Ex Parte Hester et al

Patent Trial and Appeal Board

Nov 25, 2013

12359521 (P.T.A.B. Nov. 25, 2013)

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.
12/359,521 01/26/2009 Pam HESTER 1702.012.12 4572
64935 7590 11/26/2013
TILLMAN WRIGHT, PLLC
P.O. BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
11/26/2013 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 PAM HESTER, DEBORAH H. MANCE,
IAN D. KOVACEVICH, MARY LAVALLEY,
DANIEL LEE BIZZELL, TOM PHILPOTT,
and BARRY HESTER
____________

Appeal 2012-000394
Application 12/359,521
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN
STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000394
Application 12/359,521

2
STATEMENT OF THE CASE
Pam Hester, Deborah H. Mance, Ian D. Kovacevich, Mary LaValley,
Daniel Lee Bizzell, Tom Philpott, and Barry Hester (Appellants) seek our
review under 35 U.S.C. § 134(a) of the rejection of claims 34-38 and 40-45.
Claims 1-33 and 39 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
REAL PARTY IN INTEREST
Edison Nation, LLC, a limited liability company organized under the
laws of the State of North Carolina has been identified in the Appellants’
Appeal Brief as the real party in interest of the present application.
Assignments of the present application to Edison Nation, LLC have been
recorded at Reel 018901 Frame 0693 and Reel 021824 Frame 0014.
RELATED APPEALS
The Examiner has identified Application Serial No. 11/425,139,
currently on appeal under Appeal No. 2012-000186, as a related appeal
which may be related to, directly affect or be directly affected by or have a
bearing on, the Board’s decision in the present appeal. The present
application is a continuation of and claims priority to Application Serial No.
11/425,139. Appellants did not identify 11/425,139 as a related case to the
present appeal. However, in the co-pending appeal of 11/425,139,
Appellants identified this appeal as a related case.

Appeal 2012-000394
Application 12/359,521

3
THE INVENTION
Appellants’ invention is directed to a method and apparatus for
securing an arrangement of loose elements of a scrapbooking page in a
particular arrangement on the scrapbooking page utilizing magnetic forces.
Independent claim 34, reproduced below, is representative of the claimed
subject matter:
34. A method for arranging and storing a page or
presentation that is in progress comprising the
steps of:

placing a scrapbook page on a magnetic substrate,
wherein the magnetic substrate is sized to receive
the scrapbook page;

arranging at least one page-element onto the
scrapbook page to create a design; and

placing a magnet onto the at least one page-
element to hold the at least one page-element
in place.

THE REJECTION
Appellants appeal from the rejection of claims 34-38 and 40-45 under
35 U.S.C. § 103(a) as being unpatentable over Sleeper (US 4,484,745, issued
November 27, 1984) in view of Smith (US 2005/0093233 A1, published
May 5, 2005).

ANALYSIS
Claims 34-38 and 40-45--Obviousness--Sleeper and Smith
Appellants argue claims 34-38 and 40-45 stand or fall together as a
group, with claim 34 being representative of this grouping. Appeal Br. 7.
Appeal 2012-000394
Application 12/359,521

4
Due to differences in the scope of the claims, we accept claim 34 as being
representative of claims 34-37, and therefore, claims 35-37 will stand or fall
with claim 34. We consider claims 38 and 40-45 separately below.
Independent claim 34 recites a method for arranging and storing a
page or presentation that is in progress comprising the steps of placing a
scrapbook page on a magnetic surface, arranging at least one page-element
onto the scrapbook page, and placing a magnet onto the at least one-page
element to hold said element in place.
According to the Examiner, Sleeper teaches a method for arranging
and storing a page/presentation comprising the steps of:
i) placing an object (base of jigsaw puzzle pieces) on a
magnetic substrate…, wherein the magnetic substrate is sized to
receive the object…; ii) arranging at least one page-element
onto the object (pieces of jigsaw puzzle, which are arranged and
attached onto other pieces of the jigsaw puzzle)…; and iii)
placing a magnet (note that a plurality of magnetic pieces are
disposed within the flexible magnetic cover 16) onto the at least
one page-element (see fig. 1, showing flexible cover disposed
atop the at least one “page-element” jigsaw puzzle pieces) to
hold the at least one page-element in place.
Ans. 5.
Claim 34 recites limitations wherein the elements utilized in the
method are arranged “onto” a scrapbook page and a page-element. While
the Examiner acknowledges that Sleeper fails to disclose the inclusion of an
object in the form of a scrapbook page, Smith is relied on as teaching the
concept of providing an object, i.e., a life puzzle, designed to receive
elements “thereon” in the form of a scrapbook page. Ans. 5-6. According to
the Examiner, Smith teaches a life event memorializing system in the form
of a puzzle, creating a graphical representation in much the same manner as
Appeal 2012-000394
Application 12/359,521

5
a scrapbook page, with a frame composed of border and corner puzzle pieces
(collectively referred to herein as “border pieces”) forming a template
“onto” which additional inner “central” pieces are to be added. Id.
Specifically, the Examiner maintains that the border puzzle pieces serve as a
scrapbook page that chronicles a person’s life events and to which various
central puzzle pieces or “page-elements” can be attached. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art to replace the Sleeper puzzle with the Smith life puzzle in order to
provide a graphic display system for displaying various life events as taught
by Smith. Ans. 6.
Appellants argue it is “nonsensical” to characterize the border puzzle
pieces in Smith as a scrapbook page because Smith fails to disclose or
suggest the use of a scrapbook page. App. Br. 9. And, according to
Appellants, even assuming that the border pieces could be so characterized,
Smith does not disclose receiving the central pieces “thereon” as maintained
by the Examiner. Id. Instead, the central pieces are merely secured next to,
rather than placed “on top of” the border pieces as shown below in Figure 2
of Smith. Id.
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Appeal 2012-000394
Application 12/359,521

7
Rather, Smith discloses that the “central” puzzle pieces are “connected to”
the puzzle. Smith, Abstract and p. 1, para. [0009].
More importantly, the Examiner inconsistently interprets the term
“onto” in the two instances where it is used in claim 34. Claim 34 calls for
arranging at least one page-element “onto” the object (i.e., scrapbook page)
and placing a magnet “onto” the at least one page-element. In applying
Smith to Appellants’ invention, the Examiner urges that the claimed step of
“arranging at least one page-element onto the object” is met by the
“arrange[ment] and attach[ment]” of pieces of the jigsaw puzzle “onto other
pieces of the jigsaw puzzle . . . .” Ans. 5. In this instance, the Examiner
interprets the term “onto” to describe the manner in which traditional puzzle
pieces are attached. The Examiner equates the subsequent claim language
“placing a magnet onto the at least one page-element” to Smith’s disclosure
of a “flexible cover disposed atop the at least one ‘page-element’ jigsaw
puzzle pieces.” Id. (emphasis added). Thus, in the first instance, the
Examiner interprets the term “onto” to mean “attached next to.” In the
second instance, however, the term “onto” is interpreted to mean “place on
top of.” The presumption is that the same terms appearing in different
portions of the claims should be given the same meaning unless it is clear
from the specification and prosecution history that the terms have different
meanings at different portions of the claims. Fin Control Sys. Pty, Ltd. v.
OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001).
Because Appellants utilized the term “onto” in claim 34 to describe
the placement of both the page-elements relative to the scrapbook page and
the magnet relative to the page-element, we find that a reasonable
construction of the claim would apply the same meaning to the word “onto”
Appeal 2012-000394
Application 12/359,521

8
in both instances. Only the second meaning assigned by the Examiner, i.e.,
“place on top of,” could apply to the placement of the magnet onto the
element to hold the element in place. This meaning is thus also applicable to
“arranging at least one page-element onto the scrapbook page.”
Accordingly, we find Appellants’ claim 34 calls for the at least one page-
elements to be placed on top of the scrapbook page. In view thereof, the
Examiner erred in finding that Smith teaches the placement of elements
arranged onto a scrapbook page.
In view of the foregoing, we find that the Examiner’s rejection of
claims 34-37 is lacking in sufficient rational underpinnings and therefore,
the rejection is not sustained.
We now consider the rejection of independent claims 38 and 45 based
on Sleeper in view of Smith. Unlike method claim 34, claims 38 and 45 are
directed to articles and do not recite positive limitations pertaining to a
scrapbook page1 nor to the placement of at least one page-element “onto” a
scrapbook page or placing a magnet “onto” the at least one page-element.
Inasmuch as Appellants’ arguments are directed to the arrangement of a
page-element “onto the scrapbook page,” App. Br. 7, their arguments are not
commensurate with the scope of claims 38 and 45. Appellants’ arguments
thus fail to apprise us of error in the Examiner’s position, and the rejection
of claims 38 and 45 under § 103 is sustained. Based on the foregoing and
the grounds set forth in the Final Office Action of July 19, 2010, the

1 We view recitations such as “sized to receive a scrapbook page” and “used
to hold the scrapbook page and at least one page element in an arranged
position on the scrapbook page” found in claim 38, and similar recitations in
claim 45, to be statements of intended use that are not entitled to patentable
weight.
Appeal 2012-000394
Application 12/359,521

9
rejection of claims 40-44 which depend from claim 38 over Sleeper in view
of Smith is also sustained.
Because this affirmance of the § 103 rejection directed to claims 38
and 40-45 is based upon a different construction of claims 38 and 45, we
denominate the affirmance at to claims 38 and 40-45 as a NEW GROUND
OF REJECTION under 37 C.F.R. § 41.50(b).
NEW GROUND OF REJECTION
In addition, we make the following new ground of rejection pursuant
to our authority under 37 C.F.R. § 41.50(b). Claims 38 and 40-45 are
rejected under 35 U.S.C. § 102(b) as being anticipated by Sleeper.
Notwithstanding that Appellants amended claim 38 to reference that the
magnetic substrate is “sized to receive a scrapbook page,” and the magnet is
used “to hold the scrapbook page,” and the fact that the Examiner apparently
treated the “scrapbook page” as a positive limitation, the scrapbook page is
not recited as a positive limitation in amended claim 38. Language in an
apparatus claim directed to the function, operation, intent-of-use, and
materials upon which these apparatus components work, that does not
structurally limit the apparatus components or patentably differentiate the
claimed apparatus from an otherwise identical prior art apparatus, will not
support patentability. See, e.g., In re Yanush, 477 F.2d 958, 959 (CCPA
1973); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Rishoi, 197
F.2d 342, 344-45 (CCPA 1952).
Considering claim 38 in view of the foregoing, we note that it is
drawn to the structural features of Appellants’ article alone. In other words,
while the article as recited in the claim includes certain structural features,
e.g., a magnetic substrate (sized to receive a scrapbook page); and a magnet
Appeal 2012-000394
Application 12/359,521

10
(used to hold the scrapbook page), the scrapbook pages themselves are not
part of Appellants’ claimed invention.
Sleeper discloses an article for arranging and storing a page
comprising a magnetic substrate and magnet as recited in claim 38.
Therefore, Sleeper anticipates the article recited in claim 38. Based on the
grounds set forth in the Final Office Action of July 19, 2010, Sleeper also
anticipates the articles recited in claims 40-44 which depend from claim 38.
Sleeper also anticipates the article for arranging and storing a
scrapbook page recited in claim 45. For the same reason as set forth above
with respect to claim 38, the scrapbook page is not recited as a positive
limitation in claim 45. Specific to the structural limitations that are
positively recited, Sleeper discloses an article having a portable container
(generally at reference numerals 14, 20), a magnetic base (12) within the
portable container, a magnet and cover sheet (magnetic flexible cover sheet
(16)), with the magnetic base portion and magnetic cover sheet being
together capable of holding elements therebetween. Sleeper, figs. 1, 2; col.
1, l. 63-col. 2, l. 6; col. 2, ll. 30-57. Thus, each of the elements recited in
claim 45 are shown in Sleeper.
In view of the foregoing, we conclude that the articles defined in
claims 38 and 40-45 are anticipated by Sleeper.
DECISION
The decision of the Examiner to reject claims 34-37 under 35 U.S.C.
§ 103(a) as being unpatentable over Sleeper in view of Smith is reversed.
The decision of the Examiner to reject claims 38 and 40-45 under 35
U.S.C. § 103(a) as being unpatentable over Sleeper in view of Smith is
affirmed, but is designated as a NEW GROUND OF REJECTION.
Appeal 2012-000394
Application 12/359,521

11
A NEW GROUND OF REJECTION of claims 38 and 40-45 under
35 U.S.C. § 102(b) is entered.
As indicated above, this decision contains new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b) which provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.” This section
also provides that Appellants, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options
with respect to the new grounds of rejection to avoid termination of the
appeal as to the 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 application be reheard under
§ 41.52 by the Board upon the same record ….
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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