Ex Parte Lulic et al

Patent Trial and Appeal Board

Aug 12, 2013

11589384 (P.T.A.B. Aug. 12, 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.
11/589,384 10/30/2006 Mark Lulic P00227-US-UTIL 4078
98665 7590 08/12/2013
Otterstedt, Ellenbogen & Kammer, LLP
P.O Box 381
Cox Cob, CT 06807
EXAMINER
MYHRE, JAMES W
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
08/12/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte MARK LULIC and JOHN WANKMUELLER 7
___________ 8
9
Appeal 2011-007484 10
Application 11/589,384 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
18
SMEGAL, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE1 1
Mark Lulic and John Wankmueller (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1-4, 6, 8-17, 24-26 and 33-40 , 3
the only claims pending in the application on appeal. We have jurisdiction 4
over the appeal pursuant to 35 U.S.C. § 6(b). 5
6
SUMMARY OF DECISION 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a product container with an external label 10
including a prize (Specification 2:26-3:9). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1. 13
1. A consumer product promotional assembly 14
comprising: 15
a consumer product formed with at least one 16
rounded exterior portion; 17
a prize associated with said consumer 18
product, said prize being spendable in a payment 19
card infrastructure; and 20
a label assembly secured external to said at 21
least one rounded exterior portion; wherein: 22
said prize comprises a structurally flexible 23
radio-frequency contactless device; 24
said prize contains spendable value; and 25
said prize forms at least a portion of said 26
label assembly and conforms to said at least one 27
rounded exterior portion. 28
29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 30, 2010) and Reply Brief (“Reply Br.,” filed March
31, 2011), and the Examiner’s Answer (“Ans.,” mailed January 31, 2011).
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The Examiner relies upon the following prior art: 1
Howes US 4,911,320 Mar. 27, 1990 2
McClung US 2002/0017759 A1 Feb. 14, 2002 3
Harper US 2004/0267847 A1 Dec. 30, 2004 4
Agarwal US 2005/0021405 A1 Jan. 27, 2005 5
Yamazaki US 2005/0141256 A1 Jun. 30, 2005 6
Kozlay US 2007/0040017 A1 Feb. 22, 2007 7
Mahaffey US 7,479,882 B2 Jan. 20, 2009 8
OFFICIAL NOTICE 9
10
REJECTION ON APPEAL 11
Claims 1-4, 6, 8-17, 24-26 and 33-40 stand rejected under 35 U.S.C. 12
§ 103(a) as unpatentable over Howes, Agarwal, McClung, and Official 13
Notice. 14
15
FINDINGS OF FACT 16
We find that the findings of fact, which appear in the Analysis below, 17
are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 18
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 19
evidentiary standard for proceedings before the Office). 20
21
ANALYSIS 22
Claims 1-4, 6, 8-17, 24-26 and 33-40 rejected under 35 U.S.C. § 103(a) as 23
unpatentable over Howes, Agarwal, McClung, Official Notice. 24
25
Claims 1-4, 8-14, 24, 26 and 33-38 26
Appellants argue claims 1-4, 8-14, 24, 26 and 33-38 as a group 27
(App.Br. 9-13 and Reply Br. 9-12). We select claim 1 as the representative 28
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claim for this group and the remaining claims stand or fall with claim 1. 37 1
C.F.R. § 41.37 (c) (1) (vii) (2011). 2
We are not persuaded by Appellants’ arguments that the Examiner failed 3
to establish a prima facie showing of obviousness in rejecting claim 1 over 4
the combination of Howes in view of Agarwal, McClung and Official 5
Notice. In particular, Appellants first argue that “Howes is directed solely to 6
internal prizes” and that “Modifying Howes for external prize attachment 7
would impermissibly change its principle of operation” (App. Br. 11-12 and 8
Reply Br. 9-10). 9
Appellants’ first argument fails because it is directed to attacking 10
Howes separately, even though the rejection is based on the combined 11
teachings of the references. Nonobviousness cannot be established by 12
attacking the references individually when the rejection is predicated upon a 13
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 14
1091, 1097 (Fed. Cir. 1986). 15
Second, we are not persuaded that the combination of Howes and 16
McClung “impermissibly changes the principle of operation of Howes” 17
(Reply Br. 10), because both Howes and McClung disclose an article of 18
manufacture including a prize associated with a consumer product. Howes 19
teaches a prize internally associated with the consumer product while 20
McClung teaches a prize both internally and externally associated with the 21
consumer product. Appellants’ reliance on MPEP 2143.01 VI is misplaced 22
as the combination of McClung with Howes does not involve a change in the 23
principle of operation of Howes because delivery of the product in Howes 24
can still be effected externally but concealed as taught by McClung ¶¶ 25
[0020] and [0133], and thus is merely a substitution of one consumer 26
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product configuration taught by the prior art for another consumer product 1
configuration taught by the prior art. 2
Appellants next argue that even if McClung “teaches or suggests 3
releasable attachment of a prize to the exterior of a product”, the Examiner 4
“does not appear to state a reason as to why the skilled artisan would be 5
motivated to make the change to Howes” (App. Br. 12 and Reply Br.10). 6
First, the Examiner does provide an explicit rationale for motivation which 7
we find reasonable, namely, “[o]ne would have been motivated to use a 8
contactless RF card in view of the common usage of such devices within the 9
marketing and billing industries.” (Ans. 5). Second, we agree with the 10
Examiner that it would have been obvious to one having ordinary skill in the 11
art to do so given that there are only two ways to for a prize to be associated 12
with a product, “either place the prize inside the product container or place 13
the prize on the outside of the container” (Ans. 21). While McClung 14
actually teaches attaching a prize both internal and external of a product; see 15
paragraphs [0020] and [0133] (Ans. 19), Appellants’ Specification is 16
similarly broad in scope disclosing that a prize is associated with a 17
consumer product, as recited by claim 1, “when it is in, on, or part of the 18
product and/or the product’s packaging.” See Spec. p, 10, ll 1-2. 19
Appellants also argue that the Examiner does not appear to have 20
articulated any teaching, suggestion or motivation, for combining different 21
embodiments within McClung (App. Br. 12-13 and Reply Br. 10-11). Again 22
we find that the Examiner did provide an explicit rationale for motivation 23
which we find reasonable, namely, “[o]ne would have been motivated to use 24
a contactless RF card in view of the common usage of such devices within 25
the marketing and billing industries.” (Ans.5). Additionally, the Examiner 26
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provides several examples in McClung of a prize being releasably attached 1
to the exterior of a product container (Ans. 5 and 19-20). 2
Appellants also argue that to establish a prima facia case of obviousness 3
“requires a finding that there was a reasonable expectation of success” (App. 4
Br.13 and Reply Brief 11). "The test for obviousness is not whether . . . the 5
claimed invention must be expressly suggested in any one or all of the 6
references. Rather, the test is what the combined teachings of the references 7
would have suggested to those of ordinary skill in the art." In re Keller, 642 8
F.2d 413, 425 (CCPA 1981) (citations omitted). As set forth above, we find 9
that the combination is suggested by the teaching in the references, e.g., 10
McClung actually teaches attaching a prize both internal and external of a 11
product. (Answer 19). 12
Finally, Appellants argue that the Examiner is applying improper 13
hindsight in relying on the combination of Howes and McClung in rejecting 14
claim 1(App. Br.13 and Reply Br. 11-12). We find this argument 15
unpersuasive as it is merely a restatement of the prior arguments that we 16
have previously found unavailing. We also do not agree that the Examiner’s 17
rejection is an improper hindsight reconstruction, as it does not only include 18
knowledge gleaned only from the Appellants’ disclosure, but rather takes 19
into account the teachings of Howes, Agarwal, McClung and Official 20
Notice, i.e., knowledge which was within the level of ordinary skill at the 21
time the claimed invention was made. 22
For the foregoing reasons, we sustain the Examiner’s rejection of claim 23
1 as being unpatentable over Howes in view of Agarwal, McClung and 24
Official Notice. We will also sustain the Examiner’s rejection of claims 2-4, 25
8-14, 24, 26 and 33-38 as being unpatentable over Howes in view of 26
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Agarwal, McClung and Official Notice for the reason that Appellants have 1
not argued the separate patentability of these claims. 2
3
Claims 6, 15 and 39. 4
Appellants argue claims 6, 15 and 39 are patentable for reciting an RF-5
attenuating portion that distinguishes the claims from Yamazaki (Official 6
Notice) that uses “a second non-volatile memory to lock a first non-volatile 7
memory in order to prevent reading product-specific information during 8
transportation” (App. Br. 14 and 17). However we agree with the Examiner 9
that to prevent early reading of the prize card of Howes, it would have been 10
obvious to use one of the well-known RF-blocking techniques, such as the 11
exemplary film or layer disclosed in other references cited as examples of 12
Official Notice (Ans. 22-23). Appellants offer no further response to the 13
Examiner’s reliance on Official Notice (Reply Br. 12). 14
Accordingly, we affirm the Examiner’s rejection of claims 6, 15 and 39 15
as being unpatentable over Howes in view of Agarwal, McClung and 16
Official Notice. 17
18
Claims 16 and 17. 19
Appellants argue claims 16 and 17 are patentable for reciting label 20
assemblies not taught by McClung (App. Br. 14-16 and Reply Br. 12-13). 21
We agree with the Examiner “that it was old and well known within the 22
manufacturing arts at the time the invention was made that the two parts 23
could be formed either together or separately, depending on the 24
configuration of the product packaging” (Ans. 10-11). Again Appellants 25
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offer no argument in response to the Examiner’s reliance on Official Notice 1
(Reply Br. 12-13). 2
Accordingly, we affirm the Examiner’s rejection of claims 16 and 17 as 3
being unpatentable over Howes in view of Agarwal, McClung and Official 4
Notice. 5
6
Claim 25 7
Appellants argue claim 25 is patentable for reciting a limited payment 8
card infrastructure while Agarwal discloses reward stamps “which do not 9
appear to be capable of being spent within a payment card infrastructure” 10
(App. Br. 16). We disagree with Appellants because Agarwal also discloses 11
issuing a credit card to be redeemed by a limited merchant through a limited 12
account type (Ans. 25). 13
Accordingly, we affirm the Examiner’s rejection of claim 25 as being 14
unpatentable over Howes in view of Agarwal, McClung and Official Notice. 15
16
Claim 40 17
As with the arguments which are ultimately directed at the rejection of 18
claim 1, Appellants again attack Howes separately (App. Br. 17-18 and 19
Reply Br. 14-15). As we previously found, the Examiner’s rejection is 20
based on a combination of references including McClung (Ans. 25-26). 21
Accordingly we affirm the rejection of dependent claim 40 since Appellants 22
have not challenged such with any reasonable specificity (see In re Nielson, 23
816 F.2d 1567, 1572 (Fed. Cir. 1987)). 24
25
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DECISION 1
The decision of the Examiner to reject claims 1-4, 6, 8-17, 24-26 and 33-2
40 is affirmed. 3
No time period for taking any subsequent action in connection with this 4
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a)(1)(iv) (2011). 6
7
AFFIRMED 8
9
10
Klh 11