Ex Parte Folsom

Patent Trial and Appeal BoardJan 27, 2014

12416845 (P.T.A.B. Jan. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KIM TADLOCK FOLSOM ____________ Appeal 2011-012561 Application 12/416,845 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HYUN J. JUNG, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012561 Application 12/416,845 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-14. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative: 1. A method comprising: using a computer system to provide instructions for assembly of a purchased item over the internet; said instructions including a first playback segment, a second playback segment, and a third playback segment, which collectively provide assembly instructions for said purchased item; using said computer for playing each of said playback segments, to collectively display assembly or setup instructions for said item. Appellant appeals the following rejections: 1. Claims 1, 2, 8, 10, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Haye (US 2002/0055798 A1; pub. May 9, 2002) in view of Haye. 2. Claims 3, 4, and 11 under 35 U.S.C. § 103(a) as unpatentable over Haye in view of Haye and further in view of Cambridge (US 2001/0037373 A1; pub. Nov. 1, 2001). 3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Haye in view of Haye and further in view of Cambridge and further in view of Blumenau (US 2004/0078292 A1; pub. Apr. 22, 2004). 4. Claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Haye in view of Haye and further in view of Dalzell (US 2003/0204447 A1; pub. Oct. 30, 2003). Appeal 2011-012561 Application 12/416,845 3 5. Claims 9 and 14 under 35 U.S.C. § 103(a) as unpatentable over Haye in view of Haye further in view of Dalzell and further in view of Freel (US 2004/0024661A1; pub. Feb. 5, 2004). ISSUES Did the Examiner err in rejecting claims 1 as being obvious in view of the cited prior art because the Examiner relies on two embodiments in the same reference and because Haye fails to suggest providing instructions including a first playback segment, second playback segment, and third playback segment? Did the Examiner err in rejecting claim 3 because the prior art fails to suggest viewing information about the instructions prior to purchasing the product? Did the Examiner err in rejecting claim 5 because the prior art fails to suggest instruction playback segments of a specified length of time? Did the Examiner err in rejecting claim 9 because the prior art fails to suggest rating the product installation assembly? FACTUAL FINDINGS We adopt the Examiner’s findings as our own. Ans. 5-15. Additional findings of fact may appear in the Analysis that follows. Appeal 2011-012561 Application 12/416,845 4 ANALYSIS Rejection of claims 1, 2, 8, 10, 12, and 13 We are not persuaded of error on the part of the Examiner by Appellant’s argument that it was improper to base an obviousness rejection based on a reference in view of itself. Appellant is directed to Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009), wherein our reviewing court explained that “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” We are not persuaded of error on the part of the Examiner by Appellant’s argument that Haye does not suggest providing instructions including a first playback segment, second playback segment, and third playback segment. It was known, as evidenced by Haye paragraph 0023, to use a computer system to provide instructions in the form of a video. It was also known, as evidenced by Haye paragraph 0015, to provide written instructions in segments that correspond to subassemblies. Therefore, we agree with the Examiner that given these two disclosures it would have been obvious to combine the teaching of providing separate instructions for each subassembly with the teaching of providing instructions in the form of a video. In view of the foregoing, we will sustain the Examiner’s rejection of claim 1. We are not persuaded of error on the part of the Examiner by Appellant’s argument, in regard to claim 2, that Haye does not disclose using the computer to purchase the item over the internet. We agree with the Examiner that paragraph 22 of Haye clearly describes allowing the user to Appeal 2011-012561 Application 12/416,845 5 purchase the product over the Internet. Therefore, we will sustain the Examiner’s rejection of claim 2. We will sustain the Examiner’s rejection of claim 12 because the Appellant relies on the same arguments made in regard to claim 1 to address the rejection of claim 12. We will also sustain the rejection as it is directed to claims 10 and 13 because the Appellant has not argued the separate patentability of these claims. Rejection of claims 3, 4, and 11 We are not persuaded of error on the part of the Examiner by Appellant’s argument in regard to claim 3 that neither Haye nor Cambridge discloses viewing information about the instructions prior to purchasing the product. We agree with the Examiner’s response to this argument found on page 18 of the Answer to the effect that since Haye discloses displaying a video for product assembly and Cambridge discloses viewing a video related to the product prior to purchase, it would have been obvious to view the instructions video prior to purchasing the product. Such combination would have been no more than the predictable use of prior art elements according to their established functions. We are not persuaded of error on the part of the Examiner by Appellant’s argument, in regard to the rejection of claim 4, that the prior art does not disclose or suggest viewing shortened versions of the instructions prior to purchase. We agree with the Examiner that the disclosure in Haye at paragraph 0015 of subassembly instructions meets this recitation since each set of subassembly instructions contains instructions for that subassembly but not instructions for the complete assembly. An instruction for just one subassembly is a shortened version of instructions for the full assembly. Appeal 2011-012561 Application 12/416,845 6 In view of the foregoing, we will sustain the Examiner’s rejection of claims 3 and 4. Rejection of claim 5 We are not persuaded of error on the part of the Examiner by Appellant’s argument that Haye does not disclose instruction playback segments of a specified length of time and that Blumenau does not disclose assembly instructions. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this regard Haye is relied on for teaching assembly instructions and Blumenau is relied on for teaching playback segments of a specified length of time. In view of the foregoing, we will sustain the Examiner’s rejection of claim 5. Rejection of claims 6 and 7 We will sustain this rejection because the Appellant does not argue this rejection separately but rather relies on the arguments directed to claim 1 from which these claims depend. Rejection of claims 9 and 14 We are not persuaded of error on the part of the Examiner by Appellant’s argument that nothing in the cited prior art describes rating the product installation assembly. Specifically, Appellant argues that Freel discloses that users can provide comments on the installation but not a rating of the product assembly instructions. As we discussed above, nonobviousness cannot be established by attacking the references individually where the rejection is based on a combination of references. In Appeal 2011-012561 Application 12/416,845 7 this regard, the Examiner relies on Dalzell for disclosing allowing a user to rate a product and Freel for disclosing allowing a user to provide comments regarding the product installation. As such, the Examiner’s rejection is based on the combined teachings of the prior art not just the teachings of Freel. In view of the foregoing, we will sustain the Examiner’s rejection of claim 9. We will also sustain the Examiner’s rejection of claim 14 because Dalzell teaches rating the product and Freel teaches rating the product installation instructions. DECISION The decision of the Examiner 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)(1)(iv). AFFIRMED hh