Ex Parte Supera et al

Patent Trial and Appeal BoardApr 1, 2016

12981164 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/981,164 12/29/2010 25281 7590 04/05/2016 DICKE, BILLIG & CZAJA FIFTH STREET TOWERS 100 SOUTH FIFTH STREET, SUITE 2250 MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR David Mark Supera 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 ATTORNEY DOCKET NO. CONFIRMATION NO. A866. l 02.101 6032 EXAMINER KOKKINOS, NICHOLAS C ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 04/05/2016 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): USPTO.PA TENTS@dbclaw.com dmorris@dbclaw.com DBCLA W-Docket@dbclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID MARK SUPERA and KENNETH LEE JOHNSON Appeal2014-007445 Application 12/981, 164 Technology Center 1700 Before CHUNG K. PAK, PETER F. KRATZ, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-8 and 19. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is American Glass Top Co. Appeal Br. 3. Appeal2014-007445 Application 12/981, 164 STATEMENT OF CASE The Examiner's July 31, 2013, Final Rejection rejects claims 1-17 and 19. Appellants cancelled claims 9-17 with an amendment filed in conjunction with the Appeal Brief. Appeal Br. 3. Appellants' amendment also reinstated the word "substantially" in independent claims 1 and 19. Id. The Examiner entered the amendment with a February 27, 2014, Advisory Action. Thus, appeal of claims 1-8 and 19 is now at issue. Appeal Br. 1, 3. Appellants describe the present invention as relating to a magnetic glass dry erase board. Spec. i-f 2. Claims 1 and 19 are the only pending independent claims and are illustrative of the claimed subject matter: 1. A magnetic glass dry erase board system comprising: a dry erase board comprising: a glass sheet having an inner surface and an outer surface; a metal sheet having an inner surface and an outer surface; a coating layer applied to a surface of at least one of inner surface of the glass sheet and an outer surface of the metal sheet, wherein the coating layer is a relatively light color; and an adhesive layer that substantially covers the inner surface of the glass sheet and the outer surface of the metal sheet to retain the glass sheet in a stationary relationship with respect to the metal sheet, enhance a strength of the glass sheet and protect persons from injury if the glass sheet is broken by retaining glass pieces on the metal sheet; and a dry erase marker that is capable of writing on the outer surface of the glass sheet. 2 Appeal2014-007445 Application 12/981, 164 19. A method of protecting a person from injury while using a magnetic glass dry erase board, wherein the method comprises: providing a magnetic glass dry erase board comprising a glass sheet having an inner surface and an outer surface, a metal sheet having an inner surface and an outer surface, a coating layer applied to a surface of at least one of the inner surface of the glass sheet and an outer surface of the metal sheet and an adhesive layer that substantially covers the inner surface of the glass sheet and the outer surface of the metal sheet to retain the glass sheet in a stationary relationship with respect to the metal sheet, wherein the coating layer is non-reflective; writing on the outer surface of the glass sheet with a dry erase marker; positioning an object on the outer surface of the glass sheet utilizing magnetic attraction between the object and the metal sheet; subjecting the magnetic glass dry erase board to a force that causes at least a portion of the glass sheet to break into a plurality of glass pieces; and retaining glass pieces on the metal sheet to prevent a person from contacting edges of the glass pieces. Appeal Br. 17, 19 (Claim Appendix). REFERENCES The Examiner relied upon the references below when rejecting the claims on appeal: Ward Brischke Bretschneider et al. (hereinafter, "Bretschneider") us 4,060,246 us 5,215,467 US 6,218,323 Bl Nov. 29, 1977 June 1, 1993 Apr. 17, 2001 Moore US 2006/0194028 Al Aug. 31,2006 3 Appeal2014-007445 Application 12/981, 164 Matte Definition, Meriam-Webster.com, http://www.merriam- webster/dictionary/matte (last visited Jan. 9, 2013) (hereinafter "Merriam-Webster"). National Weather Service Weather Forecast Office, Violent Tornadoes (F4/EF4/F5/EF5) in Oklahoma (1950-Present), http://www.srh.noaa.gov/oun/?n=tomadodata-ok-violent (last visited July 26, 2013) (hereinafter "the NOAA Reference"). REJECTIONS The Examiner withdrew rejections of claims 1-8 for failing to comply with the written description requirement of 35 U.S.C. Â§ 112 and of claims 9- 17 as being indefinite under 35 U.S.C. Â§ 112. Ans. 3--4. The Examiner maintains the following rejections: Rejection 1. The Examiner rejected claims 1, 2, and 5-8 under 35 U.S.C. Â§ 103 as unpatentable over Moore. Ans. 4. Rejection 2. The Examiner rejected claim 3 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Moore and Ward. Ans. 6. The Examiner also references Merriam-Webster. Ans. 6. Rejection 3. The Examiner rejected claim 4 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Moore and Bretschneider. Ans. 6. Rejection 4. The Examiner rejected claim 19 under 35 U.S.C. Â§ 103 as unpatentable over the combination of Moore, Brischke, and the NOAA Reference. Ans. 7. ANALYSIS Rejection 1. The Examiner rejected claims 1, 2, and 5-8 as obvious over Moore. Ans. 4; Final Act. 6. Appellants do not separately argue claims 4 Appeal2014-007445 Application 12/981, 164 2 or 5-8. We therefore limit our discussion to claim 1. Claims 2 and 5-8 stand or fall with that claim. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). Appellants present two arguments with respect to claim 1. We address each of those two arguments below. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (explaining that review is based upon the issues identified by Appellants). First, Appellants argue that Moore does not teach that "adhesive substantially covers the inner surface of the glass sheet" of the drawing surface. Appeal Br. 11. We disagree. To explain why, we begin with construction of claim 1. It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A ]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." Id. Claim 1 requires "an adhesive layer that substantially covers the inner surface of the glass sheet and the outer surface of the metal sheet .... " Appeal Br. 17 (Claims Appendix) (emphasis added). The Specification defines "substantially covers" as meaning "that a significant portion of the surface is covered with the adhesive." Spec. i-f 28. We construe "substantially covers" in accordance with this definition. The Specification further explains that "it is not necessary for the adhesive to entirely cover the surface" for safety benefits of the adhesive to be achieved." Spec. i-f 28. 5 Appeal2014-007445 Application 12/981, 164 Thus, "substantially covers" does not require that the adhesive entirely cover all of a surface. Here, the Examiner explains how Moore teaches a drawing surface having a glass sheet and metal sheet connected by adhesive. Ans. 7; Final Act. 7-8. We agree with and adopt these findings of fact. We also agree with the Examiner's finding that Moore's adhesive must cover a significant portion (in other words, a consequential or meaningful portion) of the surface because otherwise the layers of Moore's dry erase board would not be adequately bonded together. Ans. 7. Thus, we conclude that the "substantially covers" requirement would have been obvious to a person of ordinary skill in the art in view of Moore. Second, Appellants argue that Moore does "not appreciate why it would be desirable for the adhesive to substantially cover the inner surface of the glass sheet." Appeal Br. 11. We understand this argument as relating to the portions of claim 1 reciting the purpose of the "adhesive layer that substantially covers .... " In particular, claim 1 requires: an adhesive layer that substantially covers ... to retain the glass sheet in a stationary relationship with respect to the metal sheet, enhance a strength of the glass sheet and protect persons from injury if the glass sheet is broken by retaining glass pieces on the metal sheet. Appeal Br. 17 (Claims Appendix) (emphases added). The "adhesive layer that substantially covers" portion of the recitation is structural. The "to retain ... enhance ... and protect" portion of the recitation, however, is functional. While a patent applicant may recite features structurally or functionally, "choosing to define an element functionally, i.e., by what it 6 Appeal2014-007445 Application 12/981, 164 does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In particular, where there is reason to believe that prior art structure is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See id.; In re Hallman, 655 F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to show that prior art structures were not capable of functioning as claimed invention). Moreover, "discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). As explained above, Moore, like the claimed subject matter, teaches a drawing surface having a glass sheet and metal sheet connected by adhesive. We agree with the Examiner there is sound reason to believe this structure is capable of performing the claimed function. Ans. 5; Final Act. 8-9. This is especially true in this situation because the recitations of claim 1 could be satisfied by "retain[ing] the glass sheet in a stationary relationship with respect to the metal sheet" during any period of time (even, for example, during normal operation), by "enhance[ing] the strength of the glass sheet" by even a minimal degree, and by "protect[ing] persons from injury" by even a minimal degree by retaining two or more "glass pieces on the metal sheet." See also Spec. i-f 28. Thus, burden shifts to Appellants, and Appellants do not meet the burden of establishing that the recited functions patentably distinguish the claimed structure from the prior structure. Thus, we sustain the Examiner's first rejection. 7 Appeal2014-007445 Application 12/981, 164 Rejections 2 and 3. The Examiner rejects claim 3 as obvious over Moore and Ward and rejects claim 4 as obvious over Moore and Bretschneider. Ans. 6. Appellants solely rely upon the arguments raised with respect to claim 1. Thus, we sustain these rejections for the reasons explained above. Rejection 4. The Examiner rejects claim 19 as obvious over Moore, Brischke, and the NOAA Reference. Ans. 7. Appellants argue that the references do not teach (1) protecting a person from injury while using a magnetic dry erase board, (2) subjecting the magnetic glass dry erase board to force which breaks the glass into pieces, and (3) retaining glass on the metal sheet to prevent a person from contacting edges of the glass pieces. The Examiner provides thoughtful analysis regarding claim 19, and we agree with and adopt the Examiner's findings of fact regarding claim 19. Final Act. 21-22; Ans. 7-10. Elaboration is provided below. With respect to protecting a person from injury, claim 19 is a method claim, and claim 19 does not require that any concrete step be taken based on "protecting a person" from injury. Thus, the "protecting a person from injury" language in the preamble is not, by itself, limiting. Moreover, even if it were limiting, Moore's structure would provide some protection as explained above. With respect to subjecting the board to a force which breaks the glass, we agree with the Examiner that any such board could be subject to such forces. Ans. 7-10. A person of skill in the art would have recognized that a glass writing board could be subject to force that could break the glass whether by tornadoes (which, as the NOAA reference demonstrates, have tragically struck schools that would implement white boards) or otherwise. 8 Appeal2014-007445 Application 12/981, 164 With respect to retaining glass on the metal sheet, we note that claim 19 does not require that all glass pieces be retained or require that all persons be protected from contacting all glass pieces. We agree with the Examiner that, in the event of the glass breaking, the whiteboard of Moore would retain glass pieces. Ans. 9; Final Act. 22. We therefore sustain the Examiner's rejection of claim 19. DECISION For the above reasons, we affirm the Examiner's rejection of claims 1-8 and 19. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 9