Ex Parte McDonnell et al

Patent Trial and Appeal Board

Mar 25, 2015

11259691 (P.T.A.B. Mar. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES THOMAS EDWARD MCDONNELL and
DAVID NEIL SLATTER
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Appeal 2012-008826
1

Application 11/259,691
Technology Center 3600
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Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1–3, 5–12, 19, and
29–36. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6.
The invention relates generally “to the field of exchanging personal
information.” (Spec. 1, ll. 5–6).

1
The Appellants identify the Hewlett-Packard Development Company, LP,
as the real party in interest. (App. Br. 3).
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2
Claim 1 is illustrative:
1. A method of updating a memory of a device with data
stored in a memory of a tag, the tag associated with a business
or calling card, the method comprising:
writing data read from the tag memory to the device
memory; and
writing data to the tag memory indicative of a history of
interaction between the card and the device comprising at least
one of the following: a number of times the tag memory has
been queried by the device, an amount of data communicated
between the tag memory and the device, and a type of data
communicated between the tag memory and the device.
Claims 1–3, 5–12, 19, and 29–36 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Desai (US 5,493,105, iss. Feb. 20, 1996) and
Borovoy (US 2004/0189476 A1, pub. Sept. 30, 2004).
We AFFIRM.

ANALYSIS
Claim 1
We are not persuaded by Appellants’ argument that Borovoy fails to
disclose any “one of the” three specific types of data that may be written to a
memory required by independent claim 1. (App. Br. 9–10, Reply Br. 1–3).
Borovoy discloses “when the display unit is worn by its wearer, the interface
and the display face in a direction of the desired substantially unidirectional
communication, so as to make electronic communication between tags. In
this configuration, the two tags can exchange data . . . .” (Para. 6). Borovoy
also discloses “[t]ags can make calculations about people based on the
number of face-to-face interactions they have.” (Para. 53). From these two
disclosures, we infer that Borovoy writes to memory information recording
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the number of interactions of the tag with other tags, and in this way meets
the claim language of “writing data to the tag memory indicative of a history
of interaction between the card and the device comprising at least one of the
following: a number of times the tag memory has been queried by the
device.” (Ans. 10).
For this reason, we sustain the rejection of claim 1.

Claim 19
Independent claim 19 recites a system with code executed to cause a
processor to perform steps substantially identical to those of claim 1.
Appellants argue Borovoy discloses it monitors an elapsed time a tag has
spent with another tag or a time a tag has passed a reader, but fails to
disclose any one of the three specific types of data claimed as being written
to memory. (App. Br. 14–15, Reply Br. 1–3). We sustain the rejection of
claim 19 for the same reasons set forth above at claim 1.

Claims 5, 9, and 31
Dependent claim 5 recites “wherein the data relating to a history of
interaction of the card and the device is metadata representing at least a time
and date when the card was distributed or received.” Dependent claim 9
recites “wherein data written to the tag memory comprises metadata relating
to at least one of: distribution of the card and receipt of the card.”
Dependent claim 31, which depends from independent claim 19, recites
language substantially identical to claim 5.
Appellants argue that Desai discloses recording a date and time of a
recorded record, but does not disclose recording a time or date of receipt or
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distribution of the card itself, and that the two data elements are not
equivalent. (App. Br. 11–13, Reply Br. 4). Appellants thus attempt to
distinguish the claim based on data recorded in a tag, to which they give a
particular significance. We are asked to decide whether Desai discloses the
specific data claimed. However, the data, as essentially printed matter, must
be examined to see if it has a functional relationship to the underlying
substrate method.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. 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 will not distinguish the invention from the prior art in
terms of patentability). King Pharms., 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.’”) (Internal citations omitted).
The content of the specific data does not affect the claimed method,
which merely requires the data be written to memory. Desai discloses, as set
forth above, writing a variety of data elements to “tag memory,” but no
record of the time or date of receipt or distribution of the tag is disclosed as
being written to the tag memory. The content of the tag memory has no
functional impact on elements of claim 1, or of its dependent claims, which
write the data to memory, but do not utilize data within the scope of claims
1–3 and 5–10. The written data does not affect any claimed function in the
claim because no step relies on the specific content, meaning, or significance
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of the data beyond that the data is written to memory. Moreover, even if
functional, the written data differs from the prior art only in the assigned
significance of the data, which is not a patentable distinction. As a result,
Appellants’ claimed data does not distinguish the claimed invention from the
prior art.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai. Thus, adding instructions to a kit that describe a
method of using it does not make the kit patentable over the same kit with a
different set of instructions. There are cases in which the descriptive
material can form a functional relationship with the underlying substrate.
For example, in In re Miller, 418 F.2d 1392 (CCPA 1969), the addition of
printed matter to the outside of a cup permitted an otherwise ordinary cup to
be used like a measuring cup to half recipes. The printed matter in Miller
served as a computing or mathematical recipe conversion device permitting
a cook to perform calculations automatically with no further thought. The
claims before us, however, are more like the claims in Ngai than Miller. The
fact that the claimed reports provide a specific arrangement of content does
not change the claimed program code that generates the report. It merely
describes a new, non-functional feature for a system that already exists.
To agree with Appellants’ reasoning would mean that each potentially
novel report type is sufficient to warrant a separate patent even if the
remainder of the invention is unchanged. This would result in Appellants’
content of reports distinguishing over the prior art, as would every single
unique report. To give effect to Appellants’ argument, we would need to
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ignore our reviewing court’s concerns with repeated patenting. We decline
to do so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharms., 616 F.3d at 1267 (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.”) Cf. In re Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”).
We agree with the Examiner that the prior art renders obvious claims
5, 9, and 31, because the cited art teaches or suggests each and every
functional limitation of the claim. Any argued difference between the prior
art and the claimed invention is simply a substitution of one piece of non-
functional descriptive material (a particular item of data written to memory)
for another piece of non-functional descriptive material (a different item of
data written to memory), which does not change the functioning of the
“writing data to the tag memory.” Therefore, we sustain the Examiner's
rejection of claims 5, 9, and 31.

Claims 7 and 33
Dependent claim 7 recites “wherein data written to the tag memory
comprises an annotation by at least one of a card provider and a card
receiver relating to at least one of: distribution of the card and receipt of the
card.” Dependent claim 33 recites substantially identical language.
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Appellants argue Desai fails to disclose an annotation made by the
user pertaining to a distribution of the card or a receipt of the card. (App.
Br. 13–14, Reply Br. 5). Appellants thus attempt to distinguish the claims
on the basis of specific data written to memory, but not otherwise used. We
sustain the rejection of claims 7 and 33 under the same rationale set forth
above as to claims 5, 9, and 31.

Claims 2, 3, 6, 8, 10–12, 29, 30, 32, and 34–36
Appellants do not present arguments directed to these claims, nor do
Appellants list these finally rejected claims as being presented for appeal.
(App. Br. 5). Therefore, we summarily sustain the rejection of these claims
under 35 U.S.C. § 103(a). In the event of further prosecution, the Examiner
should cancel claims 2, 3, 6, 8, 10–12, 29, 30, 32, and 34–36. See Ex parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).

DECISION
We AFFIRM the rejection of claims 1–3, 5–12, 19, and 29–36 under
35 U.S.C. § 103(a) as unpatentable over Desai and Borovoy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
hh