Ex Parte Fields et al

Patent Trial and Appeal BoardOct 31, 2012

11926365 (P.T.A.B. Oct. 31, 2012)

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. 11/926,365 10/29/2007 Riley C. Fields 1021.006 4409 36790 7590 10/31/2012 TILLMAN WRIGHT, PLLC PO BOX 49309 CHARLOTTE, NC 28277-0076 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 10/31/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RILEY C. FIELDS, BRIAN E. COX, and DANIEL LEE BIZZELL ____________________ Appeal 2010-005755 Application 11/926,365 Technology Center 2800 ____________________ Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005755 Application 11/926,365 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-4, 6-19, 21, and 22. Claims 5 and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claimed invention is directed to a kit for creating artistic work on a residential lawn. Abst. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A kit for creating an artistic work on a residential lawn, comprising: (a) first and second lawn stencils; (b) first and second containers of aerosol turf paint of first and second colors; (c) a plurality of stakes for anchoring each of the lawn stencils to the residential lawn; and (d) a container holding the first and second lawn stencils, the first and second containers of aerosol turf paint, and the plurality of stakes; (e) wherein the first lawn stencil includes a first pattern of openings configured for application of a first design element of the artistic work to the residential lawn when the first lawn stencil is anchored to the residential lawn and the aerosol turf paint of the first container is applied over the first lawn stencil; and (f) wherein the second lawn stencil includes a second pattern of openings configured for application of a second design element of the artistic work to the residential lawn when the second lawn stencil is anchored to the residential lawn and the aerosol turf paint of the second container is applied over the second lawn stencil. Appeal 2010-005755 Application 11/926,365 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Summer Ippolito Schlundt Ogorzalek US 2,444,860 US 5,101,525 US 5,165,337 US 5,460,087 Jul. 6, 1948 Apr. 7, 1992 Nov. 24, 1992 Oct. 24, 1995 REJECTIONS The Examiner made the following rejections: Claims 1, 6, 9-12, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ogorzalek, Ippolito, and Schlundt. Ans. 20. Claims 2-4, 7-8, 13-19, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ogorzalek, Ippolito, Schlundt, and Summer. Ans. 7. ISSUES 1. Whether the combination of Ogorzalek, Ippolito, and Schlundt fails to disclose or suggest a kit for creating an artistic work on a lawn as recited by claims 1, 6, 9-12, and 21. 2. Whether the combination of Ogorzalek, Ippolito, Schlundt, and Summer fails to disclose or suggest a kit for creating an artistic work on a lawn as recited by claims 2-4, 7-8, 13-19, and 22. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ Appeal 2010-005755 Application 11/926,365 4 conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Answer (Ans. 3-20) in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following arguments for emphasis. 1 1. 35 U.S.C. § 103(a) Rejection over Ogorzalek, Ippolito, and Schlundt Claims 1, 6, 10, and 11 Appellants contend that the combination of Ogorzalek, Ippolito, and Schlundt is only applicable to an architectural structure. App. Br. 8-10. Appellants further contend that, because Ogorzalek fails to disclose creating an artistic work on a lawn, it would have not been obvious to employ lawn stakes as taught by Ippolito to anchor stencils to a lawn. The Examiner responds, inter alia, that the decoration of surfaces in general, whether paper, walls, or lawns, is a well-established practice, and that no specific teaching of use with a lawn is required. Ans. 15-16. The Examiner further asserts that Ippolito would have suggested the use of stakes to solve the problem of holding a flat article onto the surface of a lawn. Ans. 16. We agree with the Examiner. 1 In connection with the rejection of claims 1, 6, 9-12, and under 35 U.S.C. § 103(a) over Ogorzalek, Ippolito, and Schlundt, claims 1, 6, 10, and 11 are collectively argued on the basis of claim 1; claims 9, 12, and 21 are separately argued. In connection with the rejection of claims 2-4, 7-8, 13- 19, and 22 under 35 U.S.C. § 103(a) over Ogorzalek, Schlundt, and Summer, claims 2 and 3, claims 7 and 15,and claims 14 and 16-18 are collectively argued; claims 4, 8, 17, 19, 13, and 22 are separately argued. Appeal 2010-005755 Application 11/926,365 5 On the issue of obviousness, the Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. “One of the ways in which a patent’s subject matter can be proved obvious is by noting that there existed at the time of the invention a known problem for which there was an obvious solution encompassed by the patent’s claims.” Id. at 419-420. Furthermore, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We further find that the Examiner’s position is consistent with Appellants’ own description of the known marking techniques in the “Background of the Present Invention” section. In particular, Appellants’ Appeal 2010-005755 Application 11/926,365 6 Specification discloses one of the known methods where stencils made from a planar sheet of flexible film are fastened to a desired area using weights or stencil anchors. Appellants’ disclosure continues to describe that aerosol turf paint is sprayed onto the turf through holes in the stencil. Spec. 1. Appellants next contend that Ippolito is nonanalogous art because it is not in the field of endeavor of the invention since (i) it is directed to securing lawn and beach blankets rather than stencils and (ii) there is no commonality between the problem to which Ippolito and the problem that Appellants set out to solve. App. Br. 10-15. The Examiner responds that Appellants’ argument is not persuasive because both Appellants and Ippolito are concerned with solving the same problem of holding a flat article onto the surface of a lawn. Ans. 16-17. We agree with the Examiner. Furthermore we note that the Examiner’s position is consistent with Appellants’ Specification disclosing fastening of a stencil to, inter alia, a sports field, using weights or stencil anchors. Spec. 1. The use of stakes as stencil anchors is no more than the predictable use of prior art elements according to their established functions. See KSR Int’l Co. v. Teleflex Inc. at 416. Therefore, we will sustain the rejection of claims 1, 6, 10, and 11. Claim 9 Appellants further contend that Ogorzalek’s disclosure of a stencil having a “necessary degree of stiffness” teaches away from stencils which are rolled when in a container as recited by claim 9. App. Br. 18. The Examiner responds that the modification of Ogorzalek to be used on a lawn rather than on a building would suggest modifications that are compatible with the intended surface on which the stencil is to be used. Therefore the Appeal 2010-005755 Application 11/926,365 7 use of a flexible film as taught by Summer would also allow the stencil to be rolled for storage. Ans. 18. We again agree with the Examiner. Furthermore, merely disclosing a rigid stencil suited for attachment to the face of a building does not dissuade the use of a flexible stencil on an alternative surface such as a lawn. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and quotations omitted). A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, one skilled in the art would have recognized the advantages of a flexible and compactly storable stencil that would accommodate a lawn surface versus the rigid structure of the rigid stencil structure of Ogorzalek designed to accommodate the vertical face of a building. Therefore, we will sustain the rejection of claim 9. Claim 12 Appellants next contend that none of the references discloses or suggests circumferential flange located along the elongated shaft at a spacing to the proximal portion comprising the head of the shaft, as recited by claim 12. Ap. Br. 19. The Examiner responds that these limitations are satisfied by a flexible film that could stretch over the circumferential flanges 26 spaced from the head of the shaft 22, as disclosed by Ippolito. Ans. 4-5 Appeal 2010-005755 Application 11/926,365 8 and 19. In response, Appellants merely point out that the flexible sheet of the prior art may not be stretchable. Reply Br. 8. In view of the reasonable case of prima facie obviousness made by the Examiner and the absence of persuasive evidence supporting nonequivalence of the structures, 2 we again agree with the Examiner and sustain the rejection of claim 12. Claim 21 Appellants initially contend that the combination of references asserted by the Examiner fails to disclose or suggest the subject matter of claim 21 without providing a detailed explanation or persuasive evidence in support of the alleged error. App. Br. 21. However, a statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Therefore, such bald allegations are not persuasive of error. Appellants further contend that the Examiner has not provided a proper analysis of claim 21 under 35 U.S.C. § 112 ¶ 6. Ap. Br. 21. We disagree. The Examiner by applying the references (Ans. 6) in effect has identified the first and second means for applying respective design elements to an area of a lawn as the first and second lawn stencils and the third means 2 Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appeal 2010-005755 Application 11/926,365 9 for anchoring each of the first and second means as the plurality of stakes. See Ans. 20. This characterization is reasonable and consistent with Appellants’ Summary of the Claimed Subject Matter describing that “[t]he first and second ‘means’ correspond to lawn stencils 14, 16” and “[t]he third ‘means’ corresponds to a plurality of stakes 22.” App. Br. 6. Having shifted the burden to Appellants to identify error in the Examiner’s interpretation of claim 21, Appellants reply that “the stencil of Ogorzalek cannot be characterized as ‘a means for applying a design element to an area of a lawn.’” Reply. Br. 9. However, in so far as Appellants describe the means for applying a design element as equivalent to the disclosed lawn stencils (App. Br. 6) and do not otherwise provide persuasive evidence of why the disputed characterization by the Examiner is improper, we find Appellants’ arguments to be without merit. Accordingly, for the reasons presented supra, we sustain the Examiner’s rejection of claims 1, 6, 9-12, and 21under 35 U.S.C. § 103(a). 2. 35 U.S.C. § 103(a) Rejection over Ogorzalek, Ippolito, Schlundt, and Summer Claims 2 and 3 Appellants contend that Ogorzalek teaches away from use of a planar sheet of flexible film because it instead requires a stiff template. App. Br. 15-16. The Examiner responds that the modification of Ogorzalek to be used on a lawn rather than a building would suggest the use of a flexible film as taught by Summer that is compatible with the intended surface on which the stencil is to be used. Ans. 17. We agree with the Examiner. Furthermore, we are not persuaded that Ogorzalek teaches away from the Appeal 2010-005755 Application 11/926,365 10 disputed combination. Merely disclosing a rigid stencil suited for attachment to the face of a building does not dissuade the use of a flexible stencil on an alternative surface such as a lawn. As discussed above with respect to claim 1, Ogorzalek teaches a rigid stencil to accommodate applying a design to the face of a building. There is no indication that such a stiff template is desirable, either exclusively or otherwise, when applying a design to a lawn as in Appellants’ claims and therefore does not teach away from the combination. Accordingly, we will sustain the rejections of claims 2 and 3. Claim 4 Appellants contend that modifying the stencils in Ogorzalek to have the claimed dimensions of approximately 5 feet square “would make it very difficult (and certainly impractical) to apply the stencil uniformly to a surface.” App. Br. 16. The Examiner responds that the modifications are obvious so as to make the stencils more compatible with use on a different surface (e.g., a lawn.) Ans. 18. We agree with the Examiner. Furthermore, Appellants have not provided persuasive evidence that the claimed size or other properties such as flexibility are critical (i.e., unexpected results.) See, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ( Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.) Still further, the size of the stencil alone does not confer patentable distinctiveness over the stencils of Ogorzalek. The Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having Appeal 2010-005755 Application 11/926,365 11 the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984). Therefore, we will sustain the rejection of claim 4. Claims 7, 8, and 15 Appellants contend the textual color designation appearing at the top of the stencil members of Summer are not equivalent to the claimed indication of orientation. App. Br. 17-18. The Examiner responds that “one having ordinary skill in the art would look at the stencils of Summer and, based upon the orientation of the text, would know which portion of the stencil was the top.” Ans. 18. We agree with the Examiner. In contrast, Appellants have not provided persuasive evidence supporting a conclusion otherwise, i.e., that the text appearing at the top of Summer’s stencils would not function as an indication of proper orientation. Therefore, we will sustain the rejection of claims 7, 8, and 15. Claims 17 and 19 Appellants’ contention of error is the same as asserted in connection with claims 9 and 12, respectively. App. Br. 18-19. For the same reasons stated above, we are not persuaded by Appellants’ contentions and will sustain the rejection of claims 17 and 19. Claim 13 Appellants contend that the applied prior art fails to disclose or suggest a stencil that is "configured to stretch over the circumferential flange Appeal 2010-005755 Application 11/926,365 12 of a stake,” as recited by claim 13. App. Br. 19-20. The Examiner responds that Summer discloses or suggest these features. Ans. 10 and 19. We agree that the sheet plastic material disclosed by Summer would have suggested to one skilled in the art that the stencil material would be resilient to enable it to be stretched over a stake. Therefore, we will sustain the rejection of claim 13. Claims 14 and 16-18 Appellants contend that selection of a container of a particular claimed dimensional size for holding the remaining components of the kit is not obvious. App. Br. 20-21. The Examiner responds that one of ordinary skill in the art would have recognized that the interior of the container must accommodate storage of the elements to be placed in the container while also being aware of the desirability of making the container a size that is easily transported. Ans. 19. Absent persuasive evidence that the size of the container is critical or provides unexpected results, we agree with the Examiner that claimed interior dimensions would have been obvious. Therefore, we will sustain the rejection of claims 14 and 16-18. Claim 22 Appellants do not argue claim 22 separately from that of claim 21 such that the claims stand or fall together. Since we find Appellants’ arguments of error in connection with claim 21 to be unpersuasive, we likewise find no error in connection with the rejection of claim 22. Appeal 2010-005755 Application 11/926,365 13 Accordingly, for the reasons presented supra, we sustain the Examiner’s rejection of claims 2-4, 7-8, 13-19, and 22 under 35 U.S.C. § 103(a). CONCLUSIONS On the record before us we conclude that the Examiner has not erred in rejecting claims 1, 6, 9-12, and 21 under 35 U.S.C. § 103(a) as being unpatentable over Ogorzalek, Ippolito, and Schlundt or in rejecting claims 2- 4, 7-8, 13-19, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Ogorzalek, Ippolito, Schlundt, and Summer. DECISION The decision of the Examiner to reject claims 1-4, 6-19, 21, and 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ELD