Ex Parte Moore

Patent Trial and Appeal Board

Feb 24, 2017

13605902 (P.T.A.B. Feb. 24, 2017)

United States Patent and Trademark Office
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.
13/605,902 09/06/2012 Heath Moore 59899.0100 7004
20322 7590 02/28/2017
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET @ swlaw.com
chauff @ swlaw.com
dgiancaterin @ swlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATH MOORE
Appeal 2016-003530
Application 13/605,902
Technology Center 1700
Before CHUNG K. PAK, JENNIFER R. GUPTA, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 21—33 and 35—39.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as Heath Moore, the inventor
of the instant application. Appeal Brief filed August 3, 2015 (“App. Br.”), 2
2 Although the Final Office Action entered December 4, 2014 (“Final Act.”)
indicates that claims 21—39 stand rejected, Appellant cancelled claim 34 in
an Amendment filed April 28, 2014.
Appeal 2016-003530
Application 13/605,902
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to method for
applying a fade pattern to a surface having at least one compound curve.
Spec. 12. Details of the appealed subject matter are recited in representative
claim 21, which is reproduced below from the Claims Appendix to the
Appeal Brief:
21. A method for applying a fade pattern to a surface having
at least one compound curve, the method comprising the steps
of:
• determining the position of one or more of: a first fade
line and a second fade line on the surface including on
the at least one compound curve;
• determining the width of the fade pattern on the
surface including on the at least one compound curve;
• inputting the position of: one or more of the first fade
line and the second fade line into a computer program;
• inputting the width of the fade pattern into the
computer program;
• the computer program determining the location, size,
spacing and number of openings necessary to create
the fade pattern on the surface;
• the computer program communicating with a machine
that creates the openings in a continuous piece of
stencil material; and
• the continuous piece of stencil panel being cut into a
plurality of stencil panels to be placed on the surface.
App. Br. 20—21 (Claims Appendix).
Appellant requests review of the following grounds of rejection
maintained by the Examiner in the Answer entered December 17, 2015
(“Ans.”):
Claims 21—23, 26, 27, 31, 35, and 36 under 35 U.S.C. § 103(a) as
unpatentable over DuBois, III (US 2006/0130679 Al; published June 22,
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Application 13/605,902
2006) (“DuBois”) and Broekhuijsen (US 5,940,083; issued August 17,
1999).
Claims 24, 25, 28, and 33 under 35 U.S.C. § 103(a) as unpatentable
over DuBois, Broekhuijsen, and Offer (US 5,436,027; issued July 25, 1995).
Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over
DuBois, Broekhuijsen, Offer, and Bergelson et al. (US 2002/0161772 Al;
published October 31, 2002).
Claim 32 under 35 U.S.C. § 103(a) as unpatentable over DuBois,
Broekhuijsen, Offer, and Rinaldi et al. (US 2006/0107850 Al; published
May 25, 2006).
Claims 37 and 38 under 35 U.S.C. § 103(a) as unpatentable over
DuBois, Broekhuijsen, and Huber (US 5,464,692; issued November 7,
1995).
Claim 39 under 35 U.S.C. § 103(a) as unpatentable over DuBois,
Broekhuijsen, Offer, and Huber.
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellant’s contentions, we affirm the rejections of claims 21—23, 26, 27,
and 35—38 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action and the Answer, but reverse the rejections of claims 24, 25, 28—33,
and 39 for the reasons set forth in the Appeal Brief. We add the discussion
below primarily for emphasis.
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Application 13/605,902
Rejection of claims 21—23, 26, 27, 31, 35, and 36 under 35 U.S.C.
§ 103(a) over DuBois and Broekhuiisen
Claim 2P
Consistent with the Examiner’s undisputed findings, DuBois discloses
an automated process for making a field stencil used to reproduce a multi­
color image on a field or other surface. Final Act. 2—5; DuBois 19. DuBois
discloses that the method involves scanning a hard copy of the color image
into a computer and using the computer to translate the image into a line
drawing in which the lines represent boundaries between color zones.
DuBois 9, 21—22. DuBois discloses that the computer then transmits
instructions based on the line drawing to an automatic cutting implement
that indicate the location where apertures corresponding to the lines in the
line drawing are to be cut into stencil material. DuBois Tflf 10—11. The
Examiner finds that DuBois discloses that the apertures in the stencil thus
indicate or demarcate boundaries between regions of different colors in the
image to be produced with the stencil. Final Act. 3^4; DuBois Tflf 5, 122.
DuBois discloses that “apertures of several different sizes and shapes could
easily be used,” and discloses that the spacing of the apertures can be varied
depending on the image being reproduced. DuBois H 36, 37.
The Examiner acknowledges that DuBois does not explicitly disclose
a “fade pattern,” which is defined in Appellant’s Specification as a surface
having one or more colors that gradually changes (or fades) into one or more
3 Appellant argues claims 21—23, 26, 27, 35, and 36 as a group. See
generally App. Br. 6—12. Therefore, for the purposes of this appeal, we
select claim 21 as representative, and decide the propriety of the rejection of
claims 21—23, 26, 27, 35, and 36 based on claim 21 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 13/605,902
other colors (Spec. 13), but the Examiner concludes that it would have been
well within the ambit of one of ordinary skill in the art to produce a fade
pattern using a field stencil as disclosed in DuBois in light of DuBois’
disclosure that the stencil can include apertures of different sizes and shapes
to demarcate boundaries between different regions of color in a multi-color
image. Final Act. 4—5.
DuBois discloses that “while the preferred embodiment typically
generates one field stencil on a single sheet of stencil sheet material,
multiple smaller stencil patterns could be produced on one sheet of stencil
sheet material.” DuBois Tflf 37, 44 (reference numeral omitted). Appellant
does not dispute the Examiner’s finding that DuBois further discloses that a
single stencil or “multiple field stencils in conjunction” can be used to
reproduce a multi-color image. Compare Final Act. 4, with App. Br. 6—12;
DuBois 23—24.
Nor does Appellant dispute the Examiner’s finding that DuBois
discloses that the field stencil may be used to reproduce any sort of graphic
image on a wide array of surfaces. Compare Final Act. 5, with App. Br. 6—
12; DuBois 12. The Examiner acknowledges that DuBois does not
explicitly disclose that the field stencil can be used to reproduce a graphic
image on a surface having at least one compound curve, but the Examiner
finds that Broekhuijsen discloses a computer system used to generate a
graphic image having multiple curves (referred to as a multi-curve object).
Final Act. 5; Broekhuijsen, col. 1,11. 12—54. Based on these factual
findings, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art to use the field stencil disclosed in DuBois to
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reproduce a graphic image on a surface having at least one compound curve.
Final Act. 5.
Appellant argues that the field stencil disclosed in DuBois allows a
multi-color logo to be reproduced by using only a single stencil, which
Appellant contends teaches away from his invention in which a plurality of
stencil panels are formed to fit a surface having a multiple-compound curve,
in order to create a fade pattern. App. Br. 7. Appellant contends that
DuBois thus teaches away from creating a fade pattern for a multiple-curved
surface with a plurality of stencil panels. App. Br. 9.
However, contrary to Appellant’s arguments, claim 21 does not
require a plurality of stencil panels to fit a surface having a multiple-
compound curve in order to create a fade pattern on the surface. Rather,
claim 21 recites a plurality of stencil panels that are “to be placed on” a
surface having at least one compound curve to apply a fade pattern to the
surface. Appellant’s Specification defines a “compound curve” as a surface
that has two or more intersecting curves. Spec. 14. Thus, claim 21 requires
placing a plurality of stencil panels on a surface with two or more
intersecting curves to apply a fade pattern to the surface, and does not
require the panels to “fit” the surface to apply the fade pattern as Appellant
asserts.
In addition, as discussed above, DuBois discloses that multiple stencil
patterns can be produced on a single sheet of stencil material, and also
discloses that either a single stencil sheet, or multiple stencil sheets in
conjunction, can be used to reproduce a multi-color image. DuBois Tflf 23—
24, 37, 44. Based on DuBois’ disclosures as a whole, one of ordinary skill
in the art reasonably would have inferred through no more than ordinary
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skill and creativity that a field stencil could be prepared by producing
multiple, individual sheets and using the sheets in conjunction, and also
could be prepared by producing a single sheet containing multiple stencil
patterns, dividing the single sheet into multiple sheets containing the
individual patterns, and using the multiple sheets together, as recited in
claim 21. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(explaining that the prior art references must be read in context, taking into
account, inter alia, “the background knowledge possessed by a person
having ordinary skill in the art,” and “the inferences and creative steps that a
person of ordinary skill in the art would employ.”); In re Preda, 401 F.2d
825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”).
As also discussed above, DuBois discloses that the field stencil is
produced by cutting apertures into stencil material that indicate or demarcate
boundaries between regions of different colors in order to reproduce a multi­
color image with the stencil. DuBois Tflf 9—11. DuBois further discloses that
the apertures in the stencil material can be several different sizes and shapes,
and discloses that the spacing of the apertures can be varied depending on
the image being reproduced. DuBois H 36, 37. Contrary to Appellant’s
arguments, one of ordinary skill in the art reasonably would have recognized
that a fade pattern as recited in claim 21 could be created with a field stencil
as disclosed in DuBois by utilizing patterns of apertures having different
sizes, shapes, and spacing. KSR, 550 U.S. at 418; Preda, 401 F.2d at826.
Moreover, as also discussed above, DuBois discloses that the field
stencil may be used to reproduce any sort of graphic image on a wide array
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of surfaces, which is inclusive of reproducing a fade pattern on a surface
having at least one compound curve as recited in claim 21. DuBois 12. On
this record, Appellant’s arguments do not demonstrate that using multiple
stencil sheets containing individual stencil patterns having apertures of
different sizes, shapes, and spacing, as suggested by the combined
disclosures of DuBois and Broekhuijsen (discussed above), to reproduce a
fade pattern on a surface having at least one compound curve by placing the
multiple stencil sheets on the surface as recited in claim 21 would have been
“uniquely challenging or difficult for one of ordinary skill in the art” such
that overcoming any difficulty raised would not have been well within the
ambit of the person of ordinary skill in the art. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Accordingly, on this record, Appellant’s arguments are unpersuasive
of reversible error in the Examiner’s determination that the combined
teachings of DuBois and Broekhuijsen would have suggested a method for
applying a fade pattern to a surface having at least one compound curve with
a plurality of stencil panels as recited in claim 21. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed
to make a prima facie case, it has long been the Board’s practice to require
an Appellant to identify the alleged error in the Examiner’s rejection).
Appellant further argues that one of ordinary skill in the art would not
have been motivated to combine the disclosures of Broekhuijsen and DuBois
because Broekhuijsen discloses using a computer program to create a multi­
curve object, while DuBois discloses “a one-piece stencil that may be used
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on a flat surface, such as fields, walls, basketball courts, and swimming
pools.” App. Br. 7—8.
However, as discussed above, DuBois discloses that the field stencil
can be used to reproduce any sort of graphic image on a wide array of
surfaces, rather than only on “flat surface[s]” as Appellant asserts. DuBois
12. In addition, as also discussed above, the combined disclosures of
DuBois and Broekhuijsen would have suggested to one of ordinary skill in
the art at the time of Appellant’s invention that multiple stencil sheets
containing individual stencil patterns having apertures of different sizes,
shapes, and spacing could be used to reproduce a fade pattern on a surface
having at least one compound curve by placing the multiple stencil sheets on
the surface, as recited in claim 21. Appellant’s arguments are, therefore,
unpersuasive of reversible error, and we accordingly sustain the Examiner’s
rejection of claims 21—23, 26, 27, 35, and 36 under 35 U.S.C. § 103(a).
Claim 31
Although the Examiner groups claim 31 with claims 22, 23, 26, 27,
35, and 36, which depend from claim 21, and rejects these claims as obvious
over DuBois and Broekhuijsen (discussed above), we reverse the rejection of
claim 31 for the reasons set forth below in the discussion of claim 24
because claim 31 depends from claim 24.
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Rejection of claims 37 and 38 under 35 U.S.C. § 103(a) over DuBois,
Broekhuijsen, and Huber4
Claim 37 depends from claim 21 and recites, inter alia, that the fade
pattern is applied to a compound-curved surface. Appellant does not dispute
the Examiner’s finding that Huber discloses a flexible stencil that can be
deformed and stretched, allowing it to conform to surfaces having
substantial curvature without wrinkling. Compare Final Act. 13, with App.
Br. 6—12; Huber, col. 12,11. 44-48. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to use the flexible
stencil material taught in Huber to produce the field stencil disclosed in
DuBois to prevent the stencil from wrinkling when applied to a compound-
curved surface. Final Act. 13.
Appellant argues that “Huber is unrelated to the present invention,
and there is no motivation to combine Huber with the other prior art
references.” App. Br. 9. However, Huber discloses a removable masking
tape (or stencil) that protects a surface having irregular contours during a
surface treatment, such as spray painting. Huber, col. 1,11. 5—8, col. 3,11.
44—53. Huber discloses that the masking tape is highly flexible and
deformable, and conforms to a surface having substantial curvature,
including surfaces having compound curves, without lifting or creeping from
the surface. Huber, col. 3,11. 44—53, col. 12,11. 44-48. We agree with the
Examiner that one of ordinary skill in the art seeking to produce a field
4 Appellant argues claims 37 and 38 together. See generally App. Br. 6—12.
Therefore, for the purposes of this appeal, we select claim 37 as
representative and decide the rejection of claims 37 and 38 based on
claim 37 alone.
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stencil as disclosed in DuBois for application to a surface having substantial
curvature, such as a compound curve as recited in claim 37, reasonably
would have been led to utilize the highly flexible and deformable masking
tape material disclosed in Huber to produce the stencil in order to prevent it
from wrinkling when applied to the curved surface. Appellant’s arguments
are, therefore, unpersuasive of reversible error, and we accordingly sustain
the Examiner’s rejection of claims 37 and 38 under 35 U.S.C. § 103(a).
Rejections of claims 24, 25, 28—30, 32, 33, and 39 under 35 U.S.C. ft 103(a)
over DuBois, Broekhuijsen, Offer, and additional references
Claim 24 depends from claim 21 and recites that the method includes
the further steps of placing pre-panels on the surface having at least one
compound curve, placing on each of the pre-panels one or more first and
second fade lines, placing indicia on each of the pre-panels sufficient to
identify where the pre-panel was positioned on the surface and to align it
with adjacent pre-panels, scanning each of the pre-panels into a computer
program, and using the computer program to configure a continuous stencil
material utilizing the input information.
Claim 25 recites that the method further includes the step of
“removing the pre-panels from the surface before they are scanned into the
computer program.” However, claim 25 depends from claim 21, which does
not recite “pre-panels,” nor do claims 22 and 23. Claim 25, therefore, in
effect further limits claim 24, and does not properly depend directly from
claim 21. We, therefore, consider claim 25, and also claim 32, which
depends from claim 25, together with the remaining claims that depend
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directly and indirectly from claim 24, including claim 31 as discussed
above.5
As set forth above, DuBois discloses a method of making a field
stencil for reproducing a multi-color image that involves scanning a hard
copy of the color image into a computer, and using the computer to translate
the image into a line drawing. DuBois 9, 21—22. The Examiner finds that
DuBois discloses that a plotter pen can be used to mark a stencil sheet with
the line drawing generated by the computer before apertures are introduced
into the stencil to allow visual inspection of the stencil and assist in aligning
multiple stencil sheets. Final Act. 7—8. The Examiner determines that such
a stencil having markings that correspond to the line drawing can constitute
a pre-panel as recited in claim 24. Final Act. 8. The Examiner further finds
that Offer discloses “that it has been well known in the stencil industry to
have pre-masks/prepanels as guides for accurate placement of the stencil.”
Final Act. 9.
The Examiner acknowledges that DuBois does not disclose scanning
the stencil marked with the line drawing into a computer and using a
program to configure a continuous stencil material from information input
via the scan as recited in claim 24. Final Act. 8—9. However, the Examiner
concludes that it would have been obvious to one of ordinary skill in the art
in view of the combined disclosures of DuBois and Offer to scan the stencil
marked with the line drawing into a computer, and use commonly known
graphing software to configure a continuous stencil material from
5 In the event of further prosecution of this application we advise Appellant
to amend claim 25 to depend from claim 24 rather than claim 21.
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information obtained from the scan “to compare with the original scanned
image” and allow accurate placement of the stencil. Id.
As discussed above, claim 24 requires two or more pre-panels6 to be
placed on a surface having at least one compound curve, and requires the
pre-panels to be marked to indicate first and second fade lines and to identify
where the pre-panels were positioned on the surface in order to align the pre­
panels with adjacent pre-panels. Claim 24 further requires the marked pre­
panels to be scanned into a computer to configure a continuous stencil
material.
Contrary to the Examiner’s assertions, Offer does not disclose that
pre-masks or pre-panels are conventionally used in the art as guides for
accurate placement of a stencil. Rather, Offer uses the terms “stencils” and
“pre-masks” interchangeably to refer to paper that has been pre-cut with the
outline of a design, which is affixed to an airplane exterior and painted over
to apply the design to the airplane. Offer, col. 1,11. 15—31. On this record,
the Examiner does not establish that the pre-masks or stencils discussed in
Offer correspond to “pre-panels” as recited in claim 24 that are marked to
indicate first and second fade lines and to identify where the pre-panels were
positioned on a compound-curved surface in order to align the pre-panels,
and scanned into a computer to configure a continuous stencil material.
In addition, the Examiner does not identify any disclosure in DuBois
that would have suggested scanning the stencil marked with the line drawing
corresponding to the location of apertures to be introduced into the stencil,
which the Examiner asserts corresponds to a pre-panel as recited in claim 24,
6 Recitation of the plural “pre-panels” in claim 24 necessarily refers to two
or more pre-panels.
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into a computer in order to configure a second stencil. Nor does the
Examiner adequately explain how this production of a single, first stencil
marked with the location of apertures to be cut into the stencil disclosed in
DuBois corresponds to two or more pre-panels as recited in claim 24 that are
marked to indicate where the pre-panels were positioned on a compound-
curved surface. Even assuming that one of ordinary skill in the art would
have scanned the marked stencil disclosed in DuBois in order to configure a
second, continuous stencil as the Examiner asserts, the Examiner does not
adequately explain, or provide any evidence to show how marking a such a
single stencil with a line drawing indicating the location of apertures to be
cut into the stencil corresponds to the process steps recited in claim 24 of
marking pre-panels to indicate first and second fade lines and to identify
where the pre-panels were positioned on a compound-curved surface.
Accordingly, on this record, the Examiner’s evidence and explanation
are insufficient to establish a prima facie case of obviousness of the subject
matter recited in claims 24, 25, 28—33, and 39 within the meaning of
35 U.S.C. § 103(a). We, therefore, do not sustain the rejection of these
claims.
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the rejection claims 21—23, 26, 27, and 35—38 under
35 U.S.C. § 103(a), but reverse the rejections of claims 24, 25, 28—33, and
39 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED-IN-PART
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