Ex Parte Hart

Patent Trial and Appeal Board

Feb 28, 2019

15226861 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/226,861 08/02/2016
123519 7590 03/01/2019
Law Office of J. Steven Svoboda
1312B Mallard Drive
Richmond, CA 94801
FIRST NAMED INVENTOR
Mike Hart
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.
HART-1001 5200
EXAMINER
LAYNO, BENJAMIN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/01/2019 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 MIKE HART 1
Appeal2018-006880
Application 15/226,861
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1--4, 8, 9, and 11-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Application Data Sheet submitted August 2, 2016, the
Applicant is Sierra Industrial Group, LLC (hereinafter "Appellant"). The
Appeal Brief states that "[ t ]he real party in interest is the applicant and
inventor ... Mike Hart." Appeal Br. 3.
Appeal2018-006880
Application 15/226,861
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus, comprising:
a set of playing card cups, wherein each playing card cup
comprises exactly one image of a specific playing card selected
from one of a standard deck of 52 playing cards, a first joker
playing card cup, and a second joker playing card cup, wherein
the second joker is different from the first joker, so as to
elegantly and easily identify the cup's user, wherein at least one
playing card image is usable in a playing card game.
REJECTIONS
I. Claims 1-3, 8, 9, 14--16, and 20 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated byNemeroff (US 5,301,802, iss. Apr.
12, 1994).
II. Claims 4, 11-13, 17, and 18 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Nemeroff.
III. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable
overNemeroffandPeirce (US 496,131, iss. Apr. 25, 1893).
DISCUSSION
Rejection I
The Examiner finds that N emeroff discloses, in relevant part,
a set of cups 14, wherein each cup comprises a number 20, 22.
N emeroff recites "[ w ]here numerical indicia are used, the
indicia for the respective cups are ideally and preferably a
sequential series (i.e., '1 ', '2 ', '3 ', etc.) without repetition[].
Thus, each of the cups 14 has its own unique indicia which
serves to distinguish it from every other cup 14 in the container
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Appeal2018-006880
Application 15/226,861
12", col. [2], lines 63-68. Thus, the number 20, 22 on each of
Nemeroffs cups elegantly and easily identifies the cup's user.
Final Act. 3 (boldface omitted). The Examiner determines that the claim
language specifying that the image on each cup is a specific playing card is a
printed matter recitation that does not patentably distinguish the claimed
invention from Nemeroff's numbers. Id. at 3-5. In particular, the Examiner
explains that
there is no new and unobvious functional relationship between
the claimed "cup" and the claimed printed matter in question
"exactly one image of a specific playing card selected from one
of a standard deck of 52 playing cards" printed on it. The
claimed "cup" merely serves the same purpose as Nemeroff s
cup, namely, it provides a substrate to support ... the indicia
such that the indicia can be displayed for elegantly and easily
identifying the cup's user.
Id. at 4 (boldface and underlining omitted). The Examiner also determines
that the recitation in claim 1 that "at least one playing card image is usable in
a playing card game" is directed to intended use. Id. at 5---6. The Examiner
finds that "Nemeroff's cups and numbers (i.e.[,] '1 ', '2', '3', etc.) on the
cups are capable of being used to play card games." Id. at 6 (boldface and
underlining omitted).
Appellant argues that "the current application provides a new and
unobvious functional relationship between the printed matter and the other
elements of the invention." Appeal Br. 9. In particular, Appellant asserts
that "the same playing card cup image both identifies the cup's user and is
usable in the playing card game." Id. According to Appellant, the claimed
invention is usable in a playing card game, whereas Nemeroff's numbers
"are not usable in most playing card games." Id. at 10. We are not
persuaded by Appellant's arguments.
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Appeal2018-006880
Application 15/226,861
Here, the particular content of the image (i.e., a specific playing card)
is not functionally related to the substrate (i.e., the cup) and, thus, will not
distinguish the claimed invention from the prior art in terms of patentability.
"[W]here 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." See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004))
(quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). As pointed
out by the Examiner, the particular indicia on the cup does not alter its
function or purpose relative to Nemeroff's cup. See Ans. 8 (explaining that
"[t]he claimed 'cup' merely serves the same purpose as Nemeroff's cup,
namely, it provides a substrate to support ... the indicia" (boldface
omitted)). In other words, the substance of the indicia on the cup cannot
impart patentability, as it is "'useful and intelligible only to the human
mind."' See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Moreover, Appellant does
not persuasively refute the Examiner's position that Nemeroff s numbered
cups are capable of being used in playing card games. Appellant's statement
that Nemeroff s numbered cups "are not usable in most playing card games"
(Appeal Br. 10 (emphasis added)) appears to acknowledge that the
numbered cups ofNemeroff are usable in at least some playing card games.
For the above reasons, Appellant does not apprise us of error in the
Examiner's finding that Nemeroff anticipates the subject matter of claim 1.
Accordingly, we sustain the rejection of claim 1, and of its dependent claims
2, 3, 8, 9, 14--16, and 20, for which Appellant relies on the same argument
(see id. at 13) under 35 U.S.C. § 102(a)(l) as anticipated byNemeroff.
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Appeal2018-006880
Application 15/226,861
Rejections II and III
In contesting the rejections of dependent claims 4, 11-13, and 17-19,
Appellant relies solely on the argument presented for base claim 1. See
Appeal Br. 13. For the reasons discussed above, Appellant's argument fails
to apprise us of error in the rejection of claim 1, and, likewise, fails to
apprise us of error in the rejections of claims 4, 11-13, and 17-19.
Accordingly, we sustain the rejections of claims 4, 11-13, and 17-19 under
35 U.S.C. § 103.
DECISION
The Examiner's decision rejecting claims 1--4, 8, 9, and 11-20 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)(l )(iv).
AFFIRMED
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