Ex Parte Muller

Board of Patent Appeals and Interferences

Aug 28, 2012

11320055 (B.P.A.I. Aug. 28, 2012)

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.
11/320,055 12/28/2005 Michael Muller LOT920050147US1 (120) 7598
46321 7590 08/29/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
TAKELE, MESEKER
ART UNIT PAPER NUMBER
2141
MAIL DATE DELIVERY MODE
08/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL MULLER
____________________

Appeal 2010-005425
Application 11/320,055
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JASON V. MORGAN, and
BRYAN F. MOORE, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005425
Application 11/320,055

  2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A catalog display method comprising:
rendering a subset of catalog items for a catalog in a static
view in a catalog display; and,
further rendering in the catalog display a detailed view of
detailed information for a selected one of the subset of catalog items
in the static view.

Rejection 1
The Examiner rejected claims 1-7 under 35 U.S.C. § 102(b) as being
anticipated by Wirth (US 2003/0110100 A1).
Appellant’s Contentions as to Claim 1
1. Appellant contends that Wirth does not support a finding of
anticipation because “[i]ntegral to claim 1 is the rendering of a subset of
catalog items for a catalog in a static view in a catalog display.” (App.
Br 4).
2. Appellant also contends that Wirth does not support a finding of
anticipation because “[t]he factual determination of anticipation under 35
U.S.C. § 102 requires the identical disclosure, either explicitly or inherently,
of each element of a claimed invention in a single reference. (App. Br 4).

1 Separate patentability is not argued for claims 2-7. Except for our ultimate
decision, these claims are not discussed further herein.
Appeal 2010-005425
Application 11/320,055

  3
3. Also, Appellant contends that Wirth does not support a finding of
anticipation because:
[I]n comparing the limitation "subset of catalog items in a
catalog" to Figure 4, Examiner construes "catalog items" to
mean "catalog". Examiner's claim construction is flawed and
represents clear reversible error. Specifically, the term "catalog
items" enjoys a plain meaning of "items in a catalog". Further,
Appellant's claim language draws a direct distinction between a
"catalog" and a "catalog item" in explicitly reciting "catalog
items in a catalog". To construe "catalog items" as a "catalog"
as Examiner has done results in the nonsensical claim limitation
of "catalog in a catalog"--a construction that obliterates the
meaning of Appellant's claim 1.
(App. Br 7).

Issue on Appeal
Did the Examiner err in rejecting claim 1 as being anticipated
because Wirth fails to teach the argued features?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We disagree with Appellant’s
conclusions. We concur with the conclusion reached by the Examiner.
As to Appellant’s above contentions 1 and 2, it appears to us that the
subject matter presented in claim 1 on appeal relates to features that may
differ from the prior art solely on the basis of “non-functional descriptive
material,” which is generally not given patentable weight when determining
patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381,
1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The PTO may not disregard
claim limitations comprised of printed matter. See Gulack, 703 F.2d at
Appeal 2010-005425
Application 11/320,055

  4
1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209
USPQ 1, 10 (1981). However, the Examiner need not give patentable
weight to descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. See In re
Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed Cir. 1994); In
re Ngai, 367 F.3d 1336, 1338, 70 USPQ 1862, 1864 (Fed. Cir. 2004). See
also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
(“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”),
aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); and Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.”), aff’d No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36).
We conclude that if the prior art describes all the claimed structural
and functional relationships between the descriptive material and the
substrate, but the prior art describes a different descriptive material than the
claim, then the descriptive material is non-functional and will not be given
any patentable weight. That is, we conclude that such a scenario presents no
new and unobvious functional relationship between the descriptive material
and the substrate.
In the instant case on appeal, we find that claim 1 on appeal recites
non-functional descriptive material (catalog item) which does not provide a
patentable distinction to the data or to the process of the claimed methods.
In other words, we find that the meaning relating to facts about a displayed
item and/or details of a plurality of displayed items cannot be used to
distinguish the claimed invention from prior art displayed item(s).
Appeal 2010-005425
Application 11/320,055

  5
As to Appellant’s above contention 3, Appellant does not dispute that
the prior art describes rendering a subset of non-functional descriptive items
in the form of catalogs. Because non-functional descriptive material cannot
distinguish over the art, we do not reach Appellant’s argument that the
Examiner erred in their construction of the non-functional descriptive
material term “catalog item” of claim 1.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-7 as being
anticipated under 35 U.S.C. § 102(b).
(2) Claims 1-7 are not patentable.

DECISION
The Examiner’s rejection of claims 1-7 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)(1)(iv).

AFFIRMED

ke