Ex Parte Campbell et al

Board of Patent Appeals and Interferences

Mar 16, 2012

11507979 (B.P.A.I. Mar. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/507,979 08/22/2006 Gary Lynn Campbell 3432.2.1 1677
11653 7590 03/16/2012
PATE BAIRD, PLLC
36 West Fireclay
Murray, UT 84107
EXAMINER
MARTELLO, EDWARD
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
03/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY LYNN CAMPBELL and
SUSAN LYNN STUCKI
____________________

Appeal 2010-008367
Application 11/507,979
Technology Center 2600
____________________

Before: JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/507,979

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
23-38. Claims 1-22 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b). An oral hearing on this appeal was conducted on March 13,
2012.
We Affirm.

The claims are directed to computerized, personal-color analysis
system. Claim 23, reproduced below, is illustrative of the claimed subject
matter:
23. An apparatus to automatically generate a customized
color palette, the apparatus comprising:

a processor programmable to execute instructions; and

a memory device operably connected to the processor to
store data structures of executable and operational types, the
data structures comprising:

a query module identifying a plurality of attribute
colors, each attribute color thereof being selected from a
database of colors and matching the color of a different
physical attribute of a plurality of physical attributes of a
living, human subject,

an association module creating a color palette;

the association module, wherein the color palette
comprises the plurality of attribute colors;

the association module, wherein the color palette
further comprises a plurality of compatible colors;

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the association module, wherein each compatible
color of the plurality of compatible colors matches at
least one property of at least one attribute color of the
plurality of attribute colors;

the association module, wherein the at least one
property is selected from the group consisting of
percentage of black, percentage of white, and percentage
of saturation; and

a presentation module providing to the subject the
color palette in the form of a plurality of swatches, each
swatch thereof being a unique color selected from the
plurality of attribute colors and the plurality of
compatible colors.

(disputed limitations emphasized).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gouriou
Galazin
Teter
Macfarlane
US 5,797,750
US 6,000,407
US 6,112,665
US 6,330,341 B1
Aug. 25, 1998
Dec. 14, 1999
Sept. 5, 2000
Dec. 11, 2001

REJECTIONS
1. Claims 23, 24, 31, 34, and 36 stand rejected under 35 U.S.C
§103(a) as being unpatentable over the combination of Gouriou and Teter.
2. Claims 25-30, 32, 33, 37, and 38 stand rejected under 35 U.S.C
§103(a) as being unpatentable over the combination of Gouriou, Teter, and
Galazin.
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3. Claim 35 stands rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Gouriou, Teter, and Macfarlane.

PRINCIPLES OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
“more than the predictable use of prior art elements according to their
established functions.” Id. at 417.
Invention or discovery is the requirement
which constitutes the foundation of the right to
obtain a patent . . . unless more ingenuity and skill
were required in making or applying the said
improvement than are possessed by an ordinary
mechanic acquainted with the business, there is an
absence of that degree of skill and ingenuity which
constitute the essential elements of every
invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we decide the appeal
on the basis of representative claims 23 and 31, and dependent claim 35
considered separately. See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
representative claim 23:

Under §103, did the Examiner err in finding that
the combination of Gouriou and Teter would have
taught or suggested providing to the subject a color
palette comprising a plurality of attribute colors
and a plurality of compatible colors, within the
meaning of representative claim 23?

ANALYSIS
Representative Claim 23
Appellants contend that the combination of Gouriou and Teter does
not teach or suggest providing to a subject a color palette comprising a
plurality colors as required by the language of claim 23. (App. Br. 10).
In particular, Appellants contend:
While Gouriou does mention the word “palette”
elsewhere in its disclosure (disclosing at col. 7, lines 42-44 a
database containing “a palette of reference foundation colors
substantially covering a representative sample of a population
of individuals”), nowhere that Appellants] have] found does
Gouriou teach providing that palette to a subject or user. The
only thing Appellants] find] that Gouriou gives to a user is
“the reference of the foundation color associated with said skin
color” of the user. See Gouriou at col. 7, lines 65-67. As
appreciated, “the reference of the foundation color” is, at best,
one color and certainly not a color palette made up of a plurality
of colors.
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Moreover, Appellants]' claims require providing to the
subject a color palette comprising a “plurality of attribute
colors” and “plurality of compatible colors.” What constitutes
such colors is not available to discretionary choice or
interpretation. These colors are defined in the claims in
considerable detail. Accordingly, to obviate Appellants]'
claims, the prior art must not only disclose providing a color
palette to a user, but also providing a color palette containing a
particular plurality of colors. The combination of Gouriou and
Teter fails to do this.
(App. Br. 10-11).

Based upon our review of the record, we find Appellants’ arguments
urging patentability are predicated on non-functional descriptive material
(i.e., a palette of colors). In particular, the features in Appellants’ claims
that are directed to a color palette comprising a plurality of attribute colors
and a plurality of compatible colors are “useful and intelligible only to the
human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)) (distinguishing
such claim limitations from claim limitations defining functional
characteristics).
The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See Lowry, 32 F.3d at
1583 (“Lowry does not claim merely the information content of a memory
. . . Nor does he seek to patent the content of information resident in a
database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
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Here, the informational content of the claimed color palette
comprising a plurality of attribute colors and a plurality of compatible
colors represents nonfunctional descriptive material that is entitled to no
weight in the patentability analysis.
Even if we arguendo accorded patentable weight to the disputed color
palette comprising a plurality of attribute colors and a plurality of
compatible colors, we note that no particular colors except percentages of
black and white are positively recited in representative claim 23. Because
the “palette of reference foundation colors” taught by Gouriou “substantially
cover[s] a representative sample of a population of individuals” (col. 7, ll.
41-42), we conclude that the unbounded range of colors covered by the
scope of Appellants’ claim 23 at least overlaps one or more of Gouriou’s
foundation colors.
As the Court of Appeals for the Federal Circuit held in Ormco Corp.
v. Align Technology, Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006), “[w]here a
claimed range overlaps with a range disclosed in the prior art, there is a
presumption of obviousness.” The overlap need not be substantial to trigger
the presumption. In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.1997).
Notwithstanding Appellants’ arguments, we are of the view that
Appellants’ claimed invention merely arranges prior art elements with each
element performing the same function it had been known to perform and
yields no more than one would expect from such an arrangement. Our
reviewing courts guide that such a combination of familiar elements is
obvious. See KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976)).
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For these reasons, we are not persuaded by Appellants’ arguments that
the Examiner erred by finding that the combination of cited references
would have taught or suggested providing to the subject a color palette
comprising a plurality of attribute colors and a plurality of compatible
colors, within the meaning of representative claim 23.
On this record, we find the weight of the evidence supports the
Examiner’s ultimate legal conclusion of obviousness. Therefore, we sustain
the Examiner’s rejection of claim 23, and claims 24, 31, 34, and 36 (not
argued separately), which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

Dependent Claims 25-30, 32, 33, 37, and 38
Appellants contend that “[a]dding the four seasons color method and
kit of Galazin does not cure the lack of disclosures of Gouriou and Teter.
Like Gouriou and Teter, Appellants] find] in Galazin no disclosure of
presenting to the subject a color palette comprising a “plurality of attribute
colors” and “plurality of compatible colors.” (App. Br. 11-12).
However, we find no deficiencies in Gouriou and Teter for the same
reasons discussed above regarding independent claim 23. The informational
content of the claimed color palette comprising a plurality of attribute
colors and a plurality of compatible colors represents nonfunctional
descriptive material that is entitled to no weight in the patentability analysis.
Therefore, we also sustain the Examiner’s obviousness rejection of
representative claim 25, and claims 26-30, 32, 33, 37, and 38 (not argued
separately), which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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Dependent Claim 35
Appellants also contend that Macfarlane fails to overcome the
deficiencies of Gouriou and Teter:
As set forth hereinabove, Appellants] find] in the
combination of Gouriou and Teter no disclosure of providing to
the subject a color palette comprising a “plurality of attribute
colors” and “plurality of compatible colors,” as defined by
Appellants]’ claims. Adding the colorimeters and
spectrophotomoters of Macfarlane does not cure the lack of
disclosures of Gouriou and Teter. Like Gouriou and Teter,
Appellants] find] in Macf]arlane no disclosure of presenting
to the subject a color palette comprising a “plurality of attribute
colors” and “plurality of compatible colors.”
(App. Br. 12).

However, we find no deficiencies in Gouriou and Teter for the same
reasons discussed above regarding independent claim 23. The informational
content of the claimed color palette comprising a plurality of attribute
colors and a plurality of compatible colors represents nonfunctional
descriptive material that is entitled to no weight in the patentability analysis.
Therefore, we also sustain the Examiner’s obviousness rejection of
dependent claim 35.

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DECISION
We affirm the Examiner’s §103 rejections of claims 23-38.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

ORDER
AFFIRMED

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