Ex Parte Wolfe

Board of Patent Appeals and Interferences

Aug 9, 2004

10132863 (B.P.A.I. Aug. 9, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANDREW WOLFE
_____________
Appeal No. 2004-1586
Application No. 10/132,863
______________
ON BRIEF
_______________
Before GARRIS, PAK, and WALTZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1 and 4 through 9, which
are all of the claims pending in the above-identified
application.
APPEALED SUBJECT MATTER
The subject matter on appeal is directed to a keychain
assembly comprising an advertising or reward panel fixedly
secured to a key retainer capable of holding a plurality of keys
Appeal No. 2004-1586
Application No. 10/132,863
2
and a method of using such keychain assembly in commerce.
Further details of the appealed subject matter are recited in
independent claims 1 and 4 which are reproduced below:
1. A keychain assembly for holding a plurality of keys
therein, said keychain assembly comprising:
a key retainer to hold the plurality of keys together;
and
a panel fixedly secured to said key retainer, said
panel defining a section having material printed thereon,
said panel having a predetermined thickness such that at
least a portion of said material printed thereon may be
removed by punching out a portion of said panel, said
section being divided into a plurality of sub-sections such
that each of said sub-sections includes said material
printed thereon and that said material printed on each of
said sub-sections is printed on less than half of each of
said sub-sections.
4. A method for providing incentives to customers of
an entity providing commercial activity, the method
including the steps of:
providing a keychain assembly having a panel with a
plurality of sub-sections with each sub-section having
writing in each of the plurality of sub-sections identifying
a commercial incentive;
giving the keychain assembly to one of the customers;
taking possession of the keychain assembly when the
customer engages the entity to perform commercial activity;
punching out one of the plurality of sub-sections to
recognize the use of the entity by the customer for the
commercial activity identified in the one of the plurality
of sub-sections; and
Appeal No. 2004-1586
Application No. 10/132,863
1 The appellant does not dispute the examiner’s assertion
that Sports Pub was available as of 1996.
3
returning the keychain assembly to the customer for use
thereby until another commercial activity identified in
another of the plurality of sub-sections is requested.
PRIOR ART REFERENCES
The examiner relies on the following prior art references:
Edge 3,281,165 Oct. 25, 1966
Lemberg 3,797,147 Mar. 19, 1974
Kasprzycki et al. (Kasprzycki) 4,521,981 Jun. 11, 1985
Kanzelberger 5,398,435 Mar. 21, 1995
Kebarian Des. 380,084 Jun. 24, 1997
Crystal City Sports Pub Card (1996)(hereinafter referred to as
“Sports Pub”)1
THE REJECTIONS
The appealed claims stand rejected as follows:
1) Claim 1 under 35 U.S.C. § 102(b) as anticipated by the
disclosure of Kasprzycki;
2) Claims 1 and 4 through 7 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Edge and
either Kasprzycki or Kebarian;
3) Claims 1 and 4 through 7 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Sports Pub and
either Kasprzycki or Kebarian;
Appeal No. 2004-1586
Application No. 10/132,863
2 In the event of further prosecution of this application,
the examiner is advised to determine whether claim 9 violates the
requirement of the fourth paragraph of 35 U.S.C. § 112.
3 The appellant states that claims 1 and 4 do not stand or
fall together. See the Brief, page 5. As is apparent from the
above, however, claims 8 and 9 are subject to a different
rejection than claims 1 and 4. Therefore, for purposes of this
appeal, we select claims 1, 4 and 8 as representative of the
claims on appeal subjected to the different grounds of rejection
set forth by the examiner and determine the propriety of such
rejections based on these claims alone consistent with 37 CFR
§ 1.192(c)(7)(2003).
4
4) Claims 8 and 92 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Edge, either Kasprzycki or
Kebarian, and either Lemberg or Kanzelberger; and
5) Claims 8 and 9 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Sports Pub, either Kasprzycki or
Kebarian, and either Lemberg or Kanzelberger.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the evidence and arguments advanced
by both the examiner and the appellant in support of their
respective positions. As result of this review, we have made the
determinations which follow3.
During prosecution of a patent application, the claims
therein
Appeal No. 2004-1586
Application No. 10/132,863
4 In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322-23
(Fed. Cir. 1989).
5
[are] interpreted as broadly as their terms reasonably
allow. When the applicant states the meaning that the
claim terms are intended to have, the claims are
examined with that meaning, in order to achieve a
complete exploration of the applicant’s invention and
its relation to the prior art . . . . The reason is
simply that during patent prosecution when claims can
be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed
. . . . Only in this way can uncertainties of claim
scope be removed, as much as possible, during the
administrative process.4
Limitations or embodiments appearing in the specification are not
read into the claims. Loctite Corp. v. Ultraseal Ltd., 781 F.2d
861, 867, 228 USPQ 90, 93 (Fed. Cir. 1985)(“Generally, particular
limitations or embodiments appearing in the specification will
not be read into the claims”); In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978), citing In re Prater, 415 F.2d 1393,
1405, 162 USPQ 541, 551 (CCPA 1969)(“We have consistently held
that no ‘applicant should have limitations of the
specification[ ] read into a claim where no express statement of
the limitation[s] is included in the claim.’”).
Applying the above principles to the presently claimed
subject matter, we interpret the phrases “a panel fixedly secured
to said key retainer” and “a keychain assembly having a panel” in
Appeal No. 2004-1586
Application No. 10/132,863
5 Attached to this decision.
6
claims 1 and 4, respectively (underlining added). We give these
phrases the broadest reasonable ordinary meanings relevant to the
technology disclosed in the specification inasmuch as the
specification does not define the meanings of “fixedly secured”
and “having” referred to above. According to pages 483, 1055 and
567 of Webster’s II New Riverside University Dictionary
(Riverside Publ. Co., 1994)5, “fixedly secured” means “well
fastened” or place securely (“free from . . . risk of loss”) and
“having” means “to possess or contain as a constituent.” Thus,
the claims in question only require that an advertising or reward
panel be fastened to a key retainer in such a manner to avoid the
risk of loss. The claims simply do not preclude fastening an
advertising or reward panel to a key retainer via, e.g., a key
tag.
In reaching this determination, we consider the appellant’s
detailed description of the preferred embodiment in the
specification regarding the employment of a link looped through a
key retainer and a hole in the panel to fasten the retainer and
the panel together. See the specification in its entirety.
However, we will not read this preferred embodiment in the
Appeal No. 2004-1586
Application No. 10/132,863
6 The appellant does not dispute that the card 18 has a
plurality of sub-sections. The specification, the claim language
and the appellant’s own specimens in the application also support
the examiner’s interpretation that the card 18 described by
Kasprzycki has a plurality of sub-sections (i.e., different
printed indicia are placed on distinct locations of the card 18).
Moreover, the appellant acknowledges that the card 18 can be
punched.
7
specification into the claims on appeal for the reasons indicated
supra. To do so is to interpret the claims on appeal contrary to
the appellant’s intention as is apparent from his own statement
at page 5 of the specification as shown below:
The invention has been described in an
illustrative manner. It is to be understood that the
terminology, which has been used, is intended to be in
the nature of words of description rather than of
limitation.
Many modifications and variations of the invention
are possible in light of the above teaching.

We now turn to the examiner’s Section 102 rejection of claim
1 as anticipated by the disclosure of Kasprzycki. We note that
the appellant does not dispute the examiner’s finding that
Kasprzycki discloses a key chain assembly comprising a key chain
12 corresponding to the claimed key retainer and a card
18 corresponding to the claimed panel6. Compare the Answer, page
4, with the Brief, page 9-10. The appellant only appears to
Appeal No. 2004-1586
Application No. 10/132,863
8
argue that the way in which Kasprzycki fastens the card 18 to the
key chain 12 is excluded by claim 1 on appeal. See the Brief,
pages 9-10. We do not agree.
As indicated supra, claim 1 on appeal does not preclude
“fixedly securing” the card 18 to the key chain 12 via a key tag
10. The claim does not specify or exclude any particular
securing device for fastening the claimed panel to the claimed
key retainer. As such, we concur with the examiner that
Kasprzycki describes the subject matter of claim 1 within the
meaning of 35 U.S.C. § 102(b).
It follows that the examiner’s decision rejecting claim
1 under Section 102(b) is affirmed.
We turn next to the examiner’s Section 103 rejection of
claims 1 and 4 through 7 as unpatentable over the combined
disclosures of either Edge or Sports Pub, and Kasprzycki. As
indicated supra, Kasprzycki discloses a key chain assembly
comprising a card 18 fixedly secure to a key chain 12 via a key
tag 10. We find that Kasprzycki teaches that this key chain
assembly is used with a hotel key or like, thus implying that the
key chain assembly is given to a customer by a hotel
establishment. See column 1, line 8. We find that Kasprzycki
teaches using various marketing panels, advertising sheets or
Appeal No. 2004-1586
Application No. 10/132,863
9
promotional materials as its card 18. See column 1, lines 6-8
and column 3, line 39. Although the appellant acknowledges that
these marketing panels, advertising sheets or promotional
materials are capable of being punched as indicated supra, the
examiner recognizes that Kasprzycki does not specifically mention
that they are used with a hole punching device.
To remedy this deficiency, the examiner relies on the
disclosure of Edge or Sports Pub. We find that Edge and Sports
Pub disclose rectangular business bonus cards used for
marketing, promotional and/or advertising purposes. See Edge,
column 1, lines 9-12, column 2, lines 7-9 and column 3, line 39,
and Sports Pub’s card. We find that Edge and Sports Pub disclose
that these cards have a plurality of sub-sections having printed
indicia. See, e.g., Edge, column 2, lines 28-34 and Sports Pub’s
card. We find that Edge and Sports Pub either explicitly or
implicitly teach punching out the indicia in the sub-sections of
these cards by employees of business entities upon transacting
business by customers. See Edge, column 3, lines 3-25 and the
examiner’s undisputed finding relating to Sports Pub at page 6 of
the Answer. It can be inferred from column 3, lines 3-25 of Edge
and the number of unique punched holes in the lunch card
illustrated in Sports Pub that these cards are returned to the
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Application No. 10/132,863
10
customers after punching out the indicia therein (upon completion
of each business transaction). We find that Edge suggests the
types of cards described above can be used for various business
establishments, inclusive of the hotel business establishment
mentioned in Kasprzycki. Also, as hotels in general are known to
have restaurants and/or are known to provide lunch or breakfast
upon customers’ request, we find that one of ordinary skill in
the art would have recognized that the lunch card provided by
Sports Pub is equally useful for the hotel business establishment
mentioned in Kasprzycki. We find that Edge and Sports Pub either
explicitly or implicitly teach that the cards in question are
useful for inducing steady and repetitive business. See Edge,
column 1, lines 11-12, and Sports Pub’s inducement reflected in
its lunch card.
Under these circumstances, we concur with the examiner that
one of ordinary skill in the art would have been led to employ
the card described in Edge or Sports Pub as the marketing,
promotional or advertising card of the key chain assembly
described in Kasprzycki and use such key chain assembly in the
manner recited in claim 4 as indicated supra, motivated by a
reasonable expectation of improving an incentive for steady and
repetitive business. One of ordinary skill in the art would also
Appeal No. 2004-1586
Application No. 10/132,863
7 Lemberg and Kanzelberger are deemed unnecessary and
cumulative.
11
have been led to distribute hole punching devices, especially
those useful for making unique shape holes suggested by, e.g.,
Sports Pub, to business or commercial entities as required by
claims 8 and 9 since the business or commercial entities would
not be able to carry out their function absent the hole punching
devices.7
In reaching the above determination, we recognize that to
punch out the indicia in the sub-sections of the card taught by
Edge and Sports Pub, business entities, upon receiving the key
chain assembly above from a customer, are expected to remove the
card from the key tag. Moreover, before returning the key chain
assembly to the customer, the business entities are expected to
reinsert the card into the key tag so that the card can be
fixedly secured to the key chain as indicated supra. However,
the claims on appeal, by virtue of using “comprising” in their
preamble, do not preclude the above additional steps. See In re
Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
Thus, for the reasons set forth in the Answer and above, we
concur with the examiner that the collective teachings of the
applied prior art references would have rendered the subject
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Application No. 10/132,863
12
matter of claims 1 and 4 through 9 prima facie obvious to one of
ordinary skill in the art.
The appellant appears to argue that evidence of secondary
considerations rebuts any prima facie case established by the
examiner. See, e.g., the Brief, pages 19-25. In support of his
argument, the appellant refers to two declarations executed by
Jim Hart, a general sales manager of the automobile dealership
called “Page Toyota” and Mitch Krane, president and owner of the
automobile dealership called “Krane Chrysler Dodge Inc.”
According to Jim Hart (the “Hart” declaration, page 1),
4. Dealer Concepts presented their keychain concept to
me in the form of an actual key chain with sample
coupons on the back from other dealers they had sold
tags to...my first thought was how simple of an idea
this was and to date, still wonder why I did not think
of it myself . . . sooner.
5. Today the key chain is our #1 customer retention
tool and is currently being attached every new, used
and service customers key chain. The percentage of our
customers that have come back for oil changes has
increased by 22% since we started using the Punch a
Deal Tag.
Mitch Krane states (the “Krane” declaration, page 1) that:
4. Because of the outstanding results I have seen as a
result of implementing these key tags in my marketing
plan, I have recently reordered an additional 2500
tags.
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5. The Punch a Deal key tag is one of the most cost
effective marketing tools I have used in the
dealership. In the age of more and more 1-1 marketing,
this key tag has been an outstanding success with my
customers. It hangs on their key rings constantly
reminding them of the benefits and discount by bringing
their vehicle back to our service department as opposed
to my competitive aftermarket service centers.
6. Beside being a success at my dealership, I recently won
1st place for “Best Idea” at a recent 20-group meeting.
Having reviewed the “Hart” and “Krane” declarations, we are
not persuaded that the appellant has provided sufficient proof to
rebut the prima facie case established by the examiner. Although
the “Hart” declaration indicates that the percentage of customers
who came back for oil changes was increased by 22%, it does not
indicate whether the advertising and the discount during this
time period remained the same as prior time periods and what
number of customers were used to determine the increased
percentage. Similarly, the “Krane” declaration indicates that
Krane himself reordered additional 2500 “key tags” to be used in
his marketing plan, but it does not indicate what percentage of
customers came back for oil changes and whether his market share
was increased. Finally, it is not clear from both the “Hart” and
“Krane” declarations whether any successes or benefits are due to
the claimed subject matter, i.e, a combination of a key chain and
a plastic having oil change discounts, or the unclaimed subject
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14
matter, i.e., unattached plastics having oil change discounts.
Indeed, the “Krane” declaration does not indicate whether the
“key tags” themselves are the claimed combination of a key chain
and a plastic having oil change discounts or an unclaimed plastic
having oil change discounts. Thus, we concur with the examiner
that the appellant has not established that the claimed key chain
assembly is commercially successful and its commercial success is
directly attributed to its own unique characteristics (nexus
between the alleged commercial success and the claimed
invention). In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685,
1689-90 (Fed. Cir. 1996).
The appellant appears to contend that there is wide spread
copying by competitors. See the Brief, page 21. However, the
appellant has not supplied enough evidence to demonstrate that
there was widespread acceptance and adoption of the claimed
subject matter and there was a nexus between the adoption and the
merits of the claimed subject matter. Cable Electric Prods. v.
Genmark, Inc., 770 F.2d 1015, 1028, 226 USPQ 881, 889 (Fed. Cir.
1985). We find that nothing in the “Hart” and “Krane”
declarations, for example, supports such contention.
The appellant alleges that the claimed subject matter won
first or second prize in at least 23 different occasions. See
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15
the Brief, pages 21 and 22. These alleged successes, however,
are not only unsupported by any objective evidence, but also do
not establish that the claimed subject matter results in any
commercial successes. Moreover, these allegations of successes
provide no details as to what items, i.e., the claimed or
unclaimed subject matter, are responsible for winning first or
second prizes.
In addition to the above deficiencies of the secondary
evidence relied upon by the appellant, we find that such evidence
is not commensurate in scope with the claims on appeal. In re
Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990)(“‘[O]bjective evidence of nonobviousness must be
commensurate in scope with the claims’”)(quoting In re Lindner,
457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); In re Dill, 604
F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979)(“The evidence
presented to rebut a prima facie case of obviousness must be
commensurate in scope with the claims to which it pertains”).
While the showing in the declarations is limited to using a
combination of key chain and a card having oil change discounts,
the claims on appeal are not so limited. The claims on appeal
encompass a combination of a key chain and a card not involving
any discount incentives shown in, e.g., the declarations.
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Application No. 10/132,863
16
Thus, after due consideration of all of the evidence and
arguments proffered by both the examiner and the appellant, we
determine that the preponderance of evidence weighs in favor of
obviousness. Accordingly, the examiner’s decision rejecting
claims 1 and 4 through 7 under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of either Edge or Sports Pub, and
Kasprzycki and claims 8 and 9 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of either Edge or
Sports Pub, Kasprzycki, and either Lemberg or Kanzelberger, is
affirmed.
However, the examiner’s Section 103 rejections based on the
combined disclosures of either Edge or Sports Pub, and Kebarian
or of either Edge or Sports Pub, Kebarian, and either Lemberg or
Kanzelberger, are on different footing. We reverse these Section
103 rejections since they do not provide a suggestion or
motivation to employ the cards taught in Edge or Sports Pub in
Kebarian’s ornamental design for a key ring. The examiner
provides no explanation on how the cards taught by Edges or
Sports Pub can enhance the ornamental aspects of Kebarian’s
ornamental design for a key ring.
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Application No. 10/132,863
17
OTHER ISSUES
We note that many commercial or business entities, such as
PETCO PALS, Verizon, Giant, Blockbuster, CVS/Pharmacy, and GNC,
employ small advertising and/or reward plastics to be used with a
key chain. Some of these advertising and/or reward plastics,
e.g., CVS/Pharmacy and Verizon plastic cards having indicia in
distinct locations, have a plurality of sub-sections and a
punched hole for inserting a key chain therethrough. Other
advertising and/or reward plastics, such as Blockbuster and
CVS/Pharmacy cards having punched holes for key chains, employ
bar codes for the purpose of giving credits to customers by a
business entity for each business transaction or purchase
occurred or for the purpose of giving discounts to customers by a
business entity for a given business transaction or purchase.
These cards are designed to be used with a key chain, thus at
least suggesting the subject matter of claim 1. Moreover, as is
also apparent from Edge and Sports Pub discussed above, their
cards, which are capable of being punched out to reflect each
business transaction, provide the same function as the
conventional key chain cards having bar codes discussed above.
Thus, in the event of further prosecution, the examiner is
advised to obtain the dates on which these cards were available
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18
and if they were available prior to the filing date of this
application, determine whether they alone, or together with Edge
and Sports Pub, affect the patentability of the subject matter
defined by claims 1 and 4 through 9.
CONCLUSION
In summary:
1) The examiner’s rejection of claim 1 under 35 U.S.C. § 102(b)
as anticipated by the disclosure of Kasprzycki is affirmed;
2) The examiner’s rejection of claims 1 and 4 through 7 under
35 U.S.C. § 103 as unpatentable over the combined
disclosures of Edge and Kasprzycki is affirmed;
3) The examiner’s rejection of claims 1 and 4 through 7 under
35 U.S.C. § 103 as unpatentable over the combined
disclosures of Edge and Kebarian is reversed;
4) The examiner’s rejection of claims 1 and 4 through 7 under
35 U.S.C. § 103 as unpatentable over the combined
disclosures of Sports Pub and Kasprzycki is affirmed;
5) The examiner’s rejection of claims 1 and 4 through 7 under
35 U.S.C. § 103 as unpatentable over the combined
disclosures of Sports Pub and Kebarian is reversed;
6) The examiner’s rejection of claims 8 and 9 under 35 U.S.C.
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19
§ 103 as unpatentable over the combined disclosures of Edge,
Kasprzycki and either Lemberg or Kanzelberger is affirmed;
7) The examiner’s rejection of claims 8 and 9 under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of Edge,
Kebarian, and either Lemberg or Kanzelberger is reversed;
8) The examiner’s rejection of claims 8 and 9 under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of
Sports Pub, Kasprzycki and either Lemberg or Kanzelberger is
affirmed; and
9) The examiner’s rejection of claims 8 and 9 under 35 U.S.C.
§ 103 as unpatentable over the combined disclosures of
Sports Pub, Kebarian, and either Lemberg or Kanzelberger is
reversed.
Accordingly, the decision of the examiner is affirmed.
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Application No. 10/132,863
20
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNK K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CKP:hh
Appeal No. 2004-1586
Application No. 10/132,863
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