Ex Parte Gluck

Board of Patent Appeals and Interferences

Feb 23, 2011

10892865 (B.P.A.I. Feb. 23, 2011)

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.
10/892,865 07/16/2004 Adrian Gluck M044 P01082-US 3482
3017 7590 02/23/2011
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
ROSS, DANA
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
02/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ADRIAN GLUCK
____________

Appeal 2009-010358
Application 10/892,865
Technology Center 3700
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/892,865

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STATEMENT OF THE CASE
Adrian Gluck (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-10, 20-28, 30-34 and 37. Claims
11-19, 29, 35, 36, and 38-45 have been withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention relates generally to collectible
memorabilia items. Spec. 1, para. [02]. Claim 30, reproduced below, is
representative of the subject matter on appeal.
30. A consumer item including an associated memorabilia item
affixed thereto, said consumer item comprising:
a carrier item, said carrier item having a display area
thereon;
a memorabilia item affixed to said display area on said
carrier item.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Rejection of claims 1, 2, 9, 20, 21, 30, 31, and 34 under 35 U.S.C.
§ 102(b) as anticipated by Hill (US 4,610,102 issued September 9, 1986).
2. Rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by
Grotzner (US 6,358,607 B1 issued March 19, 2002).
3. Rejection of claims 10 and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Hill.
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4. Rejection of claims 4-8, 23-26, 32, and 33 under 35 U.S.C. § 103(a) as
being unpatentable over Hill and Holmgren (US 5,655,392 issued August
12, 1997).
5. Rejection of claims 20-22 under 35 U.S.C. § 103(a) as being
unpatentable over Grotzner.
6. Rejection of claim 27 under 35 U.S.C. § 103(a) as being unpatentable
over Grotzner.
7. Rejection of claim 28 under 35 U.S.C. § 103(a) as being unpatentable
over Grotzner and Gibbs (US 7,046,828 B1 issued May 16, 2006).
ISSUES
Does Hill disclose a memorabilia item as called for in independent
claim 30?
Does Grotzner disclose a memorabilia item as called for in
independent claim 1?
Does Grotzner disclose a removable memorabilia seal as called for in
independent claim 1?
Does claim 37 call for a memorabilia seal that conceals a memorabilia
item until the memorabilia seal is removed by the consumer after purchase
of the item?
Does Holmgren disclose a memorabilia shield that prevents access to
the memorabilia seal as called for in claims 4, 23, 32?
Does the proposed combination of Grotzner and Gibbs disclose a
decoy memorabilia item and an authentic memorabilia item as called for in
claim 28?
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ANALYSIS
Rejection of claims 1, 2, 9, 20, 21, 30, 31, and 34 under 35 U.S.C. § 102(b)
as anticipated by Hill
Appellant argues claims 1, 2, 9, 20, 21, 30, 31, and 34 as a group. Br.
10-13. We select claim 30 as the representative claim, and claims 1, 2, 9,
20, 21, 31, and 34 stand or fall with claim 30. See 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner’s determination that independent claim 30 is
anticipated by Hill is based in part on the finding that Hill discloses a
memorabilia item (a purchaser’s name carried on label 19). Ans. 4, 12.
Appellant argues that a label carrying a purchaser’s name as disclosed
in Hill is not a memorabilia item as called for in independent claim 30
because the name of an ordinary shoe owner (the purchaser) is not connected
with an historic event, culture, or entertainment.2 Br. 10-12. Thus,
Appellant makes no structural distinction between claim 30 and Hill.
Rather, Appellant distinguishes the subject matter of claim 30 from the prior
art based solely on the content of the memorabilia item.
Independent claim 30 is directed to a consumer item that includes a
memorabilia item affixed to the display area of a carrier item. Appellant’s
Specification describes that a memorabilia item is “any type sports,

2 Appellant also argues that Hill does not include anti-tamper features and
that Hill does not “create a feeling of chance in the mind of a consumer.”
Br. 11-13. These arguments are unpersuasive because they are not
commensurate in scope with claim 30 (i.e. claim 30 contains no such
limitations).
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entertainment or historic memorabilia item that may be considered desirable
for a consumer to acquire.” Spec. 9, para. [15]. Appellant’s Specification
describes illustrative examples of memorabilia items as including: machine-
imprinted or authentic handwritten signatures of famous sports, historic or
entertainment personalities such as athletes, actors, politicians, animated
characters, persons who have accomplished particular achievements,
imprinted logo insignia, and a redeemable certificate 25a. Spec. 9-10, para.
[15]; 15, para. [29]; fig. 6B. Appellant’s Specification further describes that
memorabilia items may be either authentic or decoy memorabilia items.
Spec. 10-11, paras. [19]-[20]; 11, para. [22]. A person or ordinary skill in
the art would interpret a memorabilia item to include a decoy memorabilia
item or a redeemable certificate, which are items that are not authentically
connected to a historic event, culture or entertainment. Giving memorabilia
item the broadest reasonable interpretation consistent with Appellant’s
Specification, a memorabilia item includes items that are not authentically
connected to a historic event, culture, or entertainment. Thus, in light of
Appellant’s Specification,3 we find that a person of ordinary skill in the art
would understand that a memorabilia item, as called for in independent

3 To the extent that the definitions argued by Appellant (Br. 11) and
provided by the Examiner (Ans. 12) are inconsistent with the definition
provided in Appellant’s Specification, we rely upon the definition in
Appellant’s Specification. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d
1335, 1346 (Fed. Cir. 1998) (when the intrinsic record is clear, we do not
give weight to an inconsistent dictionary definition).
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claim 30, includes descriptive material (e.g., printed matter on a substrate,
such as a handwritten signature or a redeemable certificate).
The purpose of making the memorabilia item desirable for a consumer
to acquire4 does not create a functional relationship between the printed
matter and the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983) (in dealing with printed matter, “the critical question is whether there
exists any new and unobvious functional relationship between the printed
matter and the substrate”). We fail to see, and Appellant has failed to
articulate, a functional relationship between the content of the memorabilia
item (i.e., the printed matter) and the substrate of the memorabilia item of
claim 30.
Thus, Appellant’s attempt to distinguish the subject matter of claim 30
from Hill based upon the content of the memorabilia item is unpersuasive
for two reasons. First, because the content of the memorabilia item is non-
functional descriptive material, it cannot serve to distinguish over the prior
art. Second, because the claimed memorabilia item may include a decoy
memorabilia item that is not authentically connected to a historic event,
culture, or entertainment, Hill anticipates claim 30 because the name of an
ordinary shoe owner as disclosed by Hill satisfies the broadest reasonable
interpretation of a memorabilia item.
We thus affirm the rejection of independent claim 30 under 35 U.S.C.
§ 102(b) as anticipated by Hill. Claims 1, 2, 9, 20, 21, 31, and 34 fall with
claim 30.

4 See Spec. 9, para. [15].
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Rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by Grotzner
Appellant argues claims 1-3 as a group. Br. 13-15. We select claim 1
as the representative claim, and claims 2 and 3 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 1 is directed to a consumer item that includes a
memorabilia item affixed to the display area of a carrier item. We interpret
the memorabilia item of independent claim 1, like that of independent claim
30, supra, as non-functional descriptive material.
The Examiner found that Grotzner discloses a memorabilia seal
(scratch off layer 5) that conceals a memorabilia item (information 2) that is
affixed to the display area of a carrier item (credit card). Ans. 5-6 (relying
upon Grotzner’s embodiment depicted in Figures 5a and 5b).
Appellant argues that Grotzner’s indicia positioned beneath an anti-
tamper seal is not memorabilia as called for in independent claim 1. Br. 13-
14. More specifically, Appellant attempts to distinguish the memorabilia
item of claim 1 from that of Grotzner by arguing that Appellant does not
know anyone who would consider a hologram on a credit card a
memorabilia item. Br. 14. This argument is unpersuasive for two reasons.
First, the Examiner found that Grotzner’s information 2 corresponds to the
claimed memorabilia item (Ans. 6) while the hologram referred to by
Appellant is Grotzner’s authentication mark 6 (Grotzner, col. 3, ll. 5-10; fig.
5a). Accordingly, Appellant has failed to address the rejection as articulated
by the Examiner. Second, because memorabilia, as called for in independent
claim 1, is non-functional descriptive material, Appellant’s attempts to
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distinguish the subject matter of claim 1 from Grotzner based upon that
descriptive material are unconvincing.
Appellant also argues that Grotzner lacks a removable memorabilia
seal as called for in claim 1 because Grotzner discloses that “when the film
over the hologram is tampered with it destroys the image-trapped there
beneath,” thus destroying the memorabilia item value and the purpose of the
invention. Br. 14-15. Appellant’s argument is unpersuasive because it
mischaracterizes the reference.
Grotzner discloses that information 2 is covered by a scratch layer 5,
which in turn is at least partially covered by an authentication mark 6 (e.g., a
hologram). Grotzner, col. 3, ll. 5-10; fig. 5a. In this configuration, if a
person attempts to access the information 2, the damage to scratch layer 5
and authentication mark 6 reveals the attempt to access the information 2.
Grotzner, col. 4, ll. 22-40; fig 5b. However, contrary to Appellant’s
assertion, Grotzner does not disclose that such damage to scratch layer 5 and
authentication mark 6 destroys information 2. Grotzner, passim. To the
contrary, Grotzner’s information 2 is made visible by removal of scratch
layer 5 and authentication mark 6. Grotzner, col. 1, ll. 5-8; col. 4, ll. 22-40;
fig. 5b (note portion of information 2 made visible by removal of scratch
layer 5 and authentication mark 6 without destroying information 2).
As such, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a) as obvious over Grotzner. Claims 2 and 3 fall with claim 1.
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Rejection of claims 10 and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Hill
Appellant argues claims 10 and 37 as a group. Br. 15-16. We select
claim 37 as the representative claim, and claim 10 stands or falls with claim
37. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 37 depends from claim 30 and
further recites “wherein said memorabilia item is a signature.”
The Examiner’s rejection of claim 37, like that of claim 30, supra,
relies in part on the finding that Hill discloses a memorabilia item (a
purchaser’s name carried on label 19). Ans. 7. Appellant repeats the
argument used against the rejection of claim 30 that a purchaser’s name
carried on label 19 as disclosed in Hill is not a memorabilia item.5 Br. 15-
16. For the reasons explained in the analysis of claim 30, supra, we also
find that argument unconvincing here. Claim 10 falls with claim 37.
Rejection of claims 4-8, 23-26, 32, and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Hill and Holmgren
Appellant asserts that Holmgren’s anti-theft device is not a
memorabilia shield as called for in claims 4, 23, and 32 because it does not
prevent access to the memorabilia seal. Br. 16-17.
Dependent claims 4, 23, and 32 each add the limitation of a
memorabilia shield that prevents access to the memorabilia seal. The
Examiner’s conclusion of obviousness is based in part on the finding that

5 Appellant also argues that Hill does not disclose an anti-tamper feature or a
memorabilia seal. Br. 15. We are unpersuaded by these arguments as claim
37 does not call for an anti-tamper feature or a memorabilia seal.
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Holmgren discloses a memorabilia shield (an anti-theft device) for use with
a pair of shoes that inherently prevents access to the memorabilia seal
because the anti-theft device triggers an alarm if not removed from shoes
before the shoes are taken out of the store. Ans. 8, 14-15. We disagree with
this finding.
Holmgren discloses an anti-theft device for a shoe that attaches by
straddling the edge of the opening for the insertion of the foot into the shoe.
Holmgren, col. 1, ll. 3-5; col. 4, ll. 29-38; fig. 4. When positioned over the
edge of the opening for insertion of a foot into the shoe, the anti-theft device
might physically prevent access to the memorabilia seal. However, this is
not necessarily the case, as the anti-theft device could also be positioned
over another portion of the edge of the shoe, e.g., on the side of the opening,
such that it would not necessarily prevent access to the memorabilia seal.
Further, while Holmgren’s anti-theft device will trigger an alarm if not
removed from the pair of shoes before the shoes are taken out of the store
(Holmgren, col. 4, ll. 18-28), this feature also will not necessarily prevent
access to the memorabilia seal. For example, the memorabilia shield could
be removed while still in the store without triggering Holmgren’s anti-theft
device alarm. The Examiner’s finding that Holmgren inherently discloses a
memorabilia shield is in error because Holmgren’s anti-theft device does not
necessarily prevent access to the memorabilia shield, as called for in claims
4, 23, and 32.
As such, we cannot sustain the rejection of claims 4, 23, and 32, or
their respective dependent claims 5-8, 24-26 and 33.
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Rejection of claims 20-22 under 35 U.S.C. § 103(a) as being unpatentable
over Grotzner
Appellant argues claims 20-22 as a group.6 Br. 17-19. We select
independent claim 20 as the representative claim, and claims 21 and 22 stand
or fall with claim 20. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that claim 20 “requires that there be a plurality of
carrier items wherein one carrier item includes a memorabilia item and the
remaining items are decoys.”7 Br. 17. Appellant’s argument is
unconvincing because it is not commensurate in scope with independent
claim 20. While Appellant’s Specification describes that from among a
plurality of carrier items one carrier item includes a memorabilia item and
the remaining items are decoys (Spec. 10-11, paras. [16]-[21]), this subject
matter is not called for in independent claim 20. Independent claim 20
contains no recitation of a decoy memorabilia item; rather, claim 27, which
depends from independent claim 20, adds the further limitation that a portion
of the memorabilia items are authentic and a portion are decoys. Thus, the
theory of claim differentiation also suggests that independent claim 20 does
not call for the memorabilia items to be divided into authentic and decoy
items.

6 The Examiner points out, and we agree, that while Appellant listed this
argument as applying to claims 32-33, Appellant intended to address claims
20-22. See Ans. 15.
7 Appellant also repeats the arguments used again the rejection of
independent claim 1 as anticipated by Grotzner. Br. 17-19. For the reasons
explained in the analysis of independent claim 1, supra, we find those
arguments are unconvincing here as well.
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Rejection of claim 27 under 35 U.S.C. § 103(a) as being unpatentable over
Grotzner
Appellant presents no arguments of error regarding this rejection
(Br. passim), and thus we summarily sustain this rejection. See In re Berger,
279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal).
Rejection of claim 28 under 35 U.S.C. § 103(a) as being unpatentable over
Grotzner and Gibbs
Claim 28 depends from claim 27, which depends in turn from
independent claim 20. Claim 28, by virtue of its dependence from claim 27,
includes the limitation that some of the memorabilia items are authentic and
some are decoys.
Appellant argues that Grotzner does not disclose a decoy memorabilia
item. App. Br. 198. Here again, Appellant makes no structural distinction
between claim 28 and the prior art, but rather attempts to distinguish over
the art based on non-functional descriptive material (i.e. the decoy
memorabilia item). As explained in the analysis of the rejection of claim 1
as anticipated by Grotzner, supra, we are unpersuaded by such an assertion.
Appellant also argues that Gibbs does not overcome the deficiencies
previously identified with respect to Grotzner. Br. 19. This argument is also
unpersuasive in that there are no deficiencies for Gibbs to overcome.9

8 Incorporating the argument at Appeal Brief 17.
9 See analysis of the rejection of claim 20, supra.
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As such, we sustain the rejection of claim 28.
CONCLUSIONS
Hill discloses a memorabilia item as called for in independent claim
30.
Grotzner discloses a memorabilia item as called for in independent
claim 1.
Grotzner discloses a removable memorabilia seal as called for in
independent claim 1.
Claim 37 does not call for a memorabilia seal that conceals a
memorabilia item until the memorabilia seal is removed by the consumer
after purchase of the item.
Holmgren does not disclose a memorabilia shield that prevents access
to the memorabilia seal as called for in claims 4, 23, 32.
The proposed combination of Grotzner and Gibbs discloses a decoy
memorabilia item and an authentic memorabilia item as called for in claim
28.
DECISION
The decision of the Examiner to reject claims 1, 2, 9, 20, 21, 30, 31,
and 34 under 35 U.S.C. § 102(b) as anticipated by Hill is AFFIRMED.
The decision of the Examiner to reject claims 1-3 under 35 U.S.C.
§ 102(b) as anticipated by Grotzner is AFFIRMED.
The decision of the Examiner to reject claims 10 and 37 under
35 U.S.C. § 103(a) as being unpatentable over Hill is AFFIRMED.
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The decision of the Examiner to reject claims 4-8, 23-26, 32, and 33
under 35 U.S.C. § 103(a) as being unpatentable over Hill and Holmgren is
REVERSED.
The decision of the Examiner to reject claims 20-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Grotzner is AFFIRMED.
The decision of the Examiner to reject claim 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Grotzner is AFFIRMED.
The decision of the Examiner to reject claim 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Grotzner and Gibbs is AFFIRMED.

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-IN-PART

nlk

BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE RI 02903