Chan BOHACHEFF

Patent Trials and Appeals Board

Sep 23, 2021

2021002476 (P.T.A.B. Sep. 23, 2021)

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.
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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.
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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
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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
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(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
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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)).
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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
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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.
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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.

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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