Ex Parte Ratzmann

Patent Trial and Appeal Board

May 31, 2018

14681407 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/681,407 04/08/2015
10291 7590 06/04/2018
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
Blythe Ratzmann
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.
67467-0001 5709
EXAMINER
KIM, SHINH
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLYTHE RATZMANN
Appeal 2017-006119
Application 14/681,407
Technology Center 3600
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Blythe Ratzmann ("Appellant") 1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated February 19, 2016 ("Final Act."), rejecting claims 1, 4--11, and 14--
20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Blythe Ratzmann is identified as the real party in interest. Appeal Br. 3.
2 Claims 2, 3, 12, and 13 have been cancelled. Appeal Br. 23, 25 (Claims
App.).
Appeal 2017-006119
Application 14/681,407
CLAIMED SUBJECT MATTER
Claims 1, 10, and 20 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A foldable card, comprising:
a plurality of triangles connected side-to-side in a planar
material, foldable into a hexaflexagon, the card including:
a first set of six triangles forming a first face in a
first flexed orientation of the hexaflexagon;
a second set of six triangles forming a second face
in a second flexed orientation of the hexaflexagon; and
a third set of six triangles forming a third face in a
third flexed orientation of the hexaflexagon;
wherein print on the planar material is selectively
oriented on triangles of the first, second, and third faces, such
that, when flexed subsequently from the first, to the second, and
then to third flexed orientations, a story is progressively
conveyed to a user on each of the first, second, and third faces;
wherein the first face includes a center at an apex of
the first set of six triangles, and the story progresses from a
beginning to a first sub-ending, on the first face, with the
following steps:
the user orients the first face such that the
story is discernible to the user on the first triangle of the first set
of triangles; and
the user rotates the first face about the center
such that, at subsequent rotational orientations of the first face,
the story progresses to the first sub-ending;
wherein the foldable card includes the story
on three flexed orientations.
Appeal Br. 23 (Claims App.).
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REJECTIONS
1. Claims 1, 10, and 20 are rejected under 35 U.S.C. § I02(a)(l)
as anticipated by Garcia (US 5,405,147, issued Apr. 11, 1995).
2. Claims 4--9 and 14--19 are rejected under 35 U.S.C. § 103 as
unpatentable over Garcia.
3. Claims 11 is rejected under 35 U.S.C. § 103 as unpatentable
over Garcia and Sawada (US 2005/0097790 Al, published May 12, 2005).
ANALYSIS
Rejection 1
Appellant argues for the patentability of claims 1, 10, and 20 together
as a group. Appeal Br. 9-12. We select claim 1 as representative of the
grouping, and claims 10 and 20 stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Garcia discloses all limitations of claim 1.
Final Act. 2-3 (citing Garcia, col. 3, 11. 23-55, col. 4, 11. 33-34, Figs. 1, 2).
Appellant disagrees. Appeal Br. 9. Appellant contends that Garcia does not
teach a "story," as claimed. Id. at 10. According to Appellant, "[a] game
board or the other disclosed alternatives in Garcia do not amount to a story,
and the term 'story' or any of its equivalents do not even appear in Garcia."
Id.
Claim 1 recites that "print on the planar material is selectively
oriented on triangles of the first, second, and third faces" and "a story is
progressively conveyed to a user on each of the first, second, and third
faces." Appeal Br. 23 (Claims App.). Accordingly, the "print" forms the
"story." Claim 1 does not further limit the "story." Id.
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Application 14/681,407
We note that Appellant's Specification describes:
text may be included in each of the triangles that may correspond
to a story or other text. The story may include, as examples, a
fictional narrative, a non-fictional narrative, or a greeting for a
greeting card. It is contemplated, however, that any narrative
may be included, and not limited to that disclosed, and all
references to the term 'story' broadly encompasses any text that
may be used to convey information.
Spec. ,r 36 ( emphasis added). This description defines the term "story" as
"broadly encompass[ing] any text that may be used to convey information."
"[O]ur cases recognize that the specification may reveal a special definition
given to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs."
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis
added; citation omitted); Toro Co. v. White Consol. Indus., Inc., 199 F.3d
1295, 1301 (Fed. Cir. 1999) (claim terms are not construed in a
"lexicographic vacuum, but in the context of the specification and
drawings"). Construing the term "story" in view of the Specification, we
thus adopt Appellant's definition and construe this term in claim 1
accordingly.
Garcia discloses a board including a body that can be transformed to
contain different representations corresponding to other game boards.
Garcia, col. 1, 11. 36-40. Garcia discloses that the invention is not limited to
game boards, and "the object of the invention could likewise be applied to
the inscription of mathematical formulas or chemical formulas, or to any
other type of activity, such as that of constituting sides for the arrangement
or inscription of cards corresponding to sports and similar teams .... " Id. at
col. 2, 11. 3-9 (emphasis added). Accordingly, Garcia discloses that such
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inscriptions can be provided on cards, for example, and are not limited to
any type of activity. Figures 1 and 2 of Garcia depict opposite sides of a
sheet divided into triangles. Id. at col. 2, 11. 26-37, Figs. 1, 2. Figure 6
depicts a hexagonal configuration including six triangles. Id. at col. 3, 11.
36-38, Fig. 6. Figure 8 depicts another hexagonal configuration. Id. at col.
3, 11. 51-56, Fig. 8.
Garcia is not required to describe "the term 'story' or any of its
equivalents" in order to disclose a "story," as Appellant implies. Appeal Br.
10. Rather, because Appellant has defined this claim term, the issue is
whether Garcia discloses a "story" when this definition is applied to claim 1.
We are not persuaded by Appellant that Garcia fails to teach a "story," as
claimed. Id. According to claim 1, the "print" on the planar material of the
first, second, and third faces forms a "story." That is, the content of the print
is the "story." 3 Appellants' broad definition of a "story" covers any "print"
that "convey[ s] information." The definition does not limit the information
to what is conveyed. In Garcia, the inscription of the sheets, which is not
limited to any particular activity, would "convey information" in the
hexagonal configurations. As such, we agree with the Examiner that the
inscription on the triangles of the hexagonal configurations disclosed in
Garcia can reasonably be considered a "story," as called for by claim 1.
Appellant also contends that Garcia does not teach that "a story is
progressively conveyed to a user on each of the first, second, and third
faces," as recited in claim 1. Appeal Br. 10. However, this contention is
3 "Our past cases establish a necessary condition for falling into the category
of printed matter: a limitation is printed matter only if it claims the content
of information." In re Stefano, 808 F.3d 845, 848 (Fed. Cir. 2015).
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premised on Appellant's position that Garcia fails to disclose a "story." We
are not persuaded that Garcia fails to disclose a "story."
Garcia teaches that multiple hexagonal configurations can be obtained
by transformations. See Garcia, col. 3, 11. 39-56. We are not persuaded that
the inscriptions printed on the triangles of the hexagonal configurations in
Garcia would fail to "convey information" to a user. As noted by the
Examiner, "Appellant does not define the story to define how each
progressive story is different." Ans. 3. Nor are we persuaded by Appellant
that the information printed on the faces of different hexagonal
configurations in Garcia fails to disclose "a story [that] is progressively
conveyed to a user on each of the first, second, and third faces." In Garcia,
inscriptions printed on the respective faces of first, second, and third
hexagonal configurations, for example, would convey information (i.e., a
"story") to a user by viewing the first hexagonal configuration, then
information would be conveyed to the user by viewing the second hexagonal
configuration, and then information would again be conveyed to the user by
viewing the third hexagonal configuration. By viewing the printed
information in such sequential manner, the information would be
"progressively conveyed" to the user.
Appellant also contends that Garcia does not teach "a first face that
includes a center at an apex of the first set of six triangles, and [a] story
[that] progresses from a beginning to a first sub-ending, on the first face," as
recited in claim 1. Appeal Br. 10 ( emphasis omitted). This contention is not
persuasive, as Appellant's definition of "story" does not limit what
information is printed on the first set of six triangles such that a "story"
"progresses," as claimed. For example, Appellant does not explain
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persuasively why the inscription of mathematical or chemical formulas
printed on the face of a set of six triangles in Garcia (see, e.g., Fig. 6) cannot
be reasonably considered information that "progresses from a beginning to a
first sub-ending," on the face.
Appellant further contends that Garcia does not teach a story that
progresses where "the user orients the first face such that the story is
discernible to the user on the first triangle of the first set of triangles."
Appeal Br. 10. According to Appellant, "as Garcia is rotated about its
center, the faces rotate as well and any story thereon is no longer discernible
as the test rotates about the center." Id. at 11.
Appellant's contention is not persuasive. Claim 1 requires the story to
be discernible to the user "on the first triangle of the first set of triangles" in
some unspecified orientation of the first face relative to the user. Although
claim 1 recites that "the story progresses to the first sub-ending" as "the user
rotates the first face about the center," the claim does not require the story to
be "discernible to the user" when the first face is rotated about the center and
"the story progress to the first sub-ending." Accordingly, Appellant's
argument is premised on limitations that are not claimed. Limitations that
do not appear in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
As for Garcia, information printed on the triangles shown in Figures 6
and 8, for example, would be "discernible" to the user in the orientations
shown. Accordingly, we are not persuaded by Appellant's contention.
For these reasons, we sustain the rejection of claim 1. Claims 10 and
20 fall with claim 1.
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Rejection 2
Appellant contends that Garcia fails to teach or suggest the limitations
recited in claims 4--9 and 14--19. Appeal Br. 13. Appellant presents
separate argument for patentability for claims 4--6 only. Id. at 18.
Claim 4 depends from claim 1 and recites, "wherein, upon flexing to
the second flexed orientation and then to the third flexed orientation, the
story progresses on the second face and on the third face when the user
rotates respectively about each respective center." Id. at 23-24 (Claims
App.). Appellant contends, "because Garcia is silent as to the relevance of
the orientation of the triangular faces, Garcia therefore does not teach or
suggest, or render obvious, a story that progresses on a second face and to a
third face when the user rotates about the center." Id. at 18.
This contention is not persuasive. Appellant's definition of a "story"
does not limit what information is printed on the triangles of the first,
second, or third face, and thus, does not limit what information "progresses,"
or how the information "progresses," on the second and third faces when
these faces are rotated about their respective centers. In Garcia, for
inscriptions printed on the faces of different first, second, and third
hexagonal configurations, the printed information can be reasonably
considered to "progress" "on the second face and on the third face" when a
user rotates the faces about the center.
Claim 5 depends from claim 4 and further recites that "print is
oriented on each triangle such that the story begins from an outer edge of the
first face and progresses toward the center." Appeal Br. 24 (Claims App.).
Claim 6 also depends from claim 4 and further recites that "the print is
oriented on each triangle such that text of the story is approximately
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orthogonal to each respective center." Id. For these claims, the Examiner
determines that the variation of the orientation of the printed matter is an
obvious modification that is well known in the art, and such modification
would enhance the display properties of the foldable display in Garcia. Final
Act. 6.
For claim 5, Appellant contends that Garcia does not teach or suggest
the recited limitation "because the orientations of the faces of Garcia are
rotated in ways not even disclosed by Garcia." Appeal Br. 18. For claim 6,
Appellant contends that "Garcia's orientation changes from triangle to
triangle, and from face to face, and therefore the recited subject matter is
neither taught nor suggested." Appeal Br. 18.
Claims 5 and 6 pertain to the arrangement of the print on the triangles
and faces of the foldable card. Appellant's contentions do not persuasively
address the Examiner's position that modifying the orientation of the printed
inscriptions in Garcia would have been an obvious modification to enhance
the display properties of the foldable display. Final Act. 6. That is, it would
have been obvious to a person of ordinary skill in the art to arrange the
printed inscriptions on the faces in Garcia in spatial orientations and
locations that enhance viewing of the inscriptions by users. Appellant's
contentions do not apprise us of any error in the Examiner's rationale.
Accordingly, we sustain the rejection of claims 4--6 as unpatentable
over Garcia. We also sustain the rejection of claims 7-9 and 14--19 for the
same reasons as those for parent claims 1 and 10.
Rejection 3
Appellant relies solely on the dependency of claim 11 from claim 10
for patentability. Appeal Br. 19. Accordingly, we sustain the rejection of
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claim 11 as unpatentable over Garcia and Sawada for the same reasons as for
claim 10.
DECISION
The rejections of claims 1, 4--11, and 14--20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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