Request for Reconsideration afier Final Action
`
`Page 1 of 12
`
`PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/30/2009)
`
`Request for Reconsideration after Final Action
`1 n3I-DvI|nl uuu|a% -- u-u uuwxwunN»uvuunn~n:—u1AuAu~k %T
`
`The table below presents the data as entered.
`
`Input Field
`
`SERIAL NUMBER
`
`77240514
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 114
`
`MARK SECTION (no change)
`
`ARGUNIENT(S)
`
`Likelihood of Confusion
`
`The Examining Attorney has preliminarily refused registration of Applicant’s mark under Trademark
`Act Section
`
`2(d), 15 U.S.C. Section 1052(d), because of a potential for confusion with U.S. Registration Nos.
`2,096,499
`
`and 2,910,354 (Prior Registered Marks) due to (1) similarities between the marks and (2) the related
`nature of
`
`the goods. Applicant respectfully disagrees and requests withdrawal and reconsideration of the
`refusal.
`
`Applicanfs mark is dissimilar from Prior Registered Marks
`
`The marks in question differ significantly in sight, sound, and overall commercial impression. The
`Prior
`
`Registered Marks consists ofthe single term CHASE, which immediately conveys a different
`commercial
`
`impression than Applicant’s C. CHASE mark. The Trademark Manual of Examining Procedure
`(‘—‘TMEP”)
`
`§ l213.05(e) indicates that the wording of a mark, because of the sound patterns created by the
`combination of
`'
`V
`
`the wording, can create a unitary expression, separate and apart from the individual components of the
`mark.
`
`file://\\ticrs-ais-O1Xticrsexport\HtmlToTifiInput\RFRO0O12008_1 l_20_08_5 0_34_TTAB...
`
`1 1/20/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 2 of 12
`
`Here, Applicant submits that its C. CHASE mark creates a distinctive commercial impression due, in
`part, to its
`'
`
`use of alliteration and the individual terms. Applicant submits that consumers thus recognize the
`entire mark —
`
`and not merely one word of it — as the source-identifier".
`
`The Examining Attorney has disregarded the distinctive matter_in Applicant's mark, and the impact of
`that matter
`
`on the overall commercial impression it presents to the public. The addition ofthe term “C.” to
`Applicant’s mark
`
`creates a wholly different sound, appearance, commercial impression, and mental reaction within the
`consuming
`
`public than CHASE alone. Champagne Louis Roederer S.A. v. Delicato Vineyards 148 F.3d 1373
`(Fed. Cir.
`
`1998) (the marks "evoked very different images in the minds of relevant consumers": while CRISTAL
`suggests
`
`the clarity of the wine in the bottle or the glass of the bottle, CRYSTAL CREEK suggests a clear,
`remote
`
`stream). Similarly, in this instance, Applicant’s C. CHASE mark will also induce imagery that is very
`dissimilar
`
`than the Prior Registered Marks.
`
`It is a fundamental rule that the Examining Attorney must consider the marks in their entireties when
`determining
`
`whether a likelihood of confusion exists. Franklin Mint Corp. v. Master Manufacturing Co., 667 F.2d
`1005,
`
`1007, 212 USPQ 233 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
`considered
`
`piecemeal; rather it must be considered as a whole in determining likelihood of confusion.’’); Massey
`Junior
`
`College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974).
`Additionally,
`
`one feature of a mark may be recognized as more significant in creating a commercial impression.
`Greater weight
`
`file2//\\ticrs-ais-O1\ticrsexport\HtmlToTifflnput\RFR0O012008_1 1_20_08_5 0_3 4_TTAB...
`
`1 1/20/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 3 of 12
`
`must be given to that dominant feature in determining whether there is a likelihood 0fCOI1fi1SlOl‘l. In
`re National
`'
`A
`
`V
`
`'5
`
`Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektroni§,_Inc. v. Daktronics, In_c_., 534 F.2d 915, 189
`USPQ’
`
`693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). Applying this standard,
`it.is
`
`'
`
`clear that Applicant's C. CHASE mark is distinct from the Prior Registered Marks. When compared,
`the marks
`
`create uniquely different commercial impressions.
`
`The Trademark Office must consider and focus on the differences in the marks when assessing
`likelihood of
`
`confusion.
`Prior
`
`In this instance, the presence ofthe additional word in Applicant’s mark, in contrast to the
`
`Registered Marks (comprised of a single term) must not be dismissed. As discussed above,
`Applicant’s mark
`
`creates a unique commercial impression, distinct from the Prior Registered Marks, such that
`consumers are not
`
`likely to be confused as the source ofthe parties’ respective goods.
`
`“CHASE” widely used for similar goods
`
`A review ofthe Principal Register discloses numerous, coexisting registrations which incorporate the
`term
`
`“CHASE” for goods in Class 28. From the evidence below, it is clear the Trademark Office holds that
`the
`
`'
`
`goods are sufficiently distinct for coexistence to occur without the potential for confusion
`(registrations
`
`attached). Likewise, Applicant sees their placement on the Register as warranted. Third-party
`registrations can
`'
`
`be used as evidencelof the registrability of a mark where they are submitted to show “that differences
`in other
`
`portions of the marks may be sufficient to render the marks as a whole distinguishable.” Spoons
`Restaurants Inc.
`
`v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991).
`
`file://\\ticrs-ais—01\ticrsexport\HtmlToTiffInput\RFR00012008_1 1_20_08_50_34_TTAB...
`
`11/20/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 4 of 12
`
`
`
`
`CHASE-IT
`CHASER
`
`NO.S‘“’“”“E°°
`video output game machines and printed ‘
`
`circuit boards thereof
`
`
`
`
`
`paintball guns, and accessories therefor in the
`nature of barrels, grip frames, frame covers,
`grips, expansion chambers, sight rails, trigger
` assemblies and barrel plugs
`
`
`
`
`
`3230596
`77430018
`
`
`
`As indicated by the above list of marks, the use of the term “CHASE’.’ in connection with toys and
`playthings is
`
`relatively commonplace. Thus,~the consuming public is conditioned to focus on the differences in the
`marks, as
`
`well as the specific goods, rather than the similarities, and thus discern that the goods come from
`different
`
`sources. Moreover, none of the above-cited marks have apparently been opposed or canceled by any
`other
`
`party, despite the fact that each of these marks adopts the term “CHASE” and are used in connection
`with goods
`
`in the same class. In re Hamilton Bank, 222 USPQ 174 ("ITAB 1984) (no likelihoodiof confusion
`found
`
`between KEY for banking services and other marks for banking containing the word "Key"; common
`word
`
`"Key” is weak as widely used in the financial field and suggestive of a desirable quality of banking).
`
`Thus, given that these marks have been allowed to coexist, Applicant's mark should be allowed to
`register,
`
`particularly as it is dissimilar in appearance from the Prior Registered Marks and any of other
`registration or
`’
`
`application.
`
`In sum, Applicant submits that the marks are not alike in sound, appearance, meaning or commercial
`impression,
`
`and consumers would not mistakenly believe Applicant's C. CHASE goods emanate from the same
`source as
`
`those sold under the Prior Registered Marks. Accordingly, Applicant submits that the Examining
`Attorney should
`
`file ://\\ticrs-ais-01\ticrsexport\I-ItmlToTifi'Input\RFR000 1 2008_1 1_20_.08_5 0_34_TTAB...
`
`1 1/20/2008
`
`
`
`

`
`Request for Reconsideration afier Final Action
`
`.
`
`Page 5 of 12
`
`reconsider and withdraw the refusal under Section 2(d).
`
`EVIDENCE SECTION
`
`
`
`
`
`http://tgate/PDF/iRFR/2008/11/19/2008111915145033064l-
`77240514-oo1_00 1/evi_652462l6100-
`151 103981_._PTO_RECORDS_for_C._CHASE_CLASS_28.pdf
`
`
`
`ORIGINAL
`PDF FILE
`
`
`
`
`EVIDENCE FILE NAME(S)
`
`
`
`§3B£“;EIL‘§}('§)D
`(6 pages)
`
`\\TICRS\EXPORT4\IMAGEOUT4\772\405\772405 l4\xmll
`\RFR00O2.JPG
`
`
`
`
`
`
`\\TICRS\EXPORT4\IMAGEOUT4\772\40 5\772405 l4\xmll
`\RFR0003. IPG
`
`
`
`\\TICRS\EXPVORT4\IMAGEOUT4\772\4O 5\772405 l4\Xml 1
`\RFRO004. JPG
`
`\\TICRS\EXPORT4\IMAGEOUT4\772\405\772405 l4\xmll
`\RFR0005. JPG
`
`'
`
`\\TICRS\EXPORT4\IMAGEOUT4\772\40 5\772405 l4\Xmll
`\RFR0006. JPG
`
`\\TICRS\EXPORT4\IMAGBOUT4\772\405\772405 l4\xmll
`\RFR0007. JPG
`
` liii"
`
`
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`028
`
`
`
`DESCRIPTION
`Toys and playthings of all types
`A
`
` Section 1(b)
`
`FILING BASIS
`
`
`
`
`FILING BASIS
`
`Section 44(e)
`
`STANDARD
`CHARACTERS
`OR EQUIVALENT
`
`NO
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`Toys and playthings, namely, dolls, plush toys, toy cars, puzzles, arts and crafts, toys, games
`
`GOODS AND/OR SERVICES SECTION (proposed)
`028
`
`
`
`
`
`
`FILING BASIS
`
`Section 1(b)
`
`
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`/Jonathan D. Reichmanf
`
`SIGNATORY‘S NAME
`
`Jonathan D. Reichman, Esq.
`
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifi'Input\RFRO0012008_1 l_20_08_50_34_TTAB...
`
`11/20/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 6 of 12
`
` SIGNATORY'S POSITION
`
`DATE SIGNED
`
`Attorney of Record
`
`11/19/2008
`
`RESPONSE SIGNATURE
`
`/Jonathan D. Reichman/
`
`‘SIGNATORY‘S NAME
`
`Jonathan D. Reichman, Esq.
`
`SIGNATORY‘S POSITION
`
`Attorney of Record
`
`DATE SIGNED
`
`1 1/19/2008
`
`.
`
`AUTHORIZED SIGNATORY
`
`YES
`
`CONCURRENT APPEAL NOTICE
`FILED
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Wed Nov 19 15:14:50 EST 2008
`
`TEAS STAMP
`
`USPTO/RFR-65.246.216.100-
`20081 1 19151450330641-7724
`0514-430921843612cbd502c2
`ff534dlf‘87b2cee-N/A-N/A-2
`008111915l103981828
`
`PTO Form 1930 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 4/30/2009)
`
`Request for Reconsideration after Final Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77240514 has been amended as follows:
`
`ARGU1\’[ENT(S)In response to the substantive refusal(s), please note the following:
`
`Likelihood of Confusion
`
`The Examining Attorney has preliminarily refused registration of Applicant’s mark under Trademark
`Act Section
`
`2(d), 15 U.S.C. Section 1052(d), because of a potential for confusion with U.S. Registration Nos.
`2,096,499
`
`and 2,910,354 (Prior Registered Marks) due to (1) similarities between the marks and (2) the related
`nature of
`
`file://\\ticrs-ais—01\ticrsexport\HtmlToTifilnput\RFR000 12008_1 1_20_08_50_34_TTAB...
`
`1 1/20/2008
`
`..,_-;....,—.a=.
`
`....-1.’
`
`Y 1.-_-.
`
`.
`
`

`
`Request for Reconsideration afier Final Action
`
`-
`
`Page 7 of 12
`
`the goods. Applicant respectfully disagrees and requests withdrawal and reconsideration of the refusal.
`
`Applicanfs mark is dissimilar from Prior Registered Marks
`
`The marks in question differ significantly in sight, sound, and overall commercial impression. The Prior
`
`Registered Marks consists ofthe singleterm CHASE, which immediately conveys a different
`commercial
`
`impression than Applicant’s C. CHASE mark. The Trademark Manual of Examining Procedure
`(“TMEP”)
`
`§ 12l3.05(e) indicates that the wording of a mark, because of the sound patterns created by the
`combination of
`-
`
`the wording, can create a unitary expression, separate and apart from the individual components of the
`mark.
`
`Here, Applicant submits that its C. CHASE mark creates a distinctive commercial impression due, in
`part, to its
`'
`‘
`
`use of alliteration and the individual terms. Applicant submits that consumers thus recognize the entire
`mark ——
`'
`
`and not merely one word of it — as the source-identifier.
`
`The Examining Attorney has disregarded the distinctive matter in Applicant's mark, and the impact of
`that matter
`
`on the overall commercial impression it presents to the public. The addition of the tenn “C.” to
`Applicant’s mark
`
`creates a wholly different sound, appearance, commercial impression, and mental reaction within the
`consuming
`
`public than CHASE alone. Champagne Louis Roederer S.A. V. Delicato Vineyards 148 F.3d 1373 (Fed.
`Cir.
`_
`
`1998) (the marks "evoked very different images in the minds of relevant consumers": while‘CRISTAL
`suggests
`.
`
`the clarity of the wine in the bottle or the glass of the bottle, CRYSTAL CREEK suggests a clear,
`remote
`
`stream). Similarly, in this instance, App1icant’s C. CHASE mark will also induce imagery that is very
`dissimilar
`
`than the Prior Registered Marks.
`
`It is a fundamental rule that the Examining Attorney must consider the marks in their entireties when
`
`.
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTiffInput\RFR00012008_1l_20_08_50_34_TTAB...
`
`11/20/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 8 of 12
`
`determining
`
`whether a likelihood of confiision exists. Franklin Mint Corp. V. Master Manufacturing Co., 667 F.2d
`1005,
`
`1007, 212 USPQ 233 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
`
`piecemeal; rather it must be considered as a whole in determining likelihood of confusion.”); Massey
`Junior
`
`College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272 (CCPA 1974).
`Additionally,
`
`one feature of a mark may be recognized as more significant in creating a commercial impression.
`Greater weight
`
`must be given to that dominant feature in determining whether there is a likelihood of confusion. Incre
`' National
`
`
`Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix Inc. V. Daktronics Inc. 534 F.2d 915, 189
`USPQ '
`»
`
`693 (CCPA 1976). In re J41/I. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). Applying this standard, it
`is
`
`clear that Applicant's C. CHASE mark is distinct from the Prior Registered Marks. When compared, the
`marks
`
`create uniquely different commercial impressions.
`
`The Trademark Office must consider and focus on the difierences in the marks when assessing
`‘likelihood of
`A
`
`confusion.
`Prior
`
`In this instance, the presence ofthe additional word in Applicant’s mark, in contrast to the
`
`Registered Marks (comprised of a single term) must not be dismissed. As discussed above, Applicant’s
`mark
`
`creates a unique commercial impression, distinct from the Prior Registered Marks, such that consumers
`are not
`‘
`
`likely to be confused as the source ofthe parties’ respective goods.
`
`“CHASE” widely used for similar goods
`
`A review of the Principal Register discloses numerous, coexisting registrations which incorporate the
`term
`
`“CHASE” for goods in Class 28. From the evidence below, it is clear the Trademark Office holds that
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifi'Input\RFR000 l2008_l l_20_0 8_5 0__3 4_TTAB...
`
`1 1/20/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 9 of 12
`
`the
`
`goods are sufficiently distinct for coexistence to occur without the potential for confusion (registrations
`
`attached). Likewise, Applicant sees their placement on the Register as warranted. Third-party
`registrations can
`
`be used as evidence of the registrability of a mark where they are submitted to show “that differences in
`other
`
`portions of the marks may be sufficient to render the marks as a whole distinguishable.” Spoons
`Restaurants Inc.
`
`
`
`V. Morrison Inc. 23 USPQ2d 1735, 1740 (TTAB 1991).
`
`video output game machines and printed circuit
`
`boards thereof
`
`’
`
`
`
`
`
`N0.
`
`1548466
`3230596
`77430018
`
`
`
`
`
`CHASE-IT
`CHASER
`
`paintball guns, and accessories therefor in the
`nature of barrels, grip frames, frame covers,
`grips, expansion chambers, sight rails, trigger
`assemblies and barrel plu s
`
`
`
`
`
`
`As indicated by the above list of marks, the use of the term “CHASE” in connection with toys and
`playthings is
`
`relatively commonplace. Thus, the consuming public is conditioned to focus on the differences in the
`marks, as
`
`well as the specific goods, rather than the similarities, and thus discern that the goods come from
`different
`
`D sources. Moreover, none of the above-cited marks have apparently been opposed or canceled by any
`other
`
`party, despite the fact that each of these marks adopts the term “CHASE” and are used in connection
`with goods
`
`in the same class. In re Hamilton Bank, 222 USPQ -174 (TTAB 1984) (no likelihood of confusion found
`
`between KEY for banking services and other marks for banking containing the word "Key"; common
`word
`
`"Key" is weak as widely used in the financial field and suggestive of a desirable quality of banking).
`
`Thus, given that these marks have been allowed to coexist, Applicant's mark should be allowed to
`register,
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifi‘Input\RFR00012008_1 1_20_O8_50_3 4_TTAB...
`
`1 1/20/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 10 of 12
`
`particularly as it is dissimilar in appearance from the Prior Registered Marks and any of other
`registration or
`
`application.
`
`In sum, Applicant submits that the marks are not alike in sound, appearance, meaning or commercial
`impression,
`
`and consumers would not mistakenly believe Applicant's C. CHASE goods emanate from the same
`source as
`
`those sold under the Prior Registered Marks. Accordingly, Applicant submits that the Examining
`Attorney should
`
`reconsider and withdraw the refiisal under Section 2(d).
`
`EVIDENCE
`
`Original PDF file:
`http://tgate/PDF/RFR/2008/11/19/20081119151450330641-77240514-001_001/evi_652462l6100-
`151 103981_.__PTO_RECORDS_for_C._CHASE_CLASS_28.pdf
`Converted PDF file(s) (6 pages)
`Evidence- 1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence—5
`Evidence-6
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 028 for Toys and playthings of all types '
`Original Filing Basis:
`Filing Basis: Section 1(1)), Intent to Use: The applicant has a bona fide intention to use or use through
`the applicant's related company or licensee the mark in commerce on or in connection with the identified
`goods and/or services as of the filing date of the application. (15 U.S.C. Section 105 1(b)).
`
`Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use
`the mark in commerce on or in connection with the identified goods and /or services, and submits a copy
`of |
`registration number
`registered
`with a renewal date of
`and an expiration date of
`], and translation thereof, if appropriate. 15 U.S.C.
`Section l126(e), as amended.
`
`Proposed: Class 028 for Toys and playthings, namely, dolls, plush toys, toy cars, puzzles, arts and
`crafts, toys, games
`Deleted Filing Basis: 44(e)
`Filing Basis: Section l(b), Intent to Use: The applicant has a bona fide intention to use or use through
`the applicant's related company or licensee the mark in commerce on or in connection with the identified
`goods and/or services as of the filing date of the application. (15 U.S.C. Section 105 1(b)).
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTiffInput\RFR000 12008_1 l_20_08_50_34_TTAB...
`
`11/20/2008
`
`V
`
`.......,_ ~_...:.,; u,,
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 11 of 12
`
`SIGNATURE(S)
`Declaration Signature ‘
`Ifthe applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the
`applicant had a bona fide intention to use or use through the applicant's related company or licensee the
`mark in commerce on or in connection with the identified goods and/or services as" of the filing date of
`the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking
`registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in
`connection with the goods or services listed in the application as of the application filing date. 37 C.F.R.
`Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful
`false statements may jeopardize the validity of the application or any resulting registration, declares that
`he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the
`applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is
`being filed under 15 U.S.C. §105l(b), he/she believes applicant to be entitled to use such mark in
`commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association
`has the right to use the mark in commerce, either in the identical form thereof or in such near
`resemblance thereto as to be likely, when used on or in connection with the goods/services of such other
`person, to cause confusion, or to cause mistake, or to deceive; that if the original application was
`submitted unsigned, that all statements in the original application and this submission made of the
`declaration signer's knowledge are true; and all statements in the original application and this
`submission made on information and belief are believed to be true.
`
`Date: 11/19/2008
`Signature: /Jonathan D. Reichmanf
`Signatory's Name: Jonathan D. Reichman, Esq.
`Signatory's Position: Attorney of Record
`
`Request for Reconsideration Signature
`Signature: /Jonathan D. Reichman/ Date: 11/19/2008
`Signatory's Name: Jonathan D. Reichman, Esq.
`Signatory's Position: Attorney of Record
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of
`the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attomey/agent not currently associated with his/her company/firrn previously represented the applicant
`in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute
`power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw‘, (3) the applicant has filed a power of attorney appointing hirn/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attomey/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77240514
`Internet Transmission Date: Wed Nov 19 15:14:50 EST 2008
`
`TEAS Stamp: USPTO/RFR-65.246216.100-200811191514503
`30641 -772405 14-43092 1 843612cbd502c2ff534
`d1f87b2cee-N/A-N/A-20081119151103981828
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`ICO28. US 021 022 023, G a. s; VIDEO OUTPUT GAME MACHINES AND PRINTED
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`
`AND INTERFERENCES
`
`Ex parte KENICHI MIYAZAKI
`
`Appeal 2007-3300
`Application 09/3 86,000
`Technology Center 3600
`
`” Decided: November 19, 2008
`
`Before MICHAEL R. FLEMING, ChiefAdministrative Patent Judge,
`ALLEN R. MACDONALD, Vice ChiefAdministrative Patent Judge,
`WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E. HORNER,
`Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`DECISION ON APPEAL
`
`

`
`
`
`Appeal No. 2007-3300
`Appl. No. 09/386,000
`
`13. A large printer comprising:
`
`a sheet feeding area positioned at a height at
`which a user, who is approximately 170 cm tall,
`can set up a printing medium without having to
`bend substantially at the waist when the user is
`standing erect in front of the printer and standing
`substantially at ground level,
`
`wherein the sheet feeding area is positioned
`at the height when the printer is placed
`substantially at the ground level.
`
`15. A large printer comprising:
`
`a sheet feeding area operable to feed at least
`one roll of paper, at least one sheet of paper and at
`least one stiff carton toward a printing unit at
`which printing is performed thereon; and
`
`a cover member, which covers a first
`feeding path for the roll of paper from above, and
`which supports at least one of the sheet of paper
`and the stiff carton from below to constitute a part
`of a second feeding path for the sheet of paper,
`
`wherein the cover member extends linearly
`from an upstream portion thereof to a downstream
`portion thereof in connection with a direction in
`which at least one of the sheet of paper and the
`stiff carton is fed at the sheet feeding area, and
`
`wherein the cover member is disposed
`between at least one of the sheet of paper and the
`stiff carton and the roll of paper at a location in the
`sheet feeding area at which the roll of paper is in a
`rolled shape.
`
`

`
`1 Appeal No. 2007-3300
`Appl. No. 09/386,000
`
`distinctly claim the subject matter which applicant regards as the
`
`invention.
`
`2. Claims 1, 5, 6, 16, 26, and 31 are rejected under 35 U.S.C. § 102(e) as
`
`being anticipated by Yamada.
`
`3. Claims 13, 18, 26, and 31 are rejected under 35 U.S.C. § l02(b) as
`
`being anticipated by Orbons.
`
`4. Claims 13, 17, 18, 26, and 31 are rejected under 35 U.S.C. § 102(b) as
`
`being anticipated by the IP-4000 device.
`
`5. Claims 1, 3, 5, 6, 13, 17, 18, 26, and 31 are rejected under 35 U.S.C.
`
`§ 102(b) as being anticipated by the OCE 9400 device, as described in
`
`the MSM On-Line printout and the Digital ES publication.
`
`6. Claims 16, 26, and 31 are rejected under 35 U.S.C. § l02(b) as being
`
`anticipated by Takumi.
`7. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
`
`over Yamada and Orbons.
`
`8. Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over McCu1ley and Smedal.
`9. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable ‘
`
`*
`
`over Hageman and Metzner.
`
`SUMMARY o1: DECISION
`
`We AFFIRM-IN—PART and ENTER NEW GROUNDS o1:
`
`REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
`
`§ 41 .50(b).
`
`

`
`Appeal No. 2007-3300
`Appl. No. 09/386,000
`
`FINDINGS OF FACT
`
`We find that the following enumerated findings are supported by at
`
`least a preponderance of the evidence. Ethicon, Inc.‘ v. Quigg, 849 F.2d
`
`1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
`
`proceedings before the Office).
`
`1.
`
`Claim 1 recites “the paper feeding unit being located at a height
`
`that enables a user, who is approximately 170 cm tall, standing in 0
`
`front of the printer to execute the paper feeding process including
`
`replacement of the roll paper and setting at least one of the sheet of
`
`paper and the stiff carton.”
`
`2.
`
`The Appellant’s Specification does not clearly impose a structural
`
`limitation on the height of the paper feeding unit of the claimed
`
`printer. The Specification describes the height of the paper feeding
`
`unit using the same language as used in claim 1, and does not
`
`describe a positional relationship between the user and the printer
`
`3.
`
`_
`(see e.g., Spec. 328-11 and 14:13-16).
`Figure 1 of Appellant’s Specification shows only a preferred
`embodiment in which both the user and the printer are at ground
`
`level. The Appellant’s Specification describes that Figure l is “a
`schematic verticalsection view showing a state wherein a user
`
`replaces a paper roll for a large printer according to the present
`
`invention” and that the figures show a “preferred embodiment”
`
`(Spec. 8:24-25 and 9216-17). We interpret this description of
`
`Figure 1 to mean that the positional relationship between the user
`
`7
`
`
`
`

`
`Appeal No. 2007-3300
`App1.No. 09/386,000
`
`The test for defmiteness under 35 U.S.C. § 1_12, second paragraph, is
`
`PRINCIPLES OF LAW
`
`whether “those skilled_ in the art would understand what is claimed when the
`
`claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
`
`Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
`
`omitted).
`
`ANALYSIS
`
`Rejection ofclaims 1-6, 13, and 16-18 under 35 US. C. § 112, second
`
`paragraph
`
`The Federal Circuit has held in post-issuance patent infringement
`
`cases that the definiteness requirement “does not compel absolute clarity”
`
`and “[o]n1y claims ‘not amenable to construction’ or ‘insolubly ambiguous’
`
`are indefinite” Datamize, LLC V. Plumtree Software, Inc., 417 F.3d 1342,
`1347 (Fed. Cir. 2005) (citations omitted). See also StarScientzfic, Inc. v. RJ.
`
`Reynolds Tobacco C0,, Appeal No. 07-1448, slip. op. at 22 (Fed. Cir.
`August 25,2