Alberta Haislah

Patent Trials and Appeals BoardJun 2, 2021

2020006723 (P.T.A.B. Jun. 2, 2021)

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. 15/660,664 07/26/2017 Alberta Haislah SK12980 4736 44088 7590 06/02/2021 KAUFHOLD DIX PATENT LAW P. O. BOX 89626 SIOUX FALLS, SD 57109 EXAMINER DAVIS, CASSANDRA HOPE ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): jason@kaufholdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALBERTA HAISLAH ____________ Appeal 2020-006723 Application 15/660,664 Technology Center 3600 ____________ Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1 and 3–5. Claim 2 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Albert Haislah as the real party in interest. Appeal Br. 2. Appeal 2020-006723 Application 15/660,664 2 CLAIMS Claims 1 and 5 are independent claims. Claim 1, reproduced below, illustrates the subject matter on appeal. 1. A greeting card assembly being configured to contain a plurality of objects, said assembly comprising: a card having a fold therein to define a first half being hingedly coupled to a second half, said first half having a first surface and a second surface, said first half having a plurality of perforations extending through said first and second surfaces to define a removable portion of said card wherein said removable portion is configured to be selectively torn away from said card; a container being removably coupled to said card, said container being comprised of a translucent material, said container being positioned on said removable portion of said card wherein said container is removed from said card with said removable portion; and a plurality of objects, each of said objects being positioned in said container, said plurality of objects being removable from said container when said container is removed from said card. Appeal Br. 7 (Claims App.). REJECTION Claims 1 and 3–5 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Fensham (US 2006/0231447 A1, published Oct. 19, 2006). ANALYSIS Appellant argues claims 1 and 3–5 as a group. Appeal Br. 4–5. We select claim 1 as representative to decide the appeal as to the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2020-006723 Application 15/660,664 3 The Examiner finds that Fensham meets all limitations of claim 1. Final Act. 2–3. Particularly, the Examiner finds that Fensham discloses a blister pack for smoking articles comprising a card (film 24, 42, 60, 76) having a fold (perforated hinge lines 50, 52) therein to define a first half coupled to a second half, the first half having perforations (perforated line 56, perforated hinge line 50, recesses 68.1–68.4) defining a removable portion of the card; a container (troughs 66.1–66.5) coupled to and positioned on the removable portion of the card, and removed from the card with the removable portion; and a plurality of objects positioned in the container and being removable from the container when the container is removed from the card. Final Act. 2–3; Ans. 7, 8 (Examiner’s annotated version of Fensham’s Figure 5). Appellant contends that Fensham does not anticipate claim 1. Appeal Br. 4. First, Appellant asserts that “the specific purpose and teaching of Fensham is different and unrelated to the expressed purpose of the present invention.” Id. (emphasis added). The Examiner responds by stating “a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.” Ans. 8 (emphasis added). Second, Appellant contends: The present invention is a greeting card such that it is not a reasonable interpretation of Fensham to interpret the backing foil or blister packs as a card in the same manner as is being done to try to establish grounds for anticipation. There is nothing whatsoever to explain rationally how one of ordinary skill in the art would clearly and definitely find a greeting card in the disclosure of Fensham. Appeal 2020-006723 Application 15/660,664 4 Appeal Br. 5. In response, the Examiner provides a dictionary definition of “a greeting card” as being “‘a piece of paper or thin cardboard having any of a variety of shapes and formats and bearing a greeting or message of sentiment.’” Ans. 10 (citing Merriam-Webster.com). The Examiner submits that Fensham teaches a planar film or card 42 with indicia/a message on a surface. Id. (citing Fensham ¶ 81). The Examiner states that “‘greeting card’ structure” is not specifically claimed, and the structure of Fensham’s blister pack meets the claim limitations. Id. We do not find Appellant’s first and second contentions persuasive. Claim 1 recites “a greeting card assembly being configured to contain a plurality of objects.” Appeal Br. 7 (Claims App.). The term “greeting card” is recited only in the claim preamble. The body of claim 1 does recite “a card”; however, the Examiner finds that Fensham discloses this element and Appellant does not provide persuasive argument to the contrary. “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Conversely, a preamble “generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure . . . of the claimed invention.” Id. at 809. A preamble is generally not limiting when it only states a purpose or intended use for the invention. Id. “[D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. at 807. See also Bell Commc’ns Appeal 2020-006723 Application 15/660,664 5 Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Here, the body of claim 1 describes a structurally complete device. As such, deletion of the term “greeting card” in the preamble does not affect the claimed structure. Also, the recitation of “greeting card” in the preamble does not provide antecedent basis for any limitation in the claim body. See Appeal Br. 7 (body of claim 1 reciting “a card” (emphasis added)). Nor does Appellant argue persuasively that understanding any limitation in the body requires reliance on this term in the preamble. Hence, we agree with the Examiner that the term “greeting card” only states an intended use of the “greeting card assembly” having a structure as recited in the claim body. And although claim 1 does not recite that the “greeting card assembly” has “a greeting or message of sentiment” as included in the dictionary definition of a “greeting card” cited by the Examiner, Fensham teaches, as the Examiner further found (Ans. 10), that indicia/messages can be provided on the blister packs.2 Fensham ¶ 81. In our view, the term “greeting card assembly” merely gives a descriptive name to the limitations in the claim body that completely set forth the claimed invention. See IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’ in the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the 2 As to such indicia, we note printed matter itself is non-statutory subject matter, and accordingly, it must have a functional relationship to a physical substrate holding the printed matter in order to be given patentable weight. See, e.g., In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). Appeal 2020-006723 Application 15/660,664 6 invention.”). Moreover, Appellant has not identified any structure purportedly required by a “greeting card,” yet absent from Fensham. Third, Appellant contends that Fensham teaches a plurality of blister packets arranged in an array and separated from each other by flat sections, where the blister packets are accessed through peeling away a portion of backing film. Appeal Br. 5. According to Appellant: this does not provide clearly and definitely for a removable portion with the container being attached to be removed with the removable portion. In the claim, is it required that the container is coupled to a surface of the card and perforations are provided around the container connection such that the container goes with the removable portion of the card. Inherent to the claimed limitations the removable portion is removed from the container to gain access to the container. This is not the same as having a foil backing removed in individual sections aligned with an array of blister packs. Id. (emphasis added). Appellant’s contention that Fensham does not disclose “a removable portion with the container being attached to be removed with the removable portion” is also unpersuasive. Appeal Br. 5. The Examiner explains Fensham teaches that each trough 66.1–66.5 is spaced from an adjacent trough by a planar land 22, where the removable portion comprises each individual trough along with planar land 22 and film/card 76. Id. (citing Fensham ¶ 75, Figs. 3, 4); see also Fensham, Fig. 7 (showing film 76). As noted above, the Examiner finds that each of the troughs 66.1–66.5 corresponds to the recited container. See Ans. 7. The Examiner submits that Fensham teaches that each removable portion is separated from the remaining portions of the blister pack by perforations. Id. The Examiner notes that Figures 4 and 5 of Fensham show an individual removable Appeal 2020-006723 Application 15/660,664 7 portion; Figure 3 shows the removable portion before film/card 42 is removed; and Figure 4 shows the removable portion after film/card 42 has been removed. In Fensham, each container (troughs 66.1–66.5) is removably coupled to the card (film) and perforations (perforations 68.1–68.4 corresponding to respective troughs 66.1–66.5 and perforated hinge lines 50, 52) are provided to allow the container to be removed from the card with the removable portion. As for Appellant’s contention that “[i]nherent to the claimed limitations the removable portion is removed from the container to gain access to the container” (Appeal Br. 5), claim 1 does not recite this limitation. Rather, claim 1 recites “said container is removed from said card with said removable portion” and “said plurality of objects being removable from said container when said container is removed from said card.” Id. at 7 (Claims App.). Appellant does not explain persuasively why, in Fensham, a container is not removed from the card to which the container is coupled along with a removable portion of the card by severing “perforations . . . provided around the container connection,” or why the plurality of objects in the container are not removable from the container when it is removed from the card. As Appellant has not apprised us of error in the Examiner’s findings as to claim 1, we sustain the rejection of claim 1 as anticipated by Fensham. Claims 3–5 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2020-006723 Application 15/660,664 8 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5 102(a)(1) Fensham 1, 3–5 TIME PERIOD FOR RESPONSE 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