Ex Parte Von Gunten

Board of Patent Appeals and Interferences

Jan 27, 2011

10454341 (B.P.A.I. Jan. 27, 2011)

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.
10/454,341 06/02/2003 David L. Von Gunten 2525
7590 01/28/2011
Mark Manley
Dockery Suite 102
Central Missouri State University
Warrensburg, MO 64093
EXAMINER
WILSON, GREGORY A
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
01/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID L. VON GUNTEN
____________________

Appeal 2009-015255
Application 10/454,341
Technology Center 3700
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015255
Application 10/454,341

2
The Appellant appeals under 35 U.S.C. § 134(a) from a final rejection
mailed May 12, 2005. (App. Br. 2).2 We have jurisdiction over this appeal
under 35 U.S.C. §§ 6(b) and 134(a).
The claimed invention is directed to a camouflage vent and structural
surface combination. Independent claim 1, reproduced below, is
representative of the subject matter on appeal (App. Br. 12, Claims App'x.)
(formatted for improved readability):
1. A camouflage vent and structural surface
combination comprising;
a cylindrical vent pipe having a cylindrical
surface, said vent pipe having a first end located
inside said structural surface and a second end
located outside said structure surface;
said cylindrical vent passing through said
structural surface;
a label having a printed camouflage image
upon its label surface matching said structural
surface, said label applied to said cylindrical
surface of said second end of said cylindrical vent
pipe such that the second end of said cylindrical
vent pipe is covered by said label.

Independent claim 3 is directed to a camouflage vent tube
adapted for use with a structural surface and recites a printed
camouflage image covering the second end of the vent tube and
matching the structural surface (App. Br. 12, Claims App'x.).

2 Substitute Appeal Brief dated Dec. 12, 2006.
Appeal 2009-015255
Application 10/454,341

3
THE REJECTION
The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as
unpatentable over the "Admitted Prior Art" in view of Niemuth (US
2002/0094381 A1 published Jul. 18, 2002).
We REVERSE.

ISSUE
The sole issue raised in this appeal is whether the Examiner erred in
concluding that the combination of the Admitted Prior Art and Niemuth
would have rendered obvious the claimed camouflage vent and structural
surface combination comprising a label having a printed camouflage image
that matches the structural surface as in claims 1 and 3.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant's specification discloses that it is common in the
construction industry to have a vent pipe coming from the
inside of a structure, such as a house or building, to the outside
(Spec. ¶ (0001)).
2. Appellant's specification states:
In the field, it is currently common practice that
the actual vent stack is a piece of white PVC pipe
or other pipe that is visible from the street. Even
in expensive homes it is not unusual to see a piece
of unfinished pipe sticking out of the roof. This
white pipe shows up and looks very poor against
Appeal 2009-015255
Application 10/454,341

4
the roof, which is typically finished in either a dark
asphalt type shingle or in cedar shakes.
(Spec. ¶ (0003)).
3. Appellant's Specification states that "[t]he present
invention solves the limitations of the raw section of
PVC pipe showing from the exterior of the structure."
(Spec. ¶ (0004)).
4. Niemuth states that "[c]amouflage generally consists of one or
more colors placed on an article such that the article blends
with the surrounding environment to make the article
indistinguishable from the surrounding environment."
(¶ [0003]).
5. Niemuth discloses that such camouflage is typically used in
hunting, military, or wildlife observing applications (¶ [0003]).

PRINCIPLES OF LAW
"[35 U.S.C.] Section 103 forbids issuance of a patent when 'the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007). The Court noted that "[t]o facilitate review, this analysis
should be made explicit." Id. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
Appeal 2009-015255
Application 10/454,341

5
reasoning with some rational underpinning to support the legal conclusion of
obviousness.")).

ANALYSIS
The Examiner rejects claims 1-16 as obvious over the combination of
the "Admitted Prior Art" and Niemuth (Misc. Office Comm.).3 While all
pending claims stand finally rejected, only the rejection of claims 1-8 has
been argued (App. Br. 2, 4-10). The notice of appeal indicated that the last
decision of the Examiner was appealed. Notice of Appeal, dated August 11,
2005. As claims 9-16 were finally rejected, but not argued, we consider the
status of claims 9-16 to be finally rejected per the Examiner’s rejection of
record, and because no arguments were made, the Appellant has authorized
Examiner's cancellation of these claims prior to any further prosecution of
the present application. See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI
May 1, 2008) (precedential).
The Examiner's rejection is based on the finding that vent pipes
projecting on the outside of houses are prior art (Misc. Office Comm.; App.
Br. 4; FF 1). The Examiner relies on Niemuth for teaching camouflaging an
article so that the article blends in with the surrounding environment and is
made indistinguishable from that environment (Misc. Office Comm.; FF 4).
The Examiner determined that in view of Niemuth, it would have been

3 The Miscellaneous Office Communication dated Sept. 18, 2009 ("Misc.
Office Comm.") amends Section (9), "Grounds of Rejection," as set forth at
page 3 of the Examiner's Answer, to correct a typographical error and
indicate that claims 1-16 (not claims 1-14), are rejected under this ground.
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Application 10/454,341

6
obvious to one of ordinary skill in the art to camouflage a vent pipe “for its
obvious intended purpose.” (Misc. Office Comm.).
The Appellant argues that Niemuth is limited to applications such as
hunting, military and wildlife observation (App. Br. 6; FF 5), and that
Niemuth does not teach the use of camouflage in a construction environment
(App. Br. 6). Hence, the Appellant's essential contention is that there is no
reason established in the record to apply camouflage to a vent pipe (App. Br.
6).
We agree with the Appellant that the Examiner did not establish a
reason based on the evidence in the record for combining the Admitted Prior
Art with Niemuth to result in a camouflaged vent and structural surface as
claimed. The Appellant has identified a problem; namely, that vent pipes
have a poor visual appearance with respect to structural surfaces, such as the
roof of a house or building (FF 1, 2), and provides a solution to this problem
(FF 3). Niemuth does not describe vent pipes nor camouflaging building
structures. The Examiner has not shown through evidence that, at the time
of the invention, it was recognized as being desirable to hide a vent pipe
passing through a structural surface, much less to use a label as a solution.
As such, the Examiner's articulated reasoning for modifying the
Admitted Prior Art appears to be based on hindsight and insufficient to
support the obviousness rejection. See KSR, 550 U.S. at 418. Therefore, we
do not sustain the obviousness rejection of claim 1, as well as claim 2, which
depends from claim 1. For similar reasons as those discussed with respect to
claim 1, we also do not sustain the obviousness rejection of claim 3, as well
as claims 4-8, which depend from claim 3.
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Application 10/454,341

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CONCLUSION
The Examiner erred in concluding that it would have been obvious to
combine the Admitted Prior Art and Niemuth to result in the claimed
camouflage vent and structural surface combination comprising a label
having a printed camouflage image matching the structural surface.

DECISION
The Examiner's rejection of claims 1-8 is REVERSED.

REVERSED

ack
cc:

Mark Manley
Dockery Suite 102
Central Missouri State University
Warrensburg MO 64093