Ex Parte TACKETT

Board of Patent Appeals and Interferences

Aug 10, 2011

11748360 (B.P.A.I. Aug. 10, 2011)

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 08/10/2011
PATTERSON & SHERIDAN, L.L.P.
3040 POST OAK BOULEVARD
SUITE 1500
HOUSTON, TX 77056
EXAMINER
MENDIRATTA, VISHU K
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/10/2011 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 KEITH MARTIN TACKETT
____________________

Appeal 2009-012642
Application 11/748,360
Technology Center 3700
____________________

Before: LINDA E. HORNER, EDWARD A. BROWN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012642
Application 11/748,360
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and enter new grounds of rejection.

The claims are directed to articles having domino patterns. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An article of manufacture, comprising a domino pattern,
wherein each half of each domino in the domino pattern abuts
two adjacent dominos and all abutting portions of the dominos
on the article of manufacture have an identical number of spots.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Destito
Billoni
Elliott
US 4,143,496
US 6,346,312 B1
US D449,656 S
Mar. 13, 1979
Feb. 12, 2002
Oct. 23, 2001

REJECTIONS
Claims 19 and 20 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite. Ans. 3.
Claims 1-5, 8-12 and 15-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Billoni and Elliott. Ans. 3.
Claims 1-3, 6-10, 13 and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Destito and Elliott. Ans. 4.

Appeal 2009-012642
Application 11/748,360
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OPINION
The Examiner’s rejections of claims 1-5, 8-12 and 15-20 as unpatentable
over Billoni and Elliott and of claims 1-3, 6-10, 13 and 14 as unpatentable
over Destito and Elliott are affirmed.
Appellant argues the rejection claims 1-5, 8-12 and 15-20 as
unpatentable over Billoni and Elliott as a group. App. Br. 9-10. Appellant
also argues the rejection of claims 1-3, 6-10, 13 and 14 as unpatentable over
Destito and Elliott as a group. App. Br. 10. We select independent claim 1 as
representative for each of these rejections. See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to the Examiner’s rejections under 35 U.S.C. § 103(a)
based upon the combination of Billoni or Destito and Elliot the sole issue for
our consideration can be reduced to whether to afford the “domino pattern”
patentable weight. Aside from the domino pattern, claim 1 only requires an
article of manufacture. There is no dispute that Billoni and Destito each
disclose articles of manufacture.
The Examiner concluded that the claimed domino pattern amounts to
“printed matter” and should not be entitled patentable weight. Ans. 3-6. The
Examiner also cited Elliot as demonstrating that it was known to use
dominoes for ornamentation. Ans. 3, 4.
The critical question regarding the applicability of the so-called
“printed matter doctrine” is whether there exists any new and unobvious
functional relationship between the printed matter and the substrate. In re
Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). “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.” Id. at
1385, citing In re Miller, 418 F.2d 1392 (CCPA 1969); see also In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004).
Appeal 2009-012642
Application 11/748,360
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Appellant contends that the domino pattern constitutes a structural
limitation and is not printed matter. App. Br. 9-10. However, Appellant has
not demonstrated, and we do not find, any new and unobvious functional
relationship between the domino pattern and the substrate. Indeed, the
substrate in claim 1 can be any “article of manufacture” which could have
any function. Thus, the claimed domino pattern in no way depends on the
substrate nor does it transform the article of manufacture itself into
something new. See In re Ngai, 367 F.3d at 1339. At best, where the
substrate is a tile or wallpaper (see, e.g., claims 6 and 15), the pattern would
function to help align neighboring tiles or sheets. This still does not create
any new and unobvious functional relationship between the domino pattern
and the substrate because any pattern extending over multiple sheets of tile
or wallpaper would perform that same function. Thus, we agree with the
Examiner that the domino pattern amounts to printed matter and should not
be afforded patentable weight.
Claim 1 is ultimately directed to an ornamental design on an article of
manufacture. Features having no function and related only to ornamentation
cannot serve to structurally distinguish the claimed invention from the prior
art in an application for a utility patent under 35 U.S.C. § 101. In re Seid,
161 F.2d 229, 231 (CCPA 1947).
Since we agree with the Examiner that the claimed domino pattern
amounts to “printed matter” and should not be entitled patentable weight and
since Billoni and Destito each disclose an “article of manufacture,” the
subject matter of claim 1 would have been obvious to one having ordinary
skill in the art with or without the teachings of Elliot.
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Application 11/748,360
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Accordingly, we sustain the rejection of claims 1-5, 8-12 and 15-20 as
unpatentable over Billoni and Elliott and the rejection of claims 1-3, 6-10,
13 and 14 as unpatentable over Destito and Elliott.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description and enablement requirements.
Independent claims 1, 8 and 15 each require a pattern “wherein each
half of each domino in the domino pattern abuts two adjacent dominos and
all abutting portions of the dominos on the article of manufacture [wallpaper
in claim 15] have an identical number of spots.” None of the figures in
Appellant’s Specification show such a pattern because as long as there are
edges there are always dominoes along the edges having a half that does not
abut two adjacent dominoes as required by the claims. See, e.g., corner
dominoes in Fig. 2. The only way to meet this limitation is by providing a
domino pattern having no edges, that is, one that is infinite. This is
apparently what Appellant intends to claim. See Transcript of Oral Hr’g, Jul.
21, 2011, at 5, ll. 18-21.
The claims do not comply with the written description requirement
because the claims contain subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in the art
that the inventor, at the time the application was filed, had possession of the
claimed invention. Appellant’s disclosure would not reasonably convey to
one of skill in the art that the inventor possessed an article of manufacture or
wallpaper having an infinite pattern as claimed. See Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citations omitted).
Appeal 2009-012642
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Appellant’s Specification does not describe an infinite pattern or show such
a pattern in any of the figures.
The claims also do not comply with the enablement requirement
because an undue and unreasonable amount of experimentation would be
required to produce an article of manufacture or wallpaper having an infinite
pattern. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The nature of
the invention is that of an article of manufacture containing an infinite
pattern. Appellant provides no direction in the Specification as to how one
having ordinary skill in the art would go about making such an article of
manufacture having an infinite pattern. Thus, claims 1-20 contain subject
matter which was not described in the Specification in such a way as to
enable one skilled in the art to make and/or use the invention.

We reverse the Examiner’s rejection of claims 19 and 20 under 35 U.S.C.
§ 112, second paragraph as indefinite. However, pursuant to our authority
under 37 C.F.R. § 41.50(b), we enter new grounds of rejection of 19 and 20
under 35 U.S.C. § 112, second and fourth paragraphs.
The Examiner erred in rejecting claims 19 and 20 under 35 U.S.C.
§ 112, second paragraph as indefinite for referring to Figures 1 and 2,
respectively. Mere reference to a specific figure does not render the claim an
omnibus-type claim, nor indefinite, as the Examiner suggests. Ans. 5.
Compare Ex parte 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”).
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While reference to a specific figure does not render the claim
indefinite, reference to a figure in a dependent claim that shows a pattern
inconsistent and incompatible with the pattern recited in the parent claim not
only renders the claim indefinite under 35 U.S.C. § 112, second paragraph,
but also fails to further limit the claimed subject matter as required by 35
U.S.C. § 112, fourth paragraph.
For the same reasons discussed above with regard to claim 1,
independent claim 15 likewise requires an infinite pattern. Dependent claims
19 and 20, in requiring the pattern to be the finite pattern depicted in Figures
1 and 2, attempt to claim subject matter outside the scope of claim 15. Thus,
claims 19 and 20 do not further limit the subject matter of claim 15 as
required by 35 U.S.C. § 112, fourth paragraph. See, e.g., Pfizer, Inc. v.
Ranbaxy Labs. Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006).
Further, because claims 19 and 20 conflict with the subject matter of
the claim from which they depend, it is not clear what subject matter claims
19 and 20 would encompass. Thus claims 19 and 20 fail to particularly point
out and distinctly claim the subject matter which the applicant regards as his
invention, as required by 35 U.S.C. § 112, second paragraph. See id.

DECISION
The Examiner’s rejections of claims 1-5, 8-12 and 15-20 as
unpatentable over Billoni and Elliott and of claims 1-3, 6-10, 13 and 14 as
unpatentable over Destito and Elliott are affirmed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description and enablement requirements.
Appeal 2009-012642
Application 11/748,360
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We reverse the Examiner’s rejection of claims 19 and 20 under 35
U.S.C. § 112, second paragraph as indefinite. However, pursuant to our
authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection of
19 and 20 under 35 U.S.C. § 112 second and fourth paragraphs.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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Application 11/748,360
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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