Ex Parte Bonzer et alDownload PDFPatent Trial and Appeal BoardSep 26, 201613101611 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/101,611 05/05/2011 20350 7590 09/28/2016 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Clarice Bonzer 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. 81247-018800US-803746 5358 EXAMINER THROOP, MYLES A ART UNIT PAPER NUMBER 3673 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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): ipefiling@kilpatricktownsend.com j lhice@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLARICE BONZER, CHARLES PARKER, and NANCY BARTLEY Appeal2014-006803 Application 13/101, 611 1 Technology Center 3600 Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non-final decision rejecting claims 26-32 and 35-38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is The Boppy Company, LLC. Appeal Br. 3. Appeal2014-006803 Application 13/101,611 ILLUSTRATIVE CLAIM 26. A slipcover for a multi-use pillow, the slipcover compnsmg: a cover body forming an open interior that is adapted to receive a pillow, the cover body comprising a medial region and two arms that extend from the medial region, wherein the cover body has a curved exterior periphery and an interior periphery that defines a well, and wherein the cover body includes an opening providing access to the interior; and a label coupled to the cover body, wherein the label includes a plurality of use-defining images that each instruct a human caregiver as to how to properly position a baby at a certain location relative to the cover body depending on a particular use of the pillow suggested by the use-defining image, wherein each use-defining image comprises a depiction of a baby's body positioned relative to the pillow so as to instruct the human caregiver as to how to properly position the baby relative to the pillow depending on the particular use suggested by the use-defining image, thereby showing how the pillow is to be used. CITEu REFERENCES The Examiner relies upon the following references: Claflin Dolsky Biesecker et al. (hereinafter "Biesecker") US D149,474 us 4,523,588 us 6,004, 177 Matthews Brown et al. US 7,000,274 B2 (hereinafter "Matthews Brown") Tidwell et al. (hereinafter "Tidwell") Zucchelli et al. (hereinafter "Zucchelli") US 7,624,461 B2 US 2012/0100768 Al 2 May4, 1948 June 18, 1985 Dec. 21, 1999 Feb.21,2006 Dec. 1, 2009 Apr. 26, 2012 Appeal2014-006803 Application 13/101,611 REJECTIONS 2 I. Claims 26-32 and 35-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matthews Brown, Tidwell, and Claflin. II. Claims 26-32 and 35-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matthews Brown and Zucchelli. III. Claims 26-32 and 35-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matthews Brown and Dolsky. IV. Claims 26-32 and 35-38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Matthews Brown and Biesecker. FINDINGS OF FACT We rely upon and adopt the Examiner's findings stated in the Non- Final Action at pages 3-10 and the Answer at pages 2-5. Additional findings of fact may appear in the Analysis below. ANALYSIS Claim 26 recites, in part, a "label" including "a plurality of use- defining images": a label coupled to the cover body, wherein the label includes a plurality of use-defining images that each instruct a human caregiver as to how to properly position a baby at a certain location relative to the cover body depending on a particular use of the pillow suggested by the use-defining 2 In addition to Rejections I-IV, the Non-Final Office Action also provisionally rejects claims 26-32 and 35-38 on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 13/487,060 (the subject of Appeal 2014-009988). Non- Final Act. 2-3. The Appellants do not raise the provisional rejection in this Appeal. On the record before us, addressing the Examiner's provisional rejection would be premature. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). We therefore do not reach the Examiner's provisional double-patenting rejection of claims 26-32 and 35-38. 3 Appeal2014-006803 Application 13/101,611 image, wherein each use-defining image comprises a depiction of a baby's body positioned relative to the pillow so as to instruct the human caregiver as to how to properly position the baby relative to the pillow depending on the particular use suggested by the use-defining image, thereby showing how the pillow is to be used. Each of the four rejections involved in this Appeal concerns the features of this limitation - specifically, whether these features are entitled to patentable weight that might distinguish the claim from the cited prior art that would otherwise render it (and the other claims in the Appeal) unpatentable under 35 U.S.C. § 103(a). Rejection I The Appellants contend that the Examiner erred in rejecting claim 26, by ascribing no patentable weight (that might distinguish the claim from the cited prior art) to the claimed "use-defining images." Appeal Br. 6. The Appellants argue that the "use-defining images" must be afforded patentable vveight, because they constitute printed matter having a functional relationship with the associated article. Id. at 6-8 (citing MPEP § 2111. 0 5). According to the Appellants, such a functional relationship exists because "to properly use the pillow in its intended manner, one must look to the use- defining images on the label." Id. at 7; see also Reply Br. 2-3. Further, the Appellants allege, none of the Matthews Brown, Tidwell, and Claflin references describes the recited features of the "use-defining images," if regarded as having patentable weight, that include a depiction of a baby positioned relative to the pillow body. Appeal Br. 8. The Examiner's position is twofold. First, according to the Examiner, the "use-defining images" bear no functional relationship to their substrate because the pillow can be used to support a baby, regardless of the presence 4 Appeal2014-006803 Application 13/101,611 of the "use-defining images." Answer 2-3. Thus, the "use-defining images" carry no patentable weight, but rather amount to mere ornamentation or an indication of intended use. Id. at 3. Second, the Examiner explains, even if the alleged functional relationship were to exist, such that the "use-defining images" would be afforded patentable weight, claim 26 is nevertheless unpatentable over the prior art. Id. at 3--4. In particular, Claflin teaches instructional text and images, while Tidwell teaches images of a baby on a pillow, such that (in view of their combined teachings) it would have been obvious to provide a pillow with images instructing a user to position a baby on the pillow - i.e., the features of the claimed "use-defining images." Id. According to what is sometimes called the "printed matter" doctrine, text or another marking that is "claimed for what it communicates" is afforded patentable weight - such that it may be relied upon to distinguish over the prior art for purposes of patentability- only if "the claimed informational content has a functional or structural relation to the substrate." In re Distefano, 808 F.3d 845, 850 (Fed. Cir. 2015); see also King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-80 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983); In re Miller, 418 F.2d 1392, 1396 (CCPA 1969); Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). A functional relationship, which gives rise to consideration of the printed matter as having patentable weight, involves an interrelationship between the printed matter and the substrate such that the disposition of the printed matter relative to the substrate permits a function that the printed matter and the substrate could not possess separately. Thus, in Gulack, 703 F.2d at 1385-86, an endless sequence of numbers were arranged on 5 Appeal2014-006803 Application 13/101,611 continuous band used to demonstrate certain mathematical principles - a functionality that could not exist if the numbers were not arranged on a substrate formed as a continuous band or ring. Similarly, in Miller, 418 F .2d at 1396, indicia on a proportionally reduced measuring cup were used to ascertain proper volume of the material being measured - functionality not possible if the measuring cup and indicia were not joined as set forth in the claim. By contrast, in Ngai, a kit containing a set of instructions explaining the use of an accompanying chemical reagent was determined to lack the requisite functional relationship between the instructions and the reagent. Ngai, 367 F.3d at 1339 ("Here, 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.") In claim 26 of the instant Appeal, the usefulness of the pillow "cover body" does not derive from the "label" (including the printed matter of "use- defining images") being "coupled" thereto. Although the "use-defining images" provide instructions, they could serve the same purpose if provided separately from the pillow "cover body." Thus, the "use-defining images" are similar to the instructions discussed in Ngai, which were determined not to exhibit the operating interrelationship between the printed matter and respective substrates discussed in Gulack and Miller. Because they lack the required functional relationship with the pillow "cover body," the recited "use-defining images" have no patentable weight, as the Examiner correctly determines, and cannot serve to distinguish the claim from the prior art. Moreover, and alternatively, even if the "use-defining images" were entitled to patentable weight, claim 26 would be obvious, nevertheless, because the Examiner correctly finds that the combination of Claflin' s 6 Appeal2014-006803 Application 13/101,611 instructional indicia and Tidwell' s image of a baby positioned on a pillow teaches the features of the claimed "label coupled to the cover body" wherein the "label" includes "use-defining images." The Appellants' argument to the contrary erroneously regards the teachings of Claflin and Tidwell separately, rather than in combination, as the Examiner sets forth. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of references.") Accordingly, the rejection of independent claim 26 under 35 U.S.C. § 103(a) is sustained. Because the Appellants rely upon the same arguments in regard to independent claims 30 and 35, and do not separately argue for the patentability of any of the dependent claims (see Appeal Br. 8), the rejection of claims 27-32 and 35-38 is also sustained. Rejections II-IV Rejections II-IV all tum upon the correctness of the Examiner's determination that the features of the claimed "use-defining images" are not entitled to patentable weight, such that each of the references relied upon to teach a "label" with instructions-Zucchelli in Rejection II (Non-Final Act. 6-7), Dolsky in Rejection III (id. at 7-8), and Biesecker in Rejection IV (id. at 8) - renders the claims obvious, when combined with Matthews Brown, as set forth in the Non-Final Office Action. Because the recited "use-defining images" are not entitled to patentable weight- as discussed above, in regard to Rejection I-the Appellants' arguments to contrary (Appeal Br. 8-10) are unpersuasive. Accordingly, the rejections of claims 26-32 and 35-38 under 35 U.S.C. § 103(a), as set forth in Rejections II-IV, are sustained. 7 Appeal2014-006803 Application 13/101,611 DECISION We AFFIRM the Examiner's decision rejecting claims 26-32 and 35- 38 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation