10446020 (B.P.A.I. Sep. 24, 2010)

Ex Parte Acevedo

Board of Patent Appeals and InterferencesSep 24, 2010

10446020 (B.P.A.I. Sep. 24, 2010)

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. 10/446,020 05/28/2003 Sylvia Acevedo 03287.0001U1 8538 23859 7590 09/24/2010 Ballard Spahr LLP SUITE 1000 999 PEACHTREE STREET ATLANTA, GA 30309-3915 EXAMINER FERNSTROM, KURT ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 09/24/2010 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 SYLVIA ACEVEDO ____________________ Appeal 2009-013866 Application 10/446,020 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013866 Application 10/446,020 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 36. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to non-verbal multilingual communication aid. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A multilingual communication aid device comprising a plurality of demonstration surfaces, wherein each demonstration surface contains informative task specific information in at least two languages and a pictorial representation configured to represent the informative task specific information described in the at least two languages. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Glass Tarvin Martin Rehbein US 3,871,115 US 5,312,257 US 5,601,683 US 6,685,188 Mar. 18, 1975 May 17, 1994 Feb. 11, 1997 Feb. 3, 2004 Owen GB 1,578,649 Nov. 5, 1980 REJECTIONS Claims 1-6, 9-11, 13, 14, 19 and 24-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Owen. Ans. 3. Claims 7 and 20-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Owen and Tarvin. Ans. 3. Appeal 2009-013866 Application 10/446,020 3 Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Owen and Glass. Ans. 3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Owen and Martin. Ans. 3. Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Owen and Rehbein. Ans. 3. OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review, we have reached the conclusion that the applied prior art establishes the prima facie obviousness of all claims on appeal. Therefore the rejections on appeal are affirmed. Our reasons follow. The following are our findings of fact with respect to the scope and content of the prior art and the differences between the prior art and the claimed subject matter. Owen discloses a multi-lingual communication aid device formed of three open topped plastic wallets, 1, 2, and 3, hinged together in an edge-to-edge relationship which can be folded and carried in a pocket, handbag or the like. The open topped wallets accept cards 6, and wallet 3 holds a plurality of cards that are not needed at the present time. See page 2, ll. 43-81. The cards come in sets and an English language card is inserted into the first wallet and a foreign language card is inserted in the second wallet. There is a one-to-one correspondence between lines on the English language card and the Spanish language card as shown in Figure 2. Thus it is our finding of fact that Owen discloses a plurality of demonstration surfaces, i.e., cards, that can be inserted in the bi-fold demonstration surface 1 and 2. Owen further discloses that the information Appeal 2009-013866 Application 10/446,020 4 on the cards can be alphanumeric or may be other expressions such as pictorial representations of Braille markings. See page 1, ll. 54-60. Owen differs from the claimed subject matter only in the fact that Owen does not expressly show pictorial markings with respect to the Figure 2 embodiment. However, Owen expressly suggests using pictorial markings in his patent disclosure. Therefore the use of pictorial markings in the Figure 2 embodiment as expressly suggested by Owen in the specification of his patent is merely the use of prior art embodiments according to known methods to yield predictable results. Thus the subject matter of independent claim 1 is prima facie obvious. Furthermore, Owen renders the subject matter of the method claim 27 prima facie obvious when Owen describes the method of use of his article. See p. 2, l. 117 – p. 3, l. 20. Appellant argues that Owen fails to disclose any pictorial suggestions or representations that are configured to represent specific information that is described in the two languages. As the Examiner has carefully explained, however, because there is no new and unobvious functional relationship between the matter printed on Appellant’s cards and the substrate of the cards, the printed matter, whether pictorial or in a native language or in a foreign language cannot render the claim structure unobvious. See In re Ngai, 367 F.3d. 1336, 1338 (Fed. Cir. 2004) (quoting In re Gulak, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Appellant points out that the printed matter on the card is the distinguishing feature over the prior art. This language and the substance of the printed matter, however, cannot impart patentability as it is useful and intelligible only to the human mind. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Indeed, the printed matter does not depend on the cards’ physical, structural elements and the structural elements of the cards do not Appeal 2009-013866 Application 10/446,020 5 depend on the printed matter. Thus the printed matter does not exploit or interrelate with the underlying structural element and therefore is not functionally related to the substrate. See Ngai, 367 F.3d at 1339. Therefore, whether or not the information on Owen’s cards is the same as information on Appellant’s cards is not dispositive of the Examiner’s rejection under § 103. Notwithstanding that Appellant’s printed matter cannot be relied upon for patentability of Appellant’s claimed demonstration surfaces, we note that we do find that Owen discloses two languages when the cards are paired together. Furthermore, Owen clearly discloses that pictorial representations can also be used, and the suggestion by Appellant that the pictorial representations would not relate to the languages on the cards is not credited. It is the cornerstone of the Owen invention that the text on one card relates to the text on the other card. Certainly any pictorial representations on either card would relate to the relevant texts. Appellant has waived argument with respect to dependent claims 7, 8, 12, 15-18 and 20-23 and we hold that these claims stand or fall with the independent claims from which they depend. See Br. §§ B – E. For the reasons given above, the Examiner’s rejections of claims 1-36 on the ground of obviousness are affirmed. DECISION The rejections of claims 1-36 under 35 U.S.C. § 103 are 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). Appeal 2009-013866 Application 10/446,020 6 AFFIRMED nlk Ballard Spahr LLP SUITE 1000 999 PEACHTREE STREET ATLANTA GA 30309-3915