Ex Parte Van Den Bogart

Patent Trial and Appeal Board

Feb 23, 2017

12981730 (P.T.A.B. Feb. 23, 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.
12/981,730 12/30/2010 Thomas William Van Den Bogart 6427-00003 7053
26753 7590 02/24/2017
Andrus Intellectual Property Law, LLP
100 EAST WISCONSIN AVENUE, SUITE 1100
MILWAUKEE, WI 53202
EXAMINER
YESILDAG, LAURA G
ART UNIT PAPER NUMBER
2844
MAIL DATE DELIVERY MODE
02/24/2017 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 THOMAS WILLIAM VAN DEN BOGART
Appeal 2015-003118
Application 12/981,7301
Technology Center 2800
Before JUSTIN BUSCH, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3, 4, 6, 8—10, 12—16, 19, and 21. Claims 2, 5, 7, 11, 17, 18, and 20
have been canceled. Br. 32—34. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the inventor, Thomas Van Den Bogart, as the real
party in interest. Br. 3.
Appeal 2015-003118
Application 12/981,730
STATEMENT OF THE CASE
Introduction
Appellant’s invention is directed to “[a] multi-use park for the living
and the dead.” Abstract.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics'.
1. A bounded green space for the living and the dead, the
bounded green space comprising;
an artaleum-type columbarium located within and on the
bounded green space, the artaleum-type columbarium
comprising an asymmetric structure having niches, wherein
each niche is adapted to contain ashes of a deceased entity;
a mosaicleum-type columbarium located within and on
the bounded green space, the mosaicaleum-type [sic]
columbarium comprising an asymmetric combination of niches,
wherein each niche has a different appearance and is adapted to
contain ashes of a deceased entity, and wherein the combination
of niches cooperate to form a mosaic theme',
a building for accommodating milestone life-continuum
events, the building further including an electronic device on
which are stored narratives about deceased entities whose
ashes are deployed in the bounded green space;
wherein non-cremated remains of previously existing
entities are not deployed within the bounded green space;
wherein the number of deceased entities deployed per
acre of bounded green space is between 50 and 10,000.
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Application 12/981,730
The Examiner’s Rejections2
1. Claims 1 and 9 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2—A.
2. Claims 1, 9, and 14 stand rejected under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 4—7.
3. Claims 9, 10, 12—15, and 21 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 8—10.
4. Claims 9, 10, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Northaven UMC, Celebration Garden,
http://web.archive.org/web/20091013193213/http://www.northaven.org/
celebrationgarden.html (Oct. 13, 2009) (“Northaven”) and City of
Southfield, Burgh Historical Park, https://www.cityofsouthfield.com/
CityDepartments/LZ/ParksRecreation/Facilities/tabid/ 462/Default.aspx
(May 3, 2007) (“Southfield”). Final Act. 10-17.
5. Claims 1,3,4, and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Northaven; Conrad Pickel Studio, Inc.,
Columbarium Mosaic Niche Fronts, http://www.pickelstudio.com/
columbarium mosaicfronts.php (April 15, 2009) (“Mosaic”); and Holocaust
Museum Houston,
2 We note that when setting forth the rejection statement for some of the
dependent claims, the Examiner does not consistently identify all of the
references relied upon in rejecting the base independent claim (see, e.g., the
rejection of dependent claim 8, Final Act. 25—27 (identifying Northaven,
Museum, and Saratoga) cf. the rejection of independent claim 1, Final
Act. 18—22 (identifying Northaven, Museum, and Mosaic)). Appellant does
not contest the rejection statements on this basis nor does Appellant appear
to have been prejudiced by the oversight. We treat the Examiner’s
typographical errors as harmless.
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http://web.archive.org/web/20091128035324/http://www.hmh.org/
pv_accessibility.shtml, Internet Wayback Machine (Nov. 28, 2009)
(“Museum”). Final Act. 18—24.
6. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Northaven, Museum, and Lucius Fisher Columbarium
Statue, Graceland Cemetery, 4001 N. Clark St. Chicago, IL, see
http:// www. waymarking .com/ waymarks/WMC6DD_Lucius_F isher_Monum
ent_Graceland_Cemetery_Chicago_IL (1916) (“Fisher”). Final Act. 25.
7. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Northaven, Museum, and Saratoga National Historical
Park, Internet Wayback Machine, http://www.nps.gov/sara/
photosmultimedia/multimedia.htm (Aug. 30, 2009) (“Saratoga”). Final Act.
25-27.
8. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Northaven, Southfield, and Fisher. Final Act. 27—28.
9. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Northaven and Barrows (US 7,089,495 B2; Aug. 8,
2006). Final Act. 28-31.
10. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fisher and Barrows. Final Act. 32—34.
11. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Northaven and Johnson, Sr. et al. (US 2010/0005835 Al;
Jan. 14, 2010) (“Johnson”). Final Act. 34—35.
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Application 12/981,730
ANALYSIS3
Rejections under 35 U.S.C. § 112(a)
In rejecting claims 1 and 9 under 35 U.S.C. § 112(a), the Examiner
finds “there is no disclosure of how non-cremated remains are not deployed
versus deceased entities being deployed and distinguishing the actual
deployment process.” Final Act. 3. Additionally, with regard to claim 9, the
Examiner finds the Specification lacks support for the claimed “play ground
[sic] event for children.” Final Act. 4. Further, the Examiner explains there
is no nexus between a playground event for children being a life-continuum
event, but rather the Specification suggests such an event is associated with
“ordinary, everyday activity of the living.” Final Act. 4 (emphasis omitted)
(citing Spec. 8).
Appellant asserts the Examiner’s rejection of claims 1 and 9 is
untimely and “cannot be sustained.” Br. 6—8. Additionally, Appellant
asserts the Specification provides ample support that non-cremated remains
are not being deployed. Br. 8—9. In particular, Appellant identifies several
sections from the Specification indicating that non-cremated remains are not
received or deployed at the multi-use park. Br. 8—9 (citing Spec. 2—3, 9).
As an initial matter, we do not agree with Appellant’s contention that
the Examiner’s rejection is untimely. Appellant offers no authority to
support such a determination. Accordingly, we find the Examiner’s
rejection is timely. Substantively, we agree with Appellant that there is
sufficient support in the Specification to convey that the Appellant was in
3 Throughout this Decision we have considered the Appeal Brief, filed
September 15, 2014 (“Br.”); the Examiner’s Answer, mailed on
November 18, 2014 (“Ans.”); the Final Office Action (“Final Act.”), mailed
on April 16, 2014, from which this Appeal is taken.
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possession of the claimed invention with respect to “non-cremated remains
of previously existing entities [not being] deployed within the bounded
green space.” Accordingly, we do not sustain the Examiner’s rejection of
claims 1 and 9 under 35 U.S.C. § 112(a) with respect to this specific
limitation.
Regarding the Examiner’s rejection of claim 9 as failing to find
adequate written description support in the Specification for “a playground
event for children,” Appellant “does not presently address the Examiner’s
assertions . . . and instead anticipates addressing the Examiner’s position
during future prosecution of the application.” Br. 10.
“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.” Manual of Patent Examining Procedure § 1205.02 (8th ed. Rev. 9,
Aug. 2012). Accordingly, we summarily sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 112(a).
Rejection under 35 U.S.C. § 112(b)
a. “a bounded green space”
The Examiner finds the claim language of a bounded green space
comprising various columbaria and buildings indefinite as “it is unclear what
statutory category it is and how the columbarium is actually comprised from
the green space . . . and it is unclear to what extent this abstract bounded
green space claimed is structurally altered by what is situated or built on the
green space.” Final Act. 5.
Appellant argues a “bounded green space” is clear enough such a
person of ordinary skill in the art would understand how to ascertain the
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boundaries of a green space. Br. 11. Appellant asserts he has acted as his
own lexicographer and defined how “bounded” modifies “green space.”
Br. 11. Specifically, Appellant contends “the boundary of the green space
typically coincides with a property line or boundary.” Br. 11 (citing
Spec. 7). Additionally, Appellant identifies Figure 4 from the Specification
as illustrating the boundaries of a green space via a map. Br. 11.
Although we do not agree that Appellant acted as his own
lexicographer,4 we do agree that ordinary meaning of a “bounded green
space” is sufficiently definite such that a person of ordinary skill in the art
would understand it; i.e., a green space whose area is demarcated by defined
boundaries.
b. “a mosaicleum-type columbarium”
The Examiner finds the term “a mosaicleum-type columbarium,” as
recited in claim 1 is indefinite because it is unclear what constitutes a
mosaic-type as opposed to mosaic columbarium. Final Act. 5. The
Examiner finds that the “type” lacks a standard for measuring the degree of
4 Any special meaning assigned to a term “must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention.” Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.”). Here, Appellant has not identified within the Specification
wherein it is “sufficiently clear” that a special meaning is being ascribed to a
“bounded green space.”
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how many mosaic niches are required to distinguish between a mosaic-type
columbarium and a mosaic columbarium. Final Act. 5—6.
Appellant contends the Examiner’s determination that a “mosaicleum-
type columbarium” is a relative term that fails to distinguish over other
columbaria is subjective. Br. 12. Appellant notes the Examiner does not
find a similar level of indefiniteness with respect to claim element
“artaleum-type columbarium” and that there is nearly twice as much
description (approximately 10 pages) in the Specification devoted to
mosaicleum-type columbaria. Br. 12—13 (citing Spec. 18—28; Figs. 3A, 3B).
As set forth in the Specification, a mosaicleum-type columbarium is a
structure comprising “a series of individual niches or compartments each
having an individual appearance that is aesthetically pleasing, and which
together effect an appearance as a whole that is aesthetically pleasing and
harmonious.” Spec. 3, see also Spec. 18 (“the mosaicleum-type
columbarium is preferably asymmetrical. . . [and] comprised of individual
niches or compartments, each niche or compartment having its own visual
appearance, with the combination of these niches or compartments
cooperating to produce an overall theme or image”). The Specification
further explains the number of niches or compartments is not fixed and that
additions may be accommodated “in a way to preserve the overall
appearance” of the existing mosaicleum-type columbarium. Spec. 22.
Additionally, “the mosaicleum-type columbarium employ[s] an art form or
work that overlies a conventional array of niches.” Spec. 23.
Based at least on the foregoing, we agree with Appellant that, in light
of the Specification, a skilled artisan would be able to readily ascertain the
metes and bounds of the claimed mosaicleum-type columbarium.
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c. “wherein non-cremated remains of previously existing entities are
not deployed” / “wherein the number of deceased entities deployed
per acre of bounded green space is between 50 and 10,000”
The Examiner finds the two limitations identified in this subsection
contradict each other and render claim 1 indefinite. Final Act. 6. In
particular, the Examiner posits if deceased entities, which may include both
cremated and non-cremated remains, are deployed between 50 and 10,000
per acre, how can non-cremated remains of previously existing entities be
not deployed at all? Final Act. 6.
Appellant argues a person of skill in the art would understand that the
deceased entities being deployed within the green space are cremated
remains and do not include non-cremated, intact bodies of the dead. Br. 13.
In light of the Specification, we find that one of ordinary skill in the
art would understand that non-cremated remains of previously existing
entities are excluded from the bounded green space. See, e.g., Spec. 2—3, 9.
Thus, contrary to the Examiner’s finding, we do not find the two identified
limitations contradict each other and render the claim indefinite.
d. “providing an electronic device on which is stored a narrative”
The Examiner finds the metes and bounds of claim 14, which recites
the aforementioned limitation, uncertain because it is unclear how a green
space can provide an electronic device. Final Act. 6—7.
Appellant notes that claim 14 depends from claim 9, which is directed
to a “method of using a bounded green space.” Br. 14—15. Thus, Appellant
asserts the Examiner erred by finding claim 14 requires the green space to
provide an electronic device. Br. 15—16.
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We find Appellant’s argument persuasive of Examiner error. We
disagree that the claim language of claim 14 requires the greenspace to
provide an electronic device. Rather, we find as part of a method for using a
bounded green space, an electronic device is provided which stores a
narrative.
For the reasons discussed supra, we do not agree with the Examiner’s
rejection of claims 1, 9, and 14 under 35 U.S.C. § 112(b) as being indefinite.
Accordingly, we do not sustain this rejection.
Rejection under 35 U.S.C. §101
The Examiner finds claims 9, 10, 12—15, and 21 are directed to non-
statutory subject matter. Final Act. 8—10. In particular, the Examiner notes,
inter alia, the claimed method “fails to recite any tie to any kind of machine
for any of the claimed steps” and “do not result in an article being
transformed from one state into another.” Final Act. 9. Additionally, the
Examiner finds the claims are directed to an abstract idea—using a bounded
green space for a profitable fee. Final Act. 10.
Appellant notes that the machine-or-transformation test is not the sole
test for determining patent eligibility. Br. 16 (citing Bilski v. Kappos, 561
U.S. 593, 594 (2010)). Appellant distinguishes the pending claims as
concrete, as opposed to the claims in Bilski, which were directed to an
abstract idea. Br. 17. Appellant asserts claim 9 provides a “physical
transformation of ashes” by being deployed within the bounded green space.
Br. 17. Additionally, Appellant contends the bounded green space
accommodates a specific milestone life-continuum (e.g., a graduation,
retirement, birthday, or picnic). Br. 17. Appellant further argues the
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inventive method of claim 9 is that, for a fee, the multi-use park for the
living and the dead accommodates two very different kinds of actions—
deploying the ashes of a deceased entity (human or pet) within the bounded
green space and, second, an activity in which the living undertake a recited
activity in the same park where the ashes of the dead are deployed. Br. 17—
18.
In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), the
Supreme Court set forth the analysis to distinguish claims for patent-
ineligible laws of nature, natural phenomena, and abstract ideas from claims
for patent-eligible applications of those concepts. Alice, 134 S. Ct. at 2355.
The first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 134 S. Ct. at
2355. If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (citation omitted). That is, the
second step is to “search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (citation omitted).
We disagree with Appellant that deploying ashes within a bounded
green space involves a transformation and, thus, is not abstract. See Br. 17.
Rather, we agree with the Examiner that “[deploying ashes is interpreted as
relocating/moving cremated ashes from one location to another, and thus
does not constitute a transformation.” Ans. 10. Nor is using a bounded
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green space for activities such as a picnic a non-abstract idea. See Ans. 10.
Thus, we find the disputed claims are directed to an abstract idea.
In determining whether there is an inventive concept that amounts to
“significantly more” than using a bounded green space, we are unpersuaded
by Appellant’s arguments. Appellant’s conclusory assertion of charging a
fee to use a bounded green space for different actions falls short of
“significantly more” than the abstract idea of using a bounded green space
itself.
Accordingly, we sustain the Examiner’s rejection of claims 9, 10, 12—
15, and 21 under 35 U.S.C. § 101.
Rejections under 35 U.S.C. § 103(a)
a. Claims 1, 3, 4, 6, and 8
Appellant contends the Examiner erred in finding Northaven teaches
or suggests an artaleum-type columbarium, as recited in claim 1. Br. 20—22.
Rather, Appellant asserts, Northaven describes a conventional columbarium
having a grid-like array of substantially rectangular niches. Br. 21.
Appellant identifies examples from the Specification describing the related
sculptures and art objects. Br. 21 (citing Spec. 13—15, Figs. 1A—1C and 2A—
2E). Further, Appellant challenges the Examiner’s application and
definition of the term “asymmetrical.” Br. 21.
Similarly, Appellant asserts Northaven fails to teach or suggest the
claimed mosaicleum-type columbarium. Br. 22. More specifically,
Appellant contends the Examiner erred in defining the word “theme” as it
relates to a combination of niches cooperating to form a mosaic theme.
Br. 22.
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Regarding artaleum-type columbaria, the Specification recites:
In one representative embodiment, the ashes are stored
directly in niches, in urns that are then placed in niches, or in
some other fashion incorporated into, or stored in, aesthetically
pleasing columbaria or structures shaped like objects of art,
including abstract sculptures; sculptures of human figures,
animals, plants, natural environments; and the like. For purposes
of this application, such columbaria are denominated as an
“artaleum-type” or columbarium or structure (or an Artaleum™).
Unlike traditional columbaria, tombstones, and mausoleums,
which are typically immediately recognizable for what they
are—often austere, symmetrical structures that evoke the weight,
solidity, and finality of death—and therefore import the
traditional and cultural meanings normally ascribed to them—an
artaleum-type columbarium, positioned within the multi-use
park, is designed to blend in with other elements of the park, or
serve as a harmonious focal point.
Spec. 2—3. Further, the Specification recites: “Artaleum-type columbaria are
aesthetically pleasing sculptures or art objects, often asymmetric, and which
serve both as a focal point in a public space in the multi-use park, and as a
structure for deploying the ashes of a plurality of deceased persons.”
Spec. 13.
The Examiner finds Northaven teaches a Celebration Garden which
may include a columbarium located within and on a bounded green space.
Final Act. 18 (citing Northaven 2, 5, Figs. 1, 2). As the Examiner explains,
the depicted columbarium may be viewed as asymmetrical (thus,
distinguishing from traditional columbaria, as suggested in Appellant’s
Specification). Final Act. 19.
We are unpersuaded of Examiner error. Northaven teaches a type of
columbarium “for urns containing the ashes of loved ones.” Northaven 2.
Further, the columbarium appears to be a focal point at the end of the
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disclosed labyrinth of the Celebration Garden. See Northaven, 2, Figs. 1, 2;
see also Northaven 4 (describing how the Celebration Garden will reflect the
architecture, history, and culture of Northaven UMC, including a mosaic tile
cross on an honorarium wall and a smaller mosaic cross on the columbarium
wall).
Regarding a mosaicleum, the Specification recites “a mosaicleum-
type structure is composed of separate niche or compartment designs that,
together, cooperate to effect an artistic image.” Spec. 3. “Mosaicleum-type
columbaria generally are comprised of individual niches or compartments,
each niche or compartment having its own visual appearance, with the
combination of these niches or compartments cooperating to produce an
overall theme or image.” Spec. 18.
The Examiner finds Northaven teaches a mosaicleum-type
columbarium. Final Act. 19 (citing Northaven 2, 4—5). As the Examiner
explains, “each niche has a different plaque containing different etchings of
textual narratives about the deceased person belonging to that particular
niche, thus each faceplate of each niche has a different visual appearance
since all the niches consist of different etchings of different named entities.”
Ans. 11. Additionally, the Examiner notes Northaven discloses the
columbarium will comprise “a smaller mosaic cross” on it. Final Act. 11
(citing Northaven 2).
Further, the Examiner explains “under a conservative interpretation,
Northaven may not appear to specify wherein the combination of niches
cooperate to form a mosaic theme.” Final Act. 20 (emphases omitted).
Mosaic teaches “Columbarium Mosaic Niche Fronts.” Mosaic 1. Thus, the
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Examiner relies on the combined teachings of Northaven and Mosaic to
teach the disputed limitation. Final Act. 20—21 (citing Mosaic 1—4).
Appellant concedes the second page of the Mosaic reference recites a
copyright date of “2004-2005,” but states “it is unclear whether this date
range pertains to the Web site, or the displayed image.” Br. 24. Appellant
concludes, regardless of the publication date of Mosaic, the cited prior art
fails to teach the limitations of claim 1. Br. 24.
We are unpersuaded of Examiner error. The priority date of
Appellant’s application is December 31, 2009. Accordingly, we find Mosaic
is prior art to Appellant’s application. Further, 37 C.F.R. § 41.37(c)(l)(iv)
requires more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011). Additionally, we agree with the Examiner’s findings that the
combined teachings of Northaven and Mosaic teach or reasonably suggest “a
mosaicleum-type columbarium located within and on the bounded green
space . . . wherein the combination of niches cooperate to form a mosaic
theme,” as recited in claim 1.
Additionally, Appellant argues the Examiner erred in relying on the
combined teachings of Northaven and Museum as teaching “a building . . .
including an electronic device on which are stored narratives about deceased
entities,” as recited in claim 1. Br. 22. Appellant contends it is unclear how
an ordinarily-skilled artisan would employ Museum’s teachings of an audio-
based guided tour through a museum to construct the claimed building.
Br. 23—24. Appellant suggests the added expense of the claimed building
runs counter to the teachings of Northaven, which teaches a fee is used for
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costs associated with engraving names and dates on memorial faceplates or
plaques. Br. 23.
We find Appellant’s arguments unpersuasive of Examiner error. As
the Examiner explains, Northaven teaches the claimed building, “the
building being the columbarium or the associated church situated on the
premises which is a building for accommodating milestone events such as
weddings, church Sunday school graduation ceremonies, etc.” Final Act. 22
(emphasis omitted); see also Northaven 2. Further, the Examiner finds
it would have been obvious to modify Northaven’s teachings to
include an electronic device on which is stored narratives about
deceased entities disclosed by Museum in order to enhance the
remembrance of deceased ones by offering audio narratives that
identify the deceased and information about the deceased,
providing an enhanced and alternative way to continue to honor
the deceased.
Final Act. 22.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)).
We agree with the Examiner’s findings and reasoning for the
proposed combination. Additionally, we are not persuaded by Appellant’s
arguments that the added costs associated with including an electronic
device to store narratives about the deceased is prohibited or discouraged by
Northaven. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
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also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Appellant additionally argues the rejections of dependent claims 3 and
8 are in error and that the additional references relied upon (Fisher and
Saratoga, respectively) do not remedy the alleged deficiencies with respect to
the Examiner’s rejection of independent claim 1. See Br. 25—26.
Because we do not find error with the Examiner’s rejection of claim 1,
we are unpersuaded by Appellant’s arguments regarding claims 3 and 8.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejections of claims 1,3, and
8. Additionally, we sustain the Examiner’s rejection of claims 4 and 6,
which depend from claim 1 and were not argued separately.
b. Claims 9, 10, and 12—15
Claim 9 recites, in part, “accommodating a milestone life-continuum
event within the bounded green space . . . along side [sic] an artaleum-type
columbarium or a mosaicleum-type columbarium.” Claim 9 also identifies
the milestone life-continuum event as “a graduation celebration, a retirement
celebration, a corporate meeting, a birthday celebration, an award ceremony,
a picnic, a tournament, a fair, a cookout, a playground event for children, or
a performance.”
Northaven teaches the Celebration Garden “will provide unique
opportunities for Easter morning, All Saints’ Day, weddings, confirmation
class training, and other special services.” Northaven 2.
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Appellant asserts the Examiner ignores the language of claim 9
because, for example, “the inventive multi-use park of the living and the
dead accommodates, along side ashes of the dead, birthday parties.” Br. 18.
“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
We agree with the Examiner that the type of life event claimed does
not explicitly alter the method step of accommodating an important life
event, which Northaven discloses. Final Act. 12—13. Further, we agree with
the Examiner’s interpretation that a wedding (as taught expressly by
Northaven) is a life-continuum event in view of Appellant’s Specification.
Final Act. 13 (citing Spec. 8 (including weddings as events that people mark
out as important along a life continuum or life span)).
Appellant also argues Northaven fails to teach an artaleum-type
columbarium (claim 12) or an artaleum-type columbarium as a sculpture
(claim 13). Br. 19.
As discussed supra with respect to claim 1, we disagree with
Appellant’s contention that Northaven fails to teach or suggest an artaleum-
type columbarium. Regarding an artaleum-type columbarium as a sculpture,
the Examiner relies on Fisher to teach a sculpture. Final Act. 27 (citing
Fisher 5, describing a columbarium including a sculpture of dolphin heads).
Thus, Appellant’s argument is unpersuasive of Examiner error because, at
least, it is not responsive to the rejection as articulated by the Examiner.
Dependent claims 14 and 15 generally add limitations regarding an
electronic device, which stores a narrative about one or more of the
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previously existing entities and is accessible over a communications
network.
The Examiner relies on Barrows as teaching these additional
limitations. Final Act. 28—31.
Although Appellant concedes Barrows teaches an electronic device
called a video gravemarker, which also allows for the wireless transmission
of audio signals to a headset worn by a user, Appellant argues Barrows does
not exclude non-cremated remains of previously existing entities. Br. 28.
Appellant’s argument is not persuasive of Examiner error as it is not
responsive to the rejection as articulated by the Examiner. Non-obviousness
cannot be established by attacking references individually where, as here,
the ground of unpatentability is based upon the teachings of a combination
of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). As discussed
supra, the Examiner relies on Northaven as teaching the bounded green
space wherein the non-cremated remains of previously existing entities are
not deployed. See Final Act. 11 (citing Northaven 2).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejections of claims 9, 10,
and 12—15.
c. Claims 16 and 19
Appellant contends the Examiner erred in finding Fisher teaches, inter
alia, an asymmetric columbarium. Br. 28—29. Appellant does concede
Fisher is directed to a sculpture that houses the ashes of a single person.
Br. 28. However, Appellant asserts Fisher is a monument rather than an
asymmetric columbarium including a plurality of niches. Br. 28.
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We are unpersuaded of Examiner error. As the Examiner finds,
Fisher describes a “granite columbarium.” Fisher 5; see also Final Act. 32.
Further, Fisher teaches a door on the columbarium cast in bronze of a female
figure holding an urn. Fisher 5—6. Further, Fisher teaches an additional
“bronze casket to hold the ashes of the deceased Mr. Fisher.” Fisher 6.
Thus, Fisher reasonably suggests a plurality of niches or compartments to
hold the ashes of a previously existing entity. Additionally, we note “[a]
mere duplication of parts is not invention.” In re Marcum, 47 F.2d 377, 378
(CCPA 1931) (citing Topliffv. Topliff, 145 U.S. 156, 163 (1892)). A
duplication of parts does not impart patentability unless a new and
unexpected result is produced. See In re Harza, 274 F.2d 669, 671
(CCPA 1960).
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 16 and 19.
d. Claim 21
Claim 21 depends from claim 9 and recites “reducing the mass or
volume of ashes of a previously existing entity before deployment.”
Appellant contends the Examiner’s reliance on Johnson is in error
because Johnson is non-analogous art and that the Examiner failed to
provide articulated reasoning for its proposed combination with Northaven.
Br. 29-31.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
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field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be “reasonably pertinent”
to the problem, it “logically would have commended itself to an inventor’s
attention in considering his problem.” In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,
658 (Fed. Cir. 1992)).
Johnson is directed “to structures for preserving and memorializing
the remains of humans and animals.” Johnson 12. Similarly, the
Celebration Garden and columbarium of Northaven is directed to
memorializing the remains of the deceased. Northaven 2-4. Accordingly,
we find Johnson and Northaven are from the same field of endeavor as
Appellant’s application and are, therefore analogous art.
Additionally, we find the Examiner has provided articulated reasoning
with rational underpinnings to support the proposed combination—namely,
“to save space and accommodate the dimension of the niche to ensure it
[(the ashes)] fits properly.” Final Act. 35; see also In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 21.
DECISION
We affirm the Examiner’s decision to reject claims 1,3,4, 6, 8—10,
12-16, 19, and 21.
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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
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