Ex Parte GluckDownload PDFBoard of Patent Appeals and InterferencesFeb 23, 201110892865 (B.P.A.I. Feb. 23, 2011) Copy Citation 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. Appeal 2009-010358 Application 10/892,865 2 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 Claims 11-19, 29, 35, 36, and 38-45 have been withdrawn from consideration.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. Appeal 2009-010358 Application 10/892,865 3 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? Appeal 2009-010358 Application 10/892,865 4 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). Appeal 2009-010358 Application 10/892,865 5 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). Appeal 2009-010358 Application 10/892,865 6 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]. Appeal 2009-010358 Application 10/892,865 7 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 Appeal 2009-010358 Application 10/892,865 8 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. Appeal 2009-010358 Application 10/892,865 9 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. Appeal 2009-010358 Application 10/892,865 10 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. Appeal 2009-010358 Application 10/892,865 11 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. Appeal 2009-010358 Application 10/892,865 12 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. Appeal 2009-010358 Application 10/892,865 13 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. Appeal 2009-010358 Application 10/892,865 14 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 Copy with citationCopy as parenthetical citation