Ex Parte Arana

Board of Patent Appeals and Interferences

Jul 13, 2010

10652706 (B.P.A.I. Jul. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PATRICIA RIVERA ARANA
____________________

Appeal 2009-009717
Application 10/652,706
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL
and FRED A. SILVERBERG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claim 1 under 35 U.S.C. § 102(b) as being 3
anticipated by Clark (US 4,976,622, issued Dec. 11, 1990) and finally 4
rejecting claims 1, 3 and 9-14 under 35 U.S.C. § 103(a) as being 5
unpatentable over Clark. We have jurisdiction under 35 U.S.C. § 6(b). 6
We AFFIRM. 7
Claim 1 is the sole independent claim on appeal: 8
1. A diet planner, comprising: 9
a card including a plurality of category 10
names printed thereon, each category name printed 11
on the card includes a list of food items and the 12
portion for each food item a user is allowed to eat, 13
each category name printed on the card is assigned 14
a different characteristic color corresponding to at 15
least a carbohydrate category, a fat category and a 16
protein category, the category names for the 17
carbohydrate category printed on the card include 18
at least one of Fruits, Cereals, Alcohol, Fruit 19
Juices, Legumes, Dairy, Vegetables II and 20
Vegetables III, the category names for the fat 21
category printed on the card include at least one of 22
Oils and Fats, the category names for the protein 23
category printed on the card include at least one of 24
Meat and Poultry, Fish, Cheese, Seafood and Eggs, 25
the combination of one portion of a food item from 26
the carbohydrate category, one portion of a food 27
item from the fat category and one portion of a 28
food item from the protein category defines a food 29
group called an “asterisk” for maintaining a stable 30
level of glucose in the blood. 31
32
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OPINION 1
Rejection of Claim 1 Under § 102(b) as Being Anticipated by Clark 2
The Appellant contends that: 3
Contrary to the Examiner that all of the elements 4
of Claim 1 are disclosed in Clark, at least the 5
feature of the feature of a card including a plurality 6
of category names printed thereon, each category 7
name that is printed on the card includes a list of 8
food items and is assigned a different characteristic 9
color corresponding to at least a carbohydrate 10
category, a fat category and a protein category, the 11
category names for the carbohydrate category 12
printed on the card include Fruits, Cereals, 13
Alcohol, Fruit Juices, Legumes, Dairy, Vegetables 14
II and Vegetables III, the category names for the 15
fat category printed on the card include Oils and 16
Fats, the category names for the protein category 17
printed on the card include Meat and Poultry, Fish, 18
Cheese, Seafood and Eggs, wherein the 19
combination of one portion of a food item from the 20
carbohydrate category, one portion of a food item 21
from the fat category and one portion of a food 22
item from the protein category defines a food 23
group called an “asterisk” for maintaining a stable 24
level of glucose in the blood, is not disclosed, 25
taught or suggested in Clark, so the rejection is 26
unsupported by the art and should be withdrawn. 27
(App. Br. 12). This argument is nothing more than a close paraphrase of the 28
language of claim 1, prefaced by a statement that “at least the feature of the 29
feature of a card” meeting the limitations of claim 1 is not disclosed by 30
Clark. 31
At page 3, line 9 through page 4, line 2 of the Answer, the Examiner 32
finds that each and every limitation of claim 1 is disclosed or shown by 33
Clark. The Examiner also provides citations to the text and drawing figures 34
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of Clark identifying where each element is disclosed in Clark. We adopt and 1
incorporate by reference the Examiner’s findings at page 3, line 9 through 2
page 4, line 2 of the Answer. To the extent that the Appellant’s argument is 3
nothing more than a close paraphrase of the language of claim 1, the 4
argument fails to identify a basis for concluding that any of the Examiner’s 5
findings is erroneous. Cf. 37 C.F.R. § 41.37(c)(1)(vii) (The appeal brief 6
must include “[t]he contentions of appellant with respect to each ground of 7
rejection presented for review in paragraph (c)(1)(vi) of this section, and the 8
basis therefor, with citations of the statutes, regulations, authorities and parts 9
of the record relied on. . . . A statement which merely points out what a 10
claim recites will not be considered an argument for separate patentability of 11
the claim.” Emphasis added.). 12
The one contention for which the Appellant provides a basis is that 13
[a]lthough Clark mentions that the card are 14
assembled into sets or sub-groups including the 15
foods for consumption during the specified periods 16
of the day, there is no teaching or suggestion in 17
Clark of what food is to be consumed during the 18
specified periods of the day. Further, there is no 19
teaching [or] suggestion in Clark of what food 20
items constitute a food group called an “asterisk” 21
because Clark assumes that the user already has an 22
established dietary program. Thus, for example, 23
there is no mention in Clark of what food items 24
constitute the fat food group. 25
(App. Br. 11; Reply Br. 6 (emphasis converted to italics)). The Appellant 26
further argues that: 27
The food groups of Clark are different than the 28
category names and the “asterisk” food group as 29
recited in the claimed invention. . . . Because Clark 30
does not disclose the category names and the 31
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“asterisk” food group of the claimed invention, it 1
would not have been a matter of design choice to 2
modify Clark to meet the claimed invention. 3
(App. Br. 13; Reply Br. 8). Therefore, one issue before us is: 4
Does Clark anticipate the structure recited in claim 1 even 5
though Clark does not disclose that “the combination of one 6
portion of a food item from the carbohydrate category, one 7
portion of a food item from the fat category and one portion of 8
a food item from the protein category defines a food group 9
called an “asterisk” for maintaining a stable level of glucose in 10
the blood?” 11
The Examiner is correct in concluding that “calling the combination 12
of specific food groups in a person’s diet an ‘asterisk’ is a matter of 13
nomenclature and does not further limit the claims as to define structurally 14
over the prior art.” (Ans. 3-4). Claim 1 defines the term “asterisk” but does 15
not recite even the printing one or more asterisks, so defined, on the card. 16
The definition of an “asterisk” relates, at most, to the interpretation of the 17
information on the card recited in claim 1. This interpretation is “useful and 18
intelligible only to the human mind” and, as such, does not patentably (that 19
is, structurally) distinguish the claimed subject matter from the card 20
disclosed by Clark. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) 21
(quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). For these 22
reasons, the question of whether or not Clark describes the combination of 23
one portion of a food item from a carbohydrate category, one portion of a 24
food item from a fat category and one portion of a food item from a protein 25
category to define an “asterisk” has no bearing on whether Clark anticipates 26
the structure claimed in claim 1. 27
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We sustain the rejection of claim 1 under § 102(b) as being 1
anticipated by Clark. 2
3
Rejection of Claims 1, 3 and 9-14 Under § 103(a) as Being Unpatentable 4
Over Clark 5
The evidence, namely, Clark, establishing lack of all novelty in the 6
subject matter of claim 1 necessarily evidences the prima facie obviousness 7
of that subject matter. See In re Fracalossi, 681 F.2d 792, 794 (Fed. Cir. 8
1982). There being no evidence probative of any secondary indicium of 9
patentability, we sustain the rejection of claim 1 under § 103(a) as being 10
unpatentable over Clark. 11
The Appellant separately argues the patentability of claim 3 on the 12
basis that Clark fails to teach a diet planner in which each category name 13
printed on the card is assigned a different characteristic color corresponding 14
to at least a carbohydrate category, a fat category and a protein category; and 15
in which the characteristic color that is printed on the card is yellow for the 16
carbohydrate category, red for the protein category and blue for the fat 17
category. (Reply Br. 10). Another issue in this appeal is: 18
Do the evidence and technical reasoning underlying the 19
rejection of claim 3 adequately support the conclusion of 20
obviousness? 21
As the Examiner finds, “Clark further discloses using different colors 22
or pictorial illustrations on the cards [attached to a face of the card 10] in 23
order to distinguish the food groups from each other.” (Ans. 5, citing Clark, 24
col. 4, ll. 53-59). Category names described by Clark include the “FRUITS” 25
group, which corresponds to the carbohydrate category; the “FATS” group, 26
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which corresponds to the fat category; and the “MEAT” group, which 1
corresponds to the protein category. (See Clark, col. 4, ll. 49-53). 2
The content or meaning of printed matter recited in a claim does not 3
structurally distinguish the subject matter of a claim from prior art unless 4
there is a new and nonobvious functional relationship between the printed 5
matter and the structure on which the matter is printed. See In re Ngai, 367 6
F.3d 1336, 1338-39 (Fed. Cir. 2004). The Appellant argues that “the color 7
of each group has a specific meaning of separating the food groups from 8
each other such that the user understands that a food from each of the food 9
groups constitutes an ‘asterisk.’” (Reply Br. 10). To the extent that this 10
constitutes a functional relationship between the assignment of different 11
characteristic colors and the card, the relationship would have been obvious 12
from the teachings of Clark. More specifically, one of ordinary skill in the 13
art familiar with the teachings of Clark would have had reason to assign 14
different characteristic colors to the “FRUITS” group, which corresponds to 15
the carbohydrate category; the “FATS” group, which corresponds to the fat 16
category; and the “MEAT” group, which corresponds to the protein 17
category, so as to distinguish the three. Since there is no nonobvious 18
functional relationship between assigning characteristic colors, on the one 19
hand, and the card claimed in claim 3, on the other, the assignment of the 20
characteristic colors does not patentably distinguish the claimed structure 21
from the teachings of Clark. 22
The Examiner finds (see Ans. 5), and the Appellant does not contest, 23
that “using the specific colors, yellow, blue and red, for the food categories 24
does not provide any advantage or solve any stated problem that is different 25
from what has already been provided in Clark.” In other words, the 26
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Appellant asserts no functional relationship between the specific yellow, red 1
and blue colors, on the one hand, and the card claimed in claim 3, on the 2
other. The particular blue, yellow and red colors recited in claim 3 do not 3
structurally distinguish the subject matter of claim 3 from the teachings of 4
Clark. 5
We sustain the rejection of claim 3 under § 103(a) as being 6
unpatentable over Clark. 7
Finally, the Appellant contends that the particular category names 8
recited in claims 9-11, 13 and 14, as well as the printing of a “free” food 9
category on the card as recited in claims 12 and 13, patentably distinguishes 10
the subject matter of claims 9-14 from the teachings of Clark. (Reply Br. 11
10). A final issue in this appeal is: 12
Do the evidence and technical reasoning underlying the 13
rejections of claims 9-14 adequately support the rejections? 14
With respect to claim 12, Clark discloses printing on the card 10 (or, 15
more specifically, printing on at least one food card 20 attached to a face of 16
the card 10) the category name “VEGETABLE.” (See Clark, fig. 2). 17
“Vegetable” corresponds to a free category. (Cf. Spec. 15 (identifying crude 18
vegetables as “corresponding to green asterisks”)). 19
Beyond this, the Appellant provides no evidence or persuasive reason 20
why there might exist a functional relationship between the green color 21
associated with the free category recited in claim 12 or the particular 22
category names recited in claims 9-11, 13 and 14, on the one hand, and the 23
cards claimed in claims 9-14, on the other. Defining “that type of food 24
necessary for the user to maintain, gain or lose weight, while providing the 25
necessary nutrition to remain healthy” (see Reply Br. 10) addresses how the 26
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information content of the printed matter is intended to be interpreted and 1
used, not a functional relationship between the information and the card. 2
We sustain the rejections of claim 9-14 under § 103(a) as being 3
unpatentable over Clark. 4
5
DECISION 6
We AFFIRM the Examiner’s decision rejecting claims 1, 3 and 9-14. 7
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AFFIRMED 9
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mls 16
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PETER J. RASHID 18
5111 MOUNTAIN ROAD 19
BRIGHTON, MI 48116-9735 20