Ex Parte Koch

Patent Trial and Appeal Board

Feb 21, 2017

13247993 (P.T.A.B. Feb. 21, 2017)

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.
13/247,993 09/28/2011 Melissa Koch MCKl 4389
63893 7590
DOUGLAS J. VISNIUS
18024 Falcon Green Court
ORLANDO, EL 32820-2712
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
02/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
apexmasterworks @ gmail. com
sfnlhafnap @ yahoo, com
dvisnius @ bellsouth. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELISSA KOCH
Appeal 2015-004697
Application 13/247,993
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—20. Appeal Br. 3.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 We note that neither the Appeal Brief (filed January 20, 2014) nor the
Reply Brief (filed October 2, 2014) provides page numbers. For reference
convenience, we designate the cover page of each brief as page 1 and
number the pages consecutively therefrom.
Appeal 2015-004697
Application 13/247,993
CLAIMED SUBJECT MATTER
Claim 1,10, and 17 are independent. Claim 1 is reproduced below.
1. A method comprising:
positioning a focal point memento onto a portable
personal item so the user can readily experience the focal point
memento without handling the focal point memento; and
connecting the focal point memento to the portable
personal item with a fastener carried by a side of the focal point
memento where the connection does not penetrate the portable
personal item.
REJECTIONS
Claim 20 is rejected under 35 U.S.C. § 112, first paragraph, for lack of
an adequate written description. Final Act. 2.
Claims 1—20 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.2 Id. at 3.
Claims 1, 2, 4, 5, 9—11, 13, 17, 19, and 20 are rejected under
35 U.S.C. § 102(b) as anticipated by Waas-Russiyan (US 6,108,874, iss.
Aug. 29, 2000). Id. at 3—5.
Claims 3, 6—8, 12, 14—16, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Waas-Russiyan and Lavictoire (US
2006/0266079 Al, pub. Nov. 30, 2006).3 Id. at 5-7.
2 The caption of this rejection indicates that the rejection applies to all of the
pending claims. The Examiner’s indefmiteness findings are illustrated as to
independent claims 1 and 17 and dependent claim 9, but the findings apply
equally to independent claim 10 and its dependent claims. Thus, Appellant
is on notice of these grounds. We therefore address all claims to facilitate
the expeditious resolution of these indefmiteness issues.
3 Although claim 18 is not included in the caption of this rejection, the body
of the rejection includes findings for claim 18. Id. at 5—6.
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Appeal 2015-004697
Application 13/247,993
ANALYSIS
Claim 20 for lack of an adequate written description
The Examiner found that the limitation “a ribbon that is not jewelry”
in claim 20 is not described in Appellant’s Specification. Final Act. 2. The
Examiner reasoned that a ribbon may or may not be jewelry, and the
Specification does not disclose this claimed feature. Ans. 3^4.
Appellant argues that the “not jewelry” limitation only applies to the
ribbon limitation and “it is an inherent characteristic of a ribbon not to be
jewelry.” Appeal Br. 5. Appellant cites to a definition of “ribbon” that
includes “a narrow piece of cloth (such as silk) that is used to tie things or
for decoration; a short piece of cloth that is given as a military award; or a
piece of colored cloth that is given as an award in a competition.” Id. at 4—5;
Reply Br. 4—5. Appellant cites a definition of “jewelry” as “decorative
objects (such as rings, necklaces, and earrings) that people wear on their
body.” Reply Br. 5. Appellant argues that the definition of “ribbon” does
not include jewelry and the definition of jewelry does not include a ribbon,
and a skilled artisan would not consider a ribbon to be jewelry. Id. at 5—6.
We agree with the Examiner that the Specification does not provide
adequate written description of the limitation “a ribbon that is not jewelry.”
Claim 20 lists portable personal items as a yoga mat, towel, carrying case,
blanket, bag, ribbon, and clothing, but singles out “a ribbon” as an item that
is not jewelry. Giving all words of the claim meaning, as we are required to
do, claim 20 recites a particular type of ribbon, i.e., one that is not jewelry.
Appellant’s proffered definitions support this interpretation by defining “a
ribbon” and “jewelry” as “decorative” items. Claim 5 also recites the same
personal items as claim 20, but recites only “a ribbon.”
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Appeal 2015-004697
Application 13/247,993
We agree with the Examiner that Appellant’s Specification does not
describe such ribbons or provide any indication that Appellant is describing
a particular type of ribbon that is not jewelry. Appellant does not dispute
this interpretation of the Specification and instead argues that ribbons are
never considered to be jewelry, such that “not jewelry” is an inherent trait of
all ribbons. Appeal Br. 5; Reply Br. 5—6. We find no support in Appellant’s
Specification for this feature either.
As such, we sustain the rejection of claim 20. This problem may be
remedied by deleting the phrase “that is not jewelry” from claim 20, so that
“a ribbon” is recited as in dependent claim 5.
Claims 1—20 as being indefinite
Each of independent claims 1, 10, and 17 recites methods that involve
“positioning a focal point memento” “onto a portable personal item so the
user can readily experience the focal point memento.” The Examiner found
that the limitations “focal point memento” and “experience” are indefinite
because Appellant’s Specification does not describe these features
sufficiently to define their metes and bounds. Final Act. 3; Ans. 5—8. In
particular, the Examiner found that Appellant’s Specification does not
provide sufficient guidance as to how to measure, define, record, or establish
what constitutes a focal point memento or how a person experiences the
special meaning of the claimed focal point memento. See Ans. 5—6.
Appellant argues that the Specification describes the mementos acting
as a focal point for the user “to experience a particular sentiment” and “focus
[the user] on a particular sentiment personal to the user.” Appeal Br. 7
(citing Spec 150); Reply Br. 13 (same). Appellant cites paragraph 48 of the
Specification and its examples of the claimed mementos. Appeal Br. 10—11.
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Appeal 2015-004697
Application 13/247,993
It is well settled that claim language whose meaning depends entirely
on a person’s purely subjective opinion, personal taste, or opinion without
any guidance being provided in the claim language or written description is
indefinite. E.g., Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1378
(Fed. Cir. 2017); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373—
74 (Fed. Cir. 2014); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
1342, 1352 (Fed. Cir. 2005).
We have exactly that situation here. Claims 1,10, and 17 recite “a
focal point memento” that “the user can readily experience . . . without
handling the focal point memento.” There is no indication in these claims as
to what is a “focal point memento” or how a user “experiences” a focal point
memento, other than the negative limitation that the user does not handle the
focal point memento. Claims 9 and 10 recite that “the focal point memento
has a specific meaning to the user, which [that] is unknown to any person
other than the user.” Thus, the meaning and parameters of what is a focal
point memento is defined entirely as something that has a specific meaning
to a particular user and that is unknown to other persons. In other words, the
determination of whether an item is a focal point memento depends entirely
on the unspecified, personal taste and subjective opinion of each person to
the exclusion of what anyone else may consider to be a focal point memento.
The recital in claims 2, 3, 11, and 12 that a picture, a design, a word, a
logo, a stone, other natural or synthetic material, a symbol, a photograph, an
aromatherapeutic, an oil, a balm, and a sentimental item may be included as
a portion of the focal point memento does not remedy this indefmiteness. It
is unclear whether these things can be focal point memento by themselves or
whether a focal point memento is something additional to these things.
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Appeal 2015-004697
Application 13/247,993
A review of Appellant’s Specification does not clarity this ambiguity.
Appellant directs our attention to paragraphs 48 and 50 to explain what is
meant by “a focal point memento.” Appeal Br. 7, 10-11. These passages
confirm our understanding that a focal point memento is defined entirely by
the personal subjective opinion and taste of each person. Paragraph 50
discloses that “[t]he memento is experienced by the user to focus them on a
particular sentiment personal to the user.” Paragraph 48 also discloses that
“the claimed methods help, encourage, inspire, remind, reward, focus or
otherwise inform a user because the positioning of the memento enables the
user to experience the memento.” The “focal point memento” is defined by
the subjective, personal experience that a person has with a particular thing.
The entirely subjective nature of the “focal point memento” and the
experiences associated with the memento is illustrated even more clearly by
Appellant’s disclosure of things that are not mementos. In this regard,
Appellant discloses:
Unlike a name badge, tag, or decorative accessory where the
objective is outward communication, representation of
information, or personal image, the memento represents a point
of focus for the user that the user experiences internally.
Spec. 151. Again, Appellant describes the claimed memento based on the
unique, subjective, personal feelings that each user experiences in relation to
a particular object or thing. We discern no objective difference between the
two categories. A person could experience very strong feelings in response
to a badge, tag, or decoration that they received, or that a departed loved one
received, and that serves as a memory of that person. Therefore, the items
that Appellant attempts to distinguish from “focal point mementos” could
elicit the same subjective, personal feelings from a user as the mementos.
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Appeal 2015-004697
Application 13/247,993
The Specification provides no objective distinction between “focal
point mementos” and “portable personal items” such as a yoga mat, a towel,
a blanket, a bag, a ribbon, a holder for mementos, and clothing. Spec. 19,
Claims 5, 13, and 20. The claimed “portable personal items,” to which the
claimed “focal point mementos” are attached or fastened, could evoke strong
personal feelings based on a person’s unique experience with the item. Baby
blankets, ribbons, and clothing could provide such focused experiences just
as the claimed focal point mementos. The Specification and claims provide
no objective basis to distinguish focal point mementos from other items. To
the contrary, they depend entirely upon the subjective opinion and unfettered
personal taste of each user in a way that is unique to each user and unknown
to everyone else. Such reliance does not provide an objective standard for
identifying the metes and bounds of the claims to a skilled artisan, or anyone
else for that matter.
In sum, this issue is very similar to that of Datamize in which the term
“aesthetically pleasing” was found to be indefinite because its meaning was
dependent upon the subjective opinion of an undefined observer. It also is
very similar to that of Interval Licensing in which displaying content “in an
unobtrusive manner that does not distract a user” was indefinite because a
skilled artisan could not discern what forms of display are unobtrusive and
non-distracting. See Sonix Tech., 844 F.3d at 1378. It is unlike the situation
in Sonix Technology in which the limitation “visually negligible” could be
discerned based on “what can be seen by the normal human eye.” Id. Here,
the personal and subjective feelings experienced by a user of a focal point
memento are unique to the user and unknown to everyone but the user.
Thus, we sustain the rejection of claims 1—20 as indefinite.
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Appeal 2015-004697
Application 13/247,993
Claims 1, 2, 4, 5, 9—11, 13, 17, 19, and 20 as anticipated
by Waas-Russiyan; and Claims 3, 6—8, 12, 14—16, and 18
as unpatentable over Waas-Russiyan and Lavictoire
Because we agree with the Examiner that claims 1—20 are indefinite,
we reverse pro forma, the Examiner’s rejection of claims 1—20 under
Sections 102 and 103. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)
(“If no reasonably definite meaning can be ascribed to certain terms in the
claim, the subject matter does not become obvious—the claim becomes
indefinite.”); see also In re Steele, 305 F.2d 859, 862—63 (CCPA 1962)
(determinations of obviousness cannot be made for claims where a
determination of claim scope requires considerable speculation and
assumptions).
DECISION
We affirm the rejection of claim 20 for lack of written description.
We affirm the rejection of claims 1—20 for indefmiteness.
We reverse pro forma the prior art rejections of claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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