Ex Parte Drogin et al

Patent Trial and Appeal Board

Oct 31, 2012

11383974 (P.T.A.B. Oct. 31, 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.
11/383,974 05/18/2006 Catherine Drogin 02013-21967 8548
27171 7590 10/31/2012
MILBANK, TWEED, HADLEY & MCCLOY
1 CHASE MANHATTAN PLAZA
NEW YORK, NY 10005-1413
EXAMINER
COMSTOCK, DAVID C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CATHERINE DROGIN and
PETER DROGIN
__________

Appeal 2012-000141
Application 11/383,974
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a tongue
depressor and a method of using it. The Examiner has rejected the claims as
indefinite, obvious, and directed to nonstatutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm the obviousness rejections.
STATEMENT OF THE CASE
The Specification discloses “an improved tongue depressor apparatus
that has an image appearing on at least one side of the blade of the
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depressor” (Spec. 5:11-13). The invention is said to “make[ ] oral
examinations less emotionally traumatic and more enjoyable for young
patients” (id. at 3:33-34).
Claims 1-12, 14-16, 18, and 19 are on appeal. Claim 11 and 16 are
representative and read as follows:
11. An improved tongue depressor for motivating the cooperation of
youthful patients in oral examinations, comprising:
a tongue depressor that comprises a blade having two elongated,
substantially flat surfaces for restraining said tongue of said patient, at least
one of said two surfaces bearing an image along at least a portion thereof
intended to be inserted into said patient’s mouth, with said blade having a
rounded profile on a first and second end, said image being made from non-
toxic ink, and any portion of said tongue depressor blade may be received
within said mouth of said patient during said examination, even if said any
portion of said tongue depressor has said image appearing therealong; and
said tongue depressor having no indentations or holes in said blade.

16. A method of conducting an oral examination, comprising:
a first step, wherein prior to oral examination, a doctor gives a patient
two or more of an improved tongue depressor each having an image thereon;
a second step, wherein the doctor asks the patient to select his or her
favorite image from among the two or more of an improved tongue
depressor;
a third step, wherein the doctor uses the information gleaned from the
patient’s selected image to initiate a discussion with the patient about the
subject matter of the selected image;
a fourth step, wherein the doctor discusses the oral examination
procedure and further discusses the rewards enjoyed by patients who are
cooperative;
a fifth step, wherein the doctor asks the patient to open his or her
mouth and uses the selected improved tongue depressor to conduct the oral
examination; and
a sixth step, wherein the doctor talks about the selected image as he
or she conducts the examination;
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wherein each said improved tongue depressor comprising a blade
having two elongated, substantially flat surfaces, with said blade having a
rounded profile on a first and second end, at least one of two said surfaces
bearing an image along substantially the entire surface thereof, said image
being made from non-toxic ink, and said blade is not coated with flavor, and
both ends of said blade may be received within the mouth of said patient.

The claims stand rejected as follows:
• Claims 16, 18, and 19 under 35 U.S.C. § 112, second paragraph, as
indefinite (Answer 5);
• Claims 16, 18, and 19 under 35 U.S.C. § 101 as directed to
nonstatutory subject matter (Answer 5);
• Claims 16, 18, and 19 under 35 U.S.C. § 103(a) as obvious based on
Kiro1 and Feller2 (Answer 8); and
• Claims 1-12, 14, and 15 under 35 U.S.C. § 103(a) as obvious based
on Chen3 and Esker4 (Answer 6).
I.
The Examiner has rejected claims 16, 18, and 19 as indefinite because
“Applicant has not set forth the specific dialog that is exchanged or the
scope or boundary of exactly what about the decoration is to be discussed”
(Answer 5).
“Appellants disagree that they must set forth specific dialog or state
what could be said or what cannot be discussed in order for the claim to be

1 Kiro, US 5,634,885, June 3, 1997.
2 Feller et al., US 5,897,492, Apr. 27, 1999.
3 Chen et al., US 2004/0109932 A1, June 10, 2004.
4 Esker et al., US 5,946,773, Sept. 7, 1999.
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definite. Appellants submit that they have indeed set forth what must be
discussed in order to meet the claim limitations.” (Appeal Br. 11.)
We agree with Appellants that the Examiner has not shown that a
skilled worker would not be able to determine the scope of the rejected
claims. Even if, as the Examiner argues, “Applicant is attempting to
somehow claim in a utility patent the age-old practice of ‘small-talk’ and
simple conversation” (Answer 5), that would only make the claim broad, not
indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is
not to be equated with indefiniteness.”).
We reverse the rejection of claims 16, 18, and 19 under 35 U.S.C.
§ 112, second paragraph.
II.
The Examiner has rejected claims 16, 18, and 19 under 35 U.S.C.
§ 101 (Answer 5). The Examiner concedes that the rejected claims “require
the use of a specific apparatus . . . in the form of a tongue depressor” (id.).
However, the Examiner finds that “the decorative appearance of the tongue-
depressor and any related conversation do not involve more than extra-
solution activity. Specifically, the way in which the tongue depressor retains
the users [sic] tongue does not change, and the function it serves is not
affected in any way by the appearance of the depressor.” (Id.)
Appellants argue that “[t]he Examiner’s inquiry twists the ‘machine-
or-transformation test’ into a requirement for both a machine and a
transformation, by seeking that the method effect a change, despite having
acknowledged that the method meets the requirement of being a ‘machine’
under the ‘machine-or-transformation test’” (Appeal Br. 15).
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We conclude that the Examiner has not persuasively established that
the method of claim 16 falls outside the scope of 35 U.S.C. § 101. The
Examiner has effectively conceded that the claimed method satisfies the
“machine-or-transformation” test of In re Bilski, 545 F.3d 943, 954 (Fed.
Cir. 2008). The Examiner has cited no authority for his apparent position
that a defined amount of “extra-solution activity” is required to define a
patent-eligible process that otherwise involves a specified apparatus.
In any case, the Supreme Court has held that the machine-or-
transformation test, while “a useful and important clue, . . . is not the sole
test for deciding whether an invention is a patent-eligible ‘process.’” Bilski
v. Kappos, 130 S.Ct. 3218, 3227 (2010). The Bilski Court held that some
processes may be encompassed by § 101 even though they do not satisfy the
machine-or-transformation test. See id. at 3226-3227. The Supreme Court
also recently held that “simply appending conventional steps, specified at a
high level of generality, to laws of nature, natural phenomena, and abstract
ideas cannot make those laws, phenomena, and ideas patentable.” Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1300
(2012). The Examiner has not addressed the applicability of either of these
Supreme Court holdings to the claims on appeal here.
Thus, the Examiner has not adequately shown the legal basis for the
“extra-solution activity” test that the rejection relies on; the machine-or-
transformation test has in any event been discredited as the definitive test of
patent eligibility; and the Examiner has not addressed the currently
controlling case law interpreting § 101. We conclude that the Examiner has
not carried the initial burden of showing that the method of claims 16, 18,
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and 19 is nonstatutory subject matter under 35 U.S.C. § 101. See In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”).
III.
Issue
The Examiner has rejected claims 16, 18, and 19 under 35 U.S.C.
§ 103(a) as obvious based on Kiro and Feller (Answer 8). The Examiner
finds that Kiro discloses “conducting an oral examination using a tongue
depressor having images on one or both sides of the blade” (id.). The
Examiner also finds that, while Kiro’s tongue depressor is designed to hold a
lollipop, it is capable of being used without a lollipop (id.). The Examiner
finds that Feller “teaches that a child can be allowed to select their own
unique tongue depressor to empower and involve them and that a
conversation pertaining to the tongue depressor can take place in order to
open up communication between the child and doctor” (id.). The Examiner
concludes that it would have been obvious to modify Kiro “to allow the
child to select their own unique depressor and to have a conversation based
on the tongue depressor both to involve and empower the child and to open
up communication between the child and the doctor” (id.).
Appellants contend that Kiro does not disclose using its tongue
depressor without a lollipop (Appeal Br. 21) and that, “without the lollipop,
the device described in Kiro would have a long slit or hole in the middle of
it. The present invention contains no indentations or holes.” (Id. at 22.)
Appellants also contend that Feller “does not teach the doctor using a
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conversation pertaining to the tongue depressor to open up communication
between the child and doctor” (id.). Finally, Appellants rely on evidence of
secondary considerations to rebut any prima facie case of obviousness (id. at
22-23).
The issues with respect to this rejection are:
Does the evidence of record support the Examiner’s conclusion that
Kiro and Feller would have made the method of claim 16 prima facie
obvious?
If so, have Appellants provided evidence of nonobviousness that,
when weighed with the evidence of obviousness, shows that the claimed
method would not have been obvious?
Findings of Fact – Prima facie Obviousness
1. Kiro discloses “a tongue depressor comprising a blade for
restraining the tongue of a patient . . . and a holder for receiving the stick
portion of a lollipop, the holder being detachably connected to one end of
the blade” (Kiro, col. 1, ll. 63-67).
2. Kiro discloses that “[b]lade 12 has a similar shape and size as that
of a conventional tongue depressor” (id. at col. 2, ll. 30-31) and that
“information, such as printing and/or figures can be imprinted, by stamping
or by other means, onto one or both surfaces of blade 12” (id. at col. 2,
ll. 35-37).
3. Kiro discloses an embodiment in which, “at one end of blade 12, is
a slot 22 running from one end of blade 12 towards the opposite end of blade
12, . . . to slidably accommodate an elongated member of [sic, or?] holder 14
which is inserted therein” (id. at col. 2, ll. 39-43).
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4. Kiro discloses “[a]nother embodiment [that] includes a blade with
neither a slot nor a groove . . . [and] the holder includes a clip to allow the
holder to be removably fastened to the blade” (id. at col. 2, ll. 47-49).
5. Feller discloses a “candy-tongue depressor device” comprising a
nonedible stick with a thin layer of candy covering one end (Feller, col. 1,
ll. 57-66).
6. Feller discloses that its tongue depressor can also include a
wrapper (id. at col. 2, ll. 1-2) and the “color of the wrapper may match the
candy flavor inside, e.g., purple for a grape flavored candy layer” (id. at col.
6, ll. 15-16).
7. Feller discloses that its tongue depressor “empowers pediatric
patients by permitting them to select the color and flavor of candy tongue
depressor” (id. at col. 6, ll. 50-51) and that “[b]y being permitted to chose
[sic] the color and flavor of his or her Tasty Tongue Depressor, the child is
given a sense of control and ownership” (id. at col. 6, ll. 53-56).
8. Feller discloses that “[b]y facilitating communication between the
doctor and patient, it makes for a more thorough physical examination. A
brief amount of time is used up-front in the examination period to pleasantly
discuss the choice of candy rather than being unpleasantly wasted trying to
coerce the child’s mouth open.” (Id. at col. 6, ll. 59-64.)
9. Feller discloses that its tongue depressor “sets the stage for a
discussion of childhood nutrition and the place of candy in a healthful diet”
(id. at col. 7, ll. 6-7).
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10. Feller discloses that “[s]ince the child is involved in the selection
of his or her Tasty Tongue Depressor, which (s)he can keep and eat, (s)he is
more likely to cooperate with the examination” (id. at col. 7, ll. 25-28).
11. Feller discloses that its tongue depressor “enables the physician or
other practitioner to immediately reward, and thus reinforce, the child for
cooperative behavior” (id. at col. 6, l. 66 to col. 7, l. 1).
Principles of Law – Prima facie Obviousness
“If a person of ordinary skill can implement a predictable variation [of
a known work], § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).
“[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421.
Analysis – Prima facie Obviousness
We agree with the Examiner that the method of claim 16 would have
been prima facie obvious based on Kiro and Feller. Kiro discloses a tongue
depressor that can be used to hold a lollipop (FF 1) and that can have an
image printed on one or both sides (FF 2). Feller discloses that letting a
child choose his or her own tongue depressor, based on color or flavor, gives
the child a sense of control (FF 7) and makes the child more likely to
cooperate in an oral examination (FF 10). Feller also discloses using the
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choice of tongue depressor as a basis for communication (FF 8) and to open
a discussion of nutrition and diet (FF 9).
Thus, it would have been obvious to a person of ordinary skill in the
art to use Kiro’s image-imprinted tongue depressor in the manner disclosed
by Feller – by offering a pediatric patient a choice of different tongue
depressors, allowing the patient to choose his or her own tongue depressor,
and using the choice as a basis for conversation with the patient before and
while conducting an oral examination – in order to make the patient more
likely to cooperate.
Appellants argue that Kiro’s “specification and drawings do not
indicate that the tongue depressor is ever expected to function without the
lollipop” (Appeal Br. 21) and that “Kiro does not . . . state that the lollipop
tongue depressor can be used without the lollipop” (id.), as found by the
Examiner. Similarly, Appellants argue that Kiro and Feller “require the use
of candy or other flavorings and thus teach away from the present invention”
(id. at 22).
These arguments are not persuasive. First, Kiro describes its tongue
depressor as having a blade with “a similar shape and size as that of a
conventional tongue depressor” (FF 2). Kiro’s tongue depressor therefore
reasonably appears to be capable of use without a lollipop, and Appellants
have provided no persuasive reason for concluding that it would not have
been obvious to omit the lollipop when it was not needed to obtain the
patient’s cooperation. Second, the claim only requires that the “blade is not
coated with flavor” (claim 16), and even when a lollipop is attached to the
blade of Kiro’s tongue depressor the blade remains uncoated.
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Appellants also argue that Feller “merely states the doctor may enter
into a discussion about nutrition (see, e.g., col. 7, lines 6-14) and does not
teach the doctor using a conversation pertaining to the tongue depressor to
open up communication between the child and doctor” (Appeal Br. 22).
This argument is also unpersuasive. Feller expressly describes
“facilitating communication between the doctor and patient” by “pleasantly
discuss[ing] the choice of candy” (FF 8). Feller therefore suggests using a
conversation pertaining to the (candy-coated) tongue depressor to open up
communication. In any event, for a pediatrician to choose that topic for
conversation with his patient is a matter that is well within the “inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418.
Appellants also argue that “without the lollipop, the device described
in Kiro would have a long slit or hole in the middle of it. The present
invention contains no indentations or holes and claims 16, 18 and 19
specifically disclaim such features.” (Appeal Br. 22.)
This argument is also unpersuasive. First, only claim 19 requires the
tongue depressor to lack indentations or holes; claims 16 and 18 do not
include this limitation. Second, Kiro expressly discloses an embodiment of
its tongue depressor that “includes a blade with neither a slot nor a groove”
(FF 4) and instead includes a clip on the lollipop holder to fasten it to the
blade. This embodiment meets the additional limitation of claim 19.
Finally, Appellants argue that they have provided objective evidence
of nonobviousness that overcomes any prima facie case of obviousness. We
therefore turn to Appellants’ proffered evidence.
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Findings of Fact – Secondary Considerations
12. Appellants have properly submitted three evidentiary
declarations: declarations of Catherine Drogin submitted on Nov. 18, 2005,
and April 7, 2010 (“11/05 Drogin Declaration” and “4/10 Drogin
Declaration,” respectively) and a declaration of Lewis Kass submitted on
Nov. 18, 2005 (“Kass Declaration”).5
13. The 11/05 Drogin Declaration describes “a direct mail marketing
campaign targeting 1,250 pediatricians and pediatric dentists” (Appeal Br.
32); Ms. Drogin declared that she “can positively attribute 40 sales in 9
states to this campaign” (id. at 33).
14. Ms. Drogin declared that the 3.2% redemption rate resulting from
the direct mail campaign “is considered to be a very successful
performance” based on her 15-year experience in the marketing industry
(id.).
15. Ms. Drogin declared that the commercial embodiments of the
claimed tongue depressors (“FunDepressors”) have been featured in the New
Product sections of six trade publications and have “received coverage on
network television and radio” (id.).
16. Ms. Drogin declared that “the amount of press FunDepressors
have received . . . demonstrates strong evidence of commercial success” (id.
at 34).

5 The Evidence Appendix to the Appeal Brief also includes a declaration of
Catherine Drogin dated Dec. 14, 2010, which was first submitted at the same
time as the Appeal Brief. This declaration does not satisfy the requirements
of 37 C.F.R. § 41.33(d)(1) and therefore is not properly part of the record on
appeal. See 37 C.F.R. § 41.33(d)(2). We have not considered it.
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17. Ms. Drogin declared that “we contacted approximately a dozen
distributors” and that “all have either signed contracts with us, initiated the
contract procedure, are test marketing the product among their sales
representatives, or are waiting for us to receive our next inventory shipment
. . . before placing their orders” (id.).
18. Exhibit C attached to the 11/05 Drogin Declaration shows
“Distributor Status” (Appeal Br. 56).
19. Exhibit C shows that SmileMakers “Ordered 216 Variety Jars”
(id.).
20. Exhibit C does not indicate sales to any of the other 12
distributors listed, although 7 indicate a “Verbal agreement to place order
upon arrival of inventory” (id. at 56-57).
21. Ms. Drogin declared that she “believe[s] that FunDepressors have
achieved commercial success, as evidenced by the positive response rate
generated by the direct mail campaign, the quantity and nature of placements
achieved in our public relations campaign, and demonstrated interest and
commitment to carry FunDepressors resulting from our sales efforts with
distributors” (id. at 34).
22. The 4/10 Drogin Declaration provides evidence that the “success
of the invention cannot be credited to [Ms. Drogin’s] marketing skills alone”
(Appeal Br. 61).
23. Ms. Drogin declared that “[i]n 2005, Henry Schein and
PSS/World Medical, the nation’s largest distributors of medical supplies to
physician offices, began distributing FunDepressors®. . . . FunDepressors®
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has also been added to the roster of several regional and/or niche medical
supply distributors.” (Id.)
24. Ms. Drogin declared that “[w]ith almost no advertising and
marketing budget, FunDepressors® continue to be carried by distributors
and continue to be purchased by physicians throughout the country” (id.).
25. Ms. Drogin declared that “[i]n 2008, Business Week chose to
include FunDepressors® in their ‘Most Promising Start-Ups’ feature” (id. at
62).
26. Ms. Drogin declared that “[d]uring the same time that
FunDepressors® became a success, [she] had several failed attempts at
introducing and marketing new products,” and cited two examples (id.).
27. Dr. Kass declared that he uses FunDepressors® and that he “did
not realize how valuable and functional they would turn out to be” (Appeal
Br. 58).
28. Dr. Kass declared that FunDepressors® “break[ ] down
doctor/patient barriers and allow[ ] for easy communication” (id.).
29. Dr. Kass declared that the “printed tongue depressors serve the
very useful purpose of distracting young patients. . . . Suddenly,
uncooperative patients are now willing to cooperate with the examination.”
(Id. at 59.)
30. Dr. Kass declared that “[o]ne very unexpected use of the printed
tongue depressors is that they create an opportunity for young patients to
feel a sense of control. . . . Allowing young patients to choose which printed
tongue depressor they want to be used on them puts the patients at ease,
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helps them feel they are taking an active part in the procedure, and reduces
anxiety.” (Id.)
31. Dr. Kass declared that “[s]ince the printed tongue depressors are
so successful in distracting, entertaining and reducing anxiety of my
patients, they serve the invaluable function of saving me time during the
day” (id.).
32. Dr. Kass concluded that he “would never have expected them to
serve so many important and valuable functions in [his] practice” (id. at 60).
Principles of Law – Secondary Considerations
“[T]he PTO lacks the means or resources to gather evidence which
supports or refutes the applicant’s assertion that the sales constitute
commercial success. Consequently, the PTO must rely upon the applicant to
provide hard evidence of commercial success.” In re Huang, 100 F.3d 135,
139 (Fed. Cir. 1996).
“Although sales figures coupled with market data provide stronger
evidence of commercial success, sales figures alone are also evidence of
commercial success.” Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d
1353, 1361 (Fed. Cir. 1999).
However, “evidence related solely to the number of units sold
provides a very weak showing of commercial success, if any.” In re Huang,
100 F.3d at 140.
“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
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person of ordinary skill in the relevant art would have found surprising or
unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Analysis – Secondary Considerations
We conclude that Appellants’ evidence of secondary considerations,
when weighed with the evidence supporting the prima facie case, is
insufficient to show that the claimed invention would not have been obvious.
Appellants rely on the Drogin Declarations as evidence of commercial
success, and the Kass Declaration as evidence of unexpected results (Appeal
Br. 23). The Declarations, however, provide weak evidence, at best, of
nonobviousness.
The Kass Declaration shows that Dr. Kass, personally, was surprised
that printed tongue depressors are as useful as they are, in facilitating
doctor/patient communication (FF 28), distracting young patients (FF 29),
allowing young patients a sense of control (FF 30), and saving him time
during examinations (FF 31). Unexpected results, however, are judged from
the perspective of a person of ordinary skill in the art, In re Soni, 54 F.3d at
750, by comparison to the closest prior art, In re Baxter-Travenol Labs., 952
F.2d at 392.
Here, Feller would have led those skilled in the art to expect just the
type of results that Dr. Kass observed. Feller discloses a similar product –
tongue depressors of different colors and flavors (FF 6) – and discloses that
allowing a child to choose his or her own tongue depressor “give[s] a sense
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of control” (FF 7), “facilitat[es] communication between the doctor and
patient” (FF 8), makes children “more likely to cooperate with the
examination” (FF 10), and allows “a brief amount of time” for discussion to
substitute for time “unpleasantly wasted” in coercion (FF 8). Appellants
have not persuasively explained why a skilled worker would not have
expected results similar to those described by Feller when a child is allowed
to choose a tongue depressor based on its appearance rather than its flavor.
The Drogin Declarations likewise provide at best weak evidence of
commercial success. The 11/05 Drogin Declaration provides evidence of 40
sales resulting from a direct marketing campaign (FF 13) and one sale of 216
units to a distributor (FF 19). The 4/10 Drogin Declaration states that two
distributors began distributing FunDepressors® in 2005 and that they are also
carried by several regional or niche distributors (FF 23), but does not
provide evidence of any additional sales.
The Drogin Declarations also provide evidence that FunDepressors®
have received some press coverage, in the form of listings in “New Product”
sections (FF 15), TV and radio coverage (FF 15), and inclusion in a “Most
Promising Start-Ups” feature (FF 25). The Drogin Declarations, however,
do not provide evidence that the press coverage resulted in additional sales.
Thus, the evidence of record shows only 41 actual sales (including one sale
of 216 units) between 2005 and 2010. We conclude that Appellants have
not provided the “hard evidence of commercial success,” Huang, 100 F.3d at
140, that is required.

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Conclusion of Law
The evidence provided by Kiro and Feller amply demonstrates that the
method of claim 16 would have been obvious to a person of ordinary skill in
the art. Appellants’ declarations are entitled to little weight as evidence of
nonobviousness. The preponderance of the evidence on the record therefore
supports the Examiner’s rejection of claims 16 and 19 under 35 U.S.C.
§ 103(a). Claim 18 was not argued separately and therefore falls with claim
16. 37 C.F.R. § 41.37(c)(1)(vii).
IV.
Issue
The Examiner has rejected claims 1-12, 14, and 15 under 35 U.S.C.
§ 103(a) as obvious based on Chen and Esker (Answer 6). The Examiner
finds that Chen discloses a tongue depressor, but not one including an
ornamental image (id.). The Examiner finds that Esker discloses “a similar
device having decorative images . . . to make the device attractive and
entertaining” (id.) and concludes that it would have been obvious to provide
Chen’s tongue depressor with decorative images to make it attractive and
entertaining (id.).
Appellants contend that the products disclosed by Chen and Esker are
not analogous art (Appeal Br. 17-18). Appellants also argue that the images
on the claimed device are not merely decorative but serve a functional
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purpose of “allow[ing] the doctor to obtain the patient’s cooperation during
an examination” (id. at 19).6
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the claimed product would
have been obvious based on Chen and Esker?
Additional Findings of Fact
33. The Examiner finds, and Appellants agree, that Chen discloses a
tongue depressor (Answer 6, Appeal Br. 17).
34. Esker discloses a handle that is “particularly, but not exclusively,
useful as a popsicle stick” (Esker, col. 1, ll. 7-8).
35. Esker states that “[a]n ordinary everyday popsicle stick is
typically an elongated flat piece of wood which has rounded ends. . . . After
use, however, the popsicle stick is just another short little stick with no
uniqueness or attractiveness to speak of.” (Id. at col. 1, ll. 20-32.)
36. Esker discloses a “device for holding a food product [that]
includes a stick-like support structure” (id. at col. 1, ll. 66-67).
37. Esker disclose that “[i]n addition to the support structure, the
device . . . includes a multi-color design which is affixed to the surface, or
surfaces, of the support structure . . . and is composed of biocompatible
inks” (id. at col. 2, ll. 25-30).

6 Appellants also rely on their objective evidence of nonobviousness to
overcome this rejection, but for the reasons discussed above in regard to
claims 16, 18, and 19, the evidence is entitled to little weight as a showing of
nonobviousness.
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20
38. Esker discloses that the design “is preferably an eye-catching,
attractive, and entertaining visual presentation” (id. at col. 2, ll. 31-32).
39. Esker discloses that the design can “include[ ] fish, stars, arrows,
stick figures, and various fruits” (id. at col. 4, ll. 5-6).
40. Esker discloses that after the device is used to support a food
product, it “may be suitable for use as a collectible or tradable item” (id. at
col. 2, ll. 35-36).
Analysis
We agree with the Examiner that the product of claim 11 would have
been obvious based on Chen and Esker. Chen discloses a tongue depressor,
and Esker discloses that adding a multi-color design to a popsicle stick can
provide an attractive and entertaining visual presentation (FF 38) and make
the popsicle stick suitable for collecting or trading (FF 40). Based on these
teachings, it would have been obvious to add a multi-color design to Chen’s
tongue depressor, in order to make it attractive and entertaining and to make
it suitable for collecting or trading.
Appellants argue that “a tongue depressor and food product handle are
not analogous arts” (Appeal Br. 17). However, Appellants concede that
“standard POPSICLE® sticks and some tongue depressors (in particular,
infant size tongue depressors and, based on general shape, junior size tongue
depressors) are virtually indistinguishable in appearance” (id. at 23). Thus,
we are not persuaded that the references are nonanalogous art such that a
person of ordinary skill in the art would not have considered combining their
teachings.
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Appellants also argue that the image(s) on the claimed device serve a
functional purpose, in allowing a doctor to secure a patient’s cooperation
(Appeal Br. 19). Appellants argue that “the functional purpose is new and
nonobvious because the prior art tongue depressors do not use printed
images as a means to acquire additional information about the patient” (id. at
20).
This argument is also unpersuasive. “Where . . . 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.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(footnote omitted).
Here, the claimed device has precisely the same functional
relationship between the substrate and image as Esker’s device has – the
substrate has no relationship with the image other than to support it.
Whether Appellants intend the claimed device to be used in a particular way
is not germane to its patentability. “[T]he patentability of apparatus . . .
claims depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002). Similarly, prior art references will support a
rejection for obviousness even if they suggest combining their teachings for
a reason that differs from Appellants’. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419-20 (2007) (“In determining whether the subject matter of
a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem known in the
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22
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
product of claim 11 would have been obvious based on Chen and Esker.
Claims 1-10, 12, 14, and 15 were not argued separately and therefore fall
with claim 11. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We reverse the rejections of claims 16, 18, and 19 under 35 U.S.C.
§§ 101 and 112, second paragraph.
We affirm the rejection of 1-12, 14, and 15 under 35 U.S.C. § 103(a)
based on Chen and Esker and the rejection of claims 16, 18, and 19 under 35
U.S.C. § 103(a) based on Kiro and Feller.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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