Ex Parte Avery

Patent Trial and Appeal Board

Aug 19, 2016

12857360 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/857,360 08/16/2010
29370 7590
ROBERT A, PARSONS
15615 North 71st Street
Suite 106
Scottsdale, AZ 85254
08/23/2016
FIRST NAMED INVENTOR
Mark William Avery
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.
4998-PAl 3868
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
rp@pgpct.com
ms@pgpct.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK WILLIAM A VERY
Appeal2015-002440
Application 12/857,360
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, and 4--11under35 U.S.C.
§ 103(a) as unpatentable over Official Notice of The Boy Scouts of America
Merit Badge Program (BSA) in view ofEgglesfield (US 2008/0189830 Al;
Aug. 14, 2008) as evidenced by "Historical Merit Badge Program,"
"Introduction to Merit Badges," "BSA Historical Merit
Badge Program," and "eBay Jamboree Patches."
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be "Mark William Avery" (App. Br.
2).
Appeal2015-002440
Application 12/857,360
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight some key limitations):
1. An event memento system comprising:
a set of different shapes;
a plurality of different event categories;
each different event category of the plurality of different
event categories associated with a different shape of the set of
different shapes;
a set of different colors;
a plurality of different distances or features for each of
the plurality of different event categories;
each different distance or feature of the plurality of
different distances or features associated with a different
color of the set of different colors;
a first event memento designating a first event category of
the plurality of different event categories and a distance or
feature of the first event category of the plurality of different
distances or features, the first event memento including a body
having a peripheral edge;
a viewable surface on the body within the peripheral edge,
the viewable surface having a shape from the set of different
shapes associated with the first event category of the plurality of
different event categories;
a color from the set of different colors associated with
the distance or feature of the plurality of different distances
or features displayed on the body within the peripheral edge;
a second event memento designating a second event
category of the plurality of different event categories, the second
event category different from the first event category, and a
distance or feature of the second event category of the plurality
of different distances or features, the second event memento
including a body having a peripheral edge;
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Appeal2015-002440
Application 12/857,360
a viewable surface on the body within the peripheral edge,
the viewable surface having a shape from the set of different
shapes associated with the second event category of the plurality
of different event categories; and
a color from the set of different colors associated with
the distance or feature of the plurality of different distances
or features of the second event category displayed on the body
within the peripheral edge.
Independent claim 5 recites a method of standardizing an event
memento system similar to claim 1; independent claim 9 recites an event
memento system similar to claim 1 (Claims Appendix) 2 . Appellant's
arguments are substantially the same for each independent claim, even
though presented in a separate section of the appeal brief (App. Br.; Reply
Br. generally).
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
2 Should there be further prosecution of this application, the Examiner may
wish to review the claims for compliance under 35 U.S.C. § 101 in light of
the examination instructions on patent eligible subject matter.
See "Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,"
Memorandum to the Examining Corps, June 25, 2014, as well as the
USPTO's "July 2015 Update: Subject Matter Eligibility" and "May 2016
Subject Matter Eligibility Update (May 2016)."
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Appeal2015-002440
Application 12/857,360
§ 103 rejection essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
Appellant's principal arguments are 1) that the combined teachings do
not disclose or suggest each event memento having a different shape to
represent a different event category (App. Br. 14) 2) the Examiner has taken
an unreasonably broad interpretation of "viewable surface" (App. Br. 16,
17); 3) Egglesfield does not suggest different shapes represent specific
events (App. Br. 20) 4) that there is no teaching or suggestion to modify the
references to arrive at the claimed invention (App. Br. 23) and 5) the
Examiner is using impermissible hindsight to arrive at the claimed invention
(Reply Br. 4--7).
We are unpersuaded of error in the Examiner's determination of
obviousness. Appellant's arguments mainly address the references
separately and do not fully address the inferences of these references that are
presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264--65 (Fed.
Cir. 1992).
In KSR Int 'l Co., the Supreme Court also observed that:
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Appeal2015-002440
Application 12/857,360
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [unpatentable] under§ 103.
550 U.S. at 419--420.
A person of ordinary skill in the art would have, using no more than
ordinary creativity, reasonably designed or used an event memento system
with each event category having a memento having a distinct shape
associated therewith and having distinct colors to designate different
distances or features of an associated event as recited in the claims on appeal
(including a method of standardizing an event memento system as recited in
claims 5-8) from the teachings of the references as detailed by the Examiner
(Ans. 3-9).
Contrary to Appellant's urging, we see no error in the Examiner's
claim interpretation of a "viewable surface" (App. Br. 16, 17). Even
assuming that Appellant is correct that the Specification has a limiting
definition of "a viewable surface," the Examiner de facto merely determined
that one of ordinary skill in the art would have inferred from the different
shapes depicted on different Boy Scout badges that a memento/badge itself
could have different shapes, consistent with Appellant's argued definition
(e.g. Ans. 4, 5).
Furthermore, we agree with the Examiner that, "matters relating to
ornamentation only, which have no mechanical function, cannot be relied
upon to patentably distinguish the claimed invention from the prior art [in a
utility patent application]. In re Seid, 161 F .2d 229, 73 USPQ 431." (Final
Action 7; see also Ans. 5, 7). Cf In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
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Appeal2015-002440
Application 12/857,360
2004) (stating that "[w]here the printed matter is not functionally related to
the substrate, the printed matter will not distinguish the invention from the
prior art in terms of patentability"; finding no functional relationship where
the printed matter in no way depends on the substrate and the substrate in no
way depends on the printed matter; and holding claimed subject matter
anticipated where such printed matter was the only difference between the
claimed subject matter and the prior art). The features in Appellant's claims
directed to the shape/design and colors of the different event mementos are
"'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
(CCP A 1969)) (distinguishing such claim limitations from claim limitations
defining functional characteristics). They do not exploit or interrelate with
any other structural elements of the mementos.
Accordingly, we do not find that the appearance limitations (shapes,
colors) at issue are functionally related to the mementos so as to patentably
distinguish the subject matter of Appellant's claims from the applied prior
art.
Assuming arguendo that these features are functionally related as
Appellant urges (e.g. Reply Br. 2, 3), Appellant's arguments remain
unpersuasive of error in the Examiner's obviousness determination. We
"take account of the inferences and creative steps that a person of ordinary
skill in the art would employ," and find a person of ordinary skill in the art
would have modified the Boy Scout concept of different badges to include
different shaped badges signifying different events as inferred from the
Jamboree patches and Egglesfield (e.g., to signify different athletic events,
such as running, swimming, bicycling, etc.), and provide as much pictorial
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Appeal2015-002440
Application 12/857,360
and/or graphical and/or colors to designate different distances or features of
each event type within their level of skill. KSR Int 'l 550 U.S. at 418; see
also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ (emphasis omitted)).
To the extent Appellant argues any of the claims separately (e.g.
dependent claim 10 which adds a third event memento; App. Br. 25-26), a
preponderance of the evidence supports the Examiner's obviousness
determination.
Accordingly, we affirm the Examiner's prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103 rejection is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED
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