Ex Parte Angel

Patent Trials and Appeals Board

Jun 13, 2019

14172762 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/172,762 02/04/2014 Oswaldo Angel
23388 7590 06/17/2019
TROJAN LAW OFFICES
9250 WILSHIRE BL VD
SUITE 325
BEVERLY HILLS, CA 90212
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.
14-01-6739 8172
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
Trojan@trojanlawoffices.com
Speier@trojanlawoffices.com
diament@trojanlawoffices.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSWALDO ANGEL
Appeal2017-007104 1
Application 14/172,7622
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-4, 7, 8, 11, 13, and 21. An oral hearing was held on May 30, 2019.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision references the Appeal Brief ("Appeal Br.," filed Nov. 11,
2016), the Reply Brief ("Reply Br.," filed Apr. 4, 2017), the Examiner's
Answer ("Ans.," mailed Feb. 9, 2017), and the Final Office Action ("Final
Act.," mailed May 13, 2016).
2 According to Appellant, the real party in interest is Oswaldo Angel.
Appeal Br. 4.
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Application 14/172, 7 62
BACKGROUND
The Specification discloses "a triangular writing-instrument teaching-
system designed to provide a convenient, more efficient method of learning
basic mathematics and learning phonetics." Spec. ,i 2.
CLAIMS
Claims 1, 8, and 21 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A writing instrument comprising:
an elongated barrel having a first end, a second end and at
least three sides, each side having data printed along its length at
increments from the first end, each data represents a value;
wherein the values of the data are related in a manner that a
computation of the values of the data on any two sides that share
the same distance from the first end is equal to the value of the
data on another side that shares the same distance from the first
end·
'
the elongated barrel defines a shape that permits the
viewing of a single side without viewing any other side to assist
in learning the computation among the data.
Appeal Br. 26.
REJECTION
The Examiner rejects claims 1-4, 7, 8, 11, 13, and 21 under 35 U.S.C.
§ 103 as unpatentable over Chen. 3
DISCUSSION
As discussed below, we are persuaded by Appellant's argument that
the independent claims require a functional relationship between the
structure of the device and the specific material printed on the device and
3 Chen, CN 201116044 Y, pub. Sept. 17, 2008.
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Appeal2017-007104
Application 14/172, 7 62
that the Examiner has not established that this functional relationship was
obvious in view of the art of record.
With respect to each of the independent claims, the Examiner finds
that Chen discloses a device with the structure claimed, "but fails to
expressly disclose the specific arrangement of printed matter claimed."
Final Act. 2-3. The Examiner determines that there is no functional
relationship between the structure of the writing instrument claimed and the
printed matter on the writing instrument. Id. at 4-5. The Examiner finds
that the writing instrument merely provides support for the printed matter in
the same manner as Chen's device, and thus, there is no novel or unobvious
functional relationship between the claimed printed matter and the writing
instrument. Id. at 4.
Appellant argues that the claims require a functional relationship
between the structure and the printed matter because, "[f]or] example, the
arrangement of the data restricts the structure of the writing instrument
because only one side of the printed computation table can be viewable at
one time." Appeal Br. 12. Appellant asserts that the structure of the device
and the arrangement of data on all three sides "restricts [a] ... user from
accessing all the data at the same time" and this relationship allows the users
to learn the computations printed on the sides. Id. at 22-23.
We agree with Appellant that there is a functional relationship
between the printed data and the writing instrument as claimed such that the
specific arrangement of data should be given patentable weight. A
functional relationship can be found where the product performs some
function with respect to the printed matter to which it is associated, such as
where the printed numbers are provided in a physical relationship to each
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Application 14/172, 7 62
other and exploit the structure that supports the data. See In re Gulack, 703
F.2d 1381, 1386-87 (Fed. Cir. 1983); see also MPEP § 2111.05. We
determine that the claims here provide such a functional relationship. In
particular, the printed data are not only supported by the writing instrument,
but are situated in such a way that the values are computationally related as
required by each of the independent claims, i.e., the computation of two
values, printed at one distance from the end of the device on two separate
sides, equals a third value printed at the same distance on the device on a
third side. Put another way, there is a specific function provided by the
manner in which the data and the structure of the device are related, which is
the computational relationship required by the claim.
Further, although Chen may suggest a relationship between the data
on one side and the data on any other side, including the conversion from
one measuring unit to another, Chen does not disclose the specific
relationship claimed, whereby the computation of values on two sides equals
the value printed on the third side. The Examiner acknowledges that Chen
does not teach such a relationship, but the Examiner does not explain why
such a relationship would have been obvious and only determines that the
specific printed material is not given patentable weight. See Ans. 10-11.
Thus, the Examiner has not established that the specific functional
relationship between the printed matter and structure of the writing
instrument required by each of the independent claims, as discussed above,
would have been obvious in view of Chen.
Based on the foregoing, we are persuaded of reversible error, and
thus, we do not sustain the rejection of claims 1-4, 7, 8, 11, 13, and 21.
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Application 14/172, 7 62
CONCLUSION
WeREVERSEtherejectionofclaims 1-4, 7, 8, 11, 13, and 21.
REVERSED
5