Ex Parte Epps

Patent Trial and Appeal Board

Nov 27, 2012

11517647 (P.T.A.B. Nov. 27, 2012)

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.
11/517,647 09/08/2006 Ray Allen Epps PEPPRSS 2699
7590 11/28/2012
Thompson E. Fehr
Goldenwest Corporate Center
Suite 300
5025 Adams Avenue
Ogden, UT 84403
EXAMINER
BODAWALA, DIMPLE N
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
11/28/2012 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 RAY ALLEN EPPS
________________

Appeal 2011-010940
Application 11/517,647
Technology Center 1700
________________

Before CHARLES F. WARREN, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/517,647

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-21, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a structural surface design device. Claims 1
and 8 are illustrative:
1. A structural surface design device for creating a design with
finishing surface material on a surface, which comprises:

a base having a top and a bottom;

at least one raised projection extending from the bottom of said
base and creating a pattern for a user to duplicate or repeat with
finishing surface material on a structural surface, said at least one
projection being composed of a structural material having an affinity
for finishing surface material which is less than the affinity for
finishing surface material which the surface on which the design is to
be created has; and

a handle extending upward from said base.
8. A structural surface design device for creating a design with
finishing surface material on a surface, which comprises:

a container for finishing surface material, said container having
at least one wall and an interior with a cross-sectional shape and
dimensions;

a base having a top, a bottom, a cross-sectional shape, and an
edge with the cross- section shape of said base being the same as the
cross-sectional shape of said container and with the dimensions of
said base being selected such that, when said base is inside said
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container, the edge of said base is sufficiently close to the every wall
of said container that any finishing surface material in said container
will not cure;

at least one raised projection extending from the bottom of said
base and creating a pattern for a user to duplicate or repeat with
finishing surface material on a structural surface, said at least one
projection being composed of a structural material having an affinity
for finishing surface material which is less than the affinity for
finishing surface material which the surface on which the design is to
be created has; and

a handle extending upward from said base.
The References
Edwards US 4,836,381 Jun. 6, 1989
Glenn US 5,811,705 Sep. 22, 1998
Mueller US 6,231,904 B1 May 15, 2001
Levijoki US 6,756,006 B1 Jun. 29, 2004

Block Impressions – Hand Block Printing, 1 page, at
http://www.indiaprofile.com/art-crafts/handblockprinting.htm (undated).1

Specification – MultiWoodPrime 4-5. at
http://www.smithandcompany.org/specification (© 1972-2009).

The Rejections
The claims stand rejected as follows: claims 1, 2, 4, 5, 7-9, 11, 12, 14-
16, 18, 19 and 21 under 35 U.S.C. § 102(b) over Levijoki or Mueller,
claims 3, 10 and 17 under 35 U.S.C. § 103 over Levijoki or Mueller, in view
of Glenn, and claims 3, 6, 10, 13, 17 and 20 under 35 U.S.C. § 103 over

1 There is no dispute as to whether Block Impressions – Hand Block Printing
and Specification – MultiWoodPrime are prior art.
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Levijoki or Mueller, in view of Edwards, Block Impressions – Hand Block
Printing and Specification – MultiWoodPrime.
OPINION
We affirm the rejections of claims 1, 2, 4, 5 and 7 under
35 U.S.C. § 102(b) over Levijoki or Mueller, claim 3 under 35 U.S.C. § 103
over Mueller in view of Glenn and claims 3 and 6 under 35 U.S.C. § 103
over Mueller in view of Edwards, Block Impressions – Hand Block Printing
and Specification – MultiWoodPrime, and reverse the rejections of claims 8,
9, 11, 12, 14-16, 18, 19 and 21under 35 U.S.C. § 102(b) over Levijoki or
Mueller, claims 3, 10 and 17 under 35 U.S.C. § 103 over Levijoki in view of
Glenn, claims 3, 6, 10, 13, 17 and 20 under 35 U.S.C. § 103 over Levijoki in
view of Edwards, Block Impressions – Hand Block Printing and
Specification – MultiWoodPrime, claims 10 and 17 under 35 U.S.C. § 103
over Mueller in view of Glenn, and claims10, 13, 17 and 20 under
35 U.S.C. § 103 over Mueller in view of Edwards, Block Impressions –
Hand Block Printing and Specification – MultiWoodPrime.
Rejections over Levijoki alone or in
combination with other references
Claims 1, 2, 4, 5 and 7
The Appellant argues claims 1, 2, 4, 5 and 7 as a group (Reply Br. 5).
We therefore limit our discussion to one claim in that group, i.e., claim 1.
The other claims in the group stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argues that Levijoki does not disclose that the
projections (flexible pattern element 92) have an affinity for the compound,
e.g., drywall-type compound (col. 3, ll. 24-26) (which corresponds to the
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Appellant’s finishing surface material) which is less than the affinity for the
compound of the surface to which the compound is to be applied (Br. 6-8).
The Appellant claims only a structural surface design device, not a
structural surface design device in combination with any particular substrate
surface material. Hence, Levijoki meets that Appellant’s argued claim
requirement if a substrate surface material exists which has a greater affinity
than Levijoki’s flexible pattern element (92) for Levijoki’s compound. It
appears that drywall-type compound-receptive surfaces exist, e.g., tissue
paper-like or soft cloth-like surfaces, which have a greater affinity for
drywall-type compound than do suitable materials (e.g., rubber or
rubber-like materials) for making a drywall-type compound applicator’s
flexible pattern element.
Hence, we are not persuaded of reversible error in the rejection of
claims 1, 2, 4, 5 and 7 under 35 U.S.C. § 102(b) over Levijoki.
Claims 3, 6, 10, 13, 17 and 20
The Appellant’s claims 3, 6, 10, 13, 17 and 20 require that at least one
projection is composed of painted wood.
The Examiner argues that it would have been obvious to one of
ordinary skill in the art to make Levijoki’s pattern element (92) out of
painted wood instead of a flexible material because painted wood is smooth
and, therefore, has an excellent release property (Ans. 10, 12).
Levijoki’s pattern element (92) must be flexible to perform its
intended function (col. 5, ll. 18-25, 47-53). The Examiner has not
established that painted wood would provide the required flexibility. See
DePuy Spine Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1326 (Fed.
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Cir. 2009) (“Although predictability is a touchstone of obviousness, the
‘predictable result’ discussed in KSR refers not only to the expectation that
prior art elements are capable of being physically combined, but also that the
combination would have worked for its intended purpose. KSR Int’l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007)”); Ex parte Rosenfeld, 130
USPQ 113, 115 (Bd. Pat. App. 1961) (“one skilled in the art would not
modify the device of Jacobs to make it unsuitable for its intended purpose”).
Accordingly, we do not sustain the rejections under 35 U.S.C. § 103
of claims 3, 10 and 17 over Levijoki in view of Glenn or claims 3, 6, 10, 13,
17 and 20 over Levijoki in view of Edwards, Block Impressions – Hand
Block Printing and Specification – MultiWoodPrime.
Claims 8, 9, 11, 12, 14-16, 18, 19 and 21
The Appellant’s claim 8 (and its dependent claims 9, 11, 12, 14-16,
18, 19 and 21) requires a structural surface design device base and a
container having the same cross-sectional shape, “the dimensions of said
base being selected such that, when said base is inside said container, the
edge of said base is sufficiently close to the every wall of said container that
any finishing surface material in said container will not cure”.
For a disclosure of that claim requirement the Examiner relies upon
Levijoki’s column 4, lines 47-51 (Ans. 4, 13).
That portion of Levijoki discloses that the applicator unit (40) and the
container unit (12) are sized to permit the applicator unit (40) to be moved
into and out of the container unit (12) in the direction of a longitudinal
axis (28). That portion does not disclose that the edge of the applicator
unit (40) is sufficiently close to every wall of the container that any
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compound in the container unit (12) will not cure. Also, Levijoki’s Figure 3
shows a gap between the edge of the applicator unit (40) and the container
unit (12).
Hence, we reverse the rejection of claims 8, 9, 11, 12, 14-16, 18, 19
and 21under 35 U.S.C. § 102(b) over Levijoki.
Rejections over Mueller alone or in
combination with other references
Claims 1, 2, 4, 5 and 7
The Appellant argues claims 1, 2, 4, 5 and 7 as a group (Br. 9-11;
Reply Br. 7-8). We therefore limit our discussion to one claim in that group,
i.e., claim 1. The other claims in the group stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant argues that Mueller’s indicia projections, which
preferably are about 0.03 inches high (col. 3, ll. 37-47), are insufficiently tall
to be inked by touching the projections to a finishing surface material as
described in the Appellant’s Specification (¶ 0021) (Br. 10-11; Reply Br. 7-
8).
The Appellant’s claims to a design device are not limited to that
method of use. Mueller’s inked printing indicia projections are sufficiently
tall to transfer to a surface an ink design corresponding to the indicia (col. 4,
ll. 5-8; Fig. 4). “‘[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The statement in the
Appellant’s Specification that the Appellant’s claim term “finishing surface
material” includes joint compound, plaster and stucco (Spec. ¶ 0002)
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indicates that the term is not limited to those materials but, rather, includes
those materials plus other materials which are suitable for forming a
structural surface design, e.g., ink.
The Appellant argues that “[o]ne of ordinary skill in the art would
understand that the width of a projection for application of an ink design that
could fit within the cross section of a container for frozen confection would
be insufficiently wide to hold an adequate quantity of finishing surface
material to establish upon the surface on which the design is to be created a
design that, when the finishing surface material has cured, would be
adequately strong and not excessively fragile” (Br. 10).
Mueller’s disclosure that “[a]fter ink is applied to the printing
indicia 22, the plunger member/ink stamp is urged against an associated
piece of paper or the like, thereby creating an inked impression 22’
corresponding to the printing indicia 22” (col. 4, ll. 5-8) indicates that the
inked plunger member (14) is suitable for being urged against other ink-
receptive surfaces such as a structural surface, e.g., a wall, thereby forming
on that surface a design corresponding to the printing indicia (22). The
Appellant has provided no evidence that the ink design would not be
adequately strong or would be excessively fragile. The Appellant has
provided mere attorney argument to that effect, and such argument of
counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974).
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We therefore are not convinced of reversible error in the rejection of
claims 1, 2, 4, 5 and 7 under 35 U.S.C. § 102(b) over Mueller.
Claims 3 and 6
Claims 3 and 6 require that at least one projection is composed of
painted wood.
The Appellant argues that in view of the low viscosity and removable
nature of Glenn’s coloring agent compared to finishing surface material, one
of ordinary skill in the art would not consider Glenn’s wood musical
notation indicia (abstract; col. 4, ll. 19-22) for use with finishing surface
material (Reply Br. 9).2
As pointed out above regarding the rejection of claim 1 under
35 U.S.C. § 102(b) over Mueller, the Appellant’s claim term “finishing
surface material” is not limited to high viscosity materials but, rather,
encompasses inks. Mueller states that the plunger member (14) can be made
of plastic or a wide variety of other materials (col. 3, ll. 52-60). Glenn’s
disclosure that wood is a suitable printing indicia material (abstract; col. 4,
ll. 19-22) would have fairly suggested, to one of ordinary skill in the art,
wood as one of Mueller’s wide variety of other printing indicia materials.3
Hence, we are not persuaded of reversible error in the rejection of
claim 3 under 35 U.S.C. § 103 over Mueller in view of Glenn or the
rejection of claims 3 and 6 under 35 U.S.C. § 103 over Mueller in view of

2 The Appellant points out what Edwards, Block Impressions – Hand Block
Printing and Specification – MultiWoodPrime disclose, but the Appellant
does not provide a substantive argument as to the rejection over Mueller in
view of those references (Reply Br. 11).
3 The Appellant does not argue that painted wood is patentably distinguished
over Glenn’s disclosure of wood.
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Edwards, Block Impressions – Hand Block Printing and Specification –
MultiWoodPrime.
Claims 8-21
The Examiner argues that the Appellant’s claim 8 requirement of a
structural surface design device base and a container having the same cross-
sectional shape, “the dimensions of said base being selected such that, when
said base is inside said container, the edge of said base is sufficiently close
to the every wall of said container that any finishing surface material in said
container will not cure” is clearly shown in Mueller’s Figure 1 (Ans. 7) and
that in view of that figure, “the person with the ordinary skill art [sic] would
easily understand that any finishing surface material in the container will not
cure” (Ans. 14).
Mueller discloses that “[t]he plunger member 14 includes a piston-
like, circular, generally planar pushing portion 16 having a surface which
engages the frozen confection as the plunger member is urged upwardly
within tube 12” (col. 3, ll. 11-14) , “[w]ith the plunger member positioned
generally at one end of the tube, as illustrated in FIG. 1, the frozen
confection is provided within the hollow interior of the tube, generally above
the plunger member (referring to the orientation of FIG. 1) so that sliding
movement of the plunger member acts to urge the frozen confection from
the opposite end of the cylindrical tube 12” (col. 2, ll. 54-61), and “[t]he
frozen confection can thereby be easily consumed without the need for a
spoon or the like, with periodic upward movement of plunger member 14
exposing the frozen confection from the end of the tube 12 for consumption”
(col. 2, ll. 61-65).
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The Examiner is relying upon the edge of Mueller’s plunger
member (14) inherently being sufficiently close to the wall of tube (12) that
any finishing surface material in the tube (12) will not cure. An inherent
characteristic must be inevitable, and not merely a possibility or probability.
See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The Examiner has not
provided evidence that Mueller’s plunger member (14) and tube (12) wall
inevitably are sufficiently close that any finishing material in the tube (12)
will not cure.
Accordingly, we reverse the rejections of claims 8, 9, 11, 12, 14-16,
18, 19 and 21 under 35 U.S.C. § 102(b) over Mueller, claims 10 and 17
under 35 U.S.C. § 103 over Mueller in view of Glenn, and claims 10, 13, 17
and 20 under 35 U.S.C. § 103 over Mueller in view of Edwards, Block
Impressions – Hand Block Printing and Specification – MultiWoodPrime.
DECISION/ORDER
The rejections of claims 1, 2, 4, 5 and 7 under 35 U.S.C. § 102(b) over
Levijoki or Mueller, claim 3 under 35 U.S.C. § 103 over Mueller in view of
Glenn and claims 3 and 6 under 35 U.S.C. § 103 over Mueller in view of
Edwards, Block Impressions – Hand Block Printing and Specification –
MultiWoodPrime are affirmed. The rejections of claims 8, 9, 11, 12, 14-16,
18, 19 and 21under 35 U.S.C. § 102(b) over Levijoki or Mueller, claims 3,
10 and 17 under 35 U.S.C. § 103 over Levijoki in view of Glenn, claims 3,
6, 10, 13, 17 and 20 under 35 U.S.C. § 103 over Levijoki in view of
Edwards, Block Impressions – Hand Block Printing and Specification –
MultiWoodPrime, claims 10 and 17 under 35 U.S.C. § 103 over Mueller in
view of Glenn, and claims10, 13, 17 and 20 under 35 U.S.C. § 103 over
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Mueller in view of Edwards, Block Impressions – Hand Block Printing and
Specification – MultiWoodPrime are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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