Patent Applied Technology

Patent Trials and Appeals Board

Oct 9, 2020

2019006822 (P.T.A.B. Oct. 9, 2020)

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.
15/232,362 08/09/2016 David Langtry 84822-16US/ADB 2449
23529 7590 10/09/2020
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MANITOBA R2G1P9
CANADA
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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):
djones@adeco.com
uspto@adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LANGTRY
Appeal 2019-006822
Application 15/232,362
Technology Center 1700
Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–14 under 35 U.S.C. § 103 as
unpatentable over Tyler2 in view of Barry3 and Nakashima.4 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the Inventor, David
Langtry. Appeal Brief (“Appeal Br.”) filed April 29, 2019, at 1.
2 Tyler, GB 2 357 985 A, published July 11, 2001.
3 Barry, GB 2 324 325 A, published October 21, 1998.
4 Nakashima, US 4,082,427, issued April 4, 1978.
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Application 15/232,362

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We REVERSE.5
CLAIMED SUBJECT MATTER
The invention relates to luminescent markings including luminescent
glass material which can be used for roadways or on signs, such as road and
commercial signs. Spec. 1:8–9.
Claim 12, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
12. A method for providing markings on a road surface
comprising:
applying onto the road surface a marking material
containing visibly distinguishing markings;
applying onto the marking material on the road surface a
base material which is liquid in an initial state for application
and sets or cures to form a solid layer after application;
the base material being colorless to allow viewing of the
marking material;
and applying a material onto a surface of the base
material so as to be adhered thereto, where the material
comprises:
transparent ground glass particles formed by grinding
glass so that the particles have an irregular outer surface;
wherein the ground glass particles are impregnated or
coated with a coating material comprising a luminescent
material and a binder;

5 This Decision also cites to the Specification (“Spec.”) filed August 9, 2016,
the Final Office Action (“Final Act.”) dated August 28, 2018, the
Examiner’s Answer (“Ans.”) dated July 22, 2019, and the Reply Brief
(“Reply Br.”) filed September 19, 2019.
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Application 15/232,362

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and wherein the coating material is free from colorant so
that glass particles and the coating material are transparent.

OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the pending rejections.
In particular, Appellant argues, among other things, that Barry fails to
teach that the glass beads or powder have irregular surfaces and that these
beads or powder are coated with a transparent coating material comprising a
luminescent material and a binder. Appeal Br. 7–8. Appellant asserts that
Tyler and Barry fail to teach or suggest use of ground glass having an
irregular surface and a luminescent material free of colorant so as to be
transparent. Id. at 8–9. Appellant also asserts that Nakashima fails to
disclose use of ground glass with an irregular surface, but instead heats and
suspends glass particles in air such that the glass particles become spheroids
before use. Id. at 10. Although the Examiner determines that claim 12 does
not require that the luminescent material is transparent (Ans. 3–4), Appellant
contends that the luminescent material must be transparent because claim 12
recites that the coating material is transparent and includes the luminescent
material. Reply Br. 2. In addition, although the Examiner determines that
Appeal 2019-006822
Application 15/232,362

4
claim 12 does not require that the glass particles comprise an irregular outer
surface throughout the process (Ans. 4), Appellant contends that the coated
ground glass particles must have irregular surfaces because claim 12 recites
a material comprising transparent ground glass particles having an irregular
outer surface “wherein the ground glass particles are impregnated or coated
with a coating material.” Reply Br. 2.
Appellant’s arguments are persuasive. As Appellant contends, claim
12 requires that the material applied to the base material comprises
“transparent ground glass particles formed by grinding glass so that the
particles have an irregular outer surface.” Further, although Nakashima
teaches producing, as an intermediate, powdered glass particles, Nakashima
teaches that these particles are heated and suspended in air to form them into
spheroids prior to use. Nakashima 4:29–44. Thus, contrary to the Examiner’s
determination, claim 12 requires use of ground glass particles having
irregular surfaces, whereas Nakashima teaches spheroidizing such particles
prior to use.
Moreover, as Appellant contends, claim 12 requires that the coating
material is free from colorant, is transparent, and comprises a luminescent
material and a binder. The Examiner finds that Barry teaches “applying
material comprising transparent elements in the form of retro-reflective glass
particles and luminescent material.” Final Act. 5. However, Barry teaches
that the retro-reflective glass particles are transparent, but does not teach that
the luminescent material is transparent. Barry 2:1–5. Nor does Barry teach
that the coating material comprising the luminescent material and a binder is
transparent. Thus, contrary to the Examiner’s finding, Barry does not teach a
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coating material comprising a luminescent material and a binder that is
color-free and transparent.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). Here, the Examiner erred in finding that the applied
prior art taught or suggested the use of ground glass particles having
irregular surfaces and coated with a color-free, transparent coating material
comprising luminescent material and a binder. Under these circumstances,
we cannot conclude that the Examiner has met the minimum threshold of
establishing obviousness. See also KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting 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 reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”)).
Accordingly, we cannot sustain the Examiner’s obviousness rejection
of claim 12, nor of claims 13 and 14 dependent thereon over the
combination of Tyler, Barry, and Nakashima.
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CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims
12–14 under 35 U.S.C. § 103 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12–14 103 Tyler, Barry,
Nakashima
12–14

REVERSED