Ex Parte Bonzer et al

Patent Trial and Appeal Board

Sep 27, 2016

13487060 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/487,060 06/01/2012
20350 7590 09/29/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Clarice Bonzer
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.
81247-838579 2232
EXAMINER
THROOP, MYLES A
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARICE BONZER, CHARLES PARKER,
and NANCY BARTLEY
Appeal2014-009988
Application 13/487,060 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5 and 7-22. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is The Boppy
Company, LLC. Appeal Br. 3.
Appeal2014-009988
Application 13/487 ,060
ILLUSTRATIVE CLAIM
1. A multi-use pillow, comprising:
a pillow body comprising a medial region and two arms
that extend from the medial region, wherein the pillow body has
a curved exterior periphery and an interior periphery that
defines a well;
a plurality of use-defining images positioned on the
pillow body, wherein each use-defining image instructs a
human caregiver as to how to properly position a baby at a
certain location relative to the pillow body depending on a
particular use of the pillow body suggested by the use-defining
image, wherein each use-defining image comprises a depiction
of a baby's body positioned relative to the pillow body so as to
instruct the human caregiver as to how to properly position the
baby relative to the pillow body depending on the particular use
suggested by the use-defining image, thereby showing how the
pillow body is to be used, and wherein each use-defining image
is positioned at a location indicative of where the particular use
of the pillow body may occur; and
numeric indicia adjacent to each of the use-defining
images giving a suggested age for the particular use.
CITED REFERENCES
The Examiner relies upon the following references:
Claflin US D149,474
Matthews Brown et al. US 2005/0166378 Al
(hereinafter "Matthews Brown")
Tidwell et al. US 7,624,461 B2
(hereinafter "Tidwell")
2
May4, 1948
Aug. 4, 2005
Dec. 1, 2009
Appeal2014-009988
Application 13/487 ,060
REJECTIONS 2
I. Claims 1, 2, 4, 7-14, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tidwell and Claflin.
II. Claims 3 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tidwell, Claflin, and Matthews Brown.
III. Claims 15, 16, 18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tidwell and Claflin.
IV. Claims 17 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tidwell, Claflin, and Matthews Brown.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Final
Office Action at pages 3-9 and the Answer at pages 2---6. Additional
findings of fact may appear in the Analysis below.
ANALYSIS
Rejection/
Claims 1, 2, 4, 7-14, and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Tidwell and Claflin. Final Action 3-5. Claims 1 and
22 are independent claims. Claim 12 is the only dependent claim for which
the Appellants offer a separate argument. See Appeal Br. 9-10.
2 In addition to Rejections I-IV, the Final Office Action includes a
provisional rejection of claims 1-5 and 7-22 on the ground of nonstatutory
double patenting as being unpatentable over claims of copending
Application No. 13/101,611 (the subject of Appeal 2014-006803). Final
Action 2-3. The provisional double-patenting rejection is withdrawn, per
the Advisory Action mailed April 7, 2014.
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Application 13/487 ,060
As explained in the discussion below, and beginning with claim 22,
the Appellants arguments are not persuasive, such that we sustain the
rejection of claims 1, 2, 4, 7-14, and22.
Claim 22
Claim 22 recites, in part, a plurality of "use-defining images":
a plurality of use-defining images positioned on the
pillow body, wherein each use-defining image instructs a
human caregiver as to how to properly position a baby at a
certain location relative to the pillow body depending on a
particular use of the pillow body suggested by the use-defining
image, wherein each use-defining image comprises a depiction
of a baby's body positioned relative to the pillow body so as to
instruct the human caregiver as to how to properly position the
baby relative to the pillow body depending on the particular use
suggested by the use-defining image, thereby showing how the
pillow body is to be used.
The Appellants contend that the Examiner erred in rejecting claim 22,
by ascribing no patentable weight (that might distinguish the claim from the
cited prior art) to the claimed "use-defining images." Appeal Br. 6. The
Appellants argue that the "use-defining images" must be afforded patentable
weight, because they constitute printed matter having a functional
relationship with the associated article. Id. at 6-9 (citing MPEP § 2111.05).
According to the Appellants, such a functional relationship exists because
"the use-defining images on the pillow body instruct a human user regarding
how to appropriately use the pillow body." Id. at 8; see also Reply Br. 3.
Further, the Appellants allege, the cited Tidwell and Claflin references
fail to teach the recited features of the "use-defining images" because
Tidwell shows a pillow structure and Claflin shows the use of aesthetically
pleasing images, but does not depict a baby on a pillow. Appeal Br. 8-9.
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Application 13/487 ,060
The Appellants also argue that the Examiner wrongly relies upon Tidwell's
patent figures as teaching "use-defining images" because "the pillow in
Tidwell contains no images at all" and "the images in Tidwell are patent
figures showing the pillow described in the Tidwell application." Reply
Br. 2, 4.
In response, the Examiner's Answer states that the "use-defining
images" bear no functional relationship to their substrate because the
claimed pillow can be used in the manner illustrated in the "use-defining
images," regardless of whether the "use-defining images" are provided on
the pillow, on a different medium (such as an instruction manual), or not
provided at all. Answer 2-5. Thus, the "use-defining images" carry no
patentable weight and are merely ornamental. Id. at 2. Moreover, according
to the Examiner, even if the "use-defining images" were considered to have
patentable weight, claim 22 would be obvious nevertheless, based upon the
combined teachings of Tidwell and Claflin. Id.
According to what is sometimes called the "printed matter" doctrine,
text or another marking that is "claimed for what it communicates" is
afforded patentable weight - such that it may be relied upon to distinguish
over the prior art for purposes of patentability - only if "the claimed
informational content has a functional or structural relation to the substrate."
In re Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015); see also King Pharms.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-80 (Fed. Cir. 2010); In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); Ex parte
Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential).
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Application 13/487 ,060
A functional relationship, which gives rise to consideration of the
printed matter as having patentable weight, involves an interrelationship
between the printed matter and the substrate such that the disposition of the
printed matter relative to the substrate permits a function that the printed
matter and the substrate could not possess separately. Thus, in Gulack, 703
F .2d at 13 85-87, an endless sequence of numbers were arranged on a
continuous band used to demonstrate certain mathematical principles - a
functionality that could not exist if the numbers were not arranged on a
substrate formed as a continuous band or ring. Similarly, in Miller, 418 F .2d
at 1396, indicia on a proportionally reduced measuring cup were used to
ascertain proper volume of the material being measured - functionality not
possible if the measuring cup and indicia were not joined as set forth in the
claim. By contrast, in Ngai, a kit containing a set of instructions explaining
the use of an accompanying chemical reagent was determined to lack the
requisite functional relationship between the instructions and the reagent.
Ngai, 367 F.3d at 1339 ("Here, the printed matter in no way depends on the
kit, and the kit does not depend on the printed matter. All that the printed
matter does is teach a new use for an existing product.")
In claim 22 of the instant Appeal, the usefulness of the pillow does not
derive from the printed matter of "use-defining images" being "positioned
on the pillow body," as claimed. Although the "use-defining images"
provide instructions, they could serve the same purpose if provided
separately from the pillow, as the Examiner explains. Answer 2. Thus, the
"use-defining images" are similar to the instructions discussed in Ngai,
which were determined not to exhibit the operating interrelationship between
the printed matter and respective substrates discussed in Gulack and Miller.
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Because they lack the required functional relationship with the pillow, the
recited "use-defining images" have no patentable weight, as the Examiner
correctly determines, and cannot serve to distinguish the claim from the
prior art.
Moreover, and alternatively, even if the "use-defining images" were
entitled to patentable weight, claim 22 would be obvious, nevertheless,
because the Examiner correctly finds that the combination of Claflin's
instructional images/text and Tidwell' s disclosure of a pillow and an image
of a baby positioned on a pillow together teach the features of the claimed
"use-defining images." The Appellants' argument to the contrary (Appeal
Br. 8-9; Reply Br. 1-2, 4), although discussing both Claflin and Tidwell,
regards the teachings of Claflin and Tidwell separately, rather than in
combination, as the Examiner sets forth (Answer 2). See In re Keller, 642
F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.")
As to the Appellants' contention that the Examiner's reliance upon
one of Tidwell's patent figures as disclosing a "use-defining image[]"
(Reply Br. 2, 4), the Appellants present no reason why patent figures might
not be used in this manner. Indeed, the Examiner's approach is proper
because patent drawings, like references in any other form, are "evaluate[ d]
and appl[ied] ... on the basis of what they reasonably disclose and suggest
to one skilled in the art." In re Aslanian, 590 F.2d 911, 914 (CCPA 1979)
(quoting In re Baum, 374 F.2d 1004, 1009 (CCPA 1967)).
Accordingly, the Appellants' arguments that the Examiner erred in
rejecting claim 22 are unpersuasive.
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Appeal2014-009988
Application 13/487 ,060
Claim 1
The Appellants' arguments alleging error in the rejection of
independent claim 1 concern claim 1 's "use-defining images," which (unlike
claim 22, discussed above) require the feature of having the "use-defining
images" located at positions on the pillow that relate specifically to the
particular baby positioning depicted therein:
a plurality of use-defining images positioned on the
pillow body, ... wherein each use-defining image is positioned
at a location indicative of where the particular use of the pillow
body may occur.
That is, per claim 1, a baby would be positioned against the area of the
pillow where a particular "use-defining image" is located, when oriented in
the manner shown in the image.
The Appellants argue that the location-based feature of claim 1 's
"use-defining images" adds to their functional relationship with the pillow
substrate, such that the printed matter should be afforded patentable weight.
Appeal Br. 9. Further, the Appellants contend, neither Tidwell nor Claflin
describes this additional feature. Id.; see also Reply Br. 4. Additionally, the
Appellants allege that the Examiner's determination of obviousness is based
upon "impermissible hindsight." Reply Br. 4.
The Examiner's Answer states that Claflin teaches the claimed
location-based "use-defining images" because Claflin discloses instructional
images and text, including the text "let scraps fall here" surrounded by
images of paper scraps, and the text "sit here," located on a cloud-shaped
image. Answer 5. Thus, Claflin teaches instruction "use-defining images"
at locations indicative of where a particular use and positioning would occur.
Id. In addition, the Answer says that Tidwell teaches a depiction of a baby
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Appeal2014-009988
Application 13/487 ,060
on a pillow, such that it would have been obvious to combine the teachings
of Claflin and Tidwell, to provide instructional images of a baby on a pillow
at particular related locations of the Tidwell pillow. Id.
In addressing the prior art combination, the Appellants regard the
references individually as opposed to combining their teachings. Reply Br.
4. Thus, according to the Appellants, "[a]t best Claflin teaches that images
can be included to tell a user where to sit on a play mat and where to let
scrapes [sic] fall on a play mat," but "the images in Claflin do not show how
to place a baby on a pillow." Id. Yet, the Appellants do not address the
combination of Claflin' s teachings (having instructional images/text at
particular locations on a device where the depicted uses occur) with those of
Tidwell (a pillow and images of how to position a baby on the pillow),
which results in the device of claim 1. Finally, no evidence or argument is
presented to support the Appellants' allegation of "impermissible hindsight."
Id.
Therefore, the Appellants' argument alleging error in the rejection of
claim 1 is not persuasive.
Claim 12
Claim 12 recites (emphasis added):
12. A pillow as in claim 2, wherein the use-defining
images and the numeric indicia are color-coded, with
corresponding images and numeric indicia being of the same
color.
The Appellants argue that claim 12's "color-coded" feature is in a
functional relationship to the color selection (i.e., it is printed matter entitled
to patentable weight) (see Appeal Br. 9-10; Reply Br. 4) and that the
rejection thus erroneously relied upon Tidwell for the color-coding feature
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(Appeal Br. 9--10). The Appellants argue that Tidwell discloses a decorative
use of color, not color-coding. Appeal Br. 10.
According to the Examiner, the claimed color-coding does not involve
a functional relationship with the pillow, such that this feature is merely
ornamental. Answer 5---6.
The Appellants (Appeal Br. 9--10) rely upon the statement in MPEP
§ 2111.05(II) that "a claim to a color-coded indicia on a container in which
the color indicates the expiration date of the container may give rise to a
functional relationship."
In the MPEP example, the color coding related to the use of the
substrate container. However, the color-coding in claim 12 relates the
"numeric indicia" with "images" - both of which are types of printed
matter. Thus, the color-coding in claim 12 does not create a functional
relationship between the printed matter (numbers and images) and the
substrate (pillow). Therefore, the printed matter is not entitled to patentable
weight, such that the Appellants' argument is unpersuasive.
Claims 2, 4, 7-11, 13, and 14
The Appellants do not offer any independent arguments regarding
claims 2, 4, 7-11, 13, and 14, which depend (directly or indirectly) from
claim 1. Appeal Br. 10; Reply Br. 4--5.
Rejection II
The Appellants do not offer any independent arguments regarding
claims 3 and 5, which depend (directly or indirectly) from claim 1. Appeal
Br. 1 O; Reply Br. 5. Accordingly, the rejection of claims 3 and 5 under 35
U.S.C. § 103(a) is sustained.
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Appeal2014-009988
Application 13/487 ,060
Rejection Ill
Claim 15 is an independent method claim that recites "positioning a
baby" on a pillow "in a position depicted in one of the use-defining images"
- the pillow and its "use-defining images" being similar to those of claim 1.
See Appeal Br. 10; Reply Br. 5.
Arguing that claim 15 was rejected erroneously, the Appellants
contend that "[t]he Office Action's position of not giving patentable weight
to use-defining image is irrelevant to a method step where an action is
performed." Appeal Br. 10. Further, referring to their arguments regarding
claim 1, the Appellants argue that, because Tidwell and Claflin do not teach
the recited "use-defining images," these references cannot teach claim 15 's
step of "positioning a baby." Id. at 10-11; see also Reply Br. 5.
As an initial matter, the Appellants mistakenly contend that the
interpretational approach concerning printed matter, discussed above, does
not apply to method claims. See Appeal Br. 10. The Federal Circuit has
stated explicitly to the contrary. King Pharms., 616 F.3d at 1279 ("[W]e
believe that the rationale underlying these cases extends to the situation
presented in this case, wherein an instructional limitation is added to a
method, as opposed to a product, known in the art.")
Moreover, the Appellants' argument that the cited references do not
teach or suggest the "positioning" step (Appeal Br. 10-11; Reply Br. 5) is
unpersuasive, in view of the reasons addressed above (in regard to claim 1 ),
as well as the Examiner's finding that Tidwell teaches positioning a baby on
a pillow (Answer 6).
The Appellants offer no separate arguments for claims 16, 18, 20, and
21, which depend (directly or indirectly) from claim 15. Appeal Br. 11;
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Reply Br. 5. Therefore, the rejection of claims 15, 16, 18, 20, and 21 is
sustained.
Rejection IV
The Appellants off er no separate arguments for claims 1 7 and 19,
which depend (directly or indirectly) from claim 15. Appeal Br. 11; Reply
Br. 5---6. Accordingly, the rejection of claims 17 and 19 under 35 U.S.C.
§ 103(a) is sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5 and 7-22
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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