Ex Parte Charng

Board of Patent Appeals and Interferences

Jun 23, 2011

10887911 (B.P.A.I. Jun. 23, 2011)

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.
10/887,911 07/12/2004 Sheng Kao Charng 1211.004 4012
28410 7590 06/24/2011
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
EXAMINER
BUI, LUAN KIM
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
06/24/2011 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 SHENG KAO CHARNG
____________

Appeal 2009-012306
Application 10/887,911
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, KEN B. BARRETT, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Sheng Kao Charng (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-12. We have jurisdiction
under 35 U.S.C. § 6(b).

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The Invention
The claimed invention is to a method for selling windshield wiper
blade assemblies for vehicles and to a windshield wiper blade packaging.
Claims 1 and 7, reproduced below, with emphasis added, are
representative of the subject matter on appeal.
1. A method for selling windshield wiper
blade assemblies for vehicles, said method
comprising the steps of:
a) providing a non-adjustable windshield
wiper blade assembly having a first length defining
a constant physical size of said wiper blade
assembly, said wiper blade assembly provided to
fit a first vehicle and a second vehicle, said first
vehicle requiring a wiper blade assembly having
said first length and said second vehicle requiring a
wiper blade assembly having a second length
different from said first length; and
b) providing at least one label accompanying
said windshield wiper blade assembly, said at least
one label displaying said physical size and a
logical size of said wiper blade assembly different
from said physical size, said logical size
corresponding to said second length required for
said second vehicle, said at least one label
indicating that said windshield wiper blade
assembly being provided to fit both said first
vehicle and said second vehicle.

7. A windshield wiper blade packaging
comprising:
a non-adjustable windshield wiper blade
assembly having a first length defining a constant
physical size of said wiper blade assembly, said
wiper blade assembly provided to fit a first vehicle
and a second vehicle, said first vehicle requiring a
wiper blade assembly having said first length and
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said second vehicle requiring a wiper blade
assembly having a second length different from
said first length;
a package containing said windshield wiper
blade assembly; and
at least one label accompanying said
package for displaying said physical size and a
logical size of said wiper blade assembly different
from said physical size, said logical size
corresponding to said second length required for
said second motor vehicle, said at least one label
indicating that said windshield wiper blade
assembly being provided to fit both said first
vehicle and said second vehicle.

The Rejection
The following Examiner’s rejections are before us for review:
Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Lewis (U.S. Patent No. 6,070,723, issued Jun. 6, 2000).

SUMMARY OF DECISION
We AFFIRM.

OPINION
The Examiner finds, and Appellant refutes, that Lewis anticipates
claims 1-12. Ans. 4-6 and App. Br. 4-12. Appellant contends that Lewis
does not disclose displaying the physical size and a logical size of said wiper
blade assembly. App. Br. 7. Appellant also contends that “[n]othing in
Lewis indicates that the wiper blade (34) in the package (30) can be used in
a vehicle requiring the windshield wiper blade of different physical size.”
Id. Thus, the dispositive issue in this appeal is whether the claim language
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of “displaying said physical size and a logical size of said wiper blade
assembly different from said physical size, said logical size corresponding to
said second length required for said second vehicle” (hereinafter “displaying
claim language”) and the claim language of “indicating that said windshield
wiper blade assembly being provided to fit both said first vehicle and said
second vehicle” (hereinafter “indicating claim language”) imparts a
patentable distinction over Lewis since patentability cannot be predicated on
printing alone. In re Sterling, 70 F.2d 910, 912 (CCPA 1934).
In order to determine whether the displaying claim language and the
indicating claim language imparts a patentable distinction over Lewis, we
begin by first construing the claim language. See Key Pharm. v. Hercon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (A determination of
anticipation or obviousness begins with claim construction, followed by a
comparison of the construed claim to the prior art). When claim
terminology is construed in the United States Patent and Trademark Office,
claims are to be given their broadest reasonable interpretation consistent
with the specification, reading claim language in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Both independent claims 1 and 7 recite the structure of “at least one
label.” The label is for displaying the physical and logical sizes of the
windshield wiper blade assembly and indicating that the windshield wiper
blade assembly provided within the package fits both first and second
vehicles. When read in light of the Specification, the displaying claim
language and the indicating claim language are disclosed so as to inform a
purchaser that the windshield wiper blade assembly inside the package is
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capable of fitting two different vehicles. Spec. 6-8 and Figures 4A-4C, 5A-
5C, and 6. Reading the Specification, a purchaser can only be informed that
the windshield wiper blade assembly in the package will fit two different
vehicles, if the purchaser is capable of comprehending the indicia on the
label. Comprehension requires grasping with intellect. Intellect is the power
of knowing and reasoning, and such requires development and study; usually
in the form of printed material. Given that the purchaser is likely a human
being and humans develop intellect through the study of printed material,
and the only indicia we see disclosed in the instant Specification are basic
Latin alpha-numeric characters, we construe the indicia on the label as
printed matter.
Here, Lewis discloses a label that consists of printed material, i.e.,
printed matter. Lewis, Figure 4 (element 128). The only distinction
between the label of the claimed subject matter and Lewis’s label is the
information on the label, i.e., the displaying claim language and the
indicating claim language as to physical and logical sizes for the windshield
wiper blade assembly vis-à-vis the indicia helping the purchaser discern the
approximate length of the windshield wiper blade assembly. Lewis, col. 10,
ll. 43-56. Hence, Lewis teaches providing all of the claimed structure, but
Lewis has a different purpose for the label than what is claimed. As such,
we find the only difference between Lewis and the claimed subject matter is
the content of the printed matter.
Printed matter can patentability distinguish a claimed invention from
the prior art when the critical question of whether there exists any new and
unobvious functional relationship between the claimed printed matter and
the claimed substrate is answered in the affirmative. In re Miller, 418 F.2d
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1392, 1396 (CCPA 1969); In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983); and In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) (“The PTO has
the better argument”).
In this case, the claimed printed matter provides no new and
unobvious functional relationship between itself and the label, which is the
claimed substrate. Likewise, the substrate provides no new and unobvious
functional relationship between itself and the printed matter. Accordingly,
we conclude that no new and unobvious functional relationship exists
between the claimed printed matter and the substrate.
Turning to claims 6 and 12, Appellant acknowledges that Examiners
are charged with giving claims their broadest reasonable interpretation, cites
to the Manual of Patent Examining Procedure (MPEP) § 2111.01 for the
proposition that claims must be given their plain meaning consistent with the
specification, and alleges that a person of ordinary skill in the art would not
interpret Brodie’s third flange section 80 as “a display wall” for exhibiting
the windshield wiper assembly as recited in claims 6 and 12. Ans. 6-7 and
11-12. We are not persuaded by Appellant’s arguments that a person of
ordinary skill in the art would not interpret Brodie’s flange section 80 to be a
display wall because the flange section 80 is part of a package half 38 which
is transparent and thus, clearly capable of displaying and exhibiting the
windshield wiper blade assembly 34 inside thereof. As is clear from Figure
9 of Brodie, the flange section 80 assists in hanging the package 30 from a
peg 62 extending from a display rack 144 and therefore, it does not appear to
be unreasonable to interpret the flange section 80 to be “a display wall for
exhibiting said windshield wiper assembly.” Thus, since Appellant fails to
indicate how the Examiner’s implicit construction is inconsistent with the
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present specification, we conclude that the Examiner’s broad interpretation
of Brodie’s flange section 80 as being equivalent to the claimed display wall
is reasonable.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-12 under 35 U.S.C. § 102(b) as anticipated by Lewis.

DECISION
We affirm the Examiner’s rejection of claims 1-12 under 35 U.S.C.
§ 102(b) as anticipated by Lewis.

AFFIRMED

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