Ex Parte Cotey

Patent Trial and Appeal Board

Oct 17, 2016

13628508 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/628,508 09/27/2012
19407 7590 10/17/2016
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 1600
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Richard S. Cotey
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.
9262-102462-us
(10541-U)
CONFIRMATION NO.
3018
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
MAILDATE DELIVERY MODE
10/17/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD S. COTEY1
Appeal2015-004604
Application 13/628,508
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's maintained final rejection of claims 1-13. 2 We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Medline Industries,
Inc. Appeal Brief filed October 27, 2014, ("App. Br.") 3.
2 Appellant cancelled claims 15-17 in a Response filed with the Appeal brief
on October 27, 2014, and pending claims 18-20 stand withdrawn from
consideration. Final Office Action entered May 21, 2014, ("Final Act.") 2.
Appeal2015-004604
Application 13/628,508
CLAIIvIED SUBJECT IvIA TTER
Appellant's claimed invention is generally directed to an apparatus
comprising a flexible sheet comprised of a foil of antimicrobial copper that
is configured to retroactively wrap conformably about at least one
predetermined touch surface, and a securement mechanism that is
configured to secure the flexible sheet to the predetermined touch surface.
Spec. Abstract.
Claim 1 is illustrative:
1. An apparatus comprising:
a flexible sheet comprised of a foil of antimicrobial
copper configured to retroactively wrap conformably about at
least one predetermined touch surface;
a securement mechanism configured to secure the
flexible sheet to the predetermined touch surface such that the
foil of antimicrobial copper serves as an antimicrobial touch
surface in substitution for at least a portion of the at least one
predetermined touch surface.
App. Br. 9 (Claims Appendix.)
REJECTIONS
The Examiner maintains the following final rejections3:
Claims 1-7, 11, and 12 under 35 U.S.C. § 102(b) as anticipated by
Thomas (US 3,582,452, issued June 1, 1971) as evidenced by Gibbins et al.
(US 2010/0190004 Al, published July 29, 2010).
Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over Thomas and
Gibbins.
3 Examiner's Answer entered January 12, 2015 ("Ans."). As the claims
were cancelled, the Examiner has withdrawn prior pending rejections of
claims 15-17. Ans. 3.
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Appeal2015-004604
Application 13/628,508
Claim 10 under 35 U.S.C. § 103(a) as obvious over Thomas and
Burke (US 3,596,134, issued July 27, 1971).
Claim 13 under 35 U.S.C. § 103(a) as obvious over Thomas and
Grossman (US 2009/0261010 Al, published October 22, 2009).
DISCUSSION
Having carefully reviewed the Examiner's rejections in light of
arguments advanced by Appellant in the Appeal Brief and Reply Brief, 4 we
are not persuaded that the Examiner errs reversibly in finding that claims 1-
7, 11, and 12 were anticipated and concluding that claims 8, 9, 10, and 13
are unpatentable for obviousness. We add the following for emphasis.
Rejection of Claims 1-7, 11, and 12 as Anticipated by Thomas
The Examiner finds in essence that Thomas discloses a flexible sheet
comprised of copper foil configured to wrap conformably about at least one
surface to be decorated (predetermined touch surface), and a pressure
sensitive adhesive (securement mechanism), used to secure the flexible sheet
to the surface to be decorated (predetermined touch surface). Final Act. 4.
The Examiner finds that the copper foil disclosed in Thomas, when secured
to the surface to be decorated (predetermined touch surface), substitutes for
a portion of the surface to be decorated (predetermined touch surface), and
constitutes an antimicrobial touch surface. Final Act. 4-5. The Examiner
relies on Gibbins as providing evidence that all copper is antimicrobial.
Final Act. 5.
Appellant argues that "Thomas without exception teaches coating his
metallic surface with a decorative coating of one sort or another," which
4 Reply Brief filed March 12, 2015 ("Reply Br.").
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Appeal2015-004604
Application 13/628,508
covers the metallic surface with a decorative finish, thus masking it beneath
the decorative finish and preventing it from being used as an antimicrobial
touch surface. App. Br. 6-8. In response to this argument, the Examiner
determines that because Thomas' decorative coating is applied to the copper
foil metallic sheet in a pattern, the coating to provide decoration is
discontinuous and covers only a portion of the exposed copper foil surface,
and that the uncoated portion of the copper foil constitutes an antimicrobial
touch surface. Ans. 5.
Under 35 U.S.C. § 102, to establish anticipation, a single prior art
reference must describe, either expressly or under the principles of
inherency, each and every element of a claimed invention. See, e.g., In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The prior art reference must
describe the claimed invention with sufficient specificity to allow one skilled
in the art to readily envisage the claimed invention from the prior art
reference. In re Schaumann, 572 F.2d 312, 315 (CCPA 1978).
Turning to Thomas, we find it discloses a self-adhering flexible
metallic decorative article comprising a metallic sheet, which is preferably a
foil of copper, bonded to a first surface of a substrate with an adhesive, and a
pressure sensitive adhesive on the second surface of the substrate, which
attaches the article to an area to be decorated. Thomas col. 1, 11. 12-19,
11. 61-62; col. 2, 11. 42-50. It is undisputed that Thomas discloses that the
surface of the copper foil that is not adhered to the substrate-the exposed
surface-can be optionally coated with a clear or pigmented coating "so as
to make it accept decorative finishes." Thomas col. 2, 11. 23-26; App. Br. 6-
8. Thomas further discloses that the exposed surface of the copper foil is
decorated in any desired pattern using techniques such as rotogravure;
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Application 13/628,508
flexographic, offset, or screen printing; and flocking. Thomas col. 2, 11. 29-
32. Rotogravure and flexography are printing processes, and flocking
involves depositing small fiber particles onto a surface, which is essentially
a process of printing with fibers. 5
Although Thomas does not specify the nature of the decorative pattern
made on the copper foil, the decoration could be printed directly on the
copper foil, or, if the optional coating is applied, printed on the coating.
Also, while not explicitly specified in Thomas, the pattern could be formed
by either printing or decorating the entirety of the foil or coating with
sections having different pigments or colors (as Appellant asserts (Reply Br.
4)), or a pattern could be formed by printing or decorating only particular
portions of the foil (as the Examiner asserts (Ans. 5)). Given the limited
alternatives for forming a decorative pattern in accordance with Thomas'
disclosures, one of ordinary skill in the art would have readily envisaged all
such alternatives, including a copper foil on which a decorative pattern is
directly applied only to particular portions of the foil and there are portions
of the foil not covered by the printing or decorating and these exposed
portions would be capable of serving as an antimicrobial touch surface, as
recited in claim 1. Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246
F.3d 1368, 1380 (Fed. Cir. 2001) ("[T]he disclosure of a small genus may
anticipate the species of that genus even if the species are not themselves
recited."); See also In re Petering, 301F.2d676, 682 (CCPA 1962); In re
Schaumann, 572 F.2d at 315.
5 See, e.g., www.dictionary.com/browse/rotogravure?s=t,
www.dictionary.com/browse/flexography?s=t,
www.dictionary.com/browse/flocking?s=t (visited October 8, 2016).
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Application 13/628,508
Ivforeover, Appellant fails to establish that the Examiner erred in
finding that Thomas discloses that the optional coating and decorative
pattern are applied to the copper foil after it is laminated or adhered to the
substrate, and that the intermediate structure that exists before the laminate
is optionally coated and decorated corresponds to the claimed apparatus.
Ans. 4-5. Although Appellant argues that this intermediate structure is a
mere transitory state during the manufacturing process, and is at best an
accidental and unintended example of an antimicrobial touch surface (Reply
Br. 3--4), formation of this intermediate would have been intended as a
necessary step in producing the decorative article, not merely accidental.
The fact that the initially prepared copper foil laminate subsequently
undergoes further modification (coating and decoration) does not negate
anticipation. An "intermediate structure" that was both "intended and
appreciated" in the prior art may nonetheless anticipate. In re Mullin, 481
F.2d 1333, 1335-36 (CCPA 1973) (citing In re Herbert, 461F.2d1390
(CCPA 1972) ("It matters not one whit that it was intended to be and
appreciated as being an intermediate structure rather than an end use item.");
In re Johnson, 162 F.2d 924, 928 (CCPA 1947) ("In our opinion the fact that
Braunbeck intends his flaky product [i.e., an intermediate product,] to be
reduced to flour and applicants intend the same flaky product not to be
reduced to flour does not entitle applicants to a patent on the flaky product.")
Accordingly, we find, as did the Examiner, that Thomas anticipates
claim 1 within the meaning of 35 U.S.C. § 102(b ).
Rejections of claims 8, 9, 10, and 13 as Obvious
Appellant relies on his or her contentions that the Examiner erred in
rejecting the base claim, independent claim 1, from which claims 8, 9, 10,
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Application 13/628,508
and 13 depend. App. Br. 8. Because we are unpersuaded of reversible error
in the Examiner's rejection of claim 1 as anticipated by Thomas, Appellant's
position as to these grounds of rejection is without merit. Accordingly, we
sustain the rejections of claims 8, 9, 10, and 13 under 35 U.S.C. § 103(a).
DECISION
In view of the foregoing, the Examiner's rejection of claims 1-7, 11,
and 12 under 35 U.S.C. § 102(b) is AFFIRMED, and the Examiner's
rejections of claims 8, 9, 10, and 13 under 35 U.S.C. § 103(a) are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l).
AFFIRMED
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