Ex Parte MelvinDownload PDFBoard of Patent Appeals and InterferencesDec 20, 201111508518 (B.P.A.I. Dec. 20, 2011) Copy Citation 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. Appeal 2011-000246 Application 11/508,518 2 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 Appeal 2011-000246 Application 11/508,518 3 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”.). Appeal 2011-000246 Application 11/508,518 4 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 Appeal 2011-000246 Application 11/508,518 5 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. Appeal 2011-000246 Application 11/508,518 6 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. Appeal 2011-000246 Application 11/508,518 7 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 cam Copy with citationCopy as parenthetical citation