Ex Parte Dallman

Board of Patent Appeals and Interferences

Jan 30, 2009

11045410 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRENT DALLMAN
____________

Appeal 2008-5325
Application 11/045,410
Technology Center 2800
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Decided: January 30, 2009
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Before CHUNG K. PAK, ROMULO H. DELMENDO, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-3, 6-16, 18, and 21-27 (Appeal Brief filed October 10, 2006,
hereinafter “Br.”; Final Office Action mailed May 19, 2006). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-5325
Application 11/045,410

STATEMENT OF THE CASE
Appellant’s “invention relates to a work device that provides a work
surface on which the user can write directly or position a paper for writing
thereon” (Specification, hereinafter “Spec.,” ¶0001). Figure 1, which is said
to depict one embodiment of the invention (Spec. ¶0010), is reproduced
below:

According to Appellant’s Specification, Figure 1 shows a laser guided work
device 10 including a work board 12 having a work surface 14, a laser 18
projecting a straight line 20, and a linear motion device 16 translating the
laser relative to the work surface by means of rail 22 along dimension P
(Spec. ¶¶0013-0014). The Specification further explains that straight line 20
assists or guides the user to write in a straight line (Spec. ¶¶0017 and 0019).
Claims 1 and 3 on appeal read as follows:
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1. A laser guided work device for guiding the alignment
of a user’s writing, the device comprising:
a work board having a work surface;
a line producing laser projecting a line on said work
surface; and
a linear motion device engaging said laser to said work
board, said linear motion device translating said laser relative to
said work surface along at least one dimension, said line
oriented perpendicular to said at least one dimension such that
said line moves relative to said work surface when said linear
motion device translates said laser along said at least one
dimension.
3. The laser guided work device of claim 1 wherein said
linear motion device comprises a groove defined on said work
board and extending along said at least one dimension and a
tongue slidably engaged within said groove, said laser mounted
on said tongue for sliding movement along said at least one
dimension.
(Br. 15, Claims Appendix).
The Examiner relied upon the following as evidence of
unpatentability:
Renaud 5,050,306 Sep. 24, 1991
Cardon 5,337,484 Aug. 16, 1994
Malard 6,735,879 B2 May 18, 2004
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows: (i) claims 1, 2, 9-16, 24, and 25 as unpatentable over the combined
teachings of Cardon and Malard; and (ii) claims 3, 6-8, 18, 21-23, 26, and 27
as unpatentable over the combined teachings of Cardon, Malard, and Renaud
(Examiner’s Answer mailed June 1, 2007, hereinafter “Ans.,” 3-13).
Within each of the two rejections, Appellant argues the claims
together (Br. 10-14). Accordingly, we select claims 1 and 3 as
representative of the sets of claims subject to the two rejections,
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respectively, and confine our discussion to these two representative claims.
See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to claim 1, the Examiner found that Cardon describes
every element of the claimed guided work device for guiding the alignment
of a user’s (hand) writing except for a line producing laser (Ans. 3-4). To
account for this difference, the Examiner relied on Malard, which was found
to teach a line producing laser that projects a beam of visible light to a work
surface in order to provide a non-intrusive reference line that aids in the
marking of the work surface (Ans. 4). Based on these prior art teachings, the
Examiner concluded that “it would have been obvious to a person having
ordinary skill in the art . . . to replace the guiding template . . . disclosed by
Cardon with a line producing laser as taught by Malard . . . in order to
increase the accuracy of the writing . . . by providing a visual alignment
mechanism . . .” (id.). The Examiner reasoned that a person having ordinary
skill in the art would have been led to modify Cardon with Malard’s laser
because “individuals [with neuromuscular disabilities], in addition to those
who may be learning to write at [a] young and an adult age, are in need of a
device that allows them to write/mark in a straight line on a writing surface”
(Ans. 11).
Appellant, on the other hand, asserts that one of ordinary skill in the
art would have had no reason to combine Cardon with Malard because the
proposed modification of Cardon’s device with Malard’s laser would render
Cardon (which Appellant believes to be limited to “those individuals who
are blind, visually impaired, or suffer from neuromuscular disability”)
“unsatisfactory for its intended purpose” and change its principle of
operation (Br. 12). Appellant further contends that Malard is non-analogous
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art and “teaches away from combining its laser with a writing device” (Br.
13).
With respect to claim 3, the Examiner found that neither Cardon nor
Malard describes the claimed tongue and groove arrangement (Ans. 7).
Nevertheless, the Examiner determined that Renaud provides a reason for
one of ordinary skill in the art “to replace the rail and trolley arrangement
disclosed by Cardon . . . with a groove and tongue arrangement as taught by
Renaud since these are both well known linear motion arrangements that are
used alternatively based on manufacturing costs” (id.).
Appellant, on the other hand, relies on the same arguments with
respect to claim 1 and further contends that the combination is impermissible
because Renaud in non-analogous art (Br. 14). Specifically, Appellant urges
that Renaud does not relate to the “field of art and writing, writing utensils,
stationary [sic] [stationery], clip boards, art supplies, writing boards or other
similar devices” and “is not relevant to the problem of creating free-hand
writing on a paper or board along a straight line” (id.).

ISSUES
Thus, the issues arising from the Examiner’s rejections and
Appellants’ contentions are:
Has Appellant shown that the Examiner reversibly erred because the
proposed combination of Cardon and Malard would result in a device that is
unsuitable for Cardon’s principal purpose, which is to aid the visually
impaired to write in a straight line?
Has Appellant shown that the Examiner reversibly erred because
Malard is non-analogous prior art?
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Has Appellant shown that the Examiner reversibly erred because
Renaud is non-analogous prior art?
FINDINGS OF FACT
1. Cardon teaches that some people have problems writing in a
straight line, as follows (col. 1, ll. 34-38; emphases added):
While some writing paper is ruled with parallel straight
lines to define writing paths across the paper sheet, a
person with normal vision can usually write legibly on
unruled paper. But those who are visually or otherwise
impaired cannot do so.
2. The Examiner’s finding that visually impaired people are not
the only individuals who have difficulty writing in a straight
line is undisputed (Ans. 11; Br. 10-14).
3. Cardon’s Figure 1 is reproduced below:

Cardon’s Figure 1 depicts a scriptwriting guidance device
“for use by an individual who is visually or otherwise
impaired,” wherein the device includes a clip board 10
(i.e., a work board having a work surface), a block-
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shaped slide 16 mounted slidably on a rotatable shaft 13
with a series of equi-spaced circular detent grooves D,
and a guide element in the form of a rectangular frame 18
cantilevered from slide 16 (col. 4, ll. 3-35).
4. Malard describes a laser line generating device including a light
source, a power supply connected to the light source, and a
housing (col. 2, ll. 15-18).
5. According to Malard, laser devices are useful in a variety of
alignment applications including the alignment of pictures (col.
1, ll. 11-24; Figure 9A).
6. Malard’s Figure 9A is reproduced below:

Malard’s Figure 9A depicts a laser line generating device
projecting a laser light in a narrow asymmetric beam or
fan for aligning objects on a wall (col. 3, ll. 8-10).
7. Malard teaches that the light is projected “in a direction of
propagation in the shape of an elongated fan that substantially
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lies within a plane that is oriented at an angle with respect to the
direction of propagation” (col. 2, ll. 25-31; Figures 9A and 9B).
8. Malard explicitly teaches that the laser may be held or mounted
on work surfaces using a variety of devices and states that
“[m]any other variations” are contemplated (col. 7, l. 62 to col.
8, l. 4).
9. Renaud discloses the use of a base 37 (i.e., tongue) sliding
within a slot 27 (i.e., groove) to provide slidable movement in a
wallpaper border marker-cutter device (col. 2, ll. 5-5-32; col. 3,
ll. 34-36; Figures 1 and 2).

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“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
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
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content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense.”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine. . . . ”).
“[W]hen a patent claims a structure already known in the prior art that
is altered by mere substitution of one element for another known in the field,
the combination must do more than yield a predictable result.” KSR, 127 S.
Ct. at 1740. That is, “[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.” Id. According to KSR, “[i]f a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. “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.
Two separate tests developed by our reviewing court for determining
whether a prior art reference is analogous are: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed; and (2) if the
reference is not within the inventor’s endeavor, whether the reference is
reasonably pertinent to the particular problem with which the inventor is
involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (analogous art
based on same field of endeavor test); In re ICON Health and Fitness, Inc.,
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496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (analogous art based on similarities
in problems addressed test). With respect to the second test, our reviewing
court emphasized that “‘familiar items may have obvious uses beyond their
primary purposes.’” ICON Health, 496 F.3d at 1380 (quoting KSR, 127 S.
Ct. at 1742).
ANALYSIS
CLAIM 1:
Contrary to Appellant’s belief, Cardon would have indicated to one of
ordinary skill in the art that visually impaired people are not the only
individuals who have difficulty writing in a straight line (Fact 1). Indeed,
Appellant does not dispute the Examiner’s factual finding based on common
knowledge that individuals with normal vision (e.g., children) experience
difficulty writing in a straight line (Fact 2). While it is true that Cardon
states that the disclosed writing aid is particularly useful for “those who are
visually or otherwise impaired” (emphasis added; Fact 1), one of ordinary
skill in the art would have understood from Cardon’s disclosure as a whole,
coupled with simple common sense, that the problem of difficulty in writing
in a straight line is not unique to those who are visually impaired. Thus, we
find no merit in Appellant’s contention that a person having ordinary skill in
the art would have been dissuaded from modifying Cardon’s device to
include a line generating laser (i.e., a device that requires vision) because the
resulting product would have been unsatisfactory for the visually impaired.
Appellant’s argument that Malard is non-analogous prior art is
likewise unpersuasive (Br. 13). “[W]hen a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
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predictable result.” KSR, 127 S. Ct. at 1740. KSR explained that “[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.” Id. According to KSR, “[i]f a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id.
Furthermore, KSR stated 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.” Id.
In this case, we are in complete agreement with the Examiner that a
person having ordinary skill in the art would have found it obvious to
replace Cardon’s guide element 18 with Malard’s laser line generator with
the reasonable expectation that these structures would be interchangeable as
elements that aid a user to write in a straight line (Facts 3-8). Appellant has
not shown that the combination is something other than a mere aggregation
of known elements that work together in an entirely expected fashion to
provide a predictable result. KSR, 127 S. Ct. at 1740.
Even under the traditional tests for analogous art, Appellant’s argume
nt fails. Malard discloses the use of a laser to align various objects (Facts 5
and 8). Thus, the purpose of Malard’s laser is similar to the purpose of
Appellant’s laser, which is to align writings. Under these circumstances,
Malard is analogous art under the similarities in problems addressed test. In
this regard, “‘familiar items may have obvious uses beyond their primary
purposes.’” ICON Health, 496 F.3d at 1380 (quoting KSR, 127 S. Ct. at
1742).

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CLAIM 3:
With respect to claim 3, which depends from claim 1, Appellant relies
on the same arguments advanced in support of claim 1 (Br. 14). For reasons
discussed above, we find them unpersuasive.
Appellant appears to be contending that Renaud is not analogous art
because it is not in the same field of endeavor and “is not relevant to the
problem of creating free-hand writing on a paper or board along a straight
line” (Br. 14). This contention is also without merit. Again, we bear in
mind that “[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.” KSR, 127 S. Ct. at 1740.
Here, the purpose of the tongue and groove system of claim 3 is the
same as or similar to the purpose of the base 37 and slot 27 of Renaud,
which are to provide slidable movement of an object (Fact 9). Thus, we find
no basis to assert that Renaud is not analogous art.
For these reasons, we uphold the Examiner’s rejections.

CONCLUSION
On this record, we determine that Appellant has not shown reversible
error in the Examiner’s rejections. Appellant has failed to demonstrate: that
the device resulting from the modification of Cardon in view of Malard
would have been unsuitable for Cardon’s purposes; that a person having
ordinary skill in the art would not have been led to consider the teachings of
Malard because it is non-analogous prior art; and that a person having
ordinary skill in the art would not have been led to consider the teachings of
Renaud because it is non-analogous prior art.
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DECISION
The Examiner’s decision to reject appealed claims 1-3, 6-16, 18, and
21-27 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)(1)(iv).
AFFIRMED

rvb

SARAH MICHELE JABBARI
SOMMER BARNARD PC
ONE INDIANA SQUARE SUITE 3500
INDIANAPOLIS IN 46204-2023
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