Holcombe, Charles L. et al.Download PDFPatent Trials and Appeals BoardMay 20, 202013281489 - (D) (P.T.A.B. May. 20, 2020) Copy Citation 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. 13/281,489 10/26/2011 Charles L. Holcombe 60309.0018USI3/ SW-07-0571 8372 70289 7590 05/20/2020 MERCHANT & GOULD KS Merchant & Gould P.C. P.O. BOX 2903 MINNEAPOLIS, MN 55402 EXAMINER NGUYEN, CHAU N ART UNIT PAPER NUMBER 2847 NOTIFICATION DATE DELIVERY MODE 05/20/2020 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USPTO70289@merchantgould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHARLES L. HOLCOMBE, RONALD J. BURCHFIELD, CAROL J. GODFREY, STEPHEN L. SPRUELL, JOHN N. WARE, Jr., EDWARD J. EASTERWOOD, Jr., W. STEVE WILSON, FRANK HULLENDER, and CHARLES DOUGLAS GLORE ___________________ Appeal 2019-001587 Application 13/281,489 Technology Center 2800 ____________________ Before ERIC S. FRAHM, JUSTIN BUSCH, and JAMES W. DEJMEK, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Introduction Appellant2 appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the 1 The oral hearing scheduled for May 19, 2020, was waived by Appellant in Appellant’s Response to Notice of Hearing filed May 6, 2020. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a Appeal 2009-013324 Application 13/281,489 2 Examiner’s (i) anticipation rejection of claims 1–4, 7–12, 15, 17, and 19–22, and (ii) obviousness rejections of claims 5, 6, 13, 14, 16, 18, and 23. Appellant’s Disclosed and Claimed Invention Appellant’s disclosed invention, entitled “Traceable and Theft Deterrent Reclaimable Product” (Title), relates to metals having a high economic value that may be targeted for theft, such as copper and aluminum, and products containing those metals, such as electrical wire and cable (see Spec. ¶ 3). Because “[t]he recycling center’s operator may have no way to distinguish between stolen electrical wire and cable and legitimate scrap electrical wire and cable in the conventional commercial course” (Spec. ¶ 3), Appellant discloses and claims a theft deterrent product having indicia including (i) unique codes indicating ownership by a specific organizational entity or enterprise (see Spec. ¶¶ 5, 52, 53; Abstract; claims 1, 19, 23); and (ii) sequential numbers such as footage markers or dates of manufacture (see Spec. ¶¶ 31, 36). The indicia “may be placed periodically and longitudinally on the cable a predetermined distance apart” (Spec. ¶ 31; see Figs. 1A–C). Exemplary Claim An understanding of the invention can be derived from a reading of exemplary claim 19, which is reproduced below with emphases, formatting, and bracketed lettering added: 19. A product comprising at least one indicia placed on the product, [A] each of the plurality of indicia respectively comprising a unique code configured to indicate ownership by patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). According to Appellant, Southwire Company is the real party in interest (Appeal Br. 3). Appeal 2009-013324 Application 13/281,489 3 an entity of particular amounts of the product on which the plurality of indicia are respectively disposed, the unique code having a unique portion that is unique to a particular amount of the product on which it is disposed, [B] the unique portion not ever being repeated on the product and the unique portion not ever being repeated on another product, wherein the plurality of indicia are visible from an exterior of the product. Appeal Br. 20–21, Claims Appendix (emphases, formatting, and bracketed lettering added). Remaining independent claims 1 and 23 further limit the product to being either “metal based” (claim 1) or “copper tubing configured to be used for refrigerant” (claim 23). The Examiner’s Rejections (1) The Examiner rejected claims 1–4, 7–12, 15, 17, and 19–22 under 35 U.S.C. § 102(b) as being anticipated by Cohn (US 5,466,011; issued Nov. 14, 1995)). Final Act. 2–4. (2) The Examiner rejected claims 5, 6, 14, 16, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Cohn alone. Final Act. 5. (3) The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cohn and Muto et al. (JP 2001-189112 A; published July 10, 2001) (hereinafter, “Muto”). Final Act. 6. (4) The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cohn and Duhancik (US 6,114,633; issued Sept. 5, 2000).3 Final Act. 6. 3 Claim 18 depends directly from claim 1, and thus recites all of the subject matter of claim 1. The Examiner rejected claim 1 over Cohn (see Final Act. 2–3). Therefore, although the Examiner neglected to include Cohn in Appeal 2009-013324 Application 13/281,489 4 ISSUE Based on Appellant’s arguments (Appeal Br. 10–16; Reply Br. 2–6), the following principal issue is presented:4 Did the Examiner err in rejecting (i) claims 1–4, 7–12, 15, 17, and 19– 22 under 35 U.S.C. § 102(b) over Cohn; and (ii) claims 5, 6, 13, 14, 16, 18, and 23 under 35 U.S.C. § 103(a) over Cohn, either alone or as a base reference, because Cohn fails to disclose a product having indicia placed thereon meeting the requirements of limitations A (indicating ownership) and B (not being repeated on the product or another product), as recited in the heading of the rejection of claim 18, we consider this harmless error because (i) the Examiner addresses Cohn in the body of the rejection of claim 18 (see Final Act. 6) (“one skilled in the art would modify the product of Cohn”); and (ii) Appellant recognizes the rejection as being “over Cohn in view of Duhancik” (Appeal Br. 9) (emphasis omitted). In addition, Appellant’s arguments (see Appeal Br. 15–16) regarding claim 18 do not dispute this issue, and only argue that claim 18 is patentable for the same reasons as claim 1, and that Duhancik fails to cure the deficiencies of Cohn (i.e., fails to teach or suggest indicia including a unique code indicating ownership) (see Appeal Br. 15–16). 4 Based on Appellant’s arguments which present general arguments to claims 1, 19, and 23 as a group (Appeal Br. 10–15; Reply Br. 2–6), with regard to the anticipation rejection of claims 1–4, 7–12, 15, 17, and 19–22, we select claim 19 as representative of the group of claims rejected over Cohn. We will decide the outcome of the obviousness rejection over Cohn of claims 5, 6, 14, 16, and 23 (not separately argued), on the same basis as claim 19. And, based on Appellant’s separate arguments for claims 13 and 18 (see Appeal Br. 15–16), we will decide the outcome of the obviousness rejections of claims 13 and 18 (based on Cohn taken with other secondary references), on the same basis as claim 1 (thus, representative claim 19), from which claims 13 and 18 depend. Appeal 2009-013324 Application 13/281,489 5 representative claim 19 (emphasis added)? ANALYSIS We have reviewed the Examiner’s rejections (Final Act. 2–6) in light of Appellant’s contentions in the Appeal Brief (Appeal Br. 10–17) and the Reply Brief (Reply Br. 2–6) that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief (see Ans. 4–7). We are not persuaded by Appellant’s contentions that the Examiner has erred. Our reasoning follows. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (“[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” ) (citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)). “[A]bsence from the reference of any Appeal 2009-013324 Application 13/281,489 6 claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). In addition, the Examiner is required to provide Appellant reasonable notice as to the basis of a rejection. The notice requirement is set forth by 35 U.S.C. § 132: [T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant ... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that he seeks – the so- called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is on the USPTO “to produce the factual basis for its rejection of an application under sections 102 and 103”) (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). In the instant case before us on appeal, the Examiner has established a prima facie case of anticipation as to claim 19 by showing (see Final Act. 2– 3) that Cohn discloses a product 10 having indicia 14 on the product, the indicia 14 including a unique code (see Cohn, col. 3, ll. 1–9; see also Figs. Appeal 2009-013324 Application 13/281,489 7 1–4). As explicitly described in Cohn, “[e]ach marking 14 on medium 10 is unique and distinct from each other” (Cohn, col. 3, ll. 1–2), and “[d]esired information, such as the properties, location, or information contained within medium 10 may be referenced by the marking” (Cohn, col. 3, ll. 4–6), which “may be used as a reference to information and identification data of each of the individual wires housed within medium 10” (Cohn, col. 3, ll. 7– 9) (emphasis added). We agree with the Examiner (see Ans. 6) that Cohn’s properties would be understood by one of ordinary skill in the art to include attributes or qualities of something, including ownership. This agrees with Appellant’s assertion that “[i]n view of the description in Cohn, it can make logical sense for a singular marking to present information about multiple attributes or qualities (i.e., properties) about a singular medium” (Appeal Br. 14). Appellant presents only attorney argument (see Appeal Br. 13–14) regarding the definition of the term “properties” as used in Cohn (Cohn, col. 3, l. 5). Appellant has provided no evidence on this record to support the assertion that ownership is not a property of a product, apart from mere conclusory statements. It is well settled that mere lawyer’s 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; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)), and that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA 1965). Therefore, we accord very little probative value to Appellant’s conclusory statements that the Specification supports an interpretation of claim 19 that only includes indicia including unique codes that do not repeat on the product or that Appeal 2009-013324 Application 13/281,489 8 indicate ownership (i.e., information or a property about a product), as Cohn admittedly discloses. Appellant has the opportunity on appeal to this Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102 begins with a determination of the scope of the claim. We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim must then be compared with the prior art. “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). Such statements often appear in a claim’s preamble, but can appear elsewhere in the claim. See In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). Here, because the indicia, including the unique code, has an intended configuration (to show ownership and not be repeated on another product), we give little patentable weight to the intended use of the indicia. And, even if ownership were required to be indicated by the unique code recited in claim 19, we agree with the Examiner (see Final Act. 2–3; Ans. 5–6) that Cohn discloses unique markings that include “[d]esired information, such as the properties, location, or information contained within the medium” Appeal 2009-013324 Application 13/281,489 9 (Cohn, col. 3, ll. 4–6; see also Ans. 5), and that one of ordinary skill in the art would understand that desired information and properties of the wire could include ownership. Further, Cohn’s markings are “unique and distinct from each other such marking[s] on the entire medium” (Cohn, col. 3, ll. 2– 3). Clearly, if the markings on Cohn’s product are unique, they are not repeated. Therefore, Cohn discloses the intended use of claim 19’s unique portion of code, namely, not to repeat on the product. Thus, we agree with the Examiner that “[t]he fact that Cohn teaches each marking 14 is unique and distinct from others on the entire medium” (Ans. 5), leads to the finding that Cohn discloses limitation A of claim 19. We also agree with the Examiner that “[t]he fact that Cohn does not disclose the unique portion is repeated on another product” (Ans. 6), leads to the finding that Cohn discloses limitation B of claim 19 (see Ans. 7). This is especially true in light of the fact that Appellant also fails to describe this feature in the Specification as originally filed (not repeating the unique code portion on another product). Properly read, claim 19 merely requires “a product comprising a plurality of indicia placed on the product, each of the plurality of indicia respectively comprising a unique code . . . , wherein the plurality of indicia are visible from an exterior of the product” (claim 19). As discussed above, Cohn discloses this limitation. While features of an apparatus or system may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Appeal 2009-013324 Application 13/281,489 10 Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not.”). In the instant case on appeal, Appellant has failed to structurally distinguish the prior art’s product from the claimed product. Moreover, “[w]here, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Thus, the burden is on Appellant to show Cohn does not inherently have the unique code properties of claim 19, namely that the unique code is “configured to indicate ownership by an entity of a particular amount of the product on which the at least one indicia is disposed, the unique code having a unique portion that is unique to the particular amount of the product on which the at least one indicia is disposed, the unique portion not ever being repeated on the product and the unique portion not ever being repeated on another product” (claim 19). Appellant has not persuasively met this burden. Instead, we agree with the Examiner (Ans. 4–7) that Appellant has not shown that Cohn’s product would not operate to identify ownership or not repeat the unique code on the product or another product. Further, the unique code being “configured to indicate ownership by an entity of particular amounts of the product on which the plurality of indicia are respectively disposed” (claim 19, limitation A), and “the unique Appeal 2009-013324 Application 13/281,489 11 portion not ever being repeated on the product and the unique portion not ever being repeated on another product” (claim 19, limitation B), do not affect any steps or alter any structural limitations recited in claim 19. The indicia, unique code, and/or unique portion are non-functional descriptive material that do not distinguish the claim from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential). It is well-settled that in order to be given patentable weight, printed matter must have a functional relationship to its substrate. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). In Miller, the predecessor to our reviewing court made clear that “printed matter by itself is not patentable subject matter, because [it is] non-statutory.” Miller, 418 F.2d at 1396. However, if the printed matter has a “new and unobvious functional relationship” with the substrate (e.g., volumetric indicia on measuring vessels), it is entitled to patentable weight. Miller, 418 F.2d at 1396. In contrast to Miller, in In re Smith, 70 F.3d 1290 (Fed. Cir. 1995) (unpublished opinion), the application being appealed was directed to a retractable tape measure having electrical information displayed on the tape and tape housing for ease of reference by, for example, an electrician. See Smith, 70 F.3d at 1290. The court did not find a functional relationship between the printed matter (i.e., electrical information) and the tape or the tape housing and, accordingly, the printed matter did not patentably distinguish the applicant’s claimed invention from the prior art. See Smith, 70 F.3d at 1290. “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior Appeal 2009-013324 Application 13/281,489 12 art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The case here is similar, namely that there is no functional relationship between the printed matter (i.e., the indicia and unique code having an unrepeated unique portion indicating ownership) and the product (e.g., an electrical wire). The Specification does not disclose, nor does Appellant establish, that the printed matter—i.e., the indicia, unique code, and unique portion—is in any way functionally related to the product. In other words, the functionality of the product remains the same and is not affected by the addition of indicia or unique codes visible on the exterior surface of the product. Accordingly, we determine limitations A and B constitute non- functional descriptive matter and, thus, are accorded very little patentable weight. In view of the foregoing, Appellant’s arguments in the briefs are not persuasive, and we sustain the Examiner’s anticipation rejection of claim 19, as well as claims 1–4, 7–12, 15, 17, and 20–22 grouped therewith, over Cohn. For similar reasons, and because Appellant substantially relies on the same arguments presented as to claim 19 for the patentability of claims 5, 6, 13, 14, 16, 18, and 23, we also sustain the Examiner’s obviousness rejections Appeal 2009-013324 Application 13/281,489 13 of claims 5, 6, 13, 14, 16, 18, and 23, which are all rejected on either Cohn alone or in combination with other secondary references. CONCLUSIONS5 We affirm the Examiner’s (i) anticipation rejection of claims 1–4, 7– 23, 25, 17, and 19–22 under 35 U.S.C. § 102(b); and (ii) obviousness rejections of claims 5, 6, 13, 14, 16, 18, and 23 under 35 U.S.C. § 103(a). In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–4, 7–12, 15, 17, 19– 22 102(b) Cohn 1–4, 7– 12, 15, 17, 19–22 5, 6, 14, 16, 23 103(a) Cohn 5, 6, 14, 16, 23 13 103(a) Cohn, Muto 13 18 103(a) Cohn, Duhancik 18 Overall Outcome 1–23 5 We have decided the appeal before us. However, should there be further prosecution of claims 1, 19, and 23, which recite “the unique portion not ever being repeated on the product and the unique portion not ever being repeated on another product” (claim 1, limitation B), the Examiner’s attention is directed to 35 U.S.C. § 112, first paragraph, for consideration of whether limitation B has written description support in Appellant’s Specification as originally filed (see e.g., Spec. ¶¶ 19, 30, 31, 52–57). Limitation B was added by amendment to the claims in Appellant’s Amendment filed April 25, 2016 (see pp. 7–8), and Appellant stated in the accompanying remarks to the amendment that support for the amendment could be found at paragraph 19 of the Specification, which discloses a “unique code” that “provide[s] traceability for any products (e.g. electrical wire, electrical cable, cathodes, etc.) that may be stolen and then recycled” Appeal 2009-013324 Application 13/281,489 14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED (Spec. ¶ 19). In the Summary of the Claimed Subject Matter section of the Appeal Brief (see Appeal Br. 7–8), Appellant points to paragraphs 30, 31, and 52–57 of the Specification for support for limitation B. Copy with citationCopy as parenthetical citation