Ex Parte Armenise

Patent Trial and Appeal Board

Jan 31, 2013

11399689 (P.T.A.B. Jan. 31, 2013)

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.
11/399,689 04/06/2006 Carlo Armenise 8869
7590 01/31/2013
Clifford Kraft
320 Robin Hill Dr.
Naperville, IL 60540
EXAMINER
NGUYEN, KIEN T
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
01/31/2013 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 CARLO ARMENISE
____________________

Appeal 2010-006444
Application 11/399,689
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7 and 10-20. App. Br. 2. Claims 8 and 9 have
been canceled. Id. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We affirm-in-part and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

THE CLAIMED SUBJECT MATTER
Claims 1, 7, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter:
1. A combination gag gift and desktop
accessory comprising:
a base with a plurality of spaces on said base
for holding a plurality of desktop utility items;
at least one caricature figurine also attached
to said base, said figurine being a human form and
mocking at least one human stereotype or
character trait;
said gag gift and desktop accessory also
including a written title identifying a particular
human stereotype or character trait.

THE REJECTIONS
Appellant requests review of the following rejections:
1. Claims 1, 2, 4-6, 11-14, and 16-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Huang (US 5,040,673; iss. Aug. 20, 1991) and
Chun-Hoi (US 4,824,416; iss. Apr. 25, 1989).
2. Claims 3 and 15 are rejected under 35 U.S.C. § 103(a) over
Huang, Chun-Hoi, and MacNalley (US 3,464,564; iss. Sept. 2, 1969).
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3. Claims 7 and 10 are rejected under 35 U.S.C. § 103(a) over
Huang, Chun-Hoi, and Pasch (US 6,220,429 B1; iss. Apr. 24, 2001).

ANALYSIS
Rejection of claims 1, 2, 4-6, 11-14, and 16-20 –Huang and Chun-Hoi
Claims 1, 2, 5, 12-14, 16, and 18-20
The Examiner found that Huang discloses a desktop accessory
comprising a base 1 and at least one caricature figurine 24 attached to the
base 1. Ans. 3 (see also Huang, Fig. 1). Claim 1 recites that "said figurine
being a human form and mocking at least one human stereotype or character
trait." The Examiner found Huang's figurine 24 is not in human form, but
found that Huang does disclose that "[t]he ornament 24 may be variously
shaped as desired." Ans. 3 (quoting Huang, col. 2, ll. 7-8). The Examiner
also found that Chun-Hoi discloses a base 20 with at least one figure 10, 12
in human form. Ans. 3. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to modify Huang's figurine with
the human form figurine of Chun-Hoi to accommodate different types of
users. Ans. 3-4.
As to claim 1, Appellant contends that it not clear how the figurines of
Huang or Chun-Hoi "mock" anything. App. Br. 8. We disagree. Appellant
does not argue that the claim term "mocking" has any particular meaning.
An ordinary meaning of "mock" is "to imitate (as a mannerism) closely:
MIMIC." See MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 797 (11th ed.
2003). Chun-Hoi's figurines are constructed to represent (imitate) dancing
keiki dolls. See Chun-Hoi, col. 2, ll. 7-10, 38-39; Figs. 3, 4. One of
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ordinary skill in the art would reasonably find that the Chun-Hoi figurines
"mock[] at least one human stereotype or character trait," as claimed.
Regarding the claim limitation, "said gag gift and desktop accessory
also including a written title identifying a particular human stereotype or
character trait," the Examiner found that a title and/or written message
identifying an object is well known in the art, and concluded that it would
have been a matter of design choice to provide a title or written message for
identifying the modified Huang device. Ans. 4.
Appellant contends that neither Huang nor Chun-Hoi describes a title
(App. Br. 7), and that a person of ordinary skill in the art could not combine
these references and "come up with a title identifying a human stereotype or
character trait" (App. Br. 7-8). To the extent that Appellant is contending
that either Huang or Chu-Hoi is required to provide an explicit teaching,
suggestion, or motivation, Appellant acknowledges that this test has been
rejected by the Supreme Court. App. Br. 7. The Examiner articulated a
rational reason for modifying Huang's device. Appellant has not explained
why one of ordinary skill in the art would not have possessed sufficient skill
and creativity to provide a title identifying the modified device.
Accordingly, this contention is also not persuasive.
Moreover, the specific content of the "written title," that is, "printed
matter," will not distinguish the gag gift and desktop accessory from the
prior art in terms of patentability where the printed matter is not functionally
related to the substrate. See In re Gulack, 703 F.2d 1381, 1385-86 (Fed. Cir.
1983) ("[T]he critical question is whether there exists any new and
unobvious functional relationship between the printed matter and the
substrate.") In our view, there is no new and non-obvious functional
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relationship between the claimed content of the written title and the gag gift
and desktop accessory itself. Hence, we construe the claimed written title as
non-functional descriptive matter. As such, the claimed content of the
written title alone does not patentably distinguish the gag gift and desktop
accessory from the combined teachings of Huang and Chun-Hoi. For this
additional reason, we sustain the rejection of claim 1.
Claim 2 recites that the gag gift and desktop accessory "further
compris[es] a recorded human voice presentation for providing an audio gag
message." The Examiner found that Huang's device includes a voice
presentation means (i.e., a whistle) for providing an audio gag message
(Ans. 3), and that Chun-Hoi's device includes a recorded human voice
presentation in the form of music with melody for providing an audio
message (id. (citing Chun-Hoi, col. 3, ll. 48-55)).
Appellant contends that a whistle is not a voice. App. Br. 8; see also
Reply Br. 2. While this contention appears to address Huang's teaching,
Appellant has not apprised us of any error regarding the Examiner's finding
for Chun-Hoi, and thus has not addressed the combination of teachings. We
sustain the rejection of claim 2.
Appellant does not present any separate argument for claim 5. We
sustain the rejection of this claim.
Independent claim 12 is directed to a method of providing a useful
desktop accessory and recites "placing a gag figurine on said base, said gag
figurine have human form and mocking a human personality trait," and
"providing on said desktop accessory a written title identifying a particular
human stereotype of character trait." The Examiner's findings (Ans. 3-4)
and Appellant's arguments for patentability (App. Br. 7-8) for claim 12 are
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the same as those discussed supra for claim 1. Accordingly, we sustain the
rejection of claim 12.
Appellant does not present any separate argument for claim 13, which
depends from claim 12. We sustain the rejection of claim 13.
Claim 14 depends from claim 12 and recites that the gag figurine is
one of a group of listed gag figurines. Appellant contends that Chun-Hoi's
dancers are not gag characters, but acknowledges that it is possible to make
a gag gift and accessory holder for a dancer. App. Br. 8. Appellant also
contends that the independent claims require a title identifying a human
stereotype or character trait, and that the references do not teach or suggest
this. App. Br. 8-9. For reasons discussed supra with respect to claim 1, this
contention is not persuasive. We sustain the rejection of claim 14.
Appellant does not present any separate argument for claims 16 and
18, which depend from claim 12. We sustain the rejection of claims 16
and 18.
Claims 4, 6, 11, and 17
Claim 4 depends from claim 3, and claim 11 depends from claim 7.
In rejecting claims 4 and 11, the Examiner did not address the limitations of
claims 3 and 7, which are incorporated into claims 4 and 11, respectively.
All words in a claim must be considered in judging the patentability of that
claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Consequently, the Examiner failed to establish a prima facie case of
obviousness of the subject matter of claims 4 and 11. Thus, we cannot
sustain the rejection of claims 4 and 11.
Claim 6 depends from claim 1, and claim 17 depends from claim 12.
The Examiner did not make any findings regarding the limitations recited in
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claims 6 and 17, and did not respond to Appellant's contentions that none of
the references teach gag representations on a base (claim 6) or a base made
of moldable material (claim 17)(App. Br. 8). Accordingly, we do not sustain
the rejection of claims 6 and 17.

Rejection of claims 3 and 15 - Huang, Chun-Hoi, and MacNalley
Claims 3 and 15 recite that the base rotates. The Examiner found that
the combination of Huang and Chun-Hoi does not disclose the base as being
rotatable. Ans. 4. The Examiner found that MacNalley discloses a utility
desktop accessory having a base 15 that rotates relative to support structure
10, 12. Id. The Examiner concluded that it would have been obvious to
modify the base of the combination with MacNalley's rotatable base to
provide easy access to the utility devices. Id. at 5.
Appellant contends that "[t]here is simply [no] way to combine the
Huang, Chun-Hoi and MacNalley references to arrive at the applicant's
invention." App. Br. 9; see also Reply Br. 3. This contention is not
persuasive. "[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Keller, 642 F.2d 413,
425 (CCPA 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . ."). Appellant has provided no persuasive reason why
one of ordinary skill in the art would lack sufficient knowledge and skill to
be able to modify the base of the Huang and Chun-Hoi combination to make
it rotatable. Appellant also does not address the Examiner's stated rationale
for the modification. We sustain the rejection of claims 3 and 15.
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Rejection of claims 7 and 10 – Huang, Chun-Hoi, and Pasch
Independent claim 7 is directed to a combination gag gift and desktop
accessory and recites "at least one human caricature figurine also attached to
said base unit, said figurine mocking at least one human stereotype or
character trait," and "said combination gag gift and desktop accessory also
including a written title identifying a particular human stereotype of
character trait."
Appellant contends that the combination of references does not
disclose or suggest these features. App. Br. 9-10. For reasons similar to
those discussed supra with respect to claim 1, we disagree. We sustain the
rejection of claim 7.
Claim 10 depends from claim 7 and recites that the tape dispenser is
gag related to the figurine. The Examiner relied on Pasch for its teaching of
a desktop utility device having a tape dispenser 21 mounted on base 11.
Ans. 5. The Examiner concluded that it would have been obvious to modify
the combination of Huang and Chun-Hoi with the tape dispenser of Pasch to
provide additional utility to the device. Id.
Appellant contends that the tape dispenser may be related by shape,
color, or "otherwise," but that Pasch does not supply this missing element
because it has no figurine. App. Br. 10. This contention is not persuasive.
The Examiner did not rely on Pasch for teaching a figurine, but relied on
Huang and Chun-Hoi for this feature. Furthermore, Pasch's tape dispenser
would necessarily have a color and a shape, and claim 10 does not specify
how the tape dispenser is "gag related" to the figurine. Indeed, Appellant's
use of the word "otherwise" acknowledges that this term has a broad
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meaning. As such, Appellant provided no persuasive reason why Pasch's
tape dispenser would not be "gag related" to the figurine of Huang and
Chun-Hoi. We sustain the rejection of claim 10.

New ground of rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Huang, Chun-Hoi, and MacNalley, as evidenced by
MPEP § 608.02(IX)
Claim 4 depends from claim 3, which we above found to properly be
rejected in view of Huang, Chun-Hoi and MacNalley, and further recites that
the base is made of moldable material. Appellant contends that this feature
is not taught by the references. However, we observe that Figures 3 and 4,
for example, of Chun-Hoi depict sectional views of base 20. The cross-
hatching pattern (symbol) shown for base 20 corresponds to the symbol that
should be used in U.S. patent applications to indicate synthetic resin or
plastic construction. See MPEP § 608.02(IX). We also note that Appellant's
Specification states that "[t]he preferred material is plastic since it is easy to
mold." See Spec. 7. Accordingly, we find that Chun-Hoi's base 20 is made
of "moldable material," as this claim term would be construed in light of the
Specification. Therefore, we enter a new ground of rejection of claim 4
under 35 U.S.C. § 103(a).

New ground of rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Huang and Chun-Hoi
Claim 6 recites that the base also contains gag representations.
Appellant contends that none of the references teach this claim limitation.
However, Appellant does not direct us to any specific definition for the term
"gag representations." Figures 3 and 4 of Chun-Hoi, for example, show that
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the figurines have objects in their hands that we find can be considered "gag
representations," as claimed. It would have been obvious to a person of
ordinary skill in the art to include similar "gag representations" on the base
of the modified Huang device to supplement the theme and/or function of
the figurine. Therefore, we enter a new ground of rejection of claim 6 under
35 U.S.C. § 103(a).

New ground of rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Huang, Chun-Hoi, and Pasch
Claim 11 recites a "job or career group" containing members from
which the figurine is chosen. Appellant's contentions with respect to this
claim are the same as those discussed supra for claim 14. App. Br. 8-9. As
these contentions are not persuasive, we enter a new ground of rejection of
claim 11 under 35 U.S.C. § 103(a).

New ground of rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Huang and Chun-Hoi, as evidenced by
MPEP § 608.02(IX)
Claim 17 recites that the base is molded. For similar reasons as those
discussed supra in regard to the new ground of rejection of claim 4, we enter
a new ground of rejection of claim 17 under 35 U.S.C. § 103(a).

DECISION
The Examiner's decision rejecting claims 1-3, 5, 7, 10, 12-16, and 18
is AFFIRMED, and the decision rejecting claims 4, 6, 11, and 17 is
REVERSED.
This decision also contains New Grounds of Rejection of claims 4, 6,
11, and 17 pursuant to 37 C.F.R. § 41.50(b), which provides "[a] new
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ground of rejection pursuant to this paragraph shall not be considered final
for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
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-IN-PART; 37 C.F.R. § 41.50(b)

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