Ex Parte Lanci

Board of Patent Appeals and Interferences

Sep 4, 2008

10265498 (B.P.A.I. Sep. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER LANCI
____________

Appeal 2008-1713
Application 10/265,498
Technology Center 3600
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Decided: September 4, 2008
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claim 4. We have jurisdiction under 35 U.S.C. § 6(b)(2002). We
affirm.
Appellant claims an improved carousel type display (Specification 2).
Claim 4, reproduced below with formatting added, is the sole claim on appeal.
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4. In a carousel display device, including a relatively
fixed base, a relatively rotatable turntable supported by
said base, means disposed within said base for driving
said turntable, said turntable having a generally circular
periphery, a plurality of sockets arranged along said
periphery, and a plurality of display elements depending
from said periphery, the improvement comprising:
a representation of a train of arcuate configuration
supported upon said turntable at said periphery, and
rotating therewith,
said base including a vertically-oriented non-
rotating shaft extending through said turntable, an upper
end of which forms a cap, said cap simulating a building
structure;
whereby during rotation of said turntable, said
representation of said train rotates about said building
structure.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejection:
Johnson US 1,711,790 May 7, 1929
Cottrell US 3,191,930 June 29, 1965

Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Cottrell in view of Johnson.

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ISSUE
The issue before us is whether the Examiner erred in rejecting claim 4 as
unpatentable over Cottrell in view of Johnson. The issue turns on whether the
references are properly combined and whether the combination teaches a
representation of a train and a cap as required by claim 4.
Rather than repeat the arguments of Appellant or the Examiner, we make
reference to the Brief and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs
have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).

FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).

1. Cottrell teaches a carousel mechanism which includes a hollow vertical shaft
mounted in a fixed position to a bottom plate. A canopy 15 extends from the
shaft to an edge piece 16. Lights 25 are attached to the top of the fixed shaft
(Cottrell, col. 2, 11-18 and Figure 1).
2. An upper disk or ceiling plate 12 and a lower disk or platform 13 joined by
columns 14 are rotatably mounted on the vertical shaft. A number of
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figurines 36 are mounted on push rods 35 in the space between the upper
disk 12 and lower disk 13 (Cottrell, col. 2, ll. 11-15). The figurines are
shown as horses in Figure 1 of Cottrell.
3. Johnson teaches a display device adapted for displaying representations of
moving vehicles, such as representations of trains traveling on different
tracks around a common axis (Johnson, 1:1-6).
4. Circular bands 49-52 with display matter in the form of trains are
respectively independently removably mounted to permit each circular band
to independently rotate in either a clockwise or counter-clockwise direction.
The circular bands diminish in diameter from the bottom one to the top one
as shown in Figure 1 to give the impression of each train traveling to the
right or left at a speed depending on the size of its respective circular band
(Johnson, 2:5-43).

PRINCIPLES OF LAW
“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). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of ordinary skill in the art, and (4)
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where in evidence, so-called secondary considerations. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739,
and reaffirmed principles based on its precedent 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.” Id. The Court explained:
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. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements according to
their established functions.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed.
Cir. 1984). Only if this initial burden is met does the burden of coming forward
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with evidence or argument shift to the appellant. Id. at 1445. See also Piasecki,
745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a
whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445; Piasecki, 745 F.2d at 1472.
ANALYSIS
The Appellant argues that neither Cottrell nor Johnson teaches a cap
simulating a building structure as claimed. The Appellant appears to misread the
Examiner’s rejection to rely solely on canopy 15 of Cottrell as the cap (Br. 4). In
fact, the Examiner found that Cottrell discloses cap 25 fixed to the end of fixed
shaft 10, which does not rotate relative to the base. The Examiner further found
that cap 25 is a lighted dome, which constitutes a simulation of a building structure
(Answer 3). The Examiner also found that part 25 is fixed to the shaft of the
assembly and in combination with part 15 depicts a building structure (Answer 4).
We find no error in the Examiner’s characterization of parts 25 and 15 of Cottrell,
which we find to meet the required cap limitation. The Appellant further argues
that Johnson does not teach a cap as claimed (Br. 4), which we do not find
persuasive, because the Examiner relies appropriately on Cottrell as teaching the
cap limitation.
The Appellant also argues that there is no place to mount a representation of
a train or any other decorative item on part 12 of Cottrell, which the Examiner
relies on as the claimed turntable (Br. 5). The Examiner correctly notes that claim
4 requires only “a representation of a train of arcuate configuration supported upon
said turntable at said periphery, and rotating therewith,” and nowhere requires the
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elements to depend from supports upon the turntable. The Examiner argues that
replacing the carousel horses 36 of Cottrell with a train, like that of Johnson, meets
the disputed claim limitation, since the horses of Cottrell depend from the
periphery by posts 14 and are supported on the turntable by posts 14. We agree
with the Examiner. Appellant argues that Cottrell has no corresponding vertical
surface to those used in Johnson to display the representations of trains (Br. 5).
We disagree. Carousel 12 of Cottrell as shown in Figure 1 appears to have a
vertical surface similar to the circular bands 49-52 of Johnson. We see no reason
why one of skill in the art would be unable to paint a train on the periphery of
turntable 12 of Cottrell as it is on circular bands 49, 50, 51, and 52 of Johnson,
which also would meet the disputed claim limitation.
The Appellant further argues that the holes where the posts (14) are
connected to the upper and lower discs do not constitute a socket, which he argues
is a recess adapted to engage a correspondingly shaped object (Br. 5). The
Examiner found that, given the definition by the Appellant, the hole where posts 14
attach is a recess, since both the post and the hole are round in shape and the post
engages the hole (Answer 5). We agree with the Examiner.
Appellant also argues that the combination of Cottrell and Johnson does
not suggest a centrally-disposed train station, nor does Johnson suggest his
representation of a train rotating about such a station (Br. 6). This argument is
not commensurate with the scope of the claim, which requires only that the train
rotates about the building structure simulated by the cap. Claim 4 does not require
a train station.
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Appellant argues that Cottrell is not capable of the modification required so
as to suggest obviousness when taken with Johnson (Br. 5-6). To the extent
the Appellant is arguing that it would not be obvious to combine Cottrell with
Johnson, we disagree.
One of ordinary skill in the art would have been able to modify Cottrell to
replace the carousel horses 36 of Cottrell with a train, like that of Johnson, using
methods known in the art at the time the invention was made. Moreover, each of
the elements of Cottrell and Johnson combined by the Examiner performs the same
function when combined as it does in the prior art. Thus, such a combination
would have yielded predictable results. See Sakraida v. AG Pro, Inc., 425 U.S.
273, 282 (1976).
Claim 4 therefore is a combination which only unites old elements with
no change in their respective functions and which yields predictable results.
Therefore, the claimed subject matter likely would have been obvious under KSR.
In addition, the train of Johnson has been used to improve the display device
disclosed therein. The Appellant has provided no persuasive evidence that using
the train of Johnson with the carousel mechanism of Cottrell is beyond the skill of
one of ordinary skill in the art. Under those circumstances, the Examiner did not
err in holding that it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify Cottrell by decorating an ornate
element in the form of a representation of a train to enhance the aesthetic value of
the apparatus to suit a user or customer of the apparatus (Answer 4).
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The Appellant therefore has not shown error in the Examiner’s rejection of
claim 4.

CONCLUSIONS
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Cottrell in
view of Johnson.

DECISION
The decision of the Examiner to reject claim 4 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED

JRG

Charles E. Temko
22 Marion Road
Westport, CT 06880