Ex Parte Fields et al

Patent Trial and Appeal Board

Oct 31, 2012

11926365 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/926,365 10/29/2007 Riley C. Fields 1021.006 4409
36790 7590 10/31/2012
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
10/31/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RILEY C. FIELDS, BRIAN E. COX, and
DANIEL LEE BIZZELL
____________________

Appeal 2010-005755
Application 11/926,365
Technology Center 2800
____________________

Before MAHSHID D. SAADAT, KALYAN K. DESHPANDE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-19, 21, and 22. Claims 5 and 20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claimed invention is directed to a kit for creating artistic work on
a residential lawn. Abst. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A kit for creating an artistic work on a residential lawn,
comprising:
(a) first and second lawn stencils;
(b) first and second containers of aerosol turf paint of first and
second colors;
(c) a plurality of stakes for anchoring each of the lawn stencils
to the residential lawn; and
(d) a container holding the first and second lawn stencils, the
first and second containers of aerosol turf paint, and the
plurality of stakes;
(e) wherein the first lawn stencil includes a first pattern of
openings configured for application of a first design element of
the artistic work to the residential lawn when the first lawn
stencil is anchored to the residential lawn and the aerosol turf
paint of the first container is applied over the first lawn stencil;
and
(f) wherein the second lawn stencil includes a second pattern of
openings configured for application of a second design element
of the artistic work to the residential lawn when the second
lawn stencil is anchored to the residential lawn and the aerosol
turf paint of the second container is applied over the second
lawn stencil.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Summer
Ippolito
Schlundt
Ogorzalek
US 2,444,860
US 5,101,525
US 5,165,337
US 5,460,087
Jul. 6, 1948
Apr. 7, 1992
Nov. 24, 1992
Oct. 24, 1995

REJECTIONS
The Examiner made the following rejections:
Claims 1, 6, 9-12, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ogorzalek, Ippolito, and Schlundt. Ans. 20.
Claims 2-4, 7-8, 13-19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ogorzalek, Ippolito, Schlundt, and
Summer. Ans. 7.

ISSUES
1. Whether the combination of Ogorzalek, Ippolito, and Schlundt
fails to disclose or suggest a kit for creating an artistic work on a lawn as
recited by claims 1, 6, 9-12, and 21.
2. Whether the combination of Ogorzalek, Ippolito, Schlundt, and
Summer fails to disclose or suggest a kit for creating an artistic work on a
lawn as recited by claims 2-4, 7-8, 13-19, and 22.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
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conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons and rebuttals set forth by the Examiner in the Answer (Ans. 3-20) in
response to Appellants’ Appeal Brief. We concur with the conclusions
reached by the Examiner. We highlight the following arguments for
emphasis.
1

1. 35 U.S.C. § 103(a) Rejection over Ogorzalek, Ippolito, and
Schlundt
Claims 1, 6, 10, and 11
Appellants contend that the combination of Ogorzalek, Ippolito, and
Schlundt is only applicable to an architectural structure. App. Br. 8-10.
Appellants further contend that, because Ogorzalek fails to disclose creating
an artistic work on a lawn, it would have not been obvious to employ lawn
stakes as taught by Ippolito to anchor stencils to a lawn. The Examiner
responds, inter alia, that the decoration of surfaces in general, whether paper,
walls, or lawns, is a well-established practice, and that no specific teaching
of use with a lawn is required. Ans. 15-16. The Examiner further asserts
that Ippolito would have suggested the use of stakes to solve the problem of
holding a flat article onto the surface of a lawn. Ans. 16. We agree with the
Examiner.

1
In connection with the rejection of claims 1, 6, 9-12, and under 35 U.S.C.
§ 103(a) over Ogorzalek, Ippolito, and Schlundt, claims 1, 6, 10, and 11 are
collectively argued on the basis of claim 1; claims 9, 12, and 21 are
separately argued. In connection with the rejection of claims 2-4, 7-8, 13-
19, and 22 under 35 U.S.C. § 103(a) over Ogorzalek, Schlundt, and Summer,
claims 2 and 3, claims 7 and 15,and claims 14 and 16-18 are collectively
argued; claims 4, 8, 17, 19, 13, and 22 are separately argued.
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On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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. . . . [A]
court must ask whether the improvement is more than the predictable
use of prior art elements according to their established functions.

Id. at 417. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 419-420.
Furthermore, it must be recognized that any judgment on obviousness
is in a sense necessarily a reconstruction based upon hindsight reasoning.
But so long as it takes into account only knowledge which was within the
level of ordinary skill at the time the claimed invention was made, and does
not include knowledge gleaned only from the applicant’s disclosure, such a
reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
We further find that the Examiner’s position is consistent with
Appellants’ own description of the known marking techniques in the
“Background of the Present Invention” section. In particular, Appellants’
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Specification discloses one of the known methods where stencils made from
a planar sheet of flexible film are fastened to a desired area using weights or
stencil anchors. Appellants’ disclosure continues to describe that aerosol
turf paint is sprayed onto the turf through holes in the stencil. Spec. 1.
Appellants next contend that Ippolito is nonanalogous art because it is
not in the field of endeavor of the invention since (i) it is directed to securing
lawn and beach blankets rather than stencils and (ii) there is no commonality
between the problem to which Ippolito and the problem that Appellants set
out to solve. App. Br. 10-15. The Examiner responds that Appellants’
argument is not persuasive because both Appellants and Ippolito are
concerned with solving the same problem of holding a flat article onto the
surface of a lawn. Ans. 16-17. We agree with the Examiner. Furthermore
we note that the Examiner’s position is consistent with Appellants’
Specification disclosing fastening of a stencil to, inter alia, a sports field,
using weights or stencil anchors. Spec. 1. The use of stakes as stencil
anchors is no more than the predictable use of prior art elements according
to their established functions. See KSR Int’l Co. v. Teleflex Inc. at 416.
Therefore, we will sustain the rejection of claims 1, 6, 10, and 11.

Claim 9
Appellants further contend that Ogorzalek’s disclosure of a stencil
having a “necessary degree of stiffness” teaches away from stencils which
are rolled when in a container as recited by claim 9. App. Br. 18. The
Examiner responds that the modification of Ogorzalek to be used on a lawn
rather than on a building would suggest modifications that are compatible
with the intended surface on which the stencil is to be used. Therefore the
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use of a flexible film as taught by Summer would also allow the stencil to be
rolled for storage. Ans. 18. We again agree with the Examiner.
Furthermore, merely disclosing a rigid stencil suited for attachment to the
face of a building does not dissuade the use of a flexible stencil on an
alternative surface such as a lawn. “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.”
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
2008) (citations and quotations omitted). A reference does not teach away if
it merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, one skilled in the art
would have recognized the advantages of a flexible and compactly storable
stencil that would accommodate a lawn surface versus the rigid structure of
the rigid stencil structure of Ogorzalek designed to accommodate the vertical
face of a building. Therefore, we will sustain the rejection of claim 9.

Claim 12
Appellants next contend that none of the references discloses or
suggests circumferential flange located along the elongated shaft at a
spacing to the proximal portion comprising the head of the shaft, as recited
by claim 12. Ap. Br. 19. The Examiner responds that these limitations are
satisfied by a flexible film that could stretch over the circumferential flanges
26 spaced from the head of the shaft 22, as disclosed by Ippolito. Ans. 4-5
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and 19. In response, Appellants merely point out that the flexible sheet of
the prior art may not be stretchable. Reply Br. 8. In view of the reasonable
case of prima facie obviousness made by the Examiner and the absence of
persuasive evidence supporting nonequivalence of the structures,
2
we again
agree with the Examiner and sustain the rejection of claim 12.

Claim 21
Appellants initially contend that the combination of references
asserted by the Examiner fails to disclose or suggest the subject matter of
claim 21 without providing a detailed explanation or persuasive evidence in
support of the alleged error. App. Br. 21. However, a statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii). In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Therefore, such bald allegations are not persuasive of error.
Appellants further contend that the Examiner has not provided a
proper analysis of claim 21 under 35 U.S.C. § 112 ¶ 6. Ap. Br. 21. We
disagree. The Examiner by applying the references (Ans. 6) in effect has
identified the first and second means for applying respective design elements
to an area of a lawn as the first and second lawn stencils and the third means

2
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984).
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for anchoring each of the first and second means as the plurality of stakes.
See Ans. 20. This characterization is reasonable and consistent with
Appellants’ Summary of the Claimed Subject Matter describing that “[t]he
first and second ‘means’ correspond to lawn stencils 14, 16” and “[t]he third
‘means’ corresponds to a plurality of stakes 22.” App. Br. 6. Having shifted
the burden to Appellants to identify error in the Examiner’s interpretation of
claim 21, Appellants reply that “the stencil of Ogorzalek cannot be
characterized as ‘a means for applying a design element to an area of a
lawn.’” Reply. Br. 9. However, in so far as Appellants describe the means
for applying a design element as equivalent to the disclosed lawn stencils
(App. Br. 6) and do not otherwise provide persuasive evidence of why the
disputed characterization by the Examiner is improper, we find Appellants’
arguments to be without merit.
Accordingly, for the reasons presented supra, we sustain the
Examiner’s rejection of claims 1, 6, 9-12, and 21under 35 U.S.C. § 103(a).

2. 35 U.S.C. § 103(a) Rejection over Ogorzalek, Ippolito,
Schlundt, and Summer
Claims 2 and 3
Appellants contend that Ogorzalek teaches away from use of a planar
sheet of flexible film because it instead requires a stiff template. App. Br.
15-16. The Examiner responds that the modification of Ogorzalek to be
used on a lawn rather than a building would suggest the use of a flexible film
as taught by Summer that is compatible with the intended surface on which
the stencil is to be used. Ans. 17. We agree with the Examiner.
Furthermore, we are not persuaded that Ogorzalek teaches away from the
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disputed combination. Merely disclosing a rigid stencil suited for
attachment to the face of a building does not dissuade the use of a flexible
stencil on an alternative surface such as a lawn. As discussed above with
respect to claim 1, Ogorzalek teaches a rigid stencil to accommodate
applying a design to the face of a building. There is no indication that such a
stiff template is desirable, either exclusively or otherwise, when applying a
design to a lawn as in Appellants’ claims and therefore does not teach away
from the combination. Accordingly, we will sustain the rejections of claims
2 and 3.

Claim 4
Appellants contend that modifying the stencils in Ogorzalek to have
the claimed dimensions of approximately 5 feet square “would make it very
difficult (and certainly impractical) to apply the stencil uniformly to a
surface.” App. Br. 16. The Examiner responds that the modifications are
obvious so as to make the stencils more compatible with use on a different
surface (e.g., a lawn.) Ans. 18. We agree with the Examiner. Furthermore,
Appellants have not provided persuasive evidence that the claimed size or
other properties such as flexibility are critical (i.e., unexpected results.) See,
e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) ( Appellants must
show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.)
Still further, the size of the stencil alone does not confer patentable
distinctiveness over the stencils of Ogorzalek. The Federal Circuit has held
that, where the only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and a device having
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the claimed relative dimensions would not perform differently than the prior
art device, the claimed device was not patentably distinct from the prior art
device. Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984).
Therefore, we will sustain the rejection of claim 4.

Claims 7, 8, and 15
Appellants contend the textual color designation appearing at the top
of the stencil members of Summer are not equivalent to the claimed
indication of orientation. App. Br. 17-18. The Examiner responds that “one
having ordinary skill in the art would look at the stencils of Summer and,
based upon the orientation of the text, would know which portion of the
stencil was the top.” Ans. 18. We agree with the Examiner. In contrast,
Appellants have not provided persuasive evidence supporting a conclusion
otherwise, i.e., that the text appearing at the top of Summer’s stencils would
not function as an indication of proper orientation. Therefore, we will
sustain the rejection of claims 7, 8, and 15.

Claims 17 and 19
Appellants’ contention of error is the same as asserted in connection
with claims 9 and 12, respectively. App. Br. 18-19. For the same reasons
stated above, we are not persuaded by Appellants’ contentions and will
sustain the rejection of claims 17 and 19.

Claim 13
Appellants contend that the applied prior art fails to disclose or
suggest a stencil that is "configured to stretch over the circumferential flange
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of a stake,” as recited by claim 13. App. Br. 19-20. The Examiner responds
that Summer discloses or suggest these features. Ans. 10 and 19. We agree
that the sheet plastic material disclosed by Summer would have suggested to
one skilled in the art that the stencil material would be resilient to enable it
to be stretched over a stake. Therefore, we will sustain the rejection of claim
13.

Claims 14 and 16-18
Appellants contend that selection of a container of a particular
claimed dimensional size for holding the remaining components of the kit is
not obvious. App. Br. 20-21. The Examiner responds that one of ordinary
skill in the art would have recognized that the interior of the container must
accommodate storage of the elements to be placed in the container while
also being aware of the desirability of making the container a size that is
easily transported. Ans. 19. Absent persuasive evidence that the size of the
container is critical or provides unexpected results, we agree with the
Examiner that claimed interior dimensions would have been obvious.
Therefore, we will sustain the rejection of claims 14 and 16-18.

Claim 22
Appellants do not argue claim 22 separately from that of claim 21
such that the claims stand or fall together. Since we find Appellants’
arguments of error in connection with claim 21 to be unpersuasive, we
likewise find no error in connection with the rejection of claim 22.
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Accordingly, for the reasons presented supra, we sustain the
Examiner’s rejection of claims 2-4, 7-8, 13-19, and 22 under 35 U.S.C.
§ 103(a).

CONCLUSIONS
On the record before us we conclude that the Examiner has not erred
in rejecting claims 1, 6, 9-12, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Ogorzalek, Ippolito, and Schlundt or in rejecting claims 2-
4, 7-8, 13-19, and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Ogorzalek, Ippolito, Schlundt, and Summer.

DECISION
The decision of the Examiner to reject claims 1-4, 6-19, 21, and 22 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

ELD