Ex Parte Baker

Board of Patent Appeals and Interferences

Nov 12, 2008

10851348 (B.P.A.I. Nov. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCIA L. BAKER
____________

Appeal 2008-4936
Application 10/851,348
Technology Center 2800
____________

Decided: November 12, 2008
____________

Before THOMAS A. WALTZ, PETER F. KRATZ, and CATHERINE Q.
TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-9, 12-21, 24-33, and 36. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-4936
Application 10/851,348

The invention relates to a system and method for aligning a clear
plastic ruler to an edge of a piece of fabric using a piece of statically
attractive plastic as a removable edge guide. (Spec. 2, ll. 10-12). Claims 1,
4, 13, and 25 are illustrative of the subject matter on appeal:

1. A method for cutting laminar material comprising:
attaching a stop having an alignment edge by static attraction to the
bottom surface of a guide having a substantially planar bottom surface and a
guide edge, at a chosen position;
placing said guide on top of said laminar material;
adjusting the position of said guide such that said alignment edge of
said stop engages at least a portion of an edge of said laminar material; and
cutting said laminar material along at least a portion of the guide edge.

4. The method of claim 1, wherein the guide edge has a curved edge.

13. An apparatus for guiding a cutting device for laminar material
having an edge comprising:
a guide having a substantially planar bottom surface and a guide edge;
and
a stop having an alignment edge adapted to align with the edge of said
laminar material, wherein said stop is adapted to attach to the bottom surface
of said guide by static attraction at a predetermined position such that at least
a portion of the guide edge of said guide is used to guide said cutting
device.

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25. An apparatus for marking laminar material having an edge
comprising:
a guide having a substantially planar bottom surface and a marking
edge;
a stop having an alignment edge adapted to align with the edge of said
laminar material, wherein said stop is adapted to attach to the bottom surface
of said guide by static attraction at a predetermined position; and
means for marking said laminar material, wherein at least a portion of
the marking edge of said guide is used to guide said means for marking said
laminar material.

The Examiner relies on the following prior art references to show
unpatentability:
Broders US 4,502,232 Mar. 5, 1985
Hill US 5,673,490 Oct. 7, 1997
McEligot US 5,829,150 Nov. 3, 1998

The Examiner maintains the following rejections:
1. Claims 1-3, 6-9, 12-15, 18-21, 24-27, 30-33, and 36 stand rejected
under 35 U.S.C. § 103(a) as obvious over McEligot in view of Hill; and
2. Claims 4, 5, 16, 17, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over McEligot and Hill in view of Broders.
With respect to the first rejection, Appellant provides no separate
argument for dependent claims 2, 3, 6-9, 12, 14, 15, 18-21, 24, 26, 27, 30-
33, and 36. (App. Br. 5-6). Thus, with respect to the first rejection, we
decide this appeal on the basis of claims 1, 13, and 25. With respect to the
second rejection, Appellant provides no separate arguments for any of
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claims 4, 5, 16, 17, 28, and 29, but rather argues the claims as a group.
(App. Br. 4, 6, and 9-10). Thus, with respect to the second rejection, we
decide this appeal on the basis of claim 4. See 37 C.F.R. §
41.37(c)(1)(vii)(“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).
II. DISCUSSION
First Rejection
Appellant contends that the Examiner provided no motivation,
suggestion or teaching to combine the teachings of McEligot and Hill but
has made the combination using hindsight and conclusory statements. (App.
Br. 11 and 12; Reply Br. 4-5). The Examiner responds that “Hill provides
the motivation for using static attraction by teaching that static attraction is
used to removably hold pvc in a manner which does not harm the surfaces
which are attracted,” which is “knowledge which was within the level of
ordinary skill at the time the claimed invention was made” since Hill teaches
static attraction is common. (Ans. 10). Thus, a first issue on appeal arising
from the contentions of Appellant and the Examiner is: has the Examiner
provided a reasonable rationale why one of ordinary skill in the art would
have used static forces, taught by Hill, to attach a stop to a guide as taught
by McEligot?
Appellant contends that McEligot “teaches away” from and
“specifically rejects” using static forces, as taught by Hill, in place of
adhesives, as taught by McEligot. (App. Br. 10-14; Reply Br. 6). The
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Examiner responds that “McEligot is silent on static attraction; McEligot
neither supports nor rejects the use of static attraction.” (Ans. 10). Thus, a
second issue on appeal arising from the contentions of Appellant and the
Examiner is: does McEligot teach away from using the static forces taught
by Hill in a cutting guide taught by McEligot?
The evidence of record supports the following Findings of Fact (FF):
1. McEligot teaches that “[t]he cutting guide is formed from a
base . . . and one or more repositionable pieces of at least semirigid material
removable [sic, removably] attached to the bottom surface of the base.”
(McEligot, Abstract).
2. McEligot teaches that
the present invention provides a unique
combination of repositionable stops adhesively
attached to a measuring device. These stops can
be custom made from a sheet of material and are
easily attached and repositioned, thus enabling a
user to create a template that facilitates rapid and
consistent measuring, marking, and cutting of
multiple work pieces having uniform dimensions
and shape. The stops are of sufficient thickness to
not only enable the accurate positioning of the
cutting guide but to assist in holding the cutting
guide in place against the workpiece during
marking and cutting operations.
(McEligot, col. 2, l. 59 to col. 3, l. 3).
3. McEligot teaches that “[t]he cutting guide 10 is formed from a
base material, in this case a transparent measuring device or ruler 12, and a
sheet of material 14.” (McEligot, col. 4, ll. 1-3).
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4. McEligot teaches that “[t]he preference for compliant or
flexible material is the ease it provides in lifting and repositioning or
removing the material 14 from the ruler 12.” (McEligot, col. 4, ll. 24-26).
5. McEligot teaches that “[t]he sheet of material 14 has a top
surface 26 and a bottom surface 24. The bottom surface 24 has adhesive
material 28 permanently applied thereto that enables the material 14 to be
removably connected or attached to the ruler 12.” (McEligot, col. 4, ll. 27-
30).
6. McEligot also teaches that the material 14 is preferably a
material called “Sentra,” which Appellant and the Examiner agree is
polyvinylchloride (“PVC”). (McEligot, col. 4, ll. 21-22; App. Br. 7; Ans. 9).
7. The invention of Hill is “a sheet of clear static cling vinyl
(polyvinyl chloride) 34 or other translucent sheet” with a grid system printed
thereon. (Hill, col. 3, ll. 5-7).
8. Hill teaches that “static cling vinyl is preferred because it will
hold temporarily to the glass (or similar) surface while it is being used. Once
the user is done, the sheet of static cling vinyl may be easily removed from
the glass without leaving sticky spots or other traces.” (Hill, col. 3, ll. 17-
21).
9. Hill also teaches that “the alignment mechanism 2 can be useful
for quilting, sewing, design layout and other arts and crafts which use
illumination to facilitate copying.” (Hill, col. 4, ll. 6-9).
“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
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subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (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, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
The level of ordinary skill in the art is evidenced by the references.
See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the Board did not
err in adopting the approach that the level of skill in the art was best
determined by the references of record); Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the prior art
itself reflects an appropriate level and a need for testimony is not shown.’”).
Recently, in KSR, the Supreme Court set aside any “rigid” application
of the teaching, suggestion, motivation (“TSM”) test, advising that: “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 127 S. Ct. 1727, 1742 (2007). The Supreme Court clarified
that “it can be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does,” but that “the analysis need not seek
out precise teachings [in the prior art] directed to the specific subject matter
of the challenged claim.” Id. at 1741.
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KSR also instructs us that “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.” KSR, 127
S. Ct. at 1740.
Thus, if a good reason to pursue known options within the technical
grasp of one of ordinary skill in the art “leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense.” KSR, 127 S. Ct. at 1742. Further, “[if an] additional feature is not
desired, it would seem a matter of obvious choice to eliminate it and the
function it serves.” In re Larson, 340 F.2d 965, 969 (CCPA 1965).
“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.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(explaining “[t]he prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed.”).
Applying these legal principles to the Factual Findings in the record
of this appeal, we determine that the Examiner has established a prima facie
case of obviousness with respect to the first rejection.
We note that a person of ordinary skill in the art would have before
them such references as McEligot, directed to cutting tools (FF 2), and Hill,
which particularly identifies its application to the quilting arts (FF 9). These
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references evince the level of ordinary skill in the art. GPAC Inc., 57 F.3d at
1579.
In considering the first issue, we find that McEligot teaches a stop that
is removably attached to the bottom surface of a guide and repositionable
thereon. (FF 1-5). McEligot also teaches that the stop is preferably made
from PVC. (FF 6). McEligot also teaches using the guide to cut or mark
fabric by using the stop to position the guide and holding the guide in place
against the workpiece. (FF 2). Meanwhile, Hill teaches that it was known in
the art to take advantage of the static properties of PVC as an alternative to
adhesives or the like, which leaves “sticky spots or other traces,” to
removably attach PVC material to “glass (or similar) surface.” (FF 7-8).
We determine that one of ordinary skill in the art would have recognized that
the static nature of PVC, as taught by Hill, could also be used to improve the
stop and guide taught by McEligot in the same way as taught by Hill, by
providing an alternative to adhesives. KSR, 127 S. Ct. at 1740. Further, it
would have been obvious to one of ordinary skill in the art to eliminate the
adhesive taught by McEligot and, instead, rely upon the inherent static
nature of the PVC stop, as taught by Hill. Larson, 340 F.2d at 969.
Further, the Examiner has shown predictability and a reasonable
expectation of success in using the static properties of PVC, based on the
teachings of Hill, for a stop that is preferably made of PVC, as taught by
McEligot, sufficient to show obviousness under 35 U.S.C. § 103. Thus, on
the first issue, we determine that the Examiner provided a reasonable
rationale why one of ordinary skill in the art would have used static forces,
taught by Hill, to attach a stop to a guide as taught by McEligot.
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Regarding the second issue, while McEligot teaches that the stop is
attached to the guide by an adhesive (FF 2 and 5), we find nothing in the
teachings of McEligot or Hill that would discourage one of ordinary skill the
art from taking advantage of the static properties found in the PVC material,
as taught by Hill (FF 8), for the purposes of removably attaching the stop
and the guide taught by McEligot. (FF 1-5). Gurley, 27 F.3d at 553.
Further, McEligot teaching stops made from materials other than PVC does
not constitute a teaching away from utilizing the properties of PVC taught
by Hill. Fulton, 391 F.3d at 1201. Thus, on the second issue, we determine
that McEligot does not teach away from using the static forces taught by Hill
in a cutting guide taught by McEligot. 1
Therefore, we determine that the Examiner has properly established,
prima facie, that the subject matter of claims 1, 13, and 25 would have been
obvious to one of ordinary skill in the art based on the teachings of McEligot
and Hill.

Second Rejection
The Examiner contends that it would have been obvious to one of
ordinary skill in the art to curve the edges of McEligot’s guide as taught by
Broders to provide “choices in edge design.” (Ans. 12). However,
Appellant argues that the Examiner has failed to provide a motivation for
combining McEligot and Broders, since Broders is directed to cutting carpet.

1 Since attaching a stop to a guide by static attraction would have been
obvious based on the teachings of McEligot and Hill, we similarly determine
that claims 13 and 25 would have been properly rejected under 35 U.S.C. §
103, whether or not the phrase “by static attraction” structurally limited the
claimed product.
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(App. Br. 9-10). Thus, a third issue on appeal arising from the contentions
of Appellant and the Examiner is: did the Examiner provide a reasonable
rationale why one of ordinary skill in the art would have curved edges,
taught by Broders, for a guide as taught by McEligot?
Appellant also argues that Broders and McEligot teach away from
each other since McEligot teaches a straight guide and Broders teaches a
curved guide. (App. Br. 10; Reply Br. 8). Thus, a fourth issue on appeal
arising from the contentions of Appellant and the Examiner is: do the
references teach away from a guide having curved edges as claimed?
The evidence of record supports the following additional Findings of
Fact (FF):
10. Broders teaches that “[a] straight, flat template having a wavy
contour is known, and used for cutting a straight wavy line in carpeting.”
(Broders, col. 1, ll. 17-19).
11. Figures 1 and 2 of Broders illustrate an L-shaped template 10 in
which both legs 18 and 20 of the L-shape are curved, i.e., in the shape of
repeating waves formed from crests 34 and valleys 36. (Broders, Figures 1
and 2; col. 2, ll. 9-23).
12. Figure 1 of Broders illustrates how template 10 is used to cut a
curved pattern at the edges of carpet samples 12. (Broders, Figure 1, col. 2,
ll. 9-11).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
In considering the third issue, we find that Broders evinces that it was
known to provide a cutting tool with curved sides. (FF 10-12). One of
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ordinary skill in the art would have recognized that adding curvature to the
cutting tool for fabric, as taught by McEligot, could be used to cut a curved
fabric pattern in the same way that a curved carpet cutting tool can be used
to cut a curved pattern in carpet. KSR, 127 S. Ct. at 1740. Thus, the
Examiner has provided a reasonable rationale why one of ordinary skill in
the art would have curved edges, taught by Broders, for a guide as taught by
McEligot.
Regarding the fourth issue, we also determine that one of ordinary
skill in the art would not have been discouraged or led in a direction
divergent from modifying the guide of McEligot to have curved edges as
taught by Broders, based on the teachings of either reference. Thus, the
references do not teach away from a guide having curved edges as claimed.
Gurley, 27 F.3d at 533.
Therefore, we determine that the Examiner has properly established,
prima facie, that a guide having curved edges would have been obvious to
one of ordinary skill in the art based on the teachings of McEligot, Hill and
Broders.

Secondary Considerations of Non-Obviousness
Appellant argues that the one hundred and twenty (120) declarations
submitted “from purchasers of vinyl stops from appellant at recent quilt
shows . . . clearly defined the problem to be solved, have established that
there has been a long-felt need for an apparatus for accomplishing this task,
and that no solution had earlier been found.” (App. Br. 15; Reply Br. 8-9).
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The Examiner responds that “there is no nexus between the claimed
invention of static attraction and the affidavits” and that the Declaration does
not provide sufficient evidence of long felt need. (Ans. 13-14).
A fifth issue on appeal arising from the contentions of Appellant and
the Examiner is: has Appellant provided evidence that the present invention
satisfies a long-felt need that is sufficient to overcome the prima facie case
of obviousness established by the Examiner?
The evidence of record supports the additional following Findings of
Fact (FF):
13. The Declaration under 37 C.F.R. § 1.132, signed by Judy L.
Malcolm on May 7, 2006 (hereinafter “the Declaration” or “Declaration”),
states that “I use a commercially available clear plastic guide ruler having
parallel line and other markings for alignment of the fabric with an edge of
the ruler” and that “I have had to repeatedly align the fabric to be cut with
one of the ruler markings by eye.” (Decl., ¶ 3 and 5).
14. The Declaration also states that “I have in the past sought an
effective solution to this problem, but have not been able to find one” and “I
know of no other effective solution to this problem.” (Decl., ¶ 7 and 12).
15. The Declaration states that “I have attached these stops to the
bottom surface of commercially available guide rulers” and “found that they
attach simply by electrostatic attraction.” (Decl., ¶ 9).
16. The Declaration states that “the guide ruler/vinyl stop
combination has solved the problem of repeatedly cutting fabric to chosen
dimensions with uniform width and straight edges.” (Decl., ¶ 11).
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17. McEligot teaches that “[t]he increasing use of rotary cutters to
cut material, especially fabric, has resulted in a need for measuring devices
that can guide a rotary cutter in a straight line.” (McEligot, col. 1, ll. 15-18).
18. McEligot teaches that “existing rulers” are not acceptable
solutions to this problem since they require “considerable time to
consistently align and hold in place against the workpiece for each
measurement and cut.” (McEligot, col. 1, ll. 31-35).
19. Thus, McEligot teaches that “[t]hus, there is a need for a device
that enables rapid and consistent alignment with the workpiece or
workpieces . . . [and] would also facilitate holding the ruler in position
against the workpiece while the workpiece is being marked and/or cut.”
(McEligot, col. 1, ll. 35-40).
Establishing a long-felt need requires objective evidence that the
invention has provided a long-awaited, widely accepted, and promptly
adopted solution to a problem extant in the art, or that others had tried but
failed to solve that problem. In re Mixon, 470 F.2d 1374, 1377 (CCPA
1973)(evidence of art recognition of a problem and that the current state of
the art “have proven to be unsatisfactory” in solving the problem was not
sufficient to satisfy “a long-awaited, widely accepted, and promptly-adopted
solution,” despite the solution’s otherwise simplicity); see also In re
Gershon, 372 F.2d 535, 538 (CCPA 1967) (“Since the alleged problem in
this case was first recognized by appellants, and others apparently have not
yet become aware of its existence, it goes without saying that there could not
possibly be any evidence of either a long-felt need . . . or failure of others
skilled in the art who unsuccessfully attempted to solve a problem of which
they were not aware.”). “[O]nce another supplied the key element, there was
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no long-felt need or, indeed, a problem to be solved.” Newell Co., Inc. v.
Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988).
An affidavit fails if it recites conclusions without reciting the
underlying facts to support those conclusions. In re Thompson, 545 F.2d
1290, 1295 (CCPA 1980) (affidavit related to secondary consideration of
nonobviousness, notably copying, “sets forth no specifics and falls far short
of constituting probative evidence.”); In re Brandstadter, 484 F.2d 1395,
1406 (CCPA 1973) (holding that affidavits directed to an issue of
enablement fail in their purpose when they recite conclusions and few facts
to buttress the conclusions).
Also, for objective evidence to be accorded substantial weight, an
applicant must establish a nexus between the evidence and the merits of the
claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995)
(appellant offers no evidence that the market reaction to appellants’
invention is rooted in the subject matter claimed).
We disagree that the Declaration provides sufficient evidence of long
felt need to overcome the prima facie case of obviousness.
The Declaration does not address whether the need for the Appellant’s
invention was a persistent one, nor does it address whether there were prior
unsuccessful attempts to address the need. Therefore, the Declaration is
entitled to little weight. While the Declaration mentions seeking a solution
to the problem of having to repeatedly align fabric with ruler markings by
eye (FF 13, 14, and 16), the Declaration does not address for how long,
where, or to what extent the affiant has sought a solution to the problem.
Thus, the Declaration presents conclusions without the necessary supporting
factual details. Without such details, it cannot be established that a need for
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the solution, if there is one, has been felt for any particular length of time, let
alone establishing that the need has been felt for a long time.
The Declaration does not state that the Declarant has read the
Specification or is aware of the claims of the present application. While the
Declaration identifies the product sold to the Declarant and the description
of the product sold (FF 15), there is no indication that the product sold falls
within the scope of the claims. For example, there is no indication that
“commercially available guide rulers” are the same as the “guide” claimed in
claims 1, 13 or 25. Additionally, we find the Declaration to be directed to
having to repeatedly align fabric with ruler markings by eye (FF 14) and not
directed to any benefits of attaching the stop with static attraction over any
other type of attractive force, such as adhesives. The mere mention of the
fact that the vinyl stop product sold is attached to “commercially available
guide rulers” by electrostatic attraction (FF 15) is not sufficient to establish
the unobvious nature of using static attraction over an adhesive, i.e., the
basis of the Examiner’s prima facie case of obviousness.
Further, McEligot has provided a solution to the problem identified by
the affiant, i.e., repeatedly having to cut fabric by aligning ruler markings by
eye. (FF 2 and 18-20). As such, Appellant has not explained why the long-
felt need defined in the Declaration, i.e., a guide to cut fabric, was not solved
by McEligot. Newell, 864 F.2d at 768.
We note that, under 37 C.F.R. § 41.37(b)(ix), only one of the 120
declarations of record has been offered for our consideration. From the
Examiner’s statements regarding the other 119 affidavits, we understand that
all 120 declarations are identical. (Ans. 14). Even if before us, we would not
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have considered the identical declarations to be any further convincing, for
the same reasons that the Declaration before us is not convincing.
For the reasons discussed above, on balance, the evidence of
obviousness outweighs the Appellant’s rebuttal evidence of nonobviousness.
Accordingly, regarding the fifth issue, we determine that Appellant has not
provided sufficient evidence that the present invention satisfies a long-felt
need to overcome the prima facie case of obviousness established by the
Examiner.

III. CONCLUSION
Based on the totality of record, including due consideration of the
Appellant’s arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103. Accordingly, we sustain the Examiner’s rejections of the
claims.
IV. DECISION
The decision of the Examiner is affirmed.

V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cam
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COCHRAN FREUND & YOUNG LLC
2026 CARIBOU DR
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