Ex Parte AngelDownload PDFPatent Trials and Appeals BoardJun 13, 201914172762 - (D) (P.T.A.B. Jun. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/172,762 02/04/2014 Oswaldo Angel 23388 7590 06/17/2019 TROJAN LAW OFFICES 9250 WILSHIRE BL VD SUITE 325 BEVERLY HILLS, CA 90212 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. 14-01-6739 8172 EXAMINER HULL, JAMES B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 06/17/2019 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): Trojan@trojanlawoffices.com Speier@trojanlawoffices.com diament@trojanlawoffices.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OSWALDO ANGEL Appeal2017-007104 1 Application 14/172,7622 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-4, 7, 8, 11, 13, and 21. An oral hearing was held on May 30, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our Decision references the Appeal Brief ("Appeal Br.," filed Nov. 11, 2016), the Reply Brief ("Reply Br.," filed Apr. 4, 2017), the Examiner's Answer ("Ans.," mailed Feb. 9, 2017), and the Final Office Action ("Final Act.," mailed May 13, 2016). 2 According to Appellant, the real party in interest is Oswaldo Angel. Appeal Br. 4. Appeal2017-007104 Application 14/172, 7 62 BACKGROUND The Specification discloses "a triangular writing-instrument teaching- system designed to provide a convenient, more efficient method of learning basic mathematics and learning phonetics." Spec. ,i 2. CLAIMS Claims 1, 8, and 21 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A writing instrument comprising: an elongated barrel having a first end, a second end and at least three sides, each side having data printed along its length at increments from the first end, each data represents a value; wherein the values of the data are related in a manner that a computation of the values of the data on any two sides that share the same distance from the first end is equal to the value of the data on another side that shares the same distance from the first end· ' the elongated barrel defines a shape that permits the viewing of a single side without viewing any other side to assist in learning the computation among the data. Appeal Br. 26. REJECTION The Examiner rejects claims 1-4, 7, 8, 11, 13, and 21 under 35 U.S.C. § 103 as unpatentable over Chen. 3 DISCUSSION As discussed below, we are persuaded by Appellant's argument that the independent claims require a functional relationship between the structure of the device and the specific material printed on the device and 3 Chen, CN 201116044 Y, pub. Sept. 17, 2008. 2 Appeal2017-007104 Application 14/172, 7 62 that the Examiner has not established that this functional relationship was obvious in view of the art of record. With respect to each of the independent claims, the Examiner finds that Chen discloses a device with the structure claimed, "but fails to expressly disclose the specific arrangement of printed matter claimed." Final Act. 2-3. The Examiner determines that there is no functional relationship between the structure of the writing instrument claimed and the printed matter on the writing instrument. Id. at 4-5. The Examiner finds that the writing instrument merely provides support for the printed matter in the same manner as Chen's device, and thus, there is no novel or unobvious functional relationship between the claimed printed matter and the writing instrument. Id. at 4. Appellant argues that the claims require a functional relationship between the structure and the printed matter because, "[f]or] example, the arrangement of the data restricts the structure of the writing instrument because only one side of the printed computation table can be viewable at one time." Appeal Br. 12. Appellant asserts that the structure of the device and the arrangement of data on all three sides "restricts [a] ... user from accessing all the data at the same time" and this relationship allows the users to learn the computations printed on the sides. Id. at 22-23. We agree with Appellant that there is a functional relationship between the printed data and the writing instrument as claimed such that the specific arrangement of data should be given patentable weight. A functional relationship can be found where the product performs some function with respect to the printed matter to which it is associated, such as where the printed numbers are provided in a physical relationship to each 3 Appeal2017-007104 Application 14/172, 7 62 other and exploit the structure that supports the data. See In re Gulack, 703 F.2d 1381, 1386-87 (Fed. Cir. 1983); see also MPEP § 2111.05. We determine that the claims here provide such a functional relationship. In particular, the printed data are not only supported by the writing instrument, but are situated in such a way that the values are computationally related as required by each of the independent claims, i.e., the computation of two values, printed at one distance from the end of the device on two separate sides, equals a third value printed at the same distance on the device on a third side. Put another way, there is a specific function provided by the manner in which the data and the structure of the device are related, which is the computational relationship required by the claim. Further, although Chen may suggest a relationship between the data on one side and the data on any other side, including the conversion from one measuring unit to another, Chen does not disclose the specific relationship claimed, whereby the computation of values on two sides equals the value printed on the third side. The Examiner acknowledges that Chen does not teach such a relationship, but the Examiner does not explain why such a relationship would have been obvious and only determines that the specific printed material is not given patentable weight. See Ans. 10-11. Thus, the Examiner has not established that the specific functional relationship between the printed matter and structure of the writing instrument required by each of the independent claims, as discussed above, would have been obvious in view of Chen. Based on the foregoing, we are persuaded of reversible error, and thus, we do not sustain the rejection of claims 1-4, 7, 8, 11, 13, and 21. 4 Appeal2017-007104 Application 14/172, 7 62 CONCLUSION WeREVERSEtherejectionofclaims 1-4, 7, 8, 11, 13, and 21. REVERSED 5 Copy with citationCopy as parenthetical citation