Carter, Amy L.

Patent Trials and Appeals BoardJan 13, 2020

14703569 - (D) (P.T.A.B. Jan. 13, 2020)

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. 14/703,569 05/04/2015 Amy L. Carter 36347-0012001 9468 26191 7590 01/13/2020 FISH & RICHARDSON P.C. (TC) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 01/13/2020 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte AMY L. CARTER __________ Appeal 2019-004433 Application 14/703,569 Technology Center 3700 __________ BEFORE MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13–21 and 25–27. Claims 22–24 and 31 are allowed, and claims 28–30 and 32 are objected to but indicated as allowable. Final Act. 1, 11; Appeal Br. 1 fn 1. We have jurisdiction under 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the inventor.” Appeal Br. 1. Appeal 2019-004433 Application 14/703,569 2 35 U.S.C. § 6(b). For the reasons explained below, we do not find error in the Examiner’s rejections. Accordingly, we AFFIRM. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the field of artist supplies and tools.” Spec. 6:3–4. Claim 13 is the sole independent claim, is representative of the claims on appeal, and is reproduced below. 13. An artist palette, paint storage, and preservation system comprising: an artist paint palette having a smooth surface sized and configured for receiving pigment piles and allowing for sliding paint from the pigments piles into mixed paint pools on the smooth surface, wherein the smooth surface is bounded by first and second sidewalls with the smooth surface extending from the first sidewall to the second sidewall without recesses or divisions along the smooth surface between the first and second sidewalls; and a cover sized and configured to cover the artist paint palette so as to preserve pigment piles on the smooth surface of the artist paint palette, wherein at least a portion of the artist palette, paint storage, and preservation system comprises a transparent material. REFERENCES RELIED ON BY THE EXAMINER Maxwell US 3,885,666 May 27, 1975 Benaquista US 4,444,306 Apr. 24, 1984 McCarty US 4,820,163 Apr. 11, 1989 Arasim US 5,325,958 July 5, 1994 Jones, II US 2001/0048059 A1 Dec. 6, 2001 Appeal 2019-004433 Application 14/703,569 3 THE REJECTIONS ON APPEAL Claims 13–16, 20, and 25–27 are rejected under 35 U.S.C. § 103 as unpatentable over Benaquista and Arasim. Final Act. 2. Claims 17–19 are rejected under 35 U.S.C. § 103 as unpatentable over Benaquista, Arasim, and Jones. Final Act. 5. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over Benaquista, Arasim, and McCarty. Final Act. 6. Claims 13–16, 20, and 25–27 are rejected under 35 U.S.C. § 103 as unpatentable over Maxwell and Arasim. Final Act. 7. Claims 17–19 are rejected under 35 U.S.C. § 103 as unpatentable over Maxwell, Arasim, and Jones. Final Act. 9. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over Maxwell, Arasim, and McCarty. Final Act. 10. ANALYSIS The rejection of claims 13–16, 20, and 25–27 as obvious over Benaquista and Arasim Claims 13, 15, 20, 26, and 27 Appellant does not offer arguments in favor of claims 15, 20, 26, and 27 separate from those presented for independent claim 13. See Appeal Br. 2–7. We select claim 13 for review, with claims 15, 20, 26, and 27 standing or falling therewith. See 37 C.F.R. § 1.37(c)(1)(iv). We address remaining claims 14, 16, and 25 separately below. Regarding claim 13, the Examiner finds that Benaquista discloses an artist palette (bottom 4) having a smooth surface that is bounded by a first sidewall (stationary partition 8) and a second sidewall (wall adjacent to stop Appeal 2019-004433 Application 14/703,569 4 13 (stop 13 is shown in Figures 3 and 4)). Final Act. 3 (citing Benaquista Figs. 1–2); see also Ans. 3–4. The Examiner further annotates Figure 2 of Benaquista (reproduced below) to further identify such structure. Annotated Figure 2 of Benaquista identifies what the Examiner correlates to the recited “smooth surface” and “first” and “second” sidewalls. Ans. 4. Despite such teachings, the Examiner acknowledges that Benaquista does not disclose a transparent material as recited. See Final Act. 4. The Examiner, however, finds that “Arasim teaches it is well known in the art for the cover of a paint storage container to be transparent in order to permit viewing of the container contents.” Final Act. 4. The Examiner concludes that it would have been obvious to “modif[y] the cover of Benaquista to be transparent as taught by Arasim in order to allow viewing of the container contents when the cover is closed.” Final Act. 4. Appellant contends that “Benaquista discloses no palette with sidewalls. Rather, Benaquista discloses a ‘palette box’ that is used for ‘carrying’ a palette. (Benaquista, 1:15–17). An actual palette is ‘not shown.’ (Benaquista, 1:44–49.).” Appeal Br. 3. Thus, because no palette is disclosed in Benaquista, yet a palette is recited in claim 1, Appellant Appeal 2019-004433 Application 14/703,569 5 contends that the Examiner’s rejection of claim 13 is faulty. See Appeal Br. 3. Although the words of a claim “are generally given their ordinary and customary meaning,” a claim term is read “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Appellant’s Specification does not provide an explicit definition of the claim term “palette” that would appear to differ from its ordinary and customary meaning. See Appellant’s Specification generally. From a review of Benaquista, it is clear that a distinction is made between a “palette (not shown)” and a “palette box enabling the carrying” of a palette. Benaquista 1:15–17; 1:47–48. Consequently, any correlation by the Examiner of surface 4 of Benaquista’s container to what is generally understood to be a palette (see Final Act. 3) would be misguided based on Benaquista’s teachings. However, the Examiner’s rejection does not make such a direct correlation. Instead, the Examiner finds that Benaquista’s “surface 4 can be considered an artist paint palate” (not “a paint palate”). Final Act. 3 (emphasis added). More specifically, the Examiner finds that Benaquista discloses . . . an artist paint palette (surface 4 can be considered an artist paint palette since it is capable of containing paints thereon) having a smooth surface (at 4) capable of receiving pigment piles and capable of allowing for sliding paint from the pigments piles into mixed paint pools on the smooth surface. Final Act. 3 (emphasis added). These findings are consistent with the language of claim 13 (i.e., reciting “a smooth surface sized and configured Appeal 2019-004433 Application 14/703,569 6 for receiving pigment piles” and “allowing for sliding paint from the pigments piles into mixed paint pools on the smooth surface”). As is well-known, a patent applicant is free to recite features of an apparatus structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). Where the Patent Office has reason to believe that a functional limitation is an inherent characteristic of the prior art, it can require an applicant to show that the prior art does not possess the claimed functional feature. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (once the PTO made a showing that the prior art disclosed the claimed functional feature, “the burden shifted to Schreiber to show that the prior art structure did not inherently possess the functionally defined limitations of the claimed apparatus”); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not”). Here, Appellant has not identified a difference between the recited structure of the claimed palette and Benaquista’s box for holding a palette, notwithstanding their disparate functions. See also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”). Appellant does not explain why Benaquista’s surface 4 is incapable of meeting the above criteria. In other words, Appellant does not explain how Appellant’s item 5 can be deemed a palette, yet Benaquista’s surface 4 cannot. Accordingly, we agree with the Examiner that “the palette box shown in Fig. 2 of Benaquista can be considered an artist paint palette” consistent with the recitations of claim 13. Ans. 3. Appeal 2019-004433 Application 14/703,569 7 Appellant additionally contends that claim 13 requires the smooth surface bounded by the sidewalls be “without recesses or divisions along the smooth surface between the first and second sidewalls.” Appeal Br. 3. Here, Appellant states that “the [palette] box of Benaquista clearly has divisions (e.g.[,] ‘stationary partitions 8,8’ and ‘bridging element 12’ shown in [Figure 2]).” Appeal Br. 3. This argument is unpersuasive because Appellant is identifying Benaquista’s partitions 8 as being an intermediate division when, in fact, the Examiner has identified partitions 8 as one of the sidewalls bordering the smooth surface. See Final Act. 3; Ans. 4. To be clear, the Examiner states, “[a]s long as the smooth surface extends from the first sidewall to the second sidewall, the claim limitation is met.” Ans. 4. Appellant is not arguing the Examiner’s rejection, which regards partitions 8 as a sidewall. See Final Act. 3. Instead, Appellant is treating these partitions 8 as a division between sidewalls, and not as a sidewall itself. See Appeal Br. 3. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claim 13 as being obvious over Benaquista and Arasim. We sustain the rejection of claims 13, 15, 20, 26, and 27. Claim 14 Claim 14 recites, “wherein each of the artist paint palette and the cover comprise a transparent material.” Appeal Br. 8 (Claims App.). The Examiner acknowledges that the combination of Benaquista and Arasim “does not expressly disclose that the base (artist paint palette) comprises a transparent material.” Final Act. 4. However, “Official Notice is taken, that it is old and conventional to form the base and cover portions of a container from transparent material.” Final Act. 4; see also Ans. 6 (referencing Appeal 2019-004433 Application 14/703,569 8 “Nardozza (US 8,091,700[B2; Jan. 10, 2012])” as evidence of this “Official Notice”). Appellant disagrees stating, “there is further no evidence of a unique paint palette specifically as claimed in claim 13 to have both a transparent cover and a transparent artist paint palette” and “[t]o argue otherwise necessarily requires impermissible hindsight.” Appeal Br. 4. The Examiner responds that Arasim “was used for its teaching of a cover for a paint storage container being transparent in order to permit viewing of the container contents (See column 2, lines 49–51)” and that Nardozza “is further provided as evidence that it’s well known in the art for cover and base portions of a paint palette package (shown at 10 in Figs. 1 and 4) to be formed from transparent material (See column 1, line 42 and also the claims).” Ans. 6. The Examiner’s reliance on Official Notice, as evidenced by Nardozza’s “clear transparent paint brush package or holder 10” (Nardozza 1:42–43), provides reasoning to conclude that the Examiner was not relying on “impermissible hindsight” in rejecting claim 14 but instead, on the knowledge a skilled person would possess.2 Appeal Br. 4. Thus, we agree with the Examiner’s reasoning that it would have been obvious to modify the system of Benaquista and Arasim to have Benaquista’s surface 4 formed 2 See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.”’). See also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”). Appeal 2019-004433 Application 14/703,569 9 of a transparent “material in order to allow for the contents of the base to be viewed from any side when the apparatus is closed.” Final Act. 4; see also Ans. 6. For these reasons, the rejection of claim 14 as being obvious over Benaquista and Arasim is sustained. Claim 16 Claim 16 recites “wherein the artist palette, paint storage, and preservation system is sized to fit in a pochade box in such a way as to make optimal use of available palette area inside that pochade box.” Appeal Br. 9 (Claims App.). The Examiner finds that “the apparatus of Benaquista- Arasim is fully capable of fitting within a pochade box in such a way as to make optimal use of available palette area inside that pochade box.” Final Act. 5; see also Ans. 7. Appellant contends that “there is no articulated reason for why the disclosed boxes were believed to be sized to fit in a pochade box as claimed.” Appeal Br. 5. The Examiner responds that “the pochade box is not positively recited in claim 16.” Ans. 7. As such, there is no requirement for a particular dimension or size of the pochade box, or of Benaquista’s modified structure. Further, Appellant does not explain how one skilled in the art is unable “to make optimal use of available palette area inside that pochade box.” Ans. 7. Accordingly, Appellant does not apprise us of Examiner error. For these reasons, the rejection of claim 16 as being obvious over Benaquista and Arasim is sustained. Claim 25 Claim 25 recites “wherein the artist paint palette comprises a relatively large, flat, undivided base and four sides.” Appeal Br. 11 (Claims App.). Appellant contends that “as explained above with respect to claim Appeal 2019-004433 Application 14/703,569 10 13, Benaquista does not even show a palette (stating that ‘the palette’ is ‘not shown’).” Appeal Br. 6. This argument is unpersuasive for the reasons discussed above. In particular, Appellant’s contention does not address the Examiner’s “can be considered” or “capable of” findings that correlate the recited “palette” to Benaquista’s “surface 4.” Final Act. 3. Further, the Examiner correctly responds that “as shown in Fig. 2 of Benaquista labeled [in the annotated Figure 2], the device has a relatively large, flat, undivided base (at 4) which is bounded by four sides (See four sidewalls labeled [in the annotated Figure 2]).” Ans. 10; see also id. (The Examiner’s further annotation of Benaquista’s Figure 2 identifying four sidewalls). For these reasons, the rejection of claim 25 as being obvious over Benaquista and Arasim is sustained. The rejection of claims 17–19 as obvious over Benaquista, Arasim, and Jones Appellant relies on similar arguments when responding to the rejection of claims 17–19. See Appeal Br. 5–6. We select claim 17 for review, with claims 18 and 19 standing or falling with claim 17. Claim 17 recites “further comprising: a pochade box, wherein the artist palette, paint storage, and preservation system is positioned inside the pochade box.” Appeal Br. 9 (Claims App.). The Examiner acknowledges that “Benaquista-Arasim discloses the claimed invention except for the apparatus being positioned in a pochade box.” Final Act. 5. The Examiner, however, finds that “Jones teaches it is well known in the art for painting supplies to be fully positioned within a pochade box for the purpose of conveniently storing and transporting the painting supplies.” Final Act. 5–6; Appeal 2019-004433 Application 14/703,569 11 see also Jones ¶ 3. The Examiner concludes that it would have been obvious to modify the system of Benaquista-Arasim with a pochade box as taught by Jones “in order to conveniently store and transport the painting supplies.” Final Act. 6; see also Ans. 9. Appellant contends, “there is no evidence that any POSITA would have been motivated to position the device of the Benaquista-Arasim [] in a pochade box.” Appeal Br. 5. Hence, “[t]he question remains why a POSITA would have been motivated to put such boxes inside another box.” Appeal Br. 5. This is because “[t]he cited references simply say nothing on the subject.” Appeal Br. 5. Appellant appears to have ignored the Examiner’s reasons, which are based on storage and transportation needs. See Final Act. 6; Ans. 9. We have been instructed by the Supreme Court that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Here, the Examiner responds that Jones “clearly provided the suggestion and motivation to modify [] Benaquista[], i.e., the advantage of containing paint supplies completely within the interior of a pochade box for convenient storage and transport.” Ans. 9. Notably, Jones discloses “[a] portable easel assembly includes a tripod assembly and a paint/sketch box.” Jones Abstr. (emphasis added). As such, there is no indication that, for Appeal 2019-004433 Application 14/703,569 12 portability purposes, the modified Benaquista device is incapable of being positioned within another box, such as the pochade box of Jones. We, thus, conclude the Examiner provided articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. For these reasons, the rejection of claims 17–19 as being obvious over Benaquista, Arasim, and Jones is sustained. The rejection of claim 21 as obvious over Benaquista, Arasim, and McCarty Appellant does not provide any substantive arguments with respect to this rejection. See Appeal Br. 2–7. Because we find no deficiencies in the Examiner’s rejection of parent claim 13 as being obvious over Benaquista and Arasim, we likewise sustain the Examiner’s rejection of claim 21 as being obvious over Benaquista, Arasim, and McCarty. The rejection of claims 13–16, 20, and 25–27 as obvious over Maxwell and Arasim Claims 13, 15, 20, 26, and 27 Appellant does not offer arguments in favor of claims 15, 20, 26, and 27 separate from those presented for independent claim 13. See Appeal Br. 2–7. We select claim 13 for review, with claims 15, 20, 26, and 27 standing or falling therewith. We address remaining claims 14, 16, and 25 separately below. Regarding claim 13, the Examiner finds that Maxwell discloses an artist palette (“upper surface of 13”) having a smooth surface which is bounded by sidewalls 14A and 14B. Final Act. 7 (referencing Maxwell Fig. Appeal 2019-004433 Application 14/703,569 13 1); see also Maxwell Figs. 2–3; Ans. 5.3 Similar to the arguments above regarding Benaquista, Appellant contends, “Maxwell also discloses no palette with sidewalls. Rather, Maxwell discloses a ‘container 11’ for holding a separate palette. Specifically, Maxwell describes and shows ‘an appropriately dimensional rectangular tablet-form palette 32’ that can be placed inside Maxwell’s container. (Maxwell, 3:33-36, Figs. 1-3.).” Appeal Br. 3. As such, Appellant argues that “a POSITA would have understood, that Maxwell’s ‘container 11’ is not a palette––it contains a ‘palette 32.’” Appeal Br. 3–4. However, Appellant’s contention does not address the Examiner’s “can be considered” or “capable of” findings (similar to the above) that correlate the recited “palette” to Maxwell’s “upper surface of 13.” Final Act. 7. Instead, Appellant addresses Maxwell’s “palette 32” and based thereon, concludes that the Examiner’s rejection is faulty. See Appeal Br. 3. Hence, the question becomes whether the Examiner’s above correlation of Maxwell’s “upper surface of 13” to the recited “palette” is consistent with Appellant’s Specification. Here, the Examiner finds that Maxwell discloses . . . an artist paint palette (upper surface of 13 can be considered an artist paint palette since it is capable of containing paints thereon) having a smooth surface (upper surface of 11) capable of receiving pigment piles and capable of allowing for sliding paint from the pigments piles into mixed paint pools on the smooth surface. Final Act. 7 (emphasis added). In other words, as with Benaquista above, Maxwell discloses all the structural components recited and, also, that such 3 The Examiner relies on Arasim for disclosing the same limitations as discussed above. Appeal 2019-004433 Application 14/703,569 14 components are capable of performing the functions recited and/or described in Appellant’s Specification. See Final Act. 7, 8; Ans. 5, 11. Again, Appellant does not explain how Appellant’s item 5 can be deemed a palette, yet Maxwell’s upper surface of 13 cannot. Stated another way, Appellant does not explain why Maxwell’s upper surface of 13 is incapable of being and/or performing as the recited “palette.” Thus, based on the record presented, we are not persuaded the Examiner erred in rejecting claim 13 as being obvious over Maxwell and Arasim. We sustain the rejection of claims 13, 15, 20, 26, and 27. Claim 14, 16, and 25 Appellant contends that the Examiner erred in rejecting these claims for the same reasons discussed above, which we do not find persuasive. See Appeal Br. 4–7. Appellant does not apprise us of Examiner error. See Ans. 6–7. Accordingly, we sustain the rejection of claim 14, 16, and 25 as being obvious over Maxwell and Arasim. The rejection of claims 17–19 as obvious over Maxwell, Arasim, and Jones Appellant contends that the Examiner erred in rejecting these claims for the same reasons discussed above, which we do not find persuasive. See Appeal Br. 5–6. Accordingly, Appellant does not apprise us of Examiner error. We sustain the rejection of claim 17–19 as being obvious over Maxwell, Arasim, and Jones. The rejection of claim 21 as obvious over Maxwell, Arasim, and McCarty Appellant does not provide any substantive arguments with respect to this rejection. See Appeal Br. 2–7. Because we find no deficiencies in the Appeal 2019-004433 Application 14/703,569 15 Examiner’s rejection of parent claim 13 as being obvious over Maxwell and Arasim, we likewise sustain the Examiner’s rejection of claim 21 as being obvious over Maxwell, Arasim, and McCarty. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–16, 20, 25–27 103 Benaquista, Arasim 13–16, 20, 25–27 17–19 103 Benaquista, Arasim, Jones 17–19 21 103 Benaquista, Arasim, McCarty 21 13–16, 20, 25–27 103 Maxwell, Arasim 13–16, 20, 25–27 17–19 103 Maxwell, Arasim, Jones 17–19 21 103 Maxwell, Arasim, McCarty 21 Overall Outcome 13–21, 25–27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED