UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER ROBERT FOLEY, CRAIG BURTON WYNETT, and
DARRELL LEE MANN
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Appeal 2013-002913
Application 11/820,0981
Technology Center 3600
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Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Robert Foley et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision to reject claims 1–20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
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According to Appellants, the real party in interest is The Procter &
Gamble Company of Cincinnati, Ohio. Br. 1 (filed July 20, 2012).
Appeal 2013-002913
Application 11/820,098
INVENTION
Appellants’ invention relates “to the field of product merchandising.”
Spec. 1, l. 5.
Claims 1, 9, and 18 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1.
A kit for the merchandising of a product or service, the
kit comprising:
(a) a first perceived-as-three dimensional image
comprising a directional preference and an indicia associated
with the product or service
(b) a display element associated with the product or
service.
REJECTIONS
The following rejections are before us for review:
I.
The Examiner rejected claims 1–6 under 35 U.S.C. § 103(a) as
unpatentable over Bisker (US 5,863,632, iss. Jan. 26, 1999) and
Grand Illusions, Work of Julian Beever (hereafter “Grand
Illusions”),
http://web.archive.org/web20060613200001//http://www.grand
-illusions.com/opticalillusions/beever/ (1 of 2)(last visited Apr.
13, 2010).
II.
The Examiner rejected claims 7 and 9–16 under 35 U.S.C.
§ 103(a) as unpatentable over Bisker, Grand Illusions, and
Volkman (US 5,238,720, iss. Aug. 24, 1993).
III.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Bisker, Grand Illusions, and Bar-Yona (US
6,226,906 B1, iss. May 8, 2001).
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Application 11/820,098
IV. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Bisker, Grand Illusions, Volkman, and BarYona.
V.
The Examiner rejected claims 18 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Bisker, Grand Illusions, and
Conway (US 4,262,437, iss. Apr. 21, 1981).
VI.
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Bisker, Grand Illusions, Conway, and
Volkman.
ANALYSIS
Rejection I
Appellants argue that “[n]othing in the cited combination relates to an
image having elements which converge in a particular direction, or which
may redirect the focus of an observer in a particular direction.” Br. 2
(emphasis added).
We are not persuaded by Appellants’ arguments because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, independent claim 1 does
not require a converging image or redirecting the focus of an observer, as
Appellants argue, but merely a “directional preference.” See Br. 9. We
agree with the Examiner that, “the orientation of the words or images [in
Bisker’s Figure 4] have a direction to be viewed,” and thus have a
“directional preference,” as called for by independent claim 1. See Ans. 3.
We also do not agree with Appellants’ argument that “[t]here is . . . no
motivation in the references warranting their combination.” Br. 3. Such an
argument appears to be holding the Examiner to the old TSM (teaching,
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Application 11/820,098
suggestion, or motivation) standard; such a standard is not required.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). In this case, the
Examiner relies on Bisker to disclose a kit for merchandising a product
including (a) a first image having a directional preference; (b) an indicia
associated with the product; and (c) a display element, and on Grand
Illusions to disclose “printing of a three dimensionally appearing image that
gives an optical illusion.” Final Act. 2 (mailed Feb. 24, 2012) (citing Bisker,
Fig. 4). The Examiner reasons that it would have been obvious for a person
of ordinary skill in the art modify the first image of Bisker, i.e., perfume
bottle, using Grand Illusions’ optical illusion to obtain a three-dimensionally
perceived image in order to “enhance the display effects of the advertising
kit.” Id. at 2–3. Appellants argue that, “[t]here is no benefit in adding the
teaching of Grand Illusions” (see Br. 3), but provides no evidence or
technical explanation as to why the Examiner’s reasoning is deficient. It
seems highly logical that a perceived three-dimensional image enhances an
observer’s perception of the image as compared to a simple two-dimensional
image. See, e.g., KSR, 550 U.S. at 421 (“a person of ordinary skill has good
reason to pursue the known options within his or her technical grasp”).
Moreover, we note that Appellants’ reliance on the embodiment shown in
Figure 3 of Bisker is not commensurate with the Examiner’s rejection,
which relied on the embodiment of Figure 4. Compare Final Act. 2 with
Br. 3.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 1–6 under 35 U.S.C. § 103(a) as unpatentable over Bisker and Grand
Illusions.
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Appeal 2013-002913
Application 11/820,098
Rejections II–VI
Appellants make similar arguments as to the arguments presented
with respect to Rejection I. See Br. 3–7. Therefore, for the reasons set forth
supra, we likewise sustain Rejections II–VI.
SUMMARY
We AFFIRM the Examiner’s decision to reject claims 1–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
em
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