Ex Parte Cross et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10011629 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN W. CROSS
and CHRISTOPHER A. LALIK
____________

Appeal 2007-0274
Application 10/011,629
Technology Center 2800
____________

Decided: July 31, 2007
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and JEFFREY T.
SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-15, 17-27, 72, and 73. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
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The Appellants invented a reticle adapted for use in a scope wherein
photoluminescent material is deposited on at least a portion of the reticle.
Claim 1 is representative of the claimed subject matter and reads as follows:
1. In a reticle adapted for use in a scope, the improvement comprises
a quantity of photoluminescent material that emits light after a light source
has been removed, wherein the material is deposited on at least a portion of
said reticle within a housing of the scope.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Friedrich US 1,302,353 Apr. 29, 1919
Rickert US 3,320,671 May 23, 1967
Jensen US 4,889,660 Dec. 26, 1989
Barone US 5,671,539 Sep. 30, 1997

Under 35 U.S.C. § 103(a): claims 1, 2, and 6-14 are rejected over
Friedrich in view of Barone; claims 3-5, 15, 17-27, and 72 are rejected over
Friedrich, Barone, and Jensen; and claim 73 is rejected over Friedrich,
Barone, Jensen, and Rickert.
It is the Examiner's basic position that it would have been obvious for
one with ordinary skill in this art to replace the radium-luminescent material
on the reticle of Friedrich with a photoluminescent material in view of
Barone (Answer 5). The Appellants argue that no prima facie case of
obviousness exists because Barone is non-analogous art (Replacement Br.
17-18; Reply Br. 17-18) and that any prima facie case of obviousness which
may exist is refuted by secondary considerations relating to long-felt need
(Replacement Br. 19-22; Reply Br. 11-14) and commercial success
(Replacement Br. 25-28; Reply Br. 15-16).
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THE ISSUES
The issues raised in this appeal are:
Is the Barone reference non-analogous art?
Do the Appellants' secondary considerations relating to long-felt need
and commercial success outweigh the Examiner's reference evidence of
obviousness?

THE NON-ANALOGOUS ART ISSUE
The Examiner and Appellants understand that the test for determining
analogous versus non-analogous prior art is whether the art is from the
inventor's field of endeavor regardless of the problem addressed and, if not,
whether the art is reasonably pertinent to the particular problem with which
the inventor is involved. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058,
1060 (Fed. Cir. 1992). While agreeing that Barone is not in the field of
endeavor under consideration (i.e., reticles adapted for use in scopes), the
Examiner and Appellants disagree as to whether this reference is reasonably
pertinent to the particular problem with which the inventors are involved.
According to Appellants, this problem relates to increasing the visibility of
reticles used in scopes (Replacement Br. 18), and Barone is not reasonably
pertinent to such a problem because the reference involves photoluminescent
material on the sight of a pistol (id.; Barone, col. 2, ll. 25-34).
The problem addressed by Appellants is defined in the Specification
as relating to aiming difficulties when using a scope reticle as a sighting
marker in low-light conditions (Specification 1-3). The use of
photoluminescent material on the sighting markers of Barone's pistol is
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expressly disclosed as being for the purpose of aiming in low-light
conditions (col. 1, ll. 23-26). Under these circumstances, we determine it is
appropriate to regard the Barone reference as reasonably pertinent to the
particular problem with which the Appellants are involved, namely, the
problem of aiming in low-light conditions under which the sighting marker
cannot be differentiated from the object being observed (Specification 1:24-
26).
Our determination is not improper simply because Appellants'
sighting marker is a scope reticle and Barone's sighting markers are front
and rear pistol sights. While this distinction removes Barone from
Appellants' field of endeavor, it does not militate against the pertinence of
Barone to the problem of aiming in low-light conditions. As the Supreme
Court has recently explained, "[w]hen 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" (emphasis added). KSR Int'l
Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1396 (Fed.
Cir. 2007). Though in a different field, Barone uses photoluminescent
material on a sighting marker to solve the problem of aiming in low-light
conditions, and an artisan would have been motivated to use this
photoluminescent material on a reticle sighting marker in order to solve the
same problem.
For the above stated reasons, we find that Barone is analogous prior
art and accordingly that Appellants have not shown failure by the Examiner
to establish a prima facie case of obviousness.

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THE SECONDARY CONSIDERATIONS ISSUE
Appellants argue that their claimed invention satisfies a long-felt need
not solved by others (Replacement Br. 18) and proffer §1.132 Declarations
by Lermayer (id. at 19), Lalik (id. at 20-21) and Cross (id. at 21-22) in
support of this argument. The Examiner concedes that these Declarations
evince a long-felt need but determines that this long-felt need evidence of
nonobviousness does not outweigh the prior art evidence of obviousness
(Answer 19).
As an initial matter, we observe that that the Appellants state "the
Examiner concedes that the claimed invention satisfies a long-felt need in
the art" ( Reply Br. 11). This is an imprecise statement. The Examiner has
conceded "the fact of long-felt need" (Answer 19) but has not expressed a
determination that the Appellants' claimed invention satisfies this long-felt
need.
We emphasize this last mentioned point because Appellants' proffered
evidence is conflicting on the question of whether a long-felt need is
satisfied by their commercial product, named Firefly, which is said to
represent the claimed invention. Specifically, while the Declaration
evidence indicates that the Firefly product has been generally praised and
well received by users, Exhibit B (i.e., a review article in American Hunter
magazine) of the Lalik Declaration states that "the Firefly has its drawbacks"
(Exhibit B, last page). These drawbacks are: "the brief shelf-life of the
illumination" (id.); "while it's little trouble to recharge, most stand hunters
would rather avoid even that minimal movement" (id.); and "it's not possible
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to vary Firefly's brightness, and though an overly bright reticle may obscure
a target, it's understandable some will prefer illumination that adjusts to
ambient light conditions" (id.).
Under these circumstances, we determine that the claimed invention is
satisfactory for some marketplace needs but is unsatisfactory for others. In
this respect, the Appellants' claimed product is like the prior art products
described in the applied references and in the subject Specification
(Specification 1-2); that is, all these products have drawbacks as well as
advantages relative to one another.
Viewed from this perspective, the claimed invention cannot be
characterized as satisfying a long-felt need not solved by others. Instead,
Appellants' claimed invention is simply a product with predictable
characteristics which resulted from the universal and common sensical
desire to enhance commercial opportunities by improving a product or
process. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006). That a
version of the claimed product has been well received by users indicates a
successful enhancement of commercial opportunities with techniques known
in the prior art rather than the satisfaction of a long-felt need not solved by
others. It follows that Appellants' long-felt need evidence of
nonobviousness possesses limited probative value.
The Appellants also proffer evidence of nonobviousness in the form
of commercial success which is presented in the Lalik Declaration (5-8).
This evidence includes sales figures for the number of Bushnell Elite rifle-
scopes sold versus the number of Bushnell Elite riflescopes sold having the
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Firefly reticle (which is said to represent the claimed invention) (Lalik
Declaration 6). The data for actual sales involves only two full years,
namely, 2003 and 2004. Projected sales are given for 2005 but have no
discernable probative value because no actual data is given as the basis for
these projections. The actual sales for 2004 are less than those of 2003, and
declarant explains that this is "because the one-time benefit of filling stores
shelves does not repeat itself in the second year" (id. at 5).
The above discussed evidence of commercial success is not strong.
This is because it is based on only two years of actual sales data and because
the second year of sales is less than the first. If this decrease in second year
sales is due to the first year benefit of filling stores shelves with a new
product (and not due to product rejection by purchasers), the evidence may
be fairly characterized as showing success in commerce (rather than
commercial failure due to product rejection by purchasers). However, the
degree of this success, and thus its probative value is limited for the reasons
given above.
Commercial success is said to be also evidenced by an increase in
assignee Bushnell's market share for riflescopes. According to the Lalik
Declaration (6), "Bushnell's dollar market share of the riflescope category
has grown from 10% in 2002 to 21% in 2004." The declarant states "[t]his
market share increase is due to sales of the Firefly reticle, as illustrated from
the above table [containing sales data]" (id.). As previously mentioned,
however, this table shows a decrease in 2004 sales of Elite riflescopes
having the Firefly reticle. This indicates that the Firefly reticle actually
militated against rather than for the 21% market share achieved by Bushnell
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in 2004. In any event, only 7 of the 37 riflescopes sold by Bushnell include
the Firefly reticle (id.), and no market share data is given for riflescopes with
and without the Firefly reticle. It is not possible, therefore, to determine
from the Lalik declaration how much the claimed invention in the form of
the Firefly reticle contributed toward (or detracted from) the market share
increase achieved by Bushnell from 2002 to 2004.
Our foregoing exposition reveals the probative weakness of
Appellants' nonobviousness evidence based on long-felt need and
commercial success. In addition, this evidence has limited applicability to
the claimed invention because it is more narrow in scope than the broadest
claims on appeal. These broadest claims, such as claim 1, contain no
limitation on the particle size of the photoluminescent material. On the other
hand, the long-felt need and commercial success evidence is based on
Bushnell's Firefly reticle which is described by inventor John W. Cross as
including a photoluminescent material having a particle size less than 30
microns (Cross Declaration 2). Indeed, in an interview for Guns & Ammo
magazine, inventor Cross stated that "[t]he trick [in designing the Firefly
reticle] was in how the material was applied to the reticle and the size and
type of photo-luminescent particles" (Guns & Ammo, 41, i.e., third page in
Exhibit C of the Lalik Declaration). Obviousness evidence is not overridden
by secondary considerations attributable to factors (i.e., particle sizes less
than 30 microns) which are not required by the claims. Riverwood Int'l
Corp. v. Mead Corp., 54 USPQ2d 1763, 1765 (Fed. Cir. 2000).
Finally, it is well established that, although secondary considerations
must be taken into account, they do not necessarily control the obviousness
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conclusion. Leapfrog Enterprises v. Fisher-Price, 485 F.3d 1157, 1162,
82 USPQ2d 1687, 1692 (Fed. Cir. 2007); Pfizer v. Apotex, Inc., 480 F.3d
1348, 1372, 82 USPQ2d 1321, 1338 (Fed. Cir. 2007); Newell Cos. v. Kenney
Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1439 (Fed. Cir. 1988).
For these reasons, the nonobviousness evidence of record, even when
viewed in its most generous light, falls far short of outweighing the
Examiner's reference evidence of obviousness.

CONCLUSION OF LAW
It is our ultimate conclusion that the record evidence as a whole
weighs most heavily in favor of an obviousness conclusion. We hereby
sustain, therefore, each of the § 103 rejections on appeal.

ORDER
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(iv)(effective Sept.
13, 2004).
AFFIRMED

cam

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