Ex Parte Menkin

Patent Trial and Appeal Board

Sep 25, 2013

12013336 (P.T.A.B. Sep. 25, 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.
12/013,336 01/11/2008 Elizabeth S. Menkin 999400-2628 8416
7590 09/25/2013
JULIE GROVES
147 VISTA DEL MONTE
LOS GATOS, CA 95030-6335
EXAMINER
COLLINS, DOLORES R
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/25/2013 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 ELIZABETH S. MENKIN
____________

Appeal 2011-011604
Application 12/013,336
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
GEORGE R. HOSKINS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011604
Application 12/013,336
2
STATEMENT OF THE CASE
Elizabeth S. Menkin (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-22 under 35 U.S.C. § 103(a) as
unpatentable over Tilney (US 4,828,498, issued May 9, 1989).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to a kit “to facilitate conversations about
personal planning subjects such as . . . end-of-life care.” Spec. 1, para. [001].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A kit for focusing planning by or for a person, the kit
including a plurality of cards, each card bearing a depiction of a
different single end-of-life goal potentially desired by the
person and instructions to the person and/or another acting in
that person’s behalf to select from that plurality of cards those
cards which most closely reflect the end-of-life goals desired by
the person and to thereafter communicate to others the identity
of these most-closely-reflecting selected cards.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Appellant has not presented arguments for the patentability of claims
2-22 apart from claim 1. App. Br. 4 and Reply Br. 3. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2-22 standing or falling with claim 1.
The Examiner found that Tilney discloses a kit having 33 cards with
graphic communication thereon for planning a diet, but fails to disclose (1) a
Appeal 2011-011604
Application 12/013,336
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kit that “specifically addresses ‘Advanced Directives’ or end-of-life
outcomes” and (2) “the indicia as claimed.” Ans. 3- 4. However, the
Examiner takes the position that the use of the claimed kit for
communicating an end-of-life goal is a mere recitation of intended use and
points to In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) as evidence
that “the recitation of an intended use for an old product does not make a
claim to that old product patentable.” Ans. 4 and 5. Furthermore, the
Examiner points to In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) to
show that although the cards of Tilney’s kit do not depict a “single end-of-
life goal,” as called for by claim 1, “when the claimed printed matter is not
functionally related to the substrate in an unobvious manner, it will not
distinguish the invention from the prior art in terms of patentability.” Ans.
4. Thus, according to the Examiner, “[t]he only positive structure is the
card, per se.” Ans. 5.
Appellant argues that while Tilney’s kit is “useful for planning meals
for a diet,” the kit of claim 1 is “useful for dealing with a person’s end of life
issues.” App. Br. 6 and Reply Br. 9. According to Appellant, because each
card of claim 1’s kit deals with a single end-of-life goal and the instructions
to select the cards that reflect the desired end-of-life goal, “the components
and the function of the claimed kit are entirely different than the structure
and the function of the Tilney kit.” App. Br. 6; see also Reply Br. 4-5.
Thus, Appellant argues that the Examiner has failed to point out how a
person of ordinary skill in the art “could make the jump from a diet kit . . . to
a kit to aid in addressing how [a] person wants to die.” App. Br. 9 and
Reply Br. 9.
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At the outset, we agree with the Examiner that independent claim 1
requires nothing more than “a plurality of cards”1. See Ans. 5. Claim 1 does
not recite any specific structure for the recited “cards.” Rather, claim 1
defines them only by their intended use, i.e., for “depiction of a different
single end-of-life goal.” Although Appellant is permitted to define a part of
the invention in functional terms, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
Schreiber, 128 F.3d at 1477-78. In this case, the cards of Tilney’s kit have
indicia thereon that communicate information to a viewer. See Tilney, fig.
1. As such, the cards of Tilney are fully capable of being used for
communicating any information to the viewer, including an end-of-life goal
of the type alluded to in claim 1.
Pointing to In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983),
Appellant further contends that, “there clearly exists a new and unobvious
functional relationship between the printed matter of the invention of
Applicant’s claims 1-22 and the substrate.” App. Br. 9 and Reply Br. 8. We
are not persuaded by Appellant’s argument because it is well settled that to
show a new and unobvious functional relationship, it has to be shown that
the printed matter would not achieve its purpose without the substrate, and
the substrate without the printed matter would similarly be unable to produce
the desired result. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). In
contrast to In re Gulack where the printed matter would not achieve its
educational purpose without the band and the band without the printed

1 With respect to the “instructions” of claim 1, we note that attachment
of a set of instructions to a known product does not constitute a patentable
distinction over the known product. See Ngai, 367 F.3d at 1339.

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matter would similarly be unable to produce the result, in this case, the
printed matter (“depiction of a different single end-of-life goal”) does not
depend on the claimed cards and the cards do not depend on the claimed
printed matter. In other words, the “depiction of a different single end-of-
life goal” on the cards of claim 1 does not exploit, or interrelate with, the
underlying structure of the cards of claim 1. Moreover, while Appellant
argues that the printed matter is functionally related to the cards because it
informs a person about the “person’s end of life issues” (see App. Br. 9 and
Reply Br. 9), this argument is unpersuasive because the substance of the
printed matter cannot impart patentability as it is “useful and intelligible
only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 2-22 standing or falling
with claim 1, as unpatentable over Tilney.

SUMMARY
The Examiner’s decision to reject claims 1-22 is affirmed.
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

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