Ex Parte Whitman

Patent Trial and Appeal Board

Sep 17, 2018

13088736 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088,736 04/18/2011
321 7590 09/19/2018
SENNIGER POWERS LLP
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Jeanne Whitman
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.
JWHT 6990.1 9105
EXAMINER
KORB, JENNIFER LUANN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
uspatents@senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEANNE WHITMAN
Appeal2016-005970
Application 13/088,736
Technology Center 3700
Before DANIEL S. SONG, STEFAN STAICOVICI, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeanne Whitman ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 11-20 in this application.
Claims 1-10 and 21 are withdrawn. Appeal Br. 3, 13-15, 18. The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Appellant as the real party in interest. Appeal
Br. 3.
Appeal 2016-005970
Application 13/088,736
CLAIMED SUBJECT MATTER
Claim 11 illustrates the subject matter on appeal, and it recites:
11. A method of making a memory container for a recipient
compnsmg:
providing a container to a recipient;
selecting a plurality of categories from among categories
which are subject matter classifications of Biblical verses;
selecting a plurality of collections of cards, each said card
of a collection having a same unique design configuration
different from any other collection of cards, each said card
configured to be received in the container and adapted to receive
a handwritten Biblical verse corresponding to a category selected
from among said plurality of categories which are said subject
matter classifications of Biblical verses;
wherein the design configuration of each collection and of
the cards in each collection corresponds to a particular category
of Biblical verses from among the plurality of selected categories
of Biblical verses;
selecting a plurality of dividers, each said divider
supporting a tab which corresponds to only one of the categories
such that each category has only one corresponding tab, each said
divider configured to be received in the container;
and distributing the cards to different individuals for
handwritten Biblical verses to be added to the cards by the
individuals, and instructing the individuals to handwrite onto
each card a Biblical verse within the Biblical verse category to
which each card corresponds and to return the cards with the
handwritten Biblical verses thereon to the recipient.
Appeal Br. 15 (Claims App.).
REFERENCES CITED
The Examiner relies upon the following references in rejecting the
pending claims:
Lassen
Patrick
us 1,980,687
US 2011/0236865 Al
2
Nov. 13, 1934
Sept. 29, 2011
Appeal 2016-005970
Application 13/088,736
champs 11, "Memorable Bridal Shower Idea - Favorite Recipes,"
published on or before June 28, 2007, http://www.ebay.com/gds/
Memorable-Bridal-Shower-Idea-Favorite-Recipes-/
10000000002141234/ g.html (hereafter "Champs").
Deborah S. Hartz, "Swap Meet Often, It Seems The Best Recipes Are
The Ones That You Borrow ... ," published on or before June 20,
1991, http://articles.sun-sentinel.com/1991-06-20/features/
9103 040824_1_swap-recipes-party (hereafter "Hartz").
REJECTION ON APPEAL
Claims 11-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Champs, Lassen, Hartz, and Patrick.
ANALYSIS
Appellant argues for the patentability of all claims 11-20 together in
one group. See Appeal Br. 5-12. Accordingly, we select claim 11 to decide
the present appeal as to all claims. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on the combination of Champs, Lassen, and
Hartz as disclosing or rendering obvious the claimed subject matter, except
the collected cards of Champs, Lassen, and Hartz categorize and organize
recipes, not Biblical verses. See Final Act. 3-7. Appellant does not contest
the Examiner's combination of Champs, Lassen, and Hartz in that regard.
See Appeal Br. 5-12. We, therefore, are not apprised of error in that regard.
See, e.g., 37 C.F.R. § 4I.37(c)(l)(iv) ("Except as provided for in§§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.") ( emphasis added).
The Examiner next provides two alternative bases for the ultimate
conclusion of obviousness. First, the Examiner concludes the limitations of
3
Appeal 2016-005970
Application 13/088,736
claim 11 which recite "Biblical verses" are directed to printed matter (that is,
nonfunctional descriptive material), and therefore are not given patentable
weight, leading to obviousness over Champs, Lassen, and Hartz without any
consideration of Patrick. See Final Act. 14; Ans. 3--4, 15-16. Alternatively,
the Examiner concludes that if the "Biblical verses" limitations are given
patentable weight, then claim 11 is nonetheless unpatentable as having been
obvious over Champs, Lassen, Hartz, and Patrick. See Final Act. 3-7;
Ans. 4--8, 16-20. We consider these alternative bases for the obviousness
rejection in tum.
(1) Printed Matter
The Examiner concludes:
Bible verses are printed matter (nonfunctional descriptive
material) and are not being given patentable weight. Where a
product merely serves as a support for printed matter, no
functional relationship exists. Further, because the printed
matter (Bible verse) and the product ( card) do not depend upon
each other, no functional relationship exists. . . . The printed
matter neither changes the structure nor the function of the card.
Ans. 3, 15-16 (citing MPEP § 2111.05);2 see also Final Act. 14 (similarly
raising the printed matter issue).
Appellant argues the printed matter doctrine does not apply here,
because Appellant "does not even claim a product," given that claim 11 is a
2 The Examiner additionally states "[ t ]he printed matter (Bible verses) are
merely instructions for how to use the card." Ans. 3 (further discussing In re
Ngai, 367 F.3d 1336 (Fed. Cir. 2004)). We agree with Appellant that the
Examiner errs in this specific regard, because Biblical verses are not
instructions for how to use the card(s) on which they are printed. See Reply
Br. 1-3. We do not base our affirmance on this aspect of the rejection.
4
Appeal 2016-005970
Application 13/088,736
method claim. Appeal Br. 11. On that basis, Appellant's view is that the
patentability of claim 11 "does not stand or fall on" determining whether the
printed matter referenced in the claim (i.e., Biblical verses) is "functional" or
"non-functional." Id. Appellant further asserts the Biblical verses of
claim 11, in combination with the other method steps of claim 11, "manifest
functions and benefits which are entirely non-obvious and not predictable
from the prior art" (id.), in that the Biblical verses "drive the categories in
the claimed step of 'selecting a plurality of categories from among
categories which are subject matter classifications of Biblical verses."'
Reply Br. 3. Appellant also asserts claim 11 provides a "unique benefit ...
in that selection of both the Biblical verse and the placement of it in a
category maximize personalization," based on the different individuals who
select and handwrite the verses on the cards. Id. at 3; Appeal Br. 11.
Under the printed matter doctrine, where the only difference between
the prior art and the claim is printed matter that is not functionally related to
the substrate on which it appears, the content of the printed matter will not
distinguish the claim from the prior art in terms of patentability. See In re
Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir. 2004); In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983).
Appellant's contention that the printed matter doctrine does not apply
to method claims is not correct. The printed matter doctrine applies to
method claims as well as product claims. See Praxair Distrib., Inc. v.
Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1031-33 (Fed. Cir. 2018)
(printed matter doctrine not limited to "claims literally encompassing
'printed' material," but rather extends to claims "encompass[ing] mental
steps"); King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed.
5
Appeal 2016-005970
Application 13/088,736
Cir. 2010) (recognizing prior cases involved addition of printed matter to a
known product, but seeing "no principled reason for limiting their reasoning
to that specific context," and applying doctrine to a method claim "wherein
an instructional limitation is added to a method, as opposed to a product,
known in the art").
As pertinent to the printed matter doctrine issues raised by the present
appeal, claim 11 recites: (a) "selecting a plurality of categories ... which are
subject matter classifications of Biblical verses"; (b) selecting cards
"adapted to receive a handwritten Biblical verse," with each card having a
design configuration corresponding to a particular category of the Biblical
verse classification categories; and ( c) "instructing [different] individuals to
handwrite onto each card a Biblical verse within the Biblical verse category
to which each card corresponds." Appeal Br. 15 (Claims App.).
Thus, claim 11 does not recite the affirmative step of a person
handwriting a Biblical verse on to a card, or otherwise printing a Biblical
verse on to a card. Id. Nonetheless, Appellant concedes claim 11 recites
printed matter in referring to Biblical verses. See Appeal Br. 11 (referring to
"printed matter referenced in a method claim," and "the nature of applicant's
printed matter"); Reply Br. 1-2 (asserting Appellant's Specification
"provides two examples of scripture one might use for the printed matter").
We agree with the Examiner and Appellant that the Biblical verse
limitations (a}-(c) are directed to printed matter, subject to the printed matter
doctrine. See Praxair, 890 F.3d at 1032 ("a claim limitation is directed to
printed matter 'if it claims the content of information"') ( quoting In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015)). "Like the information
claimed by printed matter, mental steps or processes are not patent eligible
6
Appeal 2016-005970
Application 13/088,736
subject matter." Id. at 1033 ( citing several cases). "[A] limitation that
merely claims information by incorporating that information into a mental
step will receive patentable weight only if the limitation is functionally
related to the substrate." Id. Limitations (a) and (b) merely "add[] an
ineligible mental process to ineligible information," which "still leaves the
claim limitation[s] directed to printed matter." Id. at 1033-34. In particular,
limitation (a) recites the mental step of selecting Biblical verse categories,
and limitation (b) recites the metal step of selecting cards having design
configurations corresponding to the Biblical verse classification categories,
and for receiving handwritten Biblical verses. Limitation ( c) further requires
"distributing the cards to different individuals," so claim 11 does at least
require the cards to exist. Nonetheless, the significance of the selected
Biblical verse categories and the selected Biblical verses corresponding to
the categories still is directed solely to the content of the information, so
those portions of claim 11 constitute printed matter.
We, therefore, proceed to consider whether the printed matter of
claim 11 should be given patentable weight. See DiStefano, 808 F.3d at
848-50; Praxair, 890 F.3d at 1032. In that regard, "the critical question is
whether there exists any new and unobvious functional relationship between
the printed matter and the substrate." Gulack, 703 F.2d at 1386 (emphasis
added). If so, the printed matter is accorded patentable weight; if not, then
not. Praxair, 890 F.3d at 1031-32.
We determine there is no new and unobvious relationship between the
Biblical verses which may be printed on the cards, and the cards themselves.
In claim 11, the functioning of the Biblical verses in no way depends upon
the cards, and the cards in no way depend upon the Biblical verses. The
7
Appeal 2016-005970
Application 13/088,736
function of the Biblical verses is "useful and intelligible only to the human
mind" and, as such, does not patentably distinguish the claimed subject
matter from the prior art. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Thus, the
present case is like prior cases in which printed matter was deemed not to
distinguish a claim from the prior art. See, e.g., King Pharms., 616 F.3d at
1279--80; In re Ngai, 367 F.3d at 1339. The present case is not like prior
cases in which printed matter was deemed to distinguish a claim from the
prior art. See, e.g., In re Gulack, 703 F.2d at 1385-87 (functional
relationship existed between circularity of a band and particular sequence of
numbers printed on the band); In re Miller, 418 F.2d 1392, 1396 (CCPA
1969) ( functional relationship existed between a measuring receptacle,
volumetric indicia thereon indicating volume in a certain ratio to actual
volume in the receptacle, and a legend indicating the ratio).
We must further consider whether there exists any new and unobvious
functional relationship between the printed matter and the method steps
recited in the claimed method. Praxair, 890 F.3d at 1032, 1035 ("[C]laim 9
requires a medical provider to take a specific action, discontinuing
treatment, as a result of the [printed matter] recommendation limitation,"
which "suffices to create a functional relationship [for] giving the printed
matter patentable weight.").
In that regard, limitation ( c) of claim 11 recites "instructing the
individuals to handwrite onto each card a Biblical verse within the Biblical
verse category to which each card corresponds and to return the cards."
Appeal Br. 15 (Claims App.) (emphasis added). Claim 11 does not recite
that the individuals actually: select a Biblical verse; determine an
8
Appeal 2016-005970
Application 13/088,736
appropriate category; handwrite the verse on a card corresponding to the
category; or return the card. See id. Instead, claim 11 merely recites that the
individuals are instructed to take those actions. See id. This case, therefore,
is akin to prior cases holding that "merely adding an instruction sheet or
other informational content to a ... product is not sufficient to create a
functional relationship." Praxair, 890 F.3d at 1032-34. This case is not
akin to prior cases giving patentable weight to printed matter claim
limitations. See, e.g., id. at 1035 ("[C]laim 9 requires a medical provider to
take a specific action, discontinuing treatment, as a result of the [printed
matter] recommendation limitation," which "suffices to create a functional
relationship [for] giving the printed matter patentable weight.") ( emphasis
added).
Moreover, even if claim 11 were construed to require that the
individuals actually perform the personalization steps as instructed, the prior
art cited by the Examiner discloses such personalization, albeit for use in
connection with recipes rather than Biblical verses. See Champs ("each
guest gave me a recipe card with a copy of one of their favorite recipes ...
in their own handwriting"); Hartz (party guests each bring a "favorite
appetizer, entree or dessert," "along with its recipe written on a card," and
are "told to deposit their dishes [ and recipes] at the appropriate food
stations"). Thus, any argued difference between the prior art and the
claimed invention is simply a substitution of one piece of non-functional
descriptive material (Biblical verses) for another piece of non-functional
descriptive material (recipes), which does not change the functionality of the
collection. Maintaining patentability based on such a difference runs afoul
of a rationale behind the printed matter doctrine, which is "preventing the
9
Appeal 2016-005970
Application 13/088,736
indefinite patenting of known products [ or methods] by the simple inclusion
of novel, yet functionally unrelated limitations." King Pharms., 616 F.3d at
1279.
For the foregoing reasons, we determine the Biblical verses of
claim 11 constitute printed matter that is not entitled to patentable weight.
Therefore, we sustain the Examiner's rejection of claims 11-20 under
35 U.S.C. § 103(a) as unpatentable over Champs, Lassen, and Hartz, without
regard to Patrick.
(2) Obviousness Based Further on Patrick
In the event the Biblical verses recited in claim 11 are given
patentable weight, the Examiner finds Patrick teaches Biblical verses printed
on a medium that is color-coded according to a theme referenced by the
scriptures, and grouping the printed media by color (i.e., by theme). Final
Act. 4, 5 ( citing Patrick, Abstract, ,r,r 39--40). The Examiner determines it
would have been obvious to a person of ordinary skill in the art to adapt the
method of Champs, Lassen, and Hartz to collect and organize handwritten
specimens of Biblical verses rather than recipes, "in order to provide a
personalized gift for a recipient by combining prior art elements according to
known methods to yield predictable results." Id. at 4--5, 5---6; see also id. at
14 ("[i]t would have been obvious to adapt the method of Champs[, Lassen,
and Hartz] to collect and organize specimens of printed matter other than
recipes such as classifications of Bible verses as in Patrick").
Appellant argues the Examiner has provided an insufficient rationale
for why a person of ordinary skill in the art would modify a recipe card
system to collect, categorize, and organize Biblical verses instead of recipes.
10
Appeal 2016-005970
Application 13/088,736
Appeal Br. 6-11. According to Appellant, the Examiner's rejection is
governed by MPEP § 2143(I)(A), which requires that "the combination does
not alter the distinct functions performed by the prior art elements and
that ... each element merely performs the same function as it does
separately." Appeal Br. 7-9. Appellant contends that alleged requirement is
not met here, because the Examiner's modification "completely
extinguishes" the recipe collection function of the Champs recipe gift box.
Id. at 8, 9. Appellant additionally contends there is "no KSR-mandated
suggestion in any of the prior art of record to have made the proposed
modification of substituting bible verses in for recipes." Id. at 9-10
(discussing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)); Reply
Br. 4. Appellant also argues the Examiner's proposed modification is
improper because it would render Champs unsuitable for its intended
purpose of helping a new family start out with tried and true recipes, and
reminding the new family of family friends who have shared foods with
them. Appeal Br. 6, 10-11.
We determine the Examiner has provided a rational underpinning,
supported by a preponderance of the evidence, sufficient to support the legal
conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). In particular, the Examiner determines it would have been
obvious to a skilled artisan to modify the recipe collection of Champs,
Lassen, and Hartz to collect Biblical verses in order to provide "a
personalized gift for a recipient," and cites the common advantages of a
personalized collection that can be achieved regardless of subject matter.
Final Act. 4--5 ( emphasis added), 15-17.
11
Appeal 2016-005970
Application 13/088,736
That determination is supported by the evidence of record. Champs
correspondingly reflects the personalized significance of a recipe collection
based on the "favorite" recipes of loved ones, written down by the loved
ones "in their own handwriting." See Champs. Patrick, similarly, reflects
the personalized significance of Biblical verses in disclosing that "[t]he
Bible is often studied to understand the themes and teachings written in it,"
and "[t]hose who have studied the Bible often find passages that inspire
them or provide an uplifting message." Patrick ,r 5. Patrick, further,
discloses that its device pad 20 may "contain[] blank surface medium 22
without text or imagery," in order to "provide[] one an opportunity to add
additional text from the Bible not included previously in device pad 20." Id.
,r 57. The common thread of the personalization benefits in collecting
recipes and in collecting Biblical verses provides a sufficient motivation for
a person of ordinary skill in the art to use the personalized collection method
of Champs, Lassen, and Hartz, in order to collect and organize Biblical
verses.
For the foregoing reasons, even if the Biblical verses of claim 11 are
afforded patentable weight, we sustain the Examiner's rejection of
claims 11-20 under 35 U.S.C. § 103(a) as unpatentable over Champs,
Lassen, Hartz, and Patrick.
DECISION
The rejection of claims 11-20 under 35 U.S.C. § 103(a) as
unpatentable over Champs, Lassen, Hartz, and Patrick is affirmed.
12
Appeal 2016-005970
Application 13/088,736
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
13