Ex Parte SkerponDownload PDFBoard of Patent Appeals and InterferencesMar 3, 201011181903 (B.P.A.I. Mar. 3, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte DONALD FRANCIS SKERPON ____________________ Appeal 2009-004704 Application 11/181,903 Technology Center 3700 ____________________ Decided: March 3, 2010 ____________________ 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 Appeal 2009-004704 Application 11/181,903 2 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 Appeal 2009-004704 Application 11/181,903 3 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 Appeal 2009-004704 Application 11/181,903 4 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 Appeal 2009-004704 Application 11/181,903 5 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 Appeal 2009-004704 Application 11/181,903 6 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 Appeal 2009-004704 Application 11/181,903 7 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 22 23 24 25 26 Appeal 2009-004704 Application 11/181,903 8 mls 1 2 BANNER & WITCOFF, LTD. 3 1100 13TH STREET, N.W. 4 SUITE 1200 5 WASHINGTON, DC 20005-4051 6 Copy with citationCopy as parenthetical citation