Ex Parte Gombar

Board of Patent Appeals and Interferences

Jul 13, 2006

10307045 (B.P.A.I. Jul. 13, 2006)

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was not written for publication and is not binding precedent of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

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte George J. Gombar
_____________

Appeal No. 2006-1319
Application No. 10/307,045
Technology Center 3700
______________

ON BRIEF
_______________

Before CRAWFORD, LEVY and NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134(a) of the final rejection of
claims 9, 13 and 17, which constitute all the claims in the application. For the reasons
stated infra, we affirm the examiner’s rejection of these claims.
Invention

The invention relates to a kit that contains a medical and emergency information
card. The kit is meant to be given away as an advertising device for a sponsor, the
sponsor’s logo is printed on the kit and a redeemable coupon is part of the kit. See page

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Application No. 10/307,045

4 of appellant’s specification. Claim 9 is representative of the invention and reproduced
below:
9. An emergency health history kit, comprising:
a plastic case;
at least one medical and emergency information card associated with the
case;
a sponsor’s or distributor’s identifying indicia imprinted on the case, or on
a card disposed within the case so as to be viewable through the case; and
at least on redeemable coupon or printed offer associated with the case;
wherein the medical and emergency information card includes written
prompts and spaces for personally identifying information and personal medical
information, including at least one of personal medical history information,
medical insurance information, and medical care provider information.

References

The references relied upon by the examiner are:

North et al. (North) 5,992,888 Nov. 30, 1999
Gee, Sr. (Gee) 3,958,690 May 25, 1976

Rejection at Issue

Claims 9, 13 and 17 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Gee Sr. in view of North. Throughout the opinion, we make reference
to the briefs, the answer and the final Office action for the respective details thereof.

Opinion

We have carefully considered the subject matter on appeal, the rejection advanced
by the examiner and the evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into consideration, in reaching
our decision, appellant’s arguments set forth in the brief along with the examiner’s
rationale in support of the rejection and arguments in rebuttal set forth in the examiner’s
answer.
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, and for the
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Application No. 10/307,045

reasons stated infra, we sustain the examiner’s rejection of claims 9, 13 and 17 under 35
U.S.C. § 103.
Appellant argues, on pages 6 and 7 of the brief that Gee and North are not
analogous to each other. Appellant reasons that because Gee is directed to a medical
information and emergency medication packet and North is directed to a method of
advertising, they are not analogous to the claimed emergency health history card. See
pages 7 and 8 of the brief. Appellant acknowledges that North teaches a medically
related recording card but asserts:
the card is not meant as a medical information card to be used in emergency
situations, but is meant for use by recording thereon the transactional data of
medically related purchases made with the associated debit or credit card, such as
prescriptions and doctor office visits.

Appellant thus asserts that as the references are non analogous, there is no motivation in
either of the references to be combined in the manner asserted by the examiner. See page
10 of the brief. Appellant further argues that even if the references are combined, the
combination does not:
disclose a medical and information card including written prompts and spaces for
personally identifying information and personal medical information, including
personal medical history information, medical insurance information and medical
care provider information. Nor do Gee Sr., nor North et al. disclose utilizing a
sponsor or distributor and redeemable coupons and printed offers to cover the cost
of creating and distributing the emergency health history kits.

See pages 11 and 12 of the brief. Finally, appellant argues that the references do not
appreciate the existence of the problem to be solved by appellant’s invention.
In response, the examiner states, on page 5 of the answer:

[B]oth Gee Sr. and North et al. pertain to the employment of a personal health
card to be carried by a user on their person and to be used when away from any
health facility. Each card of Gee Sr. and North et al. pertains to keeping health
information on one’s person, the particular information pertaining to the intended
printed matter. Where the only difference between a prior art product and a
claimed product is printed matter that is not functionally related to the product,
the content of the printed matter will not distinguish the claimed product from the
prior art. (citing, In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004)).
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Application No. 10/307,045

Further, the examiner states that appellant’s argument concerning North’s card having a
different use than the claimed card is not persuasive, as the recited difference in usage
does not result in a structural difference between the claimed invention and the
combination of the prior art. See page 6 of the answer.
We concur with the examiner and find appellant’s arguments to be unpersuasive.
Claim 9 recites “the medical and emergency information card includes written prompts
and spaces for personally identifying information and personal medical information,
including at least one of personal medical history information, medical insurance
information, and medical care provider information.” Independent claim 13 contains a
similar limitation. We find, as the examiner states, the claimed information on the card is
non-functional descriptive material. Our reviewing court has said if “the printed matter is
not functionally related to the substrate, the printed matter will not distinguish the
invention from the prior art in terms of patentability.” In re Ngai, 367 F.3d 1336, 1339,
70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (citing In re Gulack, 703 F.2d 1381, 217 USPQ
401 (Fed. Cir. 1983).
We find that Gee teaches an emergency health kit with a case, and a card. See
Gee figures 1 through 4, and column 2, lines 60 through 68. The card contains medical
information. Further, we note that Gee actually teaches the printed matter claimed.
Specifically in figure 4, Gee teaches that the card includes written prompts and spaces for
users to enter their medical insurance company and policy number (claimed medical
insurance information), any allergies and their condition as having diabetes (claimed
personal medical history information) and the physician’s name (claimed medical care
provider). We further note that Gee depicts in figures 2 and 4 that a logo with the words
“MED EYE-D” is printed on the card in a location which is viewable through the case.
We consider “MED EYE-D” to be either a sponsor or distributor’s indicia imprinted on
the card. North, similar to Gee, teaches a card that a person carries. The card contains
written prompts and spaces for users to enter data, and, in figure 9, North teaches that the
card can be configured to include medical data. North also teaches that such a card can
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Application No. 10/307,045

contain advertising and redemption coupons. Thus, contrary to appellant’s arguments,
we find that Gee teaches a card which contains the claimed emergency medical
information and the combination of Gee and North teaches all of the limitations of the
claimed invention.
Concerning the motivation to combine the references as stated by the examiner,
both Gee and North are concerned with cards for users to carry, which have spaces for
users to enter medical information. Thus, we find ample evidence to support the
examiner’s finding that the references are analogous art. Further, the examiner finds on
page 5 of the answer that North provides motivation to include a coupon in the device of
Gee, as it provides advertising for a sponsor of the card. We concur with this finding of
the examiner. North teaches that the coupon provides advertising and a way of
identifying demographics of users. See North, column 8, lines 30 through 35 and line 65
through column 9, line 8. Thus, we find that there is ample evidence in the record to
support the examiner’s finding of motivation to combine the references. Appellant’s
arguments that the purpose of North to provide a transaction record which displays
advertisements to the user and others who view its use, differs from the purpose of the
claimed invention are not well taken. We find no limitation in independent claims 9 and
13 directed to the purpose of the coupon, rather, only a limitation identifying that a
coupon exists. Thus, appellant’s arguments have not convinced us of error in the
examiner’s rejection and we sustain the examiner’s rejection of claims 9, 13 and 17.
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Conclusion

In summary, we sustain the examiner’s rejection of claims 9, 13 and 17 under 35
U.S.C. § 103. 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)(1)(iv).
AFFIRMED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

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