Ex Parte Morgan

Board of Patent Appeals and Interferences

Feb 27, 2006

09755519 (B.P.A.I. Feb. 27, 2006)

- 1 -
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and is not binding precedent of the Board.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. 14

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte TERENCE G. MORGAN

Appeal No. 2003-1234
Application 09/755,5191

ON BRIEF

Before BARRETT, BLANKENSHIP, and MacDONALD, Administrative Patent
Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the final rejection of claim 1.
We affirm.

1 Application for patent filed January 18, 2001, entitled
"Lecture Note-Taking Method."
Appeal No. 2003-1234
Application 09/755,519

- 2 -
BACKGROUND
The invention relates to a method of note taking in a
chemistry lecture in which the note taker uses a stamp containing
the structure of a benzene ring instead of drawing the ring.
Claim 1 is reproduced below.
1. In note taking by a student attendee at a lecture
in the field of chemistry during which there is frequent
mention of a benzene ring of known molecular-illustrated
structure and an inscribing of said molecular-illustrated
structure during said note taking at selected mentions of
said benzene ring, an improved method of making inscriptions
of said molecular-illustrated structure of said benzene ring
in conjunction with note taking commentary comprising the
steps of:

A. using on a support a paper substrate having a writing
surface in facing relation to a student lecture
attendee;

B. listening of said student lecture attendee to
commentary of a lecturer for mention of a benzene ring;

C. impressing in response to such mention with one hand by
said student lecture attendee using a stamp of a
transferred circular circumferentially spaced apart
arrangement of carbon atoms identified by the letter
"C" and in the spaces between the letters "C" having
bond lines indicating electron sharing which consists
of alternating double and single lines onto said paper
substrate writing surface; and

D. handwriting lecture commentary onto said paper
substrate writing surface with the other hand by said
student lecture attendee adjacent a said benzene ring
transferred molecular-illustrated structure;

whereby note taking is facilitated by the coordinated
use of the stamping and handwriting occupied hands of said
student lecture attendee.

Appeal No. 2003-1234
Application 09/755,519

- 3 -
THE REFERENCES

The examiner relies on the following references:

Bissonet 3,839,960 October 8, 1974
Eckels 4,452,142 June 5, 1984

THE REJECTION
We refer to the final rejection (Paper No. 7) (pages
referred to as "FR__") and the examiner's answer (Paper No. 10)
(pages referred to as "EA__") for a statement of the rejection,
and to the appeal brief (Paper No. 9) (pages referred to as
"Br__") and reply brief (Paper No. 11) (pages referred to as
"RBr__") for a statement of appellant's arguments thereagainst.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bissonet and Eckels. The examiner finds that
"Bissonet teaches a method of taking notes in which a student
attending a lecture in which there are numerous occasions in
which one has to write down and print the same data repeatedly
can use a stamp to easily print that data. See column 1,
lines 6-47 and Figures 1-2 and 16-17 in particular" (FR2). The
examiner finds that is inherent in the process of taking notes to
listen and make notes and concludes that "it would have been
obvious to one of ordinary skill in the art to stamp those
data/symbols in response to the lecturer's comments using a hand
stamp as taught by Bissonet in their notes to facilitate quick
and neat note-taking" (FR2). The examiner finds that Bissonet
Appeal No. 2003-1234
Application 09/755,519

- 4 -
does not teach a benzene ring stamp, but concludes that it would
have been obvious "to use any desired stamp design that pertains
to any desired topic of lectures in which the student attends, as
it involves simply an obvious matter of design choice" (FR3).
The examiner finds that Eckels teaches that the use of a stamp of
a benzene ring for repeatedly stamping the symbol was well known
in the art. "Therefore, it would have been obvious to one of
ordinary skill in the art for a student in a chemistry class to
use a chemical stamp as claimed to facilitate taking notes."
(FR3.) The examiner finds that although Bissonet is silent with
respect to holding the stamp in one hand while holding a writing
instrument in the other, Eckels teaches using one hand to perform
one function (pointing to a location) while the other hand is
used to stamp the indicia and concludes that it would have been
obvious "to use the hand stamp in one hand while taking notes
with the other hand to more quickly and efficiently record notes
from the lecture" (FR3).
Appellant filed a declaration of commercial success under
35 U.S.C. § 132 (attachment to Paper No. 4), which contains
sample notes using the stamp, and a page of endorsements and
quotes from professors, teachers, and students. The examiner
found the declaration to be unpersuasive because: (1) the
evidence is opinion evidence and lacks factual support, citing
In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992),
Appeal No. 2003-1234
Application 09/755,519

- 5 -
and does not necessarily outweigh the evidence of obviousness
(FR4); and (2) appellant has failed to establish a nexus between
the merits of the claimed invention and the objective evidence
because "the quotes and endorsements ... are predominantly
directed to benefits of the hand stamp per se and not necessarily
the particular note taking method (i.e., stamping with one hand
while writing with the other)" (FR4).

DISCUSSION
The claim is to a use of a known manufacture
Initially, we note that appellant acknowledges that Eckels
was known prior art (specification, page 1). Eckels teaches a
benzene ring stamp in the shape of hexagon (Figs. 7 and 8;
col. 3, lines 28-30). The benzene ring in claim 1 is more
specific than the hexagon shape benzene ring in Figs. 7 and 8 of
Eckels because it recites the letter "C" at each point and
alternating double and single bond lines. However, appellant
does not contest that it would have been obvious to represent the
benzene ring in Eckels with a more detailed ring.2 Since the
benzene stamp itself would have been obvious, appellant seeks to
patent a "new use of a known ... manufacture" as a "process"

2 The structural formula of benzene is often represented as
a circle drawn inside a hexagon, where the hexagon represents the
six C-C bonds and the circle represents the three decentralized
electron pairs.
Appeal No. 2003-1234
Application 09/755,519

- 6 -
under 35 U.S.C. § 100(b). The claim can only be infringed by
practicing the method. The issue is whether the claimed method
of using a known stamp would have been obvious.

Appellant's arguments
Appellant argues that Bissonet does not teach a method of
note taking during a lecture during which there are numerous
occasions when it would be advantageous to use a stamp, as found
by the examiner, but teaches that the printing stamp and pad are
normally held inoperatively in a cavity to provide a flat writing
surface (Br4). It is argued that "the combined activity of
writing and stamping is not contemplated by Bissonet since while
the paper sheet is being used for writing thereon, the printing
stamp and pad are in their storage cavity" (Br4). It is also
argued that the examiner has not considered claim limitations B,
C, and D (Br4-5). Appellant notes that Bissonet discloses a
stamp for identification or approval, quoting from column 1,
lines 8, 9-12, 19, and 20, and argues that "[n]one of the
foregoing text is in response to the lecturer's comments nor does
it have anything whatsoever to do with record[ing] notes from the
lecture" (RBr2). Appellant refers to steps B, C, and D (RBr2).
Appellant argues that the examiner improperly failed to
consider the declaration. It is argued that the majority in
Beattie did not fault the declaration because it was based on
Appeal No. 2003-1234
Application 09/755,519

- 7 -
"opinion," but, because weighed against a very strong prima facie
case of obviousness, it did not carry the day (RBr2). It is also
argued (RBr2) that there is no commentary in praise of the stamp
per se, but only praise of the note-taking method using the
stamp, such as the comments "[a] handy way to take notes ...,"
"a timesaver," "... efficiency, neatness and ingenuity to the
classroom," and "[c]lever and useful indeed--I'm surprised my
colleagues or myself never thought of it!"

Analysis
Bissonet recognizes that "[t]here are numerous occasions in
which one has to repeatedly write down or print the same data,
such as his or her own identification" (col. 1, lines 6-8) and
provides a printing stamp and inking pad to be carried along and
used to readily stamp predetermined data (col. 1, lines 16-20).
We agree with appellant that Bissonet does not disclose or
suggest the combined action of writing and stamping during a
lecture, as found by the examiner. Although the detachable stamp
in Figs. 16 and 17 could be used during a lecture, there is no
teaching or suggestion of doing so. Thus, the statement of the
rejection is based on incorrect findings of the content of
Bissonet. The basic teaching of Bissonet is that a stamp may be
used in place of repeatedly writing down or printing the same
data, which is, of course, the well known purpose of stamps.
Appeal No. 2003-1234
Application 09/755,519

- 8 -
Nevertheless, we conclude that claim 1 would have been
obvious over Eckels. Although we have no documentary evidence,
we find that the examiner is correct "that it is inherent in the
process of taking notes for a student to listen to the lecturer
and make notes of the lecturer's comments" (FR2). More
specifically, we find that the steps of a student listening for
mention of a benzene ring in a lecture in the field of chemistry,
drawing a benzene ring by hand, and writing lecture commentary
adjacent the benzene ring were well known in the prior art of
note taking by chemistry students. Eckels discloses that "[i]n
many businesses, recording various data on a map, chart, graph or
the like requires repetative [sic] actions of the physical
activity of adding one or more signs, symbols or indicia to the
record being kept" (col. 1, lines 12-15). Eckels further
discloses that "[c]hemists may use a number of symbols in the
many types of writings required of them" (col. 1, lines 25-27)
and "[f]or the chemical industries of art, each writer may have
specialized symbols, and such symbols may be secured to the end
of the different lengths of arms" (col. 3, lines 25-28) where one
such symbol is benzene (Figs. 7 and 8; col. 3, lines 28-30).
Thus, Eckels teaches that chemical writers may use symbol stamps
to take the place of repetitively drawing the symbols. One of
ordinary skill in the art would have known to use the symbol
stamps in Eckels in any kind of writing, including writing by a
Appeal No. 2003-1234
Application 09/755,519

- 9 -
student at a lecture, where the student would use the benzene
stamp for its intended purpose of avoiding repetitive drawing of
the symbol. That is, the use of the symbol stamp in Eckels
instead of manual drawings is the normal and intended use of the
stamp and the use of the symbol stamp in Eckels for note taking
at a chemistry lecture is not a new or nonobvious use. As to the
limitation of stamping with one hand while handwriting notes with
the other, we agree with the examiner that it would have been
obvious to one skilled in the art "to use the hand stamp in one
hand while taking notes with the other hand to more quickly and
efficiently record notes from the lecture" (FR3) and that such
technique would occur naturally so the writer does not have to
keep changing back and forth between the stamp and the pen. The
examiner notes that Eckels teaches an example of using one hand
to perform one function (pointing to a location) while the other
hand is used to stamp the indicia.
Appellant's page of endorsements and quotes in the
declaration have been considered. Although the endorsements and
quotes are not evidence of "commercial success" because
commercial success deals with evidence of sales and taking the
place of other devices in the marketplace, they are objective
evidence of nonobviousness as evidence of professional approval.
By going to the trouble to prepare and submit such evidence,
appellant has done all he can to argue and support his case. We
Appeal No. 2003-1234
Application 09/755,519

- 10 -
agree with appellant that opinion evidence is entitled to weight
in an obviousness determination. Opinions by persons in the
chemistry field, as in the declaration, are entitled to more
weight than those of a lay person in this case. Nevertheless, on
balance, the evidence does not persuade us of nonobviousness.
Objective evidence of nonobviousness (also called "secondary
considerations") must always be considered in making an
obviousness decision, Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed. Cir. 1983),
although it need not be necessarily conclusive. Ashland Oil,
Inc. v. Delta Resins & Refrac., Inc., 776 F.2d 281, 306,
227 USPQ 657, 674 (Fed. Cir. 1985). A "nexus" is required
between the merits of the claimed invention and the evidence of
secondary considerations in order for the evidence to be given
substantial weight in an obviousness decision. Stratoflex,
713 F.2d at 1539, 218 USPQ at 879. "Nexus" is a legally and
factually sufficient connection between the objective evidence
and the claimed invention, such that the objective evidence
should be considered in the determination of nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
1392, 7 USPQ2d 1222. 126 (Fed. Cir. 1988). The burden of showing
nexus is on the applicant. Ex parte Remark, 15 USPQ2d 1498, 1503
(Bd. Pat. App. & Inter. 1990).
Appeal No. 2003-1234
Application 09/755,519

- 11 -
We agree with the examiner that there is no nexus between
the statements and the merits of the claimed subject matter and
that "the quotes and endorsements submitted by applicant ... are
predominantly directed to the benefits of the hand stamp per se
and not necessarily the particular note taking method requiring
all of the specific steps as recited by applicant in the claim
(for example, stamping with one hand while writing with the
other)" (EA9). The statements relate to the general benefits of
using the benzene stamp in note taking, but none of the comments
discuss that the particular claimed steps of taking notes with a
benzene stamp are unique or nonobvious, as required to establish
a nexus. We also find that the statements are not persuasive
because they do not indicate any familiarity with the most
pertinent prior art to Eckels. That is, the persons may not have
had the same praise if they were aware of the benzene stamp in
Eckels for use in chemical writing. Lastly, we agree with the
examiner that the evidence of obviousness is strong and is not
overcome by the objective evidence.
Appeal No. 2003-1234
Application 09/755,519

- 12 -
For the reasons stated above, we sustain the rejection of
claim 1.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1). See 37 CFR § 1.136(a)(1)(iv) (2004).
AFFIRMED

LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MacDONALD )
Administrative Patent Judge )
Appeal No. 2003-1234
Application 09/755,519

- 13 -

MYRON AMER, P.C.Suite 310
114 Old Country Road
Mineola, NY 11501