Ex parte Jeter

Board of Patent Appeals and Interferences

Oct 28, 1999

08555795 (B.P.A.I. Oct. 28, 1999)

Application for patent filed November 9, 1995. 1
According to appellant, this application is a continuation of
Application No. 08/378,927, filed January 25, 1995, now
abandoned; which is a continuation of Application No.
07/823,978, filed January 22, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACK W. JETER
__________
Appeal No. 1998-0252
Application 08/555,7951
__________
HEARD: Oct. 6, 1999
__________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and GONZALES, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-0252
Application No. 08/555,795
This rejection erroneously was stated in the Answer as2
being under 35 U.S.C. § 102.
2
This is an appeal from the decision of the examiner
finally rejecting claims 1, 3, 4, 9-11 and 15-17, which
constitute all of the claims remaining of record in this
application.
The appellant’s invention is directed to a file label
system (claims 1, 3, 4, 9 and 10) and to a method for filing
files (claims 11 and 15-17). The claims on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCES
The following references were relied upon by the examiner
to support the final rejection:
Barber 4,329,191 May 11, 1982
Colavito et al. 4,715,621 Dec. 29, 1987
(Colavito)
The prior art admitted by the appellant on pages 1 and 2 of
the specification.
THE REJECTIONS
The following claims stand rejected under 35 U.S.C.
§ 103:
(1) Claims 1, 3, 4 and 9 on the basis of Colavito.2
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Application No. 08/555,795
3
(2) Claim 10 on the basis of Colavito and Barber.
(3) Claims 11 and 15-17 on the basis of Colavito, Barber and
the
admitted prior art.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 26) for the reasoning in support
of the rejections, and to the Briefs (Papers Nos. 25 and 27),
for the arguments thereagainst.
OPINION
All three of the standing rejections are under 35 U.S.C.
§ 103. The test for obviousness is what the combined
teachings of the prior art would have suggested to one of
ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
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Application No. 08/555,795
4
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The Rejection Of The Method Claims
We shall first consider the rejection of method claims 11
and 15-17 as being unpatentable over the combined teachings of
Colavito, Barber, and the admitted prior art. In the opening
pages of the specification, the appellant explains that health
care providers often have large filing systems containing the
records of thousands of patients, and that the prior art
systems typically arranged the files alphabetically by the
patient’s last name or numerically by social security number.
According to the appellant, the latter system suffers from the
fact that many patients either do not have a social security
number or cannot recall it, and the former gives rise to large
collections of the same names, such as John Smith, which
Appeal No. 1998-0252
Application No. 08/555,795
5
causes the searcher to go through many such files in order to
obtain the correct one. The appellant seeks to improve upon
the prior art systems by his inventive method, which utilizes
as its main set the month and day of the associated
individual’s birth, and as a subset the initial of the
individual’s last name. The professed advantages of such a
system in reducing errors and lost time are set forth on pages
2-7 of the specification.
As manifested in independent method claim 11, the
appellant’s inventive system comprises the steps of affixing
to each file a first sticker indicating a month and a second
sticker indicating a year of the individual’s birth, affixing
to each file a third sticker bearing a letter initial of the
last name of the individual, with the first and second
stickers preceding the third sticker, and placing the files in
a main set corresponding to the first and second stickers and
a subset corresponding to the third sticker. The examiner
notes that systems utilizing both alphabetical and numerical
bases for filing systems were admitted by the appellant as
being known in the art, and then points out that Colavito
teaches that it was known to use coded stickers affixed to a
Appeal No. 1998-0252
Application No. 08/555,795
6
file, taking the position that it would have been obvious to
one of ordinary skill in this art to utilize “a two-tier
filing system with the social security number as the principle
[sic] base and the alphabetical labeling based on the
individual’s name as a subbase . . . with the Colavito et al
labeling system . . . color coded adhesive labels” (Answer,
page 7). Acknowledging that the content of the main set and
the subset differ from that recited in claim 11, the examiner
takes the point of view that using the individual’s month and
date of birth instead of the social security number would have
been obvious because “[t]he plain fact is that the date of
birth of an individual has long been used to identify that
individual on written records,” with Official Notice being
taken that this “was old and well-known in this art many years
before the filing date of this application” (Answer, page 8).
While we might quarrel with the “Official Notice” ingredient
of the rejection on the basis of relevancy in that the issue
here is not using the date of birth on official records to
identify an individual but using it as a main set in a filing
system, and because the information so categorized is not so
notorious as to fall within the prescribed definition (see
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Application No. 08/555,795
7
Manual of Patent Examining Procedures (MPEP) § 2144.03 (7th
ed., July 1998)), as it turns out this matter is not material
to our decision.
Our problem with this rejection resides in the lack of
proper suggestion to combine the teachings in the manner
proposed by the examiner. The mere fact that the prior art
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). That the elements of a claim exist separately in
the prior art is not enough. In the present case, there is no
teaching in the art of organizing files based upon the month
and day of the individual’s birth, much less that this be a
main set and that there be a subset based upon the letter of
the individual’s last name. We fail to perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to combine the teachings of the admitted
prior art and Colavito in such a manner as to meet these
requirements, which are recited in independent claim 11, other
than the luxury of the hindsight accorded one who first viewed
the appellant’s disclosure. This, of course, is not a proper
Appeal No. 1998-0252
Application No. 08/555,795
8
basis for a rejection under 35 U.S.C. § 103. See, for
example, In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992). Considering further the teachings of
Barber, which actually was cited only with regard to a
limitation added by claim 15, does not alleviate the
deficiencies in the other references.
It therefore is our conclusion that the combined
teachings of the admitted prior art, Colavito, and Barber fail
to establish a prima facie case of obviousness with regard to
the subject matter of independent claim 11, and we will not
sustain the rejection of that claim or of claims 15-17, which
depend therefrom.
The Rejections Of The File Label System Claims
We reach the opposite conclusion with regard to claims 1,
3, 4, 9 and 10. The rejections advanced by the examiner in
this regard are that claims 1, 3, 4 and 9 are unpatentable
over Colavito, and claim 10 is unpatentable over Colavito and
Barber. These claims are directed to a file label system for
identifying a file associated with a specific individual. As
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Application No. 08/555,795
9
recited in independent claim 1, the system comprises “an
elongated sheet” on which there are first, second and third
“areas” that are “adapted for receiving,” respectively, “a
first indicia indication [sic indicating] a month of the year”
and “a second indicia indicating a day of said month . . .
representing the birthday of the individual,” and “a third
indicia indicating the initial letters of the last name of
said individual.” The claim concludes by stating that these
indicia comprise first, second and third color-coded adhesive
labels received upon the sheet and that the first and second
indicia precede the third indicia on the sheet.
Colavito is directed to a color coded filing system for
use with the expandable files that are “used in law offices
and other business offices” (column 1, lines 9-10). Each file
comprises an elongated sheet upon which can be placed a
plurality of color coded adhesive labels (24) in a plurality
of areas in excess of the three required by claim 1. As noted
by the examiner, Colavito does not teach that the labels
contain the precise indicia specified in the claims. However,
it is the examiner’s view that the indicia is not functionally
related to the substrate upon which it is placed, and
Appeal No. 1998-0252
Application No. 08/555,795
418 F.2d 1392, 164 USPQ 46 (CCPA 1969).3
10
therefore it is not entitled to patentable weight (Answer,
page 5). The appellant argues that it is functionally related
to the extent that is required by the case law, and therefore
the examiner’s position is in error.
From our perspective, however, the case law cited by the
appellant in support of his position dictates the opposite
result. Basic guidance is provided by In re Miller, where3
the invention solved the problem of quickly measuring out
fractions of recipes, such as one-half of that which is
specified, by placing quantity measuring indicia on a
receptacle in a selected ratio that is proportional to, but
different from, the actual quantity present in the receptacle.
As in the present situation, the examiner refused to give the
indicia patentable weight because it was printed matter,
rejecting the claims as being unpatentable over any ordinary
measuring vessel. In its reversal, the court provided the
following explanation:
The fact that printed matter by itself is not
patentable subject matter, because non-statutory, is
no reason for ignoring it when the claim is directed
to a combination. Here there is an new and
unobvious functional relationship between a
Appeal No. 1998-0252
Application No. 08/555,795
703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983).4
11
measuring receptacle, volumetric indicia thereon
indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio, and in
our judgment the appealed claims define this
relationship. 418 F.2d at 1396, 164 USPQ at 49.
Thus, the court regarded the fact that indicia indicating the
level of the contents of an ordinary measuring cup to be
something other than what it actually was established a
“functional relationship” between the indicia and the
structure that gave the indicia patentable weight.
In re Gulack also states that differences between an4
invention and the prior art cited against it cannot be ignored
merely because they reside in the content of the printed
matter (703 F.2d at 1385, 217 USPQ at 403). In Gulack,
indicia was placed on an endless band in order to exploit
certain arithmetic properties of particular prime numbers. In
reversing the examiner’s decision that the printed matter was
entitled to no patentable weight, the court pointed out that
the endless band serves two functions, “it supports the
sequence of digits and it presents the digits as an endless
sequence with no discrete beginning or end” (703 F.2d at 1382,
217 USPQ at 402), “[t]hus, the digits exploit the endless
Appeal No. 1998-0252
Application No. 08/555,795
32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). 5
12
nature of the band” (703 F.2d at 1387, 217 USPQ at 405). Here
again, the court believed a “functional relationship” was
established between the indicia and the structure upon which
it was placed, which allowed patentable weight to be given to
the indicia.
The final case cited by the appellant is In re Lowry. 5
Here, the court was dealing with data objects, which the
examiner urged were analogous to printed matter. The court
did not agree, stating that the case was distinguishable from
the printed matter cases (32 F.3d at 1583, 32 USPQ2d at 1034).
While we do not quarrel with the quotation to which the
appellant refers, we are of the view that to the extent it may
be relevant it merely confirms the positions espoused by the
court in the other two cases.
It is our view that the invention recited in claim 1 does
not meet the test applied in Miller and Gulack. Unlike those
situations, the only relationship between the elongated sheet
and the indicia in claim 1 is the expected one - the indicia
is supported by the sheet. The fact that the three indicia
labels contain specific information and are arranged in a
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Application No. 08/555,795
13
specified order goes to the method of organizing the filing
system and not to establishing a “functional relationship”
between the indicia and the sheet. The fact of the matter is
that Colavito teaches exactly what the appellant recites in
claim 1, that is, placing colored labels containing specified
indicia upon an elongated sheet in a particular order. The
difference between the structure disclosed in the reference
and that which is recited in claim 1 resides only in the
content of the indicia which, in this case, is entitled to no
patentable weight.
This conclusion is confirmed in the language of the
claims themselves. The extent of the relationship between the
elongated sheet and the indicia as recited in claim 1 is that
the three areas of the sheet are “adapted for receiving” the
indicia. From our perspective, claim 1 therefore requires
merely that the sheet be capable of receiving the indicia in
the manner specified in the final six lines of the claim. In
our opinion, not only does this language fail to support the
appellant’s argument that the “functional relationship”
between the structure and the indicia required to impart
Appeal No. 1998-0252
Application No. 08/555,795
14
patentable weight to the indicia is established in the claim,
but the elongated sheet disclosed by
Colavito clearly meets this limitation, in that it is capable
of receiving the indicia in the manner and in the order set
forth in the “wherein” statement of claim 1.
It therefore is our view that the applied prior art
establishes a prima facie case of obviousness with regard to
the subject matter recited in independent claim 1. In view of
the fact that the appellant has chosen not to challenge with
any reasonable specificity before this Board the rejection of
any of the claims depending from claim 1, they are grouped
with claim 1, and fall therewith. See In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
In reaching this conclusion, we have carefully considered
all of the arguments presented by the appellant. However,
they have not convinced us that these rejections were in
error. Our position with respect to these arguments should be
apparent from the foregoing explanation. In essence, we
regard the appellant’s interpretation of “functional
relationship” not to fall within the definition of that phrase
as established by the court in Miller and Gulack.
Appeal No. 1998-0252
Application No. 08/555,795
15
SUMMARY
The rejection of claims 1, 3, 4 and 9 is sustained.
The rejection of claim 10 is sustained.
The rejection of claims 11 and 15-17 is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John F. Gonzales )
Administrative Patent Judge )
tdl
Appeal No. 1998-0252
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Appeal No. 1998-0252
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Ray L. Weber
1610 First National Tower
Akron, OH 44308