Ex Parte Melvin

Board of Patent Appeals and Interferences

Dec 20, 2011

11508518 (B.P.A.I. Dec. 20, 2011)

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.
11/508,518 08/23/2006 Donnarose Melvin 2323
7590 12/21/2011
Clifford G. Frayne
136 Drum Point Road
Suite 7A
Brick, NJ 08723
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
12/21/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DONNAROSE MELVIN
____________________

Appeal 2011-000246
Application 11/508,518
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 4, and 7 under 35 U.S.C. § 102(b) as anticipated
by Redpath (US 1,349,099; issued Aug. 10, 1920) and under 35 U.S.C. §
103(a) as obvious in view of the teachings of Harper (US 5,753,335; issued
May 19, 1998) and Redpath. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Appellant’s invention relates to a doily with an adhesive backing
disposed only in a central area for removably securing the doily to a variety
of surfaces (Spec. ¶¶ [0006] and [0007]). Claim 1 is illustrative:
1. An adhesive doily having adhesive on a bottom
surface thereof to stabilize and maintain the doily in a stationary
position on a surface, the doily comprising:
a doily having an upper surface and a lower surface and
defined by an outer perimeter edge, there being formed adjacent
said outer perimeter edge, an interrupted lace-like surface
forming a pattern in the area interiorly adjacent said outer
perimeter edge, said interrupted lace-like area surrounding a
central area of continuous uninterrupted surface, the lower
surface of said central area having an adhesive formed thereon.
(Claim 1, Br. 21, Claim App’x.) (emphasis added).
II. PROCEDURAL MATTERS
This Appeal was filed in response to a Non-Final Office Action dated
January 27, 2010. Appellant filed an Appeal Brief addressing the Non-Final
Office Action of January 27, 2010, on April 5, 2010 (hereinafter the “4/5
Brief” or “4/5 Br.”). On May 5, 2010, the Examiner notified Appellant that
the 4/5 Brief, was non-compliant for failure to provide a claim summary in
accordance with 37 C.F.R. § 41.37(c)(1)(v) (see Notification of Non-
Compliant Appeal Brief, mailed May 5, 2010). The 4/5 Brief provided a
response to the currently appeal Non-Final Office Action of January 27,
2010, addressing both the 35 U.S.C. § 102(b) and 103(a) rejections
maintained therein.
On May 17, 2010, Appellant filed another Appeal Brief (hereinafter
the “5/17 Brief” or “5/17 Br.”). While the supplemental filing included a
compliant claim summary section (see 5/17 Br. 6-8), the Brief is identified
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as being responsive to a Final Office Action dated June 25, 2009, and not the
currently appeal Non-Final Office Action of January 27, 2010 (see 5/17 Br.
1). Further, Appellant’s arguments presented therein address previous
rejections and not the current 35 U.S.C. § 102(b) and § 103(a) rejections
maintained in the Non-Final Office Action of January 27, 2010 (see 5/17 Br.
10-19).
Although the Examiner considered only the arguments presented in
the 5/17 Brief (see Ans. 7-9), we consider the Examiner’s position to be
sufficiently developed to address Appellant’s arguments against the current
rejections in the 4/5 Brief and do so accordingly herein.1
Appellant’s arguments are directed to particular claim limitations
common to each of the independent claims, and Appellant does not argue
any claims separately (see generally 4/5 Br. 20). Therefore, we decide this
Appeal on the basis of representative independent claim 1.
III. ANTICIPATION - REDPATH
A. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: does the evidence support the Appellant’s view that the
Examiner erred in finding that the phrase “central area of continuous

1 Moreover, at the time of filing the 5/17 Brief, Appellant need only have
provided a corrected claim summary section for compliance. (MPEP 8th Ed.,
Rev. 7, § 1205.03(B) (July 2008) (“When the Office holds the brief to be
defective solely due to appellant’s failure to provide a summary of the
claimed subject matter as required by 37 CFR 41.37(c)(1)(v), an entire new
brief need not, and should not, be filed. Rather, a paper providing a summary
of the claimed subject matter as required by 37 CFR 41.37(c)(1)(v) will
suffice”.).

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uninterrupted surface” reads on the ring area of Redpath’s Figure 3 to which
an adhesive 7 is applied? We answer this question in the affirmative.
B. DISCUSSION
Appellant contends that the doily of Redpath’s Figure 3, “provided at
the center thereof with a circular opening 6” (Redpath, p. 1, ll. 62-63), does
not teach “a central area of continuous uninterrupted surface,” as recited in
claim 1, and thus does not teach an adhesive positioned in such a location
(see 4/5 Br. 10; 5/17 Br. 14-15).
The Examiner contends that the ring between the outer lace structure
and the opening 6, as illustrated in Redpath’s Figure 3, is a “continuous
uninterrupted ring that is in the central area of the doily” (Ans. 8).
According to the Examiner “[t]he claimed limitation does not state that
central area of the doily is completely free from perforations, only that it
contains a central area of uninterrupted surface, which is disclosed by the
ring in the central area of Redpath” (id.).
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Appellant’s Specification provides no express definitions for the term
“central” (see generally Spec.). We understand that the term “central” has a
common and ordinary meaning, specifically “in the middle.” Thus, we
conclude that a “central area” of a doily must be an area that encompasses at
least the middle of the doily. This construction is consistent with
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Appellant’s Specification which describes doilies having a “central portion
6” consisting of all of the area inside the lace outer portion 7, including the
very middle of the doilies (see, e.g., Spec. 3:25-27; Fig. 1). There is nothing
in the Specification to suggest an alternative meaning to the term “central.”
While we agree with the Examiner that the claims do not preclude some of
the area between the middle and the lace outer portion of the doily having
perforations, we determine that the middle of the doily must be continuous
and uninterrupted.
We agree with Appellant that, due to its doily’s central opening 6,
Redpath does not disclose a doily with “a central area of continuous
uninterrupted surface,” as required by claim 1. Accordingly, we are
constrained to reverse the rejection under 35 U.S.C. § 102(a) as anticipated
by Redpath because “[t]o anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
IV. OBVIOUSNESS – HARPER IN VIEW OF REDPATH
A. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: does the evidence support the Appellant’s view that
the Examiner erred in concluding that it would have been obvious for one of
ordinary skill in the art to have applied the adhesive of Redpath to the doily
of Harper? We answer this question in the negative.
B. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
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Appellant does not dispute the Examiner’s finding that Harper teaches
a doily comprising “a central area of continuous uninterrupted surface” (see
generally 4/5 Br. 12-19). Rather, Appellant contends that the combined
teachings of Harper and Redpath would not be obvious because the qualities
of the individual references would be destroyed by such a combination (4/5
Br. 16-17). Specifically, Appellant argues that “[t]he decorative quality of
Harper is destroyed if one punches an aperture through the middle thereof”
and that “[t]he utility qualities of Redpath are destroyed if one covers the
aperture of Redpath” (id.).
Contrary to Appellant’s arguments, the Examiner is neither proposing
providing a hole in Harper’s doily nor filling in the aperture of Redpath.
The Examiner’s position is merely that it would have been obvious to one of
ordinary skill in the art to have applied the adhesive taught by Redpath to the
doily taught by Harper because Redpath teaches the use of an adhesive to
“maintain the doily in a stationary position on a surface” (Ans. 7). Appellant
does not dispute that this is the purpose of the adhesive taught by Redpath.
In this case, using an adhesive is no more than the predictable use of an
adhesive according to its established function of rendering an object
stationary. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The
question to be asked is “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.”). Appellant provides no persuasive argument for finding the
Examiner’s position to be inaccurate or unreasonable.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
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V. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection under 35 U.S.C. § 103(a) maintained by the Examiner,
but we cannot sustain the rejection under 35 U.S.C. § 102(b).
VI. DECISION
We affirm the Examiner’s decision.
VII. TIME PERIOD FOR RESPONSE
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

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