Holcombe, Charles L. et al.

Patent Trials and Appeals Board

May 20, 2020

2019001587 (P.T.A.B. May. 20, 2020)

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.