Ex Parte Zappe

Board of Patent Appeals and Interferences

Sep 27, 2005

10077346 (B.P.A.I. Sep. 27, 2005)

1We refer to and cite from the Brief dated July 26, 2004.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RAYMOND ZAPPE
____________
Appeal No. 2005-2102
Application No. 10/077,346
____________
ON BRIEF
____________
Before KIMLIN, WALTZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 21 through 27, which are the only claims
pending in this application (Brief, page 2).1 We have jurisdiction
pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a three
or four layered bed liner for a truck (Brief, page 4). Appellant
states that the claims stand or fall together for each separate
Appeal No. 2005-2102
Application No. 10/077,346
2
ground of rejection (Brief, pages 5-6). Therefore we select one
claim from each ground of rejection and decide the grounds of
rejection on the basis of these claims alone. See 37 CFR
§ 1.192(c)(7)(2003). Representative independent claim 21 is
reproduced below:
21. A bed liner for a vehicle comprising in combination:
a first base layer;
a patterned second layer secured to the first base layer; and
a clear third layer secured to the patterned layer for
permitting the patterned layer to be viewed.
The examiner has relied upon the following references as
evidence of unpatentability:
Okada et al. (Okada) 4,098,184 Jul. 04, 1978
Kamiya et al. (Kamiya) 6,103,390 Aug. 15, 2000
Sada et al. (Sada) 6,350,509 Feb. 26, 2002
(filed Dec. 10, 1999)
Claims 25 and 26 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite (Answer, page 3, referring to the Office
action dated Nov. 4, 2003). Claims 21-22 and 25-26 stand rejected
under 35 U.S.C. 102(b) as anticipated by Kamiya (id. At page 4).
Claims 23-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamiya in view of Okada (id. At page 5). Claim
27 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kamiya in view of Sada (id.).
Appeal No. 2005-2102
Application No. 10/077,346
3
Based on the totality of the record, including due
consideration of appellant’s arguments in the Brief and the
examiner’s position in the Answer, we affirm all of the rejections
on appeal essentially for the reasons stated in the Answer, the
Office action dated Nov. 4, 2003, and for those reasons set forth
below.
OPINION
A. The Rejection under § 112, ¶2
The examiner finds that the claimed terms “relatively
flexible” (claim 25) and “relatively inflexible” (claim 26) are
“vague and unclear” since the degree of flexibility is not defined
(Answer, pages 3-4).
Appellant argues that the specification was amended to state
that the various coats “may flex easily” or they “may not flex
easily,” thus allowing a person of ordinary skill in the bed liner
art to understand the terms in question (Brief, page 6, citing
¶ 0049 of the specification).
“The legal standard for definiteness [of claim language] is
whether a claim reasonably apprises those of skill in the art of
its scope. [Citations omitted].” In re Warmerdam, 33 F.3d 1354,
1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). The statute (§ 112,
¶2) is satisfied if a person skilled in the field of the invention
Appeal No. 2005-2102
Application No. 10/077,346
4
would reasonably understand the claim when read in the context of
the specification. See Union Pac. Res. Co. V. Chesapeake Energy
Corp., 236 F.3d 684, 692 (Fed. Cir. 2001). Words of degree, such
as “relatively flexible” and “relatively inflexible,” are not per
se indefinite but there must be some definitions or guidelines in
the specification to allow one skilled in the art to determine the
metes and bounds of these claimed terms. See Seattle Box Co., Inc.
V. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984). Here appellant fails to point to any
particular definitions or guidelines in the specification for the
contested terms, with the specification using similar words of
degree in “defining” these terms (see ¶ 0049 of the specification).
Accordingly, we agree with the examiner that as the claims now
read, surmise and conjecture must be used to determine whether a
liner would have the property of flexibility within the scope of
the claims. See Ex parte Anderson, 21 USPQ2d 1241, 1249 (Bd. Pat.
App. & Int. 1991). Therefore we affirm the examiner’s rejection of
claims 25 and 26 under the second paragraph of section 112.
Appeal No. 2005-2102
Application No. 10/077,346
2The examiner denominates the first base layer of Kamiya as “5A” but
apparently should have listed “4" as the base layer, since layer 5A is a lower
adhesive layer (col. 4, ll. 12-13) while layer 4 is a resin sheet that is part
of the base layer (col. 4, ll. 8-11). Regardless, the “base layer” is
described as containing layers 8, 5A and 4, while the layers 10, 9, 2, 3, 6
and 5 form the “upper decorative layer” (col. 3, ll. 53-55; col. 4, ll. 8-11).
5
B. The Rejection under § 102(b)
The examiner finds that Kamiya discloses an article for a
vehicle comprising in combination a first base layer,2 a patterned
second layer 9 secured indirectly to the first base layer, and a
clear third layer 10 secured to the patterned layer for permitting
the patterned layer to be viewed (Answer, page 4). In view of the
examiner’s claim construction for the term “bed liner” (Answer,
pages 4 and 6) and “secured to” (Answer, pages 6-7), the examiner
finds that Kamiya describes every limitation recited in claim 21 on
appeal.
Appellant argues that Kamiya discloses a multilayer medallion
that has nothing to do with the subject matter of this application
(Brief, page 7). Appellant also argues that Kamiya does not have
the three claimed layers arranged in the same manner as specified
in claim 21 (Brief, page 7), specifically arguing that Kamiya
discloses nine layers with a clear coating 10 on both a color
coating 9 and the resin film layer 2, while claim 21 specifies the
clear coating is on the patterned layer (Brief, pages 8-9).
Appeal No. 2005-2102
Application No. 10/077,346
6
Implicit in our review of the examiner’s anticipation analysis
is that the claim must first have been correctly construed to
define the scope and meaning of each contested limitation. See
Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997). During examination proceedings, claims are given
their broadest reasonable interpretation consistent with the
specification. See In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d
1697, 1701 (Fed. Cir. 1995). When a claim term is expressed in
general descriptive words, it typically will not be limited to a
preferred embodiment recited in the written description. See
Renishaw PLC v. Marposs Societa’ Por Azioni, 158 F.3d 1243, (Fed.
Cir. 1998).
In view of these case law precedents, we give the introductory
language “bed liner” its broadest reasonable interpretation as
including any layer or laminate capable of lining a bed of a
vehicle, and we do not limit this term to the “typical” bed liner
with a structure including a bottom or floor, a front or cab wall,
and two side walls (specification, page 11, ¶ 0050). We similarly
give the broadest reasonable interpretation to “secured to” which
is construed as meaning that a layer is “over” or above the other
layer and may be directly or indirectly attached. See the
specification, ¶ 0006, where the multilayer molded liner includes a
Appeal No. 2005-2102
Application No. 10/077,346
7
clear or transparent top layer “with a lower layer beneath the
clear layer” having a pattern. See the specification, ¶ 0007,
where a plurality of layers includes a top clear layer with a
patterned layer “below or underneath” the clear layer. See the
specification, ¶ 0016, where the bed liner has a transparent layer
“over” the patterned layer. Accordingly, it is clear from
appellant’s specification that there is no requirement that the
claimed layers directly contact each other.
In view of our claim construction above, we agree with the
examiner that the layers 5A (or 4), 9 and 10 disclosed by Kamiya
meet the limitations set forth in claim 21 for the three layers of
the bed liner, namely a first base layer, a colored (patterned)
layer, and a clear top layer so the patterned layer may be viewed.
Kamiya discloses that the product is a laminate (col. 1, l. 9) and,
before stamping into a decorative article, is a flat sheet capable
of lining the bed of a vehicle (col. 4, ll. 30-38). As explained
by the examiner (Answer, page 6), appellant’s arguments are limited
to three layers in direct contact with each other and thus are not
commensurate with the scope of the claims as construed above. We
note that the transitory term “comprising” opens the claim to the
inclusion of other layers. See Crystal Semiconductor Corp. v.
Tritech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed.
Appeal No. 2005-2102
Application No. 10/077,346
8
Cir. 2001)(“in the parlance of patent law, the transition
‘comprising’ creates a presumption that the recited elements are
only a part of the device, that the claim does not exclude
additional, unrecited elements.”).
For the foregoing reasons and those stated in the Answer and
the Office action dated Nov. 4, 2003, we affirm the examiner’s
rejection of claim 21, and claims 22, 25 and 26 which stand or fall
with claim 21, under section 102(b) over Kamiya.
C. The Rejections under § 103(a)
The examiner applies Kamiya as discussed above, further citing
Okada against claims 23 and 24 for its teaching that screen
printing methods are applicable to monochromatic and polychromatic
printing (Answer, page 5). With regard to the rejection of claim
27, the examiner applies Kamiya as discussed above and further
cites Sada for its teaching of adding another clear coat to the top
of a laminate to improve the brilliancy of the structure (id.).
Appellant argues that neither Okada nor Sada have anything to
do with the structure claimed (Brief, pages 9-11). However, we
agree with the examiner that Kamiya discloses screen printing to
produce the coloring layer 9 (col. 3, ll. 58-66), while Okada
teaches the use of screen printing for monochromatic or
polychromatic printings, thus rendering the use of either of these
Appeal No. 2005-2102
Application No. 10/077,346
9
printings in the Kamiya process obvious to one of ordinary skill in
the art. Similarly, we agree with the examiner that the use of
additional clear coatings, as taught by Sada, would have been
obvious in the structure of Kamiya to improve the brilliancy of the
structure.
Based on the totality of the record, including due
consideration of appellant’s arguments, we determine that the
preponderance of evidence weighs most heavily in favor of
obviousness within the meaning of section 103(a). Accordingly, we
affirm all rejections on appeal based on section 103(a).
D. Summary
We affirm the rejection of claims 25 and 26 under 35 U.S.C.
§ 112, second paragraph. We affirm the rejection of claims 21-22
and 25-26 under 35 U.S.C. § 102(b) over Kamiya. We affirm the
rejection of claims 23-24 under 35 U.S.C. § 103(a) over Kamiya
in view of Okada. We affirm the rejection of claim 27 under
35 U.S.C. § 103(a) over Kamiya in view of Sada.
The decision of the examiner is affirmed.
Appeal No. 2005-2102
Application No. 10/077,346
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(2004).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2005-2102
Application No. 10/077,346
11
H. GORDON SHIELDS
7830 NORTH 23RD AVENUE
PHOENIX, AZ 85021