Ex Parte Epstein

Board of Patent Appeals and Interferences

Dec 31, 2003

09949327 (B.P.A.I. Dec. 31, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERIC W. EPSTEIN
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Appeal No. 2004-0089
Application No. 09/949,327
____________
ON BRIEF
_________________________
Before GARRIS, WARREN and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 4, which are all the claims pending in this application.
THE INVENTION
The invention relates to a combination of a greeting card and an envelope. The
greeting card contains at least two areas of different size, a larger size for displaying a
message and a smaller size for displaying a distinctive design. The envelope has an opening
which corresponds to the area of distinctive design. The claimed subject matter is
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adequately described in the following illustrative claim.
THE CLAIM
Claim1 is illustrative of appellant’s invention and is reproduced below:
1. In combination greeting card and envelope therefor, into which said card
is selectively positioned, the improvement comprising: said card having at least one
surface having a first area for displaying a message, and a second relatively smaller
area with a distinctive design positioned upon said second area; said envelope having
at least one wall having an opening corresponding in location and size to that of said
second area when said card is positioned within said envelope.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Lohnes 2,824,394 Feb. 25, 1958
Luftig 3,986,662 Oct. 19, 1976
Conn 4,245,775 Jan. 20, 1981
THE REJECTIONS

Claims 1 through 4 stand rejected under 35 U.S.C. §103(a) as being unpatentable
over Luftig in view of Lohnes and further in view of Conn.
OPINION
We have carefully considered all of the arguments advanced by the appellant and the
examiner and agree with the examiner for the reasons stated in the Answer and the reasons
herein that the rejection of the claims is well founded. Accordingly, we affirm both
rejections.
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As an initial matter, it is the appellant’s position that, “all the claims stand or fall
together.” See Brief, page 2. Accordingly, we select claim 1 as representative of the
claimed subject matter and limit our consideration thereto. See 37
CFR1.192(c)(7)(2003).
The Rejection under Section 103
The examiner proposes two alternative positions in the rejection of record. In the
first position, the only distinction between the primary reference to Luftig is in the term
“greeting.” See Answer, page 4. In an alternative position, the examiner considers it
obvious to the person having ordinary skill in the art to substitute a greeting card in place
of the accordion style letter of Luftig. Id. We sustain both positions.
Luftig is directed to an apparatus directed to a combination of a latter and an
envelope. See column 1, lines 4-8. We find that the combination contains addressee
information and a control number affixed to a letter. See column 1, lines 49-52. We find
that the envelope and letter combination are so constructed that an attention getting design
border is contiguous to the control number enclosed within the envelope. See column 1,
lines 55-61. We find that the envelope includes first and second windows. See column 1,
line 67 to column 2, line 1. We find a letter is provided with one area for addressee
information and a second area containing at least one number and a border area proximate
to the number. See column 2, lines 1-7. Two windows are present in the letter as
exemplified by numerals 28 for the first window and 30 for the second window. The
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letter having the first and second areas are so arranged as be visible through the first and
second window openings respectively. See column 6, lines 37-41, and column 7, lines
31-38. It is evident that the second opening may be smaller than the first opening. See
Figures 1 and 3. Luftig differs only from the claimed subject matter as being directed to a
business card as opposed to a greeting card.
As to the first theory of rejection that the only distinction between Luftig and the
claimed subject matter lies in the ultimate intended use of the card as a “greeting” card,
what is required to establish is “the existence of differences between the appealed claims
and the prior art sufficient to establish patentability.” See In re Gulack, 703 F.2d 1381,
1386, 217 USPQ 401, 404 (Fed. Cir. 1983). As stated therein”the critical question is
whether there exists any new and unobvious functional relationship between the printed
matter and the substrate. Id. Stated otherwise whether the term “greeting” used in the
preamble to the claim creates a new and unobvious functional relationship between the
printed matter and the substrate.
On the record before us, the printed subject matter utilized by Luftig displays a
message in the same manner as in the card of the claimed subject matter. Similarly, the
smaller area of Luftig contains a distinctive design, i.e., a number or sequence of numbers
surrounded by a decorative border constitutes a distinctive design. Whether the distinctive
design is something other than a number is irrelevant to the critical question before us, as
regardless of the specific distinctive design before us, the functional relationship between
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the printed matter ands the substrate remains the same, providing a distinctive design or
visual pattern associated with the letter. These critical features of the invention are
disclosed by Luftig to the same extent as that required by the claimed subject matter.
Accordingly, we sustain the rejection of the examiner under the first theory of rejection.
As for the second theory of rejection relying on the Lohnes reference for its
disclosure of an accordion folded greeting card, we note that a substantial portion of
greeting cards such as end of calendar year holiday greeting cards is customarily mailed by
businesses to their customers. We see no reason why a business would not use the same
customer base in the same manner as Luftig in issuing holiday greeting cards to their
customers, either identifying them by number or other distinctive designs in the manner
disclosed by Luftig and as required by the claimed subject matter.
Based upon the above evidentiary findings, we conclude that it would have been
obvious to one of ordinary skill in the art to have utilized the folding accordion greeting
card of Lohnes to replace the message in the card of Luftig. Accordingly, we affirm the
rejections over Luftig in view of Lohnes and further in view of Conn.
A discussion of the Conn reference is not needed in reaching our decision.
DECISION
The rejection of claims 1 through 4 under 35 U.S.C. §103(a) as being
unpatentable over Luftig in view of Lohnes and further in view of Conn is affirmed.
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The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
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)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PL/hh
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CHARLES E. TEMKO
22 MARION ROAD
WESTPORT, CT 06880