Ex Parte Packard

Board of Patent Appeals and Interferences

Jul 16, 2012

12004324 (B.P.A.I. Jul. 16, 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.
12/004,324 12/20/2007 Thomas G. Packard 9347
7590 07/16/2012
THOMAS G. PACKARD
7005 150th PL. SW.
EDMONDS, WA 98026
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
07/16/2012 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 THOMAS G. PACKARD
____________

Appeal 2012-007565
Application 12/004,324
Technology Center 3700
____________

Before NEAL E. ABRAMS, JENNIFER D. BAHR, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas G. Packard (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 28-37, which are all the claims
remaining of record in the application. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.

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THE INVENTION
The claimed invention is directed to a coin change card.
Claims 28 and 34, reproduced below, are illustrative of the subject
matter on appeal.
28. I claim a small, thin, flat plane, rectangular
change holding card and wallet/billfold or purse
construction with the front top side of the card
comprising three raised, straight, parallel, double
flanged separators and two raised, straight,
parallel, double flanged side edges and a raised
side edge end thereby forming four parallel, side
by side, flanged coin holding channels or rows of
the same length and of different widths, one for
quarters, one for dimes. one for nickels, and one
for pennies, that are similarly blocked at one side
edge by the raised side end edge with the other
side of the channel/rows open except for small,
fixed, flexible, partially moveable, rubber or
plastic retainers that are attached to the topside and
ends of the double flanged separators such that
coins can be retained on the card and yet slide
freely above the surface of the card and obliquely
overlap as necessary within the channel/rows
between the separators while the bottom, back side
of the card is constructed with a wallet, billfold or
purse extending from it

34. I claim a small thin uniformly flat plane
rectangular coin holding card comprising side edge
retainers, a closed side retainer , small
inclined/sloped end protrusions, multiple raised
parallel, straight and double flanged channel/row
separators, small flexible protruding retainers on
the top side ends of the channel/row separators, all
of which are arranged on the upper surface of the
card such that a various denomination of coins can
be held and retained on the card within a
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respective channel/row and can slide freely within
the double flanges and slightly above the flat
surface of the card and can also be stored obliquely
partially overlapping.

THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Greenstreet US 1,378,227 May 17, 1921
Swanson US 2,185,359 Jan. 2, 1940
Donovan US 2,650,699 Sep. 1, 1953

THE REJECTIONS
The following Examiner’s rejections are before us for review:
Claims 28-33 and 37 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 28-37 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
Claims 28-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Donovan, Greenstreet, or Swanson.
The Rejection Under 35 U.S.C. § 112, First Paragraph
The Examiner has rejected claims 28-33 and 37 as failing to comply
with the written description requirement by setting forth subject matter
which was not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention. Specifically,
the Examiner has asserted that no part of the specification as filed describes
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the bottom, back side of the change holding card as having a wallet, billfold
or purse extending from it, as is recited in claim 28, the card as being
constructed as part of a wallet, billfold or purse, as is set forth in claim 29, a
construction wherein the back side of the card is affixed, attached to and an
integral part of a wallet, billfold or purse, as recited in claim 30, and that the
change card has a wallet, billfold or purse affixed to its back side such that it
is contained within the wallet, billfold or purse when it is closed, as in claim
31. Final Rej. 2-3. As for the remaining claims, the Examiner states that
“[a]ll such references to structure requiring attachment or affixing to a
wallet, billfold or purse throughout the claims” are not described in the
specification as required by the first paragraph of Section 112 and
“[a]dditionally, to the extent the noted structure is without support in the
disclosure as filed, its incorporation into the claims constitutes the addition
of New Matter thereto.” Final Rej. 3.
The Appellant has argued in rebuttal that the structure cited by the
Examiner is disclosed in Figures 11-18, which were added to the disclosure
by amendment, and that support for doing so is found in the original
disclosure in the statement on page 2 that the card “CAN BE AFFIXED TO
A SURFACE AND CARRIED WITHIN A WALLET, BILLFOLD OR
PURSE.” Reply Br. 2.
We find ourselves in agreement with the Examiner.
The only mention in the original specification to wallets, billfolds or
purses is the statement on page 2 that the coin change card “is also designed
and constructed to be small, light and thin such that it can be affixed to a
surface and be easily and conveniently carried within a wallet/billfold or
purse,” and on page 3 that the plastic card “can be constructed in a thin form
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to be carried in a wallet/bill fold . . . or perhaps purse use.” None of the
originally filed drawings (Figs. 1-10, filed on Dec. 20, 2007) show the coin
card in combination with a purse, wallet or billfold. In a non-final rejection
mailed February 14, 2011, the Examiner rejected claims because the
structure set forth therein was not in the disclosure. On May 13, 2011, the
Appellant filed additional Figures 11-18, along with short descriptions of the
new drawings in which the Appellant explained that they show the coin card
“affixed to interior surface” and an “open wallet” and “open billfold.” The
Examiner’s response to this was to object to Figures 11-18 on the basis that
they introduced new matter into the disclosure, and to require that the new
drawings be canceled. The Examiner also finally rejected claims 28-33 and
37 under 35 U.S.C. § 112, first paragraph. Final Rej. 2. The Appellant has
chosen not to cancel the added drawings and descriptive text.
Clearly, the original drawings (Figs. 1-10) do not show the
combination of the coin card and a wallet, billfold or purse. It is our view
that the presence of the conjunction “and” in the statement in the original
specification that the coin card can be “affixed to a surface and can be easily
and conveniently carried within a wallet/billfold or purse” (emphasis added)
does not positively establish that the scope of the invention at the time the
application was filed included the combination of a coin card and a wallet,
billfold or purse. This being the case, the disclosure as originally filed does
not describe a “change holding card and wallet/billfold or purse
construction” in which “the bottom, back side of the card is constructed with
a wallet, billfold or purse extending therefrom,” as is recited in independent
claim 28, a coin holding card wherein “the opposing backside of the card is
affixed, attached to and an integral part of a wallet, billfold or purse,” as
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recited in independent claim 30, “a change card wallet, billfold or purse
comprising a small flat plane holding card” wherein “the opposing back side
of the card is attached and affixed to the rest of the wallet Billfold or purse
construction,” as appears in independent claim 32, and a “coin holding card
that is affixed to and part of a wallet, billfold or purse,” as is required in
independent claim 37.
The extent of Appellant’s argument regarding this rejection is that
“THE SAID SURFACE IS OF COURSE AN INNER SURFACE OF THE
WALLET, BILLFOLD OR PURSE” and “THERE IS NO OTHER
SURFACE DESCRIBED, IMPLIED, STATED, TAUGHT OR ALLUDED
TO AND ANY ARTISAN/PERSON WOULD CERTAINLY CLEARLY
SIMPLY UNDERSTAND THIS IMMEDIATELY.” Br. 6. No evidence
has been presented in support of the Appellant’s conclusion that one of
ordinary skill in this art would have understood that “a surface” as
mentioned in the context of the background of the invention on page 2 of the
original specification comprises the inner surface of a wallet, billfold or
purse. We also note that the Appellant has not provided any arguments
specific to the Examiner’s conclusions with regard to the individual claims.
Furthermore, the specification is devoid of any description of how the coin
card is to be “affixed” to a surface, much less the particular relationships
between the coin card and the wallet, billfold or purse which are recited in
the various claims.
For the reasons expressed in the foregoing paragraphs, we are not
persuaded by the Appellant’s arguments that the Examiner’s conclusion is in
error. We therefore affirm the Examiner’s rejection under 35 U.S.C. § 112,
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first paragraph, of independent claims 28, 30, 32 and 37, as well as claims
29, 31 and 33, which are dependent therefrom.
Additionally, we point out that ordinarily an objection, such as that set
forth by the Examiner in this case, is reviewable by petition under 37 C.F.R.
§ 1.181, while a rejection is appealable to the Board of Patent Appeals and
Interferences. However, when the issue of new matter presented is the
subject of both an objection and a rejection, the issue is appealable. Manual
of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New
Matter Objections and/or Rejections (8th ed., Rev, July 2008). See also
MPEP § 608.04(c) 8th ed., Rev. 8, July 2008 (“where the alleged new matter
is introduced into or affects the claims, thus necessitating their rejection on
this ground, the question becomes an applicable one, and should not be
considered on petition even though that new matter has been introduced into
the specification also.”). Since the objection turns on the same issues as the
written description rejection of the claims under 35 U.S.C. § 112, first
paragraph, as is the case here, our decision with respect to the written
description rejection likewise is dispositive as to the corresponding
objection.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
The Examiner has rejected claims 28-37 as failing to particularly point
out and distinctly claim the subject matter which the Appellant regards as
the invention. According to the Examiner “[t]he claims are replete with
examples of indefinite language that are too numerous to specifically point
out in every instance.” As examples, the Examiner points to the phrase
“wallet/billfold or purse construction” as being “too vague to meet the
requirement of the Statute” in that “all of the structures encompassed by the
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expression can not be determined” for “the specification provides little, if
any guidance on the matter.” Ans. 4. The Examiner also considers that
elements are recited in the claims without proper antecedents, making the
claims vague as to what might be intended, noting as an example the
presence of the terms “raised . . . side edges” and “a raised side edge end,”
which are not so defined as to “distinguish these from the card ends.” Id.
The Examiner further is of the view that the presence of new matter makes it
difficult to determine the structure regarding attachment or affixation of the
coin card to wallet, billfold, or purse, and that the coin card is defined as
being a “flat plane,” whereas according to the claim language it also
comprises raised side edge retainers. Final Rej. 3-5.
The Appellant argues in response that all of the claimed structure is
supported by the disclosure based upon the showings in drawing Figures 11-
18 (Br.8), which the Examiner has decided were new matter that should be
canceled. With regard to examples of indefinite language pointed out by the
Examiner, the Appellant counters by stating that the change card “IS AN
ESSENTIALLY FLAT PLANE SURFACE WITH VARIOUS
RELATIVELY SMALL PROJECTING ELEMENTS ON THAT FLAT
PLANE” (emphasis added). Br. 11. No other comments directly on point
have been made by the Appellant with regard to the general and specific
examples set forth by the Examiner in the Final Rejection.
A claim is indefinite when it contains words or phrases whose
meaning is unclear. A lack of clarity can arise when a claim contains no
earlier recitation or limitation of an element and where it would be unclear
as to what element the claim is making reference. MPEP § 2173.05(e).
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The opening words of independent claim 28 are “I claim a small, thin,
flat plane change holding card and wallet/billfold or purse construction”
(lines 1 and 2; emphasis added). The claim then goes on to set forth that the
“front top side” of the card, which is not further defined, comprises “three
raised, straight, parallel, double flanged separators and two raised, straight,
parallel double flanged side edges and a raised side edge end” (lines 4 and 5;
emphasis added). We agree with the Examiner that this language gives rise
to an inconsistency that causes the claim to be indefinite, in that the card
cannot be a “flat plane” while having a “front top side” that comprises a
plurality of “raised” edges. The Appellant’s argument that the card is an
“essentially” flat plane is not reflected in the language of the claim.
Also as the Examiner has pointed out, there is a lack of antecedent
basis for many of the terms recited in the claims. This results in
indefiniteness regarding the description of the coin holding channels of
claim 28. In lines 3-6 the claim recites “three raised . . . double flanged
separators,” “two raised . . . double flanged side edges,” and “a raised side
edge end” which form “four parallel, side by side, flanged coin holding
channels.” The claim goes on to state that the channels are “similarly
blocked at one side edge by the raised side end edge with the other side of
the channel/rows open,” (emphasis added). The relationship between the
channels and the “double flanged side edges,” the “raised side edge end,”
and the “one side edge” as set forth in claim 28 is confusing, especially
when considering that as the channels are shown and described in Fig. 1
“[o]n two sides there is an side edge retainer” 2 and 3, one end of each
channel is closed by an “end retainer” 4, and the other end by “row
retainers” 28. Spec. 7.
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In addition, claim 28 states that the card has a “front top side” upon
which there are raised separators and raised side edges (lines 2-4). The
claim goes on to recite that the coins retained on the card slide freely above
“the surface of the card” (line 12), terminology which has no antecedent
basis in the claim and, since it has a different label than the “front top side,”
would appear to be defining a different surface. Uncertainty thus exists as to
what different surface it is defining, and this renders the claim indefinite.
Additional indefinite language is present in independent claims 30,
32, 34 and 37. Each of these claims specifies that the coin card is flat, yet
goes on to recite that the card has raised separators. Each claim also
presents the same problem regarding the various surfaces that are recited,
such as “front side surface,” the coins sliding above “the surface” and not
being in contact with “the underlying card surface” (claim 30), the “front
side” and the coins sliding above “the card surface” (claim 32), the “upper
surface of the card” and coins sliding slightly above “the flat surface of the
card” (claim 34), and separators “on the face of the card” and coins sliding
“above the channel/card surface” (claim 37).
For the reasons set forth above, this rejection of claims 28-37 is
affirmed.
The Rejection Under 35 U.S.C. § 103(a)
Claims 28-37 stand rejected as being unpatentable over Donovan,
Greenstreet or Swanson. The Examiner states that “[e]ach reference appears
to show most of the elements of the claims but may lack elements such as
the specific number of channels claimed and the specific configuration of the
claimed retainers,” but that “it would have been obvious in view of any one
of the applied references to provide the apparatus therein with the specific
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number of channels claimed or with the specific configuration of the claimed
retainers, for the purpose of securely storing different types or numbers of
coins in a convenient fashion.” Final Rej. 5-6. The Examiner opines that
Swanson “appears to show a coin holding card attached on its backside to a
surface 11 of what appears to be a wallet, billfold or purse,” as well as
“partitions or uprights 17 (that appear to have the same form as applicants
separators and side edges) and coin stops or detents 22 (on which the
claimed retainers read.)”. Final Rej. 5. The Appellant has provided detailed
arguments as to the shortcomings in each of the references in rendering
obvious the elements recited in the claims. Br. 11-26; Reply Br. 4-6.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; and (3)
the level of ordinary skill in the art. In addition to these factual
determinations, the examiner must also provide “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445.
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See also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472.
The Examiner’s statement on page 5 of the Final Rejection that each
of the references “appears to show” most of the elements of the claims does
not meet the burden of establishing a prima facie case of obviousness on the
basis of any of the three cited references, a situation that is not overcome
even when considering the Examiner’s response to the Appellant’s
arguments in the Answer. We therefore will not affirm the rejection of
claims 28-37 under 35 U.S.C § 103(a).
Nevertheless, we wish to note on the record that each of the references
cited by the Examiner discloses structure relevant to determining the state of
the art in the field of coin collectors of the type disclosed in the Appellant’s
specification as filed. Each of the three clearly discloses a plurality of
parallel coin holding channels of differing widths which are defined by
flanged separators and side edges. In the case of Donovan and Swanson, the
coins held in each channel can overlap. Donovan Figs. 3 and 4; Swanson
Figs. 2 and 3. Greenstreet and Swanson each disclose a flat base panel upon
which raised separators and side edges are mounted. Greenstreet Fig. 4;
Swanson Fig. 1. Donovan and Swanson each provide retainers at the open
ends of the channels to hold the coins therein. Donovan Fig. 4; Swanson
Fig. 5. In Swanson the coin collecting structure is attached to the inner
surface of a purse. Fig. 6.

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DECISION
The Examiner’s rejection of claims 28-33 and 37 under 35 U.S.C.
§ 112, first paragraph, is affirmed.
The Examiner’s rejection of claims 28-37 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner’s rejection of claims 28-37 under 35 U.S.C. § 103(a) as
being unpatentable over Donovan, Greenstreet, or Swanson is reversed.
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)(1)(iv) (2010).
A rejection of each of the claims having been affirmed, the decision of
the Examiner is affirmed.

AFFIRMED

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