Ex Parte Wilcoxen et al

Patent Trial and Appeal Board

Nov 22, 2013

10970037 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/970,037 10/21/2004 Wayne Wilcoxen 20019.22 5198
7590 11/25/2013
The Law Office of Steven G. Roeder
5560 Chelsea Avenue
La Jolla, CA 92037
EXAMINER
VERAA, CHRISTOPHER
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
11/25/2013 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 WAYNE WILCOXEN and MARTIN WELLING
____________________

Appeal 2012-001171
Application 10/970,037
Technology Center 3600
____________________

Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
NINA L. MEDLOCK, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-4, 6-13, 15-20, 24, 26, and 29-32 under 35 U.S.C. § 103(a) as
unpatentable over Howard (US 4,622,770, iss. Nov. 18, 1986) and Romaine
(US 4,953,315, iss. Sep. 4, 1990). Ans. 2-3. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 11, 18, 26, and 29 are the independent claims on appeal.
Claim 11, reproduced below, is illustrative of the appealed subject matter.
11. A trading card comprising:
a card body that includes a front body section, a back
body section, a first card image and a second card image; and
a panel that is fully enclosed within the card body
between the front body section and the back body section with
no openings that allow access to the panel and that is coupled to
and moves relative to the card body between a first position and
a second position without the panel or anything secured to the
panel being physically touched, the panel including a panel
image, in the first position the second card image and the panel
image are visible and in the second position the first card image
and the panel image are visible, wherein the card body and the
panel cooperate to have a size and shape that is similar to the
size and shape of a standard trading card.

ANALYSIS
At the outset, we note that although Appellants have placed certain
subsets of claims under subheadings in an apparent attempt to argue claims
separately (App. Br. 23-28), statements that merely point out what claims
recite are not considered an argument for separate patentability. See 37
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C.F.R. § 41.37(c)(1)(vii)(2011) and In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “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”). Appellants
thus argue claims 2-4, 6-13, 15-20, 24, 26, and 29-32 as a group. App. Br.
11-22. We select claim 12 as the representative claim, and claims 2-4, 6-11,
13, 15-20, 24, 26, and 29-32 stand or fall with claim 12. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
The Examiner found that Howard teaches substantially all of the
limitations of claim 12, but relied on Romaine’s teaching of a display
“device where a sliding panel 16 moves inside a body from a first position to
a second position . . . [where] the sliding movement is caused by tilting of
the body, and the device does not include any openings or other structure for
directly manipulating the sliding action.” Ans. 4. The Examiner concluded
that “[i]t would have been obvious . . . to construct a sliding display device
as taught by Howard, but to exclude the slot [29] and tab [28] arrangement
and allow the panel to slide under the action of its own weight and inertia
alone, as taught by Romaine.” Id.
Appellants argue that neither Howard nor Romaine teaches a “‘trading
card,’” the recitation of which should be treated as a preamble statement that
limits the structure of the claimed invention, not a mere statement of purpose
or intended use. App. Br. 14-17; Reply Br. 5-7. Assuming arguendo that
the preamble does not merely state a purpose or intended use of the claimed
device, we note that Appellants do not direct us to, and the Specification
lacks, a special definition of the preamble phrase “trading card” in the
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Specification. If the Specification does not assign or suggest a particular
definition for a term in the claims, it is appropriate to consult a general
dictionary definition of the term for guidance in determining its ordinary and
customary meaning to one having ordinary skill in the art. Comaper Corp.
v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). We adopt Appellants’
interpretation of “trading card” as “‘a card with a picture or design printed
on it, often one of a set collected and traded by children.’” App. Br. 15
(citing American Heritage Dictionary (2006)) (emphasis added). We find
nothing in the Specification inconsistent with the ordinary and customary
meaning described above. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(the words of the claim must be given their plain meaning unless the plain
meaning is inconsistent with the Specification). While the Specification
describes that the trading card “can be a standard trading card having a
length of approximately 3.5 inches, a width of approximately 2.5 inches, and
a thickness of between approximately 0.0625 and 0.1875 inches” (Spec. 2,
ll. 24-26), such a statement in the Specification is not a disavowal of other
types of trading cards. See Thorner v. Sony Computer Ent. Am. LLC, 669
F.3d 1362, 1366-67 (Fed. Cir. 2012).
In light of this claim construction of a “trading card” as “a card with a
picture or design printed on it,” we agree with the Examiner that “the prior
art devices [are] structurally equivalent to a ‘trading card.’” Ans. 5. A
“card” is “[a] flat, usually rectangular piece of stiff paper, cardboard, or
plastic . . .” (see The American Heritage Dictionary of the English
Language, 5th ed., Copyright 2011 by Houghton Mifflin Harcourt
Publishing Company, available at www.ahdictionary.com (last visited Nov.
21, 2013)), and Howard discloses that the device is generally flat and
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rectangular (see Howard, fig. 1) and could be made of cardboard (Howard,
col. 3, ll. 17-19). Moreover, a “design” is “[a] drawing or sketch” (see The
American Heritage Dictionary of the English Language, 5th ed., Copyright
2011 by Houghton Mifflin Harcourt Publishing Company, available at
www.ahdictionary.com (last visited Nov. 21, 2013)), and Howard’s device
includes a drawing on it at least insofar as the device includes lettering of a
particular stylization printed thereon (Howard, fig. 1, col. 3, ll. 21-23). The
broadest reasonable definition for the term “trading card” identified supra
includes Howard’s device.
Appellants next contend that “the cited references do not teach or
suggest a trading card including a card body and a panel that cooperate . . .
to have a size and shape that is similar to the size and shape of a standard
trading card.” App. Br. 18. The Examiner responded that the rejection is
based on supporting legal precedent holding “a mere change in size cannot
be relied upon for patentability, where the change in size would not change a
prior art device’s ability to perform its intended use.” Ans. 6 (citing Manual
of Patent Examining Procedure (MPEP), § 2144.04(IV)(A), 8th ed., rev.
Aug. 2012). Appellants’ position in response thereto is that changing the
size of Howard’s device or Romaine’s device would make the respective
“products unsatisfactory for their intended purposes.” App. Br. 19. More
particularly, Appellants contend that changing the size would not allow
Howard’s device “to be easily read from a distance” and would make
viewing of Romaine’s device by “following vehicles and passers . . .
extremely difficult, if possible at all.” Id. at 20; see also Reply Br. 8.
We agree with the Examiner that “[t]he intended use of a sign, is to be
read by an observer” and that “one of ordinary skill in the art could
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reasonably expect a smaller sign to function satisfactorily and usefully at
shorter distances.” Ans. 6. For this reason, we find that the Examiner was
in solid ground in applying the rationale that “where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
was not patentably distinct from the prior art device.” See MPEP
§ 2144.04(IV)(A) (citing Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed.
Cir. 1984)). Although changing size may make reading of the sign more
difficult from longer distances, it does not prohibit reading of the sign
completely, and the sign will maintain its readability at shorter distances. To
the extent Appellants contend that Howard teaches away from modification
(Reply Br. 8), we are not persuaded that the Examiner erred. Appellants
have not identified any passages in Howard that “criticize, discredit, or
otherwise discourage the solution claimed . . . .” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). As recognized by Appellants, one of Howard’s
embodiments is “a fireplace damper indicator” (App. Br. 19). Although
Appellants assert that even with the fireplace damper indicator, the sign will
have to be larger “to be easily read from a distance” (Id. at 20), Howard
specifically contemplates that the distance from which the sign will be read,
as well as the size of the sign, will vary. See, e.g., Howard, col. 1, ll. 41-44
(“The size and distance away may be relatively small, as in a fireplace
damper indicator, or relatively large, as in a sign for a gas station that can be
viewed from the street.”).
Appellants further contend that “the cited references do not teach or
suggest a trading card including . . . a panel that is fully enclosed within the
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card body between the front body section and the back body section with no
openings to allow access to the panel.” App. Br. 20. More particularly,
Appellants argue that Howard includes a “slot that is open in the back panel
19” through which the user has access to the panel via tab 29 (App. Br. 20;
Reply Br. 11) and that Romaine teaches “longitudinal ends of the case 14
being open to allow access to the slide 16” (App. Br. 21; Reply Br. 11).
Appellants’ arguments are unpersuasive in that they do not address the
rejection as articulated by the Examiner which relies on modification of
Howard (which does not include longitudinal end openings) to remove the
opening and tab based on the teachings of Romaine, not Howard or Romaine
individually. See Ans. 7. One cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
To the extent Appellants are additionally contending that modifying
Howard to remove the opening and tab “would provide a much less reliable
means of demonstration of when a given establishment or device is open and
closed” since the sign “may too easily move between the alternative ‘OPEN’
and ‘CLOSED’ display messages when not desired” (Reply Br. 11), this
argument does not persuasively explain why the Examiner’s articulated
reasoning for modifying Howard based on the teachings of Romaine lacks
rational underpinnings. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(citation omitted) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)) (“[R]ejections on obviousness grounds . . . [require]
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”). Indeed, Appellants’ arguments support
the Examiner’s findings that excluding the slot and tab arrangement would
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still “allow the panel to slide under the action of its own weight and inertia
alone.” See Ans. 4.
Appellants additionally contend that “Romaine does not teach the
actual tilting of the case 14 in order to move the slide 16 back and forth
within the case 14” and instead teaches “only inertia, centrifugal and/or
gravitational forces generated from the movement of the vehicle causes the
slide 16 to move relative to the case 14.” App. Br. 22. The Examiner
responded that Romaine teaches a “type of fit [between the panel and the
body that is loose enough so that the lateral force of a vehicle can cause the
panel to slide which] is sufficiently loose to enable the panel to slide under []
gravity if the body were tilted” and determined that “[t]hus, the functional
limitation would be met.” Ans. 7-8. Appellants have not provided evidence
or persuasive argument that Howard’s device as modified by Romaine
would be incapable of panel movement when the body is tilted in response
to the Examiner’s findings. For the foregoing reasons, Appellants have not
shown that the Examiner erred in concluding that the subject matter of claim
12 would have been obvious over Howard and Romaine, and we sustain the
rejection of claim 12, and claims 2-4, 6-11, 13, 15-20, 24, 26, and 29-32
which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Howard
and Romaine.

DECISION
The Examiner’s rejection of claims 2-4, 6-13, 15-20, 24, 26, and 29-
32 under 35 U.S.C. § 103(a) is AFFIRMED.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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