Ex Parte Chen

Patent Trial and Appeal BoardAug 10, 2016

13152312 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/152,312 06/03/2011 26250 7590 08/12/2016 FRANCIS EDWARD MARINO 394 MEREDITH NECK ROAD MEREDITH, NH 03253 FIRST NAMED INVENTOR Albert CHEN 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 ATTORNEY DOCKET NO. CONFIRMATION NO. UM-001 6613 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 08/12/2016 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): frank@marinopatents.com patenter@metrocast.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERT CHEN Appeal2014-007259 Application 13/152,312 Technology Center 3700 Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and LISA M. GUIJT, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Albert Chen (Appellant) appeals under 35 U.S.C. Â§ 134 from the rejection of claims 1, 4--17, and 19 under 35 U.S.C. Â§ 103(a) as unpatentable Meccia (US 2003/0008095 Al, pub. Jan. 9, 2003), Pontecorvo (US 2003/0006603 Al, pub. Jan. 9, 2003), and Chiba (US 2002/0077420 Al, pub. June 20, 2002). We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-007259 Application 13/152,312 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A notepad comprising: an adhesive layer comprised of an oil-impregnated thermoplastic rubber having a thickness from 0.5 mm to 2.0 mm; a face layer permanently adhered to the adhesive layer and having a planar outer dry-erase surface, the face layer comprising graphics which indicate a plurality of evenly spaced holes adjacent one edge thereof and which indicate a plurality of binder rings inserted through said holes to emulate a bound notebook; and the adhesive and face layers together comprise a peripheral shape having a plurality of evenly-spaced rounded bumps protruding from said one edge adjacent said graphics, each of said rounded bumps surrounding one of said binder rings. DISCUSSION The Examiner finds that Meccia, Pontecorvo, and Chiba disclose or suggest all of the limitations of independent claim 1. See Final 1A..ct. 2--4. In particular, the Examiner finds that "Pontecorvo teaches a similar whiteboard wherein 'the whiteboard components need not be rectangular in shape. They could be round, triangular or any other shape, to impart design, art or logo features, as desired'." Id. at 3 (emphasis omitted). Appellant argues that Pontecorvo' s vague blanket statement that his device "could be any other shape" is [not] a teaching of "graphics which indicate a plurality of evenly spaced holes adjacent one edge thereof and which indicate a plurality of binder rings inserted through said holes and a plurality of evenly-spaced rounded bumps protruding from said on edge adjacent said graphics, each of said rounded bumps surrounding one of said binder rings." Appeal Br. 13-14 (emphasis omitted). 2 Appeal2014-007259 Application 13/152,312 Responding to this argument, the Examiner cites In re Seid for the proposition that "the particular artwork and shape conforming to the artwork was deemed to be purely ornamental, since matters relating to ornamentation only, which have no mechanical function, cannot be relied upon to patentably distinguish the claimed invention from the prior art." Ans. 2; see In re Seid, 161 F.2d 229, 231 (CCPA 1947). The Examiner's citation is not on point. In Seid, the allegedly novel features where shown in the prior art. In re Seid, 161 F.2d at 231 ("[t]hat concept, however, is old in the patent to Kirchner et al., wherein the cardboard figure representing the upper half of the human body conceals the bottle neck and is supported thereon, while the body of the bottle represents the lower half of the human display figure"). Here, the Examiner provides no example of any item having "a plurality of evenly-spaced rounded bumps protruding from said one edge" as evidence that the claimed shape was known in the art. Appeal Br. 28. Further, although a change of shape does not make a product nonobvious where the claimed shape is not of functional significance and accomplishes the same purpose as the prior art shape (In re Dailey, 357 F.2d 669, 672----673 (CCP A 1966)), such is not the case here. The Specification states that the invention is "a notepad that is shaped as and has graphics that emulate the lined pages of a bound notebook to give a 'first glance' indication to potential note-takers that the device is for such note-taking." Spec. i-f 1. Thus, the shape of the notepad has functional significance in that it conveys the intended purpose of the device. Moreover, the Examiner does not explain why one skilled in the art would choose the particular shape claimed. The only evidence of a reusable adhesive notepad having the claimed shape is Appellant's Specification. 3 Appeal2014-007259 Application 13/152,312 Thus, we agree with Appellant that the Examiner relies upon improper hindsight. For these reasons, we do not sustain the Examiner's decision rejecting independent claim 1, and claims 4--16 which depend therefrom. The Examiner's decision rejecting independent claims 17 and 19 is defective for the same reasons. Accordingly, we do not sustain the Examiner's decision rejecting claims 1 7 and 19. DECISION The Examiner's rejection of claims 1, 4--17, and 19 is REVERSED. REVERSED 4