09946009 (B.P.A.I. Aug. 24, 2012)

Ex Parte Coult

Board of Patent Appeals and InterferencesAug 24, 2012

09946009 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 09/946,009 09/04/2001 John H. Coult P/5947-29 4308 2352 7590 08/27/2012 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER AHN, SANGWOO ART UNIT PAPER NUMBER 2166 MAIL DATE DELIVERY MODE 08/27/2012 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 JOHN H. COULT ____________________ Appeal 2011-007409 Application 09/946,009 Technology Center 2100 ____________________ Before DEBRA K. STEPHENS, DAVID M. KOHUT, and TREVOR JEFFERSON, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL Appeal 2011-007409 Application 09/946,009 2 Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Introduction According to Appellant, the invention relates to a system and method for patent marking products comprising providing digital data that identifies one or more patents related to predetermined products, and facilitating access to the digital data such that at least the numbers of the one or more related patents can be ascertained. (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 186 is an exemplary claim and is reproduced below: 186. A method of providing identification, on a product, of two or more patents that protect the product, comprising: preparing a patent marking link, wherein the patent marking link serves as a means to identify at least two patents associated with the product, and wherein the patent marking link takes the form of a URL that defines a route to a file on an Internet facility, and wherein the file identifies an actual patent number for each patent that is to be identified; and applying the patent marking link to the product. Appeal 2011-007409 Application 09/946,009 3 References Gupta US 6,820,062 B1 Nov. 16, 2004 (filed Aug. 20, 1991) Philyaw US 6,877,032 B1 Apr. 5, 2005 (filed Jun. 21, 2000) Rivette US 6,339,767 B1 Jan. 15, 2002 (filed Aug. 29, 1997) Rejections Claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gupta, Rivette, and Philyaw. 1 GROUPING OF CLAIMS Based upon Appellant’s arguments, we select representative claim 186 to decide this appeal for the group consisting of claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283. (See App. Br. 10-17). We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2009). 1 The rejection of claims 186, 193, 216, 256, 272, 275, and 278-283 under 35 U.S.C. § 101 as being directed to non-statutory subject matter was withdrawn by the Examiner (Ans. 3). Appeal 2011-007409 Application 09/946,009 4 ISSUE 35 U.S.C. § 103(a): claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283 Appellant asserts the invention is not obvious over Gupta, Rivette, and Philyaw because the references do not teach or suggest “preparing a patent marking link,” “the patent marking link serves as a means to identify at least two patents associated with the product,” “the patent marking link takes the form of a URL,” and “applying the patent marking link” (App. Br. 10-15). Specifically, Appellant contends that the Specification defines a “patent marking link” as “a constructive patent marking notice which provides a link to a source of none or more patent numbers which are relevant to the marked products in a patent marking sense” and the Examiner has instead improperly and over-broadly construed the term (App. Br. 13). Thus, Appellant argues Rivette does not disclose patent markings (id.). Further, according to Appellant, Philyaw does not teach that the URL is physically applied to the product or its packaging, but rather is permanently stored on the reader itself (App. Br. 14). Nor do any of the references teach providing a patent marking link in the form of a URL (App. Br. 15). Appellant additionally asserts secondary considerations should be considered since prior to Appellant’s invention, URL links were not used to provide patent marking information (App. Br. 16). Additionally, Appellant presented new arguments in the Reply Brief (Reply Br. 5-8). Appellant has not explained why, nor is it apparent that, these arguments were necessitated by a new point in the Answer or any other circumstance constituting “good cause” for its belated presentation. See Ex Appeal 2011-007409 Application 09/946,009 5 parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”) (absent a showing of good cause, the Board is not required to address arguments in Reply Brief that could have been presented in the principal Brief). Thus, these arguments have not been considered. Issue: Has the Examiner erred in finding the combination of Gupta, Rivette, and Philyaw would have taught or suggested “preparing a patent marking link,” “the patent marking link serves as a means to identify at least two patents associated with the product,” “the patent marking link takes the form of a URL,” and “applying the patent marking link” as recited in claim 1? ANALYSIS We agree with and adopt as our own the Examiner’s findings as set forth in the Answer (Ans. 4-19). However, as outlined infra, we further find the following regarding claim 186. Specifically, we find the term “patent marking link” to be non- functional descriptive material. Indeed, the term “patent marking link” is merely a label for data or information and does not further limit the claimed invention functionally. When descriptive material is not functionally related to the claimed embodiment, the descriptive material will not distinguish the invention from the prior art in terms of patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Appellant has not persuaded us preparing information (patent marking notice that takes the form of a URL defining a route to an Internet facility Appeal 2011-007409 Application 09/946,009 6 file) and applying that information to a product was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, the Examiner did not err in finding the combination of Gupta, Rivette, and Philyaw would have taught or suggested the invention as recited in independent claim 186; commensurately recited in independent claims 256, 272, and 275; and claims 193, 216, 222, and 278 - 283, not separately argued. Therefore, the Examiner did not err in rejecting claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283 under 35 U.S.C. § 103(a) for obviousness over Gupta, Rivette, and Philyaw. DECISION The Examiner’s rejection of claims 186, 193, 216, 222, 256, 272, 275, and 278 - 283 under 35 U.S.C. § 103(a) as being unpatentable over Gupta, Rivette, and Philyaw 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)(1)(iv) (2010). AFFIRMED msc