Ex Parte LynchDownload PDFPatent Trial and Appeal BoardSep 30, 201310813082 (P.T.A.B. Sep. 30, 2013) Copy Citation 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. 10/813,082 03/31/2004 William E. Lynch III WEL-101 5648 25628 7590 10/01/2013 William H. Holt Law Offices of William H. Holt 14584 West Dartmouth Avenue Lakewood, CO 80228 EXAMINER HADIZONOOZ, BANAFSHEH ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 10/01/2013 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 ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM E. LYNCH III ____________________ Appeal 2011-012772 Application 10/813,082 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and HYUN J. JUNG, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012772 Application 10/813,082 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED INVENTION Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A template for evaluating and scoring designated pairs of responses to a related designated pair of questions, said template comprising means for identifying a series of paired locations thereon, each one of said paired locations corresponding to one of said designated pair of responses, a first set of said locations being linked by indicia on said template, a pathway leading from said first set of locations to at least a second set of locations, said pathway being shown by said indicia for leading a user from said first set to said second set of locations, each of said locations having means for allowing viewing through said template. REFERENCES Parmenter Lousig-Nont US 2,859,541 US 4,358,279 Nov. 11, 1958 Nov. 9, 1982 REJECTIONS Claims 1, 2, 6, and 7 are rejected under 35 U.S.C. § 102(b) as being anticipated by Parmenter. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Parmenter. Appeal 2011-012772 Application 10/813,082 3 Claims 4, 5, and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Parmenter and Lousig-Nont. ANALYSIS Anticipation by Parmenter Addressing claim 1, the Examiner finds that Parmenter discloses inter alia “a template for evaluating and scoring designated pairs of responses to a series of questions, said template comprising a series of paired locations thereon.” Ans. 4. Appellant counters that “[t]he answers to which Parmenter refers are independent of one another; Parmeter does not disclose or make any reference to designated pairs of responses.” Br. 6. In response, the Examiner finds that: Parmenter specifically disclose[s] that in a case where the questions are arranged in several group types the lines extending between grouped answers may be of a color different from the lines extending between other grouped locations (See Col. 4, 19- 40). Therefore, examiner believes that at a minimum a group of answers could be interpreted as a pair of related responses. Ans. 5-6. Indeed, Parmenter discloses grouping related questions to their corresponding answers and that there are several group types. See Parmenter, col. 4, ll. 19-29. The Examiner has found that these groups of answers can be pairs of answers. Since a group of answers could must include two or more answers, Parmenter discloses that each of the several groups may include pairs of responses. Appellant does not reply with any argument or evidence which identifies error in the Examiner’s findings. Thus, we sustain the rejection of independent claim 1 as anticipated by Parmenter. Appeal 2011-012772 Application 10/813,082 4 Claim 2 depends from claim 1 and recites “said indicia comprises a series of lines connecting the sets together.” Br., Clms. App’x. Appellant relies on similar arguments to those presented above with respect to claim 1 and argues that Parmenter discloses “linking a series of single, independent responses, not designated pairs of responses.” Br. 7. No argument is presented that the grouped answers of Parmenter may not be pairs of related responses. For the reasons above, we sustain the rejection of dependent claim 2 as anticipated by Parmenter. Claims 6 and 7 recite “[a] method for evaluating designated pairs of responses to related pairs of questions.” Br., Clms. App’x. Appellant presents an argument similar to those presented against claim 1 above, i.e., that “there are no pairs of responses. A review of Fig. 4 clearly shows two distinct lines that are linking a series of independent responses. There is no continuous line that is linking together a series of paired responses.” Br. 7. Again, no argument is presented that the grouped answers of Parmenter may not be pairs of related responses. For the reasons above, we sustain the rejection of claims 6 and 7 as anticipated by Parmenter. Obviousness over Parmenter Claim 3 depends from claim 2, which depends from independent claim 1, and recites “said indicia is comprised of a series of alternating solid lines and broken lines.” Br., Clms. App’x. The Examiner finds: Parmenter does not specifically disclose a series of alternating solid and broken lines on the indicia. However, the only difference between the prior art product and the claimed invention is printed matter that is not functionally related to the product. Moreover, the content of the printed matter will not distinguish the claimed invention form the prior art. Appeal 2011-012772 Application 10/813,082 5 Ans. 4. In addition to the arguments made for claim 1, Appellant argues that “[t]he series of alternating solid and broken lines as defined in claim 3 is, in fact, functionally related to the product inasmuch as said lines are used to clearly identify designated pairs of locations.” Br. 8. In response, the Examiner determines “if there was a functional relationship between the broken lines and the claimed product, such functional relationship was never claimed.” Ans. 6. The critical question is whether there exists any new and unobvious functional relationship between the broken lines and the template. See In re Gulack, 703 F.2d 1381, 1384 (Fed. Cir. 1983).In this case, the lines, solid and broken, are functionally used to visually associate related answers with one another. See Spec .p. 4, ll. 7-21 Therefore, the Examiner has erred by determining there is no functional relationship between the broken lines and the claimed product. Additionally, the Examiner does not find nor does Parmenter disclose “a series of alternating solid lines and broken lines.” Nor does the Examiner articulate any reason why it might have been obvious to modify Parmenter to include “a series of alternating solid lines and broken lines.” As such, we do not sustain the rejection of claim 3 as obvious over Parmenter. New Ground of Rejection for Claim 3 as Obvious Over Parmenter Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Parmenter. As discussed supra, claim 3 depends from claim 2, which depends from claim 1. At the outset, we adopt the Examiner’s findings from the rejection of claims 1 and 2. See Ans. 4. Appeal 2011-012772 Application 10/813,082 6 As for the additional limitation of claim 3, Parmenter discloses a series of lines connecting the sets of locations together. See Parmenter fig. 4, col. 4, ll. 19-29. Indeed, Parmenter discloses “in cases where the questions are arranged in several group types and it is desired to score each group, the line 19 extending between grouped answer locations may be of a colour different from that of the lines extending between other grouped answer locations whereby the answer groups are readily identifiable.” Id. (italics added). Although Parmenter discloses designating the lines between different groups different colors, Parmenter does not disclose “said indicia is comprised of a series of alternating solid lines and broken lines,” as recited in claim 3. However, the Specification states, “[e]ach pair of answers, or responses, is clearly distinguished and linked together in some manner, i.e. a solid line, dashed line, color coded.” Spec. 3, ll. 2-3. This statement in the Specification suggests that there is no functional difference between solid line, a dashed line, or a color coded line, as long as the pair of answers or responses are clearly distinguished and linked together in some manner. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the different color lines between groups of answers of Parmenter with a series of alternating solid lines and broken lines, whether colored or not, since doing so is merely a design choice. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). This rejection is made under the provisions of 37 C.F.R. § 41.50(b). Appeal 2011-012772 Application 10/813,082 7 Obviousness over Parmenter and Lousig-Nont Claims 4 and 5 depend directly and indirectly, respectively, from claim 1 and call for common geometric shapes to identify different locations of the pairs of data. See Br., Clms. App’x. Claim 8 depends from claim 6 and recites the step of “identifying different designated pairs of responses with different pairs of geometrical shapes on said template.” Id. The Examiner finds that Lousig-Nont discloses a testing and scoring evaluator where “answers are grouped together with different geometrical symbols.” Ans. 5. Indeed, Figure 6 of Lousig-Nont depicts a circle symbol 120, a square symbol 124, and a triangle symbol 126, as well as other geometric symbols. Lousig-Nont, col. 3, ll. 24-27. Therefore, it would have been obvious to . . . modify Parmenter’s invention and use geometrical shapes rather than colors to group answers together in order to provide more distinguishable visual paths for easy grading.” Id. In addition to the arguments made for claim 1, Appellant argues that “Parmenter does disclose the use of colored lines so that ‘the answer groups are readily identifiable.’ It is important to note that the use of colored lines for this purpose is only possible ‘where the questions are pre-arranged in several group types.’” Br. 9. Appellant supports this argument by referring to the Specification, which states “[t]his invention relates to a method for scoring designated pairs of responses that are located randomly across a master answer sheet [not pre-arranged groups as disclosed by Parmenter] and it precludes the need to search for and transfer said pairs of responses onto another sheet for scoring.” Id. (citing Spec., Background and Field of Invention). We are not persuaded by Appellant’s arguments. First, the nature of using a template requires that the questions be “pre-arranged” so that answers may be scored with the template. Second, the claims do not Appeal 2011-012772 Application 10/813,082 8 require that the responses be “randomly arranged” across the master answer sheet or that the template “precludes the need” to search and transfer answers. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, Appellant has failed to identify any error in the Examiner’s findings or conclusions. For the reasons above, we sustain the rejection of claims 4, 5, and 8 as unpatentable over Parmenter and Lousig-Nont. DECISION For the above reasons, the Examiner’s decision to reject claims 1, 2, and 4-8 is affirmed and the decision to reject claim 3 is reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Parmenter. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the Appeal 2011-012772 Application 10/813,082 9 proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation