals. They would therefore blend with the
color of the wall and make the irregularity zone “substantially visually
concealed” when Kruchko’s decal was mounted on a wall or other surface.
The protrusions therefore meet the limitations of claims 12, 21, and 22.
Appellant argues claims 13-15 and 18-20 as a group (Br. 31). Claim
18 is representative of this group and is directed to a decal product
including, among other things, decals that have a regular edge except for an
irregularity zone, “wherein each irregularity zone includes at least one
protrusion extending outward from the edge of the associated decal.”
Appellant argues that “[t]hese structural features define a coding structure
which, in combination with the footprint producing residue, allows each
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decal message footprint to be distinguished from the footprints of other decal
messages” (Br. 54).
We disagree with Appellant’s interpretation of the claim language.
Claim 18 does not require a system of protrusions that “define a coding
structure.” It requires only that the irregularity zone include a protrusion.
The decals in Kruchko’s exemplary embodiments all have protrusions;
specifically, the protrusions that contain the registration marks 34 (Kruchko,
Fig. 4A). These protrusions meet the limitation of claim 18.
Appellant argues claims 31 and 34 as a group (Br. 31). Claim 34,
which is representative of this group, is directed to the decal product of
claim 33, further including a support device for holding it upright.
Appellant argues that the “examiner has not identified any structure in these
[cited] references which serves as such a support device” (Br. 57-58).
The recitation in claim 34 of the intended use of the support device is
not a claim limitation. Claim 34 requires only that the support device be
capable of supporting the product of claim 33 in an upright orientation.
Kruchko teaches that conventional methods for making life-sized
reproductions include enlarging a photograph on a poster board or a rigid
substrate (Kruchko, col. 1, ll. 12-26). Based on the known methods of
mounting life-size reproductions on poster board or a rigid substrate and
Kruchko’s disclosure of assembling a set of decals to reproduce a life-sized
image, it would have been obvious to combine Kruchko’s decal product with
a poster board or rigid substrate large enough to reassemble the life-sized
image on it, in order to mount it in places other than a building’s wall and to
allow it to be moved around. A poster board or rigid substrate would be
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capable of supporting Kruchko’s decal product in an upright orientation and
therefore meets the limitation of claim 34.
Appellant argues claims 32 and 35 as a group (Br. 31). Claim 35,
which is representative of this group, is directed to the decal product of
claim 33, comprising at least six decals. Appellant argues that “Kruchko
does not disclose six different unrelated instructional decal messages.
Mocilnikar has more than six decal messages but such messages are all
identical” and the references cannot be properly combined (Br. 58).
This argument is not persuasive. For the reasons discussed above, the
content of the printed matter of the claimed product is not entitled to
patentable weight, and therefore does not distinguish the claimed product
from the prior art. Kruchko teaches that its disclosed decal product is made
by dividing a full-size image into sections that can be printed by a printing
press on a single sheet (Kruchko, col. 4, ll. 19-46), then reassembled into a
full-size image. It would have been obvious to those of ordinary skill in the
art, based on Kruchko’s disclosure, to divide a full-size image into any
number of sections, including six, in order to fit the full-size image onto a
single sheet for a printing press.
SUMMARY
We reverse the anticipation rejection with respect to claim 34 but
affirm it with respect to claims 2-4, 7, 30, and 33. We affirm the rejection
under 35 U.S.C. § 103. Because our reasoning differs substantially from
that of the Examiner, however, we designate both affirmances as new
grounds of rejection under 37 C.F.R. § 41.50(b).
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CFR
§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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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

Ssc:
MOORE & HANSEN, PLLP
225 SOUTH SIXTH STREET
MINNEAPOLIS, MN 55402

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