Ex Parte Gombar

Patent Trial and Appeal Board

Dec 18, 2013

11083438 (P.T.A.B. Dec. 18, 2013)

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.
11/083,438 03/17/2005 George J. Gombar GOMBAR-47232 8776
26252 7590 12/19/2013
KELLY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
12/19/2013 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 GEORGE J. GOMBAR
____________

Appeal 2011-011185
Application 11/083,438
Technology Center 3600
____________

Before: ANTON W. FETTING, MICHAEL W. KIM, and
THOMAS F. SMEGAL, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-201. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to “a method of advertising and distributing
health history kits useable in medical emergency situations, and which also
can be the vehicle of fundraising and promotions and/or community service
programs” (Spec., para. [0002], ll.12-14).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method for funding the creation and distribution
of an emergency health history kit to be referenced by medical
caregivers during a medical emergency, the method comprising
the steps of:
obtaining a sponsor who at least partially pays for the
creation and distribution of the emergency health history kit;
providing an envelope or a case having the sponsor’s
identifying indicia imprinted on the case or envelope, or on a
card disposed within the case or envelope so as to be viewable
therethrough;
providing at least one medical and emergency
information card disposed within the envelope or case to be
referenced by medical caregivers during an emergency to
determine appropriate medical care of an owner of the medical
and emergency information card, wherein the medical and
emergency information card includes written prompts and
spaces for personally identifying information and personal
medical information of the owner, including personal medical
history or medical condition information, medical insurance

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 4, 2011) and Reply Brief (“Reply Br.” filed June 23,
2011), and the Examiner’s Answer (“Ans.,” mailed April 26, 2011).
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information, allergy information, and medical care provider
information;
providing at least one redeemable coupon or printed offer
associated with the envelope or case; and
distributing the envelope or case with the at least one
medical and emergency information card and at least one
redeemable coupon or printed offer.

REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-11, 14, 15, and 17-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over North (US 5,992,888, iss. Nov. 30, 1999) and Pritchard
(US 4,491,725, iss. Jan. 1, 1985).
Claims 12, 13, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over North, Pritchard, and Official Notice, as evidenced by
Shipp (US 4,958,855, iss. Sep. 25, 1990).
We AFFIRM.
ANALYSIS
Statutory Subject Matter Rejection of Claims 1-20
Appellant contends that the Examiner erred in rejecting independent
claims 1, 7, and 12 under 35 U.S.C. § 101 because they are not directed to
abstract ideas (App. Br. 11-12). In contrast, the Examiner maintains that
independent process claims 1, 7, and 12 fail to satisfy either prong of the
machine-or-transformation test, because they are neither tied to a particular
machine nor involve some physical transformation (Ans. 3-4 and 10-11).
The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
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patent-eligible ‘process’ [under § 101].” Bilski v. Kappos, 130 S. Ct. 3218,
3227 (2010). Yet the Court explained that this test remains “a useful and
important clue [or] an investigative tool.” Id.
We are persuaded that the Examiner erred in rejecting independent
claims 1, 7, and 12 under 35 U.S.C. § 101 by Appellant’s arguments. Here,
the Examiner provides some analysis that claims 1, 7, and 12 fail to meet the
transformation prong. However, the Examiner has not provided sufficient
analysis as to the machine prong. Specifically, the Examiner has not
addressed the “envelope or case” or the “medical emergency information
card” disposed therein, which is subsequently distributed, as recited by the
independent claims. Based on the record before us, the Examiner has not
adequately established there to be an insufficient recitation of a machine or
apparatus such that the claims are nonetheless drawn to an abstract idea,
despite meeting the machine or transformation test on its face.
Moreover, even if claims 1, 7, and 12 were to meet the machine-or-
transformation test, we, of course, are mindful that the machine-or-
transformation test is not, but itself, determinative of whether an invention is
a patent-eligible process. See Bilski, 130 S. Ct. at 3227. Rather, other
factors that weigh for and against patent eligibility must be considered. See
Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1303
(2012) (the machine-or-transformation test does not “trump” the exclusions
to patentable subject matter set forth in Bilski). To that end, we find factors
in the record that would weigh for patent eligibility. For example, claims 1,
7, and 12 do not recite purely mental steps, i.e., steps that can be performed
in the human mind. Actions are required. Moreover, the claims do not
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merely describe an abstract idea or concept, as kits are created and
information cards are distributed.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1, 7, and 12 under 35 U.S.C. § 101. We also do not sustain the
Examiner’s rejection of claims 2-6, 8-11, and 13-20, which depend from
claims 1, 7, and 12, respectively.

Obviousness Rejection of Claims 1 and 2-4
We are not persuaded the Examiner erred in asserting that a
combination of North and Pritchard discloses or suggests “providing at least
one medical and emergency information card disposed within the envelope
or case to be referenced by medical caregivers during an emergency,” as
recited in independent claim 1 (App. Br. 13-18; Reply Br. 3-5). Appellant
asserts that the foldable record transaction paper of North does not disclose
the aforementioned limitation of independent claim 1, and that Pritchard
only discloses a card which must be swiped through an electronic reader to
access computerized health history (App. Br. 18), and does not disclose
placing the card in an envelope or case, as recited in independent claim 1
(App. Br. 21). Appellant’s assertion is misplaced, as Appellant argues North
and Pritchard individually, when the rejection is directed to a combination.
In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”) (citation omitted).
Specifically, North is cited for disclosing an envelope or case with a card
disposed within (col 5:26-36; see Figs. 3 and 9). Pritchard is cited for
disclosing a MEDICARD which includes medical and emergency printed on
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the surfaces of the card (col. 5:18-32; see Figs. 2 and 3). Thus, Appellant’s
argument that the foldable record transaction paper of North is not a medical
and emergency information card is not persuasive.
Appellant also asserts that the foldable record transaction paper of
North does not constitute an envelope or case, as recited in independent
claim 1 (App. Br. 17). However, North discloses a card 12 being inserted
into advertising material 11 and pocket 13 (col 4:60-67; col. 5:27-36; col.
8:65-67). Additionally, we note that Figure 3 of North depicts the card 12
being placed into advertising material 11 and inserted into pocket 13 (see
Fig. 3). While we acknowledge that North does not refer to advertising
material 11 or pocket 13 as an envelope or case, we note that Appellant’s
Specification does not provide a lexicographic definition for either an
“envelope” or “case,” other than to state that “envelope[] 16 include[s] an
open end 18 for removal of the contents thereof” (Spec. 6, para. [0024]).
Accordingly, in the absence of any special definition, we agree with the
Examiner that North discloses an envelope or case, as recited by claim 1 and
commensurate in scope with the Specification, under a broadest reasonable
construction. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (“[d]uring examination [of a patent application, a pending
claim is] given [the] broadest reasonable [construction] consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).
We also are not persuaded the Examiner erred in asserting that the
combination of North and Pritchard renders obvious independent claim 1
because North and Pritchard are “non-analogous to one another and the
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problem to be solved by the present invention” (App. Br. 14; see also Reply
Br. 3-4). As an initial matter, we note that a proper non-analogous art
analysis compares the references to the claimed invention, and not to each
other. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (a reference is
analogous art to the claimed invention if: (1) the reference is from the same
field of endeavor as the claimed invention (even if it addresses a different
problem); or (2) the reference is reasonably pertinent to the problem faced
by the inventor (even if it is not in the same field of endeavor as the claimed
invention)). Moreover, we agree with the Examiner that each of North and
Pritchard are reasonably pertinent to the problem faced by the inventor of
providing medical and emergency information to medical caregivers (Ans.
12).
Lastly, to the extent that Appellant is arguing that there is no
suggestion or motivation to combine North and Pritchard because they are
not in the same field of prior art (App. Br. 18-22; Reply Br. 3-5), we note
that “any need or problem known in the 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.” See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007).
And, to the extent Appellant seeks an explicit suggestion or
motivation in the reference itself (Reply Br. 5), this is no longer the law in
view of the Supreme Court’s holding in KSR. See KSR, 550 U.S. at 419.
We find that the Examiner has provided “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness” (see
KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). On pages 5 and 12-14 of the Answer, the Examiner provides the
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required rationale to support the combination. Therefore, in the absence of
specific, technical arguments as to why the motivation is insufficient or
whether the improvement described by the Examiner is more than the
predictable use of prior art elements according to their established functions,
we find this argument unpersuasive.
For these reasons, we sustain the rejection of independent claim 1
under 35 U.S.C. § 103(a) over North and Pritchard, as well as dependent
claims 2-4 that were not separately argued.
Obviousness Rejection of Claims 5 and 8
We are not persuaded the Examiner erred in asserting that a
combination of North and Pritchard renders obvious “wherein the
distributing step includes the step of giving the envelope or case with the at
least one medical and emergency information card and at least one
redeemable coupon or printed offer to the public at no charge as a
community service,” as recited by dependent claim 5 (App. Br. 22-23).
Specifically, Appellant argues that “[t]here is no teaching that it be offered
to the public at no charge as a community service” (App. Br. 23). However,
North discloses providing its advertising material to charitable and
community organizations, political party affiliations, and hobby clubs (col.
9:25-54), and we agree with the Examiner that such a disclosure at least
suggests distributing to the public at no charge, as a community service, the
envelope or case disclosed in North, which includes at least one redeemable
coupon or printed offer (col. 8:65 – col. 9:8), with the card taught in
Pritchard disposed therein, and to do so would be obvious.
For these reasons, we sustain the rejection of claim 5 under 35 U.S.C.
§ 103(a) over North and Pritchard, as well as dependent claim 8 that is not
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separately argued.

Obviousness Rejection of Claims 6 and 11
We are not persuaded the Examiner erred in asserting that a
combination of North and Pritchard renders obvious “wherein the case or
envelope is configured to substantially enclose the at least one medical
emergency information card and at least one redeemable coupon therein,” as
recited by dependent claims 6 and 11 (App. Br. 25-28). Specifically,
Appellant argues that “the foldable transaction sheet [in North] is not an
envelope or a case, but rather a sheet associated with a financial transaction
card so as to facilitate the recording of financial transactions made by the
card with which it is folded around” (App. Br. 25). However, as Appellant
observes, North discloses that its foldable transaction sheet wraps around a
card, and as such, we agree with the Examiner that it is reasonable to
construe the claimed “envelope or case” to read on North’s foldable
transaction sheet given the breadth of the claim and the lack of specificity in
Appellant’s Specification (see para. [0024]).
Equally unpersuasive are Appellant’s arguments with respect to the
type of information found on the claimed medical and emergency
information card (App. Br. 26-27; Reply Br. 5-6), as they are directed to
aspects related to non-functional descriptive material. That is, the type of
information displayed on the card does not alter the function of the claim,
and therefore are non-functional descriptive material, to which we assign no
patentable weight. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re
Gulack, 703 F.2d 1381, 1385-86 (Fed. Cir. 1983) (“Where the printed matter
is not functionally related to the substrate, the printed matter will not
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distinguish the invention from the prior art in terms of patentability. . . .
[T]he critical question is whether there exists any new and unobvious
functional relationship between the printed matter and the substrate.”)
(footnotes omitted).
For these reasons, we sustain the rejection of claims 6 and 11 under 35
U.S.C. § 103(a) over North and Pritchard.

Obviousness Rejection of Claims 14, 15, and 17-20
We are not persuaded the Examiner erred in asserting that a
combination of North and Pritchard renders obvious “the step of writing
information in the written prompt spaces on the medical and emergency
information card,” as recited by dependent claims 14 and 17 (App. Br. 28-
29; Reply Br. 6-7). Initially, we note that Appellant’s Specification
discusses printed and written material interchangeably (see para. [0009]).
Additionally, North discloses written prompts for writing information related
to medical and emergency information (see Fig. 9) and Pritchard discloses a
MEDICARD with medical information printed on its surfaces (col. 5:18-25).
Thus, North and Pritchard provide adequate evidence to support the
Examiner’s determination that the combination of North and Pritchard
renders obvious the step of writing information on the medical and
emergency information card, as recited by claims 14 and 17.
For these reasons, we sustain the rejection of claims 14 and 17 under
35 U.S.C. § 103(a) over North and Pritchard, as well as dependent claims
15, and 18-20 that are not substantively argued.

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Obviousness Rejection of Claims 13 and 16
Appellant asserts that the Examiner’s use of Official Notice is
inappropriate in rejecting dependent claims 13 and 16 because Appellant
properly traversed the Examiner’s use of Official Notice (App. Br. 30-33;
Reply Br. 7). We disagree, because Appellant has not adequately traversed
by specifically pointing out the supposed errors in the Examiner’s Official
Notice, “includ[ing] stating why the noticed fact is not considered to be
common knowledge or well-known in the art. See 37 [C.F.R. §] 1.111(b).”
MPEP § 2144.03(C). An adequate traverse must contain adequate
information or argument to create on its face a reasonable doubt regarding
the circumstances justifying Examiner’s notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). As
Appellant has not provided any such information or argument as to why
using plastic to make a folding pocket is not well-known (see Ans. 7-8), we
find Appellant’s traversal inadequate.
Notwithstanding, in response to the Appellant’s assertion of an
improper taking of Official Notice, the Examiner on pages 16-17 of the
Answer provided the Shipp reference which shows using different plastics
for wallets or pouches (col. 3:6-29). Thus, it would have been an obvious
modification to use plastic to create the envelope or case disclosed in North.
In a Section 103 analysis “the 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.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. at 418.
For these reasons, and in the absence of any specific, technical
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reasoning set forth by Appellant as to why the Examiner’s Official Notice
and reasoning is in error, we sustain the rejection of claims 13 and 16 under
35 U.S.C. § 103(a) over North, Pritchard, and Official Notice.

Obviousness Rejection of Claims 7, 9, and 10
Independent claim 7 is substantially similar to the subject matter
recited by independent claim 1 and additionally recited by dependent claim
5. Appellant asserts that the Examiner erred in rejecting independent claim
7 for the same reasons the Examiner erred in rejecting independent claim 1
and dependent claim 5 (App. Br. 24). As we are not persuaded the Examiner
erred in rejecting independent claim 1 and dependent claim 5, we also are
not persuaded the Examiner erred in rejecting independent claim 7, as well
as dependent claims 9 and 10 that are not separately argued. We sustain the
rejection of claims 7, 9, and 10 under 35 U.S.C. § 103(a) over North and
Pritchard.

Obviousness Rejection of Claim 12
Independent claim 12 is substantially similar to the subject matter
recited by independent claim 1 and additionally recited by dependent claim
13. Appellant asserts that the Examiner erred in rejecting independent claim
12 for the same reasons the Examiner erred in rejecting independent claim 1
and dependent claim 13 (App. Br. 30-31). As we are not persuaded the
Examiner erred in rejecting independent claim 1 and dependent claim 13, we
also are not persuaded the Examiner erred in rejecting independent claim 12.
We sustain the rejection of claim 12 under 35 U.S.C. § 103(a) over North,
Pritchard, and Official Notice.
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DECISION
The decision of the Examiner to reject claims 1-20 under
35 U.S.C. § 101 is REVERSED.
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 103(a) 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

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