Chan BOHACHEFFDownload PDFPatent Trials and Appeals BoardSep 23, 20212021002476 (P.T.A.B. Sep. 23, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/018,392 02/08/2016 Chan Wang BOHACHEFF 060004-00002 7630 153900 7590 09/23/2021 Nexsen Pruet, PLLC (Charlotte Office) 227 West Trade Street Suite 1550 Charlotte, NC 28202 EXAMINER FERNSTROM, KURT ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 09/23/2021 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): SMurphy@NexsenPruet.com SWilliams@NexsenPruet.com USPatent@NexsenPruet.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHAN WANG BOHACHEFF Appeal 2021-002476 Application 15/018,392 Technology Center 3700 Before JENNIFER D. BAHR, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–16 and 18–25, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor, Chan Wang Bohacheff. Appeal Br. 3. Appeal 2021-002476 Application 15/018,392 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “learning aids and, in particular, to worksheets for practicing and improving various handwriting techniques.” Spec. 1:9–10. Claims 1 and 18 are independent, and claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An aid for practicing handwriting comprising: a medium having one or more writing bands marked on a surface of the medium, a writing band including four horizontal lines defining three adjacent rows and columns dividing the three adjacent rows into blocks in which letters or portions thereof are to be written, wherein the columns have width less than width of the blocks and provide spacing between the letters and wherein the four horizontal lines and the columns are one or more colors that differ from color of the medium. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Harvey US 177,120 May 9, 1876 Niquette US 4,173,082 Nov. 6, 1979 Morris US 4,425,095 Jan. 10, 1984 Bean US 7,407,383 B2 Aug. 5, 2008 REJECTIONS Claims 1–4, 10–13, 16, and 18–25 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bean and Morris. Claims 5–9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bean, Morris, and Niquette. Claims 14 and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bean, Morris, and Harvey. Appeal 2021-002476 Application 15/018,392 3 OPINION Obviousness—Bean and Morris Claims 1–4, 10, 13, 16, and 18–25 The Examiner finds that Bean discloses an aid for practicing handwriting comprising a medium (paper 51) having most of the features recited in claim 1, but that “Bean does not disclose vertical lines which define columns between blocks into which letters are to be written, the columns having a width smaller than the blocks.” Final Act. 2. The Examiner finds that such an arrangement of lines on an aid for practicing handwriting was known in the art at the time of Appellant’s invention, as evidenced, for example, by Morris. Final Act. 2. The Examiner determines it would have been obvious to provide such vertical lines on Bean’s paper 51 “as an obvious substitution of one known element for another and for the purpose of providing the user with guidance pertaining to the spacing between letters.” Final Act. 2–3. The Examiner also explains: [T]he claim limitations and the arguments presented in support thereof are directed to the content of printed matter. Under MPEP [§] 2111.05, such limitations will not overcome the prior art and are considered to be non-functional descriptive material where there is no new or nonobvious functional relationship between the printed matter and the underlying substrate. In this case, no such relationship exists. The substrate of the invention i[s] no more than a generic medium, which is presumed to be capable of being written on. The medium merely serves as support for the printed matter. The functional relationship between the printed matter and the substrate, to the extent that one exists, is identical to that found in Bean and other prior art of record, in that the printed matter serves to guide a user in writing on the medium, and thus is not new or nonobvious. The Appeal 2021-002476 Application 15/018,392 4 claims do not recite any structural features which distinguish the invention from the prior art. Final Act. 5; see also Ans. 3–4 (providing some additional explanation regarding non-functional descriptive material). Appellant sets forth several arguments contesting the rationale for combining Bean and Morris. Appeal Br. 5–7. In particular, Appellant argues that altering the markings of paper 51 shown in Figure 4 of Bean to include columns as taught by Morris would “disrupt[] the proper registry between the sheet 51 and panels 21 and 31,” inducing “the display of inconsistent and/or unintelligible markings in adjacent apertures . . . of Bean, thereby confusing the user and rendering the handwriting aid unsatisfactory for its intended purpose.” Appeal Br. 5–6. Appellant contends that Morris’s markings, which, according to Appellant, allow uninterrupted flow of handwriting across columns 13 from box to box, “are entirely inconsistent with the operation of Bean,” which restricts writing to boxes of the template and expressly forbids a linking stroke between letters. Appeal Br. 6–7. Further, Appellant contends that Morris’s markings “are not markings at all” because the markings of Morris’s Figure 1 “delineate embossed surfaces of differing depths” in Morris’s writing aid. Appeal Br. 7. Thus, Appellant argues that “the disclosure of Morris cannot be incorporated [into] Bean.” Appeal Br. 7. Appellant’s arguments that the modification would render Bean’s handwriting aid unsatisfactory for its intended purpose are not persuasive. It is not apparent, and Appellant does not cogently explain, why providing markings on Bean’s paper 51, serving essentially the same purpose as the apertures and the columns between apertures in Bean’s panels 21 and 31 Appeal 2021-002476 Application 15/018,392 5 (providing the user with guidance pertaining to the spacing between letters) would disrupt the proper registry between paper 51 and panels 21 and 31 or confuse the user. To the contrary, following the teachings of Bean and Morris, one of ordinary skill in the art would have been prompted to place any column markings intended to guide the user with respect to proper spacing between letters on paper 51 at locations that correspond with the edges of the apertures of Bean and analogous recessed areas of Morris, thereby reinforcing proper registry of panels 21 and 31 with paper 51. Further, such a modification would also permit paper 51 to be used by itself, without panels 21 and 31, with the same functionality (guidance as to spacing between letters) as the assembled writing guide. The Examiner responds to Appellant’s argument that Morris’s markings “are not markings at all” (Appeal Br. 7) by pointing out that the rejection does not propose to bodily incorporate the embossed surface structure of Morris into Bean. Ans. 5. “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)). Further, the Examiner finds that the printed patent of Morris itself, particularly Figures 1, 4, 7, and 9, “constitutes a medium with printed guidelines thereon comprising rows and columns, where the columns between blocks have a lesser width than the blocks with letters therein, and thus also reads on the pertinent claim limitations.” Ans. 5. Appellant does not dispute the Examiner’s findings that the printed Appeal 2021-002476 Application 15/018,392 6 Morris patent,2 with Figures 1, 4, 7, and 9 displayed thereon, anticipates the claimed subject matter. Likewise, Figures 4 and 5 of Bean appear to anticipate the claimed subject matter, either as the printed patent Figures themselves (whether printed on paper or displayed on an electronic device)3 or as the assembled writing guide (with superimposed panels 21 and 31 and paper 51) illustrated therein.4 A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984); see also In re Fracalossi, 681 F.2d 792, 794, (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); In re Bush, 296 F.2d 491, 496, (CCPA 1966) (making clear that, in affirming a multiple reference rejection under 35 U.S.C. § 103, the Board may rely on fewer than all of the references relied on by the Examiner in an obviousness rationale without designating it as a new ground of rejection). Moreover, Appellant does not even address, much less dispute, the Examiner’s determination that the claims are directed entirely to the content of printed matter, with no new or nonobvious functional relationship between the markings and the medium, and, thus, the claims do not recite 2 In this regard, we note that Appellant’s “medium” is not restricted to a physical sheet or paper, but, rather, can be “[a]ny medium not inconsistent with the objectives of the present invention,” including “paper, plastic, glass, metal[,] or various combinations thereof,” as well as “an electronic medium such as that associated with a computer, tablet[,] or smartphone.” Spec. 3:4–8. 3 See Spec. 3:6–8 (defining “medium” as encompassing “an electronic medium,” as well as paper). 4 See Spec. 3:5–6 (disclosing that the bands “can be marked on paper, plastic, glass, metal[,] or various combinations thereof” (emphasis added)). Appeal 2021-002476 Application 15/018,392 7 any structural features that patentably distinguish the claimed invention from the prior art. See Final Act. 5; Ans. 3–4. For the above reasons, Appellant does not apprise us of error in the rejection of claim 1, or of claims 2–4, 10, 13, 16, and 18–25, for which Appellant does not present any separate arguments. See Appeal Br. 5–7. Accordingly, we sustain the rejection of claims 1–4, 10, 13, 16, and 18–25 as being unpatentable over Bean and Morris. Claims 11 and 12 With respect to claims 11 and 12, Appellant argues that the Examiner fails to provide any reference that expressly teaches customization of column spacing and that “[p]roviding columns of non-uniform width is fundamentally inconsistent with” Bean’s objective of teaching proper letter spacing. Appeal Br. 7. Appellant does not persuasively explain why this is the case. Persons of ordinary skill in the art would readily appreciate that traditional handwriting conventions include different spacings between letters for certain situations, such as wider spaces between sentences, for example. Moreover, Appellant does not address, much less dispute, the Examiner’s finding that the printed patent of Morris itself, particularly Figures 1, 4, 7, and 9, “constitutes a medium with printed guidelines thereon comprising rows and columns, where the columns between blocks have a lesser width than the blocks with letters therein, and thus also reads on the pertinent claim limitations” (Ans. 5). In particular, Appellant does not explain why Morris’s Figure 7, which has a column to the left of the left-most vertical dashed line (shown slightly bolder and thicker than the remaining vertical dashed lines) that is wider than the columns formed by Appeal 2021-002476 Application 15/018,392 8 the remaining vertical dashed lines, fails to include columns of non-uniform width. Further, Appellant does not even address, much less dispute, the Examiner’s determination that the claims are directed entirely to the content of printed matter, with no new or nonobvious functional relationship between the markings and the medium, and, thus, the claims do not recite any structural features that patentably distinguish the claimed invention from the prior art. See Final Act. 3, 5; Ans. 3–4. For the above reasons, Appellant fails to apprise us of error in the rejection of claims 11 and 12. Accordingly, we sustain the rejection of claims 11 and 12 as being unpatentable over Bean and Morris. Obviousness—Bean, Morris, and Niquette In contesting the rejection of claims 5–9, Appellant relies solely on the arguments presented for claim 1, adding only that “Niquette does not cure the deficiencies of Bean and Morris.” Appeal Br. 8. For the reasons discussed above, Appellant’s arguments fail to apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claims 5–9. Accordingly, we sustain the rejection of claims 5–9 as being unpatentable over Bean, Morris, and Niquette. Obviousness—Bean, Morris, and Harvey In contesting the rejection of claims 14 and 15, Appellant argues that “Harvey does not cure the deficiencies of Bean and Morris.” Appeal Br. 8. Having not been apprised of deficiencies in Bean and Morris, for the reasons discussed, above, this argument likewise fails to apprise us of error in the rejection of claims 14 and 15. Appeal 2021-002476 Application 15/018,392 9 Appellant also argues that “Harvey fails to teach slanted columns of uniform spacing” and that “[i]t is easily seen from the figures and description of Harvey that the writing test presented therein cannot function with columns of uniform spacing.” Appeal Br. 8. This argument is not responsive to the rejection, which relies on Bean, and not Harvey, for uniform spacing. See Final Act. 5 (finding that the combination of Bean and Morris “discloses the claim limitations with the exception of the columns being slanted”). Moreover, slanted parallel lines C in Harvey’s Figures 3 and 4 appear to be uniformly spaced, and Harvey describes them as parallel lines “at a distance apart equal to one space or unit for measuring the width of letters, and at a slant equal to the slant of the letters.” Harvey, col. 2, ll. 1–6. Appellant does not persuasively explain why lines C do not form slanted columns having uniform spacing, nor does Appellant’s argument address the Examiner’s determination that the claims are directed entirely to the content of printed matter, with no new or nonobvious functional relationship between the markings and the medium, and, thus, the claims do not recite any structural features that patentably distinguish the claimed invention from the prior art. See Final Act. 5; Ans. 3–4. For the above reasons, Appellant fails to apprise us of error in the rejection of claims 14 and 15. Accordingly, we sustain the rejection of claims 14 and 15 as being unpatentable over Bean, Morris, and Harvey. CONCLUSION The Examiner’s rejections are AFFIRMED. Appeal 2021-002476 Application 15/018,392 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 10–13, 16, 18–25 103 Bean, Morris 1–4, 10–13, 16, 18–25 5–9 103 Bean, Morris, Niquette 5–9 14, 15 103 Bean, Morris, Harvey 14, 15 Overall Outcome 1–16, 18–25 TIME PERIOD FOR RESPONSE No time period 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation