Mary Rose. Rice et al.

Patent Trials and Appeals Board

Sep 26, 2019

14161135 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/161,135 01/22/2014 Mary Rose Rice 5037P-000001-US-COD 5445
142312 7590 09/26/2019
Harness Dickey (Masco)
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
MA, TIZE
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
mdoerr@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARY ROSE RICE, DAMIEN REYNOLDS,
and MARC WEBB
____________

Appeal 2017-006952
Application 14/161,135
Technology Center 2600
____________

Before JEAN R. HOMERE, ADAM J. PYONIN, and
KAMRAN JIVANI, Administrative Patent Judges.

JIVANI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejections of claims 1–30. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Appellants identify Behr Process Corporation as the real party in interest.
App. Br. 3.
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STATEMENT OF THE CASE
The present patent application relates to a distributed system and
method for aiding consumers in selecting complementary paint colors.
Spec. ¶ 2.
Claim 1 is reproduced below:
1. A system comprising:
a remote computing device having a display device and an
input device; and
a server communicatively coupled to the remote
computing device over the Internet, the server having a database
including a plurality of colors each in a predetermined
relationship with other colors in the database, the predetermined
relationship between colors being based on color theory;
wherein the remote computing device is configured to
receive a starting paint color for an interior room of a house
selected from the plurality of colors via the input device, to
determine a plurality of coordinating colors for the starting paint
color based on data received from the database, and to display on
the display device a color palette including the starting paint
color and the plurality of coordinating paint colors, the plurality
of coordinating colors including at least one accent color for a
decorative item in the interior room of the house.

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THE REJECTIONS
1. Claims 1–9 and 12–20 stand rejected under 35 U.S.C.
§ 102(a) as anticipated by Turpin et al. (US 2003/0151611 A1,
published Aug. 14, 2003).
2. Claims 10, 11, and 21–30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Turpin and Beretta (US 5,311,212,
issued May 10, 1994).
ANALYSIS
Claims 1–9 and 12–20
Independent claim 1 recites, in relevant part, “to display on the
display device a color palette including the starting paint color and the
plurality of coordinating paint colors, the plurality of coordinating colors
including at least one accent color for a decorative item in the interior room
of the house.” According to Appellants, independent claim 12 recites a
commensurate limitation and Appellants argue claims 1 and 12 together.
App. Br. 15–16 (“Limitations similar to those discussed above with respect
to claim 1 are also recited by claim 12. For at least the above reasons, claim
12 likewise defines over Turpin et al.”).
Regarding the scope of the above limitation, the Examiner finds that
the term “coordinating colors” is “commonly used in the field.” Ans. 3. The
Examiner construes the claimed “at least one accent color” as “some color
that is darker or lighter than the primary or starting color.” Id. at 4. The
Examiner further finds that the claim element, “for a decorative item in the
interior room of the house” is a mere statement of intended use. Id. More
specifically, the Examiner finds that claim 1 “only requires determining the
coordinating colors for a selected paint color and display[ing] them.
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Applying the colors to the colorable products is just an intended use.” Id.
at 5.
Appellants contend the Examiner errs in construing the disputed
limitation because “claim 1 recites different types of colors, including a
paint color and an accent color for a decorative item, i.e., a non-paint color.
This feature is not an ‘intended use,’ but an intrinsic feature of the colors. In
other words, paint colors are inherently different from decorative item
colors.” Reply Br. 3.
We are not persuaded by Appellants’ interpretation of the disputed
limitation because Appellants’ interpretation is predicated upon a distinction
not recited in claim 1 or its dependent claims. Appellants contend that
“paint colors are inherently different from decorative item colors” and that,
because of this distinction, claim 1 recites “display[ing] a color palette
including the starting paint color and the plurality of coordinating colors, the
plurality of coordinating colors including at least one accent color for a
decorative item in the interior room of the house.” Reply Br. 1–3.
Appellants, however, misread the claim language. Claim 1 does not recite a
plurality of coordinating colors that constitute “non-paint colors,” distinct
from paint colors. Rather, claim 1 recites receiving “a starting paint color,”
determining “a plurality of coordinating colors for the starting paint color,”
and displaying “a color palette including the starting paint color and the
plurality of coordinating paint colors.” App. Br. 23 (emphasis added). Thus
claim 1 requires that the plurality of coordinating colors on the displayed
palette must be paint colors, not “non-paint colors” as Appellants contend.
Id. It is this set of coordinating paint colors that must include “at least one
accent color for a decorative item in the interior room of the house,” as
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recited in claim 1. Claim 1, therefore, does not recite an accent color as
distinct from paint colors, but rather requires that the claimed accent color be
included within the plurality of coordinating paint colors. See id.
Moreover, we are unpersuaded by Appellants’ argument because
Appellants fail to cite any record evidence in support of their assertion that
“paint colors are inherently different from decorative item colors.” Reply
Br. 3. For instance, Appellants do not cite to any teachings of this purported
difference in the Specification. See id. Attorney argument cannot substitute
for evidence lacking in the record. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Indeed, Appellants’ Specification discloses the opposite,
namely that accent colors can be applied in paint and to other decorative
items such as fabrics in a room. Spec. ¶ 56. Further contrary to any
purported distinction between paint and “non-paint colors,” Appellants’
Specification discloses that, “using a spectrophotometer, a customer can
‘scan’ the color of an item from their house such as tile, fabric, window
treatment, pillow, etc.” and use this color as the starting paint color or “main
color” for the room. Id. ¶ 77. Appellants’ Specification, therefore, describes
colors as interchangeable between paint and other colorable products.
Accordingly, we agree with the Examiner’s interpretation of the claim
limitation “to display on the display device a color palette including the
starting paint color and the plurality of coordinating paint colors, the
plurality of coordinating colors including at least one accent color for a
decorative item in the interior room of the house.” In particular, we agree
with the Examiner that the claimed “at least one accent color” encompasses
“some color that is darker or lighter than the primary or starting color.” Id.
at 4. We further agree that the claim element, “for a decorative item in the
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interior room of the house” is a mere statement of intended use” and that
claim 1 “only requires determining the coordinating colors for a selected
paint color and display them. Applying the colors to the colorable products
is just an intended use.” Id. at 4–5.
We turn next to the Examiner’s application of the prior art to
claims 1–9 and 12–20, as construed above. The Examiner finds Turpin
discloses the limitations of independent claims 1 and 12, as well as
dependent claims 2–9 and 13–20. With regard to the disputed limitation of
claim 1, which Appellants argue together with a similar limitation of claim
12, the Examiner finds Turpin meets the claim limitation because the system
of Turpin displays a primary color and coordinating colors “in pictorial form
and in two-dimension form in a color coordinates palette 220.” Ans. 4. As a
cumulative finding on the claimed intended use of “for a decorative item in
the interior room of the house,” the Examiner finds Turpin discloses related
colors for shading or highlighting that are darker or lighter, which “may be
used as an accent color.” Ans. 4; see also Final Act. 4 (citing Turpin ¶¶ 92,
101, 117, 232). The Examiner further finds Turpin discloses “selecting
colors for . . . fashion accessories, etc.” Id. at 5 (citing Turpin ¶ 101).
Finally, with regard to the additional limitations in dependent claims 2–9
and 13–20 claiming particular categories of decorative items (namely, fabric,
pieces of furniture, window treatments, tiles, and pillows), the Examiner
finds these limitations “are all considered as intended use because there is no
technical information provided by the claims so that different decorative
items would cause the coordinating colors being determined differently.” Id.
at 5–6. The Examiner further finds Turpin “mentioned these decorative
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items in the interior room of the house.” Id. at 6; Final Act. 4–5 (citing
Turpin ¶¶ 101, 245, 247, 149, 247).
Appellants contend the Examiner errs because Turpin’s color
coordinates palette 220 simply allows for selection of coordinated colors, but
does not provide a color palette with a plurality of coordinated colors that
include both a starting paint color and at least one accent color for a
decorative item in the interior room of a house.” App. Br. 13. Appellants
further contend that Turpin “describes a separate embodiment whereby
selectable colors for a plurality of colorable products, such as ‘paint, stain,
caulk, sealant, concrete, grout, mortar, bricks, pavers, frosting (and other
color food items), cosmetics, and roof tiles’ are displayed to the consumer
20.” Id. (citing Turpin ¶ 120). According to Appellants, in this
embodiment, “[t]he color chart 260 simply allows for a consumer to select a
particular type of product, e.g., paint, concrete, etc., and then view available
colors for that particular product[, but] does not determine or display
coordinated colors across or between product types.” Id. at 14.
As to the Examiner’s cumulative findings regarding the claimed
accent colors and intended use, Appellants contend the Examiner errs in
citing Turpin’s assigning of different colors to shaded and highlighted areas
in an image as well as Turpin’s “color swatches” used to “display a selection
of brighter and darker colors” to provide “more choices for the consumer.”
Id. at 15. Finally, Appellants contend the Examiner errs in citing paragraph
101 of Turpin because the disclosure therein is directed to “different types of
categories for storing an image file not coordinating a paint color with an
accent color of a decorative item in the interior room of a house.” Reply
Br. 5; see also App. Br. 15.
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We are not persuaded by Appellants’ arguments. As discussed above,
the disputed limitation of claim 1 recites merely receiving a starting paint
color selected from a plurality of paint colors, determining a plurality of
coordinating colors for the starting paint color, and displaying “a color
palette including the starting paint color and the plurality of coordinating
paint colors,” including at least one accent color. The Examiner finds, and
we agree, that Turpin meets the claim limitation because the system of
Turpin displays a primary color and coordinating colors “in pictorial form
and in two-dimension form in a color coordinates palette 220.” Ans. 4.
Indeed, Turpin discloses in Figure 13 and corresponding paragraph 117:

database of selectable colors 178 can be displayed in pictorial
form and in two dimension form in a color coordinates palette
220, such as shown in FIG. 13, whereby one or more coordinated
colors are displayed to the consumer 20. The consumer 20 can
then select coordinated colors for the color areas 144 to provide
a coordinated appearance. In one preferred embodiment, the
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color coordinates palette 220 is color coordinated by utilizing a
color wheel model 222. The color wheel model 222 can be used
to specify a primary color on the color wheel model 222 and send
information to the specifier program 56 which the specifier
program 56 will utilize to determine a plurality of coordinating
colors for the primary color. The specifier program 56 further
indicates the plurality of coordinating colors on the color
wheel model 222 and displays the specified primary color and
the plurality of coordinating colors in the color coordinates
palette 220.

Turpin ¶¶ 117, Fig. 13 (emphasis added). Thus, contrary to Appellants’
arguments, Turpin discloses displaying “a color palette including the starting
paint color and the plurality of coordinating paint colors,” including at least
one accent color. Accordingly, we sustain the Examiner’s rejections of
independent claims 1 and 12.
Appellants advance no further arguments in support of dependent
claims 2–9 and 12–20. Accordingly, for the same reasons discussed above
in the context of claims 1 and 12, we sustain the Examiner’s rejections of
dependent claims 2–9 and 12–20.
Claims 10, 11, and 21–30
Each of independent claims 10, 23, and 27 recites, in relevant part,
“the database includes a color data structure associated with each color of
the plurality of colors, each color data structure including a plurality of
coordinating color references each identifying a predetermined coordinating
color for the associated color.” App. Br. 24–25, 27. Independent claims 23
and 27 recites commensurate limitations. Id. at 27–29.
The Examiner finds Beretta’s disclosure of color palette database 68,
which stores user created color palettes, teaches the recited database
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including a color data structure. Final Act. 9 (citing Beretta, 10:17–21).
Each palette data structure contains information for a key color and other
related colors. Id. (citing Beretta, 15:1–19, 16:20–40). The Examiner
further finds: “Storing color information in a database and using data
structure for storing color information, as well as using a reference to
identify other (related) data are all well-known and conventional practice in
the field of color selection and coordination. Turpin et al may also use such
a practice although not explicitly disclosed.” Id. at 9–10.
Appellants contend, inter alia, that the Examiner fails to identify in
the cited references adequate teaching or suggestion of the claimed color
data structure including references to predetermined coordinating colors.
App. Br. 18–20; Reply Br. 5–8.
We agree with Appellants. The Examiner reads the disputed
limitation on Beretta’s color palette data structure. Final Act. 9–10; Ans. 6–
7. Although we agree with the Examiner that Beretta’s individual color
palette data structures each contains multiple colors, the disputed limitation
of claim 10 requires that each structure is associated with a color and
contains “a plurality of coordinating color references each identifying a
predetermined coordinating color for the associated color.” App. Br. 24–25
(emphasis added). In order to meet this limitation under the Examiner’s
rationale, Beretta’s individual color palette data structures each would need
to contain references to other color palette data structures, not merely
information on colors within the same color palette data structure. Stated
differently, the disputed claim limitation defines a database containing a
color data structure per color, with each structure containing references to
other colors, not colors themselves. The Examiner fails to make such a
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finding in the record before us, and instead only refers to the reference’s
teachings of colors within the same data structure. See Ans. 6–7 (citing
Beretta, 16:49–65). Thus, we are unable to discern adequate disclosure in
the cited portions of Beretta meeting this limitation of claim 10. See Final
Act. 9–10; Ans. 6–7.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejections of claims 10, 11, and 21–30.

DECISION
We affirm the Examiner’s rejections of claims 1–9, 12–20, and 23–30.
We reverse the Examiner’s rejections of claims 10, 11, and 21–30.

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-IN-PART