Ex Parte Cox et al

Patent Trial and Appeal Board

Mar 25, 2013

10775746 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIE M. COX, MARTY J. COX, and MICHAEL J. BANKS
____________

Appeal 2010-005000
Application 10/775,746
Technology Center 3600
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/775,746

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3, 4, 6, 16-18, and 20-25 under 35 U.S.C.
§ 103(a) as unpatentable over Pazar (US 2003/0167706 A1, iss. Sept. 11,
2003) and Takemoto (US 4,219,596, iss. Aug. 26, 1980). Claims 2, 5, and
7-15 are cancelled. Claim 19 is withdrawn. The Appellants present
additional evidence in the Affidavit under 37 C.F.R. § 1.132, filed July 7,
2008 (hereinafter “Cox Dec.”).1 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Claimed Subject Matter
Claims 1, 16, and 17 are the independent claims on appeal. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. A decorative carapace for a burial vault
comprising:
a carapace having a top surface; and
a substrate, having a decorative graphic, said
substrate being attached to said top surface of said
carapace; and
adhesive interposed between said carapace
and said substrate, and adhering said substrate to
said carapace;
wherein said substrate is formed from a
material selected from the group of polyester,
polypropylene, polyethylene, vinyl, acetate,
acrylic, polystyrene, or polycarbonate.

1 “Cox Declaration” refers to the signed copy of the Cox Declaration
consisting of four pages with seven supporting exhibits. App. Br.,
Appendix B.
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OPINION
The Examiner finds, for the rejection of each independent claim, that
Pazar discloses “a carapace 2910 (Fig. 28) having a top surface; and a metal
substrate (nameplate) 2310 having a decorative graphic (name and date) and
being attached/adhered to the top surface via screws.” Ans. 3. The
Examiner also finds Pazar does not disclose a transparent substrate or a
transparent adhesive, but that Takemoto discloses “a transparent substrate 16
having a decorative graphic 18 printed thereon wherein the substrate is
attached to a structure via a transparent adhesive (col. 3, lines 59-60).” Id.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to substitute Pazar’s metal decorated substrate attached by
screws with Takemoto’s teaching of a transparent decorated substrate
attached by a transparent adhesive. Id. The Examiner adds that the
substitution would also result in the decorative graphic appearing as part of
the structure of the carapace. Ans. 3-4; Takemoto, col. 3, ll. 57-62.
The Appellants assert that “the problem addressed by the invention is
how to increase the commercial desirability of burial vaults,” which is
different than the substitution of a decorative graphic for Pazar’s metal plate.
App. Br. 8-9. The Examiner responds, and we agree, that the replacement of
the material of Pazar’s name plate, from metal to plastic, is a simple
substitution, and merely because the Appellants recognize another advantage
which would flow naturally from following the suggestion of the prior art
cannot be the basis for patentability when the differences would otherwise
be obvious. See Ans. 7 (citing Ex parte Obiaya, 227 USPQ 58, 60 (BPAI
1985)).
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The Appellants also assert that “the principle of operation in Pazar is a
very durable and very easily readable element to permit ease of
identification after being buried a century or more.” App. Br. 8; see Pazar,
para. [0009]). The Appellants contend, based on this assertion, that
changing the material of Pazar’s metal substrate to be plastic would change
Pazar’s principle of operation because plastic is less durable and not as
readable as an opaque metal plate. Id. Further, the Appellants contend that
Pazar’s metallic name plate would not be considered decorative.
At the outset, we agree with the Examiner that Pazar’s “nameplate
includes indicia and when secured to the carapace, the nameplate with
indicia ‘decorates’ the carapace to at least some degree.” Ans. 7. Also, the
Appellants’ contention concerning the readability of plastic as compared to
Pazar’s metal nameplate (substrate) is not supported by evidence.
Moreover, the readability of indicia, e.g., decorations, on a substrate is
directed to the characteristics of the indicia. Characteristics of indicia
include the size, font, color, etc. The material of the substrate that bears the
indicia is of little import as compared to these characteristics.
In response to the Appellants’ contention concerning the durability of
plastic as compared to Pazar’s metal substrate, the Examiner explains, and
the “Appellants do not disagree,” that the Appellants present no evidence to
support this contention. Ans. 6-7, Reply Br. 19. Further, the Examiner
determines that Pazar’s substrate, modified to be plastic, would provide
better resistance to corrosion as compared to metal, which is a significant
factor for a buried article. Ans. 6-7. The Appellants contend that the
Examiner similarly lacks evidentiary support for this determination
particularly because “the mere identification of corrosion as a destructive
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factor for metal does not establish that a breakdown of plastics according to
some other factor does not occur more rapidly.” Reply Br. 19. However,
the Appellants do not offer a scenario where a plastic substrate would
breakdown more rapidly, particularly in the context of its normal use if
substituted for Pazar’s metal substrate.
The Appellants also assert that since plastic was known at the time of
filing Pazar’s patent application, March 8, 2002, if Pazar was concerned
about longevity of its substrate because plastic is more durable than metal,
then Pazar would have suggested the use of plastic as a material for its name
plate. See Reply Br. 19-20. This argument is not persuasive. Merely
because Pazar does not suggest plastic as a material for its substrate does not
mean that the substitution of plastic for metal for Pazar’s substrate is non-
obvious. Further, the Appellants contend, if plastic is less durable than
metal, then it would be undesirable to use plastic as a replacement because
the modified substrate would be unsatisfactory for its intended purpose.
Reply Br. 20. However, it is not clear in what regard and to what degree the
Appellants are asserting plastic is less durable than metal, particularly in the
context of the normal use of Pazar’s name plate. Thus, the Appellants’
assertion concerning durability is not persuasive.
Additionally, the Appellants reiterate their arguments concerning the
durability for independent claims 1, 16, and 17. App. Br. 10-11. For similar
reasons as discussed above the Appellants’ contentions concerning these
claims are also not persuasive. See also Ans. 8.
Concerning the rejection of claim 17, the Examiner also concludes
that Pazar, as modified, does not disclose that “the substrate substantially
covers the first surface of the container,” as recited in the claim, but
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“modify[ing] the substrate such that it was sized to substantially cover the
first surface (upper surface of the carapace) of the container as a change in
the size of a prior art device is a design consideration within the skill of the
art.” Ans. 5 (citing In re Rose, 220 F.2d 459 (CCPA 1955)). The
Appellants contend that “it would make no sense to provide a nameplate that
covers substantially the first surface of the container.” App. Br. 11.
However, as the Examiner responds, “[t]he increase in size would inherently
translate to the option for an increase in indicia.” Ans. 8. The Appellants
also argue that “even if such a large nameplate were desirable, then its
construction out of a durable metal would make it cost prohibitive, at least in
a commercially viable marketplace.” App. Br. 11. The Appellants’
contentions are not persuasive at least because, as modified, Pazar’s name
plate would be made of plastic and not metal.
The Appellants’ remaining arguments concerning the Examiner’s
prima facie case have been considered but do not persuade us of error. In
view of the foregoing, the Examiner’s findings and reasoning establish a
relatively strong prima facie case that the claimed subject matter would have
been obvious. Inasmuch as we have concluded that the claimed subject
matter would have been prima facie obvious, and since the Appellant has
submitted evidence in rebuttal of obviousness, we now turn to consider this
evidence. When such evidence is presented it is our duty to consider the
evidence anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990). We also are mindful that objective evidence of nonobviousness in
any given case may be entitled to more or less weight depending on its
nature and its relationship with the merits of the invention. Stratoflex Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
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Appeal 2010-005000
Application 10/775,746

8
images that are personal to the deceased rather than the claimed substrate.
For example, the Newsweek article offered as Exhibit 2 states that
“mourners gathered around Kieoon's burial vault to admire images adorning
the lid: the statue of Saddam Hussein toppling, tanks storming the desert, an
Iraqi girl waving an American flag” (emphasis added), and the Omaha
World-Herald article offered as Exhibit 5 states that after graveside services
the mother of the deceased “stepped forward to look more closely at the
vivid scenes” (emphasis added). As such, the personal decorative images,
e.g., an Iraqi girl waving an American flag, appear to be attracting the
mourners’ attention rather than the claimed substrate. Accordingly, the
personal decorative images lack a nexus to the claimed invention. “For
objective evidence to be accorded substantial weight, its proponent must
establish a nexus between the evidence and the merits of the claimed
invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Where
the offered secondary consideration actually results from something other
than what is both claimed and novel in the claim, there is no nexus to the
merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
2011)(citations omitted); see also Ans. 6.
The Appellants also contend that the declaration evidence clearly
indicates copying. App. Br. 9, Reply Br. 15. The Cox Declaration states
that “[a]lthough I do not have direct evidence of copying of our invention by
competitors (which would be exceptionally difficult for me to obtain under
the present circumstances), I find the circumstantial evidence of copying to
be compelling.” Cox. Dec. p. 3. The Cox Declaration states that copiers
include Doric Vaults, as evidenced by Exhibits 1 and 3, and Trigard, as
evidenced by Exhibit 4. However, the Appellants have not pointed to any
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Application 10/775,746

9
evidence showing that the other manufacturers copied Appellants’ invention
after expending great effort to develop their own solution. See Pentec, Inc.
v. Graphic Cntrls. Corp., 776 F.2d 309, 317 (Fed. Cir. 1985). Cox. Dec. p.
3. As such, the Appellants’ rebuttal is not persuasive of copying.
In sum, the Examiner’s strong evidence of obviousness outweighs the
Appellants’ evidence to the contrary. Weighing the evidence anew, we
conclude that the claimed subject matter would have been obvious. Thus,
the rejection of claims 1, 16, and 17, and their dependent claims 3, 4, 6, 18,
and 20-25, as unpatentable over Pazar and Takemoto is sustained.

DECISION
We AFFIRM the rejection of claims 1, 3, 4, 6, 16-18, and 20-25.
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).

AFFIRMED

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