Ex Parte Rice et al

Patent Trial and Appeal BoardMar 4, 2019

14490874 (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/490,874 09/19/2014 Mary Rose Rice 142312 7590 03/06/2019 Harness Dickey (Masco) P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 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. 5037P-000001-US-COJ 9523 EXAMINER MA, TIZE ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 03/06/2019 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): troymailroom@hdp.com mdoerr@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARY ROSE RICE, DAMIEN REYNOLDS, and MARC WEBB Appeal2017-006098 Application 14/490,874 1 Technology Center 2600 Before JEAN R. HOMERE, ADAM J. PYONIN, and KAMRAN JIVANI, Administrative Patent Judges. JIV ANI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's non-final rejection of claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, 19, 22, 23, 25, 26, and 29-32. App. Br. 1, 5. Claims 3, 6, 7, 10, 13, 14, 17, 20, 21, 24, 2 7, 28, have been canceled. Claims App 'x. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify Behr Process Corporation as the real party in interest. App. Br. 3. Appeal2017-006098 Application 14/490,8740F STATEMENT OF THE CASE The present patent application relates to a distributed system and method for aiding consumers in selecting complementary paint colors. Spec. ,r 2. Claims 1 and 15 are independent, representative of the claimed subject matter, and reproduced below with formatting added, bracketed material added, and disputed limitations emphasized: 1. An in-store kiosk comprising: a touch screen including an input device and a display device; a computing device communicatively coupled to the touch screen, the computing device having access to a database that includes a plurality of paint colors; wherein the computing device is configured to receive a starting paint color selected from the plurality of paint colors via the input device of the touch screen, to determine a plurality of coordinating paint colors for the starting paint color based on data received from the database, to display on the display device of the touch screen a color palette including the starting paint color and the plurality of coordinating paint colors, to store the color palette with user identification information on a server communicatively coupled to the computing device for subsequent retrieval using the user identification information, [L 1] to display on the display device of the touch screen inspirational content including at least one inspirational color palette with a plurality of preselected paint colors from the plurality of paint colors, and 2 Appeal2017-006098 Application I4/490,8740F [L2] to receive a selection selected from the plurality of preselected paint colors via the input device of the touch screen. 15. A system comprising: a touch screen including an input device and a display device; a computing device communicatively coupled to the touch screen, the computing device having access to a database that includes a plurality of paint colors; wherein the computing device is configured to receive a starting paint color selected from the plurality of paint colors via the input device of the touch screen, to determine a plurality of coordinating paint colors for the starting paint color based on data received from the database, to display on the display device of the touch screen a color palette including the starting paint color and the plurality of coordinating paint colors, to store the color palette with user identification information on a server communicatively coupled to the computing device for subsequent retrieval using the user identification information, [L3] to display on the display device of the touch screen a tutorial option that includes at least one video demonstration with how-to instructions for a painting project, [L4] to receive a selection for a video demonstration selected from the at least one video demonstration via the input device of the touch screen, and [L5] to play the selected video demonstration on the display device of the touch screen. 3 Appeal2017-006098 Application I4/490,8740F THE REJECTIONS 1. Claims 1, 2, 4, 5, 8, 9, 11 and 12 stand rejected under 35 U.S.C. Â§ I03(a) over Blanchard et al. (US 2002/0089513 Al; publ. July 11, 2002), Bartholomew (US 2001/0047309 Al; publ. Nov. 29, 2001), Masters (US 2002/0006602 Al; publ. Jan. 17, 2002), and Gordon (US 2002/0099725 Al; pub 1. July 25, 2002). 2. Claims 15, 16, 18, 19, 22, 23, 25, and 26 stand rejected under 35 U.S.C. Â§ I03(a) over Blanchard, Bartholomew, Masters, and Massengill (US 2002/0064302 Al; publ. May 30, 2002). 3. Claims 29 and 30 stand rejected under 35 U.S.C. Â§ I03(a) over Blanchard, Bartholomew, Masters, Gordon, and Massengill. 4. Claims 31 and 32 stand rejected under 35 U.S.C. Â§ I03(a) over Blanchard, Bartholomew, Masters, Massengill, and Gordon. ANALYSIS Claims 1, 2, 4, 5, 8, 9, 11, and 12 Limitation LI of claim 1 recites, in relevant part, "inspirational content including at least one inspirational color palette with a plurality of preselected paint colors" ( emphasis added). Independent claim 8 recites a commensurate limitation. The Examiner construes the claimed inspirational content as: "any materials that give users any idea or inspiration to use the product. That is, it would cover materials, such as hints, helps, samples, and suggestions, etc." Ans. 3. The Examiner further finds Gordon meets limitation L 1, as the Examiner construes it, because "Gordon provides various help modules, including tips, suggestions, or samples for user's project. Some samples are including displaying color palettes. The tips, 4 Appeal2017-006098 Application 14/490,8740F suggestions, or samples may give users some inspiration." Id. ( citing Gordon ,r,r 38, 40). Appellants contend, inter alia, that the Examiner errs in construing the claim too broadly and the cited paragraphs of Gordon do not disclose "inspirational content" as recited in independent claims 1 and 8. Reply Br. 1-5. We agree with Appellants. The Examiner's construction of the claimed "inspirational content" ignores the plain language of limitation L 1 requiring that such content must include "at least one inspirational color palette with a plurality of preselected paint colors." Limitation L2 further requires the preselected paint colors must be selectable by the user via the touch screen display. The Examiner's construction is overly broad in that it encompasses "any idea or inspiration to use the product" including "materials, such as hints, helps, samples, and suggestions" without the claimed inspirational color palette. That is, the Examiner's construction does not account for the requirements of limitations L 1 and L2 that the inspirational color palette must include a selectable display of preselected paint colors. Although the Examiner's construction does not address explicitly the recited inspirational color palette, the Examiner nevertheless finds in Gordon that "[s]ome samples are including displaying color palettes." Ans. 3. The Examiner fails to set forth citation in Gordon for this specific assertion. Having reviewed Gordon, we are unable to discern to which color palettes the Examiner refers. Therefore, even without the Examiner's unduly broad construction, the record before us does not contain sufficient evidence or explanation of how Gordon teaches or suggests limitation L 1. 5 Appeal2017-006098 Application 14/490,8740F Accordingly, on the record before us, we reverse the Examiner's obviousness rejection of independent claims 1 and 8, as well as their dependent claims 2, 4, 5, 9, 11, and 12 over Blanchard, Bartholomew, Masters, and Gordon. Claims 15, 16, 18, 19, 22, 23, 25, and 26 The Examiner cites Massengill as meeting limitations L3-L5 of independent claim 15 and commensurate limitations of independent claim 22. Non-Final Act. 13; Ans. 4--5. Independent claim 13 recites commensurate limitations, and the Examiner similarly cites Massengill as meeting these limitations. Id. Specifically, the Examiner refers to Massengill' s disclosure of providing an "instructional video for his product" related to image editing software to be used by cosmetic surgeons. See Ans. 5 ( citing Massengill ,r 16). Appellants contend the Examiner errs because the Examiner fails to identify specific disclosures in Massengill meeting limitations L3-L5, and fails to articulate a sufficient rationale to combine the cited references. App. Br. 16-20; Reply Br. 6-9. We agree with Appellants. The Examiner fails, in the record before us, to provide any analysis correlating each of limitations L3-L5 to purported teachings or suggestions in Massengill. See Non-Final Act. 13; Ans. 4--5. Rather, the Examiner summarily states, "[o]nce the video is provided to the user, selecting and displaying ( or displaying an option to display) the video or part of the video is inherent." Ans. 5. This statement is insufficient to show how Massengill teaches or suggests each of limitations L3-L5. Further, the Examiner makes insufficient findings in the record 6 Appeal2017-006098 Application 14/490,8740F before us to support a determination of inherency. The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977); see also Crown Operations Int'!, LTD v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this "burden of production by 'adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.'" In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the applicant "to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." Best, 562 F.2d at 1254--55 (internal citation omitted). Here, the Examiner finds "selecting and displaying ( or displaying an option to display) the video or part of the video is inherent" (Ans. 5), but this finding, standing alone, does not support a determination that the claimed displaying, selecting, and playing claimed in limitations L3-L5 are inherent in Massengill's cited disclosure that "[t]he system is available on CD-ROM only, with an instructional video and manual." Massengill ,r 16. Moreover, the Examiner's rationale to combine the cited references is facially deficient. Massengill is directed to a "method and apparatus for performing virtual cosmetic surgery." Massengill Abstr. Rather than articulate a rationale for modifying Blanchard, Bartholomew, and Masters (which are directed at interior design) with the teachings of Massengill, the Examiner summarily states: "In fact, the act of providing a tutorial/instructional video is so common that the combination would be so obvious with or without Massengill." Ans. 5. This statement does not carry the Examiner's burden of setting forth rational underpinning supporting 7 Appeal2017-006098 Application 14/490,8740F articulated reasoning for the asserted combination of references, including Massengill. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding a prima facie case of obviousness requires "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Accordingly, on the record before us, we reverse the Examiner's obviousness rejection of independent claims 15 and 22, as well as their dependent claims 16, 18, 19, 23, 25, and 26 over Blanchard, Bartholomew, Masters, and Massengill. Claims 29 and 30 Dependent claims 29 and 30 recite, inter alia, "a tutorial option that includes at least one video demonstration with how-to instructions for a painting project." In rejecting these claims, the Examiner incorporates the analysis of independent claims 1 and 8 and further refers back to the analysis of limitations L3-L5, as recited in independent claims 15 and 22. Non-Final Act. 18. Accordingly, we reverse the Examiner's obviousness rejection of these claims for the reasons discussed above in the context of independent claims 1, 8, 15, and 22. Claims 31 and 32 Dependent claims 31 and 32 recite, inter alia, "inspirational content including at least one inspirational color palette with a plurality of preselected paint colors." In rejecting these claims, the Examiner incorporates the analysis of independent claims 15 and 22 and further refers back to the analysis of limitations L 1 and L2, as recited in independent claims 1 and 8. Non-Final Act. 19. Accordingly, we reverse the Examiner's 8 Appeal2017-006098 Application 14/490,8740F obviousness rejection of these claims for the reasons discussed above in the context of independent claims 1, 8, 15, and 22. DECISION We reverse the Examiner's decision rejecting claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, 19,22,23,25,26,and29-32. REVERSED 9