Ex Parte LoRusso

Board of Patent Appeals and Interferences

Jun 11, 2009

11079972 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LANCE J. LORUSSO
____________

Appeal 2009-000045
Application 11/079,972
Technology Center 3600
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Decided:1 June 12, 2009
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Lance J. LoRusso (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-20. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a bracelet. The bracelet
has a substantially smooth portion 110 and a humorous writing 120 written
on the substantially smooth portion 110. Specification, para. 21, fig. 1A.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A bracelet comprising:
a substantially-smooth portion; and
a humorous writing on the substantially-
smooth portion of the bracelet.

The Rejections
Appellant seeks review of the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 1-20 as being unpatentable over U.S. Patent 4,199,882 to
Clayman (Apr. 29, 1980).

SUMMARY OF DECISION
We AFFIRM.

ISSUE
Appellant argues that, in independent claim 1, the Examiner failed to
give appropriate weight to the "humorous" aspect of the "humorous writing"
limitation. Appeal Br. 19-22. For claim 15, Appellant repeats the
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arguments for claim 1 (App. Br. 23-25), and separately points out that claim
15 is a method, and argues that the Examiner's rejection relying on Clayman
does not address the method aspect of claim 15 (App. Br. 25). Appellant
argues claims 2, 6, 7, and 16 as a group, arguing that the Examiner has failed
to give proper official notice in rejecting these claims. App. Br. 28-29.
Because Appellant argues these claims in a group using the same rationale,
we select claim 2 as the representative claim. Claims 3, 4, 5, 17, and 18 are
argued by Appellant as a second group using a similar argument as for
claims 2, 6, 7, and 16. App. Br. 30-31. Because Appellant argues these
claims in a group using the same rationale, we select claim 4 as the
representative claim. Appellant separately presents claims 8, 9, and 19 but
provides no additional arguments for these claims. App. Br. 32. Thus, they
stand or fall with the independent claim from which they depend.
The issues presented in this appeal are:
(1) Has the Appellant demonstrated that the Examiner failed to give
appropriate patentable weight to the "humorous writing" limitation in
claim 1? The issue turns on whether the "humorous writing"
limitation is functionally related to the bracelet.
(2) Has the Appellant demonstrated that the Examiner failed to properly
address method claim 15?
(3) Has the Appellant demonstrated that the Examiner failed to provide a
prima facie case of obviousness of claim 2, under a theory that the
Examiner failed to properly take official notice?
(4) Has the Appellant demonstrated that the Examiner failed to provide a
prima facie case of obviousness of claim 3, under a theory that the
Examiner failed to properly take official notice?
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FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Clayman describes a hospital identification wrist band. Upon a
patient's admission into a hospital, flat wrist band A is provided to the
patient. Col. 2, ll. 43-52, figs. 1, 4. The wrist band has flat
identification tags C and Ca that are "filled in" with the patient's
information and then inserted into covers 12 and 42, respectively, of
the band. Id.
FF2 Clayman depicts identification tags C and Ca as having several pre-
printed fields for filling in the requested information, such as name,
address, blood type, etc. Figs 1, 3, 4.
FF3 Clayman describes that "identification tag C is filled in." Col. 2, l. 45.
Thus, Clayman describes that the blank fields (see FF2) are populated
with the appropriate corresponding information.
FF4 One of ordinary skill in the art would understand "filling in" blank
fields (see FF3) to mean writing, typing, or any other suitable form of
inscription.
FF5 Clayman describes supplying, that is, providing, a patient with a band
upon admission to a hospital. Clayman also describes filing in, that is,
placing a writing on, the identification tag C which is made part of the
band. (FF1, FF2, FF3, FF4). Fig. 2 depicts the identification tag C as
having a substantially-smooth surface.

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PRINCIPLES OF LAW
In dealing with printed matter, "the critical question is whether there
exists any new and unobvious functional relationship between the printed
matter and the substrate." In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983). "Where 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." In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).

ANALYSIS
Issue (1) - Functional relationship of "humorous writing" to a bracelet
The Examiner found that Clayman describes a bracelet with a
substantially smooth portion with writing thereon, as recited in claim 1.
Ans. 3-4, see FF1. The Examiner found that the content of the writing on
the bracelet is not functional and cannot be relied on to distinguish the claim
from the prior art. Ans. 4. The Appellant argues that the writing in claim 1
is functional because its function is "to convey humorous messages" (App.
Br. 19), given the "jarring contrast" between the humorous message and the
bracelet (App. Br. 17). Next, the Appellant argues that Clayman teaches
away from the use of humorous writings because Clayman deals with
"serious writings." App. Br. 21.
In dealing with printed matter, "the critical question is whether there
exists any new and unobvious functional relationship between the printed
matter and the substrate." Gulack, 703 F.2d at 1386. In the present claims,
the purpose of the printed matter on the smooth portion of the bracelet is to
display information usable to the reader. As more fully discussed below, the
particular printed matter (the "humorous writings") does not depend on the
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structure of the bracelet or transform the bracelet into something other than a
bracelet, and the bracelet's structural elements do not depend on the
particular printed matter. See Ngai, 367 F.3d at 1339 ("[T]he printed matter
in no way depends on the kit, and the kit does not depend on the printed
matter."). Thus, the "humorous writings" are not functionally related to the
bracelet (the substrate).
The Structure of the Bracelet Does Not Depend on the Printed Matter
Appellant does not contend that the structure required by the claims is
different than the structure described in Clayman. The structure by which
the information is provided is the same in both the present claims and
Clayman: writing on a smooth portion of a bracelet. See FF1. The bracelet's
structure does not rely on the content of the message written thereon because
a bracelet that displays information written on it displays that information,
no matter what is written on it. In either humorous or serious use, the
structure of the bracelet is the same. Thus, the claimed structural features
are old.
The Printed Matter Does Not Depend on the Structure of the Bracelet
Appellant argues that the "function" of the printed matter in Clayman
is to convey "serious" information, not to convey the claimed "humorous"
information. See e.g. App. Br. 21. However, Appellant's arguments confuse
the function of the printed matter with the purpose of the printed matter.
The purpose behind providing the information does not create a functional
relationship between the information and the medium on which it is
presented because it does not affect the relationship between the printed
matter and the structural substrate. Claiming a "humorous" message versus
a "serious" message does not impart a patentable distinction because the
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difference 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)).
Appellant next argues that the humorous message "exploits" the
serious nature of the substrate. App. Br. 17. However, what is claimed is a
bracelet. There is nothing "serious" about a bracelet to exploit. Even if
Appellant limited the claim to a bracelet shaped like a medical bracelet, and
the humorous writing were limited to a message humorously contrasting the
intended purpose of a medical bracelet, the relationship remains one of
message and display. The printed matter doesn't rely on the structure of the
medical bracelet because the humorous message can be effectively displayed
on a different medium, such as a t-shirt or ball cap. For example, medical
bracelets often contain allergy information. A humorous allergy could be
"Allergic to Work." However, this message is conveyed if it is located on a
fake medical bracelet or on a t-shirt. The message does not require the
bracelet because the message could be written anywhere. Thus the message
is not functionally related to the bracelet. Humorous messages printed on
commonplace items do not render those commonplace items patentable.
Appellant finally argues that Clayman's "serious" nature teaches away
from the use of "humorous" printed material on a bracelet. App. Br. 21.
However, as shown above, the message being humorous or serious is not
functionally related to the substrate. Therefore, whether the message is
humorous or serious in this case is irrelevant to patentability. Further, we
find no passage in Clayman that criticizes, discredits, or otherwise
discourages any alternative writings on the identification tag, such as
humorous names. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
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("mere disclosure of alternative designs does not teach away"). Indeed,
many real names are considered humorous to people, such that names could
be serious and humorous at the same time.

Issue (2) - Method of claim 15
The Examiner found that Clayman describes providing a bracelet
having a substantially smooth portion and then placing a writing on the
substantially-smooth surface, as recited in claim 15. Ans. 5-6, see FF1, FF4,
FF5. Appellant argues that the Examiner has failed to provide a reference
for the method in claim 15. App. Br. 25. However, the Examiner clearly
rejected claim 15 using Clayman. Ans. 5-6. Further, it is clear that Clayman
explicitly describes supplying a patient with a band A and an identification
tag C that is filled in with identification indicia. FF1, FF3, FF4, FF5.
Appellant provides no actual argument as to how this prima facie case of
obviousness is deficient. Therefore, we find no error in the Examiner's
action.

Issue (3) - Claims 2, 6, 7, and 16
The Examiner found that Clayman describes a writing inscribed onto
identification tag C of the bracelet, as recited in claim 2. Ans. 4. We agree.
See FF3, FF4. Appellant contends that the Examiner improperly took
official notice of this claim limitation. App. Br. 28. Although Appellant
appears to quote the Examiner taking official notice, Appellant does not
indicate where the Examiner purportedly wrote this quoted passage, nor is
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this passage found in any rejection before us. 2 In fact, the Examiner denies
taking official notice in support of the rejection before us. Ans. 11.
Appellant's argument regarding improper Official notice is not found
persuasive because no such official notice was taken.

Issue (4) - Claims 3, 4, 5, 17, and 18
The Examiner found that Clayman describes a writing written onto the
substantially smooth portion of bracelet, as recited in claim 4. Ans. 4. We
agree. See FF3, FF4. Appellant argues that the Examiner improperly took
official notice. App. Br. 30. However, as noted in our discussion of Issue
(3) above, the Examiner did not take official notice, and this argument is not
persuasive.

CONCLUSION
Appellant's arguments fail to persuade us that the Examiner erred in
rejecting claims 1-20 as unpatentable under 35 U.S.C. § 103(a) over
Clayman. We determine that claim 1 does not recite a functional
relationship between the claimed bracelet and writing that is new and
unobvious in view of Clayman. Further, we find that Clayman describes
both the structure of the bracelet with writing, and a method using the
bracelet and writing thereon. Finally, we find that Clayman describes both
inscribing and writing on a substantially smooth portion of the bracelet.

2 The Appellant appears to quote the Examiner taking official notice on page
4 of a Non-Final Rejection mailed September 19, 2005. That Rejection
rejected claims 1-20 under 35 U.S.C. § 102(b) as anticipated by Clayman.
The rejection of claims 1-20 under § 102(b) has been withdrawn and is not
before us in this appeal.
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DECISION
The Examiner's decision is affirmed as to claims 1-20.

AFFIRMED

LV

SAM S. HAN, PH.D.
330 Bloombridge Way, NW
Marietta, GA 30066