Ex Parte Kim

Patent Trial and Appeal Board

May 12, 2017

13225552 (P.T.A.B. May. 12, 2017)

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.
13/225,552 09/06/2011 Joshua Ethan Kim 1808
Joshua Kim
17412 La Brisa
7590 05/12/2017 EXAMINER
HE, JIALONG
PO Box 7288
Rancho Santa Fe, CA 92067-7288 ART UNIT PAPER NUMBER
2659
MAIL DATE DELIVERY MODE
05/12/2017 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 JOSHUA ETHAN KIM
Appeal 2016-001902
Application 13/225,5521
Technology Center 2600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4—12, 17, 18, and 20-26. Claims 3, 13—16, and 19 have been
canceled. App. Br. 14—16. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the inventor, Joshua Ethan Kim, as the real party in
interest. App. Br. 4.
Appeal 2016-001902
Application 13/225,552
STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to a method for teaching or
learning vocabulary comprising providing a writing instrument comprising
one or more vocabulary words and their corresponding definitions displayed
on the exterior surface of the writing instrument. Spec. 12.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method of teaching or learning vocabulary comprising:
providing a writing instrument comprising an English
vocabulary word and a corresponding English definition displayed on
the exterior surface of the writing instrument.
The Examiner’s Rejection
Claims 1, 2, 4—12, 17, 18, and 20-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Carolina Pen & Pencil Co., available at
http://www.carolinapens.com/pepe31iofim.html (last visited February 20,
2008) (“Carolina”) and Huang (US 2009/0011392 Al; Jan. 8, 2009). Final
Act. 5—6.
ANALYSIS2
In rejecting independent claims 1 and 20, the Examiner finds, inter
alia, Carolina teaches providing a writing instrument (e.g., a pencil) on
2 Throughout this Decision we have considered the Appeal Brief, filed
July 13, 2015 (“App. Br.”); the Reply Brief, filed November 2, 2015 (“Reply
Br.”); the Examiner’s Answer, mailed September 4, 2015 (“Ans.”); the
Final Office Action (“Final Act.”), mailed February 3, 2015, from which this
Appeal is taken.
2
Appeal 2016-001902
Application 13/225,552
which text may be displayed on the exterior surface of the writing
instrument. Final Act. 5 (citing Carolina 1—2); see also Ans. 3. The
Examiner relies on Huang to teach helping a user learn vocabulary words by
printing a word and its corresponding definition on a flash card. Final Act. 5
(citing Huang, Figs. 1, 2); see also Ans. 3^4. The Examiner further finds:
It would have been obvious to a person having ordinary skill in
the art at the time the invention was made to modify Carolina’s
teaching with Huang’s teaching to put Word defmition[s] on
[the] surface of pencils. One having ordinary skill in the art
would have been motivated to make such a modification to help
learn words and their definitions.
Final Act. 5—6 (citing Huang || 12—14).
Appellant contends the Examiner fails to provide an objective reason
to combine the teachings of the identified references.3 App. Br. 10—11;
Reply Br. 5. In particular, Appellant asserts “[t]he Examiner has not met his
burden to establish that there is ANY reason to randomly combine a
promotional pencil with a particular type of flash card system.” Reply Br. 5.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§103 should be made explicit. Additionally, the Federal Circuit has stated
that “rejections on obviousness grounds cannot be sustained by mere
3 We only address this issue, which is dispositive as to the Examiner’s
rejection of independent claims 1 and 20. We do not address additional
issues raised by Appellant’s arguments.
3
Appeal 2016-001902
Application 13/225,552
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418. Further, it is improper to base a
conclusion of obviousness upon facts gleaned only through hindsight. “To
draw on hindsight knowledge of the patented invention, when the prior art
does not contain or suggest that knowledge, is to use the invention as a
template for its own reconstruction—an illogical and inappropriate process
by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81
F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc, v. Garlock,
Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)).
Here, the Examiner’s statement of motivation to combine the
identified reference—“to help learn words and their definitions”—lacks
sufficient reasoning and explanation as to why one of skill in the art would
have elected to imprint the words and definitions of Huang onto the
customizable pencils of Carolina.
For the reasons discussed supra, and on the record before us, we do
not sustain the Examiner’s rejection of independent claim 1. For similar
reasons, we do not sustain the Examiner’s rejection of independent claim 20,
which recites similar limitations. Additionally, we do not sustain the
Examiner’s rejection of claims 2, 4—12, 17, 18, and 21—26, which depend
therefrom.
NEW GROUND OF REJECTION
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b). We reject independent claims 1 and 20 under
4
Appeal 2016-001902
Application 13/225,552
35 U.S.C. § 102(b) as being anticipated by Carolina Pen & Pencil Co.,
available at http://www.carolinapens.com/pepe31iofim.html (last visited
February 20, 2008) (“Carolina”).
Appellant’s claimed invention is directed to “teaching or learning
vocabulary comprising providing a writing instrument comprising one or
more vocabulary words and corresponding definitions displayed on the
exterior surface of the writing instrument.” Spec. 12. Exemplary writing
instruments include a pencil, pen, marker, stylus, crayon, chalk or brush.
Spec. 110. Figure 1 is illustrative of a claimed embodiment and is
reproduced below:
100
Figure 1 illustrates a writing instrument (100) wherein vocabulary
words (140) and their corresponding definitions (150) are displayed on the
exterior surface (110) of the writing instrument. Spec. 123.
5
Appeal 2016-001902
Application 13/225,552
It is well-settled that in order to be given patentable weight, printed
matter must have a functional relationship to its substrate. See, e.g., In re
Miller, 418 F.2d 1392, 1396 (CCPA 1969). In Miller, the predecessor to our
reviewing court made clear that “printed matter by itself is not patentable
subject matter, because [it is] non-statutory.” Miller, 418 F.2d at 1396.
However, if the printed matter has a “new and unobvious functional
relationship” with the substrate (e.g., volumetric indicia on measuring
vessels), it is entitled to patentable weight. Miller, 418 F.2d at 1396.
In contrast to Miller, in In re Smith, 70 F.3d 1290 (Fed. Cir. 1995)
(unpublished opinion), the application being appealed was directed to a
retractable tape measure having electrical information displayed on the tape
and tape housing for ease of reference by, for example, an electrician. See
Smith, 70 F.3d at 1290. The court did not find a functional relationship
between the printed matter (i.e., electrical information) and the tape or the
tape housing and, accordingly, the printed matter did not patentably
distinguish the applicant’s claimed invention from the prior art. See Smith,
70 F.3d at 1290. “Where 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.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983).
Further, although the cases discussed supra relate to apparatus claims,
the same reasoning is equally applicable to process (i.e., method) claims.
See, e.g.. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278—79 (Fed.
Cir. 2010) (“we believe that the rationale underlying these cases extends to
the situation presented in this case”). See also In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004).
6
Appeal 2016-001902
Application 13/225,552
Independent claims 1 and 20 are reproduced below:
1. A method of teaching or learning vocabulary comprising:
providing a writing instrument comprising an English
vocabulary word and a corresponding English definition displayed on
the exterior surface of the writing instrument.
20. A method of displaying an English vocabulary word and a
corresponding English definition on the exterior surface of a writing
instrument, the method comprising
providing a writing instrument and
engraving or printing the English vocabulary word and the
corresponding English definition on the exterior surface of the writing
instrument.
The Specification does not disclose, nor does Appellant establish, that
the printed matter—i.e., the vocabulary words and their corresponding
definitions—is in any way functionally related to the writing instrument. In
other words, the functionality of the writing instrument remains the same
and is not affected by the addition of vocabulary words and corresponding
definitions on the exterior surface of the writing instrument. Accordingly,
we determine “an English vocabulary word and a corresponding English
definition” constitute non-functional descriptive matter and, thus, are not
accorded patentable weight.
Having determined independent claims 1 and 20 recite non-functional
descriptive matter, we are mindful to read the claim as a whole in our
analysis. See Gulack, 703 F.2d at 1385 (“[T]he board cannot dissect a claim,
excise the printed matter from it, and declare the remaining portion of the
mutilated claim to be unpatentable. The claim must be read as a whole.”).
“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
7
Appeal 2016-001902
Application 13/225,552
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Such
statements often appear in a claim’s preamble, but can appear elsewhere in
the claim. See In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). The claim
preamble must be read in the context of the entire claim. See Pitney Bowes,
Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
If, however, the body of the claim fully and intrinsically sets
forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of
no significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes, 182 F.3d at 1305.
Here, the Examiner finds (see Ans. 4), and we agree, the preamble
recites an intended use for the claimed methods and carries no patentable
weight. See In re Otto, 312 F.2d 937, 939 (CCPA 1963) (finding the
intended use of hair curling does not result in a manipulative difference to
the process of making a core member for hair curlers); see also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Based on the foregoing discussion, claims 1 and 20 are interpreted as
follows:
1. A method for [an intended use] comprising:
providing a writing instrument comprising [non-functional
descriptive matter] displayed on the exterior surface of the writing
instrument.
20. A method of displaying [non-functional descriptive matter] on
the exterior surface of a writing instrument, the method comprising
providing a writing instrument and
engraving or printing [non-functional descriptive matter] on the
exterior surface of the writing instrument.
8
Appeal 2016-001902
Application 13/225,552
Carolina discloses providing writing instruments (e.g., pencils) that
may have customizable text imprinted (i.e., displayed) on the exterior
surface of the writing instruments. Carolina 1—2. As the Examiner explains,
Carolina discloses allowing a user to enter text via a Web interface and
shipping (i.e., providing) the ordered pencils to the purchasing user. Ans. 3.
For the reasons discussed supra, we find independent claims 1 and 20
are anticipated under 35 U.S.C. § 102(b) by Carolina.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have made a new rejection regarding
independent claims 1 and 20 under 35 U.S.C. § 102(b), pursuant to
37 C.F.R. § 41.50(b). However, we have not reviewed the remaining claims
to the extent necessary to determine whether these claims are unpatentable
over Carolina, Huang, or other prior art. We leave it to the Examiner to
ascertain the appropriateness of any further rejections based on these or
other references. Our decision not to enter a new ground of rejection for all
claims should not be considered as an indication regarding the
appropriateness of further rejection or allowance of the non-rejected claims.
See MPEP § 1213.03.
DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, 4—12, 17,
18, and 20—26.
We newly reject claims 1 and 20 under 35 U.S.C. § 102(b) as being
anticipated by Carolina.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
9
Appeal 2016-001902
Application 13/225,552
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED:
37 C.F.R, $ 41.50(b)
10