Ex Parte Holden

Board of Patent Appeals and Interferences

Jan 25, 2007

09910641 (B.P.A.I. Jan. 25, 2007)

The opinion in support of the decision being entered today was
not written for publication in and is not binding precedent of
the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte PERRIANN M. HOLDEN
___________

Appeal No. 2006-2531
Application No. 09/910,641
Technology Center 3700
___________

ON BRIEF
___________

Before OWENS, CRAWFORD and FETTING, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 21-23, 27, 29
and 32. Claims 2-4, 7-9, 12-20, 34, 42, 43, 45 and 46 stand
withdrawn from consideration by the examiner as claiming a
nonelected invention. Claims 1, 5, 6, 10, 11, 24-26, 28, 30,
31, 33, 35-41 and 44 have been canceled.

Appeal Number: 2006-2531
Application Number: 09/910,641
THE INVENTION
The appellant claims a fashion wear item comprising a
flexible pad for attachment to a body part, and claims a method
for using the pad to decorate a body part. Claim 21 is
illustrative:
21. A novelty fashion wear item, comprising:
a flexible pad having an upper surface and a lower
surface with a non-slip texture;
said pad being sufficiently flexible to conform to a
contoured surface area of a body part;
said pad having its entire upper surface coated with
an adhesive material for removably securing said pad to
said contoured surface area of a body part to facilitate
decorating said contoured surface area; and
said pad having its lower surface provided with
indicia to decorate said contoured surface area.

THE REFERENCES
Yonkers 3,985,383 Oct. 12, 1976
Lee 6,613,382 Sep. 2, 2003
(filed Dec. 22, 2000)
THE REJECTIONS
The claims stand rejected as follows: claims 21-23, 29
and 32 under 35 U.S.C. § 102(b) as anticipated by Yonkers, and
claim 27 under 35 U.S.C. § 103 as obvious over Yonkers in view
of Lee.
OPINION
We affirm the aforementioned rejections.

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Appeal Number: 2006-2531
Application Number: 09/910,641
Rejection under 35 U.S.C. § 102(b)

Yonkers discloses a device for separating or indexing
adjacent sheets of paper (col. 1, lines 10-12). The device
includes a flexible plastic film (14) coated with a pressure
sensitive adhesive (16) to enable the plastic film to be
attached to a finger or other object (col. 2, line 59 – col. 3,
line 3). A plurality of indexing devices can be attached by the
adhesive to a backing strip (20) from which the device is
removed before placement on the finger or other object (col. 4,
lines 3-9). The plastic film can have a traction material (18)
such as foam, sponge rubber, crosscut or hatched rubber stock,
or rubber threads, attached thereto by cement (col. 3, lines 14-
29). The plastic film and traction material can have variations
of color and shape (col. 4, lines 10-13). In another embodiment
the plastic film itself can have a traction surface (19) that is
crosscut or hatched to increase its traction ability (col. 3,
lines 54).
The appellant argues that what has a non-slip texture is
not Yonkers’ plastic film but, rather, a mass of traction
material (18) adhered to the plastic film (brief, pages 9-10;
reply brief, pages 5-6). Because Yonkers’ rubbery traction mass
materials and the plastic film are both flexible, the
combination of the plastic film and the traction material
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Appeal Number: 2006-2531
Application Number: 09/910,641
adhered thereto reasonably can be considered to correspond to
the appellant’s flexible pad. Also, Yonkers discloses in
another embodiment that the surface of the flexible plastic film
itself (i.e., no mass of traction material present) can be
crosscut or hatched to provide traction and thereby perform the
function of the mass of traction material (col. 3, line 54 –
col. 4, line 2).
The appellant argues that the appellant’s specification
states that the pad in figures 1 and 2 is a single piece and
that, therefore, “pad” in the appellant’s claims means “single
piece pad” (brief, pages 10 and 15-16; reply brief, pages 2-3).
The appellant’s specification does not define “pad” as being
limited to one piece but, rather, merely discloses that as an
embodiment. Hence, the specification does not limit the
broadest reasonable interpretation of “pad” in the appellant’s
claims to “single piece pad”.
The appellant argues that the lower surface of Yonkers’
plastic film is not covered with indicia but, rather, is coated
with adhesive and traction material (brief, page 11 and 13-15).
If Yonkers’ structure including the plastic film and traction
material is considered to correspond to the appellant’s flexible
pad, then the color applied to the traction material (col. 4,
lines 10-13) is applied to the lower surface of the pad.
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Appeal Number: 2006-2531
Application Number: 09/910,641
Yonkers also discloses that the layer of plastic film itself can
have variations in color (col. 4, lines 10-13). That disclosure
indicates that in the embodiment wherein the lower surface of
the plastic film itself is crosscut or hatched to provide
traction (col. 3, line 54 - col. 4, line 2), the lower surface
of the plastic film can be colored.1
The appellant argues regarding claim 22 that Yonkers does
not disclose decorative fashion wear (brief, pages 12-13).
Yonkers’ indexing devices are placed on the body and can have
variations in color and shape (col. 4, lines 10-13; figures 1
and 6). Thus, the devices are capable of being perceived as
decorative fashion wear.
With respect to claim 29 the appellant argues that Yonkers
does not disclose that the indexing device is suitable for
hands, feet, toes, knees and elbows (brief, page 16). In
claim 29 the body part also can be fingers, and Yonkers
discloses applying the indexing device to fingers (figure 1).

1 As pointed out by the appellant (reply brief, pages 7-8), Yonkers states
that the variations of color in both the mass of traction material and the
plastic film are included in what Yonkers refers to as “alternate
embodiments”, and that in each of the alternate embodiments the device is
constructed in essentially the same manner as in the preferred embodiment
wherein traction material is applied to the plastic film (col. 3, lines 42-
50; col. 4, lines 10-19). The embodiment wherein the lower surface of the
plastic film itself is crosscut or hatched (col. 3, line 54 – col. 4, line 2)
cannot be constructed in that manner because there is no traction material.
Hence, one of ordinary skill in the art would have interpreted Yonkers’
disclosure regarding color as pertaining to the plastic layer in that
embodiment.
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Appeal Number: 2006-2531
Application Number: 09/910,641
Concerning claim 32 the appellant argues that Yonkers does
not disclose that the indicia can be messages and advertisements
(brief, page 17). In claim 32 the indicia also can be color,
and Yonkers discloses color (col. 3, line 11).
For the above reasons we are not convinced of reversible
error in the examiner’s rejection under 35 U.S.C. § 102(b).
Rejection under 35 U.S.C. § 103
Lee discloses that screen printing is well known and
discloses applying images (26) onto note posters (10) by screen
printing (col. 3, lines 39-47).
The appellant argues that Lee discloses screen printing
only onto a planar sheet and not onto a non-slip texture (brief,
page 18). The appellant provides no reason as to why one of
ordinary skill in the art would have considered the well known
screen printing technique used by Lee to be unsuitable for
textured surfaces, and none is apparent.
The appellant argues that Lee is not prior art because it
is predated by the appellant’s provisional application
60/220,357 filed July 24, 2000 (brief, pages 18-19). As
correctly pointed out by the examiner (answer, page 7), the
provisional application does not provide written descriptive
support for the screen printing recited in claim 27. Lee,
therefore, is prior art as to that claim.
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Appeal Number: 2006-2531
Application Number: 09/910,641
We therefore are not convinced of reversible error in the
rejection under 35 U.S.C. § 103.
DECISION
The rejections of claims 21-23, 29 and 32 under
35 U.S.C. § 102(b) over Yonkers, and claim 27 under
35 U.S.C. § 103 over Yonkers in view of Lee, are 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

)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal Number: 2006-2531
Application Number: 09/910,641

JERRY RICHARD POTTS
3248 VIA RIBERA
ESCONDIDO, CA 92029

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Appeal Number: 2006-2531
Application Number: 09/910,641

TJO/jrg
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