Ex Parte Loria

Board of Patent Appeals and Interferences

Nov 23, 2004

09808122 (B.P.A.I. Nov. 23, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD LORIA
____________
Appeal No. 2004-2114
Application No. 09/808,122
____________
ON BRIEF
____________
Before STAAB, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 7,
which are all of the claims pending in this application.

Appeal No. 2004-2114
Application No. 09/808,122
Page 2
The appellant's invention relates to a cranial nerve clock and watch
(specification, p. 2). A copy of the claims under appeal is set forth in the appendix to
the appellant's brief.
The prior art
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Crow et al. (Crow) D365,287 Dec. 19, 1995
Fontaine D378,741 Apr. 8, 1997
The rejections
Claims 1 to 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Fontaine or Crow.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 10, mailed 10/2/03) for the examiner's complete reasoning in support of the
rejections, and to the brief (Paper No. 9, filed 7/1/03) for the appellant's arguments
thereagainst.
Appeal No. 2004-2114
Application No. 09/808,122
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention is a clock or watch having symbols related to the cranial
nerves at the hourly positions on the clock or watch.
The examiner has rejected the claims under 35 U.S.C. § 103 as being
unpatentable over either Fontaine or Crow. In support of the rejection, the examiner
states:
. . .Both references teach placement of symbols corresponding to the
positions of the hour indications around the face of the dial of a clock, as
claimed by the applicant.
. . . In view of the fact that the relationship in applicant’s claimed
invention between the twelve symbols and the dial is the same as that in
the two references, i.e.[,] the symbols correspond to each of the hourly
markers in the same manner, the difference exists only in the specific
symbols used to denote the hour and thus, such symbols are of no
patentable significance [answer at pages 3 to 4].
We agree with the examiner that Crow and Fontaine each disclose a watch
having symbols at the hour positions on the watch and that the only difference between
the instant invention and the Crow and Fontaine watches is the symbols placed at the
hour positions i.e. the content of the printed matter placed on the watch.
Appeal No. 2004-2114
Application No. 09/808,122
Page 4
Our reviewing court has stated that where the differences between the claimed
invention and the prior art resides in printed matter, the critical question is whether there
exists any new and unobvious functional relationship between the printed matter and
the substrate. In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d 1862, 1864 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983)
We agree with the examiner that the functional relationship of appellant’s
symbols to the watch or clock is not unobvious. Both cited references disclose a watch
having symbols which, like the appellant’s symbols, are disposed at the hour positions
on the watch. Therefore, we will sustain the rejection of the examiner.
Appellant argues that the symbols in the appellant’s invention do not, like the
symbols in Crow and Fontaine, just occupy the twelve hourly positions on the face of
the watch but, because they relate to the cranial nerves, the symbols are an educational
tool. While it may be true that the symbols are an educational tool, the functional
relationship between the symbols and the watch or clock is the same functional
relationship as depicted in the references, i.e., the positions of the symbols correspond
to the hours on the clock or watch. It is the functional relationship of the symbols to the
clock or watch which is critical in a determination of patentability.
Appellant also argues that there is no motivation to place appellant’s symbols of
cranial nerves on a watch or clock. This argument is not persuasive because as we
stated above, it is not the content of the printed matter (cranial nerve symbols) on which
Appeal No. 2004-2114
Application No. 09/808,122
Page 5
patentability is determined but the functional relationship of the printed matter to the
watch or clock. The functional relationship is shown in the prior art references.
Appellant also argues that the mere assertion of design choice is improper and
fails to establish a prima facie case of obviousness. While the appellant may be correct
that the provision of appellant’s symbols which relate to the cranial nerves is not a mere
matter of design, the symbols nonetheless can not patentably distinguish the claim
because, as we have stated above, the functional relationship between appellant’s
symbols and the clock or watch face is not nonobvious.
In view of the foregoing, we will sustain the examiner’s rejection of claim 1. We
will also sustain the rejection of claims 1 to 6 as these claims stand or fall with claim 1
(brief at page 3)
Appeal No. 2004-2114
Application No. 09/808,122
Page 6
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL, E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER, D. BAHR )
Administrative Patent Judge )
MEC/jlb
Appeal No. 2004-2114
Application No. 09/808,122
Page 7
C/O Patrick R. Delaney
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