Ex Parte Errigo

Patent Trial and Appeal Board

Mar 26, 2018

13946243 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/946,243 07/19/2013
36491 7590 03/28/2018
Kunzler, PC.
50 W. Broadway
10th Floor
SALT LAKE CITY, UT 84101
FIRST NAMED INVENTOR
Danielle C. Errigo
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.
2354.2.lc2 9762
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
docket@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELLE C. ERRIGO
Appeal2017-007085 1
Application 13/946,2432
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4 and 8. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed
September 9, 2016), and Reply Brief ("Reply Br.," filed April 6, 2017), the
Examiner's Answer ("Ans.," mailed February 9, 2017), and Non-Final
Office Action ("Non-Final Act.," mailed May 27, 2016).
2 Appellant identifies the inventor, Danielle C. Errigo, as the real party in
interest. App. Br. 2.
Appeal2017-007085
Application 13/946,243
THE INVENTION
Claim 1, the sole independent claim on appeal, is representative of the
subject matter on appeal and recites:
1. An apparatus for educating children, the apparatus
compnsmg:
a plurality of pairs of socks, the plurality of pairs of socks
comprising a plurality of first socks and a plurality of second
socks, wherein each sock is a garment configured for wearing on
a foot and each pair of socks comprises socks configured to be
interchangeable for wearing on a left or a right foot;
a plurality of symbol pairs, the plurality of symbol pairs
comprising a plurality of first symbols and a plurality of second
symbols, the symbol pairs permanently applied to the pairs of
socks such that the first symbols are applied to the first socks in
one-to-one correspondence and the second symbols are applied
to the second socks in one-to-one correspondence,
wherein each symbol pair of the plurality of symbol pairs
differs from other symbol pairs of the plurality of symbol pairs,
wherein the second symbols are non-identical to the first
symbols, the second symbols corresponding to the first symbols
such that a first symbol of a symbol pair comprises an expression
in a first form and a second symbol of the symbol pair comprises
a matching expression in a different form.
App. Br. 10 (Claims Appendix).
THE REJECTION
The following rejection is before us for review:
Claims 1--4 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shofner (US 5,708,984, iss. Jan. 20, 1998) and
McLeod et al. (US 6,099,318, iss. Aug. 8, 2000) ("McLeod").
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Application 13/946,243
ANALYSIS
Unpatentable over Shofner & McLeod
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
Shofner discloses "a plurality of socks" and "a plurality of symbol pairs" as
recited in claim 1, but "Shofner fails to teach the content of the information
set forth by the symbols, being non-identical." (Non-Final Act. 6). The
Examiner relies on McLeod to remedy this deficiency, specifically the cards
with matching words and pictures. (Id.). According to the Examiner:
It would have been obvious to have provided the socks
with matching identical indicia of Shofner with the matching
non-identical indicia of McLeod et al., since the socks of Shofner
provided with matching non-identical indicia would provide a
different indicia means to easily and quickly match and sort sock
pairs among multiple sock pairs.
(Id.; see also, id. at 9).
Appellant argues, inter alia, that "a person of ordinary skill in the art
would not combine the socks of Shofner ... with the educational card game
of McLeod" because "nothing about matching socks, or about educational
card games, suggests putting an educational card game on pairs of socks,
instead of on cards." (App. Br. 7).
In the Answer, the Examiner elaborates on the reason for the proposed
combination as follows:
Combining Shofner and McLeod et al. would create a sock
pairing system with identical distinctive color indicators on a
sock set in the form of non-identical symbols, so that a user can
easily mate socks based upon identical colors and non-identical
related symbols to create an easy and educational way to mate
socks after laundering that could involve the assistance of kids.
(Ans. 3).
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A rejection based on § 103 clearly must rest on a factual basis. The
Examiner has the initial duty of supplying the factual basis for the rejection
and may not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in its factual basis. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
We agree with Appellant that the Examiner has not provided
articulated reasoning with rational underpinnings for modifying Shofner's
socks with McLeod's symbols to arrive at the claimed invention without
impermissible hindsight. The Examiner does not provide an objective
reason to combine the teachings of Shofner (relating to facilitating matching
socks) with the respective teachings of McLeod (relating to an educational
card game) to arrive at the proposed modified socks of Shofner. At best, the
Examiner offers a conclusory statement only- i.e., the modification "would
provide a different indicia means" (Non-Final Act. 6), which is insufficient
to establish a prima facie case of obviousness. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness"). And the Examiner's assertion that the
modification would provide an "educational way to mate socks" does not
account for Shofner's lack of any indication that matching socks may be
educational.
In sum, the Examiner fails to establish an evidentiary basis on this
record to support a conclusion that it would have been obvious to modify
Shofner to arrive at the claimed invention. Accordingly, we do not sustain
the rejection of independent claim 1 as obvious over Shofner and McLeod.
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Application 13/946,243
For the same reasons, we do not sustain the rejection of claims 2--4 and 8
dependent thereon. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("dependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
New Ground of Rejection - unpatentable over Shofner
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new
ground of rejection with respect to claims 1--4 and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Shofner.
Appellant argues claims 1--4 and 8 as a group (see App. Br. 7-9; see
also Reply Br. 2-3). We also select independent claim 1 as being
representative of this group.
In construing representative claim 1, the recitation "for educating
children" in the preamble merely states the intended use of the claimed
apparatus and does not provide any antecedent basis for any limitation in the
body of the claim to give life and meaning to the preamble's statement of
purpose. If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely states, for
example, the purpose or intended use of the invention, rather than any
distinct definition of any of the claimed invention's limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999); see also STX LLC. v. Brine, 211F.3d588, 591
(Fed. Cir. 2000) (holding that the preamble phrase "which provides
improved playing and handling characteristics" in a claim drawn to a head
for a lacrosse stick was not a claim limitation). Therefore, we conclude that
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the recitation of the intended use or purpose ("for educating children") of the
claimed apparatus in the preamble of claim 1 does not meaningfully limit the
claim and is not afforded patentable weight.
Turning to the recitations in the body of claim 1, Appellant does not
dispute that Shofner discloses the claim 1 limitations of "a plurality of pairs
of socks ... "and "a plurality of symbol pairs ... " (see App. Br. 7-9); (cf
Non-Final Act. 5---6). The distinguishing feature, according to Appellant, is
the claim 1 limitation of "the second symbols are non-identical to the first
symbols, the second symbols corresponding to the first symbols such that a
first symbol of a symbol pair comprises an expression in a first form and a
second symbol of the symbol pair comprises a matching expression in a
different form." (App. Br. 10, Claims Appendix).
We determine that claim 1, when considered as a whole, merely calls
for a pair of socks that displays information intended for human perception.
The recited "second symbols are non-identical to the first symbols, the
second symbols corresponding to the first symbols such that a first symbol
of a symbol pair comprises an expression in a first form and a second
symbol of the symbol pair comprises a matching expression in a different
form" represents information we construe as nonfunctional descriptive
material. "[O]ur reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art." Ex parte Herman Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), affd, 191 Fed. Appx. 959 (Fed. Cir.
2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when descriptive
material is not functionally related to the substrate, the descriptive material
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"will not distinguish the invention from the prior art in terms of
patentability"); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new
and unobvious functional relationship between the printed matter and the
substrate."') (Citations omitted).
Here, we do not see any functional relationship between the symbol
pairs (printed matter) and the corresponding substrate (pairs of socks) of
claim 1. The Specification discloses that the claimed symbol pairs are
applied to the pairs of socks via decals such as "heat transfers, patches,
buttons, and the like" (Spec. i-f 34). In other words, symbols are applied to
socks in the same way regardless of the content of any particular symbol.
Moreover, the relationship between the first and second symbols of a symbol
pair as being "non-identical" and "a matching expression in a different
form" (claim 1) is useful and intelligible only to the human mind. As
described in Appellant's Specification:
The symbols 106 and 108 are not the same, but are associated
with one another (in this case, comprising two different ways of
representing the same mathematical concept) such that a user
looking to pair the socks will, by observing the symbols 106 and
108, and understanding the relationship there between, recognize
that the socks 102 and 104 are designed to be paired.
(Id. at i-f 32 (emphasis added)); id. at i-f 28 ("The symbols may have a
relationship that is educational to a child. A child understanding the
relationship can then match the clothing accordingly."). See In re Lowry,
32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful
and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969)). Consequently, the disputed limitation represents
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nonfunctional descriptive material not entitled to patentable weight, thus
failing to distinguish the claimed invention from the prior art in terms of
patentability. Indeed, giving patentable weight to such relationships
between the claimed symbols would mean that each novel pair of symbols
that is applied to a pair of socks is sufficient to warrant a separate patent,
even if the remainder of the invention is unchanged.
As a result, we newly reject claims 1--4 and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Shofner.
DECISION
The Examiner's rejection under 35 U.S.C. § 103(a) is reversed.
Claims 1--4 and 8 are newly rejected as unpatentable over Shofner.
NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Thus, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, Appellant must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the newly rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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