Ex Parte 6,682,879 B2 et al

Patent Trial and Appeal Board

Jul 25, 2016

90012794 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/012,794
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
02/12/2013
07/25/2016
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
6,682,879 B2
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.
17966.3 2241
EXAMINER
KUGEL, TIMOTHY J
ART UNIT PAPER NUMBER
3991
MAILDATE DELIVERY MODE
07/25/2016 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 APPEALS BOARD
Ex parte NATHAN T. CONK,
Inventor, Patent Owner, and Appellant
Appeal2016-003065
Reexamination control 90/012, 794
Patent 6,682,879
Technology Center 3900
Before MARK M. NAGUMO, JEFFREY B. ROBERTSON, and
RAEL YNN P. GUEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Nathan T. Conk (hereinafter "Appellant"), the inventor and real party in
interest1 of Patent 6,682,879 C 12 (hereinafter the "' 879 patent"), appeals under
35 U.S.C. §§ 134(b) and 306 from the Examiner's decision to reject claims 1-27
1 See Appellant's Appeal Brief filed June 10, 2015 (hereinafter "App. Br.") at 1.
2 US Patent 6,682,879 B2 was the subject of ex parte reexamination 90/011,785,
which issued as Ex Parte Reexamination Certificate US 6,682,879 Cl on
September 4, 2012. During the reexamination, claims 1-6 and 8-19 were
confirmed, claim 7 was amended and claims 20-27 were added.
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Patent 6,682,879
under 35 U.S.C. § 103(a) as unpatentable over WOW, 3 either alone or further in
view of Andrus4 or Lehman5 and additional prior art. Final Office Action, mailed
December 10, 2014 (hereinafter "Final") and Examiner's Answer, mailed
July 29, 2015 (hereinafter "Ans."). We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Jarod R. Marrott of the law firm Kirton & McConkie. See
Request for Ex Parte Reexamination, filed February 12, 2013. The '879 patent is
the subject of a litigation in the US District Court for the District of Utah styled
Nathan T. Conk v. Haas Outdoors, Inc., Civil Action No. 2: 10-cv-5-DN. This
litigation is currently stayed pending the outcome of this reexamination.
The '879 patent relates to a method for creating a camouflage material that
includes using photographic images of discrete landscape features, which may be
selected and isolated from larger photographic images, and arranging the images in
a synthetic perspective relationship by overlaying a photographic image on top of
any other photographic image. See '879 patent, col. 2, 11. 50-65. The relationship
may be provided to allow for a repeating pattern. Id. at col. 3, 11. 15-26.
Representative claim 1 has not been amended and reads as follows:
1. A method for creating a camouflage material, the method
compnsmg:
photographing scenes representative of a selected environment;
3 Linnea Dayton and Jack Davis, Photoshop 4 Wow! Book, Macintosh Edition,
Peachpit Press, Berkeley, CA, December 1997 (hereinafter "WOW").
4 US Patent 5,753,232, issued May 19, 1998 to Chris Wayne Andrus (hereinafter
"Andrus").
5 US Patent 5,972,479, issued October 26, 1999 to Victoria L. Lehman (hereinafter
"Lehman").
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selecting images of discrete features within the photographed
scenes;
separating selected images from the photographed scenes;
placing the selected images in a synthetic perspective
relationship; and
printing the synthetic perspective relationship in a repeating
pattern on a substrate.
Claims App'x, App. Br. 18.
II. ISSUES ON APPEAL
As an initial matter, Appellant does not separately argue any of the
dependent claims on appeal in its Appeal Brief. Accordingly, all of the claims
under rejection will stand or fall with representative independent claim 1. Any
claim not separately argued will stand or fall with its respective independent claim.
See 37 C.F.R. § 41.37(c)(l)(iv). We decline to address arguments made in the
Reply Brief for the first time on appeal with respect to claims 7 and 1 7, good cause
for the belated arguments not having been shown. 37 C.F.R. § 41.41(b )(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.").
The Examiner finds that WOW teaches a process for forming a collage or
montage of photographs, which includes selecting and separating portions of
photographic images from selected environments and placing the image in a
synthetic perspective relationship, specifically using blending techniques (i.e.,
collage and montage) to "composite" images into a background scene. Ans. 4
(citing in particular the "building" and "beach scene" images on page 50 of
WOW). The Examiner finds that WOW also teaches printing montages in a
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repeating pattern, but does not expressly teach that the particular montage shown
on page 50 is printed in that manner. Id. (citing WOW 197, which includes a
sidebar describing and showing repeated images). Nonetheless, the Examiner
determines that printing in a repeating pattern would have been obvious based on
this teaching "to mass produce items or provide a desired number of prints." Id.
Appellant argues that the preamble phrase "camouflage material" has a
special meaning, namely that of a material for "blend[ing] into a natural outdoor
environment" and that the meaning distinguishes the claims from images such as
those taught by WOW having buildings, vehicles, pipes, and other "unnatural,
man-made features." App. Br. 6.
Thus, the dispositive issue on appeal is: does the term "camouflage
material" in the preamble of claim 1 substantially limit the scope of claim 1 to only
those materials suitable for blending into a natural outdoor environment? We
answer this question in the negative.
III. ANALYSIS
Appellant argues that the '879 patent requires that the term "camouflage
material" be interpreted to only include natural outdoor features. App. Br. 5-7. In
particular, Appellant contends that the '879 patent and the common and ordinary
meaning of the word "camouflage" provided a meaning that substantially limits the
method steps recited in the claims. Id. We decline to give the word "camouflage"
any significant patentable weight for at least two reasons.
First, we note that the language "camouflage material" only appears in the
preamble of claim 1. It is only when terms in the preamble "give life and meaning
to the claim" that they are given patentable weight. Bristol-Myers Squibb Co. v.
Ben Venue Labs. Inc., 246 F.3d 1368, 1373-74 (Fed. Cir. 2001) ("If the body of the
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claim sets out the complete invention, and the preamble is not necessary to give
'life, meaning and vitality' to the claim, 'then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim
limitation.' Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999).") Where a patentee defines a complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation. See Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 620 (Fed. Cir. 1995); Bristol-Myers
Squibb, 246 at 1373-374 (holding that the preamble phrase "for reducing
hematologic toxicity" in a claim drawn to a method of medicating a patient was
non-limiting, and merely expressing a purpose for the method).
The body of claim 1 contains a self-contained description of process steps
even if those process steps are presented broadly, i.e., selecting and separating
"discrete features" from photographs of a "selected environment," placing the
separated features in a "synthetic perspective relationship," and printing the
"synthetic perspective relationship" in a repeating pattern. The preamble language
merely expresses a purpose of using the printed repeating pattern of the synthetic
relationship, i.e., as a camouflage material. The body of the claim does not use the
term "camouflage" and does not limit the photographic features or the selected
environment in any way. Thus the recited steps may be performed with any
photographic image. Accordingly, we disagree that the term "camouflage" adds
any context to the otherwise clearly designated steps.
Second, we decline to give patentable weight to non-functional descriptive
material, also known as printed matter. The Examiner states generally that the
particular requirement of leaves, trees, rocks, etc., recited in independent claims 20
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and 24, and dependent claims 21-23, 26 and 27 "merely recite the images that are
to be printed, e.g., tree trunks, shrubs, etc. [and] fail to limit the claimed method,
being directed, instead, to the aesthetic appearance of the printed material." Final
Office Action 8; Ans. 6-7. We agree with the Examiner, and observe that this
reasoning applies equally to photographic scenes recited in claim 1. In other
words, it is the steps not the images themselves that can be relied on for
patentability. The recited steps constitute generally known techniques of cutting
certain images and pasting them in an alternative realistic (i.e. perspective)
relationship, the skilled artisan could practice the steps for any particular images,
such as starfish, buildings, pipes, etc., as evidenced by the prior art. See WOW,
305, 309, and 313, Appendix A: Image Collections (showing various categories of
images of natural and man-made objects that could be used for the described
technique, including "panoramic landscapes," i.e., "images including fall colors,
clouds, long stretches of road and more," "terra botanica," i.e., "images of leaves,
flowers, grasses, trees, undersea plants and more," and "terra firma," i.e., "images
of oceans, forests, grasslands, skies and more."). 6
It has long been recognized that if there is a "functional relationship"
between the matter (which can be words, images, and even scents) and its
substrate, the "printed" matter may serve to distinguish the invention from the prior
art. See In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); In re Gulack, 703 F.2d
1381, 1385-87 (Fed. Cir. 1983); In re Distefano, 808 F.3d 845, 850 (Fed. Cir.
2015) ("[P]rinted matter must be matter claimed for what it communicates. Only if
6 We further note that, even were we to adopt Patent Owner's interpretation of the
term "camouflage," WOW expressly teaches the use of images from natural
outdoor environments, and the use thereof in the collage and montage step taught
by WOW would have been obvious to one of ordinary skill in the art.
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the limitation in question is determined to be printed matter does one tum to the
question of whether the printed matter nevertheless should be given patentable
weight. Printed matter is given such weight if the claimed informational content
has a functional or structural relation to the substrate.").
The required images, namely of a rock, tree or shrub, are recited only for
what they communicate (i.e., a natural outdoor environment) and are not
functionally related to the particular steps taken to form a perspective image by
cutting and pasting images selected from photographs of an environment.
In In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004), the only distinction between
the claimed kit and the prior art kit was a set of claimed instructions for using the
kit. The Federal Circuit reasoned that "the printed matter in no way depends on
the kit, and the kit does not depend on the printed matter. All that the printed
matter does is teach a new use for an existing product." Ngai, 367 F.3d at 1339; see
also King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
("[The method step of i]nforming a patient about the benefits of a drug in no way
transforms the process of taking the drug with food.").
Similarly here, the specifically recited steps of separating images and
reproducing them, as recited in claim 1, do not depend on what the images are or
what material the images are ultimately printed on or ultimately used for.
Accordingly, based on the same reasoning in Ngai, we conclude that the particular
image is non-functional descriptive material and not entitled to patentable weight.
Ngai further instructs that that "[i]f we were to adopt [the applicant's] position,
anyone could continue patenting a product indefinitely provided that they add a
new instruction sheet to the product." Ngai, 367 F.3d at 1339. Here, if we were to
adopt Appellant's position, anyone could continue patenting the same process of
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cutting and pasting images in the claimed manner by changing only what images
are cut and pasted. We note that it is well known in the art to cut and paste images
into a new background. A difference in what the particular image is, i.e.,
camouflage, does not form a proper basis for asserting patentability over the prior
art.
Thus, the term "camouflage" recited in the claims constitutes non-functional
descriptive material that does not patentably distinguish the claimed process steps
from the prior art. If the only distinction between the prior art and the claimed
process are the types of images cut and pasted, the claims will not be patentable
over the prior art.
Further, even if we did give the phrase "camouflage material" patentable
weight, we find Appellant's arguments as to the meaning of the term "camouflage"
to be too limited. "'During reexamination, as with original examination, the PTO
must give claims their broadest reasonable construction consistent with the
specification."' In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010)
(quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007)). Nevertheless, our reviewing court has repeatedly "instructed that any such
construction [must] be 'consistent with the specification, ... and that claim
language should be read in light of the specification as it would be interpreted by
one of ordinary skill in the art."' Id. at 1260. While it is proper to consult the
specification to determine the meaning of a word or phrase, this is not to be
confused with the addition of an extraneous limitation appearing in the
specification, which is improper. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are
not to be read into the claims from the specification.").
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Appellant relies on the consistent references in the '879 patent to natural
outdoor features, such as "shrubs, trees, grass, rocks, and other natural landscape
features." App. Br. 6. Appellant points out that the selecting step "includes ...
selecting landscape features to represent the ecotone of the selected environment"
which is "the types of plants that occur naturally together." Id. at 6-7 (quoting
'879 patent, col. 8, 11. 39-43 (emphasis added)). Appellant argues that "[n]owhere
does the specification described or suggest that features used to create 'camouflage
material' are anything other than plants and other natural features found in a
natural outdoor environment." Id. at 7. Thus, according to Appellant, the skilled
artisan, in view of the '879 patent, would have understood the term "camouflage"
as "limited to an outdoor, natural environment." Id.
Moreover, Appellant points to dictionary definitions that refer to
"camouflage" as in terms of hiding to look like a "natural background" or "natural
surroundings." Id. at 11.
We are not persuaded that the claims warrant the narrow construction
asserted by Appellant. Although Appellant has shown portions of the '879 patent
and particular definitions that are consistent with Appellant's proposed
interpretation for the term "camouflage," a broader interpretation of the term is
also consistent with the '879 patent and other well understood uses for the term
"camouflage" in the art beyond those strictly associated with "natural outdoor
environments."
For example, we cannot ignore what the Appellant considers "boilerplate"
language expanding the scope of the claimed invention. The '879 patent clearly
states that "[t]he scope of the invention is as broad as claimed herein. The
illustrations are merely representative of certain, presently preferred embodiments
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of the invention." Col. 4, 11. 25-27. The '879 patent also states that "[t]he selected
environment may be any environment in which users desire camouflage. Users
include hunters, bird watchers, and other outdoor recreation enthusiasts. Military
personnel may also use camouflage for training and combat." Col. 4, 11. 50-55. As
Appellant relies on "a search of Google Images for 'camouflage material"' (App.
Br. 10-11 ), we note that such a search also returns images of military camouflage
including patches of greys, whites and blacks to blend into an urban concrete
environment. Even more examples can be found in a search of the term "urban
camouflage," which would be encompassed by the non-limited scope of the term
"camouflage." Indeed, bird watchers and military training and combat are hardly
limited to "natural outdoor environments" and often include activities in urban
environments.7 Similarly, "outdoor recreation enthusiast" reasonably includes
individuals that dress to disguise or hide in urban environments, such as to blend in
with a brick wall. 8 Accordingly, the weight of the evidence is that persons having
ordinary skill in the camouflage art would consider that claim 1 is not limited to
any particular type of camouflage, and particularly is not limited to camouflage
representing "natural outdoor environments."
We note that claims 10, 19, 22, 23, 26, and 27 specifically limit the types of
images used in the method to those of natural outdoor features, namely trees,
shrubs, and ground cover. Similarly, claims 20, 21, 24, and 25 have broader
descriptions that further include "bushes, rocks, herbs" and "other landscape
7 See e.g., http://carnogedia.org/index.nhp?title=1JSA (discussing several
camouflage patterns intended for urban environments, including the adopted
"universal" pattern which was intended to be "capable of performing suitable in
any environment," including an urban environment).
8 See e.g., h!tn://www.desireenalmen.nl/camouflage index.QhD (describing the
"camouflage" work of artist Desiree Palmen).
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features that dominate the selected environment." Initially, as discussed above we
do not find these particular images to otherwise limit the active steps recited in the
claims. Rather, the specific types of images are directed to the intended use for the
method and represent non-functional descriptive material. Ngai, 367 F.3d at 1339.
Otherwise unpatentable steps of cutting and pasting images in a specific manner
should not be deemed patentable merely because of the particular images being cut
and pasted.
Moreover, the claims recited specifically "rocks," "bushes," and "trees",
which are not indicative only of a "natural outdoor environment," as argued by
Patent Owner. Cities also have rocks, trees, bushes, grass and ground cover in
various locations. Moreover the terms "rock" and "other landscape features that
dominate the selected environment" are broad and may also refer to concrete or
buildings and roads.
The weight of the evidence taken as a whole supports the Examiner's
conclusion that the claimed methods would have been obvious under the law.
IV. CONCLUSION
On the record before us, we affirm the rejections maintained by the
Examiner.
V. TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination proceeding
are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED
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FOR PATENT OWNER:
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
FOR THIRD-PARTY REQUESTER:
Kirton & McConkie
1800 Eagle Gate Tower
60 East South Temple
Salt Lake City, UT 84111
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