Ex Parte Coomber et al

Patent Trial and Appeal Board

Jul 18, 2013

12398200 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LEE JAMES COOMBER and
MILES HUGH NEWLYN
____________________

Appeal 2011-005472
Application 12/398,200
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005472
Application 12/398,200
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
9 and 11-14. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to packaged consumer products and services
that communicate, and method of communicating, a company’s products and
corporate values. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for broadcasting a company's products or services
and communicating corporate values consisting essentially of:
providing a logo consisting of a single alphabet letter
which is a U, the letter being formed from at least three groups
of symbols, a first of the three groups representing one product
category which is food comprising from 2 to 50 shapes each
selected from the group consisting of a drawing identifiable as a
palm tree, a spoon, a fish, an ice cream cone, a vegetable and
combinations thereof, a second of the three groups representing
another product category which is personal care or home care
products comprising from 2 to 50 shapes each selected from the
group consisting of a drawing identifiable as a hand, a hair
tress, a jar, a garment, lips and combinations thereof, and a third
of the three groups representing corporate values being selected
from the group consisting of a symbol identifiable with
advocating renewable energy, bio-diversity, clean air, clean
water and combinations thereof, and wherein the symbol
representing renewable energy is a sparkle, the symbol
representing bio-diversity is a bee, the symbol representing
clean air is a bird, the symbol representing clean water is liquid
droplets, and the symbol representing sustainable resources is
arrows; and
applying the logo to a label of a package housing a
consumable material.

Appeal 2011-005472
Application 12/398,200
3
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ast US 5,085,906 Feb. 4, 1992

Fonts.com, Kiddo Caps
(http://web.archive.org/web/20030402061226/www.fonts.com/findfonts/deta
i.asp?nCo=AFMT&pid=206764) (Apr. 7, 2003) (last accessed May 20,
2009) (hereinafter “'Kiddo Caps'”).

REJECTIONS
Claims 1, 11, and 13, are newly rejected in the Examiner’s Answer
under 35 U.S.C. § 101, as being directed to non-statutory subject matter.
Claims 1, 9 and 11-14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over 'Kiddo Caps' postscript font and Ast. Ans. 4.

OPINION
We sustain the Examiner’s rejection under 35 U.S.C. § 103(a).
Appellants argue all claims rejected under § 103(a) as a group.
Independent claims 1 and 9 are representative. 37 C.F.R. § 41.37(c)(1)(vii).
We are in complete agreement with the Examiner that the recitations
in claims 1 and 9 pertaining to the content of the logo are printed matter not
having the requisite functional relationship to its substrate to be entitled
patentable weight. See 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.[ ] Although the printed matter must be considered, in that
situation it may not be entitled to patentable weight.”) Indeed the generic
Appeal 2011-005472
Application 12/398,200
4
recitations describing the substrate “a label of a package housing a
consumable material” (claim 1) and “a package housing a consumable
material” (claim 9) evidence the fact that the printed matter in no way
depends on the substrate, and the substrate does not depend on the printed
matter. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). That is, the
communicative function of the printed matter logo, to convey information
about the source of a product (see, e.g., Spec. p. 1, paras. [0001]-[0002];
App. Br. 14), can be performed without being on a label or package of the
product, and the label and package will each perform their respective
functions of affixing information to, and housing, the product without the
logo. See Id; see also, e.g., In re Xiao, 462 Fed.Appx. 947, 950-51 (Fed. Cir.
2011) (nonprecedential). Indicia whose primary purpose is the conveying of
intelligence or information to a reader is not, without more, functionally
related to its substrate. In re Jones, 373 F.2d 1007, 1012 (CCPA 1967). Such
arrangements of printed lines or characters are “useful and intelligible only
to the human mind.” See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
If we were to adopt Appellants’ position, anyone could continue
patenting a product indefinitely provided that they add a new and
nonobvious logo. See In re Ngai, supra. This was not envisioned by Gulack.
Id; contra Reply Br. 15. Absent the requisite functional relationship between
the printed indicia and the substrate, the substance of indicia, whether textual
or pictorial, has long been held to be incapable of patentably distinguishing
one product from another. In re Sterling 70 F.2d 910, 912 (CCPA 1934).
The same must be held for method claims. King Pharms., Inc. v. Eon Labs,
616 F.3d 1267, 1279 (Fed. Cir. 2010).
While we do not think the number of references cited is critical in the
context of determining the weight printed matter should be afforded (App.
Appeal 2011-005472
Application 12/398,200
5
Br. 11), we note that the 'Kiddo Caps' reference, cited only to demonstrate
the existence of the specific type of printed matter, or artwork, recited by
Appellants, is extraneous. Ast clearly and undisputedly disclosed the
claimed structure, a package, including the particular locations of the printed
matter (claim 9) and thus the method step of applying it thereto (claim 1).
Ans. 5 citing Ast col. 2, ll. 53-68, Fig. 1; see In re King, 801 F.2d 1324,
1326-27 (Fed. Cir. 1986) (“If a prior art device, in its normal and usual
operation, would necessarily perform the method claimed, then the method
claimed will be considered to be unpatentable over the prior art device.”)
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C. §
103(a).

We sustain the Examiner’s rejection under 35 U.S.C. § 101.
The Examiner determined the subject matter of claims 1, 11 and 13
does not pass the machine-or-transformation test and thus does not constitute
statutory subject matter. The Examiner does not perceive any transformation
in claim 1 and considers the recitation “a package housing a consumable
material,” arguably a “machine,” to be only nominally, insignificantly or
tangentially related to the recited method. Ans. 3-4.
Appellants argue the claims as a group and we select claim 1 as
representative. Appellants contend that by application of the recited logo, the
product is “transformed” into one having a higher value because a consumer
will recognize the brand or source of the goods. Reply Br. 8.
While the machine-or-transformation test should not be regarded as
the sole test for patent subject matter eligibility, it is an important and useful
clue in making that determination. Mayo Collaborative v. Prometheus Labs.,
132 S. Ct. 1289, 1296 (2012) (citing Bilski v. Kappos, 130 S. Ct. 3218, 3226
Appeal 2011-005472
Application 12/398,200
6
(2010)). Since mental processes are not patentable (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)) we cannot agree with Appellants that a purely
mental (i.e., a consumer’s perception of value or quality), as opposed to a
physical transformation, would satisfy that prong of the machine-or-
transformation test.
In addition, if a recitation describing a distinction that is useful and
intelligible only to the human mind does not suffice to patentably distinguish
the subject matter claimed under § 102 or § 103 (In re Lowry, 32 F.3d 1579,
1583 (citing Bernhart, supra)), because of the so-called printed-matter
doctrine, as discussed above, we can see no reason why that same recitation
would render that claimed subject matter statutorily eligible under § 101.
The printed-matter doctrine has its origins in what has evolved into § 101
jurisprudence. See In re Gulack, 703 F.2d at 1385 n.8 citing Sterling, supra,
citing In re Russell, 48 F.(2d) 668 (CCPA 1931), and In re Reeves, 62 F.2d)
199 (CCPA 1932) each citing Guthrie v. Curlett, 10 F.2d 725 (2nd Cir. 1926)
(addressing the question of whether statements of written information
constitute a “manufacture”). Those cases, read as a whole, essentially reason
that, because written information or printed matter per se does not fall within
the statutorily defined categories of patent-eligible subject matter, that
written or printed information should not be able to distinguish the claimed
subject matter from that which is known unless there exists a new and
nonobvious functional relationship with the substrate. Thus, we cannot agree
with Appellants that the type of transformation argued to be caused by the
printed matter, which essentially involves the conveyance of intelligence, or
the inspiration of a particular emotion, is a “transformation” of the type that
would tend to demonstrate a claim is directed to statutory subject matter.
Appeal 2011-005472
Application 12/398,200
7
There does not appear to be any dispute that the printed matter, the
logo, per se, an indicia for conveying information about the source of a
material, does not constitute statutory subject matter. So, the question before
us is whether the remaining recitations involving “applying” that logo to a
package housing that material, or use of the method for “broadcasting” or
“communicating” the recited information suffices to render the claimed
subject matter, considered as a whole, statutory under 35 U.S.C. § 101.
The Supreme Court and the CAFC have repeatedly warned “against
interpreting patent statutes in ways that make patent eligibility ‘depend
simply on the draftsman's art.’” See, e.g., Mayo Collaborative v. Prometheus
Labs., 132 S. Ct. at 1294 (citations omitted). “[C]laim drafting strategies that
attempt to circumvent the basic exceptions to § 101 using, for example,
highly stylized language, hollow field-of-use limitations, or the recitation of
token post-solution activity should not be credited.” CLS Bank Int’l v. Alice,
2011-1301, 2013 WL 1920941, *8 (Fed. Cir. May 10, 2013). In light of the
entirety of the claim and the Specification, we must conclude that the
underlying invention here is directed to the method of providing a particular
logo or arrangement of printed graphics to communicate information. See,
e.g., CyberSource v. Retail Decisions, 654 F.3d 1366, 1374 (Fed. Cir. 2011)
(“we look to the underlying invention for patent-eligibility purposes.”). That
method is what solves the stated problem of “deliver[ing] a message of a
company’s products in conjunction with the principles to which the
company is dedicated.” See Spec. p. 1, para. [0003]. The step of applying the
logo, and its use for “broadcasting” or “communicating” information are
recognized as routine and conventional. Spec. p. 1, para. [0002]; See Mayo
Collaborative v. Prometheus Labs., 132 S. Ct. at 1298. Thus, we must
conclude that the recited step of applying the logo is the type of “token post-
Appeal 2011-005472
Application 12/398,200
8
solution activity” our reviewing court warns “should not be credited” in
determining patent subject matter eligibility. Similarly the recitations
pertaining to the use of the logo for “broadcasting” or “communicating” the
recited information must be regarded as “hollow field-of-use limitations.”
Accordingly, we must sustain the Examiner’s rejection of claims 1, 11
and 131 under 35 U.S.C. § 101.

DECISION
We sustain the Examiner’s rejections.

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.
§ 1.136(a)(1)(iv).

AFFIRMED

hh

1 We note that CLS Bank v. Alice, supra, was decided after briefing in the
case before us. CLS considered the question of whether other statutory
categories of inventions should be treated similarly to methods in a § 101
analysis. No rejection of claim 9 under § 101 has been presented for our
review and we leave any such determination to the Examiner in any further
prosecution. While the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.