Ex Parte Chuang

Board of Patent Appeals and Interferences

Aug 27, 2008

10196251 (B.P.A.I. Aug. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIH-HUNG CHUANG
____________

Appeal 2007-4121
Application 10/196,251
Technology Center 3700
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Decided: August 27, 2008
____________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 4-20. These are
the only claims remaining in the application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 6 and 134.
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The claimed invention is directed to a three-dimensional jigsaw
puzzle which, when fully completed, is a self-supporting sphere. The upper
and lower surfaces of each piece have an arcuate contour1 so that the
surfaces define a piece of uniform or unitary thickness.
Claim 4 reproduced below, is further illustrative of the claimed
subject matter.
4. A three dimensional jigsaw puzzle comprising a self-
supporting sphere formed by a plurality of interfitting puzzle
pieces, each of said plurality of puzzle pieces having (a) a
plurality of protrusions and a plurality of cutouts formed in a
periphery thereof, and (b) an upper surface and an opposing
lower surface, said upper surface of each of said puzzle pieces
having an arcuate contour defining a spherical surface portion,
said lower surface of each of said puzzle pieces having a
complementary contour to said arcuate contour of a
corresponding upper surface, said upper and lower surfaces
being concentric to define a uniform or unitary thickness for
each piece.
REFERENCES
The references of record relied upon by the examiner as evidence of
lack of novelty and obviousness are:
DeGast 3,578,331 May 11, 1971
Novak 3,691,704 Sep. 19, 1972

REJECTIONS

1 We understand by “arcuate contour” Appellant means that the pieces are
arcuately curved in all directions, i.e., forming a portion of a sphere.

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Claims 4-7, 10 and 11 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Novak.
Claims 4-7, 10 and 11 stand rejected under 35 U.S.C. § 102(b) or 35
U.S.C. § 103 as being anticipated by or, in the alternative, as obvious over
DeGast.
Claims 8, 9 and 12-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over DeGast.

FINDINGS OF FACT
Novak discloses a hollow sphere with several separate structural
elements for constructing the hollow sphere. See col. 1, ll. 6-10. The
hollow sphere disclosed in Novak can be used as a toy. As shown in Figure
1, the assembled device is in the shape of a sphere and is comprised of
several structural elements 10. The elements are disc shaped and of uniform
thickness except at their peripheries where there are interfitting tongues and
recesses to fasten the elements 10. See col. 2, ll. 17-27. As shown in Figure
5, the overlapping projecting tongues 15 and receiving recesses 16 result in a
piece that does not have a complete unitary thickness.
DeGast shows a three-dimensional puzzle for forming a hollow
ornamental object such as a three-dimensional jigsaw puzzle. The object, as
seen in Figure 1, is formed of a plurality of identically shaped puzzle pieces
12 that are generally four-sided in shape having a spherical curvature, with
the radius of curvature of all of the pieces 12 being identical. See col. 2, ll.
7-14. Each of the pieces has two complementary projections 14 extending
outwardly from two of the four sides and complementary recesses 16
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extending inwardly from the two remaining sides. See col. 2, ll. 14-17. The
puzzle pieces of DeGast appear to be of uniform thickness. See Figure 2 and
Figure 5.
ISSUES
Appellant argues that neither Novak nor DeGast shows puzzle pieces
of uniform or unitary thickness for each piece. Appellant further argues that
neither Novak nor DeGast shows puzzle pieces with a broad-shouldered
human-shaped periphery or variable radius curves. Accordingly, the issues
for our consideration are whether the Appellant has established that the
Examiner erred in rejecting the claims for lack of novelty or obviousness.

PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349 (Fed. Cir. 2002), cert. denied, 538 U.S. 907 (2003).
Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled
that a prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it.” Id.
A claimed invention is unpatentable if the differences between it 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.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
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In Graham, the Court held that that the obviousness analysis is
bottomed on several basic factual inquiries: “[(1)] the scope and content of
the prior art are to be determined; [(2)] differences between the prior art and
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 1739.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
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
127 S.Ct. at 1741.
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 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.
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With regard to arguments that there is no teaching, suggestion, or
motivation (TSM) for the combination of references, in KSR the Supreme
Court held that a rigid application of such a mandatory formula as TSM was
incompatible with its precedent concerning obviousness. See KSR at 1741.
Section 112, second paragraph, is satisfied if a person skilled in the
field of the invention would reasonably understand the claim when read in
the context of the specification. Marley Mouldings Limited v Mikron
Industries, Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (citing Union Pac.
Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001)
(the definiteness requirement set forth in § 112, ¶ 2 "focuses on whether
those skilled in the art would understand the scope of the claim when the
claim is read in light of the rest of the specification")); Miles Labs., Inc. v.
Shandon, 997 F.2d 870, 875 (Fed. Cir. 1993) (if the claims "reasonably
apprise those skilled in the art of the scope of the invention, § 112 demands
no more"); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (the
indefiniteness inquiry asks whether the claims "circumscribe a particular
area with a reasonable degree of precision and particularity").
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997), cert. denied, 523 U.S. 1089 (1998)(citing Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)). To fulfill the written description
requirement, a patent specification must describe an invention and do so in
sufficient detail that one skilled in the art can clearly conclude that “the
inventor invented the claimed invention.” Id. (citing Lockwood v. American
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Airlines, Inc., 107 F.3d 1565, 1572 (1997) and In re Gosteli, 872 F.2d 1008,
1012 (Fed. Cir. 1989) (“[T]he description must clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed.”)). Thus, an applicant complies with the written description
requirement “by describing the invention, with all its claimed limitations,
not that which makes it obvious,” and by using “such descriptive means as
words, structures, figures, diagrams, formulas, etc., that set forth the claimed
invention.” Lockwood, 107 F.3d at 1572 .
It is important to note that "[t]he invention is, for purposes of the
‘written description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d
at 1564.

ANALYSIS
Turning first to the construction of the independent claims on appeal,
we note that the claims state that the upper and lower surfaces of the puzzle
pieces are concentric to “define a uniform or unitary thickness for each
piece.” We construe this “define” language to require the puzzle pieces to
be of uniform or unitary thickness throughout. Thus, turning to the Novak
reference, we find that the puzzle pieces disclosed therein are not of uniform
thickness throughout, inasmuch as the recesses and tongues are of less
thickness than the piece interiors. Accordingly, we reverse the § 102
rejection based on the evidence of Novak.
Turning to the patent to DeGast, Appellant argues that DeGast does
not disclose puzzle pieces of uniform or unitary thickness. We disagree.
While the text of the specification is silent with respect to the thickness of
the pieces of DeGast, patent drawings are good for what they disclose.
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In fact, a predecessor to our reviewing court has stated that a drawing in a
utility patent can be cited against the claims of a utility patent application
even though the feature shown in the drawing was unintended or
unexplained in the specification of the reference patent. See In re Aslanian,
590 F.2d 911, 914 (CCPA 1979) (citing In re Meng, 492 F.2d 843, 847
(CCPA 1974) (the staggered cheese slices case); In re Seid, 161 F.2d 229
(1947); In re Wagner, 63 F.2d 987, 988 (CCPA 1933)). In this instance, it
appears that Figure 2 shows a puzzle piece of uniform thickness. Appellant
argues that there is no disclosure that the inner and outer surfaces of
DeGast’s pieces are concentric so as to result in a piece of uniform
thickness. It is our view that there is no reason to suspect that puzzle pieces
shown in Figure 2 vary in thickness throughout the pieces. We acknowledge
that the underside of the pieces in Figure 2 are not shown in the drawing.
However, the underside of the pieces are shown in Figure 5 and this figure
shows the pieces of the second embodiment, along with the pieces in Figure
6, to be of uniform thickness. There is no reason to suspect that the pieces
of the Figure 1 embodiment of DeGast are any different. Additionally, we
note that the holes 24 in the pieces of DeGast seem to illustrate constant
thickness on the sidewalls thereof.
Consequently, with respect to Appellant’s argument that DeGast does
not show puzzle pieces of uniform or unitary thickness, we simply believe
that it is more likely than not that the puzzle pieces of DeGast are of uniform
thickness as the Examiner has found. Therefore, by a preponderance of the
evidence, we believe that DeGast explicitly discloses puzzle pieces of
uniform thickness. We consider the amount of disclosure in DeGast as to
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uniform thickness to be similar to the amount of disclosure in Appellant’s
original specification as to this feature. Thus, if Appellant is allowed to
provide claims directed to a uniform thickness, based on his scant disclosure,
we are constrained to say that DeGast discloses the same feature based on
the disclosure in DeGast.
Furthermore, we are in agreement with the Examiner that, in view of
the cruciform embodiment of DeGast which appears to show both the inner
and outer surfaces of the piece with concentric surfaces providing uniform
thickness, it would have been obvious to construct the pieces of the first,
spherical, embodiment in like manner, if they are not already of uniform
thickness, as we believe to be the case. Therefore, we affirm the § 102 and
§ 103 rejections based on the disclosure of DeGast. That is, we affirm the
§ 102 rejection of claims 4-7, 10 and 11 and the § 103 rejections of those
same claims.
With respect to the rejection of claims 8, 9, and 12-20 under 35 U.S.C.
§ 103 as obvious over DeGast, we will not affirm this rejection. The
Examiner merely includes a conclusory statement that it would have been
obvious to provide six puzzle pieces that meet at a common point. Answer
at 4. However, a conclusory statement does not provide the rational basis
required in a proper Graham analysis. Thus, the Examiner provides no
explanation with rational underpinning as to exactly why or how one would
modify the puzzle of DeGast so that six pieces meet in a common point.
Consequently, the rejection of claims 8, 9, and 12-20 can not be affirmed on
this ground.

New Grounds of Rejections under 37 C.F.R. § 41.50(b).
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Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter the
following rejections of the claimed subject matter on appeal.
Claims 6-8, 10-13, and 18-20 are rejected under 35 U.S.C. § 112, first
paragraph. More specifically, claims 6, 10-13, and 18-20 are rejected based
on the lack of written descriptive support in the originally filed application
for the limitation first found in claim 6 directed to a puzzle piece with a
periphery of a variable radius curve. There is no support for this limitation
in the written specification as originally filed, and support for this limitation
cannot be gleaned from an inspection of the drawings.
Claims 7, 8, 11, 12, 13 and 20 are rejected under 35 U.S.C. § 112, first
paragraph, in that there is no descriptive support in the application as
originally filed for a plurality of puzzle pieces having a “broad-shouldered
human-shape periphery.” As we construe this term, we assume it to be
directed to the shape of a profile of the human body with somewhat broad
shoulders. However, in the shape of the puzzle pieces from the drawings as
originally filed, we do not see what could be regarded as arms or legs that
would serve to make up the portion of the profile of a human shape.
Accordingly, the application as originally filed does not provide support for
the broad-shouldered human-shaped periphery.
Claims 9, 13, 15 and 17-20 are rejected under 35 U.S.C. § 112, second
paragraph. Claim 9 is an example. The claim states that as many as six of
the plurality of puzzle pieces meet at a common point at several locations on
the sphere. We note that as shown in the drawings as originally filed, as
many as six of a plurality of puzzle pieces meet at one single common point
on the location on the sphere (as properly claimed in claims 8, 12, 14 and
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16), while another six puzzle pieces may meet at a common point at another
location on the sphere. We find no locations where six discrete puzzle
pieces meet at common points at several locations on the sphere as appears
to be claimed in claims 9, 13, 15 and 17-20. We consider these claims to be
misdescriptive of the subject matter Appellant regards as the invention.

SUMMARY
The rejection of claims 4-7, 10 and 11 under 35 U.S.C. § 102 as
anticipated by Novak is reversed. The rejection of claims 4-7, 10 and 11
under 35 U.S.C. § 102 as anticipated by DeGast is affirmed. The rejection
of claims 4-7, 10 and 11 under 35 U.S.C. § 103 as unpatentable over DeGast
is affirmed. The rejection of claims 8, 9, and 12-20 under 35 U.S.C. § 103
as unpatentable over DeGast is reversed.
New rejections of claims 6-8, 10-13, and 18-20 under 35 U.S.C.
§ 112, first paragraph, and claims 9, 13, 15 and 17-20 under 35 U.S.C.
§ 112, second paragraph, have been entered by the Board pursuant to
37 C.F.R. § 41.50(b).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review."
Regarding the new ground of rejection, Appellant must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the
following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner. . . ; or

(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejections, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIMRED-IN-PART
37 C.F.R. § 41.50(b)

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