12709568 (P.T.A.B. Mar. 28, 2016)

Ex Parte Swain

Patent Trial and Appeal BoardMar 28, 2016

12709568 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121709,568 02/22/2010 James Robert Swain 27997 7590 03/30/2016 Hultquist IP P.O. Box 14329 Research Triangle Park, NC 27709 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 207.0007 6983 EXAMINER DESAI, KAUSHIKKUMAR A ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 03/30/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): hip@hultquistip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES ROBERT SWAIN Appeal2013-011030 Application 12/709,568 Technology Center 3700 Before JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1---6 and 16-27. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM the rejection of all claims, but designate our affirmance of the rejection of claim 6 under 35 U.S.C. Â§ 103(a) as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). Appeal2013-011030 Application 12/709,568 THE INVENTION Appellant's invention relates to packaging for prepaid cards. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A tamper evident card carrier comprising: a bi-panel having a fold line with a first panel to one side of the fold line and a second panel to the other side of the fold line, the first panel having an area reserved for a product literature insert on an inside face and the second panel having an area reserved for a card located within a region on an inside face; and a glue area extending inward from all four edges of the second panel, wherein a tear strip is formed in the second panel in a portion of the second panel not in the glue area. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Sparks Hansen iviatheis Schabert Nakamura Davila Roberts Pascua us 3,288,281 us 5,791,474 US 6,349 ,829 Bl US 6,588,591 B 1 US 2004/0151880 Al US 7,222,797 B2 US 2008/0116089 Al US 2009/0107862 Al Nov. 29, 1966 Aug. 11, 1998 Feb.26,2002 July 8, 2003 Aug. 5, 2004 May 29, 2007 May 22, 2008 Apr. 30, 2009 The following rejections are before us for review: 1. Claims 1---6 and 16-27 are rejected under 35 U.S.C. Â§ 112, first paragraph, for failure to comply with the written description requirement. 2. Claims 1, 3-5, 16, 17, 19-22, and 27 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davila, Matheis, and Schabert. 3. Claims 2, 6, 25, and 26 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davila, Matheis, Schabert, and Sparks. - 2 - Appeal2013-011030 Application 12/709,568 4. Claim 16 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davila, Matheis, Schabert, and Hansen. 5. Claim 18 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davila, Matheis, Schabert, and Roberts. 6. Claims 23 and 24 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davila, Matheis, Schabert, Pascua, and Nakamura. 7. Claims 1---6 and 16-27 are provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 1-10 of co- pending Application No. 12/140,443. OPINION Written Description Claim 1, the only pending independent claim, contains a negative limitation directed to: "a tear strip is formed in the second panel in a portion of the second panel not in the glue area." Claims App. (emphasis added). The Examiner takes the position that this limitation does not have written description support in Appellant's original disclosure. Final Action 5---6. Then, in the Answer, the Examiner enlarged this ground of rejection to state that the limitation in claim 1 directed to a "glue area extending inward from all four edges of the second panel" is not supported in the Specification as originally filed. Ans. 2. Appellant traverses the Examiner's rejection by arguing that "not in the glue area" is supported by the Specification. Appeal Br. 10. Appellant points out that the disclosure indicates that there is a "glue area" and that the language at issue in claim 1 is merely intended to convey that the tear strip is located somewhere else than in the glue area or, in other words, "not in the glue area." - 3 - Appeal2013-011030 Application 12/709,568 vVhether a claim satisfies the written description requirement is a question of fact. Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1190 (Fed. Cir. 2014). Assessment of the written description "requires an objective inquiry into the four comers of the [S]pecification," as "the hallmark of written description is disclosure." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description requirement is met when the disclosure "allow[ s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The proper inquiry is whether the patentee has provided an adequate description that "in a definite way identifies the claimed invention" in sufficient detail such that a person of ordinary skill would understand that the inventor had made the invention at the time of filing. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane). Such inquiry does not depend on the presence or absence of literal support in the specification for the claim language. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983); see also Manual for Patent Examining Procedure, 8th ed., rev. 9, Aug. 2012, Â§ 163.02. Thus, the claimed invention need not be described in ipsis verbis to satisfy the written description requirement. See Union Oil Co. of Cal. v. Atl. Ric/1field Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). Figure 1 of Appellant's drawing indicates a glue zone 123. The Specification explains that "glue is adhered or otherwise applied in a glue zone 123 which comprises around the edges of both panels 110 and 120" and "glue is applied everywhere except the glue free zones." Spec. 4. A second area 124 is a tolerance area within which the gift card may be - 4 - Appeal2013-011030 Application 12/709,568 mounted. Id. at 4. A third area 126 defines a no glue region that is larger than area 124 so that a no glue buffer surrounds card 20. Id. Figure 3 of Appellant's drawings depicts a tear strip 160 with an external opening tab 162. The drawing contains the following annotation: "NOTE: TEAR-OFF STRIP DOES NOT EXTEND INTO THE SEAL AREA." Fig. 3. The Specification explains that "after folding the panels together, the card carrier is rolled under pressure rollers to seal the package with a wide seal area." Spec. 6. We interpret the "seal area" as substantially co-extensive with the "glue area" after the two panels have been assembled. In view of the foregoing, we are persuaded that, consistent with the inquiry under section 112, first paragraph, Appellant had possession of an invention where a tear strip is formed in the second panel in a portion of the second panel not in the glue area. With respect to the Examiner's statement in the Answer that the limitation in claim 1 directed to a "glue area extending inward from all four edges of the second panel" is not supported in the Specification as originally filed, we note that this contention was raised for the first time in the Answer and was not designated by the Examiner as a new ground of rejection. This is procedurally improper. See 37 C.F.R. Â§ 41.39(a)(2). Nevertheless, we have considered this contention and find it to be without merit. The Specification teaches that "glue is adhered or otherwise applied in a glue zone 123 which comprises around edges of both panels 110 and 120." Spec. 4. This is sufficient to demonstrate possession of the invention. We do not sustain the Examiner's written description rejection of claims 1---6 and 16-2 7. - 5 - Appeal2013-011030 Application 12/709,568 Unpatentability of Claims 1, 3-5, 16, 17, 19-22, and 27 over Davila, Matheis, and Schabert Appellant argues claims 1, 3-5, 16, 17, 19-22, and 27 as a group. Appeal Br. 11-13. We select claim 1 as representative. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2015). The Examiner finds that Davila discloses all of the limitations of claim 1 except for the extent of the glue area and the tear strip. Final Action 6-8. The Examiner relies on Matheis as disclosing a glue area extending inward from all four edges of the second panel. Id. at 7. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to make a card assembly as taught by Davila with a glue area as suggested by Matheis. Id. According to the Examiner, a person of ordinary skill in the art would have done this to provide a tamper-proof card. Id. The Examiner relies on Schabert as disclosing a tear strip in the second panel but not in the glue area. Final Action 8. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the teachings of a Davila/Matheis card assembly with a tear strip as suggested by Schabert. 1 According to the Examiner, a person of ordinary skill in the art would have done this to provide easy removal of the content covered under the flap. Id. Appellant traverses the Examiner's rejection by first arguing that Davila fails to disclose a first panel having an area reserved for a product 1 The Final Action states "tear strip ... as suggest in the Matheis disclosure" (Final Action 8, first paragraph, emphasis added). However, from the overall context of the paragraph, it is clear to us that the Examiner intended to refer to Schabert instead of Matheis. - 6 - Appeal2013-011030 Application 12/709,568 literature insert. Appeal Br. 11. Appellant argues that Figure 10 of Davila merely shows two panels with a gift certificate in one panel and a multimedia disc and gift certificate in the other. Id. In response, the Examiner points out that a product literature insert is not positively recited in the claim. Ans. 7. The Examiner states that Appellant is merely claiming an area on the first panel for the intended use of inserting unclaimed and undefined product literature. Id. at 7-8. The Examiner's position is correct. Claim 1 merely requires that the first panel have an area reserved for a product literature insert on an inside face. Claims App. It is not disputed that Davila has an area reserved for a gift certificate.2 Davila, Fig. 10. Thus, the only potential difference between the prior art and the claimed invention is the content that is printed on the literature contained in the reserved area on the first panel. We agree with the Examiner that printed content is not positively recited and, in any event, would not result in a patentable invention. See In re Gulack, 703 F.2d 1381, 1384--85 (Fed. Cir. 1983).3 Where all the structural elements of a claim exist in a prior art product, and that prior art product is capable of satisfying all functional or intended use limitations, the claimed invention is nothing more than an unpatentable new use for an old product. Bettcher Ind. Inc. v. Bunzl USA, Inc., 661F.3d629, 654 (Fed. Cir. 2011), citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). 2 We need not and do not here decide whether a gift certificate constitutes "product literature" under the broadest reasonable construction of the term. 3 If a limitation claims printed matter that is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. Id. - 7 - Appeal2013-011030 Application 12/709,568 Appellant next argues that ~vfatheis glues only on three sides. Appeal Br. 12. This assertion is not supported by the record. Figure 3 of Matheis shows adhesive pattern 58 and adhesive pattern 26 covering all four sides of the upper panel above the fold line. See Matheis, col. 5, 11. 13-30; col. 6, 11. 11-16.4 Appellant next argues that Schabert discloses a reclosable container. Appeal Br. 12. Appellant contends that a reclosable container has a different purpose than the claimed tear strip, which is to expose the card activation indicia aligned with the tear strip. Id. at 13. This argument is not persuasive. The scope of claim 1 does not exclude tear strips for reclosable flaps and, therefore, the argument is not commensurate with the scope of the claim. The Examiner's finding that Schabert's tear strip satisfies the tear strip limitation of claim 1 is supported by a preponderance of the evidence. Finally, Appellant argues against the combinability of Davila and Matheis. Appeal Br. 12. Appellant contends that an important aspect of Davila is the artwork displayed on the inside of the gift card carrier. Id. Appellant argues that sealing Davila's edges with glue as taught by Matheis runs counter to Davila's intent to provide a card that one opens to see artwork. Id. This argument is not persuasive as the Examiner does not rely on the artwork on the interior ofDavila's gift card carrier as part of the proposed combination. It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill 4 "[A Jn adhesive pattern 58 is applied to seal the panels together in the final package. In FIG. 3, the adhesive pattern 58 is applied along side edges 60 and 61 of the respective panels and along the non-folded ends 63 and 64 of the panels to adhere the panels 16 and 17 to one another to encase the card within the package assembly." Matheis, col. 6, 11. 11-16. - 8 - Appeal2013-011030 Application 12/709,568 often will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). It is well settled that "a reference may be read for all that it teaches, including uses beyond its primary purpose." In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418--421. Therefore, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellant's Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCP A 1972). We have considered the Appellant's remaining arguments and find them to be unpersuasive. We sustain the Examiner's unpatentability rejection of claims 1, 3-5, 16, 17, 19-22, and27. Unpatentability of Claims 2, 6, 25, and 26 over Davila, Matheis, Schabert, and Sparks Claims 2, 25, and 26 Claims 2, 25, and 26 depend, directly or indirectly, from claim 1. Claims App. Appellant does not argue for the separate patentability of these three claims apart from arguments presented with respect to claim 1 which we have previously considered. Appeal Br. 13-14. Thus, for the reasons stated above in connection with the rejection of claim 1, we sustain the Examiner's unpatentability rejection of claims 2, 25, and 26. Claim 6 Appellant argues separately for the patentability of claim 6, which depends from claim 1 and adds the limitation: "wherein a card has an activation indicia which is aligned with the tear strip when the card is - 9 - Appeal2013-011030 Application 12/709,568 mounted on the second panel within the area reserved for the card." Claims App. The Examiner finds that Matheis discloses a card with activation indicia that is aligned with cut out opening 68 when mounted on the second panel within the area reserved for the card. Final Action 11-12. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the teachings of Davila, Matheis, and Schabert to create a card aligned with the tear strip as suggested by Matheis. Id. at 12. According to the Examiner, it would have been obvious to align the card activation indicia with a tear strip as such would merely entail the rearrangement of parts which requires only routine skill. Id., citing MPEP Â§ 2144.04 Appellant traverses the rejection by arguing that Matheis merely describes a cut out opening relative to the card indicia, a point already conceded by the Examiner. Appeal Br. 13. Appellant argues that the purpose of the claimed tear strip, concealing exposure of the activation indicia until the package is presented to the cashier for activation, is not met by Matheis's cut out. Id. at 13-14. This argument is unpersuasive as it attacks the Matheis reference individually. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981 ). Appellant next argues against the Examiner's rearrangement of parts rationale. Appeal Br. 14. Appellant argues that a tear strip that is used only to open a package does not provide access to the activation indicia in the - 10 - Appeal2013-011030 Application 12/709,568 manner claimed. Id. Appellant argues that a window (cut out) is susceptible to fraud. Id. Appellant argues that the Examiner's analysis fails to take into account the claim as a whole. Id. The Examiner's rationale relies on MPEP Â§ 2144.04 VI.C. which, in tum, relies on In re Japikse, 181 F .2d 1019 (CCP A 1950). The facts of Japikse entailed relocation of a switch in a manner that did not affect operation of the device. In the instant case, the alignment of the cut out that is beneath the tear strip does affect the operation of the device because there is a requirement to reveal the activation indicia. For this reason, we disagree with the Examiner's rationale based on "rearrangement of parts." Nevertheless, in the instant case, Matheis discloses a cut out 68 that is aligned with indicia on the rear face of the card. Also, in accordance with the method of manufacture of a gift or phone card package, a second cut-out opening 68 may be die cut in the traveling web of sheet material 24 to allow viewing of indicia on the rear face of the card from the outside of the package. This second opening or window 68 may also be covered by a clear plastic window, if desired. Usually, this second window is very small to allow verification of a number or value on the card, as compared to the first window 14 which allows a view of the entire card. In FIG. 3, the window 14 is in the top panel 16 and cut-out opening 68 is the panel 17 beneath the card 12. Matheis, col. 6, 11. 42-52. Schabert discloses a dustproof pack with a tamperpoof seal. Schabert, col. 1, 11. 3-7, Fig. I. Schabert discloses three perforation lines 12, 13, and 14 that are punched into the front side wall. Id. at col. 3, 11. 63----67, Fig. 1. In order to open flap 11 for the first time, the perforation lines 12, 13, and 14 are tom open. Id. at col. 3, 1. 67 - col. 4, 1. 1. According to Schabert, this results in a tamperproof seal. Id. at col. 4, 11. 1--4. In our - 11 - Appeal2013-011030 Application 12/709,568 opinion, it would have been obvious to combine ~vfatheis' s teaching of a cut out aligned with indicia, with Schabert's teaching of a tear strip. In our proposed combination, Matheis' s cut out would be modified so that the cut out window is initially covered, but surrounded by perforations to form a tear strip as taught by Schabert. A person of ordinary skill in the art would have done this to provide easy access to the contents of a pack by means of perforation lines that would have also provided a tamperproof seal. See Schabert, col. 2, 11. 60-65; col. 4, 11. 1-3. Our rationale differs from that of the Examiner in that, in our proposed combination, we rely on Matheis as teaching the alignment of a cut out with the card indicia and merely rely on Schabert as teaching the use of a tear strip for a tamperproof seal and easy access to the contents of the package. Our rationale does not rely on rearrangement of parts under Japikse. Thus we sustain the Examiner's rejection of claim 6, but as our rationale changes somewhat the thrust of the Examiner's rejection, we designate our affirmance as a NEW GROUND OF REJECTION under our discretionary authority under 37 C.F.R. Â§ 41.50(b). See In re Biederman, 733 F.3d 329, 338-339 (Fed. Cir. 2013). Unpatentability of Claims 16, 18, 23, and 24 Claims 16, 18, 23, and 24 depend, directly or indirectly from claim 1. Claims App. Appellant does not argue for the separate patentability of these four claims apart from a general allegation that the rejections thereof all entail impermissible hindsight reconstruction by the Examiner. Appeal Br. 14. We have reviewed the Examiner's rejections of these claims and find them to be well supported by the record. We find that the Appellant's - 12 - Appeal2013-011030 Application 12/709,568 hindsight argument lacks support in the record and is otherwise insufficient to overcome the Examiner's prima facie case of unpatentability. With respect to the rejection of these claims, we adopt as our own the Examiner's well-reasoned findings of fact and conclusion of obviousness. Final Action 13-15, Ans. 10-11. We sustain the rejection of claims 16, 18, 23, and 24. Double Patenting Rejection of Claims 1-6 and 16--27 Claims 1---6 and 16-27 are provisionally rejected on the ground of non-statutory obviousness-type double patenting over claims 1-10 of co- pending Application No. 12/140,443. We take Official Notice of the prosecution history of Application No. 12/140,443, including the fact that such application issued as US Patent 8,931,639 on January 13, 2015. The '639 Patent issued following an appeal to the Board in which the Examiner's rejection of all pending claims was reversed. We also note that none of the rejections in the appeal of the '443 Application involved the Davila, Matheis, or Schabert references relied on by the Examiner in the instant case. As our affirmance of the Examiner's unpatentability rejections disposes of all of the claims on appeal, we do not reach the Examiner's double patenting rejection. See 37 C.F.R. Â§ 41.50(a)(l). DECISION The decision of the Examiner to reject claims 1---6 and 16-27 under 35 U.S.C. Â§ 112, first paragraph, for failure to comply with the written description requirement, is REVERSED. The decision of the Examiner to reject claims 1-5 and 16-27 under 35 U.S.C. Â§103(a) is AFFIRMED. - 13 - Appeal2013-011030 Application 12/709,568 The decision of the Examiner to reject claim 6 under 35 U.S.C. Â§103(a) is affirmed, but we designate the affirmance as a NEW GROUND OF REJECTION. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R Â§ 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF. THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. .. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. Â§Â§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. - 14 - Appeal2013-011030 Application 12/709,568 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED; 37 C.F.R. Â§ 41.50(b) - 15 -