Ex Parte Dresner

Patent Trial and Appeal Board

Jul 26, 2018

13250959 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/250,959 09/30/2011 David Andrew Dresner
24030 7590 07/30/2018
POLSINELLI PC
900 West 48th Place
Suite 900
KANSAS CITY, MO 64112-1895
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.
066301-430496 9864
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ANDREW DRESNER
Appeal2017-002528
Application 13/250,959
Technology Center 3600
Before ELENI MANTIS MERCADER, LINZY T. McCARTNEY, and
JOHN D. HAMANN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134 of the Examiner's
rejections of claims 3-15, 20-22, and 25-36. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
Appeal2017-002528
Application 131250,959
CLAIMED INVENTION
Claims 25 and 36 are independent. Claim 36 illustrates the claimed
subject matter:
36. A method for delivering targeted information to a
consumer compnsmg:
obtaining, at a computing device associated with a printer,
programming to print on a beverage sleeve, the beverage sleeve
comprising an inner surface and an outer surface, the inner
surface comprising a fluted insulating portion and the outer
surface, the fluted insulating portion defining fluting on all
portions of the inner surface, the fluted insulating portion
including a first pressed end portion adhered to a second pressed
end portion to form a truncated conical cylinder with a
substantially seamless boundary across the adhesion between the
first pressed end portion and the second pressed end portion, the
first pressed end portion and the second pressed end portion
defining compressed fluting of the fluted insulating portion at
each end such that the substantially seamless boundary defines a
substantially uniform thickness around a circumference of the
beverage sleeve;
contemporaneously with a consumer receiving a product,
printing the programming on the outer surface of the beverage
sleeve for distribution to the consumer with the product.
REJECTIONS
3-15, 20-22, 25-36 § 112
30 § 112
3-15,30,36 § 101
3-15, 20-22, 25-36 § 103
1 Cesmedziev (US 200910287568 Al; Nov. 19, 2009).
2
NIA
NIA
NIA
One or more of
Cesmedziev, 1
Appeal2017-002528
Application 13/250,959
DISCUSSION
§ 112 Rejections
Rawlings, 2 Cook, 3 and
Sadlier, 4 Kanevsky, 5
De Wet, 6 Silverbrook, 7
Angell 8 Phillips, 9
Kedem, 10 and
Solomon 11
The Examiner rejected claims 3-15, 20-22, and 25-36 as indefinite
because the claims recite "a substantially seamless boundary" and "a
substantially uniform thickness." Non-Final Act. 2-3. The Examiner also
rejected claim 35 as indefinite because the claim recites an uncompressed
portion of the fluted insulated portion is "about equal to" a second thickness
of an overlapped portion of the first pressed end portion and the second
pressed end portion. Non-Final Act. 3. The Examiner found these claims
indefinite because, for each of these terms, the Examiner determined neither
the claims nor the written description provides "a standard for ascertaining
the requisite degree." Non-Final Act. 2-3.
2 Rawlings et al. (US 2009/0060606 Al; Mar. 5, 2009).
3 Cook (US 6,863,644 Bl; Mar. 8, 2005).
4 Sadlier (US 2006/0144915 Al; July 6, 2006).
5 Kanevsky et al. (US 6,334,109 Bl; Dec. 25, 2001).
6 De Wet (WO 2010/049826 Al; May 6, 2010).
7 Silverbrook et al. (US 2009/0014515 Al; Jan. 15, 2009).
8 Angell (US 2009/0249195 Al; Oct. 1, 2009).
9 Phillips et al. (US 7,019,859 B2; Mar. 28, 2006).
1° Kedem et al. (US 2010/0185726 Al; July 22, 2010).
11 Solomon (US 2010/0018984 Al; Jan. 28, 2010).
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Application 13/250,959
Appellant argues that one of ordinary skill in the art could ascertain
the scope of these claims in light of the drawings and the written description.
App. Br. 6-8 (discussing Figure 7 and paragraph 39 of the written
description).
We agree with Appellant. Claims must be "definite," that is, claims
must "particularly point[] out and distinctly claim[] the subject matter which
the inventor ... regards as the invention." 35 U.S.C. § 112(b). During
prosecution, "[a] claim is indefinite when it contains words or phrases whose
meaning is unclear." Manual of Patent Examining Procedure§ 2173.05(e).
A claim is indefinite, for instance, if the claim is "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention," In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or
if it is "is amenable to two or more plausible claim constructions," Ex Parte
Miyazaki, 89 USPQ.2d 1207, 1211 (BPAI 2008) (precedential).
Terms of degree like "substantially" and "about" do not necessarily
render claims indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d
1349, 1359 (Fed. Cir. 2012) ("This court has repeatedly confirmed that
relative terms such as 'substantially' do not render patent claims so unclear
as to prevent a person of skill in the art from ascertaining the scope of the
claim."). These terms are sufficiently definite when, for example, the
associated specification provides a standard for measuring the degree. See,
e.g., Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F .2d 818, 826
(Fed. Cir. 1984). Mathematical precision is not required; the specification
must simply provide sufficient certainty to one of ordinary skill in the art.
See Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir.
2014).
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Application 13/250,959
Appellant's specification satisfies this standard. The written description
discloses compressing part of the beverage sleeve so that when the sleeve is
folded "the seam has a lower profile as compared with other sleeves" and the
"smooth and flat surface areas of the beverage sleeve are increased and
maximized relative to a sleeve formed in other manners." Spec. ,r 39.
Figure 7 depicts a generally smooth and flat beverage sleeve, with the
thickness of the uncompressed fluting roughly equal to the thickness of the
overlapping joined sleeve ends. See Spec., Fig. 7. In light of these
disclosures, we agree with Appellant that these claims are sufficiently
definite.
The Examiner also rejected claim 30 "as being of improper dependent
form for failing to further limit the subject matter of the claim upon which it
depends." Non-Final Act. 3. The Examiner found claim 30 improperly
depends from claim 36 because claim 36 includes all the limitations recited
in claim 30. Non-Final Act. 3. Appellant has not challenged this rejection.
We therefore summarily affirm this rejection.
§ 101 Rejection
Under § 101 of the Patent Act, "[ w ]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title." 35 U.S.C. § 101.
"[T]his provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court has set
forth the following two-step test for determining whether a patent claim falls
within one of these exceptions:
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Appeal2017-002528
Application 13/250,959
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
"[ w ]hat else is there in the claims before us?" To answer that
question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. We have described step
two of this analysis as a search for an "'inventive concept"'-
i.e., an element or combination of elements that is "sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."
Alice, 134 S. Ct. at 2355 (citations omitted) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-79 (2012)).
Applying this test, the Examiner concluded claim 3 6 is directed to the
abstract idea of "obtaining programming to print and printing the
programming contemporaneously with receiving a product." Non-Final Act.
4. The Examiner then determined that the elements recited in the claim,
considered individually or as a combination, do not recite significantly more
than an abstract idea because the claim recites the elements "at a high level
of generality" and the elements "only perform generic functions." Non-
Final Act. 4--5.
Appellant argues the Examiner has not established claim 3 6 is
directed to an abstract idea because the Examiner provided conclusory
statements in support of this determination. App. Br. 12-13. Appellant
asserts claim 3 6 is not directed to an abstract idea because the recited
method "is hardly a long prevalent, fundamental economic principle that is a
building block of modem human activities." App. Br. 14. According to
Appellant, the recited method "provides specific applications and
improvements to technologies in the marketplace and is not so manifestly
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Application 13/250,959
abstract as to override the broad statutory categories of patent eligible
subject matter." App. Br. 14.
We find Appellant's arguments unpersuasive. As explained by the
Examiner, claim 36 is similar to other claims the Federal Circuit has
determined are directed to an abstract idea. Ans. 10-11. For example, in
Electric Power Group, LLC v. Alstom S.A., the Federal Circuit determined
that claims focused on, among other things, collecting and presenting
information are directed to an abstract idea. 830 F.3d 1350, 1353 (Fed. Cir.
2016). Like the claims at issue in Electric Power Group, claim 36 recites a
method that involves collecting and presenting information. In particular,
the recited method obtains information (known as "programming") and
prints that information on a beverage sleeve that has specified
characteristics. App. Br. v-vi ( claims appendix); Spec. ,r 48 ("The various
types of different information that may be presented in a channel may
collectively be referred to herein as 'programming."'). The similarities
between claim 36 and the Electric Power Group claims provide adequate
support for the Examiner's determination that claim 1 is directed to an
abstract idea. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) ( explaining that when determining whether a claim is
directed to an abstract idea "the decisional mechanism courts now apply is to
examine earlier cases").
Even if claim 36 were meaningfully different from the claims
discussed in Electric Power Group, we would still agree with the Examiner
that claim 1 is directed to an abstract idea. The Federal Circuit has
determined that claims that recite "result-based functional language" and do
not "sufficiently describe how to achieve [the recited] results in a non-
abstract way" are directed to an abstract idea. See, e.g., Two-Way Media
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Application 13/250,959
Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017). Here, claim 36 uses broad functional language to recite two results:
obtaining information and printing the information on a particular beverage
sleeve. But claim 36 does not recite how to achieve these results. The claim
does not recite how the claimed computing device obtains the information.
Nor does the claim recite who or what contemporaneously prints the
programming, much less recite how the method accomplishes the claimed
contemporaneous printing.
Because we agree with the Examiner that claim 36 is directed to an
abstract idea, we next consider whether the claim recites an "inventive
concept." Appellant argues claim 36 recites an inventive concept because
"[c]laim 36 requires significantly more than a generic computer. For
example, claim 36 requires a printer, a beverage sleeve, programming to
print, and a computing device associated with a printer." App. Br. 14.
Appellant also asserts that claim 36 recites an inventive concept because the
claims recites "operations [that] are not simply conventional steps, specified
at a high level of generality." App. Br. 14.
We find Appellant's arguments unpersuasive. Limiting an abstract
idea to a particular environment does not make the abstract idea patent
eligible. In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016) ("Lastly, although the claims limit the abstract idea to a particular
environment-a mobile telephone system-that does not make the claims
any less abstract for the step 1 analysis."). Thus, even if the claimed method
is limited to printing information on a particular beverage sleeve, that fact
does not transform the method into patent-eligible subject matter.
Moreover, most of the elements Appellant relies upon to show an
inventive concept either encompass a generic component or constitute an
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Application 13/250,959
abstract idea. For instance, claim 36 recites "a computing device associated
with a printer" App. Br. v ( claims appendix). Appellant's written
description makes clear the recited computing device and associated printer
encompass generic technology. The written description explains, for
example, that computing device 27 may be "a smart phone tablet, etc.,"
Spec. ,r 35, while computing device 28 may consist of "a personal
computer, laptop, tablet, smart phone, or the like," Spec. ,r 40. The written
description also discloses that sleeve printer 22 "may be any form of printer
suitable to print on a coffee sleeve, coaster, pizza box[,] or the like." Spec.
,r 36. The Federal Circuit has concluded that generic elements like these do
not provide an inventive concept. See, e.g., TL! Commc 'ns, 823 F.3d at 614
("These steps fall squarely within our precedent finding generic computer
components insufficient to add an inventive concept to an otherwise abstract
idea.").
With respect to the recited "programming to print," the written
description states that "[ t ]he various types of different information that may
be presented in a channel may collectively be referred to herein as
'programming."' Spec. ,r 48. The "various types of different information"
encompassed by the recited "programming" falls in the abstract idea rubric
and therefore cannot provide an inventive concept. See, e.g., Elec. Power
Grp., 830 F.3d at 1353-54 (explaining that information falls "within the
realm of abstract ideas"). Accordingly, none of these elements, considered
alone or together, indicates claim 3 6 recites an inventive concept.
As for Appellant's argument that claim 36 does not recite "simply
conventional steps, specified at a high level of generality," as discussed
above, the claimed limitations use broad functional language to recite results
without reciting how the method achieves those results. And even if the
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Application 13/250,959
claimed method were nonobvious-and as explained in the next section, it is
not-nonobviousness does not make the claim less abstract. A nonobvious
abstract idea is still an abstract idea. See, e.g., SAP Am., Inc. v. Investpic,
LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018) ("Nor is it enough for subject-
matter eligibility that claimed techniques be novel and nonobvious in light of
prior art, passing muster under 35 U.S.C. §§ 102 and 103.").
At bottom, the claimed method recites obtaining information and
printing that information on a particular beverage sleeve contemporaneously
with a consumer receiving a product. Appellant's written description
acknowledges that "i[t] has been recognized that information, messages,
advertisements, warnings, bar codes, and the like can be printed on sleeves."
Spec. ,r 3. The written description also makes clear the recited "computing
device associated with a printer" encompasses generic technology. See, e.g.,
Spec. ,r,r 35-36, 40. Using generic technology to perform a known action on
a particular beverage sleeve contemporaneously with a consumer receiving a
product does not supply the requisite inventive concept. Accordingly, we
sustain the Examiner's rejection of claim 36 under 35 U.S.C. § 101.
Because Appellant has not presented separate, persuasive patentability
arguments for claims 3-15 and 30, we also sustain the Examiner's rejection
of these claims under 35 U.S.C. § 101.
§ 103 Rejections
Claim 25 recites in part
a beverage sleeve comprising, a first side with a fluted
insulating portion and a second side with a first station and a
second station, the fluted insulating portion defining fluting on
all portions of the first side, the fluted insulating portion
including a first pressed end portion adhered to a second pressed
end portion to form a truncated conical cylinder with a
substantially seamless boundary across the adhesion between the
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Application 13/250,959
first station and the second station and between the first pressed
end portion and the second pressed end portion, the first pressed
end portion and the second pressed end portion defining
compressed fluting of the fluted insulating portion at each end
such that the substantially seamless boundary defines a
substantially uniform thickness around a circuniference of the
beverage sleeve.
App. Br. iii-iv ( claims appendix) ( emphases added). Claim 36 recites
similar limitations. App. Br. v ( claims appendix).
With respect to claims 25 and 3 6, Appellant argues the Examiner's
combination of Cook and Sadlier does not teach or suggest the recited
beverage sleeve. According to Appellant, "if Cook is modified in view of
Sadlier to include a uniform thickness profile at the adhesion between the
two ends of the sleeve, Cook's corrugation would have to be removed as
taught by Sadlier, thereby not disclosing all elements of claim 25." App. Br.
IO; see also App. Br 17 (making the same argument about claim 36).
Appellant argues "the teachings of Cook and Sadlier teach that in order to
reduce the thickness at the adhesion between the ends of the sleeve, the
corrugation should be removed such that the corrugations are not actually
adhered together." App. Br. 10; see also App. Br. 17 (making the same
argument about claim 36).
We find Appellant's arguments unpersuasive. The Examiner found
that Cook discloses creating a beverage sleeve that satisfies the "beverage
sleeve" limitation recited in claims 25 and 36. Ans. 8 ("[F]igures 14--21 of
Cook ... show[] the construction of a beverage sleeve matching the features
of the claims."). In particular, the Examiner found Cook discloses a
beverage sleeve that has fluting along one side. Ans. 8; see also Cook Figs.
14--17. The Examiner found Cook discloses applying pressure to the
sleeve's overlapping flaps to flatten the beverage sleeve. Ans. 8 ( citing
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Application 13/250,959
Cook 13:5-20). The Examiner reasoned that because Cook's process
produces a flat beverage sleeve, the Cook's sleeve has "a substantially
seamless boundary" and "a substantially uniform thickness" as required by
the claims. App. Br. 8. Appellant has not persuasively challenged these
findings.
The Examiner also determined that even if Cook did not teach or
suggest a beverage sleeve that has the recited "substantially seamless
boundary" and "substantially uniform thickness," Sadlier teaches a beverage
sleeve with these characteristics. Ans. 8-9. The Examiner determined it
would have been obvious to modify Cook's sleeve to have these
characteristics by "continu[ing] the process already being used [to flatten the
beverage sleeve] until the sleeve reached a level to satisfy the 'substantially
seamless boundary' and 'substantially uniform thickness' displayed in
Sadlier." App. Br. 8. Thus, the Examiner's combination does not require
removing Cook's corrugation as argued by Appellant.
For the above reasons, we sustain the Examiner's rejections of claims
25 and 36 under 35 U.S.C. § 103. Because Appellant has not presented
separate arguments for claims 3-15, 20-22, and 26-35 on these grounds, we
also sustain the Examiner's rejections of these claims.
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Application 13/250,959
3-15, 20-22,
25-36
30
3-15,30,36
3-15, 20-22,
and 25-36
Summary
CONCLUSION
§ 112
§ 112
§ 101
§ 103
30
3-15,30,36
3-15, 20-22,
and 25-36
3-15, 20-22,
and 25-36
3-15, 20-22,
25-36
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision. See 37 C.F.R. §
4I.50(a)(l). No time for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
13