Ex Parte Coley et alDownload PDFPatent Trial and Appeal BoardSep 28, 201814060660 (P.T.A.B. Sep. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/060,660 10/23/2013 96056 7590 10/01/2018 Florek & Endres PLLC 1156 A venue of the Americas Suite 600 New York, NY 10036 FIRST NAMED INVENTOR Ann Coley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2072-001 6002 EXAMINER VERAA, CHRISTOPHER ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 10/01/2018 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 ANN COLEY, STUART HARVEY LEE, and JENNA MARIE EDGEMON Appeal2017-009555 Application 14/060,660 Technology Center 3600 Before JOHN C. KERINS, EDWARD A. BROWN, and ANNETTE R. REIMERS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ann Coley et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9 and 11-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ). Appeal2017-009555 Application 14/060,660 CLAIMED SUBJECT MATTER Appellants' invention relates to a poster handle that is adhered to a poster, permitting a user to hold the poster with one hand. Spec. p. 1, 11. 2-3. Claims 1, 13, and 14 are independent. Claims 1 and 13 are illustrative of the claimed invention and read as follows: 1. A poster handle comprising one or more support members, each support member comprising a support body with one or more support extensions and one or more securing elements on at least a portion of an attachment side of the support member, and a handle member comprising an attachment section, one or more gripping sections for a hand to grip and one or more securing elements on an attachment side of the attachment section, at least one of said one or more gripping sections having a first end coupled to a first end of the attachment section and a second end coupled to a second end of the attachment section forming an elongated opening between said first and second ends adapted to receive a user's hand, the handle member excluding a stand element for resting on a surface to present the poster to which the handle is attached in an upright orientation, wherein at least one of the one or more securing elements of the support member and at least one of the one or more securing elements of the handle member is taken from the group consisting of adhesives, tapes, clips, snaps, staples and hook and loop fasteners. 13. A poster handle comprising a handle member having an attachment section comprising one or more securing elements for securing the attachment section to a poster taken from the group consisting of adhesives, tapes, clips, snaps, staples and hook and loop fasteners and two gripping elements for a hand to grip each having a first end coupled to a first end of the attachment section and a second end coupled to a second end of the attachment section to form an elongated opening between said first and second ends, said elongated opening adapted to receive a user's hand and the gripping elements are attached to opposed lateral 2 Appeal2017-009555 Application 14/060,660 sides of the attachment section and include connection elements having releasable interlocking features to maintain the gripping elements of the handle member in a use configuration. THE REJECTIONS The Examiner has rejected: (i) Claims 1-9, 11, 12, and 14 under 35 U.S.C. § 112(a), orpre-AIA § 112, first paragraph, as failing to comply with the written description requirement; (ii) Claims 4 and 5 under 35 U.S.C. § 112, second paragraph, as being indefinite; (iii) Claims 1--4, 6-9, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Paige (US 2,376,180, issued May 15, 1945) in view of Stein (US 2,805,504, issued Sept. 10, 1957), and Lambert (US 7,946,067 B2, issued May 24, 2011 ); (iv) Claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Paige in view of Stein, Lambert, and Garcia (US 8,453,361 B2, issued June 4, 2013); (v) Claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Kayat (US 2,775,382, issued Dec. 25, 1956) in view of Buttery (US 2,641,403, issued June 9, 1953); and (vi) Claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Paige in view of Stein, and Epstein (US 3,601,916, issued Aug. 31, 1971). 3 Appeal2017-009555 Application 14/060,660 ANALYSIS Claims 1-9, 11, 12, and 14--Written Description The Examiner determines that the limitation of claims 1 and 14, "the handle member excluding a stand element for resting on a surface to present the poster to which the handle is attached in an upright orientation," is not supported by the original disclosure. Final Act. 2-3. The Examiner notes that the mere absence of a positive recitation of an element or feature does not constitute written descriptive support for a negative limitation in a claim excluding such element or feature. Id. at 3 (citing MPEP § 2173.0S(i)). The Examiner points out that the Specification discloses that "the handle may be adapted to receive a stick or the like to hold up the poster. . . . All such variations, modifications and/or alternatives are intended to fall within the scope of the present invention, limited only by the claims." Ans. 7-8 ( citing Spec. p. 8, 1. 24--p. 9, 1. 3). The Examiner takes the position that using a stick that is attached to the handle does not require grasping the handle, that it is possible for a stand element to be deliberately designed to be grasped by the hand, that the broadest reasonable interpretation of the term "handle" pertains mainly to an intended use of the device, and that, thus, a stand element that is capable of being grasped as a handle is properly construed as being a handle. Id. at 8. Appellants contend that the negative limitation is supported by the original disclosure. Appeal Br. 7. Appellants argue that a person of ordinary skill in the art reading the Specification and taking into account the drawings would understand the claimed invention as being a poster handle intended only to be held in a user's hand, and having no stand element. Id. at 8. Referring to the passage in the Specification that is cited by the 4 Appeal2017-009555 Application 14/060,660 Examiner, Appellants contend that the passage establishes that the handle itself would not be a stand. Reply Br. 3. Appellants have the better position. "In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue." Purdue Pharma L.P. v. Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Figures 1-5B and a substantial portion of the Specification describe embodiments in which a poster handle does not include a stand element. The last paragraph of the Specification, however, describes an embodiment in which a poster handle is adapted to receive a stick or the like, i.e., a stand element. As such, the Specification provides adequate written descriptive support for a claim element calling for a handle element that does not also have a stand element. None of the Examiner's observations regarding handles and sticks (Ans. 8) are germane to the issue as to whether the limitation "the handle member excluding a stand element for resting on a surface to present the poster to which the handle is attached in an upright orientation" is supported by the original disclosure. Final Act. 3. We do not sustain the rejection of claims 1-9, 11, 12, and 14 under 35 U.S.C. § 112(a) or pre-AIA § 112, first paragraph, as failing to meet the written description requirement. Claims 4 and 5--Indefiniteness The Examiner finds that the term "about" in the limitations in claims 4 and 5 requiring the support extensions to project in divergent directions at angles of"about 20-180° to each other" and of"about 30-40° to each other," respectively, is a relative term of degree that renders the claims 5 Appeal2017-009555 Application 14/060,660 indefinite because the Specification does not provide a standard for ascertaining the requisite degree, and as a result, the scope of the claims is unclear. Final Act. 3. A claim is properly rejected as being indefinite under 35 U.S.C. § 112, second paragraph if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim "contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). Appellants contend that the courts have rejected the sweeping proposition that the term "about" renders a claim per se indefinite, and that the term "about" must be given a reasonable scope and must be viewed as it would be understood by an ordinary artisan in light of Specification. Appeal Br. 9. Appellants also posit that the courts have considered relevant whether or not there exists any close prior art from which the pending claims must be clearly distinguished. Id. Appellants point out that there is no close prior art which discloses a poster handle having a support member further comprising support extensions extending at the specifically recited angles, and that the Specification discloses support extensions of the support member that project in two or more opposed directions toward the periphery of the poster, and preferably toward the four comers of the poster. Id. (citing Spec. p. 6, 11. 1-14). As such, Appellants contend that, in light of the nature of the invention and in light of the Specification, an ordinary artisan when reading the claims, which include the term "about," would be apprised of the scope of the claimed invention. Id. at 9-10; see also Reply Br. 5---6 (citing Spec. p. 2, 11. 14--21, p. 3, 11. 1-2, p. 6, 11. 1-14). 6 Appeal2017-009555 Application 14/060,660 Appellants' contentions are unpersuasive. As an initial matter, we agree that there is no per se rule that the term "about" renders a claim indefinite. However, the courts have held that "[t]he meaning of the word 'about' is dependent on the facts of the case, the nature of the invention, and the knowledge imparted by the totality of the earlier disclosure to those skilled in the art. We are also mindful that the word 'about' may lead to indefiniteness under§ 112, ,r 2." Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995). The Specification, including the passages cited by Appellants, do not define the term "about." See Spec., passim. Although Appellants point out that the Specification discloses the range of degrees as claimed and other embodiments include support extensions that project in two or more opposed directions toward the periphery of the poster, and preferably toward the four comers of the poster, these embodiments do not inform an ordinary artisan as to the scope of the term "about," relative to the angles between two support extensions. As to the possibility that close prior art can provide evidence as to the scope of the term "about" that would be understood by an ordinary artisan, Appellants admit that there is no close prior art which discloses a poster handle having a support member further comprising support extensions extending at the specifically recited angles. As such, consideration of the prior art in assessing a skilled artisan's understanding of the scope is unavailing. The rejection of claims 4 and 5 as being indefinite is sustained. Claims 1-4, 6-9, 11, and 12--0bviousness--Paige/Stein/Lambert The Examiner finds that Paige discloses a poster handle comprising support members (strut members C) and a handle member (support B). 7 Appeal2017-009555 Application 14/060,660 Final Act. 4 ( citing Paige Figs. 1-3). The Examiner relies on Stein as disclosing a securing element (a staple). Id. at 4--5 (citing Stein Figs. 10- 11 ). The Examiner further relies on Lambert as disclosing a double-sided adhesive tape for securing artwork to a mounting surface. Id. at 5 (citing Lambert, col. 2, 1. 50-col. 3, 1. 16). Appellants contend that Paige does not disclose the claimed handle. Appeal Br. 10. Appellants argue that, rather, the element in Paige relied on as disclosing a handle also provides a means to support a poster element in an upright display position. Id. ( citing Paige, col. 2, 11. 19-28; Fig. 1 ). Appellants' contention is persuasive. The Examiner acknowledges that "[t]he stand element that supports the Paige display on a surface is the same element identified as a 'handle'." Final Act. 9; see also Ans. 9 (acknowledging "the stand element of Paige."). As such, the Examiner fails to show that Paige discloses a "handle member excluding a stand element for resting on a surface to present the poster to which the handle is attached in an upright orientation" as claimed. We therefore do not sustain the Examiner's decision rejecting claim 1, and claims 2--4, 6-9, 11, and 12 which depend therefrom. Claim 5--0bviousness-P aige/Stein/Lambert/Garcia The Examiner does not rely on Garcia in any manner that would remedy the above-noted deficiency in the rejection of claim 1, from which claim 5 depends, over Paige, Stein, and Lambert. Final Act. 6-7. For the same reasons discussed supra, we do not sustain the obviousness rejection of claim 5. 8 Appeal2017-009555 Application 14/060,660 Claim 14--0bviousness-Paige/Stein/Epstein Similarly to claim 1, claim 14 requires a "handle member excluding a stand element for resting on a surface to present the poster to which the handle is attached in an upright orientation." Appeal Br. 18 (Claims App.). The Examiner relies upon the same erroneous finding as in the rejection of claim 1 discussed supra. Final Act. 7-8. Accordingly, we do not sustain the Examiner's decision rejecting claim 14. Claim 13--0bviousness-Kayat/Buttery The Examiner finds that Kayat discloses a handle comprising an attachment section (center strip 11, cut-outs 4, 9, straps 13, 15), with the attachment section having adhesive on an attachment side, and gripping elements (handles 5, 10) attached to opposed lateral sides of the attachment section and having elongated openings adapted for receiving a user's hand. Final Act. 7 (citing Kayat, Fig. 3; col. 1, 1. 61---col. 2, 1. 32); see also Kayat, Figs. 1-2. The Examiner acknowledges that Kayat lacks connection elements with releasable interlocking features on the gripping elements. Id. The Examiner relies on Buttery as disclosing a folded handle that comprises gripping elements (handles members 7, 8) and connection elements ( slot 11 and tongue 12) that interlock to maintain the gripping elements in a use configuration. Id. (citing Buttery, Figs. 1-3 and 5; col. 2, 11. 7-28). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to include the connections elements taught by Buttery on the handle of Kayat in order to maintain the gripping elements in a use configuration for convenient grasping. Id. 9 Appeal2017-009555 Application 14/060,660 Appellants contend that Kayat and Buttery do not qualify as prior art because they are not analogous to the claimed invention. Appeal Br. 13. More particularly, Appellants argue that Kayat and Buttery are not in the same field of endeavor as the claimed poster handle, they are not reasonably pertinent because they neither address the same problem nor serve the same purpose as the claimed poster handle, and they would not have logically commended themselves to Appellants' attention. Id. at 14. According to Appellants, an ordinary artisan faced with the problem of holding a poster with two hands, would not have been motivated to consider the disclosures of Kayat and Buttery which relate to handles for hot drinking cups. Id. ( citing Kayat, col. 1, 11. 1--4 ); see also Reply Br. 8-9 ( citing Kayat, col. 1, 11. 15-18; Spec. p. 1, 11. 3-21). The Examiner responds that, although Kayat and Buttery are outside Appellants' field of endeavor, they are analogous to each other as they pertain to folded handles that are attached to cups. Ans. 10. Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Clay, 966 F.2d 656, 658---659 (Fed. Cir. 1992) (emphasis added). Although the Examiner explains that Kayat and Buttery are analogous to each other, the Examiner does not explain why Kayat and Buttery are reasonably pertinent to the particular problem which Appellants are involved in applying the second prong of the test for analogous prior art as reiterated above. 10 Appeal2017-009555 Application 14/060,660 For this reason, we do not sustain the Examiner's decision rejecting claim 13. New Ground of Rejection-- Claim 13-0bviousness-Herrin/Hernandez/ Kayat/Buttery Claim 13 is rejected under 35 U.S.C. § I03(a) as being unpatentable over Herrin (US 2005/0198875 Al, published Sept. 15, 2005) or Hernandez (US 2003/0051381 Al, published Mar. 20, 2003) in view of Kayat and Buttery. Herrin and Hernandez both disclose that it is known to employ a handle with a sign or a poster. See Herrin, Abstract; Figs. 1-5; ,r,r 16, 21; Hernandez, Abstract; Figs. 2, 3, 10. As discussed above, Kayat discloses a handle comprising an attachment section, the attachment section having adhesive on an attachment side, and gripping elements attached to opposed lateral sides of the attachment section and having elongated openings adapted for receiving a user's hand. See Final Act. 7. We note that the handle of Kayat is initially folded flat. Kayat, Figs. 1-3. Also as discussed above, Buttery discloses a folded handle that comprises gripping elements and connection elements that interlock to maintain the gripping elements in a use configuration. See Final Act. 7. We adopt the Examiner's findings with respect to the Kayat and Buttery references as our own. Given that Herrin and Hernandez disclose signs/posters having a handle, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the sign/poster of Herrin or Hernandez to employ the Kayat handle as modified by Buttery, because such a handle would improve Herrin's or Hernandez's device by providing a folded handle 11 Appeal2017-009555 Application 14/060,660 with interlocking elements for use. Such an application would not be beyond the skill level of one of ordinary skill in the art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). The use of the Kayat handle with the sign/poster of Herrin or Hernandez is the predictable use of prior art elements according to their established functions. Id. In other words, the device of Herrin or Hernandez functions as a sign/poster that includes a handle to display the sign/poster, and the handle taught by the combined teachings of Kayat and Buttery provides use-enhancing features as discussed above in display of the sign/poster, in accordance with their functions as established by Kayat and Buttery. Modifying Herrin's sign or Hernandez's poster to further include the handle of Kayat and Buttery would improve Herrin's or Hernandez's device by allowing the user to more easily/conveniently grasp the sign/poster to display the sign's/poster's image by using one hand as opposed to two hands. We further note that the handle would be appropriately sized based on the intended use of the handle, i.e., based on the size of an individual's hand or the size of a poster and such modifications would be well within the skill of an ordinary artisan. To the extent that Appellants continue to believe that Kayat and Buttery do not qualify as prior art because they are not analogous to the claimed invention, we note initially that Herrin and Hernandez disclose a sign/poster having handle members adapted to receive a user's hand for a sign. As such, Herrin and Hernandez are in the same field of endeavor as Appellants' invention. An ordinary artisan in the field of posters and signs having handles, a field including the devices of Appellants, Herrin, and Hernandez, would find the disclosures of Kayat and Buttery of a single foldable handle to be reasonably pertinent to the particular problem of 12 Appeal2017-009555 Application 14/060,660 providing a handle to hold a poster easily and comfortably with just one hand. As such, the Kayat and Buttery references are in the realm of art analogous to Appellants' claimed invention, as their teachings would have logically commended themselves to Appellants' attention. 1 DECISION The rejection of claims 1-9, 11, 12, and 14 under 35 U.S.C. § 112(a), first paragraph, is reversed. The rejection of claims 4 and 5 under 35 U.S.C. § 112, second paragraph, is affirmed. The rejections of claims 1-9 and 11-14 under 35 U.S.C. § 103(a) are reversed. Claim 13 is rejected, in a new ground of rejection under 35 U.S.C. § 103(a) as being unpatentable over Herrin or Hernandez in view of Kayat and Buttery. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 1 Having determined that claim 13 is unpatentable further in view of Herrin or Hernandez, we leave it to the Examiner to determine if claims 1 and 14 are also unpatentable based on the cited references and further in view of Herrin or Hernandez, should there be further prosecution of these claims. Our failure to address claims 1 and 14 should not be construed as a determination that they are not unpatentable further in view of Herrin or Hernandez. 13 Appeal2017-009555 Application 14/060,660 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 4I.50(b) also provides: When the Board enters such a non-final decision, the 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b) 14 Copy with citationCopy as parenthetical citation