Ex Parte Mendoza

Patent Trial and Appeal BoardAug 15, 2017

14657751 (P.T.A.B. Aug. 15, 2017)

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. 14/657,751 03/13/2015 Jun Mendoza SAK1507 5658 7590 Kaufhold Dix Patent Law P. O. BOX 89626 SIOUX FALLS, SD 57109 EXAMINER DAVIS, CASSANDRA HOPE ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 08/17/2017 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): j ason @kaufholdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN MENDOZA1 Appeal 2017-000537 Application 14/657,751 Technology Center 3600 Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—11, which constitute all of the claims pending the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies himself as the real party in interest. App. Br. 2. Appeal 2017-000537 Application 14/657,751 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention is generally directed to a new vehicle registration device for placing a registration panel on a motorized vehicle. Spec. p. 1,11. 22—23.2 Claim 1 is representative of the subject matter on appeal and reproduced below (with the disputed limitation emphasized)'. 1. A vehicle registration and identification system, said system comprising: a vehicle having a bumper, said bumper having an outer surface; a panel having a front side, a back side and a perimeter edge, said panel being elongated from a first side edge to a second side edge, said panel comprising a single layer of material; said panel being comprised of a plastic material, said plastic material being flexible and being configured to conform to contours of said outer surface of said bumper; an adhesive being positioned on said back side of said panel, said adhesive adhering said back side of said panel to said outer surface of said bumper such that said panel conforms to a non-planar surface of said bumper, said panel being shearable to inhibit removal of said panel from said bumper such that said panel remains intact; and a plurality of identification indicia being positioned on said front side of said panel to identify an owner of said vehicle, said panel and said indicia being laminated. 2 Our Decision refers to the Final Action mailed Oct. 23, 2015 (“Final Act.”); Appellant’s Appeal Brief filed Mar. 24, 2016 (“Br.”); the Examiner’s Answer mailed Oct. 5, 2016 (“Ans.”); and, the original Specification filed Mar. 13,2015 (“Spec.”). 2 Appeal 2017-000537 Application 14/657,751 Br. 7 (Claims App’x). Rejections on Appeal3 Claims 1, 4—6, and 8 stand rejected under 35 U.S.C. § 102(b)4 as being anticipated by Gall (US 6,324,778 Bl; issued Dec. 4, 2001). Claims 2, 3, 7, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gall and Molson (US 5,819,449 Bl; issued Oct. 13, 1998) (“Molson”). Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gall and Peck et al. (2008/0092418 Al; published Apr. 24, 2008) (“Peck”). Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gall, Molson, and Peck. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief and are not persuaded the Examiner erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 3—6) and in the Examiner’s Answer (Ans. 6—7), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Appeal Brief. 3 The Examiner’s rejection of claims 5 and 7 under 35 U.S.C. § 112, second paragraph, was withdrawn. Ans. 6. 4 Although the Examiner referred to 35 U.S.C. § 102(a)(1) in the Final Office Action (Final Act. 3), we believe the Examiner intended the rejection for anticipation to be under 35 U.S.C. § 102(b), as referred to by Appellant (see Br. 4). 3 Appeal 2017-000537 Application 14/657,751 Rejection of Claims 1, 4—6, and 8 under § 102(b) Appellant argues that Gall, at column 4, lines 4—7, “has nothing to do with a laminate but is actual indicia itself that is on the sticker and which is placed on the panel 14 of Gall.” Br. 5. Appellant also argues there is no teaching within Gall “of placing lamination over the indicia.” Id. We are not persuaded by Appellant’s argument. The Examiner finds, and we agree, Gall discloses that personalized information “could be applied by the purchaser in the form of a printed elongated sticker.” Ans. 7 (see Gall 4:4—7). Citing Dictionary.com,5 the Examiner determines “laminate means ‘to construct from layers of material bonded together.’” Id. The Examiner concludes, and we agree, claim 1 does not recite “placing lamination over the indicia,” as Appellant argues, but “merely recites ‘said panel and said indicia being laminated.’” Id. Thus, Appellant’s argument that Gall does not teach “placing lamination over the indicia” is unpersuasive because it is not commensurate with the scope of claim 1. See In re Self 671 F.2d 1344, 1348 (CCPA 1982) (“[AJppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). The Examiner also finds that Gall discloses “the indicia is laminated to the panel” because the information or indicia adheres or is bonded to the panel by the sticker and the claim does not require “an additional overlay material.” Appellant has not argued the Examiner’s interpretation of the term “laminate” or addressed the Examiner’s findings based thereon. Thus, based on the Examiner’s interpretation of the term “laminated” and a preponderance of the evidence, we are not persuaded the Examiner erred in 5 httg ://dictionary.reference. com/browse/ [1] aminate 4 Appeal 2017-000537 Application 14/657,751 finding that Gall discloses the limitation “said panel and said indicia being laminated” and, therefore, that Gall anticipates claim 1 under 35 U.S.C. § 102(b). Accordingly, we sustain the Examiner’s rejection of independent claim 1, as well as dependent clams 4—6 and 8, which are not separately argued. See Br. 5. Rejection of Claims 2, 3, 7, and 9—116 under § 103(a) For the reasons argued regarding claim 1, Appellant argues the prior art cannot make obvious claim 7, which contains the same disputed limitation as claim 1. Id. Consequently, according to Appellants, claims 1 and 7, and all claims depending therefrom, are believed to be in condition for allowance. Id. We are not persuaded by these arguments because, for the reasons stated supra, we are not persuaded the Examiner erred in rejecting claim 1. Thus, we sustain the Examiner’s rejection of independent claim 7, and claims 2, 3, 8, and 9, which depend from claim 1, and claims 10 and 11, which depend from claim 7. 6 These claims are rejected for obviousness under 35 U.S.C. § 103(a), as set out in the second, third, and fourth stated grounds of rejection above. 5 Appeal 2017-000537 Application 14/657,751 DECISION We affirm the Examiner’s decision rejecting claims 1, 4—6, and 8 under 35 U.S.C. § 102(b). We affirm the Examiner’s decision rejecting claims 2, 3, 7, and 9—11 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6