Ex Parte Hart

Patent Trials and Appeals BoardFeb 28, 2019

15226861 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/226,861 08/02/2016 123519 7590 03/01/2019 Law Office of J. Steven Svoboda 1312B Mallard Drive Richmond, CA 94801 FIRST NAMED INVENTOR Mike Hart 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. HART-1001 5200 EXAMINER LAYNO, BENJAMIN ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 03/01/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE HART 1 Appeal2018-006880 Application 15/226,861 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1--4, 8, 9, and 11-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to the Application Data Sheet submitted August 2, 2016, the Applicant is Sierra Industrial Group, LLC (hereinafter "Appellant"). The Appeal Brief states that "[ t ]he real party in interest is the applicant and inventor ... Mike Hart." Appeal Br. 3. Appeal2018-006880 Application 15/226,861 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An apparatus, comprising: a set of playing card cups, wherein each playing card cup comprises exactly one image of a specific playing card selected from one of a standard deck of 52 playing cards, a first joker playing card cup, and a second joker playing card cup, wherein the second joker is different from the first joker, so as to elegantly and easily identify the cup's user, wherein at least one playing card image is usable in a playing card game. REJECTIONS I. Claims 1-3, 8, 9, 14--16, and 20 stand rejected under 35 U.S.C. Â§ 102(a)(l) as anticipated byNemeroff (US 5,301,802, iss. Apr. 12, 1994). II. Claims 4, 11-13, 17, and 18 stand rejected under 35 U.S.C. Â§ 103 as unpatentable over Nemeroff. III. Claim 19 stands rejected under 35 U.S.C. Â§ 103 as unpatentable overNemeroffandPeirce (US 496,131, iss. Apr. 25, 1893). DISCUSSION Rejection I The Examiner finds that N emeroff discloses, in relevant part, a set of cups 14, wherein each cup comprises a number 20, 22. N emeroff recites "[ w ]here numerical indicia are used, the indicia for the respective cups are ideally and preferably a sequential series (i.e., '1 ', '2 ', '3 ', etc.) without repetition[]. Thus, each of the cups 14 has its own unique indicia which serves to distinguish it from every other cup 14 in the container 2 Appeal2018-006880 Application 15/226,861 12", col. [2], lines 63-68. Thus, the number 20, 22 on each of Nemeroffs cups elegantly and easily identifies the cup's user. Final Act. 3 (boldface omitted). The Examiner determines that the claim language specifying that the image on each cup is a specific playing card is a printed matter recitation that does not patentably distinguish the claimed invention from Nemeroff's numbers. Id. at 3-5. In particular, the Examiner explains that there is no new and unobvious functional relationship between the claimed "cup" and the claimed printed matter in question "exactly one image of a specific playing card selected from one of a standard deck of 52 playing cards" printed on it. The claimed "cup" merely serves the same purpose as Nemeroff s cup, namely, it provides a substrate to support ... the indicia such that the indicia can be displayed for elegantly and easily identifying the cup's user. Id. at 4 (boldface and underlining omitted). The Examiner also determines that the recitation in claim 1 that "at least one playing card image is usable in a playing card game" is directed to intended use. Id. at 5---6. The Examiner finds that "Nemeroff's cups and numbers (i.e.[,] '1 ', '2', '3', etc.) on the cups are capable of being used to play card games." Id. at 6 (boldface and underlining omitted). Appellant argues that "the current application provides a new and unobvious functional relationship between the printed matter and the other elements of the invention." Appeal Br. 9. In particular, Appellant asserts that "the same playing card cup image both identifies the cup's user and is usable in the playing card game." Id. According to Appellant, the claimed invention is usable in a playing card game, whereas Nemeroff's numbers "are not usable in most playing card games." Id. at 10. We are not persuaded by Appellant's arguments. 3 Appeal2018-006880 Application 15/226,861 Here, the particular content of the image (i.e., a specific playing card) is not functionally related to the substrate (i.e., the cup) and, thus, will not distinguish the claimed invention from the prior art in terms of patentability. "[W]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability." See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)) (quoting In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)). As pointed out by the Examiner, the particular indicia on the cup does not alter its function or purpose relative to Nemeroff's cup. See Ans. 8 (explaining that "[t]he claimed 'cup' merely serves the same purpose as Nemeroff's cup, namely, it provides a substrate to support ... the indicia" (boldface omitted)). In other words, the substance of the indicia on the cup cannot impart patentability, as it is "'useful and intelligible only to the human mind."' See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Moreover, Appellant does not persuasively refute the Examiner's position that Nemeroff s numbered cups are capable of being used in playing card games. Appellant's statement that Nemeroff s numbered cups "are not usable in most playing card games" (Appeal Br. 10 (emphasis added)) appears to acknowledge that the numbered cups ofNemeroff are usable in at least some playing card games. For the above reasons, Appellant does not apprise us of error in the Examiner's finding that Nemeroff anticipates the subject matter of claim 1. Accordingly, we sustain the rejection of claim 1, and of its dependent claims 2, 3, 8, 9, 14--16, and 20, for which Appellant relies on the same argument (see id. at 13) under 35 U.S.C. Â§ 102(a)(l) as anticipated byNemeroff. 4 Appeal2018-006880 Application 15/226,861 Rejections II and III In contesting the rejections of dependent claims 4, 11-13, and 17-19, Appellant relies solely on the argument presented for base claim 1. See Appeal Br. 13. For the reasons discussed above, Appellant's argument fails to apprise us of error in the rejection of claim 1, and, likewise, fails to apprise us of error in the rejections of claims 4, 11-13, and 17-19. Accordingly, we sustain the rejections of claims 4, 11-13, and 17-19 under 35 U.S.C. Â§ 103. DECISION The Examiner's decision rejecting claims 1--4, 8, 9, and 11-20 is AFFIRMED. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5