Ex Parte Cherry

Patent Trial and Appeal Board

Jul 1, 2014

10953400 (P.T.A.B. Jul. 1, 2014)

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.
10/953,400 09/29/2004 Gaye C. Cherry CHERRY-A 2101
7590 07/02/2014
J. Charles Dougherty
Wright, Lindsey & Jennings LLP
Suite 2300
200 Little Capitol Avenue
Little Rock, AR 72201
EXAMINER
JACKSON, JAKIEDA R
ART UNIT PAPER NUMBER
2657
MAIL DATE DELIVERY MODE
07/02/2014 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 APPEAL BOARD
____________

Ex parte GAYE C. CHERRY
___________

Appeal 2011-012135
Application 10/953,400
Technology Center 2600
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL1

1 Throughout this Decision, we refer to Appellant’s Appeal Brief (“App.
Br.” filed March 30, 2011), Appellant’s Reply Brief (“Reply Br.” filed July
29, 2011), the original Specification (“Spec.” filed September 29, 2004), and
the Examiner’s Answer (“Ans.” mailed June 3, 2011) for the respective
positions of Appellant and the Examiner.
Appeal 2011-012135
Application 10/953,400

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This is an appeal under 35 U.S.C. § 134(a) of finally rejected claims
1, 3, 4, and 19-33. Claims 2 and 5-18 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
THE INVENTION
Appellant’s invention relates to communicating with both verbal and
non-verbal patients that includes a chart with squares each containing a
pictographic symbol, a corresponding word, and a translation of that word
into at least one other language. Spec.¶ 0008.
Claim 1, reproduced below, is illustrative with a disputed limitation in
italics:
1. A communication apparatus, comprising:
(a) a substrate;
(b) a chart appearing on said substrate, said chart
comprising a region comprising a plurality of subregions, each
said subregion comprising:
(i) a symbol;
(ii) a first wording corresponding to said symbol;
(iii) a second wording corresponding to said
symbol, wherein said second wording is rendered in a
different language than said first wording but is
equivalent in meaning to said first wording, and wherein
said first wording, said second wording, and said symbol
are simultaneously displayed in said subregion; and
(c) a selection device operable to select one of said
subregions on said chart by contacting said selection device
with said substrate.

Appeal 2011-012135
Application 10/953,400

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THE REJECTIONS
Claims 1, 3, and 19-33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee (US 2003/0208352 A1) and Takaoka (US
2002/0064316 A1).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over Lee
Takaoka, and Patak (US 6,422,875 B1).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments that Appellant did not make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
Claims 1, 3, and 19-33
We have reviewed the Examiner's rejections in light of Appellant’s
arguments that the Examiner has erred. App. Br. 10-13; Reply Br. 1-5. We
disagree with Appellant’s conclusions. We adopt as our own the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and as set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief (see Ans. 9-12). However, we highlight and
address specific arguments and findings for emphasis as follows.
Appellant argues neither Lee nor Takaoka, considered alone or in
combination, teaches the disputed limitation. App. Br. 11. We disagree. In
rejecting claim 1, the Examiner finds, inter alia, Lee teaches the claimed
structure of the chart having a region that comprises a plurality of
subregions. Ans. 5 (citing Lee Fig. 4). The Examiner further finds Lee
teaches a symbol and first wording in each subregion as a flag (symbol) and
the country name in the interviewer’s language (first wording). Id. (citing
Appeal 2011-012135
Application 10/953,400

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Lee Fig. 4; ¶¶ 0095 and 0099). The Examiner also finds Lee teaches the
claimed second wording as the same symbol (flag) displayed with the
country name in the interviewee’s language. Id. (citing Lee Fig. 5; ¶ 0099).
We agree. Lee teaches displaying the first wording together with the symbol
in a subregion of a region (Lee, Fig. 4) and teaches displaying the same
symbol together with the second wording in a subregion of a region (Lee,
Fig. 5) though arguably not the same subregion simultaneously displayed
with the first wording and the symbol. The Examiner then finds,
Takaoka discloses a language translation device wherein said
first wording (Chinese characters; fig. 2 [sic, 10], element 902),
said second wording (English words, figure 2 [sic, 10], element
903), and said symbol (beer mug; figure 10) are simultaneously
displayed in each said subregion (figure 10, element 901), to
create am [sic] image that is easy to decipher.
Ans. 5-6. We agree. Takaoka Figure 10 clearly discloses a display with all
three recited elements simultaneously presented and the Examiner
reasonably interprets Takaoka’s display (Fig. 10 element 901) as equivalent
to one subregion of Lee. Thus, we agree with the Examiner’s finding (Ans.
6) that the combination of Lee and Takaoka teaches all recited features of
claim 1.
Appellant’s arguments regarding design choice (App. Br. 11-13;
Reply Br. 3-5) and lack of clarity in the Examiner’s phrase “environment is
already set” (App. Br. 10) may reflect confusion in communications between
the Examiner and Appellant but are not persuasive of Examiner error.
Neither of these phrases forms the basis for the Examiner’s rejection but
rather reflect attempts to clarify issues in communications between the
Examiner and Appellant. Rather, we find the Examiner’s rejection is clear
and not persuasively rebutted by Appellant.
Appeal 2011-012135
Application 10/953,400

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In view of the above discussion, we are not persuaded that the
Examiner has erred in rejecting claim 1 or claims 3, and 19-33 not argued
separately. We therefore sustain the Examiner’s rejection of claims 1, 3, and
19-33.

Claim 4
Appellant argues the Examiner erred in rejecting claim 4 for the same
reasons as claim 1 (App. Br. 13) and for the same reasons discussed supra,
we are not persuaded the Examiner erred. We, therefore, sustain the
Examiner’s rejection of claim 4.

Appeal 2011-012135
Application 10/953,400

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DECISION
For the reasons discussed above, the Examiner’s decision to reject
claims 1, 3, 4, and 19-33 under 35 U.S.C. § 103(a) is affirmed.2
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).

AFFIRMED

2 Should this application proceed further in prosecution, we suggest the
Examiner consider whether the printed matter limitations are entitled to
patentable weight under 35 U.S.C. § 103. The recited chart element of claim
1 appears to comprise only printed matter with no functional relationship to
the substrate. Appellant’s Specification and claim 4 make clear that the
claimed invention reads on an embodiment where the information is printed
on a plastic substrate and the selection device may be a marker. See Spec. 7-
8. The particular information (the recited chart) presented on the substrate
appears to be the Appellant’s key distinction over the cited art. We suggest
the claimed invention is not functionally changed based on the content of the
printed material. “Where 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. Although the printed matter must be
considered, in that situation it may not be entitled to patentable weight.” In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The Examiner need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1583-84 (Fed Cir. 1994); In re Ngai, 367
F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative) (“[N]onfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art.”), aff'd, 191 Fed.Appx. 959 (Fed. Cir.
2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative) (“Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious.”), aff'd,
No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36).
Appeal 2011-012135
Application 10/953,400

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