Ex Parte Theresa et al

Patent Trial and Appeal Board

Feb 17, 2017

12570827 (P.T.A.B. Feb. 17, 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.
12/570,827 09/30/2009 Dominick Theresa 1900
88857 7590
DOMINICK THERESA
214 RIVENDELL WAY
EDISON, NJ 08817
EXAMINER
KIM, SHIN H
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
02/17/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DOMINICK THERESA, MICHELE KRAMER,
and NICK THERESA
Appeal 2014-005835
Application 12/570,827
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Dominick Theresa et al. (“Appellants”) filed a Request for Rehearing
(“Request” or “Req.”) of the Decision on Appeal entered August 31, 2016
(“Decision”), in this Application. The Request seeks reconsideration of the
Board’s affirmance of the rejection of claims 1, 3—6, 8, and 19-25.1
(I2): Claim 25
The Decision affirmed the rejection of claim 25 as indefinite
(Decision 3—4), and Appellants discuss a possible amendment to claim 25 to
1 The rejection of claims 5, 20, and 24 was designated as a NEW GROUND
OF REJECTION. See Decision 17.
2 Our section numbering corresponds to the section numbering in the
Request.
Appeal 2014-005835
Application 12/570,827
address this rejection, but do not assert that the Board overlooked or
misapprehended any points made by Appellants in the Appeal and Reply
Briefs (see Req. 3). Accordingly, we do not change our Decision with
respect to the rejection of claim 25 as indefinite.
(II): Claims 1, 3—6, 8, 19, and 20 and Erickson
The Decision affirmed the rejection of claims 1, 3—6, 8, 19, and 20 as
unpatentable over Slater, Dompier, and Erickson (see Decision 4—17), and
Appellants discuss the disclosure in Erickson, asserting that Erickson
discusses color only in relation to a third party and “how someone may want
to also place Erickson[’]s RFID tag upon [the] already color-coded file
folder within [a] file room.” See Req. 3—6. Specifically, Appellants
emphasize that “Erickson only speaks in 132 about [] THIRD PARTY file
rooms that ha[ve] and use[] color-coded file folders within file rooms.” Req.
4. Appellants also set forth definitions of the terms “radio frequency
identification,” “RFID tag,” “RFID reader,” “color-coded file folders,”
“color-coded file room,” and “color-coded filing room.” See Req. 6—7.
The Decision adequately addresses Appellants’ arguments about
Erickson’s disclosure of the use of color and whether a third party is the only
user of color-coding in Erickson. See Decision 5—8. Appellants do not
apprise us of any points overlooked or misapprehended in the Decision.
Accordingly, the Decision remains unchanged with respect to claims 1, 3, 4,
6, 8, and 19. Further, as to claims 5 and 20, the rejections of which were
designated as new grounds of rejection, the above-noted arguments are
unpersuasive for the same reasons discussed on pages 5—8 of the Decision.
Assuming, for the purpose of argument, that Erickson’s teaching of the use
of color-coded files is presented in terms of a third party’s use of these
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Appeal 2014-005835
Application 12/570,827
items, this fact, by itself, would not negate this disclosure in Erickson.
Additionally, even if this teaching is the not the focus of Erickson’s
disclosure, Erickson is available as prior art for all it teaches. Thus, we are
apprised of no persuasive reason that Erickson was not properly applied in
the rejection.
(Ill): Claims 5, 20, and24 and “Symbols”
Appellants contend that the term “symbols” should be interpreted to
be different from numbers and words. Req. 8. Appellants assert that
Decision relies on Slater to disclose symbols. See Req. 8—11. Furthermore,
Appellants assert “the Board decision mentioned just [s]o many mixed up
sentences from page 8 to 17 about symbols and Slater [] it’s best to get to
the point that Slater [] now DOES NOT DISCLOSE SYMBOLS as well
as Slater [] does not even TEACH PICTURES for symbols.” Req. 8.
Appellants’ state, “The Board also using this word ‘text’ upon symbols of
pictures is unfair but more overly the Board decision seems to be confusing
the word ‘text’ with some other case, art and/or appeal.” Req. 11.
The Decision agrees with Appellants’ contention that the term
“symbols” as recited in the claims, should be construed as something
different from text and numbers. See, e.g., Decision 10 (stating “In light of
Appellants’ Specification, we interpret the term ‘symbols’ as recited in the
claims to exclude text and numbers.”). Accordingly, Appellants’ argument
asserting that the Decision misinterpreted the word “symbols” is misplaced.
Moreover, the broadest reasonable interpretation of claim 5 does not require
symbols. See Decision 8—9. Rather, as discussed in the Decision, claim 5
further defines the symbols recited in claim 1, which recites symbols as one
of two alternatives. Id. Thus, as also discussed in the Decision, Appellants’
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Application 12/570,827
assertion regarding a failure of Slater to disclose markings that are symbols
is not commensurate with the scope of claim 5. See id. at 9.
As for claims 20 and 24, the Decision finds that the form of the
message carried on the recited labels (as text, numbers, or symbols) does not
carry patentable weight. See, e.g., Decision 11—13 (discussing non­
functional descriptive material). The Decision explains the use of Slater in
the rejection of claims 20 and 24 in light of this claim construction.
Decision 12—13. Appellants’ contention that Slater does not disclose
symbols as recited is not commensurate with the rejection of claims 20 and
24 and the broadest reasonable interpretation of these claims.3
Appellants contend, without persuasive explanation, “the 4 arts shows
there is no reasonable expectation of success, no suggestion or motivation in
combining the reference teachings, it would not have been obvious for a
person of ordinary skill in the art to combine Slater, Dampier, Erickson and
Yu arts.” Req. 10.
This conclusory statement does not apprise us of any deficiency in the
rejection of the claims. It is our understanding that a person of skill in the
art would consider labeling systems such as those recited in Appellants’
claims to be predictable. In this regard, Appellants set forth no reason why a
person of ordinary skill in the art, aware of the cited references, would have
had any difficulty in producing the claimed identification system and
assembly, much less why a person of ordinary skill in the art would not have
had a reasonable expectation of success. As for the motivation for the
proposed modifications, Appellants do not explain persuasively why any of
3 The analysis as to the interpretation and patentable weight of the term
“symbol” also applies to the symbol mentioned, but not required, in claim 5.
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Appeal 2014-005835
Application 12/570,827
the motivation(s) set forth by the Examiner are inadequate. See, e.g., Non-
Final Act. 5 (discussing the motivation for a modification based on Erickson,
stating “Such a modification would provide a means to enhance the
identifying properties of the system.”). Further, the motivation for the
proposed combination(s) does not have to be found in the references
themselves.
DECISION
We grant Appellants’ Request to the extent that we have considered
our Decision in light of the points raised by Appellants, but we deny the
Request with respect to any modification to the Decision.
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).
DENIED
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