Ex Parte Tackett

Patent Trial and Appeal Board

Aug 30, 2017

11748360 (P.T.A.B. Aug. 30, 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.
11/748,360 05/14/2007 KEITH MARTIN TACKETT TACK/0002 6295
26290 7590 09/01/2017
PATTERSON & SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
PS Docketing @ pattersonsheridan .com
pair_eofficeaction@pattersonsheridan.com
jcardenas @pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH MARTIN TACKETT
Appeal 2015-003560
Application 11/748,360
Technology Center 3700
Before BRANDON J. WARNER, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-003560
Application 11/748,360
STATEMENT OF THE CASE
Appellant Keith Martin Tackett appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision, as set forth in the Final Office Action dated
July 11, 2014 (“Final Act.”), rejecting claims 21, 23, 24, and 26.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to articles having domino patterns. Claims 21
and 24 are the independent claims on appeal. Claim 21, 23, 24, and 26 are
reproduced below:
21. An article of manufacture, comprising:
a roll of wallpaper; and
a repeating domino pattern, as shown by Figure 1, placed
on the roll of wallpaper, the repeating domino pattern having a
horizontal stagger of one-tenth of the repeating domino pattern
as shown by Figure 1, wherein each of A, B, C, D, E, F, and G
on the roll of wallpaper represents a unique number of spots.
23. The article of manufacture of claim 21, wherein A is 0 spots,
B is 1 spot, C is 5 spots, D is 3 spots, E is 6 spots, F is 4 spots,
and G is 2 spots.
24. An article of manufacture, comprising:
a roll of wallpaper; and
a repeating domino pattern, as shown by Figure 3, placed
on the roll of wallpaper, the repeating domino pattern having a
horizontal stagger of one-fifth of the repeating domino pattern as
shown by Figure 3, wherein each of A, B, C, D, E, F, and G on
the roll of wallpaper represents a unique number of spots.
1 Claims 1—20, 22, and 25 are cancelled. Appeal Brief, dated
November 11, 2014 (“Appeal Br.”), at 2.
2
Appeal 2015-003560
Application 11/748,360
26. The article of manufacture of claim 24, wherein A is 0 spots,
B is 1 spot, C is 2 spots, D is 3 spots, E is 6 spots, F is 4 spots,
and G is 5 spots.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Merry USD88,310 Nov. 15, 1932
Seeman USD161,390 Dec. 26, 1950
Elliott US D449,656 Oct. 23,2001
REJECTIONS
The Examiner made the following rejections:
1. Claims 21, 23, 24, and 26 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. Claims 23 and 26 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter for the claim upon which it depends.
3. Claims 21, 23, 24, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Seeman.
4. Claims 21, 23, 24, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Seeman and Merry.
5. Claims 21, 23, 24, and 26 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Seeman, Elliott, and Merry.
Appellant seeks our review of these rejections.
3
Appeal 2015-003560
Application 11/748,360
DISCUSSION
Procedural History
This is Appellant’s third appeal before the Patent Trial and Appeal
Board for the present application. In the first appeal (2009-012642, in the
Decision dated August 10, 2011) (hereafter “2011 Decision”), the Board
affirmed most of the Examiner’s rejections for claims 1—5, 8—12, and 15—20,
and entered new grounds of rejections for claims 1—20. Similarly, in the
second appeal (2013-000281, in the Decision dated January 29, 2014)
(hereafter “2014 Decision”), the Board affirmed most of the Examiner’s
rejections for claims 15—18 and 23—26, and entered new grounds of
rejections for claims 21 and 22. In the 2014 Decision, the Board agreed with
the Examiner’s determination that the claimed “domino pattern” on the
wallpaper of claim 15 is printed matter that “does not depend on the claimed
wallpaper and the wallpaper does not depend on the claimed printed matter,”
and “does not exploit, or interrelated with, the underlying structure of the
wallpaper.” 2014 Decision 8—9.
Rejection 1: The Rejection of Claims 21, 23, 24, and 26 as Being Indefinite
The Examiner determines that claim 21 ’s recitation of “a repeating
domino pattern as shown in Fig. 1 . . . wherein each of A, B, C, D, E, F, and
G on the roll of wallpaper represents a unique number of spots,” and claim
24’s recitation of “a repeating domino pattern as shown in Fig. 3 . . . wherein
each of A, B, C, D, E, F, and G on the roll of wallpaper represents a unique
number of spots” are indefinite. Final Act. 2—4. According to the Examiner,
it is unclear if claims 21 and 24 recite letters or spots, and the Examiner does
not find any spots on Figure 1 or 3. Id.
4
Appeal 2015-003560
Application 11/748,360
Mere reference to a specific figure does not render the claim
indefinite, as the Examiner suggests. Final Act. 2-4, Ans. 13—14; Compare
Exparte Fressola, 27 USPQ2d 1608 (BPAI 1993) (affirming a rejection
under 35 U.S.C. § 112, second paragraph, of a claim reciting a system “as
disclosed in the specification and drawings herein”), with Ex parte Squires,
133 USPQ 598 (BPAI 1961) (reversing a rejection under 35 U.S.C. § 112,
second paragraph, of a claim reciting a font “as shown in Fig. 1”). The
Specification discloses, for example, that “[sjpots on the dominos are shown
by letters A through G wherein each letter represents a unique number of
spots, such as 0 spots through six spots in a standard set of double-six
dominos.” Spec. 115. Here, a person skilled in the art would understand
what is claimed when the claim is read in light of the Specification.
The Examiner also determines that, in claim 21, “‘the repeating
domino pattern as shown having a horizontal stagger of one-tenth of the
repeating domino pattern as shown by the figure 1 ’ is indefinite.” Final Act.
3. Similarly, the Examiner also determines that, in claim 24, “‘the repeating
domino pattern as shown having a horizontal stagger of one-fifth of the
repeating domino pattern as shown by the figure 3 ’ is indefinite.” Id. at 4.
The Examiner takes the position that “a horizontal stagger of’ one-tenth or
one-fifth is unclear because it is unclear “what is a horizontal direction with
respect to.” Id. at 3^4.
Appellant correctly explains that paragraph 18 of the Specification
and Figure 1 describe that the domino pattern has vertical sides 15, 17, and
the horizontal direction is clear in view of the vertical direction. In view of
Appellant’s argument, we understand that the horizontal direction, and thus
the recited “horizontal stagger,” is “at right angles to a vertical line [i.e.,
5
Appeal 2015-003560
Application 11/748,360
vertical sides 15, 17].” The Free Dictionary, available at
http://www.thefreedictionary.com/horizontal (last visited August 23, 2017).
For the reasons above, the rejection of claims 21, 23, 24, and 26 under
35U.S.C. § 112, second paragraph, is not sustained.
Rejection 2: The Rejection of Claims 23 and 26 For Failing
to Further Limit the Subject Matter of Independent Claims 21 and 24
Adopting the holding in the 2014 Decision, the Examiner finds “that
because the letters A—G of independent claims 21 and 24 are replaced by
dots in dependent claims 23 and 26, respectively, this constitutes destruction
of the structure in the independent claims and does not further limit the
independent claims.” Final Act. 5; see also Ans. 15—16. Quoting form the
2014 Decision, the Examiner states:
At the outset, we note that independent claim 21 requires
“a repeating pattern as shown by Figure 1.” Br., Claim App’x.
Similarly, independent claim 24 requires “a repeating pattern as
shown by Figure 3.” See id. Thus, in a first instance, the claimed
wallpaper of claims 21 and 24 requires the repeating pattern
shown in Figures 1 and 3, respectively. Further, we do not agree
with Appellant that because claims 21 and 24 specify that each
of letters A—G “represents a unique number of spots,” this means
that the wallpaper of claims 21 and 24 does not require letters.
See Br., Claims App’x (emphasis added). This argument is
unpersuasive because determining that letters A—G “represents a
unique number of spots” (id.) (emphasis added) can only be
performed by the human mind. The substance of the claimed
printed matter cannot impart patentability as it is “useful and
intelligible only to the human mind.” See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (quoting In re Bemhart, 417 F.2d
1395, 1399 (CCPA 1969). As such, in contrast to Appellant’s
position, the claimed wallpaper of claims 21 and 24 requires a
repeating pattern having dominoes with letters A—G thereon. See
Figures 1 and 3 of Appellant’s Drawings.
6
Appeal 2015-003560
Application 11/748,360
Hence, we agree with the Examiner that because each of
dependent claims 23 and 26 requires dominoes with dots as
depicted in Figures 2 and 4, respectively, the structure of
independent claims 21 and 24, from which claims 23 and 26
depend, is destroyed. In other words, claims 23 and 26 do not
“specify a further limitation of the subject matter claimed.” See
35 U.S.C. § 112, fourth paragraph. In conclusion, for the
foregoing reasons, we sustain the rejection of claims 23 and 26
under 35 U.S.C. § 112, fourth paragraph, for failing to further
limit the claimed subject matter.
Ans. 16 (quoting from the 2014 Decision 7—8).
Acknowledging the 2014 Decision, Appellant merely states:
Applicant maintains the position stated in prior responses that no
claim recites wallpaper having letters instead of spots. Any
claim construction that concludes the pending claim require
letters instead of spots is based on error in ignoring printed matter
recited in the claim during claim construction. (See, In re
Gulack, 703 F. 2d at 1385, 217 USPQ at 403^104, Fed. Cir.
1983). Reversal of this rejection of Claim 23 [and 26] is
respectfully requested.
Appeal Br. 7—8. Appellant’s argument is not persuasive because it does not
explain why the Board erroneously concluded that the recited “domino
pattern” is printed matter that is not accorded patentable weight. We adopt
and incorporate by reference the 2014 Decision’s affirmance of the rejection
of claims 23 and 26 under 35 U.S.C. § 112, fourth paragraph.
Rejections 3—5: The Prior Art Rejections of Claims 21, 23, 24, and 26
In accordance with the 2014 Decision (at 9), the Examiner concludes
that claims 21, 23, 24, and 26 contains printed matter that is not entitled to
patentable weight:
7
Appeal 2015-003560
Application 11/748,360
[T]he limitations “1/10 (in claims 21, 23) and 1/5 (in claims 24,
26) horizontal stagger and letters A, B, C, D, E, F and G
representing unique number of spot” are being treated as printed
matter and having no functional tie to the wall paper. The same
are being treated as an article of manufacture with ornamental
pattern having no functional tie to the article.
Final Act. 6—7 (Rejection 3); see also id. at 8 (Rejection 4), 11 (Rejection 5).
The Examiner explains:
Printing images, patterns, designs, geometric or free-form,
pictures, characters, letters, words and other symbols is a matter
of aesthetic/decorative requirement. The printing on wall paper
has no functional tie to the substrate. The wallpaper can function
without the claimed printed information or with any other printed
information. There is no unobvious functional relationship
between the printed matter and accordingly no patentable weight.
It is well settled that 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).
Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability, see In re Gulack, 703
F.2d 1381.
. . . [I]n this case, the [printed] matter (domino pattern)
does not depend on the claimed wallpaper and the wallpaper does
not depend on the claimed printed matter. In other words, the
claimed “domino pattern” on the wallpaper of claim 21, 23, 24,
26 does not exploit, or interrelate with, the underlying structure
of the wallpaper of claim. . . .
The only purpose of providing the claimed pattern is to
make the wallpaper aesthetically attractive and no functional
relationship between the printing matter and the substrate.
In order to make the article of manufacture attractive to the
user it would have been obvious to modify the print any suitable
attractive printing.
8
Appeal 2015-003560
Application 11/748,360
One of ordinary skills in art at the time the invention was
made would have suggested printing any suitable desired indicia
to attract potential user.
Id. at 7—8 (Rejection 3); see also id. at 8—9 (Rejection 4), 11—13
(Rejection 5).
Appellant’s arguments (Appeal Br. 8—9) ignore the Examiner’s
conclusions that “the limitations ‘1/10 (in claims 21, 23) and 1/5 (in claims
24, 26) horizontal stagger and letters A, B, C, D, E, F and G representing
unique number of spot’ are being treated as printed matter” and are entitled
to no patentable weight.2 Final Act. 6—7 (Rejection 3); see also id. at 8
(Rejection 4), 11 (Rejection 5). Appellant’s statement that “the printed
matter [] has a new and non-obvious relationship of either a horizontal
stagger of 1/10 of the repeating pattern for claims 21 and 23, or 1/5 of the
repeating pattern for Claims 24 and 26” (Appeal Br. 9; Reply Br. 3) is
conclusory and does not address the rejection as articulated by the Examiner.
Thus, Appellant does not identify Examiner error.
DECISION
For the above reasons, the Examiner’s rejection of claims 21, 23, 24,
and 26 under 35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner’s rejection of claims 23 and 26 under 35 U.S.C. § 112,
fourth paragraph, is AFFIRMED.
The Examiner’s rejections of claims 21, 23, 24, and 26 under 35
U.S.C. § 103(a) are AFFIRMED.
2 Similarly, Appellant does not address the 2014 Decision holding the
recited domino pattern is printed matter that is not accorded patentable
weight. 2014 Decision 9.
9
Appeal 2015-003560
Application 11/748,360
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
10