11043179 (B.P.A.I. Feb. 22, 2012)

Ex Parte Witecha

Board of Patent Appeals and InterferencesFeb 22, 2012

11043179 (B.P.A.I. Feb. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/043,179 01/27/2005 Kirk Joseph Witecha 3368D-0004 8042 22429 7590 02/22/2012 LOWE HAUPTMAN HAM & BERNER, LLP 1700 DIAGONAL ROAD SUITE 300 ALEXANDRIA, VA 22314 EXAMINER BATTULA, PRADEEP CHOUDARY ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 02/22/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KIRK JOSEPH WITECHA __________ Appeal 2010-001776 Application 11/043,179 Technology Center 3700 ___________ Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and CARL W. WHITEHEAD, JR., Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 11 and 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal Applica C over Th 2003/00 A A (Spec. 1 reprodu T 26). Th 0.030 in A credit ca rounded 3:2-4; 5 range of 2010-0017 tion 11/04 laims 11 a ompson (U 90103 A1 ppellant’ ppellant d :3-4; 4:4-7 ced below he mailer e mailer 2 ches. (Sp corner re rd has sta corners 4 :7-12). Th 1/16 to 3 76 3,179 ST nd 12 wer S 6,623,0 ), and Pete s Inventio iscloses a ). An exa . (Spec. 3 20 is form 0 has dime ec. 3:23-2 gion of the ndard cred 5-48 with e mailer 2 /16 inches ATEMEN e finally re 39 B2), B rs (US 3,4 FIN n mailer wit mple of th :15-16). ed of a pap nsions of 5; 5:23-26 mailer 20 it card dim a radius in 0 also has . (Spec. 5 2 T OF TH jected und est (US 6,0 57,661). DINGS h an integr e mailer i er core an 5-1/4 by 4 ). forms the ensions o the range rounded c :13-17). E CASE er 35 U.S 92,841), B ated remo s shown in d a plastic inches an credit car f 3-3/8 by of 1/16 to orners 48, .C. § 103( ecker (U vable cre Appellan coating. d a total th d. (Spec. 2-1/8 inch 3/16 inch 51 with a a) as obvio S dit card. t’s Fig. 1, (Spec. 5:2 ickness of 4:7-8). Th es and es. (Spec. radius in t us 3- e he Appeal 2010-001776 Application 11/043,179 3 Perforations 44 partition the credit card from the remainder of the mailer 20. (Spec. 4:17-21). The perforations 44 have a tab width (i.e., the width of the uncut portions) and a tab-to-cut ratio (i.e., the tab width divided by the width of the cut portions) that ensures the credit card can be separated from the mailer 20 by recipients, but not by postal handling machines. (Spec. 2:8-11; 4:21-5:3). Claim 11 is reproduced below with paragraphing added: 11. A plastic coated promotional mailer, said promotional card having a generally rectangular shape with parallel top and bottom edges and parallel ends perpendicular to said top and bottom edges, a width and length of 4 inches by 5 ½ inches, said promotional card including a generally rectangular paper core with a polyethylene coating on each side thereof and wherein said paper core and said polyethylene coating on each side thereof each have a thickness of about 0.010 inches so that the promotional card has a thickness of between about 0.020 and 0.040 inches and wherein said polyethylene coatings on each side of said core are bonded thereto, a removable credit card having a length and width of about 33/8 X 21/8 [sic]1 inches formed by two adjacent sides of said promotional card and a series of generally perpendicular and intersecting openings and connecting tabs with said openings and connecting tabs defining three rounded comers of said credit card with a radius of between about 1/16 and 3/16 inch, and 1 Although claim 11 of the Appeal Brief’s Claims Appendix recites the credit card dimensions as being “3 3/8 X 21/8 inches” (App. Br. 15:10), we nonetheless presume that the dimension “21/8” is a typographical error and should rather be 2 1/8” in view of the corresponding description in the Specification. See Spec. 3:2-4. Accord Ans. 4:8-21 (indicating the correct dimension). Appeal Applica sa su a a w sa sa T T (Thomp Thomps T 5:24-26 between 4:58-67 paid. (T A 5:1-8; F 3/8 by 2 Perforat (Thomp the rede 2010-0017 tion 11/04 id promot rfaces dis djacent to nd in whic hich has a id connec id promot hompson hompson son, abstra on’s Fig. he mailer ). The ma 5 and 6 in ). Howev hompson corner re ig. 1). Th -1/8 inche ions partit son 5:43-4 mption ca 76 3,179 ional card playing pr said postal h said prom radius of ting tabs h ional card discloses a ct; 1:9-12 1, reprodu 10 is form iler is pref ches, and er, the mai 4:63-65; 6 gion of the e redempti s and roun ion the red 4). The p rd 16 main having fro omotional informati otional c between a ave a widt includes m mailer wi ; 1:50-2:2 ced below ed of a pap erably lim a length o ler can hav :1-2). mailer 10 on card 16 ded corne emption c erforation tains struc 4 nt and rea material a on for add ard has fou bout 1/16 h of about eans for th an integ 1). An exa . (Thomps er core an ited to a fi f 3-1/2 inc e other di forms a r has stand rs. (Thom ard 16 fro s have “su tural integ r surfaces nd a secon itional pro r rounded and 3/16 in 0.030 inc activating rated yet r mple of th on 3:26-2 d plastic c rst class p hes and 4 mensions edemption ard credit pson 3:11 m the rem fficient un rity. (Tho with one o d portion motional m comers e ch and in hes and in said credit emovable e mailer i 7). oating. (T ost card w -1/4 inches if addition card 16. card dime -13; 6:3-9) ainder of t cut” portio mpson 5:4 f said aterial ach of which which card. credit car s shown b hompson ith a length . (Thomp al postage (Thompso nsions of 3 . he mailer ns, to ens 3-64). d. y of son is n - 10. ure Appeal 2010-001776 Application 11/043,179 5 Best Best discloses a mailer with an integrated yet removable coupon card having standard credit card dimensions of 3-3/8 by 2-1/8 inches. (Best 5:5-10; Fig. 2). Peters Peters discloses a process for fabricating a typical credit card, i.e., as would have been “customarily” (Peters 1:28) and “commonly” (Peters 2:63) configured. (Peters 1:24-32; 2:62-64). The credit card has dimensions of 3-1/2 by 2-1/4 inches and rounded corners with a radius of 0.125 inches. (Id.). Becker Becker discloses a mailer that is cut into the profile of a lion. (Becker ¶ 0023; Fig. 1). ANALYSIS Claims 11 and 12 were rejected as obvious over Thompson, Best, Peters, and Becker. Claim 11 is the only independent claim. Claim 12 depends from and is argued collectively with claim 11. (App. Br. 14:6-7). All claims therefore stand or fall with claim 11.2 Appellant contends that the Examiner failed to: (1) present a rational basis for combining the teachings of the applied prior art as proposed; (2) consider the claimed invention as a whole; and (3) give sufficient weight to submitted evidence of commercial success and long felt need. (App. Br. 7:2-7). We disagree for the reasons below. 2 See 37 C.F.R. § 41.37(c)(1)(vii) (“[T]he failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”). Appeal 2010-001776 Application 11/043,179 6 1. The Examiner presented a rational basis for the determination of obviousness. The Examiner found that Thompson teaches all but the following features of the claimed invention: (a) the dimensions and corner radius of the removable credit card; (b) the rounded corners of the mailer; and (c) the width of the perforation tabs. (Ans. 3-7). As explained below, the Examiner presented a rational basis to add these features.3 A. The dimensions and corner radius of the removable credit card The Examiner explained, and demonstrated with cited support of Best and Peters, that the claimed dimensions and corner radius of the removable credit card were customary within the art of credit cards. (Ans. 4:14-21; 5:15-20; citing Best 5:5-10 and Peters 1:24-32; 2:62-64).4 By showing that the claimed dimensions and corner radius were customary, the Examiner presented a rational basis for determining it would have been obvious to provide Thompson’s removable credit card with the claimed dimensions and corner radius. (Ans. 4:18-21; 5:15-20). B. The rounded corners of the mailer The Examiner explained, and demonstrated with cited support of Becker, that even highly contoured mailers had already been used within the art. (Ans. 5:8- 3 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness[.]”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 4 Note that the International Organization for Standardization and the International Electrochemical Commission (ISO/IEC) specifies a standard credit card with these same dimensions of 3-3/8 x 2-1/8 inches and corner radius of 1/8 inches. The ISO/IEC standard also specifies a thickness of 0.030 inches, as claimed. (ISO/IEC, §§ 7810 and 7813). Appeal 2010-001776 Application 11/043,179 7 11; 8:7-10; citing Becker Fig. 1). In view of that capability, the Examiner determined that a skilled artisan would have considered rounding the three square corners of Thompson’s mailer, such that they match the one rounded corner needed for the removable credit card. (Ans. 5:6-11). By showing that it would have been common sense and within the skill in the art to round all corners of Thompson’s mailer for better visual appeal, the Examiner presented a rational basis for determining that it would have been obvious to provide Thompson’s mailer with four rounded corners as claimed. C. The width of the perforation tabs The Examiner explained, and demonstrated with cited support of Thompson, that a mailer’s perforation tab width was recognized in the art as important to the mailer’s structural integrity. (Ans. 5:21-6:5; citing Thompson 5:61-64). We agree because Thompson expressly instructs that “sufficient uncut” portions of a mailer must be retained to ensure a mailer’s structural integrity during handling by the mail system. (Thompson 5:43-64). By showing that a mailer’s perforation tabs width was known to affect its compatibility with U.S. Postal Service (USPS) automation, the Examiner presented a rational basis for determining that the claimed perforation tab width could be derived by routine optimization and is therefore obvious. (Ans. 6:3-9).5 2. The Examiner considered the claimed invention as a whole. Appellant has not refuted the above findings and determinations. Rather, Appellant argues that the Examiner failed to consider the claimed invention as a whole. (App. Br. 7:2-7). Namely, Appellant contends the claimed combination of 5 See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (optimization of a known result-effective variable is prima facie obvious). Appeal 2010-001776 Application 11/043,179 8 features achieved the first mailer in the art that had a removable credit card yet was still compatible with USPS automation.6,7 (App. Br. 9:21-27). The Examiner responded that claim 11 is restricted to mailers generally – i.e., cards capable of mailing – and not restricted to mailers compatible with USPS automation. (Ans. 7:10-11). Thus, the Examiner has determined that Thompson’s modified mailer need only be capable of some form of mailing to fall within the scope of the claimed invention. We agree with the Examiner. One plain meaning of “mailer” is simply “an advertising brochure, form letter, or the like, sent out in the mail.”8 This meaning does not require a mailer to be compatible with USPS automation. Thompson suggests that the ordinary meaning of “mailer” within the art also does not require compatibility with USPS automation, expressly teaching that its own mailer is not restricted to USPS first class mail and can have various dimensions and thicknesses if additional postage is paid (Thompson 4:58-6:2). Appellant has not presented any evidence or even reasoning that shows the claimed “mailer” is restricted to being compatible with USPS automation. We 6 Appellant’s arguments often broadly refer to USPS automation. However, the arguments more particularly assert that the claimed mailer is compatible with USPS first class and standard mail automation. For example, the arguments expressly rely on the USPS’s approval of Appellant’s “unique mailer at the automation pre-sorted and single piece first class mail rate ... (Appendix E).” (App. Br. 10:15-16). For consistency, we use “USPS automation” to reference the automation encompassed by the USPS approval, as set out by USPS approval letter of the Appeal Brief’s Appendix E. 7 Since the claims do not require the mailer to be compatible with USPS automation (discussed infra), we have not addressed whether such a claim limitation would meet the requirements of 35 U.S.C. § 112, ¶¶ 1 and 2. 8 See Random House Webster’s Unabridged Dictionary 1159 (2d ed. 2001). Appeal 2010-001776 Application 11/043,179 9 note that the Specification indicates no such special meaning. The Specification states only that Appellant’s invention of the preferred embodiment includes a postal permit number “when used as a mailer,” which does not itself suggest to us a compatibility with USPS automation. And even assuming that were so, this mere description of Appellant’s preferred embodiment would not be a clear and unmistakable disclaimer of the plain meaning of “mailer” given above.9 In sum, the Examiner did not fail to consider the invention as a whole. Rather, the Examiner correctly construed the claimed invention as being restricted to mailers generally and thus not to mailers compatible with USPS automation, as asserted. 3. Appellant has not presented persuasive evidence of nonobviousness. As evidence of the claimed mailer’s nonobviousness, Appellant submits USPS correspondence to show “the difficulty in overcoming the regulations of the U.S. Postal Service.” (App. Br. 10:17-19). Also, Appellant submits declarations and a newsletter to show commercial success and a long felt need for the claimed mailer. (Brief 11:15-16). The submitted evidence is not persuasive for the reasons below. 9 See Thorner v. Sony Computer, No. 2011-1114, slip op. at 7 (Fed. Cir. Feb. 1, 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there must be a clear and unmistakable disclaimer.”). Appeal 2010-001776 Application 11/043,179 10 A. Appellant’s evidence of nonobviousness is not commensurate in scope with the claimed invention Evidence of nonobviousness must be commensurate in scope with the claimed invention.10 Appellant’s evidence of nonobviousness is not directed to mailers generally, as needed to be commensurate in scope with the claimed invention. Rather, Appellant’s evidence is directed to mailers compatible with USPS automation, which are a mere subclass of the claimed invention. That one or more species of a claimed invention might have been nonobvious does not equate to nonobviousness of that more broadly claimed invention.11 The USPS correspondence shows that Appellant obtained a waiver for a mailer having features incompliant with USPS first class mail regulations, by testing and thereby proving the mailer was nonetheless compatible with USPS automation. Even assuming arguendo that the incompliance with USPS first class mail regulations evidences an expectation in the art that a mailer with such features would not be compatible with USPS automation, the incompliance nevertheless fails to show that skilled artisans would not have expected mailers with such incompliant features to be capable of mailing. Appellant’s evidence is not, as required, directed to this broader scope of the claimed invention. 10 See In re Kulling, 897 F.2d 1147, 1149 (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 (CCPA 1972))). 11 See In re Muchmore, 433 F.2d 824, 826 (CCPA 1970) (“All the foregoing points to the conclusion that, while some specific processes within claim 14 (e.g., the one described in the affidavit) might be said to yield unexpectedly superior results over Precopio’s process, the totality of processes covered by the claim, as a class, do not. … [I]t is clear that claim 14 is too broad in the sense of section 103, since it reads on both obvious and unobvious subject matter.”). Appeal 2010-001776 Application 11/043,179 11 The declaration of Jan van der Baan, declaration of Henry R. Hoke, and the submitted newsletter are asserted to show commercial success and a long-felt need for the “On-Card mailers” mailed under the USPS waiver. Even assuming arguendo that such commercial success and long-felt need has been shown, the On-Card mailers were marketed and sold as compatible with USPS automation, i.e., at the desirable USPS first and standard class mail rates. The asserted commercial success therefore fails to address the broader scope of the claimed invention, i.e., mailers merely capable of mailing. B. Appellant’s evidence lacks a nexus to the assertion of nonobviousness Even assuming arguendo that Appellant’s evidence is commensurate in scope with the claimed invention, i.e., that the claimed mailer must be compatible with USPS automation, the evidence would still not be persuasive for the following reasons. 1. USPS testing The USPS testing and waiver do not show that skilled artisans expected features incompliant with USPS regulations to be necessarily or even likely incompatible with USPS automation. To the contrary, the availability of such testing and waiver shows that skilled artisans recognized that features incompliant with USPS regulations can indeed be compatible with USPS automation. 2. Declarations and submitted newsletter Commercial success must be shown by “hard evidence.”12 The submitted evidence is not hard evidence of commercial success. Rather, Hoke’s declaration 12 See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant’s assertion that the sales Appeal 2010-001776 Application 11/043,179 12 and the submitted newsletter merely allege that the On-Card mailer achieved commercial success. And van der Baan’s declaration merely presents sales data for the On-Card mailer. Van der Baan’s declaration particularly states that, as result of receiving the USPS waiver (December 2004), On-Card paid $200,000 and $1,000,000 in USPS fees over the next eleven and 23 months, respectively, doubled its client list in a particular month (September 2005), mailed one million mailers in another particular month (July 2006), and had added about 30 clients per month (as of November 2005). This data merely evidences the number of mailers sold by On-Card and presents van der Baan’s opinion that those sales resulted from having the features of the claimed mailer. 13 The declaration does not show, as needed, that these sales equate to a substantial market share14 and resulted from a claimed feature distinguishing over the closest prior art.15 constitute commercial success. … Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.” (citation omitted)). 13 See Huang, 100 F.3d at 140 (“Huang’s affidavit contains a conclusory assertion that, in his opinion, the sales of the grips derive from the increased thickness of the polyurethane layer and the alignment of the pores. This merely represents the inventor’s opinion as to the purchaser’s reason for buying the product, and, alone is insufficient.”). 14 See id. (“Although Huang’s affidavit certainly indicates that many units have been sold, it provides no indication of whether this represents a substantial quantity in this market. This court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any.” (citation omitted)). 15 See id. (“Even assuming that Huang had sufficiently demonstrated commercial success, that success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” (citation omitted)). Appeal 2010-001776 Application 11/043,179 13 Establishing a long-felt need requires objective evidence that the invention has provided a long-awaited, widely accepted, and promptly adopted solution to a problem that was extant in the art or that others had tried but failed to solve.16 Appellant’s declarations and submitted newsletter merely allege that the On-Card mailer satisfied a long felt need. No persuasive evidence has been presented to show that there was a widely known and long endured need for a mailer that has a removable credit card yet is compatible with USPS automation. Therefore, considering the record as a whole, we find that the evidence of secondary considerations of nonobviousness does not overcome the Examiner’s obviousness conclusion over the cited prior art. DECISION For the foregoing reasons, the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable for obviousness over Thompson in view of Best, Becker, and Peters is affirmed. 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 rwk 16 See In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973) (“[A]ppellants’ arguments are tempered by the fact there is little, if any, tangible evidence to support a contention that their invention actually has provided a longawaited, widely- accepted, and promptly-adopted solution to the problem extant in the art, or that others, particularly Matthysse, had tried but failed to solve that problem.” (citations omitted)).