Ex Parte Forbes

Patent Trial and Appeal Board

Dec 22, 2014

12126196 (P.T.A.B. Dec. 22, 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.
12/126,196 05/23/2008 Brandon F. Forbes FBS-00002 5988
30853 7590 12/23/2014
WARN PARTNERS, P.C.
PO BOX 70098
ROCHESTER HILLS, MI 48307
EXAMINER
PRANGE, SHARON M
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
12/23/2014 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 BRANDON F. FORBES
____________

Appeal 2012-009677
Application 12/126,196
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brandon F. Forbes (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, 4, 6–13, 15, 17–24, and
26–32, which are all the pending claims. Appeal Br. 4. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “footwear, more specifically
footwear units having a programmable display unit for conveying
information.” Spec. ¶ 1. Claims 1, 12, and 23 are independent. Claim 1,
reproduced below with disputed limitations italicized for emphasis, is
illustrative of the subject matter on appeal.
1. A footwear arrangement comprising:
a footwear unit;
a re-programmable display having a flexible organic
light emitting diode display panel flexibly connected to said
footwear unit, wherein said re-programmable display has two or
more modes of operation for displaying personalized content on
said panel, wherein said personalized content displayed on said
re-programmable display can be changed or erased;
a controller operably connected to said re-programmable
display for controlling the display of said personalized content
on said panel and storing information on said controller.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Rubin US 2004/0187184 A1 Sept. 30, 2004
Pirilä US 6,950,516 B2 Sept. 27, 2005
Berner US 7,607,243 B2 Oct. 27, 2009

REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 6–10, 12, 13, 17–21, 23, 24, and 27–31 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Rubin.
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II. Claims 4, 15, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rubin and Pirilä.
III. Claims 11, 22, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rubin and Berner.

ANALYSIS
Rejection I
Claims 1, 2, 6–10, 12, 13, 17–21, 23, 24, and 27–31 as anticipated by Rubin
Independent Claims 1, 12, and 23
The Examiner found that Rubin discloses all of the limitations as
recited in independent claims 1, 12, and 23. Ans. 5 (citing Rubin, Fig. 2;
¶¶ 13–16, 19–21, 24, 25).
Appellant argues that “Rubin does not disclose or anticipate each and
every element of independent claims 1, 12 and 23.” Reply Br. 2; see Appeal
Br. 7–9; Reply Br. 2–5. In support of this argument, Appellant asserts that
“independent claims 1, 12 and 23 all contain the limitation of a re-
programmable display for displaying personalized content on the display
panel, where the personalized content displayed on the re-programmable
display panel can be input, changed or erased only by the user.” Appeal
Br. 7 (italicized emphasis added). Based on this assertion, Appellant
contends that “Rubin discloses the display of information on the display
panel from other persons or sources, which is not personalized content as set
forth in independent claims 1, 12 and 23 of the present application.” Appeal
Br. 8.
We are not persuaded by Appellant’s argument. Initially, we note that
Appellant’s assertion is incorrect; nothing in the independent claims requires
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the personalized content to be manipulated “only by the user.” See Appeal
Br., Claims App.; Ans. 8. The independent claims do not recite this
limitation—contrary to Appellant’s assertion—but instead only require, in
relevant part, that the personalized content displayed “can be changed or
erased,” without reciting additional specifics. Appeal Br., Claims App. As
stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998), “the name of the game is the claim.” It is well established
that limitations not appearing in the claim cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Moreover, we disagree with Appellant’s contention that information
from other persons or sources is not “personalized content” as recited in the
claims. An ordinary meaning of “personalize” is simply “to make personal
or individual,” which is consistent with use of this term within Appellant’s
Specification. See MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th ed.
2003). We find no special definition within Appellant’s Specification to
compel a different, or narrower, interpretation of the term “personalized
content” recited in the claims.1 Therefore, we agree with the Examiner that
“the fact that the information on the display is from another person or source

1 In the Reply Brief, Appellant directs us to paragraphs 25 and 26 of
Appellant’s Specification, which provide broad and expressly non-limiting
examples of possible “personal content,” but nothing in these paragraphs
indicates that the “personal content such as pictures, photos, designs,
drawings, different languages, patterns, text, graphics, slogans, colors,
phrase, shapes, numbers, logos, brand markings including trademarks,
messages and any combinations of the above” could not be programmed or
otherwise input by someone other than the user. Spec. ¶ 25; see also Ans. 8.
As but one example, we find nothing in Appellant’s Specification that would
foreclose the possibility of a parent (another person) inputting “personalized
content” for a child (the user).
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does not mean that the content is not personalized” under the requisite
broadest reasonable interpretation of the claim terms. Ans. 7–8.2
Based on this reasonable interpretation, we agree with the Examiner
that “Rubin discloses a display which displays personalized content” as
recited in the claims for the reasons discussed supra and well expressed in
the Examiner’s Answer. Ans. 7–8. Thus, Appellant has not apprised us of
error in the rejection as presented.
Accordingly, we sustain the rejection of independent claims 1, 12, and
23 under 35 U.S.C. § 102(b) as anticipated by Rubin.

Dependent Claims 2, 6–10, 13, 17–21, 24, and 27–31
With respect to the rejection of dependent claims 2, 6–10, 13, 17–21,
24, and 27–31, Appellant does not set forth any additional substantive
arguments separate from the arguments discussed supra. See Appeal Br. 9.
Accordingly, for the same reasons, we likewise sustain the rejection of
claims 2, 6–10, 13, 17–21, 24, and 27–31 under 35 U.S.C. § 102(b) as
anticipated by Rubin.

2 We note that even if Appellant’s assertion (personalized content must
be manipulated only by the user) were correct, the accompanying contention
(Rubin’s display of information is not personalized content) would remain
misplaced. Although Rubin undisputedly discloses the display of
information from other persons or sources, Appellant does not direct us to
any portion of Rubin that excludes the display of information from the user,
which is fairly encompassed within the disclosure of Rubin.
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Rejection II
Claims 4, 15, and 26 as unpatentable over Rubin and Pirilä
With respect to the rejection of claims 4, 15, and 26, Appellant first
contends that the addition of Pirilä “fails to fill the gap left by Rubin,” and
otherwise relies on the same arguments made previously with respect to
Rejection I. Appeal Br. 11; see id. at 9–11. Thus, for the same reasons
discussed in detail supra in the context of Rejection I, we are not persuaded
by Appellant’s arguments, such that Appellant has not apprised us of error in
the rejection as presented.
Appellant also argues that combining the teachings of Rubin and
Pirilä “seeks to combine non-analogous art in formulating the rejection.”
Appeal Br. 12; see id. at 12–15; Reply Br. 5–12. We are not persuaded by
Appellant’s additional argument.
We note that Appellant identifies the proper test for determining
whether prior art is analogous, namely (1) whether “the art is from the same
field of endeavor, regardless of the problem addressed,” or (2) even “if the
reference is not within the field of . . . the inventor’s endeavor, . . . whether
the reference is still reasonably pertinent to the problem with which the
inventor is involved.” Reply Br. 5 (citing In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011)). However, we disagree with Appellant’s contention that
Pirilä does not meet either criterion.
Rather, we agree with the Examiner that “the particular problem with
which [Appellant] is concerned in regard[] to claims 4, 15, and 26, is the use
of interchangeable stylized housings on a handheld electronic device,” such
as the controller as claimed. Ans. 9. The Examiner correctly notes that
“Rubin specifically states that the controller may be a cellular telephone,”
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which we agree meets the broad recitation of the controller as claimed. Id.
(citing Rubin ¶ 15). We also agree with the Examiner that—because Pirilä
“is directed to interchangeable cover members on a mobile phone, a type of
handheld electronic device,” akin to the claimed controller—this reference
has the same purpose of providing stylized housings as the claimed
invention and “therefore is pertinent to the particular problem of claims 4,
15, and 26,” sufficient to meet at least the second criterion and qualify as
analogous art. Id.; see also Innovention Toys, LLC v. MGA Entm’t, Inc., 637
F.3d 1314, 1321 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992)). Thus, Appellant has not apprised us of error in the rejection as
presented.
Accordingly, we sustain the rejection of claims 4, 15, and 26 under
35 U.S.C. § 103(a) as being unpatentable over Rubin and Pirilä.

Rejection III
Claims 11, 22, and 32 as unpatentable over Rubin and Berner
With respect to the rejection of claims 11, 22, and 32, Appellant
contends that the addition of Berner “does not fill the gaps left by Rubin,”
and otherwise relies on the same arguments made previously with respect to
Rejection I. Appeal Br. 11; see id. at 9–12. Thus, for the same reasons
discussed in detail supra in the context of Rejection I, we are not persuaded
by Appellant’s arguments, such that Appellant has not apprised us of error in
the rejection as presented.
Accordingly, we sustain the rejection of claims 11, 22, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Rubin and Berner.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 6–10, 12,
13, 17–21, 23, 24, and 27–31 under 35 U.S.C. § 102(b) as anticipated by
Rubin.
We AFFIRM the Examiner’s decision rejecting claims 4, 15, and 26
under 35 U.S.C. § 103(a) as being unpatentable over Rubin and Pirilä.
We AFFIRM the Examiner’s decision rejecting claims 11, 22, and 32
under 35 U.S.C. § 103(a) as being unpatentable over Rubin and Berner.

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).

AFFIRMED

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