Ex Parte Obermann

Patent Trial and Appeal BoardMay 1, 2013

10492787 (P.T.A.B. May. 1, 2013)

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. 10/492,787 06/10/2004 Friedrich Obermann P/3453-15 3423 2352 7590 05/01/2013 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 05/01/2013 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 FRIEDRICH OBERMANN ____________ Appeal 2012-005377 Application 10/492,787 Technology Center 1700 ___________ Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and DEBORAH KATZ, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005377 Application 10/492,787 2 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, 5-16, 19-32 and 35. Claims 2 and 16 were canceled in the amendment filed January 23, 20121. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative of the subject matter on appeal: 1. A preformed decorative element for being injection- overmolded with a plastic material, the preformed decorative element comprising: a transparent or translucent plastic foil having an outer side and an inner side, the plastic foil being at least partially coated on both the outer side and the inner side with a non- surface-covering surface decoration; the decoration on the inner side being covered with a surface-covering color coating layer; and the decoration on the outer side being identical to the decoration on the inner side and slightly offset with respect to the decoration on the inner side so as to provide a three- dimensional visual effect for the decoration. Independent claims 15 and 35 are also drawn to a decorative plastic part having identical, slightly offset, decorations (claim 15) or patterns (claim 35) on opposite sides of a plastic foil so as to provide a three- dimensional visual effect (claim 15), or visual depth effect (Claim 35), for the decoration or pattern. Appellant appeals the following rejections made by the Examiner: 1 It appears that Appellant overlooked cancelling dependent claim 29 as well, as the recitation of “similar structures” therein is inconsistent with the meaning Appellant ascribes to “identical” decorations as recited in claim 1 from which it depends. Appeal 2012-005377 Application 10/492,787 3 1) Claims 1, 2, 5-16, 19-32 and 35 under 35 U.S.C. § 112, second paragraph as indefinite; 2) Claims 1, 2, 5-7, 14-16, 19-21, 28-32, and 35 under 35 U.S.C. § 103(a) as unpatentable over Salmon2 in view of Howland3; 3) Claims 8-13, and 22-27 under 35 U.S.C. § 103(a) as unpatentable over the combined prior art of Salmon, Howland, and Eiden4. The 112 Second Paragraph Rejection “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more.” Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted). The Examiner determined that the term “identical” in independent claims 1, 15, and 35 was indefinite (Ans. 5-6). However, we agree with Appellant that upon review of the claim language read in light of the Specification, a preponderance of the evidence supports Appellant’s position that the aforementioned term of claim 1, 15, and 35 is definite (App. Br. 4, 5; Reply Br. 1, 2), and means the decorations or patterns 4, 5 are “the same” and “identical in size and shape” (Reply Br. 2 US 6,170,881 B1 issued Jan. 9, 2001. 3 US 6,089,614 issued July 18, 2000. 4 US 6,790,396 B2 issued Sept. 14, 2004. Appeal 2012-005377 Application 10/492,787 4 2; emphasis in original). Indeed, as Appellant points out, the sole Figure depicts an identical decoration or pattern for each decoration 4 and 5 on the inner and outer side of foil 3 (id.). Furthermore, the Specification at page 3 describes that a particularly significant three-dimensional effect can be obtained if the outer side decoration “at least substantially corresponds” (emphasis added) with the inner side decoration. One of ordinary skill would immediately understand that this encompasses identical decorations, that is, exactly the same decorations, as shown in the sole Figure. Accordingly, we reverse the Examiner’s rejection of the claims under 35 U.S.C. § 112, second paragraph. The 103 Rejections A preponderance of the evidence supports Appellant’s position that the prior art applied by the Examiner does not “disclose[ ] or suggest[ ] forming identical patterns on opposite sides of a transparent sheet” or “slightly offsetting [these] identical patterns” to create the recited visual effect (App. Br. 8 (emphasis omitted)). The Examiner has not directed us to sufficient factual underpinnings to support her determination that one would have made the decorations, or patterns, of Salmon “identical” in claims 1, 15, and 35. The Examiner relies upon an unreasonably broad definition of “identical” in order to find that Howland discloses identical decorations or patterns (e.g., Ans. 18, 19; App. Br. 8). A preponderance of the evidence supports Appellant’s view that, contrary to the Examiner’s position (e.g., Ans. 7), the relationship between the claimed decorations or patterns “does interact in a new way with the substrate [the plastic foil]” (App. Br. 9). Furthermore, we agree with Appeal 2012-005377 Application 10/492,787 5 Appellant that since Salmon teaches that a three-dimensional effect is obtained by the textured pattern 14 formed on only one side of the substrate 12, the Examiner has not sufficiently provided an apparent reason why one would have “offset” identical decorations on the inner and outer sides of a transparent plastic foil as claimed herein “so as to provide a three- dimensional visual effect” as recited in claims 1, 15, and “a visual depth effect for the pattern” as recited in claim 35. Thus, a preponderance of the evidence supports Appellant’s assertion that the Examiner’s rejection is based on improper hindsight (App. Br. 9). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”, citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). The Eiden reference as further applied in the rejection of claims 8-13, and 22-27 has not been relied upon by the Examiner to cure the deficiencies noted above. Accordingly, we are constrained to reverse the rejections of all the claims on appeal. DECISION The decision of the Examiner is reversed. REVERSED bar