Ex Parte Canaday et al

Patent Trial and Appeal Board

Aug 29, 2017

13837899 (P.T.A.B. Aug. 29, 2017)

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.
13/837,899 03/15/2013 Jessica Canaday 072031.86US1 2816
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSICA CANADAY and DAVID STYLER
Appeal 2016-005926
Application 13/837,899
Technology Center 3600
Before ST. JOHN COURTENAY III, THU A. DANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1, 3—8, and 12—18, which are all the claims pending in
this application.1 Claims 2, 9-11, and 19-23 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer herein to the Final Office Action, mailed November 3, 2014; the
Appeal Brief, filed on November 18, 2015; the Reply Brief filed on May 16,
2016; and the Examiner’s Answer mailed March 16, 2016.
Appeal 2016-005926
Application 13/837,899
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal “relates to [a] financial
transaction card display that can include a display or carrier, a financial
transaction card, and an elongated object. In certain aspects, the financial
transaction card and the display or carrier can have depictions of food
products and/or flames, wherein the elongated object can be positioned such
that it appears as a candle in the food product.” (Spec. 11).
Claim 1 is representative, and is reproduced below:
1. A financial transaction card display comprising:
a display comprising a first front surface and a first back
surface; a financial transaction card coupled to a portion of the
first front surface of the display,
wherein the financial transaction card includes a second
front surface and a second back surface, wherein the second front
surface comprises a depiction of a food product, and wherein the
second back surface is facing the first front surface of the display;
and
an unsharpened carpenter pencil coupled to a portion of
the first front surface of the display or to a portion of the second
front surface of the financial transaction card such that a first end
of the unsharpened carpenter pencil covers a portion of the
depiction of the food product and a second end of the
unsharpened carpenter pencil extends away from the depiction of
the food product such that the unsharpened carpenter pencil
appears to be a candle in the depiction of the food product.
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Application 13/837,899
Rejection
Claims 1, 3—8, and 12—18 are rejected under pre-AIA 35 U.S.C.
§ 103(a), as being obvious over the combined teachings and suggestions of
Santos et al. US patent 7,984,850 B2 (hereinafter “Santos”) in view of
Precheur et al. US publication 2007/0262125 Al (hereinafter “Precheur”).
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of the
rejection of claims 1 and 12—18 on the basis of representative independent
claim 1; we decide the appeal of the rejection of claims 3—8 on the basis of
representative dependent claim 3. See 37 C.F.R. § 41.37(c)(l)(iv). To the
extent Appellants have not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
ANALYSIS 2
Representative Independent Claim 1 rejected under § 103(a)
Issue: Under § 103(a), did the Examiner err in combining the Santos
and Precheur references because Precheur is purportedly not analogous art,
as argued by Appellants (App. Br. 5—6)?
2 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997). Cf. Spec.% 36: “the illustrative embodiment of
the present display-coupled financial transaction card is not intended to be
limited to the particular forms disclosed. Rather, they include all
modifications and alternatives falling within the scope of the claims, and
embodiments other than the one shown may include some or all of the
features of the depicted embodiment.” (Emphasis added).
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Application 13/837,899
Regarding the rejection under § 103, we have considered all of
Appellants’ arguments and any evidence presented. We disagree with
Appellants’ arguments, and we adopt as our own: (1) the findings and legal
conclusions set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2-4), and (2) the findings, legal conclusions, and
explanations set forth in the Answer (2—3), in response to Appellants’
arguments. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Regarding the rejection of representative claim 1, Appellants contend,
inter alia:
The Office has not carried its burden of making a prima
facie case because it has not shown that Precheur-which is
directed to postcards and classified in US 229/02.8 (Postal
Cardsor Packets) and therefore not within Applicants' field of
endeavor-is analogous art. For this reason alone, the rejection
should be reversed. Even setting aside the burden issue,
Precheur is not-in fact-analogous art, and the rejection should
therefore be reversed.
As explained in the Field of the Invention section, the
present invention relates to a financial transaction card display
that includes a display, or carrier, a financial transaction card,
and an elongated object. Paragraph [0001]. The card can depict
a food object, and the elongated object can be positioned so that
is appears as a candle in the food product. Id. This is what is
recited in claim 1. Precheur, on the other hand, includes a
postcard, which has nothing to do with a financial transaction
card or a carrier for such a card. While Precheur discloses that
the postcard has a writing implement conveniently and
detachably connected to it (see paragraphs [0049, 0058, 0059,
0079-0083]), the writing implement is not designed to create
the claimed appearance. Thus, Precheur is not from
Applicants' field of endeavor.
Furthermore, Precheur is not reasonably pertinent to the
particular problem with which the inventors were involved. In
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Application 13/837,899
particular, Precheur does not address the creation of a
synergistic effect resulting from the combination of a card
(carried on a backer) that depicts a food product and an
elongated object coupled to the display or card and partially
covering the food product. See paragraph [0006]. Moreover,
there is no relationship between the orientation of Precheur's
pencil and the appearance of anything else on Precheur's
postcard, so Precheur would not have logically commended
itself to the inventors' attention in considering their problem.
(App. Br. 5—6) (emphasis added).
The Examiner disagrees:
The mere classification in a different area does not
constitute non-analogous art. Precheur is utilized in the
rejection to modify the financial transaction card shown by
Santos. Both Precheur and Santos teach decorative display
cards which are considered to be analogous art. Appellants]
further argues that the problem the instant invention seeks to
solve is decorative in nature, however patentability (for a
utility patent) cannot reside in decorative features. It is
noted that Santos in fact does teach a synergistic effect by
combining an object 130 with a decorative substrate 110 and a
financial transaction card 120.
(Ans. 2) (emphasis added).
In reviewing the rejection of claim 1, we note the Examiner relies on
Santos for teaching all that is claimed, except the Examiner finds Santos
does not teach “the object as being an unsharpened carpenter pencil.”
(Final Act. 2) (emphasis added). The Examiner relies on the secondary
Precheur reference for teaching a “display 60 having pencil 62 removably
attached to the front surface thereof (Figure 6C) by adhesive 64,” and also
teaching “the pencil may be ‘any type of pen, pencil, or other type of device
capable of writing’ [0049].” (Final Act. 2—3) (emphases added).
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Application 13/837,899
The Examiner provides the following rationales in support of the
proffered modification of Santos with the pencil-postcard feature (Fig. 6C)
of Precheur:
It would have been obvious to a person having ordinary
skill in the art to utilize a pencil on the display of Santos to
provide a different decorative feature and attract a different
group of customers. It also would have been obvious to one of
ordinary skill to utilize an unsharpened carpenter pencil as “any
device capable of writing” since such a pencil is capable of
writing once it has been sharpened.
(Final Act. 3).
Thus, when Santos and Precheur are combined, the Examiner
concludes Precheur’s description (| 49) of “any type of pen, pencil, or other
type of device capable of writing” would have at least suggested the
“unsharpened pencil” as claimed. 3 (Emphases added). However, we note
Appellants only contest the “unsharpened pencil” claim limitation with
respect to the second argued group of claims 3—8, which we address infra.
(App. Br. 5—6) (emphasis added).
Regarding claim 1, which is representative of the first contested group
(claims 1 and 12—18), Appellants contend the Examiner has improperly
combined Santos and Precheur. (App. Br. 6). In support, Appellants urge
Precheur is not from “Applicants’ field of endeavor” because Precheur’s
“writing implement is not designed to create the claimed appearance.” (Id.)
(emphasis added).
3 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F. 2d 804, 807-808 (Fed. Cir. 1989), cert, denied, 493 U.S.
975 (1989); see also MPEP § 2123(E).
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Application 13/837,899
Our reviewing court has established two criteria for determining
whether prior art is analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, or (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006), citing In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Here, we interpret claim 1 under BRI,4 and turn to Appellants’
Specification (| 1) for context. We find a description of a “display or
carrier [that] can have depictions of food products and/or flames.”
(Emphases added). Thus, consistent with the Specification {id.), we broadly
but reasonably interpret the claimed “display comprising a first front surface
and a first back surface” (claim 1) as encompassing, for example, a card
substrate structure having decorative depictions and/or objects or
positioned or attached thereon.5 (Emphasis added).
Regarding Appellants’ contention that Precheur is not from
“Applicants’ field of endeavor” because Precheur’s “writing implement is
not designed to create the claimed appearance”6 (App. Br. 6), we conclude
4 See n.2, supra regarding the broadest reasonable interpretation (BRI)
standard of claim construction applied by the USPTO.
5 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
6 It is not necessary for the prior art to serve the same purpose as that
disclosed in Appellants’ Specification in order to support the conclusion that
the claimed subject matter would have been obvious. See In re Lintner, 458
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the argued “appearance” is directed to the decorative aspects of the
claimed card display, as perceived by a human viewer. (Claim 1) (emphases
added).
In considering the claimed structures (display, financial transaction
card and pencil — claim 1), we agree with the Examiner and find that both
Precheur (Figs. 1, 6C) and Santos (Fig. 1) teach decorative display cards
which include structural elements that are analogous art to the structural
elements of Appellants’ claimed “financial transaction card display.”
(Ans. 2; claim 1).
As correctly noted by the Examiner, and to the extent that Appellants
argue the problem the instant invention seeks to solve* * * 7 is decorative in
nature, the “patentability (for a utility patent) cannot reside in decorative
features.” (Ans. 2).
Regarding the claimed decorative features (e.g., “a depiction of a
food product” and “the unsharpened carpenter pencil appears to be a
candle in the depiction of the food product” (claim 1), we note
informational content of non-functional descriptive material is not entitled to
weight in the patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883,
1887—90 (BPAI 2008) (precedential). The Manual of Patent Examining
Procedure (MPEP) guides that “[ejvidence against a functional relationship”
may exist, for example, “where the claim as a whole is directed towards
conveying a message or meaning to a human reader independent of the
F.2d 1013, 1016 (CCPA 1972); see also KSRInt’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (“[NJeither the particular motivation nor the avowed
purpose of the [Appellants] controls” in an obviousness analysis.).
7 See n.6, supra.
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Application 13/837,899
supporting product.” MPEP § 2111.05 (I.)(B.) (9th Revision 07.2015,
revised Nov. 2015).
This reasoning is applicable here. Thus, to the extent Appellants
premise their arguments urging patentability on decorative claimed features,
Appellants’ invention may be better suited to a design patent where the
scope of a design patent claim is “limited to the ornamental aspects of the
design.” Ethicon Endo-Surgery Inc. v. Covidien, Inc., 796 F.3d 1312, 1333
(Fed. Cir. 2015). To the extent the decorative claimed aspects are printed
on the “display” substrate (“depiction of a food product” — claim 1), our
reviewing court guides that printed matter is only given patentable weight
if the claimed informational content has a functional or structural relation
to the substrate. See In re Distefano, 808 F.3d 845, 851 (2015) (citing In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)(“Where the printed matter is
not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.”).
In light of the above guidance, we need not reach the second
“reasonably pertinent” prong of the analogous art test to decide the appeal
of the rejection of representative claim 1. See Kahn, 441 F.3d at 987.
Nevertheless, we also find Precheur is reasonably pertinent to the
particular problem with which the inventors (Appellants) are involved, e.g.,
regarding the similar attachment of a pencil to the card substrate (See e.g.,
Precheur’s Figs. 1A, 6C).
Regarding the contested issue dispositive for representative claim 1,
we find a preponderance of the evidence supports the Examiner finding that
both Santos and Precheur are analogous art to Appellants’ claimed invention
structure (i.e., apparatus). Moreover, Appellants present no evidence that
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Application 13/837,899
combining the teachings and/or suggestions of Santos and Precheur would
have been “uniquely challenging or difficult for one of ordinary skill in the
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
Regarding the structural elements of utility patent application
claim 1, the Examiner finds Precheur’s 149 describes the disclosed writing
implement as “any type of pen, pencil or other type of device capable of
writing.” (Final Act. 3) (emphases added). Therefore, we find a
preponderance of the evidence also supports the Examiner’s legal conclusion
that the claimed “unsharpened carpenter pencil” would have been obvious
in light of Precheur’s description (149) of the attached pencil as
encompassing “any type of device” capable of writing “since such a pencil
is capable of writing once it has been sharpened.” (Final Act. 3) (emphases
added). See discussion of claim 3, infra.
Accordingly, for at least the aforementioned reasons, we sustain the
Examiner’s §103 rejection of representative independent claim 1.
Dependent claims 12—18 (not argued separately) fall with claim 1. See
Grouping of Claims, supra.
Dependent Claims 3—8
Regarding representative claim 3, Appellants contend, inter alia:
[The] descriptions by Precheur, [] suggest the immediate
use of the writing implement, that an unsharpened pencil (as
claimed) would not-contrary to the Office's contention-quality
as a suitable writing implement consistent with Precheur's
alleged invention. Rather, an unsharpened carpenter pencil
would have contravened these teachings and rendered
Precheur's invention unsuited for its intended purpose. The
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Office's argument that combining Precheur with Santos would
have provided a different decorative feature for Santos and
attracted a different group of customers (Final OA at 3) does
not overcome the problem with the Office's contention that an
unsharpened carpenter pencil is taught or suggested by
Precheur.
(App. Br. 8).
We disagree. We find the Examiner’s proffered substitution of an
unsharpened pencil for the sharpened pencil in Precheur would not have
rendered Precheur’s invention unsuited for its intended purpose, as urged by
Appellants. (Id.). As familiar to every grade school student, one merely
needs to sharpen an unsharpened pencil to use it. Thus, to render an
unsharpened pencil suitable for its intended purpose merely requires a pencil
sharpener, which could be a pocket knife, or any sharp edge.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s responsive explanation in support of the rejection of
claim 3:
As discussed in the rejection, Precheur teaches
using any type of pen, pencil or other type of device capable of
writing (see paragraph[0049]). Furthermore, Appellants’]
Specification teaches (in paragraph [0034]) that sharpened
pencils are also contemplated and that any elongated object can
be used, including objects which are not writing implements,
such as a drill bit. It would have been obvious to a person
having ordinary skill in the art of display cards to utilize any
decorative elongated object on the card since Appellants’]
disclosure does not indicate that it is critical that the object be a
non-sharpened pencil.
(Ans. 2-3).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, Appellants have not persuaded us the
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Examiner erred. Accordingly, we sustain the contested § 103 rejection of
representative claim 3. Grouped dependent claims 4—8 (not argued
separately) fall with claim 3. See Grouping of Claims, supra.
Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
Based upon a preponderance of the evidence, Appellants have not
persuaded us the Examiner erred in concluding that all contested claims
rejected under § 103 are obvious over the cited combination of Santos and
Precheur.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3—8, and 12—18
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a) (1) (iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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