Ex Parte Shkedi et alDownload PDFPatent Trial and Appeal BoardApr 22, 201412121025 (P.T.A.B. Apr. 22, 2014) 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. 12/121,025 05/15/2008 Zvi Shkedi 6083 7590 04/22/2014 Zvi Shkedi 435 Harrison Ave. Scranton, PA 18510 EXAMINER RUMMEL, IAN A ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 04/22/2014 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 ZVI SHKEDI, CHAIM SHAUL SHKEDI, and ELIRAN SHKEDI ____________ Appeal 2012-010982 Application 12/121,025 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and WHITNEY N. WILSON, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A religious artifact including at least one scroll, said scroll including parchment and Hebrew religious text hand-written with black liquid ink on at least one surface of said parchment, wherein said liquid ink has dried on said surface; and wherein said dried ink: a) is water resistant; b) is not tacky; and Appeal 2012-010982 Application 12/121,025 2 c) can be scraped off and removed from said surface without leaving a visible ink residue on said surface and without causing substantial damage to said parchment. In addition to the admitted prior art, the Examiner relies upon the following reference as evidence of obviousness: Kiko U.S. 6,498,203 B1 Dec. 24, 2002 Appellants' claimed invention is directed to a scroll comprising parchment having text hand-written with black liquid ink on the surface of the parchment. The ink, when dried, is water resistant, not tacky, and can be scraped off and removed without leaving a visible residue and without causing substantial damage to the parchment. Appellants' Specification defines the terms of the claims as follows: (a) water resistant – "the ink, after drying, does not dissolve or spread on the surface of the parchment when the scroll is soaked in water, or when the surface of the scroll is wiped with a wet cloth" (Spec. 6, 2 nd para.), (b) not tacky – "[c]ertain ink formulations remain tacky after drying. The terms 'tacky' and 'not tacky' as used herein to describe a property of a material, refer to the material after it has dried. Such residual tackiness may cause the ink on the front surface of the parchment to stick to the rear surface of the parchment when the parchment is rolled" (Spec. 5, 3 rd para.), (c) flexible "claim 11" – "[t]he term 'flexible' as used herein means that flexing and folding of the scroll back and forth across written letters does not crack, break, or flake off the dry ink, even after the scroll has been stored for many years in a desert-like dry environment. In addition, lightly scrubbing the written surface of the scroll with a dry cloth does not produce ink powder and does not remove any of the dry ink" (Spec. 6, 3 rd para.). Appeal 2012-010982 Application 12/121,025 3 We have thoroughly reviewed the respective positions advanced by Appellants and the Examiner. In so doing, we find ourselves in agreement with Appellants that the applied prior art does not establish the obviousness of the claimed subject matter within the meaning of § 103. Accordingly, we will not sustain the Examiner's rejection. When, as here, a claimed article or composition is defined by its properties rather than its constituents, it is not unreasonable to shift to Appellants the burden of establishing an actual difference between the claimed subject matter and that of the prior art which appears to be similar in composition. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also, In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); and In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980). However, the initial burden is upon the Examiner to demonstrate a close correspondence between the claimed subject matter and the prior art such that a reasonable basis exists for concluding that the article or composition of the prior art necessarily possesses the claimed properties. In the present case, while we appreciate the considerable effort put forth by the Examiner, it is our judgment that the Examiner falls short in establishing a reasonable basis for concluding that the ink disclosed by Kiko is "water-resistant," "not tacky," "flexible," and "can be scraped off and removed from said surface without leaving a visible ink residue on said surface and without causing substantial damage to said parchment," as these terms are defined in the present Specification. Regarding the claimed property "water-resistant," the Examiner points to Kiko's use of a water-soluble polar solvent to render the writing water- resistant (col. 18, ll. 12-15). However, the fact that Kiko's writing comprises Appeal 2012-010982 Application 12/121,025 4 a certain level of water-resistance does not reasonably establish that it possesses the more stringent requirement that it does not dissolve or spread on the surface of the parchment when the scroll is soaked in water, or when the surface of the scroll is wiped with a wet cloth. Kiko provides no teaching or suggestion that the disclosed ink is suitable for writing on parchment. Furthermore, Appellants tested Frixion ink, the only ink product offered by the assignee of Kiko in accordance with the Kiko patent. Appellants applied the Kiko ink to a cow-skin parchment and, after 24 hours of drying, the ink smeared and spread on the parchment upon wiping with a wet paper towel. While the Examiner points out that the representative of the assignee stated in a letter that there were many variations of the Frixion ink, the representative also stated that the Frixion ink is the only erasable product offered. Moreover, the Examiner has not reasonably established that any variation of the Frixion ink fairly disclosed by Kiko is water- resistant as defined in the present Specification. We also agree with Appellants that Kiko's thrice-stated description of the adhesive covered resin particles as staying adhesive at room temperature refutes any suggestion that the Kiko ink is not tacky as defined in the present Specification. The fretting resistance test of Kiko, where the smooth surface of filter paper was slid along the writing ten times, does not reasonably establish that the reference ink is not tacky as defined in the present Specification. We further concur with Appellants that the Examiner has not reasonably demonstrated that the particle-containing ink of Kiko can be scraped off and removed from the surface of parchment without leaving a Appeal 2012-010982 Application 12/121,025 5 visible ink residue on the surface and without causing substantial damage to the parchment. The Examiner has not refuted Appellants' assertion that "parchment is a very porous material, with pores sizes much larger than in paper" (Prin. Br. 18), and we agree with Appellants that the erasing step described by Kiko for removing ink does not fit the definition of scraping provided by Appellants. Finally, while the Examiner explains that the term "flexible" is a relative term, and that the adhesively-bound polymer particles of Kiko possess some degree of flexibility, the term, as defined in the present Specification, requires that the written letters do not crack, break, or flake off when the scroll is flexed and folded back and forth across the written letters. Appellants' tests of the Frixion ink of Kiko demonstrate that the Kiko ink does not possess the degree of flexibility defined in the present Specification. In conclusion, based on the foregoing, we are constrained to reverse the Examiner's rejection. REVERSED cam Copy with citationCopy as parenthetical citation