Ex Parte Cobb

Board of Patent Appeals and Interferences

Sep 20, 2010

10990104 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY COBB
____________________

Appeal 2009-001903
Application 10/990,104
Technology Center 3600
____________________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, 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 2009-001903
Application 10/990,104

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STATEMENT OF THE CASE
Timothy Cobb (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1, 3, 5, 8, 13, 15, 17, 20, 22, and
23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention pertains to methods directed to the
creation of a gift assemblage including a gift item, a hanging gift envelope,
and a gift card. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A method of creating a gift assemblage, comprising:
(a) providing a gift item including a longitudinal
portion; and
(b) selecting a hanging gift envelope having:
(i) an envelope portion; and
(ii) a hanger portion, attached to said envelope
portion, said hanger portion defining a through-
hole through which said longitudinal portion may
be placed;
(c) placing said longitudinal portion through said
through-hole;
(d) placing a standard size magnetic strip gift card in
said envelope portion; and
(e) wherein said hanging gift envelope is decorated in
a manner that is thematically related to said gift item.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cobb US Des. 421,459 Mar. 7, 2000
Hickmott US 6,145,233 Nov. 14, 2000
Bradley US 2001/0016995 A1 Aug. 30, 2001
Street US 2003/0150142 A1 Aug. 14, 2003

The following Examiner’s rejections are before us for review:
1. Claims 1, 3, 5, 8, 22, and 23 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention;
2. Claim 1 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bradley and Street; and
3. Claims 1, 3, 5, 8, 13, 15, 17, 20, 22, and 23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Hickmott, Cobb, and Street.

OPINION
1. Claims 1, 3, 5, 8, 22, and 23 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite
The primary purpose of the definiteness requirement of § 112, second
paragraph, is to provide notice to the public of the metes and bounds of the
claimed invention. See In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970).
The test for definiteness is “whether those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). During prosecution, the
threshold standard of ambiguity for indefiniteness is lower than it might be
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during litigation of an issued patent. Ex parte Miyazaki, 89 USPQ2d 1207,
1212 (BPAI 2008).
Independent claim 1 recites the step of “placing a standard size
magnetic strip gift card in said envelope portion.” Claims 3, 5, 8, 22, and 23
depend directly or indirectly from claim 1, and do not further limit the size
of the gift card. The Examiner maintains that gift cards come in many sizes,
and concluded that the “standard size” language renders the claims indefinite
because “it is unclear what would constitute a ‘standard’ size.” Ans. 3.
Appellant argues that there is a standard size for magnetic strip gift
cards, and that is the size of a credit card, namely 54 mm by 86 mm. App.
Br. 4. According to Appellant, “[t]his standardization is enforced by the size
of the pockets in wallets, which are sized to fit just such cards.” Id.
However, Appellant presents only argument and but no evidence indicating
that a person of ordinary skill in the art would have known that there was at
the time of invention a standard size for magnetic strip gift cards, or that
that size is the same as credit cards. Appellant does not argue that the
Specification offers any clarification as to what constitutes a “standard” size
gift card. See id. As such, we are not persuaded that the Examiner erred in
concluding that claims 1, 3, 5, 8, 22, and 23 are indefinite.

2. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bradley and Street
Claim 1 recites the step of “placing a standard size magnetic strip gift
card in said envelope portion.” One of ordinary skill in the art reading the
claim in light of Appellant’s Specification would understand the recited “gift
card” to refer to a card having a value and which, like a gift certificate, may
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be redeemed for goods or services. See, e.g., Spec. 1:4-20; Street 1, paras.
[0002], [0008].
The Examiner found that Bradley discloses a gift card, but that
Bradley does not indicate that the gift card includes a magnetic strip. Ans. 3
(citing Bradley 1, para. [0017]). The Examiner found that Street teaches that
it was known to provide a gift card that includes a magnetic strip. Id. The
Examiner then concluded that it would have been obvious to provide the gift
card of Bradley with a magnetic strip “in order to facilitate automated
redemption of the card.” Id.
Appellant correctly points out (App. Br. 4) that Bradley mentions a
“gift tag,” not a “gift card.” We do not agree with the Examiner’s assertion
that the two terms are synonymous, and we cannot find by a preponderance
of the evidence that Bradley discloses a gift card within the meaning of
Appellant’s invention. The Examiner’s conclusion of obviousness is
implicitly premised on the erroneous finding that Bradley discloses a
redeemable gift card which would be improved by the addition of a
magnetic strip. As such, we cannot sustain the rejection of claim 1 as
obvious in light of Bradley and Street.

3. Claims 1, 3, 5, 8, 13, 15, 17, 20, 22, and 23 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hickmott, Cobb, and Street
Claim 1
Appellant presents arguments directed specifically to claim 1.
Although, as discussed above, we affirm the rejection of claim 1 as being
indefinite, we reach the merits of this art rejection because there is no
suggestion by Appellant that Street’s gift card falls outside of the scope of a
“standard” size card, whatever that scope may be, or that the recitation of a
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“standard size” distinguishes the claimed subject matter over the prior art.
See App. Br. 5.
Appellant argues that “it is an exercise in impermissible hindsight to
combine the Hickmott and Cobb references,” apparently because there is no
suggestion in Hickmott of including a gift card with Hickmott’s plant tag.
See App. Br. 5. Appellant’s argument – premised on the necessity of a
rigorous application of the requirement of a suggestion to combine
references – is misplaced as it is based on outdated law. See id. at 4
(Appellant quoting In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999) for the
proposition: “the best defense against the subtle but powerful attraction of a
hindsight based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references.”). The Supreme Court has rejected the rigid requirement of a
teaching, suggestion or motivation to combine known elements in order to
show obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007).
In this case, the Examiner has set forth articulated reasoning
supporting the conclusion of obviousness. See Ans. 4. Appellant does not
explain why this reasoning is flawed. App. Br. 5. As such, we do not find
Appellant’s hindsight and no-suggestion-to-combine argument to be
persuasive.
Furthermore, Appellant’s argument is not persuasive because it
focuses solely on the purported shortcomings of Hickmott’s disclosure rather
than the combined teachings of all the references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”)
Appellant also seems to argue that the Examiner’s proposed
combination lacks the “selecting a hanging gift envelope” step, stating:
The informational tag of Hickmott would not be individually
selected for a plant, but would be provided en masse to be
associated with every plant of the type being tagged.
App. Br. 5. This argument may be related to the similar assertion, made in
the context of claim 13, that the tags are placed on plants at the grower’s
location and therefore “there is no selection of informational tags for a
shopper to choose from.” Appellant’s arguments are not commensurate with
the language of claim 1. Claim 1 does not preclude the en masse selection
of hanging envelopes or the selection by the growers (or, in the Examiner’s
example (Ans. 5), the selection of a geranium-appropriate card by a store
employee holding a geranium).
We sustain the rejection of claim 1 as obvious in light of Hickmott,
Cobb, and Street. As to claims 3, 5, or 8, Appellant relies on their
dependency from claim 1 for patentability. App. Br. 6. Because we sustain
the rejection of claim 1, we also sustain the rejection of claims 3, 5, and 8.

Claim 13
Claim 13 recites a method of facilitating the assembling of a gift
assemblage including the step of providing a selection of hanging gift
envelopes and the step of “providing a selection [of] gift cards.” Appellant
argues that the references fail to suggest this gift card providing step. App.
Br. 5. The Examiner does not appear to make a finding in this regard or
articulate why it would have been obvious. See Ans. 3, 5-6. The
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Examiner’s references to “the card” and “different cards” on pages 5 and 6
of the Answer appear to refer to the hanging plant information tag/envelope,
not the claimed gift card. As such, we are constrained to reverse the
rejection of claim 13, and of claims 15, 17, and 20 which depend therefrom.

Claims 22 and 23
Appellant argues claims 22 and 23 as a group. App. Br. 5-6. We
select claim 22 as the representative claim, and claim 23 stands or falls with
claim 22. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 22 depends from claim 1 and recites, in pertinent part, “wherein
… said hanging gift envelope is decorated as a gardener’s tool holder.” The
Examiner maintains that matters relating to ornamentation only, where
claims are directed to structural rather than a design claim, cannot be relied
on to patentably distinguish the claimed invention over the prior art. See
Ans. 4 (citing In re Seid, 161 F.2d 229 (CCPA 1947)).
Seid stands for the proposition that a claim which recites a structure
which differs from prior art structure only by way of a limitation relating
to ornamentation and having no mechanical function whatsoever is
unpatentable over the prior art. In re Seid, 161 F.2d 229, 231 (CCPA 1947).
In claim 22, the recited form of decoration relates to ornamentation only –
namely, the design on the hanging gift envelope. See Spec. 4 (“[T]he potted
plant 30 hanging envelope 14 incorporates a gardener’s tool holder design
in which the hanger 18 is decorated as the tool holder strap.” (emphasis
added)); compare Figs. 2A and 3 (Appellant’s hanging envelopes having the
same structure, but differing in the applied design).
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Appellant argues that Seid is inapplicable because claim 22 is not
directed to structure but rather to a method of creating a gift assemblage.
App. Br. 5. While we recognize that claim 22 is a method claim, the
pertinent language of dependent claim 22 is directed to the structure of the
hanging gift envelope, not as to how the method is performed. As such, we
find Seid to be applicable in this situation.
Appellant also relies on In re Dembiczak for the proposition that
“ornamental elements can constitute patentable subject matter.” App. Br. 6.
Dembiczak is distinguishable. In that case, our reviewing court reversed the
rejection of a claim to a decorative trash bag because the Examiner failed to
articulate a teaching, suggestion or motivation which might have led one of
ordinary skill in the art to include any facial indicia, much less facial indicia
including recited ornamental features, on the claimed bag. See Dembiczak,
175 F.3d at 1000. That case neither mentioned Seid nor held that the
claimed subject matter was patentable due solely to particular differences in
ornamentation.
As discussed above, we are not persuaded of error in the Examiner’s
conclusion that the claimed method of independent claim 1 would have been
obvious over the combined teachings of Hickmott, Cobb, and Street. Those
teachings include Hickmott’s disclosure of a plant with a hanging tag
containing plant information and a picture of the plant. See Ans. 4; App. Br.
5 (referring to Hickmott’s informational plant tag); Hickmott, col. 2, ll. 10-
17, fig. 2. The specific design recited in dependent claim 22 does not
patentably distinguish the claimed subject matter over those combined
teachings. As such, we sustain the rejection of claim 22 and of claim 23,
which falls therewith.
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CONCLUSIONS
The rejection of claims 1, 3, 5, 8, 22, and 23 under § 112, second
paragraph, is affirmed.
The rejection of claim 1 as obvious in light of Bradley and Street is
reversed.
The rejection of claims 1, 3, 5, 8, 22, and 23 as obvious in light of
Hickmott, Cobb, and Street is affirmed.
The rejection of claims 13, 15, 17, and 20 as obvious in light of
Hickmott, Cobb, and Street is reversed.

DECISION
The decision of the Examiner to reject claims 13, 15, 17, and 20 is
reversed. The decision of the Examiner to reject claims 1, 3, 5, 8, 22, and 23
is 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).

AFFIRMED-IN-PART
JRG

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