2020006434 (P.T.A.B. Jun. 2, 2021)

WATCHITUDE, LLC

Patent Trials and Appeals BoardJun 2, 2021

2020006434 (P.T.A.B. Jun. 2, 2021)

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. 15/366,030 12/01/2016 ALBERT HAKIM 3612-101 6985 25881 7590 06/02/2021 EPSTEIN DRANGEL LLP 60 EAST 42ND STREET SUITE 2520 NEW YORK, NY 10165 EXAMINER WAGGENSPACK, ADAM J ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): mail@ipcounselors.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERT HAKIM and JAY TSE Appeal 2020-006434 Application 15/366,030 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and JILL D. HILL, Administrative Patent Judges. MARTIN, 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 23–28. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Watchitude LLC. Appeal Br. 2. Appeal 2020-006434 Application 15/366,030 2 CLAIMED SUBJECT MATTER The claims are directed “to bands made of silicone or having a silicone surface.” Spec. 2. Claim 23, reproduced below, is illustrative of the claimed subject matter: 23. A band comprising a silicone layer with a surface, said surface having a static electric charge reduced to a level less than the static electric charge normally present in a silicone layer, a dried varnish layer situated on said surface, an ink layer forming an image situated on the dried varnish layer, wherein said dried varnish layer with said ink layer thereon are cured together to provide a layer with a durable, high quality image. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Keung US 8,506,158 B2 Aug. 13, 2013 Drury US 2008/0223240 A1 Sep. 18, 2008 Swan US 2008/0251397 A1 Oct. 16, 2008 Bethune US 2010/0316855 A1 Dec. 16, 2010 Nakamura US 2011/0284154 A1 Nov. 24, 2011 Iio US 2012/0082829 A1 Apr. 5, 2012 Gerber US 2013/0334757 A1 Dec. 19, 2013 REJECTION Claims 23–26 stand rejected under 35 U.S.C. § 103 as unpatentable over Keung, Swan, Nakamura, Gerber, and Iio. Final Act. 2. Claims 23–25 stand rejected under 35 U.S.C. § 103 as unpatentable over Drury, Keung, Swan, and Gerber. Final Act. 5. Claims 26–28 stand rejected under 35 U.S.C. § 103 as unpatentable over Drury, Keung, Swan, Gerber, and optionally Nakamura. Final Act. 7. Appeal 2020-006434 Application 15/366,030 3 Claims 23–28 stand rejected under 35 U.S.C. § 103 as unpatentable over Keung, Swan, Nakamura, Gerber, Iio, Drury, and Bethune. Final Act. 8. Claims Rejected 35 U.S.C. § Reference(s)/Basis 23–26 103(a) Keung, Swan, Nakamura, Gerber, Iio 23–25 103(a) Drury, Keung, Swan, Gerber 26–28 103(a) Drury, Keung, Swan, Gerber, Nakamura 23–28 103(a) Keung, Swan, Gerber, Nakamura, Iio, Drury, Bethune OPINION Obviousness Appellant argues, generally, that none of the cited “references teach[es] a band with a reduced charge silicone surface having a dried varnish layer with the ink layer on it and a layer of the ink layer and varnish layer cured together.” Appeal Br. 8. The Examiner, however, “maintains that both of these [features] are taught by [the] prior art references.” Ans. 10. The Examiner first points out that “Drury discloses a dried varnish layer (see e.g. [0015], [0017], [0020]) and an ink layer situated on the varnish layer (see [0011-0012]), and also that the varnish and ink layer[s] are cured together.” Id. The Examiner also points out that “Nakamura discloses curing an oil varnish that is an overcoat to protect printed matter (e.g. an ink layer) and therefore also teaches a dried varnish layer (the varnish is cured and therefore dried) and has an ink layer situated on it (i.e. on its underside/between it and the surface).” Id. The Examiner then asserts that it would have been obvious to cure both layers at the same time. As an alternative, the Examiner also notes that curing is a process step, whereas the Appeal 2020-006434 Application 15/366,030 4 claims are apparatus claims and “that these limitations do not result in a patentable structural difference over the teachings of Nakamura and [Iio].” Id. Regarding the first rejection, Appellant asserts that Nakamura “teaches the opposite of placing the ink layer on the varnish layer by using the varnish as an ‘overcoat’ to protect the ink layer.” Appeal Br. 7. Although this may be true, the Examiner has reasonably determined that “on” may be interpreted broadly as encompassing “on its underside/between it and the surface.” Ans. 10. Further, the Examiner does not assert that Nakamura teaches curing both layers together, but finds that such would have been obvious. Appellant does not explain why this finding is erroneous. Additionally, we agree with the Examiner that, regarding curing, Appellant is arguing a method step and has not identified any structural difference that results from such simultaneous curing. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”). As such, we are not persuaded of error in the Examiner’s rejection. As to Drury, Appellant argues that in Drury, although “the ink layer may be deposited on the surface of the varnish during the printing [process], the printed article itself has the varnish situated over the ink layer in order to protect the ink layer.” Appeal Br. 8. This argument is similar to the above with regard to Nakamura in that Appellant asserts that the claim language at issue requires the ink to be “over” the varnish in the final product. First, Appeal 2020-006434 Application 15/366,030 5 nothing in the claims requires the ink to be “over” the varnish, it merely requires it be on the varnish. In Drury, the ink is applied both on and over the varnish in that the ink is deposited on the varnish, which is then deposited on the article. Also, in the same manner as Nakamura, when it is dried, the ink is “on” the varnish even if it is on the underside. Accordingly, we are not persuaded of error in the Examiner’s rejections involving Drury. CONCLUSION The Examiner’s rejections are AFFIRMED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23–26 103(a) Keung, Swan, Nakamura, Gerber, Iio 23–26 23–25 103(a) Drury, Keung, Swan, Gerber 23–25 26–28 103(a) Drury, Keung, Swan, Gerber, Nakamura 26–28 23–28 103(a) Keung, Swan, Gerber, Nakamura, Iio, Drury, Bethune 23–28 Overall Outcome 23–28 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2020-006434 Application 15/366,030 6 AFFIRMED