Ex Parte Fox-Lovell

Board of Patent Appeals and Interferences

Mar 21, 2007

09817826 (B.P.A.I. Mar. 21, 2007)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHEILA D. FOX-LOVELL
____________

Appeal 2007-0765
Application 09/817,826
Technology Center 3700
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Decided: March 21, 2007
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Before ANITA PELLMAN GROSS, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

GROSS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Fox-Lovell (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's rejection of claims 2 through 11 and 15. Claims 12 through 14
have been withdrawn from consideration, and claim 1 has been canceled.
Appeal 2007-0765
Application 09/817,826

Appellant's invention relates to a customer registration system that
improves confidentiality of the customer at the time of registration. Claim
15 is illustrative of the claimed invention, and it reads as follows:
15. A customer registration system for improving the protection of
the confidentiality of information provided by a customer at the time of
registration, said system comprising:

at least one first substrate locatable at a first location;

a plurality of registration labels detachably adhered to said first
substrate, each of said labels having one of a series of first indicia
identifying the position of each of said labels in an uninterrupted sequence,
each of said labels further having at least one field within which the
information is to be entered in writing by the customer, said first location
being a location sufficiently accessible to the customer to permit the
customer to view said labels detachably adhered to said first substrate and to
enter information in said field of one of said labels while said one of said
labels remains detachably adhered to said first substrate, and

a registration log having at least one second substrate, said second
substrate having a plurality of label-retaining spaces and a series of second
indicia, said second indicia corresponding to said first indicia to associate
each one of said spaces with a respective corresponding one of said labels
according to said sequence, each said one of said spaces including an area to
which said respective corresponding one of said labels may be adhered after
the information has been entered in writing in said field by the customer and
said corresponding one of said labels has been detached from said first
substrate so that said labels adhered to said second substrate provide an
original record of said writing, said second substrate being locatable at a
second location at a time when said first substrate is located at said first
location, said second location being a location at which the entered
information on any said labels adhered to said second substrate is out of
view of the customer in order to protect the confidentiality of the
information.

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Appeal 2007-0765
Application 09/817,826

The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Baldwin US 4,907,904 Mar. 13, 1990
Jackson US 5,795,090 Aug. 18, 1998

Claims 2 through 11 and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Baldwin in view of Jackson.
We refer to the Examiner's Answer (mailed July 6, 2004) and to
Appellant's Brief (filed May 12, 2004) for the respective arguments.

SUMMARY OF DECISION
As a consequence of our review, we will reverse the obviousness
rejection of claims 2 through 11 and 15.

OPINION
Appellant contends (Br. 17) that the Examiner "dismisses the
patentable significance of the recited 'first indicia identifying the position of
each of said labels in an interrupted sequence…' and the recited 'second
indicia corresponding to said first indicia….'" Appellant argues (Br. 17) that
the first and second indicia in independent claim 15 "are functionally related
to their respective substrates." Further, Appellant contends (Br. 18) that
neither reference discloses or suggests second indicia on a second substrate
that corresponds with first indicia on a first substrate. We agree with
Appellant.
The Examiner (Answer 4) associates Baldwin's retaining board 20 and
substrate 30 (in book 10) with the claimed first and second substrates,
respectively. The Examiner (Answer 4) refers to the labels that are "parked"
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Appeal 2007-0765
Application 09/817,826

on board 20 (see col. 2, ll. 64-66) as the labels adhered to the first substrate.
The Examiner asserts (Answer 5) that "Baldwin discloses the claimed
invention except for the specific arrangement and/or content of indicia . . .
set forth in the claim(s)." The Examiner concludes (Answer 5) that
providing the claimed indicia would have been obvious "since it would only
depend on the intended use of the assembly and the desired information to
be displayed." The Examiner further characterizes the indicia as printed
matter that is not functionally related to the substrate and, therefore, asserts
that it cannot distinguish the invention from the prior art in terms of
patentability.
Claim 15, in pertinent part, recites "each of said labels having one of a
series of first indicia identifying the position of each of said labels in an
uninterrupted sequence" and "a plurality of label-retaining spaces and a
series of second indicia, said second indicia corresponding to said first
indicia to associate each one of said spaces with a respective corresponding
one of said labels according to said sequence." The indicia define the
locations of the labels on the substrates and function to maintain the
chronological order in which the labels were used. The indicia are very
much functionally related to the labels and the substrates. Thus, the
Examiner erred in characterizing the indicia as non-functional descriptive
matter.
Additionally, the Examiner asserts (Answer 6) that Jackson discloses
first indicia identifying the position of each label in an uninterrupted
sequence. The Examiner, however, points to nothing that would suggest
corresponding second indicia. Further, we find no reason why one would
use first and second indicia as recited in the claims in the address book of
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Appeal 2007-0765
Application 09/817,826

Baldwin. The purpose of Baldwin's holding board 20 is to allow a user to
move labels around. Therefore, indicia identifying a certain position would
seem contrary to the teachings of Baldwin. Accordingly, the Examiner has
failed to establish a prima facie case of obviousness, and we cannot sustain
the rejection of claims 2 through 11 and 15.

ORDER
The decision of the Examiner rejecting claims 2 through 11 and 15
under 35 U.S.C. § 103 is reversed.
REVERSED

vsh

GRAY ROBINSON, P.A.
P.O. Box 2328
FT. LAUDERDALE, FL 33303-9998
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