Ex Parte Rice et al

Patent Trials and Appeals Board

Mar 4, 2019

14490874 - (D) (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. § 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. § 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
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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.
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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. § 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. § 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. § I03(a)
over Blanchard, Bartholomew, Masters, Gordon, and Massengill.
4. Claims 31 and 32 stand rejected under 35 U.S.C. § 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,
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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.
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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
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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
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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
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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
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