Ex Parte NGDownload PDFBoard of Patent Appeals and InterferencesNov 16, 201010151141 (B.P.A.I. Nov. 16, 2010) Copy Citation 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 Application 10/151,141 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 Application 10/151,141 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 12 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 13 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 Application 10/151,141 14 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 Appeal No. 2009-013519 Application 10/151,141 15 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 Application 10/151,141 17 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 Application 10/151,141 19 421 (“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 22 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 Application 10/151,141 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 Application 10/151,141 26 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 27 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 Appeal No. 2009-013519 Application 10/151,141 28 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 Copy with citationCopy as parenthetical citation