Ex Parte Mindrum

Patent Trial and Appeal Board

Jun 23, 2016

13542813 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/542,813 07/06/2012 G. Scott Mindrum
26874 7590 06/27/2016
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
CINCINNATI, OH 45202
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.
0103085-0515558 5564
EXAMINER
TRUONG, CAM YT
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte G. SCOTT MINDRUM
Appeal2014-007875
Application 13/542,813
Technology Center 2100
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
JOHN A. EVANS, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 2, 12, 14, 16, and 18-21. App. Br. 9.
Claims 3-11, 13, 15, and 17 have been canceled. App. Br. 24, 25. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 The Appeal Brief identifies Making Everlasting Memories, L.L.C., as the
real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed April 11, 2014, "App. Br."), the Reply Brief
(filed July 7, 2014, "Reply Br."), the Examiner's Answer (mailed May 8,
2014, "Ans."), the Final Action (mailed November 5, 2013, "Final Act."),
the Specification (filed July 6, 2012, "Spec."), and the Declaration of Steven
Appeal2014-007875
Application 13/542,813
STATEMENT OF THE CASE
The claims relate to an on-line registry of information relating to
deceased persons. 3 See Abstract.
Claims 1 and 12 are independent. The claims have not been argued
separately and, therefore, stand or fall together. 37 C.F.R. § 41.37(c)(l)(iv).
An understanding of the invention can be derived from a reading of
exemplary Claim 1, which is reproduced below with some formatting added:
1. An apparatus, comprising:
(a) a concrete good including information relating to a
particular deceased person,
wherein the information included on the concrete good
includes the name of the particular deceased person,
wherein the information included on the concrete good
further indicates that the particular person is deceased; and
(b) an identifier on or near the concrete good,
wherein the identifier on or near the concrete good
indicates that additional information relating to the particular
deceased person is available online,
wherein the identifier comprises a machine-readable
feature that is configured to provide automatic acquisition of
C. Sefton (Evidence Appendix, "Sefton Declaration") for their respective
details.
3 Because we write for the Real Party, familiarity with the background of
this case is assumed and presented herein only to the extent necessary to
provide context for the analysis that follows. See US. Ethernet Innovations,
LLC v. Acer, Inc., 2015-1640, 2015-1641, n.1 (Fed. Cir. April 25, 2016).
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Application 13/542,813
the additional information available online through a device that
is separate from the concrete good in response to scanning the
machine-readable feature.
References and Rejections
The Examiner relies upon the prior art as follows:
Knowles et al. us 5,869,819 Feb.9, 1999
Richardson US 2002/0022962 Al Feb.21,2002
Manross, Jr. US 6,414,663 B 1 July 2, 2002
Hennings et al. US 6,763,496 Bl July 13, 2004
Hobbs et al. US 7,136,790 Bl Nov. 14, 2006
The claims stand rejected as follows:
1. Claims 3-10 stand rejected under 35 U.S.C. § l 12(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 15.
2. Claims 1, 2, 12, 14, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Manross, Richardson, and Knowles. Final
Act. 15-26.
3. Claims 1, 12, 14, 16, and 18 stand rejected under 35 U.S.C. § 103(a)
as obvious over Manross, Applicant's Admitted Prior Art ("AAPA"),
and Knowles. Final Act. 26-32.
4. Claims 2, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Manross, AAP A, Knowles, and Richardson. Final Act.
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Application 13/542,813
32-34.
5. Claims 3-10 stand rejected under 35 U.S.C. § 103(a) as obvious over
Richardson, Manross, Hennings, and Hobbs. Final Act. 34-39.
6. Claims 3-10 stand rejected under 35 U.S.C. § 103(a) as obvious over
Richardson, AAP A, Hennings, and Hobbs. Final Act. 39-45.
Related Appeals
On March 16, 2016, the present Panel issued Opinion, 2014-007867
("Mindrum II"), in Application 11/685,378, by the present inventor and
assigned to the present Real Party.
On May 25, 2016, the present Panel issued a DECISION ON
REQUEST FOR REHEARING, 2014-007867 ("Mindrum III"), in
Application 11/685,378.
On iviarch 1, 2013, the present Panel issued Opinion, 2010-010342
("Mindrum I"), in Application 11/685,378, by the present inventor and
assigned to the present Real Party.
ANALYSIS
CLAIMS 1, 2, 12, 14, 16, AND 18-20: OBVIOUSNESS OVER
MANROSS, RICHARDSON, AND KNOWLES
Appellant argues all claims as a group and specifically argues Claim
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Application 13/542,813
1. App. Br. 10. Appellant does not contend the cited art fails to teach each
claimed limitation. See App. Br. 13-15. Rather, Appellant argues Knowles
is not analogous art with respect to the claimed invention. (App. Br. 13;
Reply Br. 2) and the Examiner has improperly determined the level of
ordinary skill in the art. App. Br. 15.
Analogous art
The Examiner finds the applied art to be analogous and to teach each
claimed limitation. Ans. 5.
"Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011 ). Appellant contends the field of the claimed invention
relates to means to provide a memorial good (e.g., a grave headstone) and a
service that provides information relating to, e.g., a deceased person,
wherein the information is accessible remotely from the memorial good
(e.g., internet-based). App. Br. 14 (citing Sefton Declaration, i-f 10).
The Examiner finds Manross teaches a headstone including information
relating to the deceased and providing a user access to further computerized
information. Ans. 5. Richardson teaches methods allowing a user URL-
based access to web-based information relating to products and other users.
Id. Knowles teaches the claimed "identifier" as a machine-readable "URL
encoded barcode." Even were we to agree with Appellant that the cited art
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Application 13/542,813
fails the first Klein test, and we do not, we find each of the cited teachings
analogous to the claim because they are "reasonably pertinent to the
particular problem with which the inventor is involved." In re Klein at 1348.
The Examiner finds, and we agree, that similarly to the claimed
invention, Manross relates to a concrete headstone that directs a
user to access on a computer information about the deceased. Ans.
5. We further agree with the examiner's finding that, similarly to
the claimed invention, Richardson discloses a system for allowing
the use of a URL to navigate to a website for viewing information
relating to products and other users. Id. The Examiner finds
Knowles is also related to the claimed invention in that Knowles
teaches the claimed "identifier" as a URL encoded as a barcode.
Ans. 6.
Person having ordinary skill in the art
The Examiner finds the inventors of the cited references are persons
of ordinary skill in the art (POSKIA). Final Act. 3.
Appellant contends: (a) it would not have been obvious to those of
ordinary skill in the art to include a machine readable feature, on a concrete
good for the purpose of providing access to further information about a
deceased person, and (b) it would not have been obvious for the machine
readable feature to be on a headstone, and further yet for the machine
readable feature to be a barcode. App. Br. 15 (citing generally, Sefton
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Application 13/542,813
Declaration). Specifically, Appellant argues: "at the time of the invention,
the customary practice in the funeral industry was not to adorn headstones or
other memorial goods with features or information that did not convey
immediate and meaningful information to the viewer in a tasteful and
aesthetically pleasing way." App. Br. 15-16 (citing generally, Sefton
Declaration). Appellant further argues that applying a machine readable
feature to a headstone would not have been considered by those viewing a
headstone as tasteful. App. Br. 16.
The claims recite neither "tasteful," nor "aesthetically pleasing."
Thus, a POSKIA is not limited to one having particular aesthetic
sensibilities. Neither Appellant, nor Appellant's expert, have provided
evidence or testimony suggesting Manross does not represent the skill of a
POSKIA. Manross4 discloses a grave stone that visibly and "tastefully"
incorporates an electronic display and solar cells. ivianross, col. 1, 11. 31-3 5;
Fig. 2. Manross discloses the relevant information may be "entered first as
text and scanned images into a standard personal computer." Id., 11. 57-58.
We find a person who can enter text and scanned images into a personal
computer would be familiar with the internet and access to information
thereon. Such a person would also be familiar with URLs and barcodes.
In view of the foregoing, we sustain the rejection of Claims 1, 2, 12,
14, 16, and 18-20 over Manross, Richardson, and Knowles.
4 Manross has a priority date of February 2, 1998.
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CLAIMS 1,2, 12, 14, 16,AND 18-20: 0BVIOUSNESSOVERAPPLICANT'S
ADMITTED PRIOR ART ("AAP A")
Claims 1, 2, 12, 14, 16, and 18-20 stand rejected over AAPA
variously in combination Manross, AAP A, Knowles, and Richardson. Final
Act. 26-34. Appellant's traversal of Knowles (App. Br. 16) is not
persuasive for the reasons discussed above.
Applicant's Admitted Prior Art
On March 1, 2013, the present Panel issued Opinion, 2010-010342
("Mindrum I"), in related Application 11/685,378, by the present inventor
and assigned to the present Real Party. Appellant contends the Board found
that the Examiner's primafacie case improperly relied upon certain of
Appellant's disclosures as admitted prior art (AAPA). App. Br. 9. Appellant
argues the present prima facie case continues this improper reliance. Id.
The Examiner finds Afindrum I affirmed the rejections and therefore,
the Examiner's reliance upon the accused disclosures is proper. Ans. 3.
The Examiner fails either to read or to comprehend our Opinion in
Mindrum I. These same contentions and findings were present in Mindrum
II. In Mindrum II, we specifically, "maintain[ ed] our finding (Mindrum I, at
5) that the accused subject matter disclosed in Appellant's Specification is
not admitted prior art for purposes of the present application." Mindrum II,
at 6. For purposes of the present appeal, we reiterate that finding.
In Mindrum I and II, we found the claims to be unpatentable, but not,
as the Examine erroneously suggests, for reasons relating to AAP A. Rather,
we declined to give patentable weight to an "identifier" limitation.
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The "identifier" limitation.
Claim 1 recites, inter alia:
(b) an identifier on or near the concrete good,
wherein the identifier on or near the concrete good
indicates that additional information relating to the particular
deceased person is available online,
wherein the identifier comprises a machine-readable
feature that is configured to provide automatic acquisition of
the additional information available online through a device that
is separate from the concrete good in response to scanning the
machine-readable feature.
The critical question is whether the present "identifier" limitation is entitled
to patentable weight. In Mindrum II, we answered this question in the
negative with respect to a similar, but not identical "identifier" limitation.
Following the briefing in Mindrum II, the Federal Circuit promulgated In re
DiStefano, 808 F.3d 845 (December 17, 2015). Pursuant to Appellant's
request that the Board re-hear Mindrum II in light of DiStefano, this Panel
promulgated Mindrum III. We now consider the present "identifier"
limitation explicitly in light of DiStefano.
Printed matter
Whereas Appellant was quite willing to chastise the Examiner for
ignoring the Board's prior Mindrum I Opinion (App. Br. 10, 17-21; Reply
Br. 2), Appellant is equally guilty in ignoring this Board's Mindrum I
Opinion.
We declined to afford the claimed "identifier" patentable weight
because "[ t ]he critical question is whether there exists any new and
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Application 13/542,813
unobvious functional relationship between the printed matter and the
substrate." Mindrum I, 5 (quoting In re Gulack, 703 F.2d 1381, 1386 (Fed.
Cir. 1983)). We answered that question in the negative, finding"[ w ]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability." Mindrum II, 7 (quoting In re Ngai, 367 F. 3d 1336, 1339
(Fed. Cir. 2004)).
Appellant presents a substantially similar "identifier" limitation, but
declines to address our finding that such limitations are not entitled to
patentable weight. We suggest Appellant consider our Opinion in Mindrum
III, re-hearing Mindrum II. Therein we set forth an extended analysis
detailing why such "identifier" limitations are not entitled to patentable
weight.
The present "identifier" limitation does not recite "the identifier
indicating to people visiting the concrete memorial," as was the case in
Mindrum II. However, Appellant fails to suggest "any new and unobvious
functional relationship between the printed matter [the "identifier"
limitation] and the substrate." In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983)).
We find the claimed "identifier" merely labels data that has no
independent function. The claimed "identifier" can be read by a machine.
However, any such machine reading and using the identifier data to perform
a function is not recited in the claims. The identifier as claimed is a non-
functional description of data printed on or near the concrete. Therefore, we
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are not persuaded that the limitation added by amendment confers patentable
weight to the remainder of the claim. In view of the foregoing, we find
Claims 1, 2, 12, 14, 16, and 18-20 to be unpatentable.
DECISION
The rejection of Claims 1, 2, 12, 14, 16, and 18-20 under 35 U.S.C.
§ 103 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)(l )(iv).
AFFIRivIED
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