Ex Parte Cox et al

Patent Trial and Appeal Board

Jun 28, 2013

10775746 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTIE M. COX, MARTY J. COX, and MICHAEL J. BANKS
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Appeal 2010-005000
Application 10/775,746
Technology Center 3600
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Before JENNIFER D. BAHR, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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The Appellants have filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”), dated May 28, 2013. The Request seeks
reconsideration of our decision of March 27, 2013 (hereinafter “Decision”)
affirming the Examiner’s rejection of claims 1, 3, 4, 6, 16-18, and 20-25
under 35 U.S.C. § 103(a) as unpatentable over Pazar (US 2003/0167706 A1,
iss. Sept. 11, 2003) and Takemoto (US 4,219,596, iss. Aug. 26, 1980). We
have jurisdiction over the Request under 35 U.S.C. § 6(b).

OPINION
The Appellants contend that the Board has misapprehended or
overlooked five points numbered I-V. We grant the Request to the extent
that we have considered the arguments but otherwise deny the Request
because we did not misapprehend or overlook the points presented by the
Appellants.
Point I. The Board Misapprehends the Trend Information
The Appellants contend that “[t]he Board misapprehends the
relevance of trend information in Appellants’ rebuttal arguments and instead
interprets a small overall percentage of market share as a lack of persuasive
evidence regarding commercial success.” Request 3 (emphasis omitted).
More specifically, the Appellants contend that “the Board misapprehended
the proper metric to consider (incorrectly considering overall market share
instead of the trend in gaining market share) in its weighting of factors to
consider with respect to the establishment of commercial success.” Id.
(emphasis added).
The Board did not misapprehend the relevance of the trend
information. The Decision at page 7 acknowledged the sales units, the
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burial vault market sales, and the market share percentage (% market) for
sales years 2003, 2004, 2005, and 2006 by inclusion of the table in the Cox
Declaration1, and went on to discuss the data in the table at pages 7-8.
Among other things, the table includes the following data points for market
share: 0.002044 % in 2003, 0.003117 % in 2004, 0.003477 % in 2005, and
0.004429 % in 2006, which the Appellants’ assert shows a steady increase in
market share. Decision 7. The table also includes the burial vault sales
figures, which the Appellants assert show a “generally moderate decline in
the overall market for burial vaults.” Id. The Board showed its
apprehension of the trend in market share and weighed the evidence.
As for the statement in the Decision that, “[f]irst, the Appellants’
highest percent market share occurs in 2006 at less than 0.0045% of the
market” (id.), the Appellants contend that “[t]he inference of this statement
is that even at its peak levels, the market share was too small to establish
commercial success.” Request 3. Initially, we note that the word “first” in
the sentence connotes that the Board addressed additional evidence beyond
the Appellants’ market share and as such, properly weighed the evidence of
“commercial success” by not solely relying on the Appellants’ percentage of
market share. See also Decision 7-9. Similarly, the Appellants assert “that
the overall market share is of no significance.” Id. We disagree. The fact
that peak market share was 0.0045% of the relevant market is weak evidence
of commercial success. See Decision 7. Compare Alcon Research, Ltd. v.
Apotex Inc., 687 F.3d 1362, 1371 (Fed. Cir. 2012) (holding that Alcon’s

1 “Cox Declaration” refers to the signed copy of the Declaration of Marty
Jay Cox consisting of four pages with seven supporting exhibits. App. Br.,
Appendix B.
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drug Patanol® was a commercial success “achieving nearly 70% market
share within two years of its launch, accounting for nearly $2 billion in sales
within ten years.”). See also In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996). However, one cannot infer from this statement or the statement in the
Decision that the Board’s analysis stopped with this finding.
Thus, the Board has not misapprehended Point I presented by the
Appellants.
Point II. The Board Misapprehends the
Role of Competitor Advertising in the Analysis
The Appellants respond to the following statement in the Decision at
page 7, “[s]econd, the Cox Declaration states ‘[i]n October 2006, Wilbert
Funeral Services made the invention a ‘standard offering’ on their vaults.’
Cox Dec. 3”2, by contending that “[t]he Board misapprehends the relevance
of the Cox declaration pertaining to advertising by a competitor and its
application to the establishment of commercial success.” Request 4
(emphasis omitted).
The Appellants, however, have not established that Wilbert Funeral
Services is a competitor. To the contrary, the Cox Declaration states, “[w]e
[(i.e., the Appellants)] have been supplying products embodying our
invention to Wilbert [Funeral Services].” Cox. Dec. 1 (emphasis added).
The Declaration also states that “Ray Simon is an artist that create[s] the
artist design for the prints used in connection with the products we supply to
Wilbert Funeral Services.” Cox. Dec. 3 (emphasis added). Supplying

2 The signed copy of the Cox Declaration lacks page numbers and
paragraph numbers. For purposes of referencing the Declaration's page
numbers, the first words on the first page of the Cox Declaration states, “IN
THE UNITED STATES PATENT AND TRADEMARK OFFICE.”
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products to Wilbert Funeral Services for their sale to a consumer is
indicative of a cooperative or collaborative business relationship in which
both the Appellants and Wilbert Funeral Services have interest in selling a
product(s) embodying the claimed invention.
Accordingly, the statement in the Cox Declaration that, “[i]n October
2006, Wilbert Funeral Services made the invention a ‘standard offering’ on
their vaults” (Cox. Dec. 3), suggests that the “standard offering” was for a
product(s) embodying the claimed invention. As such, the increase in sales
of the Appellants’ claimed product(s) in the year 2006 could in-part be
attributed to Wilbert Funeral Services’ standard offering. To the extent that
Wilbert Funeral Services is a competitor in other aspects in the relevant
market, that fact does not erase the business relationship concerning the
claimed invention. As such, the Board has not “misapprehended how to
properly apply a competitor’s standard offering in its weighting of factors to
consider with respect to the establishment of commercial success.” Contra
Request 4.
Thus, the Board has not misapprehended Point II presented by the
Appellants.
Point III. The Board Overlooks Factors in the Test of Pentec Regarding
Evidence of Copying
The Appellants contend that “the Board has picked out a single
element of a multipoint test that [sic], and that it failed to adequately
consider significant additional evidence in its ultimate conclusion.”
Request 5. At the outset, we note that the Appellants’ contention in the
Request is distinct from their contention in the Briefs (see App. Br. 9, Reply
Br. 15), and as such, we did not overlook the Appellants’ point in the Briefs.
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In the interest of fairness, we will address Appellants’ contention in
the Request at page 5. The Appellants cite to Pentec, Inc. v. Graphic Cntrls.
Corp., 776 F.2d 309, 317 (Fed. Cir. 1985), and recite the following:
*317 Lastly, copying of a claimed invention can be evidence of
nonobviousness. Panduit Corp. v. Dennison Manufacturing,
774 F.2d 1082, 1099 (Fed. Cir.1985). In Panduit, however, an
admitted infringer had failed to produce a satisfactory solution
after ten years of effort and expense. In the present case,
Pentec’s effort to develop their own solution was not shown to
have been extensive, its product is not identical to the claimed
invention, and it vigorously denied infringement. GC’s copying
argument can, accordingly, be given little weight.
Request 5 (emphasis added). Additionally, the Appellants’ point out that
“prior to the introduction of the product in the marketplace in 2003, there
were no sales of carapaces that comprised the claimed invention,” then after
favorable reception and positive exposure competitors began selling the
product the in the marketplace. Id. See Cox. Dec. 3.
Pursuant to the factors in the test of Pentec, the Appellants have not
provided evidence of attempts by alleged copiers to increase the sales of
their burial vaults. So regardless of how the Appellants frame the criteria of
the problem, i.e., “how difficult would it be to increase the sales of a burial
vault,” the Appellants’ evidence is lacking in that regard. Request 5-6.
Also, the Briefs offer little, if any, evidence of an alleged copier’s effort to
develop their own solution.
Even assuming that the products depicted in Exhibits 1, 3, and 4 are
identical to the products displayed and marketed by Appellants, which
cannot be ascertained with any certainty from these exhibits, that fact alone
is insufficient to establish copying. Case law holds that copying requires
evidence of efforts to replicate a specific product, which may be
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demonstrated through internal company documents, direct evidence such as
disassembling a patented prototype, photographing its features, and using the
photograph as a blueprint to build a replica, or access to the patented product
combined with substantial similarity to the patented product. Iron Grip, 392
F.3d at 1325; see Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
Inc., 344 F.3d 1186, 1196-97 (Fed. Cir. 2003); Advanced Display Sys., Inc.
v. Kent State Univ., 212 F.3d 1272, 1285-86 (Fed. Cir. 2000). As such, the
Appellants lack adequate evidence to establish copying by the alleged
copiers.
Thus, the Board has not overlooked Point III presented by the
Appellants.
Point IV. The Board Misapprehends the Claimed Decorative Graphic
According to One of Ordinary Skill in the Art
In response to the Board’s agreement with the Examiner’s finding that
“Pazar’s ‘nameplate includes indicia and when secured to the carapace, the
nameplate with indicia ‘decorates’ the carapace to at least some degree’”
(Decision 4 (citing Ans. 7)), the Appellants contend that “[o]ne of ordinary
skill in the art would not construe a metallic nameplate . . . as a ‘decorative
graphic’ as required by the claims.” Request 6.
Although the letters on a nameplate are functional (see Request 6), we
agree with the Examiner’s finding the letters on a nameplate are also
decorative. Letters make up words and phrases, for example, a substrate
having letters that make up the phrase “rest in peace” includes a phrase that
is functional, i.e., provides a message, and decorative. Indeed, as shown in
the Appellants’ Figure 1B, the letters in the phrase “REST IN PEACE” are
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decorative, for example, the letters’ style (font, capital letters) and size. See
Spec. 4, l. 1-2.
Thus, the Board has not misapprehended Point IV presented by the
Appellants.
Point V. The Board Overlooks the Nexus of the Claimed Features to the
Commercial Success
The Appellants contend that:
The Board overlooks the Nexus of the Claimed Features
to the commercial success in stating that the demand for
decorative substrates may be attributed to particular images that
are personal to the deceased rather than the claimed substrate.
The use of the claimed substrate significantly enhances the
ability to provide such desirable decorative graphics, and thus
are not independent of one another.
Request 7 (emphasis omitted). The Appellants also contend that:
the Board’s statement that there is a lack of nexus between the
claimed invention and the demand ignores the fact that the
attributes of the substrate itself permit a more desirable graphic
to be incorporated onto the burial vault-thus the media on
which the graphic is presented and the content of the graphic
itself are not independent of one another and therefore both
contribute to the overall desirability of the product.
Request 7-8. The Appellants also note that one would not likely see
mourners gathered around Marine CPL. Shane Kielion’s burial vault, which
adorned images of the statue of Saddam Hussein toppling, tanks storming
the desert, an Iraqi girl waving an American flag (Exhibit 2), to admire a
brass nameplate as described by Pazar. Request 8.
In regard to the nexus of the claimed features to the commercial
success, we note that independent claim 1 recites “a substrate, having a
decorative graphic” and independent claims 16 and 17 recite “a graphic
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image applied to the first side of the substrate.” These independent claims
do not further limit the graphic to a particular decoration or image. So
although a particular decorative graphic or graphic image may garner more
attention due to its design, the independent claims do not call for a particular
design and as such, the Appellants’ contention is not persuasive. As for the
Appellants’ comparison of the claimed invention to Pazar’s nameplate, the
Appellants have not provided sufficient evidence to conclude that a metal
nameplate with indicia, such as that of Pazar, is not able to garner interest of
the type allegedly shown for Appellants’ product.
Thus, the Board has not misapprehended Point V as presented by the
Appellants.

DECISION
We grant the Request to the extent that we have considered the
arguments but otherwise deny the Request.
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).

DENIED

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