Federal Circuit disposition — 17-1920

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: DOMINICK THERESA,
Appellant
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2017-1920
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/570,827.
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Decided: January 17, 2018
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D OMINICK T HERESA , Edison, NJ, pro se.
N ATHAN K. K ELLEY , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by T HOMAS W.
K RAUSE, MARY L. K ELLY , P HILIP J. WARRICK .
______________________
Before P ROST , Chief Judge, S CHALL and T ARANTO,
Circuit Judges.
P ER CURIAM .
Appellant Dominick Theresa is the named inventor on
U.S. Patent Application No. 12/570,827 (“’827 applica-
tion”). Theresa appeals from the decision of the Patent
Trial and Appeal Board (“Board”) affirming the Patent

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IN RE: THERESA 2
and Trademark Office’s obviousness rejection of Theresa’s
application. We affirm.
BACKGROUND
The ’217 application describes a system for identifying
and transporting portable memory devices with three
color-coded components: labels, attachment members
(such as key rings), and wristbands.
The Board considered claim 1 illustrative of the in-
vention, and neither side disputes that conclusion. It
reads:
An identification system comprising:
a plurality of first labels removably carried on
at least one substrate, each of the plurality of first
labels including a first color thereon, each of the
first labels further including a marking selected
from either pre-set words or pre-set symbols to
identify a content category, the first color being
associated with the content category by being
placed in juxtaposition with the marking;
a plurality of attachment members, each of the
attachment members including the first color
thereon and being associated with the content
category by matching the first color of plurality of
the first labels;
a plurality of wrist bands configured to be
wearable on the wrist of a wearer, each of the
wrist bands being substantially of the first color
and being associated with the content category by
matching the color of the plurality of first label;
wherein one of the plurality of first labels is se-
lectable for removable application to a flash
memory device to identify the content category of
data stored on flash memory device by the mark-
ing and the first color, wherein one of the attach-

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IN RE: THERESA 3
ment members is configured for removable at-
tachment with an attachment feature of the flash
memory device and one of the wristbands is se-
lectable for attachment with the attachment
member, the attachment member and the wrist
band further identifying the content category of
the flash memory device by matching the first col-
or [to] the selected label.
J.A. 416 (citations to figures omitted).
Also relevant to this appeal are dependent claims 5,
20, and 24. Claim 5 depends from claim 1 and recites the
system of that claim wherein:
the markings of the first labels include respective
words, and wherein the respective symbols are se-
lected from the group consisting of a representa-
tion of a music note, a representation of a paper, a
representation of a plane and a representation of
people.
J.A. 417.
Claim 20 also depends from claim 1 and recites the
system of that claim wherein the labels “having a mark-
ing including a symbol” are included on a separate sub-
strate from labels with words. J.A. 418.
Claim 24 depends from claim 21 (which recites an as-
sembly of a device in a manner similar to the system of
claim 1) and includes the additional limitation that the
markings of the labels in claim 21 “include[] a symbol.”
J.A. 419.
Relying on the combination of U.S. Patent Application
No. 2006/0026878 (“Slater”), U.S. Patent No. 3,124,286 to
Dompier (“Dompier”), and U.S. Patent Publication No.
2002/0180588 to Erickson (“Erickson”), the examiner
rejected claims 1, 3–6, 8, and 19–20 of the ’827 application
as obvious. Relying on that combination plus U.S. Patent

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IN RE: THERESA 4
No. 6,763,410 to Yu (“Yu”), the examiner rejected claims
21–25 as obvious.1 The Board affirmed, entering a new
ground of rejection for claims 5, 20, and 24. The Board
also denied Theresa’s subsequent request for reconsidera-
tion.
Theresa now appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
D ISCUSSION
“The ultimate judgment of obviousness is a legal de-
termination” based on underlying factual findings. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). This
court reviews the Board’s ultimate obviousness determi-
nations de novo and the underlying factual determina-
tions for substantial evidence. Ariosa Diagnostics v.
Verinata Health, Inc., 805 F.3d 1359, 1364–65 (Fed. Cir.
2015). The underlying factual findings include findings
as to the scope and content of the prior art, the differences
between the prior art and the claimed invention, and the
presence or absence of a motivation to combine or modify
with a reasonable expectation of success. Id. at 1364.
The examiner determined that the four references
disclosed all of the limitations of the challenged claims of
the ’827 application.
The examiner found that Slater disclosed “a set of la-
bels having visual indicators that comprise text and color
for recognition of the object that is labeled.” J.A. 427.
1 Due to cancellation of other claims, the claims at
issue here are the only remaining pending claims of the
’827 application. The Board also found claim 25 invalid
under 35 U.S.C. § 112(b). The government does not seek
affirmance on that ground, and we need not reach that
issue because we affirm the Board’s obviousness determi-
nation.

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IN RE: THERESA 5
Specifically, Slater taught a sheet of pre-printed labels for
keys with descriptive words or numbers to identify the
function of each key. J.A. 460 ¶ 10. Slater further taught
the use of colored labels to associate each color with a
function. J.A. 461 ¶ 15. Slater also taught the use of an
attachment member, a key ring, on a key labeled accord-
ing to the disclosed system. J.A. 462 ¶28.
Slater did not disclose the use of a wristband; the ex-
aminer relied on Dompier for that limitation. See J.A. 5–
6. Dompier disclosed a key affixed to a key ring, in turn
affixed to a wristband. J.A. 463 Fig. 1, 464 col. 1 ll. 50–
54.
The examiner found that Erickson taught “a series of
electronic memory devices that are labeled” and acknowl-
edged the “pre-existence of color-coded systems,” such as
Slater’s, that could be combined with Erickson. J.A. 427.
Erickson noted that “color-coded file folders” could be
“used to help users organize records” wherein the colors
could be “used for categories or sorting.” J.A. 474 ¶ 32.
This system could be used in conjunction with radio-
frequency identification (“RFID”) tags and certain colored
labels could indicate information about those tags. Id.
An RFID tag “typically include[d] an integrated circuit
with a certain amount of memory.” Id. ¶ 30. Thus, the
examiner found Erickson disclosed a color-coded labeling
system for indicating memory device content. J.A. 427.
The examiner also found that modifying the combina-
tion of Slater in view of Dompier to include a plurality of
attachment members, wristbands, and substrates, as
required by the ’827 application, 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.” J.A. 349; see
also J.A. 14 (finding a Slater suggests providing a plurali-
ty of substrates by teaching substrates with all of the

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IN RE: THERESA 6
same labels and substrates with various labels, J.A. 461
¶ 25).
Finally, the examiner found that Yu supplied the lim-
itation of a flash memory device required by claims 21–25.
J.A. 351. Yu disclosed a flash memory device affixed to a
key ring. J.A. 482 Fig. 4.
The Board affirmed the examiner’s findings, as well
as the examiner’s conclusion that a person of ordinary
skill in the art would have been motivated to combine
these references to obtain the benefits of easy identifica-
tion of Slater and Erickson and the portability of Dompier
and Yu.
Theresa contends that no substantial evidence sup-
ported the Board’s conclusion. We disagree.
Theresa’s first argument is that the Board erred in
ignoring the limitations of claims 1, 5, 20, and 24, involv-
ing marking the labels with “symbols,” even though none
of the cited references disclosed the use of symbols.
(Slater only used words or numbers.) This argument is
misplaced.
First, claim 1 requires marking the labels with “pre-
set words or pre-set symbols.” J.A. 416 (emphasis added).
“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 v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (citing Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed.
Cir. 1984)). Thus, since Slater undisputedly disclosed the
use of pre-determined words, claim 1 can be obvious in
light of the prior art even without a reference to symbols.
So too with dependent claim 5, which includes a limita-
tion that builds on the alternative limitation in claim 1,
while preserving the alternative options.

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IN RE: THERESA 7
As to the symbols in claims 20 and 24, “we have long
held that if a limitation claims (a) printed matter that
(b) is not functionally or structurally related to the physi-
cal substrate holding the printed matter, it does not lend
any patentable weight to the patentability analysis.” In
re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). The
Board concluded the printed symbols bear no functional
or structural relationship to the labels on which they are
printed and thus cannot form a patentable distinction
with the prior art references asserted here. We agree.
Theresa’s labels relate to the contents of the memory
devices labeled, not to the labels on which they are print-
ed. Accordingly, we ascribe them no patentable weight.
Theresa also contends the Board erred in relying on
Erickson for use of a color-coded system in conjunction
with memory devices, because Erickson’s claimed inven-
tion focused on the RFID tags. True, Erickson’s reference
to color-coded file folders related to the combination of the
RFID system therein with a third-party system that
already existed. But Erickson need not be limited to the
invention claimed therein; it may be cited for all that it
teaches. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006) (“[T]he teaching of [a reference] is not limited to the
specific invention disclosed.”).
Theresa next contends that substantial evidence did
not support finding a motivation to combine these refer-
ences. Not so.
The examiner found, and the Board agreed that a
skilled artisan would have modified Slater to add Dom-
pier’s wristband to the key ring already disclosed in
Slater to improve portability. J.A. 6, 349. Indeed, Dom-
pier specifically sought to relieve the challenges of remov-
ing a key from a handbag or carrying the key accessibly
while one’s arms are otherwise full. J.A. 464 col. 1 ll. 11–
30.

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IN RE: THERESA 8
Though Slater disclosed labels for keys, it acknowl-
edged that keys were “just one example” of how the color-
coded system disclosed therein could be used. J.A. 461
¶ 16. “The need for such a product can be found in a
number of places where people carry multiple objects that
appear the same,” such as pill bottles or toothbrushes.
Id.; see also J.A. 460 ¶ 6 (noting that similar labels exist
to identify circuit breakers or storage boxes and to convey
further information about the labeled items). The exam-
iner found, and the Board agreed, 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. J.A. 16–17, 350–51.
Further, the examiner found it would be obvious to
extend the color-coding scheme to all of the components of
the system to enhance the visual identification features of
Slater and Erickson. J.A. 350; see also J.A. 462 ¶ 28
(Slater disclosing labeling both sides of a key to enable
visibility of the label from multiple angles).
Theresa offers no more than bare contradiction of the
Board’s motivation-to-combine analysis and contentions
that certain individual references fail to disclose certain
limitations that the examiner and the Board found in
other references. This cannot dislodge the Board’s obvi-
ousness determination, which is supported by at least the
foregoing substantial evidence.
We have considered Theresa’s remaining arguments
and find they lack merit.
CONCLUSION
For the foregoing reasons, the Board’s determination
that claims 1, 3–6, 8, and 19–25 are unpatentable under
35 U.S.C. § 103(a) is affirmed.

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IN RE: THERESA 9
AFFIRMED
COSTS
Each party shall bear their own costs.

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