Ex Parte Old

Patent Trial and Appeal Board

Feb 6, 2017

13821706 (P.T.A.B. Feb. 6, 2017)

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.
13/821,706 03/08/2013 Fraser Patison Old FOS-P0035 7174
35775 7590
DESIGN IP, P.C.
5050 W. TILGHMAN STREET
SUITE 435
ALLENTOWN, PA 18104
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
pair@designip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRASER PATISON OLD
Appeal 2015-003446
Application 13/821,7061
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Fraser Patison Old (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 15—22.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is the inventor, Mr.
Fraser P. Old. Appeal Br. 3 (filed Sept. 22, 2014).
2 Claims 23—26 are withdrawn. See Final Act. 3 (transmitted Feb. 5,
2014). Claims 1—14 are canceled. See Appellant’s Amendment 2, filed
Sept. 20, 2013.
Appeal 2015-003446
Application 13/821,706
INVENTION
Appellant’s invention relates to “labels attached to wine bottles.”
Spec. 1,11.4-5.
Claim 15 is illustrative of the claimed invention and reads as follows:
15. A label having a surface, said surface comprising a
centrally located generally rectangular area surrounded by at
least two non-circular tracks of substantially uniform color
impression, wherein adjacent tracks have an alternating color
impression, each of said tracks is adapted to receive indicia
thereon and is sufficiently wide to enable said indicia to be of a
size which is legible to a prospective purchaser viewing said
label, and said central area and said tracks substantially fill the
label.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 15—18 and 20—22 under
35 U.S.C. § 102(b) as being anticipated by Pendergast (US
2,046,924, iss. July 7, 1936).3
II. The Examiner rejected claims 15, 16, 18, and 22 under
35 U.S.C. § 102(b) as being anticipated by Tennent’s Bottle
Beer Label 77
(http://www.flickr.eom/photos/l 1133950@N02/3944207305,
last visited Jan. 26, 2017) (hereafter “Tennent”).
III. The Examiner rejected claims 15—22 under 35 U.S.C. § 103(a)
as being unpatentable over either Pendergast or Tennent.
3 We consider the Examiner’s omission of claim 17 from the heading of
this rejection to be a typographical error because the claim is discussed in
the body of the rejection. See Final Act. 3^4.
2
Appeal 2015-003446
Application 13/821,706
ANALYSIS
Rejection I
The Examiner finds that Pendergast discloses a label including
a centrally located generally rectangular area surrounded by at
least two non-circular tracks/border of substantially uniform
color impression wherein adjacent tracks/border of have an
alternating color impression, each of the tracks/border is
adapted to receive indicia thereon and is sufficiently wide to
enable the indicia to be of a size which is legible to a
prospective purchaser viewing the label, and the central area
and the tracks/border substantially fill the label.
Final Act. 3. The Examiner explains that the centrally located generally
rectangular area is imprinted with the phrase “DOE’S BEVERAGES” and is
surrounded by a plurality of non-circular borders. See id. at 7.
The Examiner’s annotated Figure 6 of Pendergast is shown below:
Id. at 4. The Examiner’s annotated Figure 6 of Pendergast shows a label
including a centrally located generally rectangular area imprinted with the
phrase “DOE’S BEVERAGES” that is surrounded by a pair of dark colored
non-circular borders/tracks with a contrasting light colored border
therebetween.
3
Appeal 2015-003446
Application 13/821,706
Appellant argues that the thinly spaced borders of Pendergast “are so
thin that they are plainly not ‘adapted to receive indicia thereon,’ nor are
they ‘sufficiently wide to enable said indicia to be of a size which is legible
to a prospective purchaser viewing said label,’ as required by claim 15.”
Appeal Br. 7.
In response, the Examiner takes the position that because “a specific
size for the tracks and/or indicia” is not defined and “printing indicia in a
variety of sizes from the very small to the very large is old and well known
in the art,” the tracks of Pendergast are adapted to receive indicia thereon, as
called for by claim 15. Ans. 7 (transmitted Oct. 23, 2014). The Examiner
further states that “with the aid of an optical device extremely small size
print/font is legible to [a] purchaser/viewer” of the claimed label. Id.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, Appellant’s
Specification describes that the purpose of the claimed label “is to enhance
the self[-] selecting properties of a bottle of wine by providing it with a label
designed to increase the visual attractiveness of the bottle compared with
[other] wine bottles having conventional labels.” See Spec. 2,11. 11—13. As
such, in light of the Specification, we agree with Appellant that the term
“legible,” as understood by a person of ordinary skill in the art, and in light
of the Specification, means “capable of being read or deciphered . . . with
ease . . . easily readable.” Reply Br. 2—3 (citing Dictionary.com;
http://dictionary.reference.com/browse/legible) (filed Dec. 22, 2014).
Therefore, Appellant is correct in that claim 15 requires that its indicia be
4
Appeal 2015-003446
Application 13/821,706
read or deciphered “without the aid of an external device, such as a
magnifying glass or microscope.” Id. at 3.
In contrast, although we appreciate the Examiner’s position that
independent claim 15 does not define the size of the tracks or the indicia
thereon (see Ans. 7), we note that Pendergast’s pair of spaced dark colored
borders, upon which the Examiner relies, along with the intermediate light
colored border therebetween, as the claimed non-circular tracks, are mere
lines. Our reviewing court has stated that the claim term “adapted to” “is
frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ...
[although the phrase can also mean ‘capable of or ‘suitable for.’” In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc.
v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). In this
case, the Examiner has not adequately explained how a line is capable of or
configured to receive indicia thereon that a user can view without the aid of
an external device. Accordingly, we agree with Appellant that Pendergast’s
pair of spaced dark colored border (lines) are “not wide enough to receive
indicia” and thus, are not “adapted to receive indicia.” See Reply Br. 3.
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claims 15—18 and 20—22 under 35 U.S.C. § 102(b) as anticipated
by Pendergast.
Rejection II
Claims 15, 16, and 18
Appellant has not presented arguments for the patentability of claims
16 and 18 apart from claim 15. See Appeal Br. 8—9. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 15 as the
5
Appeal 2015-003446
Application 13/821,706
representative claim to decide the appeal of the rejection of these claims,
with claims 16 and 18 standing or falling with claim 15.
The Examiner finds that Tennent discloses a label having a front
surface including
a first inner track, a second white track, and an outer third blue
track. The front surface also comprising a centrally located
generally rectangular area surrounded by the three non-circular
tracks/border of substantially uniform color impression wherein
adjacent tracks/borders of have an alternating color impression,
each of the tracks/border is adapted to receive indicia thereon
and is sufficiently wide to enable the indicia to be of a size
which is legible to a prospective purchaser viewing the label,
and the central area and the tracks/border substantially fill the
label.
Final Act. 5. The Examiner’s annotated Figure of Tennent is shown below:
Id. at 5. The Examiner’s annotated Figure of Tennent shows a label
including a centrally located generally rectangular area imprinted with a
capital letter “T” that is surrounded by a first red track, a second white track,
and a third blue track having indicia thereon.
6
Appeal 2015-003446
Application 13/821,706
Appellant first argues that Tennent’s tracks do not have an alternating
color impression, as called for by claim 15, but rather each track “has a
unique color impression.” See Appeal Br. 8—9.
Although we appreciate that each of Tennent’s three tracks has a
different color, nonetheless, we note that because claim 15 requires “at least
two non-circular tracks,” claim 15 can reasonably be interpreted to require
“two non-circular tracks . . . wherein adjacent tracks have alternating color
impressions.” See Appeal Br. 14. As such, because the first track is red and
the second track is white, we agree with the Examiner that “the red and
white rings/tracks surrounding the central white area . . . alternate] in
color.” Ans. 8. Moreover, we note that the tracks of Tennent’s label
alternate in color between a dark color, i.e., red, to a light color, i.e., white,
and then to a dark color, i.e., blue. See Tennent, Figure.
Appellant further argues that the second white track of Tennent “is so
thin that it is plainly not ‘adapted to receive indicia thereon,’ nor is it
‘sufficiently wide to enable said indicia to be of a size which is legible to a
prospective purchaser viewing said label,’ as required by claim 15.” Appeal
Br. 9 ; see also Reply Br. 4.
We are not persuaded by Appellant’s argument because the second
white track of Tennent is wide enough such that it is legible to a person of
ordinary skill in the art without the aid of an external device. See Tennent’s
Figure. Therefore, the same person of ordinary skill in the art would have
readily recognized that any indicia, i.e., marks, received within the legible
second white track of Tennent would also be legible.
Furthermore, because the second white track of Tennent is legible
without the aid of an external device, the Examiner is on solid footing to
7
Appeal 2015-003446
Application 13/821,706
shift the burden to Appellant to prove that markings received within
Tennent’s second white track would not be legible. In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990). As Appellant has not shown that markings
received within Tennent’s second white track would not be legible,
Appellant’s argument is not persuasive of Examiner error.
Accordingly, the second white track of Tennent is capable of and
configured to receive indicia therein, as called for by independent claim 15.
Therefore, for the foregoing reasons, we sustain the rejection of claim 15
under 35 U.S.C. § 102(b) as anticipated by Tennent. Claims 16 and 18 fall
with independent claim 15.
Claim 22
Claim 22, which depends from claim 15, adds the limitation that “the
at least two non[-]circular tracks are rectangular.” Appeal Br. 14.
Appellant argues that none of Tennent’s tracks are rectangular
because “all of them have rounded comers and/or sides.” Id. at 9.
Moreover, Appellant notes that Tennent’s 3rd blue track “is almost circular.”
Id.
In response, the Examiner takes the position that “the red and white
track adjacent the central white rectangular area [are considered] to be
rectangular.” Ans. 10.
Appellant’s Specification describes the claimed “non-circular tracks”
as either “substantially rectangular” (see Spec. 2,1. 18) or as “rectangular”
(see id. at 4,1. 6 describing outer and inner tracks 6 and 7, respectively).
Hence, Appellant’s Specification differentiates between the term
8
Appeal 2015-003446
Application 13/821,706
“rectangular” and the phrase “substantially rectangular.4” An ordinary and
customary meaning of the term “rectangular” is “shaped like a rectangle,”
wherein a “rectangle” is “a parallelogram all of whose angles are right
angles.” SeeMerriam Webster’s Collegiate Dictionary (10th ed. 2005).
Here, the sides of Tennent’s first red track, second white track, and
third blue track are rounded and thus form tracks that are “substantially
rectangular.” See Tennent’s Figure; Norgren, Inc. v. Int’l Trade Comm ’n,
699 F.3d 1317, 1324 (Fed. Cir. 2012) (construing and applying “generally
rectangular”). Therefore, as the the sides of Tennent’s first red track, second
white track, and third blue track do not form right angles, we agree with
Appellant that Tennent’s tracks are not rectangular, as called for by
claim 22. Accordingly, we do not sustain the anticipation rejection of
claim 22.
Rejection III
Appellant has not presented arguments for the patentability of
claims 16—22 apart from claim 15. See Appeal Br. 8—9. Therefore, we
select claim 15 as the representative claim to decide the appeal of the
rejection of these claims, with claims 16—22 standing or falling with
claim 15.
The Examiner finds that “[t]he claimed non-circular tracks of uniform
color are considered to be printed matter.” Final Act. 6. Thus, the Examiner
concludes that “it would have been obvious to one having ordinary skill in
4 The term “substantial” is often used as a modifier to imply
“approximate” rather than “perfect.” See Playtex Prods., Inc. v. Proctor and
Gamble Co., 400 F.3d 901, 907 (Fed. Cir. 2005).
9
Appeal 2015-003446
Application 13/821,706
the art to construct the label taught by Pendergast or Tennent[] having any
suitable indicia, graphic and/or printed matter thereon to convey any desired
message to the viewer.” Id. at 6—7.
Appellant argues that “there is a functional relationship between the
visual features of Applicant’s label and the substrate.” Appeal Br. 10.
According to Appellant, “the [claimed] features have visual properties that
serve the functional purpose of immediately attracting the attention of a
viewer to the container to which the label is applied, despite that container
being in close proximity to many similar looking containers.” Id. (citing
Appellant’s Amendments, filed June 21, 2013, at p. 6—7, and on Sept. 30,
2013, atp. 9-10, respectively).
It is well established that when descriptive material is not functionally
related to the substrate, the descriptive material “will not distinguish the
invention from the prior art in terms of patentability.” In re Gulack, 703
F.2d 1381, 1385 (Fed. Cir. 1983). 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
“endless” feature of the band, and the band without the printed matter would
similarly be unable to produce the result, the printed matter in this case (non­
circular tracks of uniform color) does not depend on any feature of the label
and the label does not depend on the printed matter. In this case, although
we appreciate Appellant’s position that the claimed non-circular tracks have
visual features that serve a functional purpose, this does not mean that the
10
Appeal 2015-003446
Application 13/821,706
depiction of the non-circular tracks of claim 15 exploits, or interrelates with,
the underlying structure of the label of independent claim 15. Hence, the
printed matter (non-circular tracks of uniform color) does not depend on the
claimed label and the label does not depend on the claimed printed matter.
Lastly, we note Appellant’s reference to US Patent 8,420,206, as
evidence that the claimed “label can be likened to being the opposite of that
of a camouflage pattern, and camouflage patterns have been recognized as
being functional and have been granted utility patent protection by the
USPTO.” Appeal Br. 10. We are not persuaded by Appellant’s position
because patentability decisions involving claims in other patents or patent
applications are not necessarily germane to issues in another patent
application. See In re Gyurik, 596 F.2d 1012, 1016 (CCPA 1979) (“Each
case is determined on its own merits; allowed claims in other applications or
patents are not considered in reviewing specific rejections of specific
claims.”).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 15 as unpatentable over Pendergast or
Tennent. Claims 16—22 fall with claim 15.
SUMMARY
The Examiner’s decision to reject claims 15—18 and 20—22 under
35 U.S.C. § 102(b) as being anticipated by Pendergast is reversed.
The Examiner’s decision to reject claims 15, 16, 18, and 22 under
35 U.S.C. § 102(b) as being anticipated by Tennent is affirmed as to
claims 15, 16, and 18 and reversed as to claim 22.
11
Appeal 2015-003446
Application 13/821,706
The Examiner’s decision to reject claims 15—22 under 35 U.S.C.
§ 103(a) as being unpatentable over either Pendergast or Tennent 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).
AFFIRMED
12