Ex Parte Sinclair

Patent Trial and Appeal Board

Jul 27, 2017

11778560 (P.T.A.B. Jul. 27, 2017)

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.
11/778,560 07/16/2007 Hazel Piazza Sinclair P07076 (98279.6P4) 1666
22920 7590 07/28/2017
GARVEY, SMITH & NEHRBASS, PATENT ATTORNEYS, L.L.C.
LAKEWAY 3, SUITE 3290
3838 NORTH CAUSEWAY BLVD.
METAIRIE, LA 70002
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
07/28/2017 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 HAZEL PIAZZA SINCLAIR
____________

Appeal 2015-003384
Application 11/778,5601
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BRADLEY B. BAYAT, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 451–453, 455–459, 472, 475–479, 569–571, 579,
582–593, 597, 598, 602–605, 607, 608, 611–621, and 623–636. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify the Appellant, Hazel Sinclair, as the real party in
interest. Br. 3.

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Application 11/778,560

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THE INVENTION
Appellant claims methods of facilitating, tangibly representing, and
displaying memorial donation tributes. (Spec. 1.)
Claim 451 reproduced below, is representative of the subject matter
on appeal.
451. A method for providing tangible representation for
charitable donations made in tribute to a deceased person in the
form of a memorial gift product that is displayed at a decedent’s
funeral service comprising:
a) via a computer screen, displaying a memorial gift
product, made of a metal that can be engraved, that is a tangible
representation of a donation made in tribute to a deceased
person;
b) using a computer, accepting an electronic order over
the Internet from a purchaser for the memorial gift product, the
order including a price that is paid by the purchaser, wherein
the electronic order comprises order information comprising at
least the name of the deceased person, the name of the charity
to which the charitable donation is made, and the name of the
person making the donation;
c) storing information about the order on the computer;
d) sending the order information to a computerized
engraving machine;
e) causing engraving at the engraving machine on a gift
product corresponding to the memorial gift product displayed
on the computer screen with indicia, based on the order
information, indicating at least the name of the deceased
person, the name of the charity to which the charitable donation
is made, and the name of the person making the donation; and
f) causing delivering of the memorial gift product to a
funeral service of the deceased so that the memorial gift product
may be displayed prior to the conclusion of the funeral service;
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wherein the memorial gift product is displayed at the
decedent's funeral service.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Russell US 2002/0178079 A1 Nov. 28, 2002

The following rejections are before us for review.
Claims 635 and 636 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 635 and 636 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 451–453, 455–459, 472, 475–479, 569–571, 579, 582–593,
597, 598, 602–605, 607, 608, 611–621, and 623–636 are rejected under 35
U.S.C. 103(a) as unpatentable over Russell.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3–14 of the
Answer.
2. Russell discloses
MyEtribute.com provides a platform for mourners
to learn about the death, respond to family wishes
and access additional information. The invention
allows mourners to view the death notice or
obituary online and respond in a number of ways.
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They can send sympathy cards, flowers and buy
virtual candles. They can make donations to
nonprofit groups in the name of the deceased.…
Additional products and services may include, for
example, custom obituaries, custom tribute sites, a
variety of announcements and acknowledgments,
memorial plaques, memorial cards, virtual
cemeteries and reminders.
Russell, para. 110.
3. Russell discloses that other customized offerings may be
“Engraved Bricks.” Russell, para. 229.
ANALYSIS
35 U.S.C. § 112 First Paragraph Rejection
We will summarily affirm the rejection of claims 635 and 636 under
35 U.S.C. § 112, first paragraph, because Appellant does not argue this
rejection in the brief.
35 U.S.C. § 112 Second Paragraph Rejection
We will summarily affirm the rejection of claims 635 and 636 under
35 U.S.C. § 112, second paragraph, because Appellant does not argue this
rejection in the brief.
35 U.S.C. § 103 REJECTION
Appellant argues claims 451–453, 455–459, 472, 475–479, 569–571,
579, 582–593, 597, 598, 602–605, 607, 608, 611–621, and 623–636 as a
group. (Appeal Br. 14) We select claim 451 as the representative claim for
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this group, and the remaining independent claims stand or fall with claim
451.
Appellant argues,
Applicant is not aware of any instance in which a
memorial plaque is delivered to a funeral home in
time for a funeral service, much less any instance
in which a memorial plaque with information
about a donation inscribed thereon being delivered
to a funeral home in time for a funeral service, the
information comprising at least the name of the
deceased person, the name of the charity to which
the charitable donation is made, and the name of
the person making the donation.
(Appeal Br. 14–15).
The Examiner found however that Russell discloses sending a
memorial plaque (Final Act. 9). According to Russell, in addition to sending
a memorial plaque, Russell discloses other memorial items which may be
sent, namely, sympathy cards, flowers, memorial plaques, and memorial
cards. (FF. 2). We find that one having ordinary skill in the art would
understand that because flowers, where recognized as appropriate, are
delivered to a funeral home in time for a funeral service, so too would be a
memorial offering. That is, because Russell discloses flowers, an inscribed
memorial plaque and corresponding donations to nonprofit groups in the
name of the deceased all in a single group (FF. 2), that the notice of
donation would be delivered in accordance with customary timeliness much
in the same way as is understood in the funeral flower industry- that is,
delivered to the funeral home in time for the funeral service.
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Appellant argues,
Russell et al. only mentions engraving once (she
mentions “Engraved Bricks), but does not mention
how the bricks would be engraved (bricks typically
have letters pressed into them when they are
uncured, then the bricks are fired – Applicant does
not believe that a brick would ever be engraved
with a computerized inscribing machine). Thus,
Russell et al. does not anticipate or render obvious
the claimed method.
(Appeal Br. 15).
We disagree with Appellant because Russell explicitly discloses
“Engraved Bricks,” (FF. 3) which we find to be the product of some type of
machine which causes the inscription. Whether the machine is automated or
is hand-operated is not a patentable distinction. See Leapfrog Enterprises,
Inc. v. Fisher Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
Appellant further argues,
Applicant respectfully points out that in fact the
method step associated with this limitation is that
present in each claim: engraving or otherwise
inscribing on the gift indicia indicating at least the
name of the deceased person, the name of the
charity to which the charitable donation is made,
and the name of the person making the donation.
This indicia, then, is functional and related to the
purpose of the claimed invention. Thus, this
indicia should be given patentable weight, as it is
functional.
(Appeal Br. 19.)
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We disagree with Appellant. The Examiner found, and we agree,
it would have been obvious to one of ordinary skill
in the art to provide the ability to have the
memorial plaque or sympathy card inscribed with
some sort of printed text on a sympathy card or
engraved text on the memorial plaque, as is very
well known for cards and memorial plaques.
(Final Act. 11). We find it obvious that the data inscribed on a memorial gift
product would include at least the name of the deceased person, the name of
the charity to which the charitable donation is made, and the name of the
person making the donation as would be the case with a card accompanying
a gift.
Alternatively, to the extent that the sender can have any content
inscribed on the substrate which she contemplates, such content is deemed
nonfunctional descriptive material. See In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (describing printed matter as “useful and intelligible only to
the human mind”) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA
1969)).
We recognize that evidence of secondary considerations, such as that
presented by the Appellant (Appeal Br. 24-25), must be considered en route
to a determination of obviousness/nonobviousness under 35 U.S.C. § 103.
Accordingly, we consider anew the issue of obviousness under 35 U.S.C. §
103, carefully evaluating and weighing both the evidence relied upon by the
Examiner and the objective evidence of nonobviousness provided by
Appellant.
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Appellant presents evidence of commercial success and long-felt, but
unmet, need in the form of web pages attached to the attached Declaration of
Hazel Sinclair dated 3 August 2009 (and in the Declaration). (Appeal
Br. 24, 25). We have examined Appellant’s declaration and find it on its
face deficient because Appellant has failed to meet its burden of establishing
a nexus between the claimed invention and the evidence of secondary
considerations. In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). The
evidence provided by Appellant provides no connection between the claimed
charity memorial method and the evidence of commercial success. In fact,
the Declaration states that “the site is in its final phase of construction and
therefore is not yet up on the web… .” (Sinclair Declaration p. 23.) The
Declaration does not even show how the website evidence is the same as the
system which has been claimed. Accordingly, we are not persuaded by the
secondary consideration evidence offered by Appellant.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 635 and 636
under 35 U.S.C. § 112, first paragraph.
We conclude the Examiner did not err in rejecting claims 635 and 636
under 35 U.S.C. § 112, second paragraph.
We conclude the Examiner did not err in rejecting claims 451–453,
455–459, 472, 475–479, 569–571, 579, 582–593, 597, 598, 602–605, 607,
608, 611–621, and 623–636 under 35 U.S.C. § 103.
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DECISION
The decision of the Examiner to reject claims 451–453, 455–459, 472,
475–479, 569–571, 579, 582–593, 597, 598, 602–605, 607, 608, 611–621,
and 623–636 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED