Ex Parte Dumond

Patent Trial and Appeal Board

Nov 7, 2012

11741266 (P.T.A.B. Nov. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/741,266 04/27/2007 Robert A. Dumond 6674-0115 2654
50811 7590 11/07/2012
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
ORTIZ, ANGELA Y
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
11/07/2012 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 ROBERT A. DUMOND
____________

Appeal 2011-011426
Application 11/741,266
Technology Center 1700
____________

Before RICHARD E. SCHAFER, ADRIENE LEPIANE HANLON, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-011426
Application 11/741,266

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DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-18 under 35 U.S.C. §103(a) as unpatentable over Nelson
(US 6,395,408 B1, issued May 28, 2002) in view of Ludlum (US 4,652,464, issued
Mar. 24, 1987).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant does not present arguments in support of separate patentability of
any particular claim or claim grouping. (See Br. 4-7.) Accordingly, we decide the
appeal as to all claims on the basis of independent claim 1, which is reproduced
below from the Claims Appendix to the Appeal Brief:
1. A decorative laminate, comprising in a superimposed
relationship:
a core layer impregnated with a resin;
a print layer with at least one pattern that is visible under
normal light;
a first overlay layer impregnated with a resin that includes a
first photoluminescent material that is visible under ultraviolet light;
a luminescent layer with at least one pattern that includes at
least one second photoluminescent material that is visible under
ultraviolet light; and
a second overlay layer.
The claimed decorative laminate is said to be usable, for example, in
bowling lane applications. (See Spec.3 [0018].)

1 Final Office Action mailed Aug. 26, 2010.
2 Appeal Brief filed Jan. 14, 2011(“Br.”)
3 Specification filed Apr. 27, 2007.
Appeal 2011-011426
Application 11/741,266

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Appellant raises two issues for our consideration:
1. Did the Examiner fail to establish a prima facie case of obviousness
because Ludlum is not analogous to the claimed invention and, therefore, does not
qualify as prior art for an obviousness analysis?
2. Did the Examiner fail to establish a prima facie case of obviousness
because Nelson, as modified by Ludlum, would not have resulted in a laminate
comprising print, first overlay, and luminescent layers as claimed?
We answer both of these questions in the negative for the reasons expressed
in the Answer, which we summarize below.
The Examiner finds Nelson discloses a decorative laminate as claimed with
the exception of a luminescent layer. (Ans. 4 4-5, 8.5) Instead of a luminescent
layer, Nelson applies a layer with an opaque pattern between the first and second
overlay layers. (Id.) The Examiner relies on Ludlum for a disclosure that “a
combination of multiple opaque and luminescent materials can be successfully
printed onto one another” to create “aesthetically pleasing images.” (Id. at 5.) The
Examiner finds “[t]he resulting effects of the combination can be used to create
images that gradually change as lighting conditions change.” (Id.) The Examiner
concludes “it would have been obvious to have used the mixed opaque/luminescent

4 Examiner’s Answer mailed Mar. 29, 2011, as corrected in the Supplemental
Answer mailed Apr. 8, 2011.
5 See also, Nelson Abstract (“In one embodiment, one or more of the overlay
sheets and/or decor sheets are impregnated prior to lamination with a mixture of a
transparent resin and a photoluminescent material. As a result, the entire upper
surface of the laminate visibly luminesces in the presence of exciting radiation. In
another embodiment, an image or pattern is printed on one or more of the decor
sheets with a ink including an organic photoluminescent material to provide an
visibly luminescent image or pattern therein. It is envisioned that the invention
could be used to provide a unique and appealing appearance when used as the
surfacing for a wide variety of applications, including bowling lanes.”).
Appeal 2011-011426
Application 11/741,266

4
composite image . . . taught in Ludlum” in place of the opaque pattern in Nelson’s
layer “to impart the particular beneficial aesthetic properties as explained in
Ludlum” and thereby achieve a laminate which includes a luminescent layer as
claimed. (Id.)
Appellant contends Ludlum, directed to a method for producing fine art, is
non-analogous art, noting “the only similarity between Nelson and Ludlum is that
they both disclose decorative images with luminescent and non-luminescent
portions . . . , [while] there are several significant differences” in the reference
teachings. (Br. 5.)
In determining whether Ludlum is analogous art, the relevant question is not
whether Ludlum is analogous to Nelson, rather, it is whether Ludlum is within the
realm of prior art that one of ordinary skill in the field of the inventor should be
charged with knowing. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011) (noting a reference qualifies as prior art for an
obviousness analysis only when it is analogous to the claimed invention (citing In
re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992))). If a reference is in a different field
from that of the inventor’s endeavor, it is still considered analogous art if it deals
with a matter which logically would have commended itself to an inventor’s
attention in considering his problem. In re Clay, 966 F.2d at 659.
The Specification supports the Examiner’s finding (Ans. 7) that the
problems confronting the present inventor included providing a decorative
laminate with luminescent and non-luminescent portions. (See e.g. Spec. [0006]
(“What is needed is a decorative laminate for use in, for example, bowling lanes,
where a plurality of printed images or patterns, made from photoluminescent
materials of different colors, are visibly luminescent simultaneously.”).) As
Ludlum is directed to a method of printing decorative images with luminescent and
Appeal 2011-011426
Application 11/741,266

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non-luminescent portions (see Br. 5 (conceding this fact) supra pp. 3-4), we agree
with the Examiner that Ludlum deals with a matter that would have logically
commended itself to the present inventor’s attention in considering his problem.
Appellant’s arguments regarding the differences in the Ludlum and Nelson
disclosures are not persuasive in establishing that the present inventor would not
have considered Ludlum’s teachings, i.e., that Ludlum is non-analogous art.
Appellant also argues the Examiner’s proposed combination of Nelson and
Ludlum would not have resulted in a laminate comprising print, first overlay, and
luminescent layers as claimed. (Br. 6.) In support of this argument, Appellant
points out that neither Nelson nor Ludlum, individually, discloses a laminate
comprising the aforementioned three layers as claimed. (Id.) However, Appellant
has not explained why the Examiner’s proposed modification of Nelson’s opaque
pattern, i.e., to use a mixed opaque/luminescent composite image as taught in
Ludlum, would not have resulted in a decorative laminate as claimed. Absent such
argument showing error in the facts and reasons relied on by the Examiner, we are
not convinced of error in the Examiner’s conclusion of obviousness. (See Ans. 7
(“Appellant merely recites his claimed limitations and concludes that the
references do not read on them (without arguing against the examiner’s rejection
specifically)”); cf. id. at 9 (noting some of Appellant’s arguments in support of
patentability are based on limitations not found in the claims).)
In sum, for the reasons expressed in the Answer and above, we affirm the
Examiner’s decision to reject claims 1-18.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
bar