Ex Parte Brock

Board of Patent Appeals and Interferences

Nov 30, 2009

11228789 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVE BROCK
____________

Appeal 2009-001055
Application 11/228,789
Technology Center 2800
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Decided: November 30, 2009
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 14 and 22 through 24. We
have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a display
device. Claim 1 is illustrative:
1. A display device comprising:

a displayed event;

a timer being programmable to calculate an accumulating time
interval and/or a reducing time interval, said accumulating time interval
measures an increase in time from a non-displayed past event to current
time, said reducing time interval measures a decrease in time from current
time to a non-displayed future event;

a timer display to display said accumulating time interval and/or said
reducing time interval; and

a support member for supporting said timer display adjacent said
displayed event.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Gander 4,726,687 Feb. 23, 1988
Zilliox 5,588,240 Dec. 31, 1996
Teixeira 5,999,492 Dec. 7, 1999

The Examiner maintains the following rejections1:
1) Claims 22-24 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement;
2) Claims 1-3, 6-10, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Teixeira and Gander; and

1 As is apparent from page 3 of the Answer, the Examiner has withdrawn the
nonstatutory obviousness-type double patenting rejection.
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3) Claims 4, 5, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Teixeira and Gander, and further in view of Zilliox.
REJECTION (1): The § 112, first paragraph enablement rejection
ISSUE
Has Appellant shown reversible error in the Examiner's determination
that the invention recited in claim 22 is not enabled since the written
description does not teach one skilled in the art how to make and use the
claimed invention without undue experimentation? We decide this issue in
the affirmative.

RELEVANT FINDING OF FACT (FF)
1. The Specification states that the third date may be calculated from
the "remaining time from the previously input second date or
present time date until a factory set preprogrammed event or future
non-displayed event, such as an eighteenth birthday, by way of
example." (Amended Spec. ¶ [0023], entered on Aug. 22, 2006).

PRINCIPLE OF LAW
"When rejecting a claim under the enablement requirement of section
112, the PTO bears an initial burden of setting forth a reasonable explanation
as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
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specification of the application . . ." In re Wright, 999 F.2d 1557, 1561-62
(Fed. Cir. 1993).

ANALYSIS AND CONCLUSION
The Examiner finds that claim 22 is not enabled since the written
description does not teach one skilled in the art how to make and use the
claimed invention without undue experimentation. (Ans. 5-6). In support of
this position, the Examiner states that
[i]t is not clear how . . . [Appellant's] invention . . . would calculate a
third date corresponding to the non-displayed future event. The
specification, on p. 10, describes the third date as being either pre-
programmed (¶ 23, i.e. input at the factory), or input by the user (¶
24).

Id. While amended paragraph 23 of the Specification states that the third
date may be calculated from the "remaining time from the previously input
second date [i.e., input by the user] or present time date until a factory set
preprogrammed event [i.e., input at the factory]," the Specification also
states that the third date may be calculated from the "remaining time from . .
. [a] future, non-displayed event, such as an eighteenth birthday." (FF 1).
Thus, contrary to the Examiner's finding, the Specification explicitly states
that the third date may correspond to, inter alia, a future, non-displayed
event such as an eighteenth birthday. Indeed, as Appellant correctly states:
[the Specification discloses the] calculation of the third
date (such third date correlating with a non-displayed
future event date such as an eighteenth birthday, as
disclosed with particularity in Appellant's specification),
so as to enable one skilled in the art to which the subject
matter pertains, or with which it is most nearly
connected, to make and/or use the invention.
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(Reply Br. 7).
Since the Specification discloses that the third date may correspond to
a non-displayed future event such as an eighteenth birthday, we determine
that the Examiner has failed to carry the initial burden of providing a
reasonable explanation as to why claim 22 is not adequately enabled.
Thus, it follows that Appellant has shown reversible error in the
Examiner's determination that the invention recited in claim 22 is not
enabled.

REJECTIONS (2) and (3): The § 103 rejections
With respect to rejection (2), Appellant's arguments focus on
independent claims 1 and 8. (App. Br. 8-11). Accordingly, we address
Appellant's arguments regarding the rejection with respect to these claims
only. See 37 C.F.R. § 41.37(c)(1)(vii)(2009). With respect to the rejection
of dependent claims 2, 3, 6, 7, 9, 10, 13, and 14, Appellant provides no
additional argument for the rejection of these claims. Instead, Appellant
refers to the arguments made for the rejection of claims 1 and 8 in rejection
(1). (App. Br. 11). Thus, these unargued dependent claims stand or fall with
the claims from which they depend.
With respect to rejection (3), Appellant argues the same feature (i.e., a
puzzle feature) recited in claims 4, 5, 11, and 12. (App. Br. 12-13). We
select claim 4 as representative and address Appellant's arguments regarding
the rejection with respect thereto. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

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ISSUES
Has Appellant shown reversible error in the Examiner's determination
that Teixeira's device is capable of performing the recited function of
calculating an accumulating or reducing time interval from a non-displayed
event or the Examiner's reasons for combining the cited prior art references?
We decide these issues in the negative.

ADDITIONAL FINDINGS OF FACT (FF)
2. Appellant does not specifically dispute the Examiner's findings
regarding Teixeira and Gander. (Compare Ans. 7-11 with App. Br.
8-14 and Reply Br. 8-14). In this regard, Teixeira teaches
(Teixeira, col. 2, ll. 50-53) a "display device that visually couples a
chronological time device having a continuous display of time
intervals with a past depicted event or a future depicted event."
Appellant does not specifically dispute the Examiner's finding at
pages 7, 10, and 11 of the Answer that Teixeira's device is capable
of calculating an accumulating or reducing time interval from a
non-displayed event. (Compare Ans. 7, 10, and 11 with App. Br.
8-14 and Reply Br. 8-14). Nor does Appellant specifically dispute
the Examiner's finding that "Gander teaches a timepiece . . . that
can display the elapsed time from a selected time and a remaining
time to a selected time." (Compare Ans. 7 with App. Br. 8-14 and
Reply Br. 8-14). In addition, Appellant does not specifically
dispute the Examiner's reason for combining Teixeira and Gander
to arrive at a device "to display both the remaining time and the
elapsed time . . . [in order to] provide the viewer with the increased
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functionality of displaying more chronological information than a
device with only one timer display, which may thereby increase
the commercial desirability and profitability of the device."
(Compare Ans. 6-8 with App. Br. 7-14 and Reply Br. 7-14).
3. Appellant does not specifically dispute the Examiner's findings
regarding Zilliox. (Compare Ans. 8-9 with App. Br. 8-14 and
Reply Br. 8-14). In addition, Appellant does not specifically
dispute the Examiner's reason for combining Zilliox with Teixeira
and Gander. (Compare Ans. 8-9 with App. Br. 8-14 and Reply Br.
8-14).

ADDITIONAL PRINCIPLES OF LAW
"[T]he claims themselves provide substantial guidance as to the
meaning of particular claim terms." Phillips v. AWH Corp., 415 F.3d 1303,
1314 (Fed. Cir. 2005).
An apparatus claim covers what a device is, not what a device does.
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). As our reviewing court stated in In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997):
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 58 C.C.P.A. 1027,
439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971) (“[T]here
is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). Yet, choosing
to define an element functionally, i.e., by what it does, carries with it a
risk. As our predecessor court stated in Swinehart, 439 F.2d at 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
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require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

"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).

ANALYSES AND CONCLUSIONS
With respect to rejection (2), Appellant argues that "Teixeira does not
disclose or teach the calculation of time intervals based on non-displayed
past or future events." (App. Br. 9). Appellant also argues that
Teixeira concerns a device for calculating and displaying either
accumulating or reducing time intervals relative to displayed past or
future events/dates. Nowhere in Teixeira is there any suggestion of a
timer display device having the capacity for calculating and
displaying an accumulating time interval and a reducing time interval
simultaneously . . . Teixeira actually teaches away from calculating
such time intervals relative to non-displayed past and future events.

(App. Br. 10).
We find Appellant's arguments unpersuasive of reversible error.
Regarding the “simultaneous” calculation of an accumulating or a reducing
time interval, claim 1 requires calculating and displaying an accumulating
time interval and/or a reducing time interval. Thus, the plain language of
claim 1 does not require that an accumulating and a reducing time interval
be calculated simultaneously. Rather, a timer capable of calculating either a
reducing or an accumulating time interval would suffice to meet the features
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of claim 1. Accordingly, Appellant’s “simultaneous” argument regarding
claim 1 is without persuasive merit.
Moreover, regarding the non-displayed event features required by
claim 1, Appellant does not specifically dispute the Examiner's finding at
pages 7, 10, and 11 of the Answer that Teixeira's device is capable of
calculating an accumulating or reducing time interval from a non-displayed
event. (FF 2).
It is reasonable to conclude that Teixeira’s device has the capability
alluded to by the Examiner given that the device is able to calculate an
accumulating or reducing time interval from a displayed event. Therefore,
the burden shifted to Appellant to show that Teixeira's device is not capable
of performing the claimed calculating function in relation to a non-displayed
event. However, Appellant has not done so. Schreiber, 128 F.3d at 1478.
In contrast, claim 8 plainly requires a timer capable of calculating and
displaying both an accumulating time interval and reducing time interval. In
this regard, Appellant does not specifically dispute the Examiner's findings
regarding the teachings of Teixeira and Gander of the disputed claim
features. (FF 2). Nor does Appellant specifically dispute the Examiner's
reason for modifying Teixeira with Gander’s teachings to arrive at a device
to calculate and "display both the remaining time [corresponding to the
claimed reducing time interval feature] and the elapsed time [corresponding
to the claimed accumulating time interval feature]." (FF 2). Accordingly,
Appellant has not shown that the Examiner reversibly erred in determining
that the combined teachings of Teixeira and Gander would have suggested a
device that can calculate and display simultaneously accumulating and
reducing time intervals vis-à-vis non-displayed events.
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In addition, Appellant argues that Teixeira teaches away from
calculating time intervals relative to non-displayed past and future events
because Teixeira teaches calculating a time interval relative to a displayed
past or future event. (App. Br. 10). While Teixeira teaches (FF 2)
calculating a time interval relative to a displayed past or future event,
nowhere does Teixeira discourage calculating time intervals relative to a
non-displayed past event or a non-displayed future event. Thus, we find
Appellant's teaching away argument unpersuasive of reversible error.
Appellant also argues that Teixeira and Gander "are unlikely to be
productive of the result sought by the Appellant" and thus teaches away
from the proposed combination and modification. (App. Br. 11). In other
words, Appellant argues that there is no reasonable expectation of success to
combine Teixeira and Gander to arrive at the claimed invention.
Appellant, however, does not dispute either the Examiner's findings
regarding Teixeira and Gander or the Examiner's reason for combining
Teixeira and Gander. (FF 2). In this regard, the Examiner relies on Gander
to teach that the concept of displaying both an elapsed time (accumulating
time interval) and remaining time (reducing time interval) was known in the
art. (FF 2). Thus, given that this display concept was known in the art, we
agree with the Examiner's determination that it would have been obvious to
modify Teixeira's device to calculate and display both an elapsed time
(accumulating time interval) and a remaining time (reducing time interval).
(FF 2). In doing so, one of ordinary skill in the art would have a reasonable
expectation of successfully "displaying more chronological information . . .
which . . . increase[s] . . . [its] commercial desirability." (FF 2). Thus, we
find Appellant's argument unpersuasive of reversible error.
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With respect to rejection (3), Appellant argues that
[T]here is no suggestion whatsoever in cited prior art to further
modify Teixeira so that the support member claimed therein is
shaped like an interlockable puzzle piece. Additionally, the
disclosures of Zilliox relate only to a modular picture frame system
having individual picture frames which can be interconnected like
pieces of a jigsaw puzzle. As such, Zilliox in no way suggests that the
modular picture frame system disclosed therein could or should be
combined with a programmable display device, as such device is
claimed by Appellant. Furthermore, neither Teixeira nor Gander
suggest in any way that the supporting members of the respective
timing devices disclosed therein should be modified to take the
interlockable jigsaw puzzle piece configuration disclosed by Zilliox.

(App. Br. 12). Appellant, however, does not specifically dispute the
Examiner's reason for combining Zilliox with Teixeira and Gander to arrive
at the invention recited in claim 4. (FF 3). Thus, we find Appellant's
argument unpersuasive of reversible error.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's determination that Teixeira's device is capable of meeting the
non-displayed event features or the Examiner's reasons for combining the
cited prior art references.

ORDER
In summary, we reverse the Examiner's rejection (1) and affirm the
Examiner's rejections (2) and (3).
Accordingly, the Examiner's decision is affirmed-in-part.

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TIME PERIOD
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).

AFFIRMED-IN-PART

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