Ex Parte Kaye

Board of Patent Appeals and Interferences

May 18, 2010

10459764 (B.P.A.I. May. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER KAYE
____________

Appeal 2009-006050
Application 10/459,764
Technology Center 3700
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Decided: May 19, 2010
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Before: LINDA E. HORNER, WILLIAM F. PATE III, and STEVEN D.A.
MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Christopher Kaye (Appellant) filed a request for rehearing under
37 C.F.R. § 41.52 requesting that we reconsider our decision of January 13,
2010 (“Decision”).
In our Decision we affirmed the Examiner’s decision to reject claims
24-46 as failing to comply with the written description requirement under
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35 U.S.C. § 112. Appellant argues that the Board misapprehended and
overlooked Appellant’s arguments, which showed that a person skilled in the
art would understand from the originally filed Specification that Appellant
had possession of the claimed subject matter at the time of filing (Req.
Reh’g 1-2).
In our Decision we also affirmed the Examiner’s decision to reject
claims 24-30, 32, 33, 35-41, 44, and 45 under 35 U.S.C. § 102(e) as
anticipated by Polick, and the Examiner’s decision to reject claims 31, 34,
42, 43, and 46 under 35 U.S.C. § 103(a) as unpatentable over Polick and
Weston.1 Appellant argues that the Board overlooked certain facts which
show that Polick, and the combination of Polick and Weston, do not meet
each element of the relevant claims (Req. Reh’g 2-8).
Based on these asserted errors, Appellant requests “that the Board
grant the relief requested in the Brief on Appeal” (Req. Reh’g 8). We
consider each argument in turn.
ANALYSIS
§ 112 Written Description Requirement
We found in our Decision that “the Specification does not provide
support for the same binder used to secure the front and back covers of the
interactive storybook for also securing the pages of the exposed story part to
the front and back covers of the interactive storybook, as claimed” (Decision
17-18).
Appellant contends our Decision misapprehended Appellant’s
argument that “it would be obvious to one skilled in the art from reading the

1 We designated our affirmance of the rejections under §§ 102(e) and 103(a)
as new grounds of rejection. Decision 18.
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originally-filed specifications and drawings that the pages should and would
be secured to the front and back cover” (Req. Reh’g 1, emphasis
Appellant’s, quoting App. Br. 10). Appellant contends on Request for
Rehearing that the intent of the statement was to convey that it would be
“obvious” to a person skilled in the art that the securing of the pages by a
binder was in fact disclosed by the originally-filed Specification, and that “a
person skilled in the art - or any person with a passing familiarity with
books, for that matter – would assume that the pages of a book are attached
to a cover” (Req. Reh’g 1-2, quoting from App. Br. 11).
Looking to the purportedly misapprehended statement, Appellant is
arguing that a person of ordinary skill in the art would understand that “the
pages should and would be secured to the front and back cover,” as
contrasted to arguing that a person of ordinary skill in the art would
understand from Appellant’s Specification that the pages are secured to the
front and back cover. Appellant’s argument fairly implies that the written
description requirement does not require actual disclosure, but rather may be
met by the perception of a person of ordinary skill in the art of what the
disclosure “should and would” include. Our Decision pointed out that it is
not enough to satisfy the written description requirement that the claimed
subject matter would have been obvious to a person of ordinary skill in view
of the written description (Decision 9). As such, we understood the
Appellant’s arguments from the Brief and see no reason to change our
decision.
Assuming arguendo that the Board misapprehended Appellant’s
argument in their Brief, we evaluate Appellant’s arguments as clarified in
the Request for Rehearing. The factual inquiry we apply to that evaluation
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is whether the Specification conveys with reasonable clarity to those skilled
in the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed (Decision 6, citing to Vas Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Our reviewing court has since
reaffirmed this standard. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing with approval the standard in
Vas Cath, and stating “the test for sufficiency is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date.”).
As explained in our Decision, Appellant’s originally-filed
Specification describes where the pages of the exposed story part are located
(i.e., between the covers of the storybook); however, it does not explicitly
describe, or depict, how the same binder interconnects the front and back
covers of the interactive storybook and secures the pages of the exposed
story part to the front and back covers of the interactive storybook (Decision
8-9, Facts 1-3).
Appellant further contends that our Decision overlooked Appellant’s
argument that:
a person skilled in the art would surely understand that 'pages'
in a 'storybook' disposed between the covers were secured to
the covers. Likewise, a person skilled in the art would
understand that 'a story part in a traditional location' of a
'storybook' would mean the pages [were] secured to the book's
covers (Req. Reh’g 2, citing App. Br. 11).
Our Decision did not overlook this argument. To the contrary, our
Decision acknowledges that Appellant’s Specification describes that the
storybook’s pages are disposed between the storybook’s covers and in a
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“traditional location” (Decision 8, Finding of Fact 2). Even were we to
accept as true that Appellant’s Specification conveys that the pages are
attached to the covers, this description is not commensurate with the
requirement of claim 24 that a single binder both interconnects the front and
back covers and secures the pages of the exposed story part to the covers
(Decision 7, construing claim 24). In other words, it does not necessarily
follow, and thus is not made clear in Appellant’s Specification, that just
because pages are secured to the covers, the same binder must be used to
attach the covers to each other and to attach the pages to the covers.
Appellant has failed to point to anything in Appellant’s Specification that
describes that the pages of the exposed story part are secured to the covers
“by said binder.” In evaluating Appellant’s contentions, we are mindful that
faced with the Examiner’s finding that the written description requirement
was not met (Ans. 4-5), Appellant chose to argue, without supporting
evidence, what a person of ordinary skill would understand from Appellant’s
disclosure (App. Br. 11). CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (an applicant may submit objective factual evidence to
the PTO during prosecution); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (Appellant’s arguments do not take the place of evidence).
As we found in our Decision, Appellant’s Specification “does not
provide support for the same binder used to secure the front and back covers
of the interactive storybook for also securing the pages of the exposed story
part to the front and back covers of the interactive storybook, as claimed”
(Decision 17-18).

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§ 102/103 Rejections
Appellant argues that Polick does not anticipate claims 24-30, 32, 33,
35-41, 44, and 45, and Polick and Weston do not render obvious the subject
matter of claims 31, 34, 42, 43, and 46, because: (1) a “story part” is distinct
from a “story,” (2) Polick does not disclose a hidden story part location,
(3) the concealed portion of Polick is not a “story part,” and (4) Polick does
not disclose a compartment that is part of the book’s cover, as required by
the claims (Req. Reh’g 2-8).
(1) Story Part is Distinct from a Story
Claim 24 calls for the interactive storybook to include “at least one
story part.” Appellant asserts that their Specification has defined “story
part” as a fraction of a story, and that the Board acknowledged this
definition, yet failed to follow the definition and distinguish between a story
part and a story (Req. Reh’g 2-3). Here, it is Appellant’s argument that
provides only a fraction of the story. While Appellant’s Specification
defines a “story part” as a fraction of a story, the definition also includes a
complete story, as noted in our Decision (Decision 12, Finding of Fact 4
(Appellant’s Specification defines a “story part” as “a complete part, a
chapter, multiple chapters, a complete story, multiple stories or any fraction
or combination thereof.”)(emphasis added)). As such, our Decision
correctly applied the definition of “story part” as provided in Appellant’s
Specification to find that Polick discloses the subject matter of claim 24.
(2) Hidden Story Part Location
Appellant asserts that the Board overlooked the argument in
Appellant’s Brief that “there is no teaching in the Polick disclosure that a
clue leads a reader to a hidden story part location that is part of a story line”
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(Req. Reh’g 4, quoting App. Br. 24). To the contrary, our Decision
addressed this argument by finding:
Polick discloses book 25 may contain clues to allow game
participants to discover the combination to the locking
mechanism, and access a secure storage area. (Fact Error!
Reference source not found.). The secure storage area can
contain a manipulative that may take the form of an instruction
manual that follows the theme (e.g. spy story) of book 25 (Fact
Error! Reference source not found., Error! Reference
source not found.). Thus, Polick discloses at least one clue
disposed within an exposed storybook (book 25), with the clue
providing information to direct the reader toward a hidden story
part (manipulative 55) location (secure compartment 50) based
on information in the exposed story part. Further, the at least
one hidden story part (manipulative 55) disposed within a
hidden story part location (secure storage area 50) is part of the
story line (e.g. “spy story” theme)
(Decision 16).
Appellant asserts that our Decision incorrectly conflates “a
compartment” with “a hidden location” yet claim 24 requires both “at least
one compartment” and “at least one hidden story part disposed within a
hidden story part location” (Req. Reh’g 4). Appellant’s argument is not
commensurate with the claim, because Appellant has not explained, nor can
we interpret, anything in claim 24 that prohibits the hidden story part
location from being a location within the compartment. Appellant’s
Specification provides support for the hidden story part location being a
location within the compartment in describing that “compartment 69 is a
hidden story part location 85.” Spec. 5-6, para. 0019; fig. 5. We interpret
claim 24 to require both at least one compartment and at least one hidden
story part location; however, nothing prohibits the hidden story part location
from being a location within the compartment.
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Appellant further asserts that the hidden story part location is hidden
in the sense that it “requires a clue in order to be found,” and is not hidden in
the sense that the contents are concealed (Req. Reh’g 4-5).
Claim 24 recites that the interactive storybook includes:
At least one compartment disposed in at least one of said
front cover and said back cover, said compartment having a
length, width and depth, said compartment having a cover for
concealing contents of said compartment;
at least one clue disposed within said storybook, said clue
providing information to direct a reader toward a hidden story
part location based upon information provided in said exposed
story part; and
at least one hidden story part disposed within a hidden
story part location, said hidden story part being part of a
storyline.
In the context of the claim, the clue “directs” the reader towards the
hidden story part location. Consistent with this, Appellant’s Specification
describes, “[a]t least one clue is provided within the storybook to provide
information for directing a reader toward a hidden story part location and to
permit the reader to access a hidden story part” (Spec. 2, para. 0006), and
defines a clue as “information or objects whereby the reader determines
where a story part is located, how to access the story part or both” (Spec. 6-
7, para. 0022).
Giving claim 24 the broadest reasonable interpretation consistent with
the Specification, we construe the “hidden story part location” to be
“hidden” in the sense that the reader must obtain information (the clue)
directing the reader towards the location containing the story part.
Polick’s secure storage areas 50 and 51 are hidden in the sense that
the reader (game participant) must obtain information (clues in various
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forms) that direct the reader (by discovering the combination to locking
mechanism 100) towards the secure storage areas 50 and 51 containing the
story part (manipulatives 55) (Decision 13-14, Finding of Fact 12). Thus,
Polick’s secure storage areas 50 and 51 are hidden story part locations as
recited in claim 24.
(3) Polick’s Instruction Manual is not the Claimed “Story Part”
Appellant contends Polick’s instruction manual is not the “hidden
story part” of claim 24 because it is not a “portion of a tale, such as fictional
prose or verse narrative” (Req. Reh’g 5, quoting Decision 15). Appellant’s
argument here is simply a repetition of their argument that Appellant’s
Specification has defined “story part” as a fraction of a story. We are
unpersuaded by this argument because, as explained in our analysis, supra,
Appellant’s Specification defines a story part to include a complete story.
Appellant contends that the Board has improperly conflated Polick’s
instruction manual with a “story” as called for in claim 24 (Req. Reh’g 5,
quoting Decision 16). Claim 24 requires the hidden story part to be part of a
storyline. Polick’s manipulatives 55 make take various forms, to include an
instruction manual that supports the theme of the book (Decision 16, Finding
of Fact 12). Appellant’s argument does not explain how Polick’s
instructions that support a theme are not part of a storyline as claimed.
(4) Polick Discloses a Book that Attaches to an External Container
Appellant contends that “Polick discloses a book that attaches to an
external container, while the claimed invention is a book the covers of which
include compartments” (Req. Reh’g 7).
Claim 24 is directed to an interactive storybook having a front and a
back cover, with at least one compartment in either the front or the back
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cover. Our Decision found that Polick discloses an interactive storybook
and storage device that includes a front cover (the front cover of book 25),
and a back cover (container 5) that includes at least one compartment
(secure area 50) (Decision 14, 16; Findings of Fact 6, 9, 11, 12).
Appellant makes the semantic argument that Polick’s book 25 has a
back cover so that Polick’s container 5 cannot be the claimed back cover
(Req. Reh’g 7). Appellant has provided no explanation of how Polick’s
container 5 fails to meet a requirement of the back cover of claim 24. See In
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“The elements must be
arranged as required by the claim, but this is not an ipsissimis verbis test”).
DECISION
Accordingly, while we have granted Appellant’s request for rehearing
to the extent that we have reconsidered our decision, the request is denied
with respect to making any changes in the decision. The Board’s decision is
now final for purposes of judicial review. 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) (2007).

DENIED

mls

CHRISTOPHER D. KAYE
1195 DERBY APT 8
BIRMINGHAM MI 48009