Ex Parte McCurdy et al

Patent Trial and Appeal Board

Mar 10, 2017

12237252 (P.T.A.B. Mar. 10, 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.
12/237,252 09/24/2008 Kevin McCurdy 363864-991121 9446
26379 7590
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
NGUYEN, TUAN S
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
03/14/2017 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN McCURDY, GREG TATEM, and HOWARD FIELD
Appeal 2016-008367
Application 12/23 7,2521
Technology Center 2100
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, and 4—11, which constitute all the claims pending in
this application. Claim 3 is canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest identified by Appellants is Picaboo Corporation.
App. Br. 1.
Appeal 2016-008367
Application 12/237,252
STATEMENT OF THE CASE
Introduction
Appellants’ described and claimed invention relates generally to “[a]
greeting card system and method . . . that allows a user to place images on
each side of a greeting card.” Abstract.2
Claim 1 is representative and reads as follows (with the disputed
limitation emphasized)'.
1. A content system, comprising:
a content unit comprising one or more server computers;
a greeting card unit that is part of the content unit, the
greeting card unit comprising a plurality of lines of computer
code executed by the one or more server computers;
one or more computing devices that access the content
system over a link; and
the greeting card unit that allows a user to create a
greeting card having a plurality of surfaces for content and a
layout to layout and place a piece of content on each surface of
the greeting card wherein the piece of content further comprises
a background that is behind the layout on the greeting card and
an image that is positioned in the layout.
App. Br. 9 (Claims App’x).
2 Our Decision refers to the Final Office Action mailed Feb. 4, 2015 (“Final
Act.”), Appellants’ Appeal Brief filed Mar. 4, 2016 (“App. Br.”) and Reply
Brief filed Sept. 8, 2016 (“Reply Br.”), the Examiner’s Answer mailed July
8, 2016 (“Ans.”), and the original Specification filed Sept. 24, 2008
(“Spec.”).
2
Appeal 2016-008367
Application 12/237,252
Rejections on Appeal
Claims 1, 2, 4—7, and 9—11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mayle et al. (US 2003/0115286 Al; published June
19, 2003) (“Mayle”).3
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mayle, in view of Wensheng (US 2002/0095456 Al; July
18, 2002) (“Wensheng”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief (see App. Br. 4—8) and the Reply Brief (see
Reply Br. 2—7) and are not persuaded the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2—9) and in the Examiner’s Answer (Ans. 2—8), and we concur with the
conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
Appellants argue Mayle fails to disclose or suggest
the greeting card unit that allows a user to create a greeting card
having a plurality of surfaces for content and a layout to layout
and place a piece of content on each surface of the greeting card
3 Although the Final Office Action states the rejection is under
35 U.S.C. § 102(b) rather than 35 U.S.C. § 103(a) (see Final Act. 2), the
Examiner’s Answer clarifies that the rejection is under 35 U.S.C. § 103(a).
See Ans. 3—5. We find that the error in the Final Office Action is harmless
because the error did not prevent Appellants from providing substantive
arguments regarding Mayle (see App. Br. 4—5) and because Appellants had
an opportunity to respond to the Examiner’s obviousness rationale in
Appellants’ Reply Brief. See Reply Br. 4.
3
Appeal 2016-008367
Application 12/237,252
wherein the piece of content further comprises a background
that is behind the layout on the greeting card and an image that
is positioned in the layout,
as recited in claim 1. See App. Br. 4. More specifically, Appellants argue
Mayle does not disclose a system that allows a user to layout and place a
background piece of content behind a layout, and, at most, Mayle discloses a
system that allows the user to add text or an image on top of a standard
background that resembles a classic blank postcard. See App. Br. 4—5.
Regarding the Examiner’s obviousness rationale, Appellants argue: (a) the
substitution of applying background content to a single surface of an
electronic greeting card, as allegedly taught by Mayle, with applying
background content to multiple surfaces of the electronic greeting card
would not be a substitution of known elements because the claimed
“background that is behind the layout on the greeting card and an image that
is positioned in the layout” is not a known element; and (b) the Examiner
fails to explain why the substitution would yield predictable results. See
Reply Br. 4.
We do not find this argument persuasive. Regarding Appellants’
argument that Mayle does not disclose a system that allows the user to
layout and place a piece of content behind a layout, we disagree with
Appellants. Instead, we agree with the Examiner that Mayle teaches an
electronic postcard having two surfaces (i.e., a front surface and a back
surface), and further teaches selecting a background and creating a
composite image for the back surface of the electronic postcard using the
selected background and a foreground image/text layout. See Final Act. 3^4
(citing Mayle Tflf 68, 88, 105, Figs. 3B, 5); see also Ans. 5. Regarding
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Appeal 2016-008367
Application 12/237,252
Appellants’ argument that the Examiner’s substitution is not a substitution of
known elements, we also disagree with Appellants. “When a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007), citing United States v. Adams, 383 U.S. 39, 50—51
(1966). As previously discussed, we agree with the Examiner that Mayle
teaches both: (a) a greeting card having a plurality of surfaces; and (b) a
layout to layout and place a piece of content on a surface of the greeting
card, wherein the piece of content further comprises a background that is
behind the layout on the greeting card and an image that is positioned in the
layout. See Final Act. 3^4; see also Ans. 5. Thus, we also agree with the
Examiner that a modification of the system taught by Mayle to layout and
place the aforementioned content on a plurality of surfaces would merely be
a substitution of a known element for another known element yielding
predictable results. See Final Act. 4. Finally, regarding Appellants’
argument that the Examiner has failed to explain why the substitution would
yield predictable results, we conclude that one of ordinary skill in the art
would recognize that the Examiner’s modification would yield the
composite image, as taught by Mayle, displayed on both the front and back
surface of the electronic postcard. Additionally, Appellants have provided
no evidence that the substitution would yield any unpredictable results.
Thus, we are not persuaded that the Examiner erred in finding claim 1
obvious in light of Mayle. Accordingly, we sustain the rejection of claim 1
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Appeal 2016-008367
Application 12/237,252
under 35 U.S.C. § 103(a), as well as claims 2 and 4—11, not argued
separately.4
DECISION
We affirm the Examiner’s rejections of claims 1, 2, and 4—11 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
4 We find that Appellants’ separate argument for patentability of claim 7 is
substantially identical to Appellants’ argument for patentability of claim 1.
See App. Br. 6—7; see also Reply Br. 5—7. Thus, claim 7 stands or falls
together with claim 1.
6