Ex Parte Mannies et al

Board of Patent Appeals and Interferences

Feb 10, 2009

11244982 (B.P.A.I. Feb. 10, 2009)

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