Ex Parte MazurskyDownload PDFPatent Trial and Appeal BoardJul 5, 201613205173 (P.T.A.B. Jul. 5, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/205, 173 08/08/2011 23446 7590 07/07/2016 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Richard B. Mazursky 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 24487US01 1417 EXAMINER ISLAM, SYED A ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 07/07/2016 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD B. MAZURSKY 1 Appeal 2014-004866 Application 13/205, 173 Technology Center 3600 Before JOHN C. KERINS, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Richard B. Mazursky ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-52. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the Real Party in Interest is PDQ Mazoo, LLC. Appeal Br. 2. Appeal2014-004866 Application 13/205, 173 CLAIMED SUBJECT MATTER The invention concerns a foldable indicator. Spec., Abstract. Claims 1, 22, and 41 are independent. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. An indicator integrated into an item comprising: at least two separation edges, the first separation edge having a first termination point and a second termination point and the second separation edge having a third termination point and a fourth termination point; an aperture adjacent to the first and third termination points; and a score adjacent to the second and fourth termination points, wherein the indicator is separated from the item along the first and second separation edges using the aperture and folded over the score to an open position such that: at least a portion of the indicator extends beyond a perimeter edge of the item, and a void, contiguous with the aperture, exists between the first and second separation edges, wherein the indicator is foldable over the score m an inward direction and an outward direction. Appeal Br. 36 (Claims App.) (emphasis added). Independent claims 22 and 41 also recite "a score." Id. at 39-43 (Claims App.). REJECTIONS The claims stand rejected as follows: I. Claims 1, 5-9, 11-13, 18, 21-23, 27-31, 33, 34, and 40 under 35 U.S.C. § 103(a) as unpatentable over Spink 2 Appeal2014-004866 Application 13/205, 173 (US 2008/0308621 Al, pub. Dec. 18, 2008) and Wyant (US 5,540,513, iss. July 30, 1996).2 II. Claims 2--4, 10, 24--26, and 32 under 35 U.S.C. § 103(a) as unpatentable over Spink, Wyant, and Kachel (US 5,256,130, iss. Oct. 26, 1993). III. Claims 14--20 and 35-39 under 35 U.S.C. § 103(a) as unpatentable over Spink, Wyant, Burke (US 8,006,893 B2, iss. Aug. 30, 2011 ), and Kachel. IV. Claims 41, 44--48, and 52 under 35 U.S.C. § 103(a) as unpatentable over Spink and Valencia (US 3,561,147, iss. Feb. 9, 1971). V. Claims 42 and 43 under 35 U.S.C. § 103(a) as unpatentable over Spink, Valencia, and Kachel. VI. Claims 49 and 50 under 35 U.S.C. § 103(a) as unpatentable over Spink, Valencia, and Kelley (US 8,024,882 B2, iss. Sept. 27, 2011). VII. Claim 51under35 U.S.C. § 103(a) as unpatentable over Spink, Valencia, and Wyant. 2 Although claim 31 is not listed in the heading, see Final Act. 5, claim 31 is treated in the body of the rejection over Spink and Wyant. Id. at 6-7. 3 Appeal2014-004866 Application 13/205, 173 ANALYSIS Rejection I Regarding independent claims 1 and 22, the Examiner finds that Spink discloses indicator 108, which is folded over line 106 to an open position. Final Act. 5. The Examiner finds that Spink fails to disclose, inter alia, the claimed score, but finds that Wyant discloses "score 15." Id. at 6 (emphasis omitted). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Spink to include Wyant's "score line" to "provid[e] an easy ... folding mechanism with low manufacturing cost." Id. Further, the Examiner finds that the "[O]ffice fails to see the difference between score and a fold line. Appellant has no[t] provided any definition of the term 'score' in the specification." Ans. 3. Therefore, the Examiner interprets Wyant's "fold line 15" as a "score" because it performs the same function. Id. Appellant argues that Wyant' s fold line 15 "is structurally different than a score." Appeal Br. 13-14. Appellant argues that the Specification describes the claimed "score" as "a notched or grooved line, for example, cut into a surface 116 of item 100." Id. at 14 (citing Spec. i-f 35). Appellant contends that this description is consistent with the definition of "score" provided by Merriam-Webster Online Dictionary, which defines the term as "a line (as a scratch or incision) made with or as if with a sharp instrument." Id. Finally, Appellant argues that Wyant itself "distinguishes between a fold line 15 and a scored line 16." Id. at 14--15. A preponderance of the evidence leads us to agree with Appellant and conclude that the Examiner's interpretation of "score" as indistinguishable 4 Appeal2014-004866 Application 13/205, 173 from Wyant' s fold line 15 is overly broad and unreasonable in light of Appellant's disclosure. Ans. 3; Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (noting that the broadest reasonable construction "'cannot be divorced from the specification and the record evidence,' and 'must be consistent with the [construction] that those skilled in the art would reach.' A construction that is 'unreasonably broad' and which does not 'reasonably reflect the plain language and disclosure' will not pass muster" (citations omitted)). Appellant's Specification does not define explicitly the term "score." See, e.g., Spec. i-f 35. Despite the absence of an explicit definition, the Specification indicates the "score" includes a discrete structure about which the claimed folding occurs. For example, the Specification describes that "[i]n certain embodiments, a score 102 may be a notched or grooved line ... cut into a surface 116 of an item 100." Id. This exemplary structure is consistent with the dictionary definition of "score" provided by Appellant. See Appeal Br. 14--15. Therefore, although the Specification does not define precisely what structure is required by the claimed "score," a person of ordinary skill in the art would understand the "score" to require some structure that facilitates the claimed folding. See, e.g., Wyant, 2:27-31, 62- 67. It cannot be interpreted so broadly as to include any area of an item upon which a fold could be made, such as an area lacking any structure to facilitate a fold, as interpreted by the Examiner (i.e., a fold line). Ans. 3. The Examiner finds that the prior art renders obvious claims 1 and 22 because there is no difference between a "score" and Wyant's "fold line 15." Id. We disagree. Wyant discloses that "fold line 15" is merely the edge of the card about which tabs may be folded. Wyant, 2:30-33 ("The tabs 12 are 5 Appeal2014-004866 Application 13/205, 173 outwardly foldable about the fold line 15 which is collinear with the edge 14 of the card 10. This allows the tabs 12 to be folded.") (emphasis omitted). Wyant does not disclose that fold line 15 includes any structure at all; it is described merely as the line upon which a fold is made. Id. By interpreting a "score" to be no different that "fold line 15," any other arbitrary foldable portion ofWyant's card 10 would, when folded, produce a fold line or "score" merely by virtue of the act of folding. Such an overly broad interpretation is unreasonable in light of Appellant's Specification. The claimed "score" requires more than the capability of being folded; it requires some structure including at least a physical alteration to a region of the material that facilitates, for the claimed invention, folding along such region. For these reasons, we cannot sustain the Examiner's rejection of claims 1 and 22 under 35 U.S.C. § 103(a) as unpatentable over Spink and Wyant. The rejection of dependent claims 5-9, 11-13, 18, 21, 23, 27-31, 33, 34, and 40 also is based on this unreasonably broad interpretation and, therefore, we cannot sustain the Examiner's rejection of those claims. Rejections II and III With respect to Rejections II and III, the Examiner does not rely on Kachel or Burke to cure the deficiency in the combination of Spink and Wyant, as discussed above. Final Act. 7-8. Therefore, we cannot sustain the Examiner's rejections of claims 2--4, 10, 14--20, 24--26, 32, or 35-39. Rejection IV Regarding independent claim 41, the Examiner finds that Spink discloses indicator 108, which is folded over line 106 to an open position. Final Act. 9. The Examiner finds that Spink fails to disclose, inter alia, the claimed score and indicator score, but finds that Valencia discloses "score 6 Appeal2014-004866 Application 13/205, 173 36 ... [and] indicator score 28." Id. at 10 (emphasis omitted). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Spink to include Valencia's "score line" to "provid[ e] an easy ... folding mechanism with low manufacturing cost." Id. Similar to the arguments made with respect to claims 1 and 22, Appellant argues that "Valencia's item 28 is merely a 'fold line' and Valencia's item 36 is merely described as an 'end of the tongue which is attached and bendable."' Appeal Br. 25-26. Again, Appellant argues that these regions do not include scores, as understood in light of the Specification. Id. at 26-27 (citing Spec. i-f 57 (providing the same description as paragraph 35)). We agree with Appellant, for the same reasons discussed above with respect to claims 1 and 22. Namely, the Examiner's construction of "score" is unreasonably broad. A person of ordinary skill in the art would not understand Valencia's "attached and bendable" tongue 36 to include a "score," and would not understand Valencia's "fold line 28" to be an "indicator score." See Valencia, 3: 5-13. These elements reflect merely areas where a tab may be folded or bent. Id. For these reasons, we cannot sustain the Examiner's rejection of claim 41 under 35 U.S.C. § 103(a) as unpatentable over Spink and Valencia. The rejection of dependent claims 44--48 and 52 also relies on the same unreasonably broad construction and, therefore, we cannot sustain the Examiner's rejection of those claims. 7 Appeal2014-004866 Application 13/205, 173 Rejections V-VII With respect to Rejections V-VII, the Examiner does not rely on Kachel, Kelley, or Wyant to cure the deficiency in the combination of Spink and Valencia, as discussed above. Final Act. 10-12. Therefore, we cannot sustain the Examiner's rejections of claims 42, 43, or 49-51. DECISION The rejections of claims 1-52 under 35 U.S.C. § 103(a) are REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation