Ex Parte Schofield

Patent Trial and Appeal Board

Nov 29, 2018

13999443 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/999,443 02/26/2014
7590
Peter C. Richardson
Richardson & Rosow LLC
147 East 37th Street, #1
New York, NY 10016
11/29/2018
FIRST NAMED INVENTOR
Steven M. Schofield
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14-00lSMS 9738
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
11/29/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. SCHOFIELD 1
Appeal2018-003105
Application 13/999,443
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven M. Schofield ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 3, 4, 6, 8, and 9. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief (dated June 12, 2017, "Br.") lists Steven M. Schofield as
the real party in interest. Br. 3.
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Application 13/999,443
CLAIMED SUBJECT MATTER
The claims are directed to a writing tab for clipping to a substrate.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A unitary writing tab for clipping to a substrate and
providing a firm, level writing swface, the writing tab
comprising:
(a). a top writing swface, an opposed bottom layer and a
flat leveling shelf fixedly secured against and between the top
writing surface and the bottom layer of the writing tab and
configured to form a support for the writing surface; and
(b ). a clip including at least an exterior extension defining
a first plane, at least an interior extension defining a second plane
disposed about parallel to and about overlying the first plane, and
the exterior extension being connected to the interior extension
through a bias segment passing between a perimeter of the
exterior extension and a perimeter of the interior extension;
the interior extension of said clip being fixedly secured
against and between the flat leveling shelf and the bottom layer
so that the exterior extension is secured adjacent an outside
surface of the bottom layer, and so that the bias segment applies
a bias forcing the exterior and interior extensions toward each
other when said writing tab is applied to a substrate;
wherein the flat leveling shelf is configured so that the
writing surface can be employed for writing without inteiference
from the clip; and
wherein the writing surface, flat leveling shelf, bottom
layer and clip are adhesively bound together such that there is
essentially no movement of any of said writing surface, flat
leveling shelf, bottom layer and clip relative to each other in any
direction other than that required to open the clip extension
adjacent the outside surface of the bottom layer to attach the
unitary writing tab to a substrate or remove it therefrom.
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Application 13/999,443
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Scott
Sinaiko
Van Bladel
us 4,425,724
us 5,481,784
US 6,363,582 Bl
REJECTIONS
Jan. 17, 1984
Jan.9, 1996
Apr. 2, 2002
(I) Claims 1, 4, 6, and 9, are rejected under 35 U.S.C. § I03(a) as
unpatentable over Scott and Sinaiko. 2
(II) Claims 3 and 8 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Scott, Sinaiko, and Van Bladel.
OPINION
Rejection(!); claims 1, 4, 6, and 9
Appellant makes arguments for the patentability of claims 1, 4, 6, and
9 as a group. Br. 10-17. We select claim 1 as a representative claim, and
claims 4, 6, and 9 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 is directed to a unitary writing tab that includes "a top writing
surface, a bottom layer opposed to the top writing surface, and a flat leveling
shelf fixedly secured against and between the top writing surface and the
bottom layer of the writing tab." Br. 23. Claim 1 requires that "the flat
leveling shelf is configured so that the writing surface can be employed for
writing without interference from the clip," and also requires that "the
2 We understand the Examiner's inclusion of claims 3 and 8 in the heading
of Rejection (I) to be a typographical error in that claims 3 and 8 are not
discussed in the body of the rejection, but are discussed under Rejection (II).
See Final Act. 2--4.
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Application 13/999,443
writing surface, flat leveling shelf, bottom layer and clip are adhesively
bound together such that there is essentially no movement of any of said
writing surface, flat leveling shelf, bottom layer and clip relative to each
other." Br. 23 (Claims App.).
An exemplary writing tab is shown in Appellant's Figure 4, which we
reproduce below.
FIG.4
40-
44
10
/
Appellant's Figure 4 depicts writing tab 10 including a top writing
surface 40 and a bottom layer 42 opposed to the top writing surface 40, a flat
leveling shelf 44 fixedly secured against and between the top writing surface
40 and the bottom layer 42 of the writing tab 10, and a paper clip having a
U-shaped loop 28 between the surface of the bottom layer 42 and the flat
leveling shelf 44 and second a U-shaped loop 24 outside of and extending
away from the periphery of the writing surface. Spec. 24:15-19, 25:8-14.
In rejecting claim 1, the Examiner finds that Figure 10 of Scott shows
a bottom surface 140 fixedly secured by adhesive 136 to a flat leveling shelf
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134 and having a clip 150 secured between the bottom layer 140 and the
leveling shelf 134. Final Act. 2. Figure 10 of Scott is reproduced below.
134
138 136 150
F I G. 10.
Figure 10 of Scott depicts a perspective view of a foam tape unit
including a layer 134 of foam tape having adhesive layers 136 and 138 on its
opposite faces, with cover sheet 140 partially peeled away for installation of
clip 150. Scott 3:50-52, 7:23-24.
The Examiner finds that Scott does not disclose a top writing surface,
but Sinaiko discloses a release liner covering an adhesive surface. Final Act.
3 ( citing Sinaiko 2:48-53). In view of the teaching of a release liner in
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Sinaiko, the Examiner determines that it would have been obvious to a
person of ordinary skill in the art to use a release liner, such as Scott's
release layer 140, on Scott's top adhesive layer 138 in order to "protect the
adhesive covering before use." Id. The Examiner concludes that the
combined teachings of Scott and Sinaiko would result in a top writing
surface because "[a] paper release liner is capable of receiving writing," in
that writing is an "intended use." Id.
Appellant first argues that "the Examiner's reliance on Scott as the
primary reference is misplaced," because Scott is not a writing tab suitable
for clipping to a substrate and does not have a writing surface. Br. 10.
According to Appellant, Scott's device is a bulletin board for holding written
materials, and writing "is conducted conventionally on a separate, individual
piece of paper, which is then slid under a paper clip on the board." Id.
Appellant asserts that Scott's device is the "antithesis of a unitary writing
tab," because Scott's device is necessarily relatively large and "a bulletin
board for holding and displaying separately written notes is structurally and
functionally different from the unitary writing tab of the present invention,
which is relatively small and portable." Br. 10-11. Appellant concludes
that based on these differences, a person of ordinary skill in the art would
not consider "the bulletin board of Scott as relevant as a starting point to
construct a unitary writing tab as presently claimed." Br. 11.
The Examiner responds that Scott and Sinaiko do not need to disclose
"a 'writing tab,' only structure which is capable of this function." Ans. 2.
Appellant's arguments are not persuasive, because the "bulletin
board" embodiment of Scott is not the embodiment on which the Examiner
relies. Rather, the Examiner relies on the foam tape embodiment of Figure
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10 of Scott, reproduced above. It is apparent from Scott's Figure 10 and
Appellant's Figure 4, reproduced above, that both depict the device relative
to an ordinary paper clip (see Scott 4:34--35), or a traditional paper clip (see
Spec. 16:3), and are of relatively similar size. Moreover, Appellant's
writing tab, like Scott's device is to hold paper. Specifically, claim 1 recites
"a writing tab for clipping to a substrate," and the Specification discloses a
clip for securing "paper or a similar substrate." Spec. 14:6.
The Examiner finds that the device of Scott, as modified in view of
Sinaiko is capable of being written upon. Specifically, the Examiner finds
that the kraft paper of Scott is "capable of receiving writing." Final Act. 3.
A release layer as disclosed by Scott, and which the Examiner proposes to
place on top of Scott's own layer 138 (based on Sinaiko's teaching of a
release layer covering an adhesive surface) is described as "a silicone-treated
densified kraft paper." Scott 7:30-32. The Specification states:
The writing surface can be made of any inscribable
material, but is preferred to be of a kind that serves as an
exemplary material for use in writing, such as writing paper,
label paper or label stock, customized or generic stationery,
cardboard, card stock, plastic, vinyl, cloth, metal, Mylar, vellum,
or notecards.
Spec. 15: 19--24.
Given that the Specification discloses that the writing surface can be
made of any inscribable material, Appellant does not apprise us of error in
the Examiner's finding that the paper of Scott is capable of being written
upon.
For these reasons, Appellant's argument that Scott is not a suitable
reference as a starting point for rejecting the claimed writing tab is not
persuasive.
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Appellant also argues that the foam of Scott is not a leveling shelf
because it is not configured to form a support for a writing surface. Br. 11.
Specifically, Appellant argues that Scott's foam is soft and pliable and can
conform to various rough surfaces. Id. at 11-12. Appellant asserts that this
may present a problem in that the clip may interfere with writing. See id. at
11. Further, according to Appellant, "a pen or other instrument writing on
any such purported writing surface would encounter depressions in both
sides of the foam as disclosed by Scott and smooth unimpeded writing
would not be achievable." Id. at 13.
The Examiner responds that the foam supports the writing layer as
claimed, because it is the writing surface that is being written upon, not the
foam itself. Ans. 3. According to the Examiner, Scott broadly discloses
foams, which includes foams of varying densities. Id.
Appellant's argument is not persuasive. Although we appreciate that
Scott's foam tape attaches to rough surfaces including cinderblocks, this is
due to the adhesive of Scott, not the nature of the foam. Specifically, Scott
discloses that "[t]he unit of FIG. 11 can then be secured to a wall or any
other desired surface by means of adhesive layer 138 (FIG. 10)." Scott
7:64---66. Similarly, Scott discloses "a foam tape or pad can be adhesively
attached to any of a wide variety of walls and other surfaces without the
need for auxiliary fastening devices." Scott 3: 8-11. Appellant does not
provide persuasive evidence that a soft compliant foam is required to make
the attachment. Appellant's citation to column 9, lines 63---65 of Scott as
disclosing a soft, compressive foam is unavailing because that portion of
Scott refers to a different embodiment than the one relied upon by the
Examiner. See Br. 12.
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Even if Appellant's assertions were correct, based on the relative
thickness of the foam and the paper clip (see Scott Figs. 10 and 12),
Appellant does not explain adequately why the paper clip would interfere
with even a soft foam. Nor does Appellant explain why paper on top of a
compressive foam could not be employed for writing, as the Examiner finds.
The claims do not require writing with support at any specific level of
firmness. Accordingly, we are not apprised of error in the Examiner's
finding that the foam of Scott is a flat leveling shelf, as claimed.
Appellant also argues that it is not reasonable to use a release layer "to
form a different device that, to the contrary, is intended to be indivisible and
in fact unitary." Br. 14. Appellant asserts that "[ n Jo detachable release layer
exists or is needed in the present invention and the disclosure of such a
release layer in Sinaiko is irrelevant thereto." Id.
Appellant's argument is not persuasive. The claimed writing tab is a
"unitary writing tab" and requires that all elements are "adhesively bound"
and "fixedly secured." Appellant's Specification does not indicate that
"unitary" means "intended to be indivisible." Br. 14. Although we
appreciate that Appellant's Specification discloses that the bottom layer and
leveling shelf are "permanently affixed" to the paper clip, and that the
"writing tab is configured to permanently secure" the paper clip (see Spec.
25:2-12), the claims do not require a permanent connection. A broadest
reasonable interpretation of the term unitary, consistent with the
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Specification, requires each layer to be secured, adhesively bound, or fixedly
secured to an adjacent layer to form a single entity. 3 See Spec. 9: 13-25.
Scott discloses that "the release layer ... holds the clip very securely
... without resulting in the peeling away of the release layer from the foam."
Scott 8:6-14. Scott discloses that "securing of the clip is accomplished in
part by virtue of the fact that the smaller of its I-shaped sections is held
between portions of the release layer which are adhesively secured to the
foam, and also partly by virtue of the action of the adhesive layer 136 on the
clip itself." Scott 8: 15-20, Fig. 10. An object of Scott "is to provide a paper
holding and displaying device of the clip type to which the clips can be
easily attached on which the clips nevertheless remain securely in place
unless intentionally removed." Scott 1 :40-43. Given that Scott adhesively
secures the layers to each other and to the clip to form a single entity as seen
in Figure 10 of Scott, the device of Scott is a unitary device as we have
construed that term. Thus, a preponderance of the evidence supports the
Examiner's position that Scott as modified by Sinaiko to include a releasable
cover that is adhesively secured to the foam and that is capable of receiving
writing, is a unitary writing tab.
Appellant also argues that there is no reason to combine the references
as the Examiner suggests, nor is there a reasonable expectation of success in
so doing. Br. 14. According to Appellant, the Examiner is picking and
choosing elements from the references and combining the teachings based
on impermissible hindsight. Id. at 15-16.
3 An ordinary and customary meaning of the term "unitary" is: "Forming a
single or uniform entity."
https:// en. oxforddictionaries.com/ definition/unitary
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Appellant's arguments are not persuasive given that Scott already uses
a release layer. One of ordinary skill in the art would understand that a
second release layer would predictably work the same as the first release
layer. Because Scott and Sinaiko both use a release layer, the Examiner's
use of the specific location, namely, the top (cover) of Sinaiko is reasonable
and would commend itself to a person of ordinary skill in the art looking to
protect adhesive. The Examiner has also provided sufficient reasoning to
support the rejection, namely, to "protect the adhesive covering before use."
Final Act. 3. Because the Examiner's reasoning for the proposed
modification is supported by rational underpinnings found in the prior art,
we do not agree that the Examiner's rejection is based on impermissible
hindsight.
Appellant's additional argument that the preamble should be given
patentable weight (see Br. 18) is addressed above in that Scott teaches a
unitary device and the modified structure of Scott is a unitary writing tab.
On page 20 of the Appeal Brief, Appellant refers to a declaration
made by the inventor, Steven M. Schofield, (hereinafter "Schofield
Declaration") and contends that a sample product4 included with the
Schofield Declaration shows "the state of the art and how a person of
ordinary skill in fact provided a clip of sufficient interest for it to be
4 Apparently, the Schofield Declaration was filed with a sample of a product
falling within the scope of at least one of the pending claims at the time the
Declaration was filed, as well as a sample of a "commercially available
tabbed clip" the Schofield Declaration identifies as prior art. See Schofield
Declaration 1 (" 1) The Exhibit consists of a sheet of paper to which is
clipped a unitary writing tab as described and claimed in the present
application, together with a commercially available tabbed clip as known
prior to the present invention.").
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commercialized[, but] nonetheless failed to address the concerns overcome
by the present invention." Appellant asserts that the sample product
included with the Schofield Declaration is "an embodiment of U.S. Patent
No. 7,857,127 [issued December 28, 2010, hereinafter 'Lau']." Br. 20.
Lau was filed almost ten years before the present application and
would be more relevant to the state of the art at that time, as opposed to the
state of the art at the time the present invention was made. The existence of
other tabs with clips merely illustrates possible alternative products, and has
little bearing on the rejection before us. In any event, Appellant provides no
discussion of the Schofield Declaration or Lau that apprises us of Examiner
error. Indeed, aside from pointing out the existence of the Schofield
Declaration, the submitted sample, and Lau, and concluding that these things
show the state of the art and support a conclusion of non-obviousness of "the
present claims," Appellant provides scant explanation as to their relevance.
See Br. 20.
We have considered all of Appellant's arguments in light of the
evidence of record, but the Examiner has the better position. Accordingly,
we sustain the rejection of claim 1 as unpatentable over Scott and Sinaiko.
Claims 4, 6, and 9 fall with claim 1.
Rejection (II); claims 3 and 8
Claim 3 depends from claim 1 and recites, in part, "wherein the flat
leveling shelf comprises a plurality of layers of sheet-like material adhered
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to each other." Br. 24 (Claims App.). Claim 8 recites similar requirements,
but depends from claim 6. Id. at 26.
The Examiner finds the leveling shelf of Scott does not have a
plurality of layers, but Van Bladel discloses this feature. Final Act. 4. The
Examiner considers that it would have been obvious to one of ordinary skill
in the art at the time the invention was made "to substitute the foam layer
taught in Scott with a micro-corrugated cardboard as taught by Van Bladel et
al. ... as a matter of obvious design choice. Id. ( citing In re Leshin, 277 F .2d
197 (CCPA 1960)).
Appellant argues that "there has to be a reason or motivation for a
person of ordinary skill to substitute materials to achieve some desired result
or purpose," and that the general skill of the worker in the art is not enough.
Br. 19. According to Appellant, the Examiner's withdrawal of an earlier
rejection evidences that there are structural and functional differences that
preclude one of ordinary skill in the art from making the proposed
substitution.
Appellant's argument is not persuasive. Scott discloses alternate
embodiments using "a corrugated sheet adhered to one of the faces of the
flat sheet" that holds a clip. Scott 4:45--46, Fig. 6. Van Bladel discloses that
"support plate 6b, which is composed of microcorrugated cardboard in the
embodiment according to FIGS. 6 and 7, may also, however, be made of a
foam plate, such as foamed polystyrene." Van Bladel 4:38--41. In other
words, both Scott and Van Bladel teach that a corrugated cardboard,
including a multilayer configuration, is a suitable substitute for a foam layer
to support a flat cover layer. The Examiner's withdrawal of an earlier
rejection based on Van Bladel is not dispositive of the present rejection,
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which we find to be adequately supported by the record. Accordingly, we
sustain the Examiner's rejection of claims 3 and 8 as unpatentable over
Scott, Sinaiko, and Van Bladel.
DECISION
The Examiner's decision to reject claims 1, 3, 4, 6, 8, and 9 is
affirmed.
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)(l )(iv).
AFFIRMED
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