Ex Parte Supera et al

Patent Trial and Appeal Board

Apr 1, 2016

12981164 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/981,164 12/29/2010
25281 7590 04/05/2016
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
FIRST NAMED INVENTOR
David Mark Supera
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.
A866. l 02.101 6032
EXAMINER
KOKKINOS, NICHOLAS C
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
USPTO.PA TENTS@dbclaw.com
dmorris@dbclaw.com
DBCLA W-Docket@dbclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MARK SUPERA and
KENNETH LEE JOHNSON
Appeal2014-007445
Application 12/981, 164
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal 1 under 35 U.S.C. § 134(a) from a rejection of
claims 1-8 and 19. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is American Glass
Top Co. Appeal Br. 3.
Appeal2014-007445
Application 12/981, 164
STATEMENT OF CASE
The Examiner's July 31, 2013, Final Rejection rejects claims 1-17
and 19. Appellants cancelled claims 9-17 with an amendment filed in
conjunction with the Appeal Brief. Appeal Br. 3. Appellants' amendment
also reinstated the word "substantially" in independent claims 1 and 19. Id.
The Examiner entered the amendment with a February 27, 2014, Advisory
Action. Thus, appeal of claims 1-8 and 19 is now at issue. Appeal Br. 1, 3.
Appellants describe the present invention as relating to a magnetic
glass dry erase board. Spec. i-f 2. Claims 1 and 19 are the only pending
independent claims and are illustrative of the claimed subject matter:
1. A magnetic glass dry erase board system comprising:
a dry erase board comprising:
a glass sheet having an inner surface and an outer
surface;
a metal sheet having an inner surface and an outer
surface;
a coating layer applied to a surface of at least one
of inner surface of the glass sheet and an outer
surface of the metal sheet, wherein the coating
layer is a relatively light color; and
an adhesive layer that substantially covers the
inner surface of the glass sheet and the outer
surface of the metal sheet to retain the glass sheet
in a stationary relationship with respect to the
metal sheet, enhance a strength of the glass sheet
and protect persons from injury if the glass sheet is
broken by retaining glass pieces on the metal
sheet;
and
a dry erase marker that is capable of writing on the outer
surface of the glass sheet.
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Application 12/981, 164
19. A method of protecting a person from injury while using a
magnetic glass dry erase board, wherein the method comprises:
providing a magnetic glass dry erase board comprising a
glass sheet having an inner surface and an outer surface,
a metal sheet having an inner surface and an outer
surface, a coating layer applied to a surface of at least
one of the inner surface of the glass sheet and an outer
surface of the metal sheet and an adhesive layer that
substantially covers the inner surface of the glass sheet
and the outer surface of the metal sheet to retain the glass
sheet in a stationary relationship with respect to the metal
sheet, wherein the coating layer is non-reflective;
writing on the outer surface of the glass sheet with a dry
erase marker;
positioning an object on the outer surface of the glass
sheet utilizing magnetic attraction between the object and
the metal sheet;
subjecting the magnetic glass dry erase board to a force
that causes at least a portion of the glass sheet to break
into a plurality of glass pieces; and
retaining glass pieces on the metal sheet to prevent a
person from contacting edges of the glass pieces.
Appeal Br. 17, 19 (Claim Appendix).
REFERENCES
The Examiner relied upon the references below when rejecting the
claims on appeal:
Ward
Brischke
Bretschneider et al.
(hereinafter, "Bretschneider")
us 4,060,246
us 5,215,467
US 6,218,323 Bl
Nov. 29, 1977
June 1, 1993
Apr. 17, 2001
Moore US 2006/0194028 Al Aug. 31,2006
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Application 12/981, 164
Matte Definition, Meriam-Webster.com, http://www.merriam-
webster/dictionary/matte (last visited Jan. 9, 2013) (hereinafter
"Merriam-Webster").
National Weather Service Weather Forecast Office, Violent
Tornadoes (F4/EF4/F5/EF5) in Oklahoma (1950-Present),
http://www.srh.noaa.gov/oun/?n=tomadodata-ok-violent (last visited
July 26, 2013) (hereinafter "the NOAA Reference").
REJECTIONS
The Examiner withdrew rejections of claims 1-8 for failing to comply
with the written description requirement of 35 U.S.C. § 112 and of claims 9-
17 as being indefinite under 35 U.S.C. § 112. Ans. 3--4.
The Examiner maintains the following rejections:
Rejection 1. The Examiner rejected claims 1, 2, and 5-8 under
35 U.S.C. § 103 as unpatentable over Moore. Ans. 4.
Rejection 2. The Examiner rejected claim 3 under 35 U.S.C. § 103 as
unpatentable over the combination of Moore and Ward. Ans. 6. The
Examiner also references Merriam-Webster. Ans. 6.
Rejection 3. The Examiner rejected claim 4 under 35 U.S.C. § 103 as
unpatentable over the combination of Moore and Bretschneider. Ans. 6.
Rejection 4. The Examiner rejected claim 19 under 35 U.S.C. § 103
as unpatentable over the combination of Moore, Brischke, and the NOAA
Reference. Ans. 7.
ANALYSIS
Rejection 1. The Examiner rejected claims 1, 2, and 5-8 as obvious
over Moore. Ans. 4; Final Act. 6. Appellants do not separately argue claims
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Application 12/981, 164
2 or 5-8. We therefore limit our discussion to claim 1. Claims 2 and 5-8
stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Appellants present two arguments with respect to claim 1. We address
each of those two arguments below. Cf Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (explaining that review is based upon the
issues identified by Appellants).
First, Appellants argue that Moore does not teach that "adhesive
substantially covers the inner surface of the glass sheet" of the drawing
surface. Appeal Br. 11. We disagree. To explain why, we begin with
construction of claim 1. It is well established that "the PTO must give
claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation." In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007). "[A ]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." Id.
Claim 1 requires "an adhesive layer that substantially covers the inner
surface of the glass sheet and the outer surface of the metal sheet .... "
Appeal Br. 17 (Claims Appendix) (emphasis added). The Specification
defines "substantially covers" as meaning "that a significant portion of the
surface is covered with the adhesive." Spec. i-f 28. We construe
"substantially covers" in accordance with this definition. The Specification
further explains that "it is not necessary for the adhesive to entirely cover the
surface" for safety benefits of the adhesive to be achieved." Spec. i-f 28.
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Thus, "substantially covers" does not require that the adhesive entirely cover
all of a surface.
Here, the Examiner explains how Moore teaches a drawing surface
having a glass sheet and metal sheet connected by adhesive. Ans. 7; Final
Act. 7-8. We agree with and adopt these findings of fact. We also agree
with the Examiner's finding that Moore's adhesive must cover a significant
portion (in other words, a consequential or meaningful portion) of the
surface because otherwise the layers of Moore's dry erase board would not
be adequately bonded together. Ans. 7. Thus, we conclude that the
"substantially covers" requirement would have been obvious to a person of
ordinary skill in the art in view of Moore.
Second, Appellants argue that Moore does "not appreciate why it
would be desirable for the adhesive to substantially cover the inner surface
of the glass sheet." Appeal Br. 11. We understand this argument as relating
to the portions of claim 1 reciting the purpose of the "adhesive layer that
substantially covers .... " In particular, claim 1 requires:
an adhesive layer that substantially covers ... to retain the
glass sheet in a stationary relationship with respect to the metal
sheet, enhance a strength of the glass sheet and protect persons
from injury if the glass sheet is broken by retaining glass pieces
on the metal sheet.
Appeal Br. 17 (Claims Appendix) (emphases added).
The "adhesive layer that substantially covers" portion of the recitation
is structural. The "to retain ... enhance ... and protect" portion of the
recitation, however, is functional.
While a patent applicant may recite features structurally or
functionally, "choosing to define an element functionally, i.e., by what it
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does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In particular, where there is reason to believe that prior art structure
is capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See id.; In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not capable of functioning as claimed
invention). Moreover, "discovery of a previously unappreciated property of
a prior art composition, or of a scientific explanation for the prior art's
functioning, does not render the old composition patentably new to the
discoverer." See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999).
As explained above, Moore, like the claimed subject matter, teaches a
drawing surface having a glass sheet and metal sheet connected by adhesive.
We agree with the Examiner there is sound reason to believe this structure is
capable of performing the claimed function. Ans. 5; Final Act. 8-9. This is
especially true in this situation because the recitations of claim 1 could be
satisfied by "retain[ing] the glass sheet in a stationary relationship with
respect to the metal sheet" during any period of time (even, for example,
during normal operation), by "enhance[ing] the strength of the glass sheet"
by even a minimal degree, and by "protect[ing] persons from injury" by
even a minimal degree by retaining two or more "glass pieces on the metal
sheet." See also Spec. i-f 28. Thus, burden shifts to Appellants, and
Appellants do not meet the burden of establishing that the recited functions
patentably distinguish the claimed structure from the prior structure. Thus,
we sustain the Examiner's first rejection.
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Rejections 2 and 3. The Examiner rejects claim 3 as obvious over
Moore and Ward and rejects claim 4 as obvious over Moore and
Bretschneider. Ans. 6. Appellants solely rely upon the arguments raised
with respect to claim 1. Thus, we sustain these rejections for the reasons
explained above.
Rejection 4. The Examiner rejects claim 19 as obvious over Moore,
Brischke, and the NOAA Reference. Ans. 7. Appellants argue that the
references do not teach (1) protecting a person from injury while using a
magnetic dry erase board, (2) subjecting the magnetic glass dry erase board
to force which breaks the glass into pieces, and (3) retaining glass on the
metal sheet to prevent a person from contacting edges of the glass pieces.
The Examiner provides thoughtful analysis regarding claim 19, and we agree
with and adopt the Examiner's findings of fact regarding claim 19. Final
Act. 21-22; Ans. 7-10. Elaboration is provided below.
With respect to protecting a person from injury, claim 19 is a method
claim, and claim 19 does not require that any concrete step be taken based
on "protecting a person" from injury. Thus, the "protecting a person from
injury" language in the preamble is not, by itself, limiting. Moreover, even
if it were limiting, Moore's structure would provide some protection as
explained above.
With respect to subjecting the board to a force which breaks the glass,
we agree with the Examiner that any such board could be subject to such
forces. Ans. 7-10. A person of skill in the art would have recognized that a
glass writing board could be subject to force that could break the glass
whether by tornadoes (which, as the NOAA reference demonstrates, have
tragically struck schools that would implement white boards) or otherwise.
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With respect to retaining glass on the metal sheet, we note that claim
19 does not require that all glass pieces be retained or require that all persons
be protected from contacting all glass pieces. We agree with the Examiner
that, in the event of the glass breaking, the whiteboard of Moore would
retain glass pieces. Ans. 9; Final Act. 22.
We therefore sustain the Examiner's rejection of claim 19.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-8 and 19.
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
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