Ex Parte NG

Board of Patent Appeals and Interferences

Nov 16, 2010

10151141 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/151,141 05/21/2002 Kim Kwee NG 4974
7590 11/16/2010
Kim Kwee NG
10 Malibu Ln
Centereach, NY 11720-3042
EXAMINER
HOGE, GARY CHAPMAN
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
11/16/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KIM KWEE NG, pro se
______________

Appeal No. 2009-013519
Application 10/151,141
Technology Center 1700
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 10-252 in the Office Action mailed

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
2 In the Supplemental Appeal Brief filed July 3, 2007, Appellant states that
“[c]laims 10-25 are rejected” and that “[t]he applicant is appealing claims
10-22” but addresses claims 23-25 with respect to the grounds of rejection.
Appeal No. 2009-013519
Application 10/151,141
2
December 4, 2003. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2006).
We considered this appeal based on the Supplemental Appeal Brief
filed July 3, 2007 (Supp. App. Br.), pursuant to our Remand in Appeal 2006-
0802 entered in this Application on August 28, 2006; the Appeal Brief filed
August 23, 2004; the Reply Brief filed October 19, 2005 (Reply Br.); and
the Examiner’s Answer mailed October , 2005 (Ans.). We determined that
the Supplemental Appeal Brief contains essentially all of Appellant’s
arguments and thus we cite to this document in these respects in our opinion
below. With respect to Appellant’s intent of “attending the hearing,” we
find that Appellant did not file a request for an oral hearing and thus, we
decide this appeal on the briefs. Reply Br. 2. See 37 C.F.R. § 41.47(b) Oral
hearing (“If appellant desires an oral hearing, appellant must file, as a
separate paper captioned ‘REQUEST FOR ORAL HEARING,’ a written
request for such hearing accompanied by the fee set forth in § 41.20(b)(3)
within two months from the date of the examiner’s answer or supplemental
examiner’s answer.”).
We affirm the decision of the Primary Examiner.
Appealed claims 10 and 18 illustrate Appellant’s invention of a device
for use in presenting direction information, and are representative of the
claims on appeal:
10. A device for use in presenting direction information, comprising:
a) a planar plate for used [sic] as a street sign on which the name of
the street is inscribed; and

Supp. App. Br., e.g., 1, 7, 12, and 15. Thus, we determine that Appellant
intends that claims 10-25 are on appeal.
Appeal No. 2009-013519
Application 10/151,141
3
b) a graphic symbol mounted at a corner of said street sign;
wherein said graphic symbol residing at said corner of said street sign
defines a directional indicator, said directional indicator denotes by
assignment a compass bearing direction of said planar plate; said compass
bearing direction is directed horizontally away from said street sign and
oriented in the plane of said street sign.
18. A device for use in presenting direction information, comprising:
a) a planar plate for used [sic] as a street sign on which the name of
the street is inscribed; and
b) a through opening being made in the form of a graphic symbol and
located at a corner of said street sign;
wherein said through opening located at said corner of said street sign
represents a directional indicator indicating a compass bearing direction of
said planar plate; said compass bearing direction is directed horizontally
away from said street sign and oriented in the plane of said street sign.
Appellants request review of the following grounds of rejection
advanced on appeal by the Examiner (Supp. App. Br. 3-7):
appealed claims 11-15, 19-21, 23, and 24 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention
(Ans. 4);
appealed claims 10-15 under 35 U.S.C. § 103(a) as being unpatentable over
Kiecker (US 2,272,322) in view of Ross (US 1,683,921) (Ans. 5);
appealed claims 16, 17, and 22-25 under 35 U.S.C. § 103(a) as being
unpatentable over Kiecker in view of Ross as applied to claims 10 through
153 above, and further in view of Kozak (US 5,873,187) or Burlando (US
6,158,379) (Ans. 5);
appealed claims 10-15 and 18-21 under 35 U.S.C. § 103(a) as being
unpatentable over Kiecker in view of Corbitt (US 1,517,957) (Ans. 6); and
appealed claims 16, 17, and 22-25 under 35 U.S.C. § 103(a) as being

3 We consider the Examiner’s stated claim range of “1-15” as “10-15”
which reflects claims 10-15 of record. Ans. 5.
Appeal No. 2009-013519
Application 10/151,141
4
unpatentable over Kiecker in view of Corbitt as applied to claims 10 through
15 and 18-21 above and further in view of Kozak or Burlando (Ans. 7).
We have considered the appealed claims in each of the grounds of
rejection to the extent that Appellant has separately argued the individual
appealed claims in the Substitute Appeal Brief. See Supp. App. Br. 18. See
37 C.F.R. § 41.37(c)(1)(vii) (2006).
Opinion
I. Requests to consider unentered and proposed amendments to the appealed
claims in the Supplemental Appeal Brief
With respect to the request to consider the unentered amendments
filed January 6, 2004, and February 8, 2007, the Examiner’s refusal to enter
the proposed claims is a petitionable matter decided by the Technology
Center Director and is not reviewed on appeal, as the Examiner points out.
Supp. App. Br. 8 and 23; Ans. 10. See Manual of Patent Examining
Procedure (MPEP) § 1002.02(c)3.(g) (8th ed., Rev. 2, May 2004; 1000-7)
and § 1201 (8th ed., Rev. 3, August 2005; 1200-1).
With respect to the requests to consider the proposed amendments to
the appealed claims (see Supp. App. Br., e.g., 8, 11, 14-15, 19-20, 22, and
23), the provisions of 37 C.F.R. § 41.37 Appeal brief (2006), ensure that the
appeal brief is “directed to the claims and to the record of the case as they
appeared at the time of the appeal” so that the appeal is decided on a fixed
record. MPEP § 1205.02 (8th ed., Rev. 3, August 2005; 1200-16). Thus,
“[a] brief shall not include any new or non-admitted amendment.”
37 C.F.R. § 41.37(c)(2) (2006); (MPEP) § 1205.02 (8th ed., Rev. 3, August
2005; 1200-15). Similarly, “[a] reply brief shall not include any new or non-
Appeal No. 2009-013519
Application 10/151,141
5
admitted amendment.” 37 C.F.R. § 41.41(a)(2) (2006); MPEP § 1208 (8th
ed., Rev. 3, August 2005, 1200-45).
Thus, we will not grant Appellant’s requests that we consider the
unentered amendments and the proposed amendments to the appealed claims
set forth in the Supplemental Appeal Brief.
II. Appealed claims 11-15, 19-21, 23, and 24: 35 U.S.C. § 112,
second paragraph
We summarily sustain this ground of rejection presented for review by
Appellant and advanced on appeal by the Examiner. Supp. Ans. 8; Ans. 4.
We do so because Appellant does not submit substantive argument with
respect to this ground, relying instead on unentered and proposed
amendments to these claims which we will not consider. Supp. App. Br.,
e.g., 8-9 and 23. See 37 C.F.R. § 41.37(c)(1)(vii) Argument (2006) (“The
contentions of appellant with respect to each ground of rejection presented
for review . . . and the basis therefor, with citations of the statutes,
regulations, authorities, and parts of the record relied on.”); MPEP
§ 1205.02 (8th ed., Rev. 3, August 2005; 1200-12 to 1200-13) (“An
appellant’s brief must be responsive to every ground of rejection stated by
the examiner that the appellant is presenting for review in the appeal. If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, that ground of rejection will be summarily sustained by the Board.”).
We note here that while Appellant appears pro se, that is, Appellant is not
represented by a practitioner registered to practice before the USPTO,
Appellant must still substantially comply with 37 C.F.R.
§ 41.37(c)(1)(vii) by submitting a contention with respect to each ground of
rejection. See 37 C.F.R. § 41.37(c)(1) (“a brief filed by an appellant who is
Appeal No. 2009-013519
Application 10/151,141
6
not represented by a registered practitioner need only substantially comply
with paragraphs (c)(1)(i) through (c)(1)(iv) and (c)(1)(vii) through (c)(1)(x)
of this section”); MPEP § 1205.02 (8th ed., Rev. 3, August 2005; 1200-13)
(“The brief of a pro se appellant which does not contain all items (i) to (x)
specified in 37 CFR § 41.37(c)(1) will be accepted as long as it substantially
complies with the requirements of items (i) through (iv) and (vii) through
(x).”).
III. 35 U.S.C. § 103(a)
We considered the totality of the record in light of Appellant’s
arguments in the Supplemental Appeal Brief and the evidence in the totality
of the record with respect to the grounds of rejection advanced on Appeal in
the Answer by the Examiner. See, e.g., In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence
or argument is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”) (citing, inter alia, In
re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)); see also ex parte Frye: 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“An appellant may
attempt to overcome an examiner’s obviousness rejection on appeal to the
Board by submitting arguments and/or evidence to show that the examiner
made an error in either (1) an underlying finding of fact upon which the final
Appeal No. 2009-013519
Application 10/151,141
7
conclusion of obviousness was based, or (2) the reasoning used to reach the
legal conclusion of obviousness. Similarly, the applicant may submit
evidence of secondary considerations of non-obviousness.” (internal citation
omitted)).
A. Appealed claims 10-15: Kiecker in view of Ross
1.
In considering Appellant’s position, we first interpret claim 10, giving
the claim terms thereof the broadest reasonable interpretation consistent with
the written description in the Specification. See, e.g., In re Suitco Surface,
Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (“During reexamination, as with
original examination, the PTO must give claims their broadest reasonable
construction consistent with the specification.”) (quoting In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127
F.3d 1048, 1054-55 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of
the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.”).
In this respect, we consult the Specification to determine the meaning
of the claim terms but do not limit the claim to the specific embodiments and
language disclosed in the Specification when the claim terms can reasonably
be interpreted to have a broader meaning. See, e.g., Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc) (“[T]he line between
Appeal No. 2009-013519
Application 10/151,141
8
construing terms and importing limitations can be discerned with reasonable
certainty and predictability if the court's focus remains on understanding
how a person of ordinary skill in the art would understand the claim terms.
For instance, although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”); In re Van Geuns, 988 F.2d 1181, 1184-
185 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from
the specification.”); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989)
(“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined
with that meaning, in order to achieve a complete exploration of the
applicant’s invention and its relation to the prior art. See In re Prater,
415 F.2d 1393, 1404-05, 56 CCPA 1381, 162 USPQ 541, 550-51 (1969)
(before the application is granted, there is no reason to read into the claim
the limitations of the specification.).”).
We determine that appealed claim 104 specifies “[a] device for use in
presenting directional information.” The transitional term “comprising”
opens claim 10 to include such devices that have at least the specified
elements and any additional elements. See, e.g., In re Crish, 393 F.3d 1253,
1257 (Fed. Cir. 2004) (“[I]t is well-established that ‘‘comprising’ is a term
of art used in claim language which means that the named elements are
essential, but other elements may be added and still form a construct within

4 We have not considered claim 10 as proposed at page 11 of the
Supplemental Appeal Brief. See above pp. 4-5.
Appeal No. 2009-013519
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9
the scope of the claim.’”) (quoting Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997); Vehicular Technologies Corp. v. Titan
Wheel Int’l Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000).
We determine that clauses a) and b) of appealed claim 10 specify that
the device has a planar plate which can be of any shape as long as it has at
least one corner. Clause a) further specifies that the planar plate has a street
name inscribed thereon and thus is “a street sign.”
Clause b) of appealed claim 10 specifies that a graphic symbol is
mounted at least at a corner of the planar plate. We cannot agree with
Appellant’s contention that the claim phrase “mounted at a corner” does not
include mounting along a lateral side of a planar plate. Supp. App. Br. 9; see
below pp. 12-13. We fail to find in the language of the subject claim phrase
or in the disclosure in the Specification any basis to limit the claim phrase
language to mounting at a corner per se, that is, mounting without touching
either of the two lateral sides constituting a corner of the planar plate. See
generally Spec. Indeed, Specification Figures 1-9 show mounting a graphic
symbol along a lateral side at or close to a corner of the planar plate. Thus,
as claimed in appealed claim 10, the graphic symbol can be mounted along a
lateral side at or close to a corner of the planar plate and can extend between
two corners of the planar plate. We determine that appealed dependent
claim 15 specifies the same invention as appealed claim 10 as both claims
specify mounting the graphic symbol at a corner of the planar plate.
The last clause of appealed claim 10 specifies that the “graphic
symbol residing at said corner of said street sign defines a directional
indicator. . . [that] denotes by assignment a compass bearing direction . . .
Appeal No. 2009-013519
Application 10/151,141
10
directed horizontally away from . . . and oriented in the plane of” the planar
plate. This language of appealed claim 10 requires that any manner of
graphic symbol can denote by assignment any predetermined compass
bearing direction away from the planar plate. The disclosure in the
Specification does not define “graphic symbol” in terms of shape or other
manner in which the compass bearing direction information denoted by
assignment is communicated to a user. See generally Spec. Indeed, it is
disclosed in the Specification that any graphic symbol can denote by
assignment any particular compass direction. See generally Spec. We find
no basis in the language of claim 10 or in the disclosure in the Specification
to limit the “graphic symbol” to the particular graphic symbol embodiments
disclosed in the Specification.
In appealed claim 10, there is no specified correlation between the
corner of the planar plate at which the graphic symbol is mounted and a
compass direction the graphic symbol denotes by assignment. Appealed
dependent claims 11-14 further limit appealed claim 10 by specifying that
particular corners of the planar plate at which the graphic symbol is mounted
indicate a respective general compass direction denoted by assignment.
However, appealed dependent claims 11-14, like appealed claim 10, do not
specify the characteristics of the graphic symbol.
2.
We agree with the Examiner’s findings of fact with respect to Kiecker
and Ross. Ans. 5. We add the following for emphasis. We find that
Kiecker would have disclosed to one of ordinary skill in this art
Appeal No. 2009-013519
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11
embodiments of a highway sign, illustrated in Figures 1-7, which comprise a
planar plate 8 having corners 9 and the indicia “STOP” 16. Kiecker, e.g.,
p. 1, col. 1, l. 1 to p. 2, col. 1, l. 34. We find Kiecker would have disclosed
that the embodiments illustrated in Figures 4-7 are “substantially similar” to
the embodiments illustrated in Figures 1-3. Kiecker e.g., p. 1, col. 2,
ll. 10-22. We find that with respect to the embodiment illustrated in
representative Figures 1 and 2, Kiecker would have disclosed that each of
the lowermost, uppermost, right hand, and left hand corners 9 have
respective arms 10, 11, 12, 13 which are squared at one end with the corners
9, with arm 10 further squared at the other end 14 and arms 11, 12, 13
further pointed at the other end 15 “for pointing effect.” Kiecker, e.g., p. 1,
col. 1, l. 55 to p. 2, col. 1, l. 15.
We find Kiecker would have disclosed to one of ordinary skill in this
art that the “primary” objectives of the highway sign are, among other
things, “to combine . . . easily understood means indicating (a) the route
number and direction of a . . . highway,” “(c) the compass directions from
the location of the sign,” and to use “(f) the names or numbers of streets and
avenues when adapted to city or town street use.” Kiecker, e.g., p. 1, col. 1,
ll. 1-12. We find Kiecker would have disclosed that each side of arms 11,
12, and 13 communicates to a person different directional information
relative to the intersection at which highway sign 8 is located, depending on
whether this person views highway sign 8 from the front side, illustrated in
Figure 1, or the backside, illustrated in Figure 2. Kiecker, e.g., p. 1, col. 2,
l. 28 to p. 2, col. 1, l. 34. We find that one of ordinary skill in the art would
have found in Kiecker the teaching that the compass direction or bearing S,
Appeal No. 2009-013519
Application 10/151,141
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E, W, and N 19, 20, 22, 24, 26, 28 of the highway having the route number
indicated by indicia on arms 11, 12, 13, is in a horizontal direction away
from and oriented in the plane of planar plate 9 of the highway sign as
pointed out by pointed ends 15 of arms 11, 12, 13. Kiecker, e.g., p. 1,
col. 2, l. 28 to p. 2, col. 1, l. 34, and Figs. 1, 2, and 4-7. We find Kiecker
would have disclosed that the indicia “Stop” 16 “is formed in an easily
visible manner.” Kiecker e.g., p. 1, col. 2, ll. 23-26.
We find that Ross would have disclosed to one of ordinary skill in this
art, an embodiment of a street sign illustrated in Figure 2 in which plate 1
has horizontal cross strip or arrow 15 that bears the name of a street and
compass points heading in a horizontal direction away from and oriented in
the plane of plate 1. Ross, e.g., p. 1, ll. 14-15, 29-30, and 78-97.
3.
With respect to appealed claim 10, the Examiner finds that Kiecker’s
sign 8, having “stop” indicia 9 and arms 10, 11, 12, 13 attached at upper,
lower, and sides of the sign for indicating a compass bearing direction, N, S,
E, W, differs from the claimed device for use in presenting directional
information encompassed by claims 10-15 in the absence of a street name on
sign plate 8. Ans. 5. The Examiner determines that it would have obvious
to one of ordinary skill in the art to combined Kiecker and Ross, thus leading
to the modification of Kiecker’s sign plate by placing the name of a street
thereon as taught by Ross so that the modified sign can be used as a street
name sign with the street name and street directions marked in clear manner.
Ans. 5.
With respect to appealed claims 11-15, the Examiner finds that
Appeal No. 2009-013519
Application 10/151,141
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Kiecker’s sign 8, illustrated in Figures 1 and 2, show that “the direction
indicated by the indicator depends upon where the sign is used,” with Figure
1 showing the indicator on the top edge indicates a south direction, and
Figure 2 showing the indicator on the top edge indicates a north direction.
Ans. 5.
4.
Appellant submits that the Examiner erred in determining that
Kiecker’s sign differs from the claimed device encompassed by appealed
claim 10 solely in that Kiecker’s sign does not have a street name on the
plate. Supp. App. Br. 9-11. Appellant points out that Kiecker’s sign has
directional indicators with the two critical elements “direction characters and
an arrow to indicate a direction” necessary to convey directional information
to a user. Supp. App. Br. 9. Appellant further points out that Kiecker’s
directional indicators, such as “indicator 11,” are “mounted on a complete
lateral side (non-corner) of the hexagonal plate 8” and “not at a corner” of
the plate, as shown in Kiecker Figure 1. Supp. App. Br. 9.
Appellant argues that the “directional indicator” in the claimed device
“is defined by a single graphic symbol mounted at a pre-selected corner of
an elongated planar plate.” Supp. App. Br. 9. Appellant further argues that
the “graphic symbol” of the claimed device “is neither composed of a
character nor an arrow, [sic] the graphic symbol cannot be used as a
directional pointer without further assignment as disclosed in the instant
invention.” Supp. App. Br. 10. In this respect, Appellant contends that
Kiecker and Ross, alone or combination, do not disclose a “graphic symbol
. . . defined to convey a directional information according to a prescribed
Appeal No. 2009-013519
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rule” as claimed, pointing out that Kiecker uses alphabetic characters “and
an arrow which is obviously a pointer known to the general public.” Supp.
App. Br. 10.
Appellant argues that “[i]n the instant invention, the directional
characters, ‘S’, ‘N’, ‘E’, and ‘W’, are not employed to denote a direction,”
and “[t]he location at which a graphic symbol is placed is assigned a unique
named to indicate a directional information.” Supp. App. Br. 10. Appellant
points to examples of placement of a graphic symbol at a particular corner,
indicating a compass bearing direction which “is defined to be in the plane
of the planar plate and pointing away from the graphic symbol.” Supp. App.
Br. 10. Appellant argues that “[i]t is clear from the . . . examples that neither
a directional character nor an arrow has been used in the instant invention to
convey a directional information.” Supp. App. Br. 10. In this respect,
Appellant argues that directional characters are an essential element of
Kiecker’s device to convey directional information, and if removed from
Kiecker’s directional indicator, the directional indicator would not denote
direction. Supp. App. Br. 10.
Appellant contends that the claimed device is an improvement over
Kiecker’s device, with or without Ross, because “[t]he graphic symbol
proposed in the applicant’s device provides an efficient way to quickly grasp
the directional information of the sign.” Supp. App. Br. 11.
Appellant points out that appealed dependent claims 11-14 specify
assignment of a specific compass bearing direction pointing horizontally
away from the sign based on the particular comer of the plate at which a
graphic symbol is located, which features are not shown by Kiecker and
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Ross.
5.
We cannot subscribe with Appellant’s position that Kiecker’s
described sign device for presenting directional information differs from the
claimed street sign device for the same purpose by other elements than the
absence of a street name on the planar plate of the sign as the Examiner
argues. We disagree with Appellant’s contention that Kiecker’s graphic
symbol directional indicator, which has an “arrow” shape and an alphabetic
directional character, is excluded from appealed claim 10. Indeed, appealed
claim 10 specifies only that the graphic symbol is a directional indicator that
denotes by assignment a compass bearing direction away from the street
sign, and Kiecker’s graphic symbol satisfies these claim limitations as the
Examiner points out. Ans. 8-9. See above pp. 8-9 and 10. We agree with
Appellant that the Specification discloses no graphic symbol embodiment
corresponding to Kiecker’s graphic symbols. However, we determined that
there is no basis in the language of appealed claim 10 or in the disclosure in
the Specification which would limit the claimed graphic symbols to those
disclosed in the Specification. See above pp. 7-8 and 9-10. We also
disagree with Appellant that appealed claim 10 excludes graphic symbols
mounted along a lateral side at a corner of the planar plate and thus excludes
Kiecker’s graphic symbol directional indicator arms 11, 12, 13, each of
which are mounted along a lateral side at two corners of the planar plate.
See above p. 10. We determined that the language of appealed claim 10 and
the disclosure in the Specification permit mounting a graphic symbol along a
lateral side at a corner of the planar plate. See above p. 8-9. We find no
Appeal No. 2009-013519
Application 10/151,141
16
limitation in appealed claim 10 which excludes the graphic symbol from
extending along a lateral side between two corners of the planar plated. See
above p. 9.
We further cannot agree with Appellant’s position that Kiecker would
not have described to one of ordinary skill in the art a graphic symbol that
denotes by assignment a compass bearing direction away from the sign
device for presenting directional information. Indeed, Kiecker’s objective of
using “easily understood means” to indicate “direction” and “compass
direction” away from the location of the sign device is embodied in an
“arrow” shape and directional alphabetic direction characters. We find that a
user would have readily understood by custom and convention tantamount to
a rule that an “arrow” shape is a directional symbol readily denoting a
direction away from a fixed position in the direction of the “arrow.”5 In
similar manner, the alphabetic directional characters N, S, E, W in
combination with the “arrow” shape would readily denote to the user by
custom and convention tantamount to a rule a compass bearing direction
away from a fixed position. Thus, as the Examiner contends, Kiecker would
have described using a graphic symbol that denotes by assignment a
compass bearing direction away from the sign device for presenting
directional information, which is all that appealed claim 10 requires. Ans. 8-
9.
Thus, we agree with the Examiner that Kiecker’s sign device for
presenting directional information differs from the claimed street sign device

5 See, e.g., arrow, The American Heritage Dictionary of the English
Language 100 (4th ed., Houghton Mifflin Co., 2000).
Appeal No. 2009-013519
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for the same purpose encompassed by claim 10 solely in the absence of a
street name inscribed on the planar plate of the claimed device. Ans. 5. See
above p. 11. In this respect, Appellant does not contend that the
combination of Kiecker and Ross would not have led one of ordinary skill in
the art to inscribe a street name on Kiecker’s sign as taught by Ross as
determined by the Examiner. Ans. 5; Supp. App. Br. 9-12. See above p. 12.
6.
With respect to appealed dependent claims 11-14, we agree with
Appellant that Kiecker does not teach that the position of the graphic symbol
at a particular corner of the sign device denotes by assignment a particular
compass bearing direction away from the street sign device. However, we
are not convinced that mounting a graphic symbol at a particular corner to
denote by assignment a compass bearing direction away from the sign
device as claimed in appealed dependent claims 11-14 is unobvious because
Kiecker does not describe this claim limitation. Indeed, the claimed street
sign devices encompassed by claims 11-14 and the street sign device 8
described by Kiecker both use graphic symbols mounted along lateral sides
at corners, wherein the claimed symbols can be the graphic symbols 11, 12,
13 at corners 9 on sign device 8 taught by Kiecker, to produce the similar
result of denoting by assignment the compass bearing direction away from
the street sign device. See above pp. 10-11. In this respect, we determined
that claims 11-14, like claim 10 on which they depend, do not exclude
mounting a graphic symbol along a lateral side at a corner of the planar
plate. See above pp. 8-10.
Thus, positioning of a graphic symbol at a particular corner of a sign
Appeal No. 2009-013519
Application 10/151,141
18
device for the same purpose of denoting by assignment the compass bearing
direction away from a street sign device in the same and similar manner
taught by Kiecker, would have been reasonably expected by one of ordinary
skill in the art to produce the same result of conveying the same or similar
directional information as Kiecker’s sign device. We point out in this
respect that it is well settled that there is no requirement that a reference,
such as Kiecker, must expressly describe a claimed invention, such as that
encompassed by claims 11-14, in order to be considered with respect to
whether that claimed invention would have been obvious to one of ordinary
skill in the art. See, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007) (“[A]nalysis [of whether the subject matter of a claim would have
been obvious] 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.”); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367-368 (2006) (“Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense”); B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582-83 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of that
reference. This suggestion or motivation need not be expressly stated.”
(citation omitted)). In this respect, skill is presumed on the part of one of
ordinary skill in the art in considering the teachings of Kiecker. See, e.g., In
re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985); see also KSR, 550 U.S. at
Appeal No. 2009-013519
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421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
Thus, on this record, we determine that it would have been obvious to
one of ordinary skill in this art to use the same or similar graphic symbols
mounted at the corners of the planar plate of a sign device to denote by
assignment a compass bearing direction away from the sign device as taught
by Kiecker and Ross. See, e.g., In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“Obviousness does not require absolute predictability of success.
. . . There is always at least a possibility of unexpected results, that would
then provide an objective basis for showing that the invention, although
apparently obvious, was in law nonobvious. For obviousness under § 103,
all that is required is a reasonable expectation of success.” (citations
omitted)).
7.
Appellant has asserted that a claimed street sign device having a
symbol mounted at a corner of the sign device is “an improvement” over
Kiecker’s device on the basis that Appellant’s graphic symbol as disclosed
in the Specification “provides an efficient way to quickly grasp” directional
information. Supp. App. Br. 11. However, Appellant’s position is not
convincing that unexpected results are achieved by the claimed street sign
device encompassed by appealed claims 10-15 for two reasons. First,
Appellant has not adduced evidence establishing that Appellant’s graphic
symbol as disclosed in the Specification achieves unexpected results with
respect to providing directional information vis-à-vis Kiecker’s graphic
symbol which is the closet prior art. See, e.g., In re Baxter Travenol Labs.,
Appeal No. 2009-013519
Application 10/151,141
20
952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” (citation omitted)); In re Burckel,
592 F.2d 1175, 1179-80 (CCPA 1979) (the claimed subject matter must be
compared with the closest prior art in a manner which addresses the thrust of
the rejection); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“This court
has said . . . that mere lawyers’ arguments unsupported by factual evidence
are insufficient to establish unexpected results.” (citations omitted.)).
Second, none of appealed claims 10-15 are limited to Appellant’s graphic
symbol as disclosed in the Specification and thus, Appellant’s contention is
not commensurate in scope with these claims. See, e.g., In re Tiffin, 448
F.2d 791, 792 (CCPA 1971) (evidence limited to “cups” and the claims are
drawn to “containers” broadly).
8.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Kiecker and Ross with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 10-15 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
B. Appealed claims 16, 17, and 22-25: Kiecker in view of Ross
and further in view of Kozak or Burlando
1.
Appealed claims 16 and 17 further limit appealed claim 10 on which
they depend by specifying that the “graphic symbol . . . directional
Appeal No. 2009-013519
Application 10/151,141
21
indicator” is coated with a reflective material and a fluorescent material,
respectively. See above p. 8. Appealed claim 226 differs from appealed
claim 10 in the presence of clause “c) a reflective material coated on said
graphic symbol.” Appealed claims 23 and 25 further limit appealed claim
22 in the same manner that appealed claims 11 and 13 limit appealed claim
10. See above p. 9. Appealed claim 25 specifies the same invention as
appealed claim 22 on which it depends in the same manner that appealed
claim 15 specifies the same invention as appealed claim 10. See above p. 8.
2.
Findings of fact from Kiecker are set forth above. See above pp.
10-11. We agree with the Examiner’s findings of fact with respect to the
disclosure of using fluorescent material on a sign in Kozak and reflective
material and fluorescent material on a sign in Burlando. Ans. 6.
3.
The Examiner determines that one of ordinary skill in this art would
have been led to combine Kiecker, Ross, Kozak, and Burlando and thence to
use reflective and fluorescent material to modify Kiecker’s graphic symbol
as suggested by Kozak and Burlando. Ans. 6.
4.
Appellant does not contend that one of ordinary skill in the art would
not have made the modification to Kiecker’s graphic symbol following the
teachings of Kozak and Burlando. Supp. App. Br. 12-15. Instead, Appellant
advances the same arguments previously made with respect to Kiecker’s

6 We have not considered claim 22 as proposed at pages 14-15 of the
Supplemental Appeal Brief. See above pp. 3-4.
Appeal No. 2009-013519
Application 10/151,141
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graphic symbol. We remain of the same view here with respect to
Appellant’s position that we discussed with respect to Kiecker, Ross, Kozak,
and Burlando. See above pp. 12-20.
5.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Kiecker, Ross, Kozak, and Burlando with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 16, 17, and
22-25 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
C. Appealed claims 10-15 and 18-21: Kiecker in view of Corbitt
1.
We interpreted appealed claims 10-15 above. See above pp. 6-10.
Appealed claim 18 differs from appealed claim 10 in that the graphic symbol
representing a directional indicator indicating a compass bearing direction
away from the street sign, is a through opening in the planar plate located at
a corner of the planar plate. See Spec., e.g., 6:12-14, and Fig. 2. Appealed
claims 19 and 20 further limit appealed claim 18 in the same manner that
appealed claims 12 and 13 limit appealed claim 10. See above p. 10.
Appealed claim 21 specifies the same invention as appealed claim 18 on
which it depends in the same manner that appealed claim 15 specifies the
same invention as appealed claim 10. See above p. 9.

Appeal No. 2009-013519
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23
2.
Findings of fact from Kiecker are set forth above. See above pp.
10-11. We agree with the Examiner’s findings of fact with respect to the
disclosure of inscribing a street name on a sign plate in Corbitt. Ans. 6. We
further agree with the Examiner’s findings of fact that in Corbitt, directional
indicators 22, 25 mounted on a street sign have rectangular openings to
reduce wind resistance. Ans. 7, citing Corbitt Figs. 1 and 2. We find that
Corbitt’s graphic symbol directional indicators 22, 25 are “arrow” shaped,
have a “word” compass bearing direction indicator, and are mounted on top
of street sign 11, wherein the openings in street sign 11 and graphic
directional indicators 22, 25 reduce the wind resistance of the street sign.
See Corbitt, e.g., p. 1, ll. 14-19, and 51-88.
3.
With respect to appealed claims 10-15, the Examiner advances the
same arguments with respect to Kiecker alone and Kiecker combined with
Corbitt as in the ground of rejection based on Kiecker and Ross. Cf. Ans.
6-7 with Ans. 5. See above pp. 10-11.
With respect to appealed claims 18-21, the Examiner finds that
Kiecker “does not disclose the idea of placing a through opening in the form
of a graphic symbol,” and that Corbitt’s directional indicators have
rectangular openings in a graphic symbol directional indicator. Ans. 7. The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to modify Kiecker’s graphic symbol directional indicators by
placing through openings therein to reduce wind resistance as disclosed by
Corbitt. Ans. 7. In response to Appellant’s arguments, the Examiner
Appeal No. 2009-013519
Application 10/151,141
24
contends that Kiecker’s graphic symbol directional indicators modified to
have the openings as taught by Corbitt, are mounted at a corner of the sign
plate, and thus the openings are at a corner of the sign plate. The Examiner
argues that “as broadly defined by the applicant, any opening in the indictor
can be assigned a direction as desired.” Ans. 10.
4.
With respect to appealed claims 10-15, Appellant contends that the
ground of rejection over Kiecker and Corbitt is the same as that over Kiecker
and Ross, and thus the arguments submitted with respect to Kiecker and
Ross apply to the present rejection because Corbitt has replaced Ross to
provide the same teaching. Supp. App. Br. 17.
With respect to claims 18-21, Appellant contends that Corbitt’s arrow
graphic symbol directional indicator 22 with an opening is not located at a
corner of Corbitt’s circular sign device. Supp. App. Br. 16. Appellant
contends that the claimed through opening in the form of a graphic symbol is
at a corner of the planar plate to indicate a compass bearing direction, and
“[t]he opening in the Corbitt’s device does not indicate a direction,” and
Kiecker’s device when modified by Corbitt still uses directional characters
and an arrow to denote a direction. Supp. App. Br. 16-17.
5.
With respect to appealed claims 10-15, we considered above
Appellant’s arguments advanced with respect to Kiecker and Ross and
remain of the same view here with respect to the same arguments relied on
by Appellant with respect to Kiecker and Corbitt. See above pp. 12-20.
With respect to claims 18-21, we agree with Appellant that the
Appeal No. 2009-013519
Application 10/151,141
25
combination of Kiecker and Corbitt does not teach a through opening in the
form of a graphic symbol that indicates a compass bearing direction away
from the street sign device. However, for the same reasons we discussed
with respect to appealed claims 11-14, we are not convinced here that
inserting a through opening graphic symbol at a particular corner to indicate
a compass bearing direction away from the street sign device as claimed is
unobvious because the combination of Kiecker and Corbitt do not teach this
claim limitation. See above pp. 16-18. Indeed, both the claimed through
opening graphic symbol and Kiecker’s graphic symbol are mounted at a
corner of a planar plate to produce the similar result of indicating a compass
bearing direction away from the street sign device by assignment of a
compass direction to the particular graphic symbol.
Thus, the substitution of a different graphic symbol at a corner of a
sign device for the graphic symbol taught by Kiecker for the same purpose
would have been reasonably expected by one of ordinary skill in the art to
produce the same result of conveying the same or similar directional
information. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 417-18,
421; DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick
Co., 464 F.3d at 1367-368; B.F. Goodrich Co. v. Aircraft Braking Sys.
Corp., 72 F.3d at 1582-83; In re Sovish, 769 F.2d at 742-43.
Thus, on this record, we determine that it would have been obvious to
one of ordinary skill in this art to use similar graphic symbols mounted at the
corners of the planar plate of a sign device to indicate by assignment a
compass bearing direction away from the sign device as taught by Kiecker
and Corbitt. See, e.g., In re O’Farrell, 853 F.2d at 903-04.
Appeal No. 2009-013519
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6.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Kiecker and Corbitt with Appellant’s countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 10-15 and 18-21 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
E. Appealed claims 16, 17, and 22-25: Kiecker in view of Corbitt
and further in view of Kozak or Burlando
1.
We interpreted appealed claims 16, 17, and 22-25 above. See above
pp. 20 and 22.
2.
We have set forth findings of fact from Kiecker, Corbitt, Kozak, and
Burlando. See above pp. 10-11, 21, and 22-23.
3.
The Examiner determines that one of ordinary skill in this art would
have been led to combine Kiecker, Corbitt, Kozak, and Burlando and thence
to use reflective and fluorescent material to modify Kiecker’s graphic
symbol as suggested by Kozak and Burlando. Ans. 7-8.
4.
Appellant contends that this ground duplicates the ground of rejection
over Kiecker, Ross, Kozak, and Burlando, and thus relies on the same
arguments submitted with respect to Kiecker, Ross, Kozak, and Burlando
Appeal No. 2009-013519
Application 10/151,141
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because Corbitt has replaced Ross. Supp. App. Br. 18. See above pp.
20-22.
5.
We remain of the same view here with respect to Appellant’s position
that we discussed with respect to Kiecker, Ross, Kozak, and Burlando. See
above p. 21.
6.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Kiecker, Corbitt, Kozak, and Burlando with
Appellant’s countervailing evidence of and argument for nonobviousness
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 16, 17, and
22-25 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
IV. 35 U.S.C. § 101
Appellant argues that the appealed claims are patentable under
35 U.S.C. § 101 because the claimed device for use in presenting directional
information is a new and useful improvement over Kiecker’s device for the
same purpose and is completely different from Kiecker’s device alone and as
combined with Ross, Corbitt, Kozak, and Burlando. Supp. App. Br.
18-23.
Appellant’s reliance on 35 U.S.C. § 101 in this manner is misplaced.
Section 101 Inventions patentable, defines subject matter eligible for
patentability, and the Examiner did not reject the appealed claims under this
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statutory provision. See MPEP §§ 706.03(a) Rejections under 35 U.S.C.
§ 101, and 2106 Subject Matter Eligibility (8th ed., Rev. 6, September
2007). Section 101 further provides that a patent can be obtained on a
patentable invention complying with the requirements thereof, “subject to
the conditions and requirements of this title.”
In this case, the Examiner determined that the claimed device
encompassed by the applied claims does not comply with 35 U.S.C. § 103,
Conditions for patentability; nonobvious subject matter, specifically
§ 103(a) in view of the prior art evidenced by Kiecker, Ross, Corbitt, Kozak,
and Burlando. Indeed, § 103(a) specifies the condition that “[a] patent may
not be obtained though the invention is not identically disclosed or described
as set forth in section 102 of this title, if 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.”
As we have discussed above, Appellant has not established that the
Examiner erred in determining that the claimed invention does not comply
with 35 U.S.C. § 103(a).
V.
We have affirmed the grounds of rejection advanced on appeal by the
Primary Examiner, and accordingly, the Primary Examiner’s decision 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)(1)(iv).
Appeal No. 2009-013519
Application 10/151,141
29
AFFIRMED

Ssl

KIM KWEE NG
10 MALIBU LN
CENTERREACH, NY 11720-3042