Ex Parte Lamendella

Patent Trial and Appeal Board

Aug 25, 2017

13533393 (P.T.A.B. Aug. 25, 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.
13/533,393 06/26/2012 Michael Lamendella 052187-000008USPT 2469
08/29/201770001 7590
NIXON PEABODY LLP
70 West Madison Street, Suite 3500
CHICAGO, IL 60602
EXAMINER
JUNGE, KRISTINA N S
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
docketingchicago @ nixonpeabody.com
ipairlink @ nixonpeabody. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LAMENDELLA
Appeal 2016-000400
Application 13/533,393
Technology Center 3600
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Lamendella (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated November 5, 2013 (“Final Act.”), and as further explained in the
Advisory Action dated February 19, 2014 (“Adv. Act.”), rejecting claims 1—
12, 14, 15, and 18—21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Mr. Carpet Shop At Home, Inc. as the real party
in interest. Appeal Br. 3.
Appeal 2016-000400
Application 13/533,393
BACKGROUND
The disclosed subject matter “relates generally to shop-at-home
catalogs, and more particularly, to shop-at-home catalogs of flooring
samples that provide upfront pricing.” Spec. 12. Claims 1 and 14 are
independent. Claim 14 is reproduced below:
14. A portable assembly for shop-at-home
services, comprising:
two rigid substrates arranged in a folder,
each one of the two rigid substrates comprising an
upper left comer and a lower right comer;
a plurality of flooring samples of the same
style attached to respective individual substrates;
and
a plurality of indicia, each one of the
plurality of indicia being attached to a respective
one of the individual substrates and indicating a
price associated with a corresponding one of the
plurality of flooring samples attached to the
respective one of the individual substrates, the
individual substrates being attached to the two
rigid substrates for selling associated flooring
during a shop-at-home service such that the
plurality of flooring samples are arranged in a
descending price order from the upper left comer
of a first one of the two rigid substrates to the
lower right comer of a second one of the two rigid
substrates such that the price of the sample located
in the upper left comer of the first one of the two
rigid substrates is the highest out of the plurality of
indicia and the price of the sample located in the
lower right comer of the second one of the two
rigid substrates is the lowest out of the plurality of
indicia,
wherein the indicia are configured to
provide assurance to a shop-at-home customer that
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Application 13/533,393
the price associated with the samples is an actual
price of the samples and does not vary from one
shop-at-home customer to another.
REJECTIONS
1. Claims 19 and 21 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1—4, 8—12, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pilzer (US 4,542,827, issued Sept. 24, 1985),
Week (US 6,059,124, issued May 9, 2000), and Brand (US 2009/0308821
Al, published Dec. 17, 2009).
3. Claims 5—7 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pilzer, Week, Brand, and Worth (US 6,790,042 B2, issued
Sept. 14, 2004).2
4. Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooper (US 2009/0107934 Al, published Apr. 30, 2009),
Week, and Brand.
5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooper, Week, Brand, and Pilzer.
6. Claim 21 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooper, Week, Brand, and Worth.
2 Although the Examiner separates the discussion of this Rejection
into two groups of claims, both groups are rejected on the same basis. See
Final Act. 6—7 (claims 5 and 7), 7—8 (claims 6 and 19).
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Application 13/533,393
DISCUSSION
For clarity of the record, we address certain initial matters. First, we
address the status of the claims. In a Response to the Final Office Action
currently on appeal, Appellant proposed various amendments to the claims.
See Response to Final Office Action Mailed November 5, 2013, at 2
(Amendments to the Claims) (dated Feb. 4, 2014). As noted by Appellant
(Appeal Br. 4), in line 7 of the Advisory Action dated February 19, 2014, the
Examiner did not indicate whether or not the proposed amendments would
be entered for purposes of this appeal. Absent an affirmative indication
from the Examiner on the issue, we consider these amendments as merely
proposed, rather than entered. Appellant has done the same. See Appeal Br.
4—5 (“Out of an abundance of caution, this appeal brief assumes that they
were not entered, and appeals claim 14 in the form it was presented prior to
the mailing of the Final Office Action.”).
Next, we address the Reply Brief filed on November 26, 2014. With
the Reply Brief, Appellant filed a Petition for Extension of Time under
37 C.F.R. § 1.136(b). In a communication dated December 5, 2014, the
Petition was denied. We therefore will not consider the arguments in the
Reply Brief.
Rejections 1 through 3, 4 (as to claim 20), and 6
Appellant states, “[t]o simplify issues on appeal, Applicant is not
appealing the rejections of claims 1—12, or 18—21.” Appeal Br. 5. Appellant
does not list Rejections 1 through 3 or 6 in the “Grounds of Rejection to be
Reviewed on Appeal” {id. at 4), and does not present any arguments
contesting those Rejections {id. at 5—8). Moreover, Appellant does not list
claim 20 as part of Rejection 4 {id. at 4), and does not present any arguments
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Application 13/533,393
regarding that claim (id. at 5—8). We summarily affirm the rejections of
claims 1—12 and 18—21.
Rejection 4—The rejection of claim 14
under 35 U.S.C. § 103(a)
For claim 14, the Examiner relied on Cooper for certain limitations
(such as the “two rigid substrates” and “plurality of flooring samples”) but
stated that “Cooper does not teach individual substrate[s] for mounting the
samples on or the specific arrangement of the plurality of indicia.” Final
Act. 8. The Examiner relied on Week as teaching, inter alia,
an assembly for shopping with a plurality of samples attached
to respective individual substrates (Figure 2, #22; col. 4, lines
46-48); and a plurality of indicia, each one of the plurality of
indicia being attached to a respective one of the individual
substrates (col. 4, lines 42-43) and indicating a price associated
with a corresponding one of the plurality of samples attached to
the respective one of the individual substrates.
Id. According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention “to incorporate the
teachings of Week into the invention of Cooper in order to provide samples
which can be looked at more closely by a consumer.” Id. at 8—9.
The Examiner relied on Brand as teaching
an assembly for shopping, comprising a plurality of indicia
indicating a price (Figure 3, round price tags in centers of
modules), wherein the prices are arranged in descending price
order from a lower right comer to an upper left comer, such that
a product located closest to the upper left comer of a rigid
substrate is associated with the indicia indicating the lowest
price out of the plurality of indicia and the product located
closest to the lower right comer of the rigid substrate is
associated with the indicia indicating the highest price out of
the plurality of indicia.
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Application 13/533,393
Id. at 9 (citing Brand, Fig. 3, 25, 7). According to the Examiner, it would
have been obvious for one of ordinary skill in the art at the time of the
invention “to arrange the prices in any order desired as an obvious matter of
design choice” and also “to incorporate the teachings of Brand into the
invention of Cooper in order to provide all pertinent information to a
consumer in one place, as Cooper teaches that indicia may be included on
the substrate (10025, last 4 lines).” Id. at 9—10.
First, Appellant argues that “the Examiner has not found any prior art
that discloses, hints, or suggests putting prices in descending order with
shop-at-home flooring samples arranged in order of decreasing value.”
Appeal Br. 5. Appellant states that (1) Cooper “discloses flooring [but] says
nothing about prices,” (2) Week “is completely silent about flooring
samples, which are not themselves actually purchased but rather used in a
shop-at-home context to sell flooring that will be installed later,” and (3)
Brand “is likewise silent about flooring samples used for selling flooring
during a shop-at-home consultation.” Id.
We are not apprised of error based on this argument because
nonobviousness cannot be established by attacking references individually
when the rejection is based on a combination of prior art. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, by arguing that none of
the references, alone, teaches certain limitations of claim 14, Appellant does
not address the rejection as articulated, in which the Examiner relies on
certain combined teachings of the prior art. See Ans. 2 (stating that “Cooper
teaches a shop-at-home service, and therefore the secondary references are
not being used to teach this limitation”); see also Final Act. 8 (“Cooper
teaches a portable assembly for shop-at-home services (Figure 10, #12).”).
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Application 13/533,393
Second, Appellant relies on a Declaration for the assertion that “[n]o
one heretofore has put prices on flooring samples in a shop-at-home
environment.” Appeal Br. 5; see also Rule 1.132 Declaration | 6 (filed Feb.
4, 2014) (stating that “no one put pricing information on shop at home
boards until I did as claimed in my patent application”). According to
Appellant, “[t]his is a key point of distinction insofar as claim 14 recites
flooring samples.” Appeal Br. 5.
Even assuming as true the assertion from the Declaration set forth
above, Appellant’s argument does not demonstrate error. In the Rejection,
the Examiner did not rely on a single reference as disclosing all aspects of
claim 14 identified by Appellant. See Ans. 2 (“Although the examiner has
taken the declaration into consideration, it was not enough to overcome the
prior art of record.”).
Third, Appellant states that “[t]he word ‘sample’ in claim 14 breathes
life and meaning into the ‘shop-at-home service’ also recited in the body (as
well as in the preamble)” and argues that, in the Rejection, the Examiner
“appears to give no weight to claim 14’s recitation of ‘shop-at-home service’
or ‘shop-at-home customer.’” Appeal Br. 5, 6.3 Appellant contends that
“the arrangement of flooring samples on a substrate is uniquely material to a
shop-at-home context” and that “arranging samples, and in particular
3 In the clause beginning “plurality of indicia,” claim 14 recites “for
selling associated flooring during a shop-at-home service.” Appeal Br. 10
(Claims App.) (emphasis added). In the final clause, claim 14 recites
“wherein the indicia are configured to provide assurance to a shop-at-home
customer.” Id. at 11 (emphasis added).
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flooring samples, on rigid substrates would frustrate the central purpose of
Week and Brand—to move more products in a retail environment.” Id. at 6.
The Examiner responds that “[t]he limitation of ‘shop-at-home
services’ is found in the preamble of claim 14, yet was given weight as the
primary reference of Cooper teaches a shop-at-home service.” Ans. 2. In
the Rejection, the Examiner stated
it has been held that a recitation with respect to the manner in
which a claimed apparatus is intended to be employed (i.e. “for
selling associated flooring during a shop-at-home service” and
“to provide assurance to a shop-at-home customer...to another”)
does not differentiate the claimed apparatus from a prior art
apparatus satisfying the claimed structural limitations. Ex parte
Masham, 2 USPQ2d 1647 (1987).
Final Act. 9 (alteration in original).
We are not apprised of error based on this argument. Appellant does
not address or show error in the Examiner’s finding that Cooper teaches a
“portable assembly for shop-at-home services” as recited in the preamble.
See Final Act. 8 (“Cooper teaches a portable assembly for shop-at-home
services (Figure 10, #12).”); see also Ans. 2. Further, Appellant has not
demonstrated why, in light of the Examiner’s finding, the modified device—
i.e., Cooper as modified by Week and Brand—would not also satisfy the
“shop-at-home service” aspect of the “plurality of indicia” clause and the
“shop-at-home customer” aspect of the “wherein” clause.
Moreover, that the modified device may not address the alleged
purposes of the secondary references—selling products in a retail (as
opposed to a shop-at-home) environment (Appeal Br. 6)—does not apprise
us of error in the rejection. Cf. In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) (reversing a rejection because modifying the primary reference by
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turning a filter upside down would render it incapable of filtering, and thus,
inoperable for its intended purpose).
Fourth, Appellant contends that “Week and Brand are non-analogous
because a retail service is not analogous to a shop-at-home service.” Appeal
Br. 5. According to Appellant, “[i]n a retail environment, the purchaser
immediately takes physical possession of the item offered for sale once the
purchaser has paid for it” whereas, “[i]n a shop-at-home service, a
salesperson must visit the shop-at-home customer’s actual home and try to
persuade the customer to purchase one or more flooring items after perusing
the samples.” Id. Appellant states that “Week’s self-described system is a
‘point of purchase system’” and that “Brand’s arrangement displays
merchandise ‘for retail sale.’” Id. at 6.
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). A prior art reference that satisfies either test is
considered analogous art. See In re Kahn, 441 F.3d 977, 987—88 (Fed. Cir.
2006). Because Week and Brand satisfy the second test, we will not address
the first test.
Here, the Examiner finds that Week and Brand are in “an analogous
field of endeavor as [they] deal[] with the display of wares to a potential
customer, with informative displays providing relevant information to a
consumer.” Ans. 2—3; see also id. at 3 (stating that Week “deal[s] with the
idea of samples, as samples are clearly shown in Figure 2, on #22, indicating
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to a consumer what items are available for that price”). As this finding
relates to the purposes of Week and Brand, we consider it to relate to the
second test, rather than to the “field of endeavor” test. In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992) (“If a reference disclosure has the same purpose as
the claimed invention, the reference relates to the same problem, and that
fact supports use of that reference in an obviousness rejection.”). Appellant
identifies certain potential differences between claim 14 and the prior art of
Week and Brand, but has not shown error in the finding that Week and
Brand are analogous art because they have the same purpose, or relate to the
same problem, as the claimed invention.
Fifth, Appellant asserts that “[t]he Final Office Action also appears to
give little to no weight to the price indicia recited in claim 14, relying upon a
qualified printed matter rejection.” Appeal Br. 6.4 Appellant argues that
“according to settled authority, printed matter cannot be denied patentable
weight merely because it is printed matter and not physical structure.” Id.
(citing In re Miller, 418 F.2d 1392, 1395 (CCPA 1969)). According to
Appellant, “the critical question is whether there exists any new and
unobvious functional relationship between the printed matter and the
substrate.” Id. at 6—7 (quoting In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir.
1983)) (emphasis by Appellant). Appellant argues that “[t]he indicia recited
in claim 14 have a functional relationship with the individual substrates they
are attached to, and therefore should be given patentable weight” and that
4 In the Rejection, the Examiner stated: “Patentable novelty cannot be
principally predicated on mere printed matter and arrangements thereof, but
must reside basically in physical structure.” Final Act. 9 (citing In re
Montgomery, 214 F.2d 136 (CCPA 1954)).
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“[specifically, the indicia here ‘indicate[] a price associated with a
corresponding one of the plurality of flooring samples attached to the
respective one of the individual substrates.’” Id. at 7 (quoting Appeal Br. 10
(Claims App.) (a portion of claim 14)). Appellant contends that “[t]his
functional relationship is exactly the same type as the relationship in Miller,
and meets precisely the standard delineated in Miller and Gulack.” Id.
The Examiner responds that “[t]he functional relationship between
price indicia on a product and an arrangement on a display based on the
price indicia has been found to be taught by Brand and the combination of
the references.” Ans. 3^4.
We are not apprised of error based on this argument. Although
Appellant discusses a functional relationship—i.e., that the “indicia”
“communicate[s] information about the relative value or quality of flooring
samples attached to the substrate” (Appeal Br. 7)—Appellant does not
explain how this relationship is “new and unobvious” in light of the relied-
upon prior art, such as Brand. Gulack, 703 F.2d at 1386. Here, we agree
with the Examiner’s position (set forth above) that the functional
relationship between the “indicia” and the “individual substrates” in claim
14 is the same functional relationship as in Brand (and the same as would be
present in the modified device). Thus, we see no error in the Examiner’s
position that the requirement that the “indicia” be in “descending price
order” as recited in claim 14 does not patentably distinguish from the
ascending price order disclosed in Brand. See Final Act. 9; Ans. 3^4.
Moreover, the Examiner states that the “arrangement [on a display
based on the price indicia] is further considered obvious to one of ordinary
skill in the art as a matter of user preference.” Ans. 4; see also Final Act. 9
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(“It would have been obvious to one of ordinary skill in the art at the time of
the invention to arrange the prices in any order desired as an obvious matter
of design choice.”). Appellant does not address, and does not show error in,
this alternative basis regarding the “descending price order” limitation in
claim 14.
For these reasons, we sustain the rejection of claim 14.
Rejection 5— The rejection of claim 15
under 35 U.S.C. § 103(a)
Appellant does not separately argue claim 15 (Appeal Br. 5—8), which
depends from claim 14. Thus, for the reasons discussed above (see supra
Rejection 4), we sustain the rejection of claim 15.
DECISION
We affirm the decision to reject claims 19 and 21 under 35 U.S.C.
§ 112, second paragraph and affirm the decision to reject claims 1—12, 14,
15, and 18—21 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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