Ex Parte Charneski

Board of Patent Appeals and Interferences

Apr 26, 2000

08395119 (B.P.A.I. Apr. 26, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES CHARNESKI
____________
Appeal No. 1997-1131
Application No. 08/395,119
____________
ON BRIEF
____________
Before THOMAS, FLEMING, and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 20, all of the claims pending in the present
application.
The disclosed invention relates to an ornamental display of
symbols for LED digital wrist watch and computer CRT faces. More
particularly, Appellant indicates at pages 4 and 5 of the
specification that displayed symbols are formed as a combination
Appeal No. 1997-1131
Application No. 08/395,119
1 The Appeal Brief was filed September 19, 1996. In
response to the Examiner’s Answer dated January 21, 1997, a Reply
Brief was filed March 18, 1997 which was acknowledged and entered
by the Examiner without further comment on April 15, 1997.
2
of first and second boxes and are arranged in juxtaposed rows.
The first and second boxes share border defining elements and
various display elements of the boxes are illuminated to jointly
define the displayed symbols.
Claim 1 is illustrative of the invention and reads as
follows:
1. A display device for a selected symbol formed with a first
box having border defining elements, and with a second box having
border defining elements, various ones of the elements of each of
the two boxes being illumined or darkened to define jointly the
symbol.
The Examiner relies on the following prior art:
Bailey et al. (Bailey) 4,039,890 Aug. 02, 1977
Claims 1 through 18 stand finally rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bailey. Claims 19 and 20 stand
finally rejected under 35 U.S.C. § 103 as being unpatentable over
Bailey.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1 and Answer for the
respective details.
Appeal No. 1997-1131
Application No. 08/395,119
3
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the Examiner and the evidence of
anticipation and obviousness relied upon by the Examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, Appellant’s
arguments set forth in the Briefs along with the Examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the Examiner’s Answer.
It is our view, after consideration of the record before us,
that Bailey does not fully meet the invention as set forth in
claims 1 through 18. We are also of the view that the evidence
relied upon and the level of skill in the particular art would
not have suggested to one of ordinary skill in the art the
obviousness of the invention as recited in claims 19 and 20.
Accordingly, we reverse.
We also use our authority under 37 CFR § 1.196(b) to enter a
new ground of rejection of independent claim 1. The basis for
these conclusions will be set forth in detail below.
We consider first the rejection of claims 1 through 18 under
35 U.S.C. § 102(b) as being anticipated by Bailey. Anticipation
is established only when a single prior art reference discloses,
Appeal No. 1997-1131
Application No. 08/395,119
4
expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Our review of the record before us indicates that the
Examiner, despite asserting the anticipatory nature of the
disclosure of Bailey with respect to the appealed claims, has
never attempted to show how each of the claimed limitations is
met by the prior art. Instead, the Examiner has made a vague
reference to Figure 1 of Bailey which illustrates a block diagram
of an X-Y matrix of light emitting devices and draws the
conclusion as stated at page 2 of the Answer that:
“... one can readily draw or activate any number
of boxes filling the claimed requirements
from the display of Bailey et al.
We find such assertion to be totally lacking of any support
on the record. Our review of Bailey indicates no disclosure of
the generation of symbols or digits of any kind, let alone the
specific arrangement recited in the claims. We are not inclined
Appeal No. 1997-1131
Application No. 08/395,119
5
to dispense with proof by evidence when the proposition at issue
is not supported by a teaching in a prior art reference, common
knowledge or capable of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354 F.2d 664, 668, 148
USPQ 268, 271-72 (CCPA 1966).
Further, to the extent that the Examiner is relying on the
unstated principle of inherency to support the contention that
the claimed symbol defining boxes and border defining elements
are disclosed by the LED matrix of Bailey, we reject this
contention as well. To establish inherency, evidence must make
clear that the missing descriptive matter is necessarily present
in the thing described in the reference and would be recognized
as such by persons of ordinary skill. In re Robertson, 169 F.3d
743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) citing
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991). “Inherency, however, may not
be established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of circumstances
is not sufficient.” Id. citing Continental, 948 F.2d at 1269, 20
USPQ2d at 1749.
Appeal No. 1997-1131
Application No. 08/395,119
6
In view of the above discussion, since all of the claimed
limitations are not disclosed by Bailey, we do not sustain the
Examiner’s 35 U.S.C. § 102(b) rejection of claims 1 through 18.
Turning to a consideration of the obviousness rejection of
claims 19 and 20 based on Bailey, we do not sustain this
rejection as well. At page 3 of the Answer, the Examiner sets
forth the rejection as follows:
... it would thus have been obvious at the
time the invention was made to adapt aaa [sic]
to include arranging the digits as claimed or
using a computer or watch to generate the
desired visual images using the LEDS or a
Lcd screen.
As with the 35 U.S.C. § 102(b) rejection discussed supra, the
Examiner has provided no support on the record to support such a
conclusion. Even assuming arguendo that the LED matrix array of
elements in Bailey could be illuminated to provide a particular
display design as desired, there is no evidence to indicate that
the skilled artisan would have found it obvious to produce the
specific display arrangement recited in the appealed claims. The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F. 2d 1260, 23 USPQ2d 1780 (Fed.
Appeal No. 1997-1131
Application No. 08/395,119
7
Cir. 1992). Since, in our view, the Examiner’s line of reasoning
does not establish a prima facie case of motivation, the
Examiner’s 35 U.S.C. § 103 rejection of claims 19 and 20 is not
sustained.
Rejection under 37 CFR § 1.196(b)
We make the following new ground of rejection using our
authority under 37 CFR § 1.196(b) relying on the following prior
art:
Stano et al. (Stano) 4,797,864 Jan. 10, 1989
Claim 1 is rejected under 35 U.S.C. § 102(b) as being
anticipated by Stano. Stano illustrates in the upper right
portion of Figure 3 a seven segment display in which the display
elements can be selectively illuminated to form various digits as
described in the accompanying description at column 7, line 53
through column 8, line 32. All of the limitations of Appellant’s
claim 1 are disclosed by Stano since elements 212 and 210 form a
first box and elements 214 and 216 form a second box, each with
border defining elements. As described in the above referenced
portion of Stano, the display elements are selectively
illuminated or darkened to jointly define and form digits. For
example, if all of the elements are illuminated, the numeral “8"
Appeal No. 1997-1131
Application No. 08/395,119
8
would be formed with the boxes juxtaposed and sharing a common
border element.
Although the Stano reference has been applied only against
independent claim 1, this is not to be taken as an indication of
the patentability of any of the other claims on appeal. In any
resumption of the prosecution of this application before the
Examiner, the Examiner should consider the applicability of
Stano, and any other discovered prior art, to all of the pending
claims. In making the determination of patentability, the
Examiner should take note of the fact that Figure 1 of Stano
illustrates a watch display with times displayed in a series of
juxtaposed rows.
As a final note, the Examiner, in making a further prior art
search, should consider the appropriate subclasses in Horology,
Class 368 (e.g. subclasses 223+), and Selective Visual Display
Systems, Class 345 (e.g. subclasses 33+), as well as Design Class
D10 (e.g. subclass 15).
In summary, we have reversed the Examiner’s 35 U.S.C.
§ 102(b) rejection of claims 1 through 18 as well as the
35 U.S.C. § 103 rejection of claims 19 and 20. We have entered a
new ground of rejection against claim 1 under 37 CFR § 1.196(b).
Appeal No. 1997-1131
Application No. 08/395,119
9
As indicated supra, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10,
1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37
CFR § 1.196(b) provides that, "A new ground of rejection shall
not be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 1997-1131
Application No. 08/395,119
10
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR § 1.196(b)
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
lp
Appeal No. 1997-1131
Application No. 08/395,119
11
JOSEPH B TAPHORN
8 SCENIC DRIVE
HAGAN FARMS
POUGHKEEPSIE NY 12603-5521
Leticia
Appeal No. 1997-1131
Application No. 08/395,119
APJ RUGGIERO
APJ FLEMING
APJ THOMAS
DECISION: REVERSED; 196(b)
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: June 18, 2003
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT