Ex Parte Mannies et alDownload PDFBoard of Patent Appeals and InterferencesFeb 10, 200911244982 (B.P.A.I. Feb. 10, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte GARY MANNIES and MICHAEL HOWELL __________ Appeal 2008-5391 Application 11/244,982 Technology Center 3700 __________ Decided:1 February 10, 2009 __________ Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and FRANCISCO C. PRATS, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a golf yardage guide. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-5391 Application 11/244,982 We affirm. STATEMENT OF THE CASE Claims 1-16 stand rejected and are on appeal (App. Br. 3). Claims 1 10 are representative and read as follows: 1. A golf yardage guide comprising: a plurality of pages coupled together, wherein a portion of the plurality of pages display advertisements; and removably securable pages configured to be at least one of removed from and added to the plurality of pages coupled together, wherein each of the removably securable pages is a single piece, and wherein at least one binding aperture and at least one slit are formed directly in the single piece. 10. A golf yardage guide comprising: a plurality of pages coupled together with a binding, wherein each page displays one of yardage of golf holes on a golf course, information associated with the golf course and any combination thereof; and at least one removably securable page comprising an open slit; wherein the at least one removably securable page is coupled to the binding by use of the slit, and wherein the at least one removably securable page is a single piece. The Examiner cites the following documents as evidence of unpatentability: Robinson US 6,296,579 B1 Oct. 2, 2001 Moor US 6,390,713 B1 May 21, 2002 Tims US 6,773,195 B2 Aug. 10, 2004 The following rejections are before us for review: 2 Appeal 2008-5391 Application 11/244,982 Claims 1, 2, and 7-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tims in view of Moor (Ans. 3-4). Claims 3-6 and 10-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tims in view of Moor and Robinson (Ans. 4-5). OBVIOUSNESS -- TIMS AND MOOR ISSUE The Examiner finds that “Tims discloses a notebook (10) comprising a plurality of pages (14) that are coupled together by a binding means (12)” (Ans. 3). The Examiner concludes that “it would have been obvious to one of ordinary skill in the art to provide the pages of Tims with advertisement indicia thereon in order to advertise a particular manufacturer” (id.). The Examiner further finds that any differences between the indicia on the pages of the claimed golf guide and the indicia on the pages of Tims’ notebook “relate to the meaning and information conveyed by the printed matter and such differences are not considered to be patentable differences unless they define a new and unexpected relationship between the indicia and the substrate” (id. (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983))). The Examiner relies on the combination of Tims and Moor to meet the limitation in claim 1 requiring the golf guide to have single-piece removably securable pages with at least one binding aperture and one slit (id.). Specifically, the Examiner finds that Tims teaches “that it is well known in the art of notebooks to provide the pages (14) therein with binding apertures (note Figure 2) in order to secure them to the binding means (12),” and that Moor teaches that it is “well known in the art of notebooks to provide apertures with slits (124) so that the members (100') may be removably secured to the notebook” (id.). Based on these teachings, the 3 Appeal 2008-5391 Application 11/244,982 Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art to provide the apertures in the pages of Tims with slits in order to allow the pages to be removably secured to the notebook” (id.). Appellants argue that the Examiner has failed to make a prima facie case of obviousness because the cited combination of references fails to meet all of the claimed limitations (App. Br. 10). Specifically, Appellants argue, the slit 124 shown in Moor’s Figure 8 is formed in an adapter, not the paper page (id. at 10-11). Thus, Appellants urge, the paper is not bound directly to the wire coil of the notebook but is instead bound to the adapter by pliable prongs 110 (id. at 11). Moreover, Appellants argue, Moor’s paper/adapter combination fails to meet claim 1’s requirement that each removable page be “a single piece” (id.) Appellants further argue that the “references cannot be considered collectively until the Examiner points to some motivation to combine those references” (id.). Moreover, Appellants urge, one of ordinary skill would not have been prompted to provide the pages of Tims’ notebook with slits for removable securability, given Tims’ disclosure of a notebook page with a perforated tear line for easy page removal (id. at 13). Rather, Appellants argue, “Tims actually teaches away from slits by including the tear line 46 and there is no reason or motivation for including slits in addition to a tear line on a notebook page” (id.). Given the references’ teachings, Appellants reason, the Examiner’s conclusion of obviousness is based on improper hindsight reasoning (id. at 13-14). Appellants do not argue any of the claims subject to this ground of rejection separately. We select claim 1 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). 4 Appeal 2008-5391 Application 11/244,982 In view of the positions advanced by Appellants and the Examiner, the issue with respect to this rejection is whether the Examiner has made a prima facie case that, based on teachings from the prior art in the absence of hindsight, an ordinary artisan would have considered a guide having all of the elements recited in claim 1 obvious in view of Tims and Moor. FINDINGS OF FACT 1. Tims discloses “a notebook with a portfolio cover which can store various loose items” (Tims, col. 1, ll. 18-19). Figure 3 of Tims, reproduced below, “is a top view of the notebook . . . with the cover in a partially open position” (id. at col. 1, ll. 39-40): Figure 3 shows “sheet[s] of paper 14 [which] may include a plurality of writing guidelines located thereon, and may also include a set of three 5 Appeal 2008-5391 Application 11/244,982 spaced holes 44 such that each of the sheets 14 can be attached to a standard three-ring binder, prong mechanism, or the like” (Tims, col. 2, ll. 42-46). 2. Tims discloses that “[e]ach of the sheets 14 may also include a perforation or tear line 46 extending along the inner longitudinal edge of the sheets 14 adjacent to the binding mechanisms 12 such that each sheet 14 can be torn along the tear line 46 and thereby be separated from the notebook 10” (Tims, col. 2, ll. 46-51). 3. Tims discloses that “[t]he binding mechanism 12 may be a coil or spiral binding mechanism or a double wire binding mechanism (together a ‘wire binding mechanism’) which enables the sheets 14 captured therein to travel entirely or nearly entirely around the binding mechanism 12” (Tims, col. 1, ll. 55-60). 4. Moor discloses “an adapter for a coil bound notebook, and more particularly, to an adapter that can receive loose leaf papers and couple the papers to a coil bound notebook” (Moor, col. 1, ll. 3-5). 5. Moor discloses that, while they are useful implements, “with most existing coil bound notebook[s], once the papers are removed from the coil binding component, the useful life of the notebook is exhausted, as there is no easy, effective way to add paper to the coil binding mechanism” (Moor, col. 1, ll. 26-30). Accordingly, Moor points out, “there is a need for a[n] adapter that can quickly and easily couple loose leaf paper to the binding coil of a coil bound notebook” (id. at col. 1, ll. 30-32). 6. Figure 8 of Moor, reproduced below, “is a top view of an alternate embodiment of the adapter” (Moor, col. 1, ll. 64-65): 6 Appeal 2008-5391 Application 11/244,982 Figure 8 shows: The adapter 100' [which] may include a plurality of openings 120 located adjacent an inner edge 122 of the strip of material 108', each opening 120 being shaped and located to receive at least one turn of a coil. The adapter 100' includes a plurality of slits 124, with each slit extending from the inner edge 122 of the adapter 100' to one of the openings 120 to enable a turn of a coil to be removably slid into, and received in, the associated opening 120. (Moor, col. 4, ll. 48-52.) 7 Appeal 2008-5391 Application 11/244,982 7. Moor’s Figure 8 also shows “prong components 110a, 110b that can be splayed in opposite directions to couple a paper 102 to the adapter 100'” (Moor, col. 4, ll. 61-63). PRINCIPLES OF LAW In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. “[The Examiner] can satisfy this burden only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted, bracketed material in original). Thus, as the Supreme Court pointed out in KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Rather, as the Court stated: [I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does . . . because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. Id. (emphasis added); see also 127 S. Ct. 1727 at 1740-41 (requiring a determination of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”) (emphasis added). 8 Appeal 2008-5391 Application 11/244,982 While holding that some rationale must be supplied for a conclusion of obviousness, the Court nonetheless rejected a “rigid approach” to the obviousness question, and instead emphasized that “[t]hroughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach . . . .” Id. at 1739. The Court also rejected the use of “rigid and mandatory formulas” as being “incompatible with our precedents.” Id. at 1741; see also 1742-43 (“Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”). The Court thus reasoned that the analysis under 35 U.S.C. § 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 1741. The Court further advised that “[a] person of ordinary skill is . . . a person of ordinary creativity, not an automaton.” Id. at 1742. Thus, “when the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant inquiry is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 1740. Applying these concepts, the Court ultimately reaffirmed “that when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Id. (quoting Sakraida v. AG Pro, Inc., 425 U.S. 273 (1976)). With respect to limitations directed to printed matter, in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004), our reviewing court held that 9 Appeal 2008-5391 Application 11/244,982 combining, in kit form, a known product and printed instructions for using the product did not render the product patentable, despite the fact that the instructions recited a novel and unobvious process. The court explicitly reaffirmed the principle that, when “printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. (quoting In re Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983). ANALYSIS Appellants’ arguments do not persuade us that the Examiner failed to make a prima facie case that, based on teachings from the prior art in the absence of hindsight, an ordinary artisan would have considered a guide having all of the elements recited in claim 1 obvious in view of Tims and Moor. We note that Moor discloses using slits in an adapter that is attached to a paper page, rather than placing slits in the page itself (FF 6, 7). However, in obviousness determinations, the analysis of prior art is not limited to the precise teachings in the references, but must take account of what a person of ordinary skill in the art would reasonably infer from those disclosures. See KSR, 127 S. Ct. at 1741. In the instant case, Moor would have advised one of ordinary skill in the art that it was desirable to include removably securable pages in a coil bound notebook (FF 4-5). Based on Moor’s teaching that its page adapters are rendered removably securable to coil bound notebooks by placing slits adjacent to the binding apertures, one of ordinary skill in the art, being a person of ordinary creativity and common sense, see KSR, 127 S. Ct. at 10 Appeal 2008-5391 Application 11/244,982 1742-43, would have reasonably inferred that placing slits in the actual pages of the note book would also render them removably securable. Thus, given Moors’ disclosure of the desirability of removable securable pages in coil bound notebooks, we agree with the Examiner that a person of ordinary skill would have been prompted to include Moor’s slits in pages of a coil bound notebook, such as that disclosed by Tims, along with a binding aperture, as recited in Appellants’ claim 1. Given that this impetus for practicing the claimed subject matter is based solely on the prior art, we do not agree with Appellants that the rejection is improperly based on hindsight. We also note that Tims discloses that the pages of its coil bound notebook include a tear line to allow the pages to be torn easily from the binder (FF 1-2). However, given Moor’s disclosure of the desirability rendering the pages of a coil bound notebook removably securable (FF 5), we agree with the Examiner that a person of ordinary skill in the art would have reasoned that it would be desirable eschew Tims’ tear line in favor of slits adjacent to the binding aperture, when following Moor’s teachings. We are therefore not persuaded that Tims teaches away from the claimed subject matter. In sum, we agree with the Examiner that, based on teachings from the prior art in the absence of hindsight, an ordinary artisan would have considered a guide having all of the elements recited in claim 1 obvious in view of Tims and Moor. We therefore affirm the Examiner’s obviousness rejection of claim 1 over those references. Claims 2 and 7-9 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). 11 Appeal 2008-5391 Application 11/244,982 OBVIOUSNESS -- TIMS, MOOR, AND ROBINSON Claims 3-6 and 10-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tims in view of Moor and Robinson (Ans. 4-5). Appellants do not separately argue any of the claims subject to this ground of appeal. We select claim 10 as representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner relies on the disclosures of Tims and Moor discussed above, and cites Robinson to meet the limitations in claim 10 requiring the guide to contain information associated with a golf course (Ans. 4). The Examiner reasons that it “would have been obvious to one of ordinary skill in the art to provide the pages of Tims as modified by Moor et al. with golf information thereon in order to provide the golfer with easy access to information on the golf course” (id.). Appellants argue that Robinson fails to remedy the deficiencies of Tim and Moor with respect to the slits and apertures in the pages of the guide (App. Br. 14-15). Appellants also urge that because Robinson uses multiple representations of each green on a course, “[i]f the pages of Robinson were removably securable, th[e]n in a tournament or competitive match, the pages could have been replaced rather than include multiple representations. The prior art clearly teaches away from the proposed modification or combination by the Examiner” (id. at 16). We are not persuaded by these arguments. For the reasons discussed above with respect to claim 1, we agree with the Examiner that a person of ordinary skill would have considered it obvious to include slits in pages of a coil bound notebook to render the pages removably securable, as recited in claim 10. 12 Appeal 2008-5391 Application 11/244,982 Regarding the suitability of placing golf information on the pages of the book, as noted above, when “printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Ngai, 367 F.3d at 1339. Appellants’ argument regarding the motivation for placing golf information in the notebook is therefore directed to a limitation that lacks any patentable weight. In sum, we affirm the Examiner’s rejection of claim 10 as being obvious over Tims, Moor, and Robinson. Because they were not argued separately, claims 3-6 and 11-16 fall with claim 10. See 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the Examiner’s rejection of claims 1, 2, and 7-9 under 35 U.S.C. § 103(a) as being unpatentable over Tims in view of Moor. We also affirm the Examiner’s rejection of claims 3-6 and 10-16 under 35 U.S.C. § 103(a) as being unpatentable over Tims in view of Moor and Robinson. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 13 Appeal 2008-5391 Application 11/244,982 dm SCHMEISER OLSEN & WATTS 18 E UNIVERSITY DRIVE SUITE #101 MESA, AZ 85201 14 Copy with citationCopy as parenthetical citation