Ex Parte Massullo

Board of Patent Appeals and Interferences

Nov 18, 2011

11485941 (B.P.A.I. Nov. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CELESTE MASSULLO
____________________

Appeal 2009-013559
Application 11/485,941
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, KEN B. BARRETT, and GAY ANN
SPAHN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Celeste Massullo (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-12 and 14-20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The claims are directed to materials in sheet form for use as protective
and decorative coverings, and more particularly to toilet lid appliqués. See
Spec., para. 2. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A packaged decorative thin-film appliqué for an
exterior surface of a toilet seat lid, comprising:
a backer panel having a back side and an opposing
release side, the release side having a release layer opposite the
back side;
the decorative thin-film appliqué having an application
side facing and in contact with the release layer of the backer
panel, and a decorative side opposite the application side, the
decorative side bearing printed images or indicia;
and an appliqué frame made of the same material as the
decorative thin-film appliqué and substantially surrounding the
decorative thin-film appliqué and in contact with the release
layer of the backer panel, the appliqué frame bearing printed
images or indicia different from the decorative thin-film
appliqué;
a separation between the decorative thin-film appliqué
and the appliqué frame at which the decorative thin-film
appliqué is separable from the backer panel and the appliqué
frame with the appliqué frame remaining on the backer panel,
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the separation extending through the decorative thin-film
appliqué only and not through the release layer.

THE PRIOR ART
Daneshvar
Popat
Cochran
US 5,318,327
US 5,662,976
US 6,382,676 B1
Jun. 7, 1994
Sep. 2, 1997
May 7, 2002
Motoi JP 2004-307211 Nov. 4, 2004

THE REJECTION(S)
The following rejections are before us for review:
(1) The Examiner rejected claims 1, 3, 7, 8, 11, 12, 19 and 20 under
35 U.S.C. § 102(b) as anticipated by Popat. Ans. 3.
(2) The Examiner rejected claims 2, 5, 6, 10, 14, 15 and 18 under
35 U.S.C. § 103(a) as unpatentable over Popat. Ans. 6.

The Examiner also rejected:
(3) claims 4 and 9 under 35 U.S.C. § 103(a) as unpatentable over Popat
and Cochran;
(4) claim 16 under 35 U.S.C. § 103(a) as unpatentable over Popat and
Daneshvar; and
(5) claim 17 under 35 U.S.C. § 103(a) as unpatentable over Popat and
Motoi.
Fin. Rej. 6.
In the Appeal Brief, Appellant identifies only rejections (1) and (2) as
the “GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL.”
App. Br. 6. Further, Appellant only presents arguments directed to
rejections (1) and (2). App. Br. 7-10. The Examiner repeated all of
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rejections (1)-(5) in the Answer, thus clearly indicating that rejections (3)-(5)
have not been withdrawn. Ans. 3-9. As Appellant does not address
rejections (3)-(5), Appellants have waived any argument of error, and we
summarily sustain the rejections of claims 4 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Popat and Cochran; claim 16 under 35 U.S.C. § 103(a)
as unpatentable over Popat and Daneshvar; and claim 17 under 35 U.S.C.
§ 103(a) as unpatentable over Popat and Motoi. See In re Berger, 279 F.3d
975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).

OPINION
Rejection (1)
Appellant directs several arguments to all of the claims subject to this
rejection. Appellant additionally presents separate arguments for claims 3
and 8, claim 11, and claim 20. Accordingly, we select claims 1 and 8 as
representative, with claim 7 standing or falling with claim 1 and claims 3, 12
and 19 standing or falling with claim 8. See 37 C.F.R. § 41.37(c)(1)(vii).
We separately address claims 11 and 20.
Claims 1 and 7
The Examiner found that Popat’s laminated card assembly 46 satisfies
the limitations of Appellant’s claimed packaged decorative thin-film
appliqué, with the lamination strip 80 (separated from the remainder of
lamination layer 52 by die cuts 72, 74, 76, 78), the remainder of the
lamination layer 52, and the backing sheet 60 corresponding to the claimed
appliqué, appliqué frame, and backer panel, respectively. See Ans. 3-4, 6
(labeling the portion of the lamination layer 52 surrounding lamination strip
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80 as the frame in Figure A, which is an annotated reproduction of Popat’s
figure 3). We agree with these findings.
Appellant argues that Popat’s lamination layer 52, which is adhesively
adhered to a backing sheet 60 by a pressure-sensitive adhesive, is not an
“appliqué” and/or “appliqué frame.” App. Br. 7; see Popat, col. 6, ll. 63-67.
Appellant asserts that the definition of “appliqué” is “an ornamentation or
cutout design which is applied or transferred to another material or
foundation; as, appliqu[é] lace; appliqu[é] work.” Id. It is not apparent, and
Appellant has not cogently explained, why Popat’s lamination layer 52, or
the lamination strip 80 portion thereof, does not satisfy Appellant’s asserted
definition of “appliqué.” Likewise, Appellant has not provided any
explanation as to why the portion of Popat’s lamination layer 52 surrounding
the lamination strip 80 cannot reasonably be considered an “appliqué
frame.” See Popat, col. 7, ll. 38-41.
Appellant contends that Popat’s provision of a pressure sensitive
adhesive layer 58 (Popat, col. 6, l. 64) as a coating on lamination layer 52
somehow distinguishes Popat’s laminated card assembly 46 from
Appellant’s claimed packaged appliqué. See App. Br. 8. This argument is
not persuasive, as neither Appellant’s claim 1 nor Appellant’s asserted
definition of appliqué excludes an adhesive for adhering the appliqué layer
to the backer panel. In fact, Appellant’s Specification contemplates use of
an adhesive to adhere the appliqué and appliqué frame to the release layer of
the backer panel in at least one embodiment. Spec., para. 17.
Appellant additionally contends that Popat does not disclose printed
images on the appliqué frame that are different from the appliqué, as called
for in claim 1. App. Br. 7. The Examiner found that Popat illustrates this
feature in figure 3. See Ans. 4 (referring to Figure A at Ans. 6). Popat
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discloses printing on the surface of the lamination layer. Col. 9, ll. 9-14.
Further, the Examiner’s Figure A (an annotated reproduction of Popat’s
figure 3) illustrates indicia on the portion of the lamination layer 52
identified by the Examiner as the appliqué frame (i.e., the portion
surrounding the lamination strip 80) that is not found on the lamination strip
80 (identified by the Examiner as the appliqué). Therefore, we agree with
the Examiner’s finding that the frame portion of Popat’s lamination layer 52
bears printed images or indicia different from the appliqué, as called for in
claim 1.
For the above reasons, Appellant’s arguments do not point to error in
the Examiner’s rejection of claim 1. We sustain the rejection of claim 1 and
claim 7, which falls with claim 1.
Claims 3, 8, 12, and 19
Claim 8 requires print on the appliqué and appliqué frame “at least
partially defining a package header on the appliqué frame.” The Examiner
points to the indicia on the top portion of Popat’s frame (the portion of
lamination layer 52 surrounding lamination strip 80) as defining the header.
See Ans. 5, 6 (identifying in Figure A the indicia on the top portion of the
frame as the header). Appellant asserts that the term “header” as defined by
Appellant’s Specification and understood by one of ordinary skill in the art
denotes “a part of a packaged product which is located at the top or ‘head’ of
a retail package,” and argues that Popat lacks such a “header.” App. Br. 8.
The indicia on the top portion of Popat’s frame identified by the Examiner as
the “header” reasonably seems to fall within Appellant’s asserted definition
of “header,” and Appellant has not cogently explained why the Examiner’s
finding is in error. We sustain the rejection of claim 8 and claims 3, 12, and
19, which fall with claim 8.
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Claim 11
Claim 11 depends from claim 8, and further requires that the appliqué
and appliqué frame be formed in “a common layer of thin-film polymer
material.” The Examiner found that Popat’s disclosure of mylar as a suitable
material for the lamination layer satisfies this limitation. Ans. 5, 11-12;
Popat, col. 9, ll. 6-7. Appellant argues this limitation is not met, because
Appellant’s Specification discloses PVC, which is not required to be bonded
to an adhesive, as the thin-film polymer material. App. Br. 8. Appellant’s
argument is not persuasive, because it is not commensurate with the scope of
claim 11, which neither requires the thin-film polymer material to be PVC
nor excludes the presence of adhesive. Further, while Appellant’s
Specification discloses that the “thin-film polymer layer 16” may be “for
example polyvinyl chloride (PVC) film,” the Specification does not define
the “thin-film polymer” material as limited to PVC. See Spec., para. 15. We
sustain the rejection of claim 11.
Claim 20
Claim 20 depends from claim 8, and further requires a combination of
multiple decorative and protective appliqués “in an aligned and parallel
stack.” Appellant argues that “the Examiner’s citation to Popat Fig. 3 does
not disclose a ‘stack’ as that term is defined by the specification and
properly interpreted in the claim.” App. Br. 8.
Appellant has not identified where the Specification defines the term
“stack,” and we do not find one. Rather, Appellant’s Specification merely
discloses that “multiple products [each comprising an appliqué and appliqué
frame supported by a backer panel] can be supported in a stacked parallel
arrangement upon a single hook or hanger extending from a vertical support
as common in retail displays.” Spec., para. 15. Thus, “in determining the
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ordinary and customary meaning of the claim term as viewed by a person of
ordinary skill in the art, it is appropriate to consult a general dictionary
definition of the word for guidance.” Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). An ordinary and customary meaning of the
term “stack” is “any somewhat orderly pile or heap, as of boxes, books,
poker chips, etc.” Webster's New World Dictionary 1384 (David B.
Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984). As this definition
is consistent with Appellant’s use of the terminology “stacked parallel
arrangement” in the Specification, we adopt it in construing the claim term
“stack.”
The Examiner’s mere reference to “fig. 3” (Ans. 5) and statement that
“Popat discloses the invention is manufactured in an assembly and then
separated from the assembly” (Ans. 12) are inadequate to explain how Popat
anticipates the subject matter of claim 20, namely, a combination of multiple
decorative and protective appliqués “in an aligned and parallel stack,” as we
construe that terminology. We reverse the rejection of claim 20.
Rejection (2)
Claims 2 and 10
Claim 2 requires the printed images or indicia on the appliqué to
extend from the appliqué to the appliqué frame. Claim 10 requires the
printed images or indicia on the appliqué to extend from the appliqué to the
appliqué frame so that the print pattern extends to an edge of the packaged
decorative and protective appliqué.
The Examiner conceded that Popat fails to disclose this feature, but
noted that Popat does not preclude such a pattern on the lamination strip 80,
and reasoned that it would have been obvious to include a print pattern that
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extends from the appliqué to the frame “because it is simple and inexpensive
to manufacture.” Ans. 7, 12.
Appellant does not address the Examiner’s articulated reason for
making the modification, or point out why it is insufficient or in error.
Instead, Appellant merely points out what the Examiner has conceded,
namely, that Popat does not suggest printing in such a manner on such a
structure or recognize the claimed result of such printing. App. Br. 9.
Appellant appears to be contesting the rejection on the basis that the
cited prior art does not contain a teaching, suggestion, or motivation to
modify Popat in the manner proposed by the Examiner. Such argument is
not convincing, however, as the Supreme Court has stated that a rigid
insistence on teaching, suggestion, or motivation is incompatible with its
precedent concerning obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 419 (2007). We sustain the rejection of claims 2 and 10.
Claim 5
Claim 5 depends from claim 1 and further requires that the frame bear
information pertaining to use of the appliqué. Appellant’s argument
contesting the rejection of claim 5 appears to focus on the distinction
between the printed matter on the appliqué frame and the appliqué. See
App. Br. 9 (pointing to Popat’s lack of awareness of this aspect of the
printed assembly). This line of argument is not convincing, for the reasons
discussed above with respect to claim 1. We sustain the rejection of claim 5.
Claim 6
The Examiner acknowledged that Popat fails to disclose the appliqué
and frame being comprised substantially of PVC, as required in claim 6.
Ans. 7. The Examiner found, however, that Popat discloses that the
lamination layer may be made from any of a number of materials, such as
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mylar, which is a polymer, and reasoned that it would have been obvious to
use PVC (another polymer) because it is heat and water resistant. Ans. 7.
Appellant urges that PVC would not be a preferred material for use in
Popat’s assembly (which adheres the lamination layer to the backing sheet
using pressure sensitive adhesive) because of its inherent difficulty of
adhesion, and argues that Popat’s disclosure of mylar “does not amount to a
suggestion of an alternate disadvantageous material.” App. Br. 9.
Appellant’s argument is not persuasive because: (1) Appellant has not
substantiated the allegation that PVC is inherently difficult to adhere to other
structures1 and (2) Appellant has not alleged, much less shown, that PVC is
inherently substantially more difficult to adhere than mylar (a polymer
material identified by Popat as suitable for the lamination layer). To the
extent that Appellant is contesting the rejection on the basis that Popat does
not explicitly suggest PVC as a material for the lamination layer, this line of
argument is not convincing. As we pointed out above, the Supreme Court
has stated that a rigid insistence on teaching, suggestion, or motivation is
incompatible with its precedent concerning obviousness. KSR, 550 U.S. at
419. We sustain the rejection of claim 6.
Claims 14 and 15
Claims 14 and 15 depend from claim 8 and further define the content
of the print on the appliqué frame. In contesting the Examiner’s rejection of
claim 14, Appellant reiterates the argument that Popat does not disclose an
appliqué frame. App. Br. 9. This argument is not persuasive for the reasons
discussed above with respect to claim 1.

1 An attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

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Appellant’s only other argument contesting the Examiner’s
conclusion that the subject matter of claims 14 and 15 would have been
obvious is that claims 14 and 15 define printed matter which is functional
and located on the appliqué frame. Appellant’s argument does not address,
much less point out error in, the reasoning set forth in the Examiner’s
rejection (Ans. 7-8) as to why the claimed print does not distinguish over the
print on the frame portion of Popat’s lamination layer 52.
For the above reasons, Appellant’s arguments do not point out error in
the Examiner’s conclusion that the subject matter of claims 14 and 15 would
have been obvious. We sustain the rejection of claims 14 and 15.
Claim 18
Claim 18 depends from claim 8 and further requires one or more trim
guides on a back side of the backer panel. In contesting the Examiner’s
rejection, Appellant argues that the printed information on the back side of
Popat’s backing sheet 60 “is not disclosed as a physical scale for
dimensional sizing of an appliqué.” App. Br. 10; see Popat, col. 6, ll. 65-66
(discussing a surface for printing 62 on backing sheet 60). Appellant’s
argument does not point out error in the Examiner’s conclusion that the
subject matter of claim 18 would have been obvious, because it is not
commensurate with the scope of claim 18, which does not require a physical
scale on the backer panel. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability). We sustain the rejection of claim 18.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 1-12, and 14-19, and reversed as to claim 20.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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