Ex Parte Winter

Board of Patent Appeals and Interferences

Aug 7, 2012

11128998 (B.P.A.I. Aug. 7, 2012)

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.
11/128,998 05/13/2005 Steven B. Winter 303/85004 8968
22242 7590 08/08/2012
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
08/08/2012 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 STEVEN B. WINTER
________________

Appeal 2011-002001
Application 11/128,998
Technology Center 1700
________________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
HUBERT C. LORIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3, 4, and 9-11.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A color display device which displays a plurality of colors with color
swatches which partially overlie each other and overlap, the color display
device comprising:

a plurality of paint coated color swatch layers in stacked relation, each
color swatch layer having a length and width, the length greater in
proportion to the width, each color swatch layer having a top and opposite
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Application 11/128,998

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bottom edge, the plurality of color swatch layers including a top color
swatch layer partially overlapping a first immediate color swatch layer
below the top color swatch layer, the first intermediate color swatch layer
overlapping a second intermediate color swatch layer below the first
intermediate color swatch layer and a bottom color swatch layer, the top
edges of the plurality of color swatch layers being bound together to provide
a common top edge of the color swatch layers, the bottom edge of each color
swatch layer having a bottom edge offset and above the color swatch layer
immediately below so that each of the color swatch layers do not completely
cover the color swatch layer below and permitting a viewer to view paint on
each of the color swatch layers, the plurality of color swatch layers joined at
the top edges to permit the color swatch layers to be lifted above and away
from the intermediate color swatch layer immediately below, the color
swatch layers being joined so that the top and intermediate color swatch
layers may be lifted so that the entire swatch layer below the swatch being
lifted may be viewed,

the color swatch layers including base paper layers having different
longitudinal lengths, printed release composition layers, printed pressure
sensitive indirect adhesive layers and removable paint coated swatches
having the same size, the base paper layers comprising at least an 80 pound
cover paper both sides of which have been calendared, the removable paint
coated swatches being releasably mounted on the pressure sensitive indirect
adhesive, the pressure sensitive adhesive bonding to the removable paint
coated swatches to the base paper swatch layers and effective for providing
releasably bonded paint coated swatches which may be repositioned remote
from the color display device and releasably bonded onto a remote substrate.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 4):
Ackerman ‘435 4,458,435 Jul. 10, 1984
Ackerman ‘828 4,498,828 Feb. 12, 1985
Yelton 5,308,117 May 03, 1994
Lerner 2003/0072907 A1 Apr. 17, 2003
Reese GB 2287220 A Sept. 13, 1995

Gregor R. Campbell, From a Binder’s Point of View: Some Advice for
Independent, Desktop Publishers, in “The New Library Scene” (Mar. 1997).
Appeal 2011-002001
Application 11/128,998

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Appellant’s claimed invention is directed to a device which displays a
plurality of colors comprising a plurality of paint coated color swatch layers
in stacked, cascading relation. A top color swatch layer partially overlaps a
first intermediate color swatch layer, the first intermediate color swatch layer
partially overlaps a second intermediate color swatch layer, which second
intermediate color swatch layer overlaps a bottom color swatch layer. The
top edges of the plurality of color swatch layers are bound together to
provide a common top edge. Also, the bottom edge of each color swatch
layer is offset and above the color swatch layer immediately below it such
that each of the color swatch layers do not completely cover the swatch layer
below it, which permits a viewer to see the paint on each of the color swatch
layers.
Appealed claims 9 and 10 stand rejected under 35 U.S.C. § 112, first
paragraph, written description requirement. The appealed claims stand
rejected under 35 U.S.C. § 103(a) as follows:
(a) Claims 1 and 4 over Yelton in view of Reese and Campbell,
(b) Claim 3 over the stated combination of references further in view
of Lerner,
(c) Claim 9 over Yelton in view of Reese, Campbell and Ackerman
‘435, and
(d) Claim 11 over Yelton in view of Reese, Campbell and Ackerman
‘828.
The Examiner has withdrawn the § 103 rejection of claims 6-8, 10, 12 and
13 (see Ans. 3, second para.).
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Application 11/128,998

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We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s § 103 rejection for the reasons
set forth in the Answer, which we incorporate herein, and we add the
following for emphasis only. We will also sustain the Examiner’s rejection
under § 112, first paragraph.
We consider first the Examiner’s rejection under § 112, first
paragraph. We agree with the Examiner that the original Specification does
not provide descriptive support for the claimed second base paper being
immediately above a first paper. As pointed out by the Examiner, the layers
immediately above the first base paper (40) depicted in Figure 4B are the
release layer (42) and the adhesive layer (48). As stated by the Examiner,
“[t]he drawings do not illustrate a second base paper immediately above a
first base paper, because the layers (42/48) are immediately above the first
base paper” (Ans. 14, first para.). Appellant’s argument that the
Specification describes a first base paper layer (9a) which is not covered by
the second base paper layer (8a) immediately above the first paper layer
does not address the thrust of the Examiner’s rejection.
We now turn to the Examiner’s § 103 rejection. Appellant does not
dispute the Examiner’s factual determination that Yelton, like Appellant,
discloses a swatch book comprising a plurality of color swatch layers in
cascading, stacked relation, each layer having a length and width wherein
the length is greater in proportion to the width. Also, Yelton teaches that the
top edges of the plurality of color swatch layers are bound together to
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Application 11/128,998

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provide a common top edge of the color swatch layers, the bottom edge of
each color swatch layer having a bottom edge offset and above the layer
immediately below it so that each of the color swatch layers do not
completely cover the color swatch layer below and permitting the viewer to
view the color on each of the layers, wherein the plurality of color swatch
layers joined at the top edges permit the layers to be lifted above and away
from the intermediate color swatch layer immediately below.
As recognized by the Examiner, Yelton does not expressly disclose
that the color swatch layers are painted swatch layers. However, Reese
evidences that it was known in the art to provide a booklet of painted color
swatches produced by paint makers for viewing by potential customers (p. 1,
second para.). The swatch layers of Reese include a base paper layer
adhered to an information carrying layer (1a) which, in turn, is adhered to a
release sheet.
Hence, based on the collective teachings of Yelton and Reese, we
fully concur with the Examiner that it would have been obvious for one of
ordinary skill in the art to substitute the painted color swatches of Reese for
the color paper swatches of Yelton to provide painted color swatches in
stacked, cascading relation such that each paint color may be viewed at the
same time. While Appellant argues that it is difficult to provide paint
covered chips about the same size mounted on bases having a different size,
Appellant has not demonstrated with persuasive argument, let alone
objective evidence, that the solution of such a problem would not have been
obvious to one of ordinary skill in the art. Appellant has proffered no
objective evidence which demonstrates that attempts have been made in the
art to produce the claimed color display device without success, and that
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Application 11/128,998

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Appellant, in some way, invented a method for making the claimed device
that would have been nonobvious to one of ordinary skill in the art, or
produces an unexpected result.
Regarding claim 9, we agree with the Examiner that Ackerman ‘435
evidences the obviousness of providing swatches comprising two portions,
only one of which is removable.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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)(1)(iv).
AFFIRMED

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