In Re: Dominick Theresa

Docket No. 2017-1920

January 17, 2018

Brief summary: Board decision affirming examiner’s obviousness rejection affirmed (e.g., Theresa “offers not more than bare contradiction of the Board’s motivation to combine analysis”).

Summary: Theresa appealed Board affirmation of the rejection of the claims of Ser. No. 12/570,827 directed to “a system for identifying and transporting portable memory devices with…labels, attachment members (such as key rings), and wristbands.” The examiner rejected the claims in view of “Slater” (as disclosing “a set of labels having visual indicators” but not wristbands), “Dompier” (as disclosing “a key affixed to a key ring, in turn affixed to a wristband”), “Erickson” (as disclosing “a color-coded labeling system for indicating memory device content”), and Yu (as disclosing the flash memory device (affixed to a key ring) required by claims 21-25. The Examiner “found that modifying the combination of Slater in view of Dompier…would have been obvious in view of Erickson’s system, because ‘[d]uplication of parts [was] common and well known in the part [sic] to provide a plurality of parts for a system.’” Theresa argued that the Board erred because “none of the cited references disclosed the use of symbols” (“Slater only used words or numbers”) but the FC panel disagreed since claim 1 requires “pre-set words or pre-set symbols” (“When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art.” Brown, FC 2001). Regarding “the symbols in claims 20 and 24,”, the FC panel agreed with the Board’s conclusion that “the printed symbols bear no functional or structural relationship to the labels on which they are printed and thus cannot form a patentable distinction” (In re Distefano, FC 2015). Theresa also argued the Board erred in relying on Erickson since that “claimed invention focused on the RFID tags” but the FC panel explained it “need not be limited to the invention claimed therein” and “may be cited for all that it teaches” (In re Kahn, FC 2006). Regarding the combination of Slater and Dompier, the Board found that “Dompier specifically sought to relieve the challenges of removing a key from a handbag or carrying the key accessibly while one’s arms are otherwise full”, “Slater disclosed labels for keys” as “‘just one example’ of how the color-coded system disclosed therein could be used”, and “[t]he need for such a product can be found in a number of places where people carry multiple objects that appear the same” (“similar labels exist to identify circuit breakers or storage boxes and to convey further information about the labeled items”). The examiner and the Board found that “this indicated that Slater’s system could be successfully applied to a set of Yu’s flash memory devices, and Erickson had already taught the application of a color-coding system to memory devices.” The FC panel found this to be “substantial evidence” and that Theresa, e.g., “offers not more than bare contradiction of the Board’s motivation to combine analysis”. Theresa’s remaining arguments were found to lack merit, and the Board decision was affirmed.

This entry was posted in Anticipation (35 USC 102), Obviousness. Bookmark the permalink.

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