Ex Parte St. Claire

Board of Patent Appeals and Interferences

Dec 7, 2010

11231413 (B.P.A.I. Dec. 7, 2010)

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. 11/231,413 09/20/2005 Sandra St. Claire STCL01 5970 7590 12/07/2010 RYLANDER & ASSOCIATES PC 406 West 12th Street Vancouver, WA 98660 EXAMINER CHAN, KO HUNG ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 12/07/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SANDRA ST. CLAIRE ____________ Appeal 2009-009266 Application 11/231,413 Technology Center 3600 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009266 Application 11/231,413 2 STATEMENT OF THE CASE Sandra St. Claire (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-8. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellant’s invention relates to a notary privacy guard that slips over two sides and a corner of a book such as a notary public entry journal for protecting information by concealing or obscuring written entries. Spec. 2: 16-17 and 3: 5-7 and fig. 1. Claim 1 is representative of the claimed invention and reads as follows: 1. A notary privacy guard, comprising: A first face substantially opaque having at least four sides; A second face having at least four sides; and A sleeve formed by joining two adjoining sides of the first face with corresponding two adjoining sides of the second face into which two sides and a corner of a book can be slipped while leaving the bottom and right sides of the two faces unjoined wherein the sleeve can slip over two sides and a corner of a book to selectively cover any portion of the open journal. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Sexton US 538,706 May 7, 1895 Igeta US 5,237,956 Aug. 24, 1993 Davis US 6,155,410 Dec. 5, 2000 Appeal 2009-009266 Application 11/231,413 3 The following rejections are before us for review: The Examiner rejected claims 1, 2, and 5 under 35 U.S.C. § 102(b) as anticipated by Sexton. The Examiner rejected claims 6 and 8 under 35 U.S.C. § 102(b) as anticipated by Davis. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as unpatentable over Davis. The Examiner rejected claims 3, 4, and 7 under 35 U.S.C. § 103(a) as unpatentable over Sexton and Igeta. SUMMARY OF DECISION We AFFIRM-IN-PART. ANALYSIS The anticipation rejection based on Sexton Claims 1 and 2 Each of independent claims 1 and 2 requires a sleeve that can selectively cover any part (portion, amount) of an open journal. Appellant argues that the bookmark of Sexton is not capable of selectively covering any part of an open journal. App. Br. 9. Pointing to Figure 6 of Sexton, the Examiner responds that the bookmark of Sexton selectively covers a portion of the open journal. Ans. 7. Although we appreciate the Examiner’s position that the bookmark of Sexton selectively covers a portion of the open journal, we note that claims 1 and 2 specifically require that the claimed sleeve be capable of covering any part (portion, amount) of the open journal. Claims are to be given their Appeal 2009-009266 Application 11/231,413 4 broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, an ordinary and customary meaning of the term “any” that is most consistent with the Specification and the understanding of those of ordinary skill in the art is “1: one or some indiscriminately of whatever kind: a: one or another taken at random.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Since the bookmark of Sexton can only be positioned on the corners of the book, we find that the bookmark of Sexton is not capable of covering a randomly (indiscriminately) chosen portion of the book, that is, any portion of the book. See Sexton, figs. 1 and 6. As such, Sexton does not teach all the limitations of claims 1 and 2. Accordingly, the rejection of claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Sexton cannot be sustained. Claim 5 Independent claim 5 requires that the sleeve be able to slide along the journal page to the bottom of the page when the page is full. App. Br., Claims Appendix. With respect to claim 5, Appellant merely reiterates the claim limitations and the Examiner’s rejection without pointing to any error in the Examiner’s rationale. App. Br. 9-10. Appellant merely concludes that, “Sexton discloses nothing which meets this limitation, therefore Sexton cannot anticipate claim 5.” App. Br. 9. “A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” See 37 Appeal 2009-009266 Application 11/231,413 5 C.F.R. § 41.37(c)(1)(vii). Furthermore, we agree with the Examiner that the bookmark of Sexton is capable of sliding along the page of a book covering an entire page of the book that has a size that permits Sexton’s bookmark to cover it in its entirety. Ans. 8. In conclusion, we agree with the Examiner that Sexton teaches all the limitations of claim 5 and as such, we shall sustain the rejection of claim 5 under 35 U.S.C. § 102(b) as anticipated by Sexton. The anticipation rejection based on Davis Appellant argues that the sleeve of Davis “is limited to sleeves for retaining credit cards” and is incapable of operating as a notary privacy guard. App. Br. 6 and 10. See also Reply Br. 1-2. Appellant further argues that the limitation in the preamble of a “notary privacy guard” “imposes the limitation that the apparatus operate with a notary journal.” App. Br. 15. See also Reply Br. 3. Hence, it appears that Appellant is distinguishing the claimed invention not by its structure but by the use to which the claimed device is put, namely a notary privacy guard. It is well settled that the preamble of a claim does not limit the scope of a claim when it simply states a purpose or intended use of the invention. Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985). When we look at the preamble of Appellant’s claimed invention, we note that a preamble will not usually limit the scope of the claim unless the preamble provides antecedence for ensuing claim terms and limits the claim accordingly. This is what the jurisprudence means by giving life, meaning Appeal 2009-009266 Application 11/231,413 6 and vitality to the claims. 2 In this instance, there is no nexus between the notary privacy guard, the intended use of the privacy guard for a notary journal (book), and any language in the body of independent claim 6. There is no structure that would limit the privacy guard to be used with a notary journal (book). The body of claim 6 merely recites “a book.” App. Br., Claims Appendix. In this case, it is clear that the body of the claim is a self- contained description of the subject matter claimed, and the limitation of a “notary privacy guard” is merely an intended use. Furthermore, we note that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In this case, we agree with the Examiner that the device of Davis constitutes a credit card privacy guard. Ans. 6. We further agree with the Examiner that the credit card privacy guard of Davis is capable of receiving therein three sides and two corners of a book to cover any portion of the book because claim 6 is not limited to a particular book size. Ans. 6-7. In conclusion, since the privacy guard of Davis is capable of sliding down over a book to selectively cover any portion of the book, we conclude that the privacy guard of Davis satisfies all the limitations of claim 6 and as such, the rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by Davis is sustained. 2 A preamble simply stating the intended use or purpose of the invention will usually not limit the scope of the claim, unless the preamble provides antecedents for ensuing claim terms and limits the claim accordingly. Accord C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1350 (Fed. Cir. 1998). Appeal 2009-009266 Application 11/231,413 7 With respect to claim 8, Appellant does not present additional arguments. App. Br. 10. Accordingly, the rejection of claim 8 under 35 U.S.C. § 102(b) as anticipated by Davis is likewise sustained. The obviousness rejection over Davis Independent claim 7 requires two sleeves, each sleeve having “closed upper and outer edges and open bottom and inner edges.” App. Br., Claims Appendix. The Examiner found that Davis teaches closed upper and outer edges and “[o]pen bottom and inner edges (open bottom is defined by two inner edges).” Ans. 5. Appellant argues that the “Examiner has somehow construed the terms [open bottom and inner edges] to refer to the inside surfaces of the bottom edge of a sleeve.” App. Br. 13. The “open bottom and inner edges” is contrasted in the claim with the “closed upper and outer edges.” The Examiner correctly points to the upper and outer edges of Davis’ privacy guard that are closed. See Ans. 5. However, the Examiner then incorrectly construes the “open bottom and inner edges” limitation as an open bottom having inner edges. Just as the term “closed” is used as an adjective to describe both the upper and the outer edges of Davis’ privacy guard, the term “open” is also used as an adjective to describe both the bottom and the inner edges of Davis’ privacy guard. In other words, we conclude that a reasonable interpretation in light of the Specification of the phrase “open bottom and inner edges” requires that the privacy guard of Davis have a bottom edge that is separate from an inner edge. However, in Davis, the inner edge of the sleeve is not open because it forms a hinge 32 between the two compartments (sleeves). See Davis, figs. 1 and 7. Appeal 2009-009266 Application 11/231,413 8 In conclusion, Davis does not teach a sleeve having “closed upper and outer edges and open bottom and inner edges,” as called for by claim 7. Moreover, the Examiner’s proposed modification does not remedy the deficiency of Davis as described above. Therefore, the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Davis cannot be sustained. The obviousness rejection over Sexton and Igeta With respect to dependent claims 3 and 4, the addition of Igeta does not remedy the deficiency of Saxton as described above. Accordingly, the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Sexton and Igeta cannot be sustained. However, in contrast to claims 3 and 4, which require that the sleeve cover any part (portion, amount) of an open journal (by virtue of their dependency on independent claims 1 and 2, respectively), independent claim 7 requires “that a portion or substantially all of an open book can be placed inside the sleeve.” App. Br., Claims Appendix. Emphasis added. Hence, in other words, the sleeve of claim 7 is required to cover merely a portion of an open book (journal). Appellant argues that neither Sexton nor Igeta, alone or in combination, discloses the limitation “… that a portion or substantially all of an open book can be placed inside the sleeve,” as required by claim 7. App. Br. 15. Emphasis added. We find Appellant’s argument unpersuasive because the bookmark of Sexton covers the corner of an open book, and as such, covers a portion of the open book, as called for by claim 7. See also Sexton, figs. 1 and 6. Therefore, the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Sexton and Igeta is sustained. Appeal 2009-009266 Application 11/231,413 9 SUMMARY The decision of the Examiner is reversed as to claims 1-4 and affirmed as to claim 5-8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED-IN-PART mls RYLANDER & ASSOCIATES PC 406 WEST 12th STREET VANCOUVER, WASHINGTON 98660