Ex Parte Campbell et al

Board of Patent Appeals and Interferences

Jun 7, 2012

11507979 (B.P.A.I. Jun. 7, 2012)

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.
11/507,979 08/22/2006 Gary Lynn Campbell 3432.2.1 1677
11653 7590 06/08/2012
PATE BAIRD, PLLC
36 West Fireclay
Murray, UT 84107
EXAMINER
MARTELLO, EDWARD
ART UNIT PAPER NUMBER
2628
MAIL DATE DELIVERY MODE
06/08/2012 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 GARY LYNN CAMPBELL and
SUSAN LYNN STUCKI
____________________

Appeal 2010-008367
Application 11/507,979
Technology Center 2600
____________________

Before: JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing under 37 C.F.R. §
41.52(a)(1) for reconsideration of our Decision of March 16, 2012.
The Decision affirmed the Examiner’s rejections of claims 23-38, as
follows:
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1. We affirmed the Examiner’s rejection of claims 23, 24, 31, 34, and 36
as being obvious over the combination of Gouriou and Teter.
2. We affirmed the Examiner’s rejection of Claims 25-30, 32, 33, 37,
and 38 as being obvious over the combination of Gouriou, Teter, and
Galazin.
3. We affirmed the Examiner’s rejection of claim 35 as being obvious
over the combination of Gouriou, Teter, and Macfarlane.

We have reconsidered our Decision, in light of Appellants’ arguments
in the Request, and we are not persuaded that we misapprehended or
overlooked any points in rendering our Decision. We decline to change our
prior Decision for the reasons discussed infra.
We begin our review by addressing Appellants’ first argument:
A. Appellants contend that that our Decision is based on a new
ground of rejection because we construed the claimed color
limitations as being directed to non-functional descriptive
material.
(Request 2-3).
Firstly, we do not agree that merely construing Appellants’ claims in
light of binding precedential case law constitutes a new ground of rejection.
In broadly but reasonably construing Appellants’ claims, we relied
particularly on the holding of Ex parte Nehls, 88 USPQ2d 1883, 1887-90
(BPAI 2008) (precedential). As a precedential opinion, under agency
authority (SOP 2), Nehls is binding on all members of the Board, and by
extension, is also binding authority on every member of the public who files
an appeal to the Board. The Board’s holding in Nehls is also consistent with
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the guiding Federal Circuit case law that we cited in our Decision (6).
Because Nehls is binding authority, we have no discretion in applying the
holding of Nehls to our claim construction.
Moreover, Appellants have been accorded constructive notice of the
precedential Nehls decision, which has been posted on the uspto.gov web
site since 2008.1 Appellants’ arguments notwithstanding, our view remains
unchanged that Appellants’ claimed “color palette,” “plurality of attribute
colors,” and “compatible colors” (claim 23) are directed to non-functional
descriptive material that does not change or alter any machine or computer
function.2
We also have no discretion in beginning our analysis of obviousness
with claim construction. Our reviewing court guides that a determination of
obviousness involves two steps: The first step is construing the claim, a
question of law, followed by, in the case of obviousness or anticipation, a
second step of comparing the construed claim to the prior art. Key Pharms.
v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations
omitted).
Given these binding precedents, the Board’s statutory authority to
review “adverse decisions of examiners upon applications for patents”

1 See http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd071823.pdf
2 Cf. Functional descriptive material consists of data structures and
computer programs which impart functionality when employed as a
computer component. See Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off.
Gaz. Pat. Office 142 (November 22, 2005), especially pages 151-152. (The
Manual of Patent Examining Procedure includes substantively the same
guidance. See MPEP, 8th edition (revised Aug. 2006), § 2106.01.)
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would be severely undermined if the claim construction analysis required by
Federal Circuit precedent is considered a new ground of rejection per se.
See 35 U.S.C. § 6(b). In many appeals, the Examiner’s claim construction is
not made explicit, thus a large number of appeals decided by the Board
routinely turn on the panel’s claim construction analysis. Our approach in
reviewing claim construction for disputed claim terms mirrors the approach
of the Federal Circuit: “[c]laim construction is a matter of law and is
reviewed de novo on appeal.” Interactive Gift Exp., Inc. v. Compuserve
Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (citing Cybor Corp. v. FAS
Techs., Inc., 138 F.3d 1448, 1456 (Fed.Cir.1998) (en banc)).
Secondly, our claim analysis in our Decision merely served to buttress
the Examiner’s ultimate legal conclusion of obviousness. As we stated in
our Decision:
Even if we arguendo accorded patentable weight to the
disputed color palette comprising a plurality of attribute colors
and a plurality of compatible colors, we note that no particular
colors except percentages of black and white are positively
recited in representative claim 23. Because the “palette of
reference foundation colors” taught by Gouriou “substantially
cover[s] a representative sample of a population of individuals”
(col. 7, ll. 41-42), we conclude that the unbounded range of
colors covered by the scope of Appellants’ claim 23 at least
overlaps one or more of Gouriou’s foundation colors.
As the Court of Appeals for the Federal Circuit held in
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1311
(Fed. Cir. 2006), “[w]here a claimed range overlaps with a
range disclosed in the prior art, there is a presumption of
obviousness.” The overlap need not be substantial to trigger the
presumption. In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir.1997).
(Decision 7).
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For these reasons, we do not agree with Appellants’ contention that
our claim construction constitutes a new ground of rejection. As stated in
our Decision (id.), even if the disputed color limitations are accorded weight,
we agree with the Examiner’s ultimate legal conclusion of obviousness.
Regarding Appellants’ argument (B), we disagree with Appellants’
contention that we have improperly characterized the functional limitations
required of executable software modules as non-functional descriptive
material. (Request 3-4). As discussed above, our view remains unchanged
that Appellants’ claimed “color palette,” “plurality of attribute colors,” and
“compatible colors” (claim 23) are directed to non-functional descriptive
material that does not change or alter any machine or computer function.
Regarding the purported “executable software modules” (Request 3-
4), we conclude that Appellants’ multiple “wherein” clauses 3 (claim 23) are
directed to an intended use or purpose of the claimed association module.

3 See MPEP §2111.04 regarding “wherein” clauses:
Claim scope is not limited by claim language that
suggests or makes optional but does not require
steps to be performed, or by claim language that
does not limit a claim to a particular structure.
However, examples of claim language, although
not exhaustive, that may raise a question as to the
limiting effect of the language in a claim are:
(A) “adapted to” or “adapted for” clauses;
(B) “wherein” clauses; and
(C) “whereby” clauses.

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“An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch
statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d
751, 754 (Fed.Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
This reasoning is applicable here. Thus, we conclude that Appellants’
claim 23 does not positively recite that the association module actually
performs the implied functions associated with the intended results specified
in the “wherein” clauses. See e.g., “the association module, wherein the
color palette comprises the plurality of attribute colors.” (Claim 23).
Moreover, Appellants’ use of the term “comprises” opens the set of colors
covered by the claimed “color palette” to include any color: “A drafter uses
the term ‘comprising’ to mean ‘I claim at least what follows and potentially
more.’” Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377,
1383 (Fed.Cir. 2000); see also Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.) (emphasis added).

We also observe the statement of intended use recited in the preamble
of claim 23: “An apparatus to automatically generate a customized color
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palette . . . .” (emphasis added). To the extent that independent claim 23
merely automates a prior art manual process of generating a customized
color palette (see Appellants’ Spec. pp. 1-2), it is well settled that merely
providing a mechanical or automatic means to replace manual activity to
accomplish the same result is an obvious improvement. See In re Venner,
262 F.2d 91, 95 (CCPA 1958).
Regarding Appellants’ argument (C), we disagree with Appellants’
contention that we have relied on an improper alternative analysis of the
Examiner’s rejections. (Request 4-5). In this regard, we also find it unclear
exactly how “a unique color selected from the plurality of attribute colors
and the plurality of compatible colors” (claim 23, last two lines) is actually
selected, given that if colors are different, then by definition each color is
unique. Consistent with our concerns expressed during the Hearing
conducted on March 13, 2012, and for the reasons discussed above, the
range of possible colors within the scope of Appellants’ claims appears to be
unbounded. See “Record of Oral Hearing” transcript pp. 4-7.

CONCLUSION
We have considered the arguments raised by Appellants in the
Request for Rehearing, but Appellants have not convinced us that we
misapprehended or overlooked any points in rendering our Decision.

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DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein.
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)(2011). See
also 37 C.F.R. § 41.52(b).

DENIED

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