Ex Parte Norman

Board of Patent Appeals and Interferences

Jul 28, 2003

08989342 (B.P.A.I. Jul. 28, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 24

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JIMMY W. NORMAN
_____________
Appeal No. 2003-1390
Application No. 08/989,342
______________
ON BRIEF
_______________
Before KRATZ, PAWLIKOWSKI and POTEATE, Administrative Patent
Judges.
POTEATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s
refusal to allow claims 1-24 and 29. Claims 25-28 are also
pending but have been withdrawn from consideration as directed to
a non-elected invention.
Appeal No. 2003-1390
Application No. 08/989,342
1Claim 2 reads as follows:
2. The template for creating, with mud, a three-dimensional design upon a
surface as recited in claim 1, further comprising:
supports which are of sufficient length to extend from said
substantially planar structure, past any previously applied layer of the
design, to the surface upon which the original three-dimensional layer is
placed and which are so located on the substantially planar structure that
said supports will bypass any previously applied layer.
2
Claims 1, 6, 14, 18 and 29 are representative of the subject
matter on appeal and are reproduced below:
1. A template for creating, with mud, a
three-dimensional design, other than a design
simulating brickwork or stonework, upon a surface,
which comprises:
a substantially planar structure which has a
thickness equal to a desired depth for one layer of the
desired three-dimensional design, such design being
other than a design simulating brickwork or stonework,
and adequate length and width to accommodate the length
and width of the desired design, which is substantially
impervious to the mud, and which has one or more
apertures that are intended to be filled with mud to
create the desired design on the surface.
6. The template for creating, with mud, a
three-dimensional design upon a surface as recited in
claim 21, wherein:
the template is scored to create a section that
can be pushed from the template to create an
accommodating aperture.
14. The template for creating, with mud, a
three-dimensional design upon a surface as recited in
claim 1, wherein:
Appeal No. 2003-1390
Application No. 08/989,342
2 The rejections of claims 5, 8, 10-13 and 29 under 35 USC § 112, second
paragraph, have been withdrawn in view of the amendment (Paper No. 20) filed
with appellant’s brief (Paper No. 19) on January 10, 2003. See examiner’s
answer, Paper No. 22, mailed January 29, 2003, page 3.
3
the template has one or more accommodating
apertures which are intended to accommodate an object
on or rising from the surface and around which the
design is desired to be placed.
18. The template for creating, with mud, a
three-dimensional design upon a surface as recited in
claim 1, wherein:
the template is scored to create a section that
can be pushed from the template to create an
accommodating aperture.
29. The template for creating, with mud, a
three-dimensional design upon a surface as recited in
claim 1, wherein:
the template is composed of material selected from
the group consisting of fibre board, Plexiglas, and
masonite.
The references relied upon by the examiner are:
Budden 3,929,068 Dec. 30, 1975
Lopez 4,129,669 Dec. 12, 1978
Nakanishi 5,389,176 Feb. 14, 1995
Hinkes 5,440,858 Aug. 15, 1995
Hupp 5,487,526 Jan. 30, 1996
Grounds of Rejection2
1. Claims 1, 14-17 and 22-24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hinkes.
We reverse.
Appeal No. 2003-1390
Application No. 08/989,342
4
2. Claims 1, 14-17 and 22-24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Lopez.
We reverse.
3. Claims 1, 14-17 and 22-24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Nakanishi.
We affirm as to claims 1 and 22-24 and reverse as to claims
14-17.
4. Claims 1-5, 9-12 and 14-24 stand rejected under 35
U.S.C. § 102(b) as anticipated by Hupp.
We reverse.
5. Claims 18-21 stand rejected under 35 U.S.C. § 103 as
unpatentable over any one of Hinkes, Lopez and Nakanishi in view
of Budden.
We reverse.
6. Claims 6-8 and 13 stand rejected under 35 U.S.C. § 103
as unpatentable Hupp in view of Budden.
We reverse.
7. Claim 29 stands rejected under 35 U.S.C. § 103 as
unpatentable over any one of Hinkes, Lopez, Hupp and Nakanishi.
We reverse.
Background
The invention relates to a template for creating a three-
dimensional design other than a design which simulates brickwork
or stonework. Claim 1. The template is shaped to accommodate
the surface to which the design is to be applied and may be, for
example, flat or curved. Appeal brief, paper no. 19, received
January 10, 2003, page 4. The edges of the template may be
shaped to accommodate the shape of a structure rising from the
Appeal No. 2003-1390
Application No. 08/989,342
5
surface on which the design is to be applied. Id.
Alternatively, or in addition, the template may include apertures
which accommodate such structures, e.g., a light fixture. Id.
Discussion
Rejections under 35 U.S.C. § 102
A prior art reference anticipates a claim when the reference
discloses every feature of the claimed invention, either
explicitly or inherently. See Hazani v. United States
International Trade Commission, 126 F.3d 1473, 1477, 44 USPQ2d,
1358, 1361 (Fed. Cir. 1997). Anticipation does not require that
the reference teach what the appellants are claiming, but only
that the claims on appeal “read on” something disclosed in the
reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert denied, 465 U.S.
1026 (1984).
1. Rejection of claims 1, 14-17 and 22-24 under 35 U.S.C.
§ 102 as anticipated by Hinkes
Appellant argues that Hinkes cannot anticipate the present
invention because the template of Hinkes is not designed for
creating three-dimensional shapes. Appeal brief, page 13.
Rather, Hinkes discloses a template which is designed to create
the lines of a game court, which are essentially two-dimensional
Appeal No. 2003-1390
Application No. 08/989,342
6
markings. Id.
The examiner argues that the molded marks of Hinkes
necessarily have some thickness. Examiner’s answer, page 16.
Thus, giving the claims their broadest reasonable interpretation,
the present claims read on Hinkes’ template. See id.
Although the examiner is correct that claims are given the
broadest reasonable interpretation during patent prosecution,
this interpretation must also be consistent with the
specification. See In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ
934, 936 (Fed. Cir. 1984). In reviewing the specification, it is
readily apparent that in using the term “two-dimensional design”
appellant intends to distinguish over templates used to create
symbols, letters and lines such as are used to mark highways and
game courts. See specification, page 2, line 8-18. Accordingly,
we are in agreement with appellant that a template used to create
a two-dimensional marking does not anticipate the claimed
template for creating a three-dimensional design.
The rejection is reversed.
2. Rejection of claims 1, 14-17 and 22-24 under 35 U.S.C.
§ 102 as anticipated by Lopez
Like Hinkes, Lopez is directed to a template for applying
two-dimensional markings. See, e.g, Lopez, col. 2, lines 32-34
Appeal No. 2003-1390
Application No. 08/989,342
7
and 46-50. Accordingly, we are again in agreement with appellant
that Lopez does not teach a template for creating a three-
dimensional design and, therefore, cannot anticipate the present
invention.
The rejection is reversed.
3. Rejection of claims 1, 14-17 and 22-24 under 35 U.S.C.
§ 102 as anticipated by Nakanishi.
Nakanishi discloses a rugged shaped sheet for use, for
example, in forming a lowermost layer of a shoe sole. Appellant
argues that Nakanishi utilizes materials such as iron in the
template which would “impede maneuverability and tire a worker
using such a template” such that Nakanishi’s template cannot
anticipate the present claims. See appeal brief, pages 18-19.
We do not find appellant’s argument persuasive. In making a
patentability determination, the relevant inquiry is, “what is
the invention claimed?” Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987), cert
denied, 481 U.S. 1052 (1987). “[L]imitations appearing in the
specification will not be read into claims, and . . .
interpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the
specification, which is improper.’" In re Cruciferous Sprout
Appeal No. 2003-1390
Application No. 08/989,342
3Around (adv): “1a: in a circle or in circumference.” Webster’s Third
New International Dictionary 120 (1971).
8
Litigation v. Sunrise Farms, 301 F.3d 1343, 1348, 64 USPQ2d 1202,
1205 (Fed. Cir. 2002) (quoting Intervet Am., Inc. v. Kee-Vet
Labs., Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir.
1989). In the present case, the claims simply do not include any
limitations relating to the template’s weight or materials of
construction.
With respect to claims 14-17, appellant additionally argues
that Nakanishi’s design is between the apertures 36 and not
around them as required by these claims. Turning again to the
specification, we note that the claim 14 phrase “accommodating
apertures which are intended to accommodate an object on or
rising from the surface and around which the design is desired to
be placed” is used in connection with figure 3. Specification,
page 6, lines 22-26. Figure 3 shows the design apertures 2
positioned outside (“around”) the perimeter of the accommodating
aperture 6.3 Thus, we are in agreement with appellant that
interpreting this language as broadly as possible consistent with
the specification, the claim does not read on Nakanishi’s design.
The rejection is affirmed as to claims 1 and 22-24 and
reversed as to claims 14-17.
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Application No. 08/989,342
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4. Rejection of claims 1-5, 9-12 and 14-24 under 35 U.S.C.
§ 102 as anticipated by Hupp.
Appellant argues that Hupp is limited to a template for
brickwork or stonework and, therefore, cannot anticipate the
claims which require that the template design be in a form other
than a design for simulating brickwork or stonework. See appeal
brief, page 20 and claim 1. According to the examiner, the claim
recitation “such design being other than the design simulating
brickwork or stonework” is a statement of intended use and is not
significant in determining patentability of an apparatus claim.
Examiner’s answer, page 13. We disagree.
As drafted, claim 1 recites a template in the form of planar
structure having a thickness, length and width which accommodate
the desired design. The claim specifies that the desired design
is something other than a design which simulates brickwork or
stonework. In our view, this statement constitutes a structural
limitation wherein the template cannot be constructed in a form
which would produce a design simulating brickwork or stonework.
Accordingly, we find that this language constitutes more than a
mere statement of intended use and is a claim limitation.
The rejection is reversed.
Rejections under 35 U.S.C. § 103.
An invention is unpatentable under 35 U.S.C. § 103 if the
claimed invention as a whole would have been obvious to one of
Appeal No. 2003-1390
Application No. 08/989,342
10
ordinary skill in the art at the time the invention was made.
In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed.
Cir. 1988). When an obviousness determination is based on a
combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “The factual inquiry whether to combine references must
be thorough and searching.” McGinley v. Franklin Sports, Inc,
262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001).
5. Rejection of claims 18-21 under 35 U.S.C. § 103 as
unpatentable over any one of Hinkes, Lopez or Nakanishi in view
of Budden
The examiner relies on Budden as disclosing “that the
apertures in a template can be formed by cuts through the sheet
which cut pieces remain in position in the template at
manufacture but are readily removable therefrom (i.e., scoring).”
Examiner’s answer, page 14. According to the examiner, it would
have been obvious to one of ordinary skill in the art to have
modified the primary references to include scoring as this would
enable formation of apertures that are readily removable pieces
from the template. Id.
With respect to the rejections based on Hinkes or Lopez in
view of Budden, we note that Budden fails to remedy the
deficiency of the primary references in failing to disclose
Appeal No. 2003-1390
Application No. 08/989,342
11
three-dimensional designs. Accordingly, the rejections of claims
18-21 based on Hinkes or Lopez in view of Budden are reversed.
Turning to the rejection based on Nakanishi in view of
Budden, as pointed out by appellant, Budden teaches a sheet
having pieces 8 of a required design cut therefrom by cuts 9
extending through the layers 2, 3 and 4 which make up the sheet 1
as well as through the adhesive coating 5. Budden, col. 1, lines
57-60. Budden does not disclose or suggest a template which
includes accommodating apertures. See appeal brief, page 23.
The examiner has failed to establish why one of ordinary skill in
the art at the time of the invention would have been motivated to
have modified the guide holes 36 (accommodating apertures) of
Nakanishi to be in the form of scored sections that can be pushed
from the template in view of Budden’s disclosure which relates to
precutting the design itself.
The rejection of claims 18-21 based on Nakanishi in view of
Budden is reversed.
6. Rejection of claims 6-8 and 13 under 35 U.S.C. § 103 as
unpatentable over Hupp in view of Budden.

Budden relates to a stencil for use when painting designs on
surfaces such as walls, applying lettering to signboards or
producing pictures on paper or other material. Thus, Budden
relates to a two-dimensional, as opposed to a three-dimensional,
design. As pointed out above in connection with rejection 4,
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Application No. 08/989,342
12
Hupp fails to disclose or suggest an apparatus for forming a
design other than a design for brickwork or stonework. The
examiner has failed to establish how Budden’s disclosure would
have motivated one of ordinary skill in the art to have modified
Hupp to create a template for forming a three-dimensional design
simulating something other than brickwork or stonework. The
rejection is reversed.
7. Rejection of claim 29 under 35 U.S.C. § 103 as
unpatentable over any one of Hinkes, Lopez, Hupp or Nakanishi.
According to the examiner, it would have been obvious to one
of ordinary skill in the art at the time of the invention to have
modified the apparatuses of the primary references to use
fiberboard, wooden fiberboard or blown resin for the template as
recited in claim 29. Examiner’s answer, pages 15-16. According
to the examiner, “[m]ere selection of material known in the art
on the basis of suitability for an intended use would be entirely
obvious.” Id., page 16. Appellant’s arguments are limited to
his contention that, “[t]he independent patentability of Claim 1
. . . creates the requisite patentability of claim 29 since claim
29 depends on claim 1.” Appeal brief, page 24.
With respect to the rejections of claim 29 based on Hinkes,
Lopez or Hupp, we find that the examiner has failed to establish
why it would have been obvious to one of ordinary skill in the
art to have modified the template of Hinkes or Lopez to include
Appeal No. 2003-1390
Application No. 08/989,342
13
three-dimensional as opposed to two-dimensional designs and to
have modified the template of Hupp to include a design other than
for brickwork or stonework. Accordingly, the rejections of claim
29 as unpatentable over Hinkes, Hupp or Lopez are reversed.
However, as appellant has failed to dispute the examiner’s
findings regarding the obviousness of forming a template made of
fiberboard, wooden fiberboard or blown resin, and having
determined that Nakanishi anticipates claim 1 from which claim 29
depends, we are constrained to affirm the rejection of claim 29
as unpatentable over Nakanishi.
In sum, the rejection of claims 1 and 22-24 under 35 U.S.C.
§ 102 as anticipated by Nakanishi and the rejection of claim 29
under 35 U.S.C. § 103 as unpatentable over Nakanishi are
affirmed. The remaining rejections are reversed.
Appeal No. 2003-1390
Application No. 08/989,342
14
Time Period for Response
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
PETER F. KRATZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BEVERLY A. PAWLIKOWSKI ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
LRP/vsh
Appeal No. 2003-1390
Application No. 08/989,342
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