Ex Parte Skerpon

Board of Patent Appeals and Interferences

Mar 3, 2010

11181903 (B.P.A.I. Mar. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD FRANCIS SKERPON
____________________

Appeal 2009-004704
Application 11/181,903
Technology Center 3700
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Decided: March 3, 2010
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Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL
and STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 1-4 under 35 U.S.C. § 102(b) as being 2
anticipated by Leep (US 5,100,326, issued Mar. 31, 1992); in the alternative, 3
under 35 U.S.C. § 103(a) as being unpatentable over Leep; and under 4
§ 103(a) as being unpatentable over Bowen (US 6,439,572 B1, issued Aug.5
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27, 2002), Leep and Wollan (US 5,582,128, issued Dec. 10, 1996). We have 1
jurisdiction under 35 U.S.C. § 6(b). 2
We AFFIRM. 3
The claims on appeal relate to flash cards used for teaching the 4
defensive game of baseball. (Spec. 1, § 1). Claim 1 is representative: 5
1. A flash card for teaching a defensive action 6
of an athletic team in response to an offensive 7
situation of an opposing athletic team, said card 8
having front and back sides comprising: 9
a. a representation of an offensive 10
situation/action imprinted on the front side 11
of said flash card, and 12
b. a recommended defensive action to be taken 13
by defensive players corresponding to the 14
representation of the offensive 15
situation/action imprinted on the front side 16
of said flash card, the recommended 17
defensive action imprinted on the back of 18
said flash card. 19
20
ISSUES 21
The Examiner finds that Leep discloses each element of claims 1-4 22
except for the meaning and information conveyed by printed matter recited 23
in the claim. (Ans. 4). The Appellant contends that the differences in the 24
printed matter cannot be disregarded in determining whether Leep 25
anticipates claims 1-4 (Br. 6), particularly in view of an asserted new and 26
nonobvious functional relationship between the printed matter and the 27
structure of the card (Br. 7). 28
Three issues raised in this appeal are: 29
Does Leep anticipate the subject matter of claims 1-4? 30
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Would the subject matter of claims 1-4 have been 1
obvious from the disclosure of Leep? 2
Would the subject matter of claims 1-4 have been 3
obvious from the combined teachings of Bowen, Leep and 4
Wollan? 5
6
FINDINGS OF FACT 7
The record supports the following findings of fact (“FF”) by a 8
preponderance of the evidence. 9
1. Leep discloses a flash card as well as a set of flash cards 10
intended to be used for the teaching and practicing of the game of blackjack. 11
(Leep, col. 4, ll. 23-27). 12
2. A portion 10 of the front of Leep’s flash card is imprinted with 13
an image representating a player’s blackjack hand consisting of two or more 14
playing cards 11, 12 and a dealer’s “up” card 16. In other words, the front of 15
the flash card is imprinted with a combination of playing cards 11, 12, 16 16
which might be dealt by a dealer during the process of playing a game of 17
blackjack at a blackjack table in a casino. (Leep, col. 4, ll. 29-40). 18
3. A portion 40 of the back of Leep’s flash card is imprinted with 19
a recommended action 42 indicating a specific play that must be made in 20
response to the two or more playing cards 11, 12 and the “up” card 16 21
displayed on the front of the flash card. (Leep, col. 5, ll. 15-16 and 26-31). 22
4. The Examiner correctly found that, in playing blackjack, the 23
playing cards dealt by the dealer may be viewed as an offensive situation 24
and the recommended action may be viewed as a defensive action. See Ans. 25
3-4. 26
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5. One uses Leep’s flash card by looking at a portion 10 of the 1
front of the flash card which depicts a playing situation in the game of 2
blackjack; attempting to remember what action to take in response to the 3
situation; and turning the flash card over to view the recommended action in 4
the corresponding portion 40 of the back of the card. (Leep, col. 5, l. 61 – 5
col. 6, l. 2). 6
6. The preferred manner of using Leep’s cards is the same as the 7
preferred manner of using the subject matter of claims 1-4. (Compare Spec. 8
2, third paragraph with FF 5). 9
10
PRINCIPLES OF LAW 11
The subject matter of an apparatus claim is anticipated by a prior art 12
reference if the prior art discloses every structural limitation of the claimed 13
subject matter. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Each 14
of claims 1-4 recites an apparatus, namely, either a flash card or a deck of 15
flash cards. The subject matter of an apparatus claim must be distinguished 16
from the prior art in terms of structure in order to avoid anticipation. Ex 17
Parte Masham, 2 USPQ2d 1647, 1648 (BPAI 1987). The content or 18
meaning of printed matter recited in a claim does not structurally distinguish 19
the subject matter of the claim from prior art unless there is a new and 20
nonobvious functional relationship between the printed matter and the 21
remainder of the claimed subject matter. See In re Ngai, 367 F.3d 1336, 22
1338-39 (Fed. Cir. 2004). 23
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ANALYSIS 1
The Appellant contends that the printed matter recited in claims 1-4 2
structurally distinguishes the subject matter of those claims from the flash 3
cards disclosed in Leep because there exists a new and nonobvious 4
functional relationship between the printed matter and the recited card. 5
More specifically, claim 1 recites a flash card having front and back sides. 6
The Appellant argues that: 7
The information of the front of the claimed card 8
shows an offensive baseball situation, including, 9
inter alia, where a batted ball has been hit and 10
other game conditions. The back of the card is 11
functionally related to this information imprinted 12
on the front of the card as it presents an 13
appropriate response to be accomplished by the 14
defensive team. On the same basis, the printed 15
information is functionally related to the substrate, 16
with the information imprinted on one side of the 17
card constituting the athletic complement to the 18
information imprinted on the opposite side of the 19
card. 20
(Br. 7). 21
The printed matter appearing on the front and back sides of the flash 22
card of Leep bears the same functional relationship to Leep’s flash card as 23
the printed matter recited in appealed claims 1-4 bears to the card recited in 24
the appealed claims. Leep’s flash card, like the flash cards of claims 1-4, 25
has front and back sides. (FF 2 and 3). The front side of Leep’s flash card is 26
imprinted with an image representative of an offensive competitive situation, 27
namely, the playing cards dealt by a dealer in a blackjack game. (FF 2 and 28
4). The back side of Leep’s card is imprinted with a recommended 29
defensive action to be taken by players other than the dealer corresponding 30
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to the image of the offensive situation/action imprinted on the front side of 1
the flash card. (FF 3 and 4). The preferred manner of using Leep’s cards is 2
the same as the preferred manner of using the subject matter of claims 1-4 3
(FF 6), implying that Leep’s flash card and the subject matter of claims 1-4 4
function in the same manner. Consequently, there exists no functional 5
relationship between the flash card and the printed matter recited in claims 6
1-4 which is either new or nonobvious. 7
The subject matter of appealed claims 1-4 differs from the disclosure 8
of Leep only in that the content of the printed matter recited in claims 1-4 9
differs from the content of the printed matter disclosed in Leep. The content 10
of the printed matter (including the images and alpha-numeric 11
representations of the flash cards of claims 2 and 4), rather than a functional 12
relationship between the flash card and the printed matter, conveys the 13
nature of the offensive situation and the recommended defensive action 14
represented on the two sides. Thus, the only distinctions which the 15
Appellant has identified between Leep’s flash card and the subject matter of 16
claims 1-4 are not structural. Instead, the distinction is only “useful and 17
intelligible only to the human mind” and as such does not impart a 18
patentable distinction. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) 19
(quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). 20
21
CONCLUSIONS 22
Leep anticipates the subject matter of claims 1-4. The rejection of 23
claims 1-4 under § 102(b) as being anticipated by Leep is sustained. 24
The subject matter of claims 1-4 would have been obvious from the 25
disclosure of Leep. Facts probative of anticipation suffice to support a 26
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prima facie conclusion that an apparatus claim is obvious. In re Fracalossi, 1
681 F.2d 792, 794 (CCPA 1982). The Appellant presents no objective 2
evidence tending to show secondary indicia of nonobviousness (Br. 13). 3
Therefore, the alternative rejection of claims 1-4 under § 103(a) as being 4
unpatentable over Leep is sustained. 5
Since the subject matter of claims 1-4 would have been obvious from 6
the disclosure of Leep, the subject matter of claims 1-4 also would have 7
been obvious from the combined teachings of Bowen, Leep and Wollan. 8
The order in which prior art is applied in a rejection is not significant. See 9
e.g., In re Bush 296 F.2d 491, 496 (C.C.P.A. 1961). The rejection of claims 10
1-4 under § 103(a) as being unpatentable over Bowen, Leep and Wollan is 11
sustained. 12
13
14
DECISION 15
We AFFIRM the Examiner’s decision rejecting claims 1-4. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
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