Ex Parte Adams

Board of Patent Appeals and Interferences

Aug 21, 2009

10873903 (B.P.A.I. Aug. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM E. ADAMS
____________

Appeal 2009-002673
Application 10/873,903
Technology Center 3700
____________

Decided: August 21, 2009
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002673
Application 10/873,903

2
STATEMENT OF THE CASE
William E. Adams (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3, 5, 7-9, 11, 12, and 18. Claims
4, 6, 10, 13-17, 19, and 20 have been withdrawn. Claims 21-37 have been
canceled. The Appellant’s representative presented oral argument on
August 13, 2009. We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).

THE INVENTION
The Appellant’s invention is drawn toward a rosary-praying device 1
including a ring 2, a bead 6 that travels along the ring 2, and a plurality of
stops 3. Spec. 5-6 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A rosary prayer device comprised of:

a ring having a surface containing a series of stops
about its circumference, the stops arranged in five
groups of five stops or ten stops and further
containing a starting space between two of the five
groups of stops, the ring having a fixed size and
shape such that the ring is incapable of tangling
upon itself, the stops arranged one after another in
a single continuous path about a circumference of
the ring; and

a bead positioned on the ring and sized to travel
around the ring and remain between any two
selected stops on the ring until pushed over one of
the two selected stops.

Appeal 2009-002673
Application 10/873,903

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kislinger US 1,579,820 Apr. 6, 1926
Rogus US 2,187,664 Jan. 16, 1940
Hoelscher US 2,717,737 Sep. 13, 1955
Belfield US 2,937,459 May 24, 1960

The following rejections are before us for review:
The Examiner rejected claims 1-3, 5, 7, 9, 11, 12, and 18 under 35
U.S.C. § 103(a) as unpatentable over Belfield, Hoelscher, and Kislinger.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Belfield, Hoelscher, Kislinger, and Rogus.

THE ISSUES
1. Has the Appellant shown that the Examiner erred in determining that
it would have been obvious to a person of ordinary skill in the art to
replace the chain of Belfield’s rosary with the ring or bracelet of
Kislinger, and to include the five divisions of ten beads each of
Hoelscher?
2. Has the Appellant shown that the Examiner erred in determining that
web 19 of the marker 14 (bead) of Belfield satisfies the limitation of
“an arm extended from the bead,” as required by claim 9?

SUMMARY OF DECISION
We AFFIRM.

Appeal 2009-002673
Application 10/873,903

4

FINDINGS OF FACT

The following enumerated findings of facts (FF) 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. Belfield discloses a rosary praying device including a chain 10,
a plurality of beads 12 (stops), a rubber marker 14 (bead), a
medallion 28, and a crucifix. Belfield, col. 1, ll. 58-60; col. 2,
ll. 11-14; and fig. 1.
2. In use, the penitent first applies the marker 14 (bead) to the
rosary at some point along chain 10. Belfield, col. 2, ll. 14-18
and fig. 3. The penitent then proceeds to say the prayer
corresponding to the bead 12 (stop) immediately to the right of
the marker 14. Belfield, col. 2, ll. 32-36 and fig. 4. When the
prayer has been said, the bead 12 is pushed through the marker
14 and the next prayer is said. Belfield, col. 2, ll. 34-38 and fig.
5. Thus, the marker 14 (bead) travels along the chain 10 and is
stopped at every bead 12 (stop) when the penitent says a prayer.
3. The marker 14 (bead) includes four webs 18, 19, 20, and 21 that
extend radially inwardly toward the center of the marker 14
(bead). Belfield, col. 2, ll. 19-22 and fig. 3.
4. Hoelscher discloses that a conventional rosary includes a chain,
a plurality of beads, a medallion, and a crucifix. The beads are
arranged in five groups of beads, each group containing ten
beads. Hoelscher, col. 1, ll. 24-39.
Appeal 2009-002673
Application 10/873,903

5
5. Kislinger discloses a ring or bracelet 10 forming part of a rosary
including a crucifix, gems 20, and a plurality of beads 12, 13,
12’, and 14 that fill the outer face of the ring or bracelet.
Kislinger, p. 1, ll. 8-9, 37-49, and 71 and figs. 1 and 5.
6. Kislinger further discloses that the gems 20 may be included.
Kislinger, p. 1, ll. 71-73.

PRINCIPLES OF LAW
Claim Construction
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875, 69 USPQ2d 1865, 1868-69 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d
1947, 1950 (Fed. Cir. 2003).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Appeal 2009-002673
Application 10/873,903

6
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 ("While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another, or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 417-418. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.")
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
Appeal 2009-002673
Application 10/873,903

7
need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
550 U.S. at 418 (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.
Id. at 417. We “must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.

OPINION
Issue (1)
The Appellant argues the rejection under 35 U.S.C. § 103(a) of claims
1-3, 5, 7, 11, 12, and 18 together as a group. App. Br. 5. Accordingly, we
have selected claim 1 as the representative claim to decide the appeal, with
claims 2-3, 5, 7, 11, 12, and 18, standing or falling with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii)(2008).
The Appellant argues that “Belfield, however, does not teach or
suggest a ring.” App. Br. 8. The Appellant further argues that “Hoelscher
and Rogus do not disclose a rosary comprised of a ring.” Id. Furthermore,
Appeal 2009-002673
Application 10/873,903

8
the Appellant argues that although Kislinger discloses a ring, “[t]he ring
disclosed by Kislinger does not have five groups of five or ten stops….”
App. Br. 9. Finally, the Appellant concludes that:
[t]he modification of Kislinger with the bead
disclosed by Belfield would render Kislinger’s
jewelry unsatisfactory for its intended purpose and
operation.
Id.
At the outset, we note that the Appellant’s arguments appear to attack
the teachings of Belfield, Hoelscher, and Kislinger individually, rather than
the combination of Belfield, Hoelscher, and Kislinger. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986). Second, we agree with
the Examiner that, “it is not the Kislinger reference that is being modified
but rather the Belfield reference….” Ans. 7.
In this case, Belfield discloses a rosary praying device including a
chain 10, a plurality of beads 12 (stops), a rubber marker 14 (bead), a
medallion 28, and a crucifix. FF 1. Hoelscher discloses that a conventional
rosary includes a chain, a plurality of beads, a medallion, and a crucifix,
such that the beads are arranged in five groups of beads, each group
containing ten beads. FF 4. Kislinger discloses a ring or bracelet 10
forming part of a rosary including a crucifix and a plurality of beads 12, 13,
12’, and 14 that fill the outer face of the ring or bracelet. FF 5. In other
words, Kislinger discloses that it was known to provide a ring or bracelet
that can be used as both a prayer device and an ornamental object.
Moreover, a person of ordinary skill in the art would have readily recognized
Appeal 2009-002673
Application 10/873,903

9
that the ring or bracelet structure of Kislinger is incapable of entangling
upon itself.
As such, the Appellant’s claimed rosary prayer device is nothing more
than the rosary device of Belfield having five groups of beads, each group
containing ten beads as taught by Hoelscher, in which the chain has been
replaced with the ring or bracelet of Kislinger in order to use the rosary
device both as a prayer device and as an ornamental object. A person of
ordinary skill in the art would have immediately appreciated that replacing
the chain of Belfield with the ring or bracelet of Kislinger, would provide
the same benefit to the rosary device of Belfield, namely, to use the rosary
device as a prayer device and as an ornamental object. As such, modifying
the rosary device of Belfield to include the groups of beads of Hoelscher and
the ring or bracelet of Kislinger would not have been uniquely challenging
to a person of ordinary skill in the art, because it is no more than “the mere
application of a known technique to a piece of prior art ready for the
improvement.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007).
Therefore, the modification appears to be the product not of innovation but
of ordinary skill and common sense.
Moreover, the Appellant has not alleged, much less shown, that the
modification of Belfield to include the groups of beads of Hoelscher and the
ring or bracelet of Kislinger would have been beyond the skill of a person of
ordinary skill in the art. In conclusion, we agree with the Examiner that:
[I]t would have been obvious to one having
ordinary skill in the art at the time of the claimed
invention to have manufactured the rosary of
Belfield arranged such that there are five groups of
five or ten stops for the purpose of being able to
count the appropriate number of prayers. …[I]t
Appeal 2009-002673
Application 10/873,903

10
would have been obvious to manufacture the
rosary member 10 of Belfield in a ring, non-
tangling structure as taught by Kislinger for the
purpose of providing a rosary that may be used as
an ornamental object.
Ans. 3.
The Appellant further argues that because the ring of Kislinger is
intended to be frictionally worn on the user’s finger and includes gems 20,
the bead of Belfield: (a) would not be able to be moved along the ring (App.
Br. 9-10), (b) would damage the gems 20 (App. Br. 11), and (c) would
distract from the aesthetic nature of the jewelry (App. Br. 10 and 12). We
disagree with the Appellant’s positions for the following reasons. First, we
note once more that the rosary device of Belfield is being modified by the
teachings of Kislinger and not vice versa as the Appellant suggests. As
noted above, when using the rosary device of Belfield the penitent applies
the marker 14 (bead) to the rosary, proceeds to say the prayer corresponding
to the bead 12 (stop) immediately to the right of the marker 14, and pushes
the bead 12 through the marker 14. FF 2. Hence, in contrast to the
Appellant’s position, the rosary device of Belfield, as modified by Hoelscher
and Kislinger, is not worn by the penitent, but rather it is held in the
penitent’s hands. Second, Kislinger discloses that the ring or bracelet does
not necessarily include the gems 20, only that they may be included. FF 6.
Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. In re Keller,
642 F.2d 413, 425 (CCPA 1981).
The Appellant further argues that because of the large number of stops
(beads) required (five groups of stops, each group containing five or ten
stops) and the size of the ring of Kislinger, the resulting rosary device would
Appeal 2009-002673
Application 10/873,903

11
not be functional because the stops would be too small for the user to count
the prayers. App. Br. 10. Moreover, the Appellant argues that because the
ring of Kislinger does not constitute a fully functional rosary, but merely a
part of a rosary, Kislinger teaches away from a ring that has all the stops
necessary to form a full rosary. Id. See also Reply Br. 2. In other words,
the Appellant appears to argue that the rosary device of Belfield, as modified
by Hoelscher and Kislinger, is too small to hold the number of stops (beads)
required such as to fully function as a rosary-praying device.
First, we note that size is not ordinarily a patentable feature. In re
Rose, 220 F.2d 459, 463 (CCPA 1955) (Claims directed to a lumber package
"of appreciable size and weight requiring handling by a lift truck" were held
unpatentable over prior art lumber packages which could be lifted by hand
because limitations relating to the size of the package were not sufficient to
patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048,
1053 (CCPA 1976) ("mere scaling up of a prior art process capable of being
scaled up, if such were the case, would not establish patentability in a claim
to an old process so scaled."); Gardner v. TEC Systems, Inc., 725 F.2d 1338,
1346 (Fed. Cir. 1984) (The Federal Circuit 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 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).
Accord In re Yount, 171 F.2d 317, 318 (CCPA 1949) and In re Kirk, 40 F.2d
765, 767 (CCPA 1930).
Second, the device of Kislinger is not limited to a ring, but also
includes a bracelet, which has a much larger circumference than a ring. See
Appeal 2009-002673
Application 10/873,903

12
FF 5. Although the combined teachings of Belfield, Hoelscher, and
Kislinger do not provide specific dimensions, we find that a person of
ordinary skill in the art would have readily known to adjust the dimensions
of the bracelet and the stops (beads) such as to provide five groups of stops
(beads), each group containing five or ten stops (beads), in order to obtain a
fully functional rosary praying device. After all, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR v.
Teleflex, 550 U.S. 398, 421 (2007).
For the foregoing reasons, the Appellant’s arguments do not persuade
us that the Examiner erred in rejecting claims 1-3, 5, 7, 11, 12, and 18 under
35 U.S.C. § 103(a) as unpatentable over Belfield, Hoelscher, and Kislinger.
Therefore, the rejection of claims 1-3, 5, 7, 11, 12, and 18 is sustained.
With respect to claim 8, the Appellant does not make any separate arguments.
Therefore, the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Belfield, Hoelscher, Kislinger, and Rogus is likewise sustained.

Issue (2)
The Appellant argues that Belfield does not teach an arm extending
from the bead because the webs 18, 19, 20, and 21 of Belfield “extend into
the bead.” App. Br. 13. Although we agree with the Appellant that webs
18, 19, 20, and 21 of Belfield “extend into the bead,” we note that claim 9
merely requires “an arm extended from the bead.” We agree with the
Examiner that claim 9 does not positively recite that the arm extends either
“outwardly” or “inwardly” of the bead. Ans. 7. As noted above, marker 14
(bead) includes four separate webs 18, 19, 20, and 21 (arms) that extend
from the surface of the marker 14 toward its center. FF 3. Although the
Appeal 2009-002673
Application 10/873,903

13
claims are interpreted in light of the Specification, we do not read limitations
from the Specification into the claims. As stated by our reviewing court in
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the
game is the claim.” It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Hence, the Appellant’s argument as to claim 9 fails to demonstrate
error in the rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Belfield, Hoelscher, and Kislinger.
Accordingly, the rejection of claim 9 is likewise sustained.

CONCLUSIONS
1. The Appellant has failed to show that the Examiner erred in
determining that it would have been obvious to a person of ordinary
skill in the art to replace the chain of Belfield’s rosary with the ring or
bracelet of Kislinger, and to include the five divisions of ten beads
each of Hoelscher.
2. The Appellant has failed to show that the Examiner erred in
determining that the web 19 of the marker 14 (bead) of Belfield
satisfies the limitation of “an arm extended from the bead.”

DECISION
The Examiner’s rejection of claims 1-3, 5, 7-9, 11, 12, and 18 is
affirmed.
Appeal 2009-002673
Application 10/873,903

14
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) (2007).

AFFIRMED

mls

LYNN J. ALSTADT
BUCHANAN INGERSOLL, P.C.
ONE OXFORD CENTRE, 20th FLOOR
301 GRANT STREET
PITTSBURGH, PA 15235