Ex Parte Phillips

Board of Patent Appeals and Interferences

Dec 22, 2008

10814378 (B.P.A.I. Dec. 22, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS PHILLIPS
____________

Appeal 2008-2094
Application 10/814,378
Technology Center 3600
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Decided: December 22, 2008
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Douglas Phillips (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1 and 3-20, which are the only claims
pending in the application. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).
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The Invention
Appellant’s claimed invention is directed to climbing cams used by
rock climbers as protection against falls, and more specifically to visible
indicia on a cam that allows a climber to quickly assess placement quality
and size selection. (Specification 1.)
Climbing cams, which are well known in the art, typically include one
or more pairs of opposed cam members having eccentric outer surfaces. The
cam members are pivotally mounted to one or more transverse shafts so as to
permit opposed cams to pivot in opposite directions. The cams are spring-
loaded to an open, extended position. When a handle is pulled, the cams
rotate from their open, extended position toward a closed or compressed
position. The compressed cam is then inserted into a crack in a rock, and the
handle is released. When the handle is released, the cam members rotate
under the spring force back toward their open position until the opposed cam
members contact the rock. Assuming the cam is correctly sized for the
crack, the cam members engage opposite sides of the crack to frictionally
engage with the rock, thereby providing an anchoring point. (Specification
1-2.)
Climbing cams are available in a number of sizes, with each size
being appropriate for a given range of crack widths. The climber must select
the properly sized cam for the crack in order to ensure a safe engagement
and anchoring. (Specification 2.) The objective of Appellant’s visible
indicia is to provide a readily verifiable method to permit a climber to assess
whether a particular cam is of the correct size for the crack in which it is
disposed. (Specification 3.) Appellant’s indicia indicate to the climber
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whether the contact point of the cam members with the rock is sufficient to
provide a safe engagement. (Specification 8-9; figs. 2-4.)
Claim 1, reproduced below, is illustrative of Appellant’s invention.
1. A placement indicator for use with a climbing
cam having opposed cam members, comprising:
visible placement indicia placed on each of
said opposed cam members, wherein said visible
placement indicia indicates the quality of cam
placement in a rock and includes indicia for
indicating when cam placement is not safe.

The Rejections
Appellant seeks review of the Examiner’s rejections of claims 1 and
3-20 under 35 U.S.C. § 103(a) as being unpatentable over Watts (US
2004/0035992 A1), Kensey (US 5,021,059), and Shivers (US 5,067,667)
and of claims 1 and 3-20 under 35 U.S.C. § 103(a) as being unpatentable
over Jardine (US 4,184,657), Kensey, and Shivers.1

ISSUES
The Examiner takes the position that the cam members (head 702 and
cam 5, respectively) of Watts and Jardine have visible indicia, in the form of
stepped gripping members or teeth (fig. 7 of Watts and fig. 4 of Jardine)
formed at the surfaces of the cam members. (Ans. 4-6.) According to the
Examiner, the stepped gripping members, or teeth, are capable of correlating
the quality of cam displacement in a rock and can be observed from the side

1 The Examiner does not refer to Shivers in the statements of the grounds of
rejection, but does rely on Shivers for its teaching of color-coded indicia.
(Ans. 5, 7; Final Rejection 3, 4.)
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surface of the cam member. Id. Appellant argues that these grooved
surfaces of Watts and Jardine do not satisfy the “indicia” limitations of
independent claims 1, 9, and 14 because they do not provide any correlation
with the quality or safety of the cam placement. (Appeal Br. 12, 17.)
In order to satisfy the color coded marking limitations of dependent
claims 4, 6-8, 11-13, 15, and 17-20, the Examiner determines that it would
have been obvious to use the well known concept of color coded zones as
taught by Kensey along the stepped gripping means on the edge of each cam
of Watts and Jardine to indicate the degree of safety of the device when
placed in the cracked surface. (Ans. 5-6 and 6-7.) Appellant, on the other
hand, argues that the references provide no teaching, suggestion, or
motivation to make the combination proposed by the Examiner. (Appeal Br.
11-12 and 14-15.) Appellant further argues that none of the references
teaches a colored zone that correlates to a predetermined portion of the rock-
contacting surface, as called for in claims 8, 13, and 19. (Appeal Br. 16, 21.)
Appellant additionally argues that the grooves of Watts and Jardine
are not indicia placed on a side surface of the cams, as called for in claims 3
and 20. (Appeal Br. 15 and 21.) The Examiner points out that the grooves,
teeth, or stepped gripping means are visible from the side surface of the cam
of either Watts or Jardine. (Ans. 5 and 6.)
Appellant also argues that there is nothing in any reference cited by
the Examiner that shows a graduated scale, as called for in claims 5, 6, 16,
and 17. (Appeal Br. 16 and 21.)

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Accordingly, the issues before us are:
1. Has Appellant demonstrated the Examiner erred in the rejections by
finding that the grooved or toothed peripheral surfaces of the cam
members of Watts and Jardine satisfy the claim limitation of visible
indicia for, or capable of, indicating the quality and safety of cam
placement in a rock?
2. Has Appellant demonstrated the Examiner erred in the rejections by
determining it would have been obvious to use color coded zones on the
cam members of Watts and Jardine to indicate the quality or safety of the
engagement of the cam with the rock?
3. Has Appellant demonstrated the Examiner erred in the rejections by
finding that the grooves of Watts and Jardine are indicia placed on a side
surface of the cams, as called for in claims 3 and 20?
4. Has Appellant demonstrated the Examiner erred in the rejections because
none of the applied references teaches a graduated scale?

FACTS PERTINENT TO THE ISSUES
FF1 Appellant’s Specification states that the visible indicia of the
invention “may be placed on the cams in any appropriate manner.”
(Specification 7.) For example, the indicia may be printed or painted
onto the cams. Id. Alternatively, the visible indicia “may comprise
physical disruption of the surface of the cam.” Id. Therefore, a
physical disruption of the side surface of the cam, such as grooves
formed in the peripheral surface of the cam member, constitutes
visible indicia placed on the side surface of the cam.
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FF2 Appellant concedes that Watts’ gripping surfaces are visible from the
side surface. (Appeal Br. 13.)
FF3 Figure 7 of Watts illustrates that the grooves or notches in the
gripping surfaces of head 702 are visible from the side surface of the
cam.
FF4 Appellant concedes that Jardine’s gripping surfaces are visible from
the side surface. (Appeal Br. 18.)
FF5 Figure 4 of Jardine illustrates that the grooves or notches in the
gripping surfaces of cam 5 are visible from the side surface.
FF6 Neither Watts nor Jardine describes color-coded indicia on the
climbing cams.
FF7 The Examiner finds that an experienced climber having understood
the function of the climbing aids of Watts and Jardine would know
through experience that:
a. When the aid is in its fully extended position or close to its fully
extended position wherein the contact area of the stepped gripping
means of the aid is close to the outer end of the contacting surface,
the device is not situated within the crevice securely. When so
situated, any slight movement due to force would allow the device
to fall out of the crevice because there would be no other gripping
teeth, disposed further from the axis of rotation of the cam
member, to maintain the aid within the space. (Ans. 9-10.)
b. If the aid is disposed in the crevice such that the cams are in a
more compressed state, the aid would be capable of expanding
further and allowing the remaining teeth or gripping area to catch
within the crevice or crack. (Ans. 11.)
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FF8 Appellant does not dispute the Examiner’s findings (FF7) with respect
to the knowledge of the skill in the art. In fact, Appellant describes
the claimed invention as providing “a visual verification system that
supplements the climber’s experience and judgment.” (Appeal Br. 13
and 18.) Specifically, Appellant concedes that a climber using the
cam of Watts or Jardine would rely on “experience and subjective
judgment to determine the quality of the placement and whether it is
safe.” (Appeal Br. 13 and 18.)
FF9 The grooves or notches formed in the gripping surfaces of Watts and
Jardine are distance markings along the periphery of the cam that are
capable of being used to gauge how far from the outer end of the
gripping surface the head or cam contacts the side of the crevice when
the climbing cam is placed in a crevice.
FF10 Appellant concedes that Kensey is an example of a tool that uses a
color-coded safety indication system. (Appeal Br. 14 and 19.)
FF11 Kensey describes a medical instrument for use in sealing an opening
in tissue of a living being. (Abstract.) Kensey’s device includes a
plunger actuator 34 that is depressed by a user against a spring-bias to
push a closure 200 out of the distal end of the device and into an
artery. (Kensey, col. 9, ll. 41-64.) When the plunger actuator is
released, it is moved in the proximal direction by spring 72. (Kensey,
col. 9, ll. 65-68.) The degree to which the plunger actuator springs
back depends on whether the anchor component 202 of the closure
200 is properly positioned against the free end of the carrier as shown
in Figure 6. If the anchor member is properly positioned against the
free end of the carrier, the proximal spring-back of the plunger will be
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stopped after a predetermined amount of movement relative to the
body 28 of the device. If, on the other hand, the anchor component
was pulled back into the carrier, the plunger actuator will move
further proximally relative to the device. To aid the user in
determining whether the plunger actuator moved more than the
predetermined amount, the plunger actuator is marked with a visual
indication means 40. The visual indication means 40 includes a green
indicia 78 and a red indicia 76. Movement of the actuator such that
the red indicia 76 is visible indicates improper placement of the
closure. (Kensey, col. 10, ll. 16-29.)
FF12 Based on our findings (FF11), Kensey describes placing visible
indicia comprising color-coded regions on the side surface of a
component of a device to aid the user of the device in ascertaining
whether the component has moved more than a predetermined safe
amount into an unsafe region.
FF13 Appellant concedes that the colors red, yellow, and green are
associated with danger, caution, and safety, respectively. (Appeal Br.
14, 19.)
FF14 A “graduated scale” is a series of marks at regular intervals used in
measuring something. Webster's New World Dictionary 607, 1269
(David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984).

PRINCIPLES OF LAW
While the requirement of demonstrating a teaching, suggestion, or
motivation to combine known elements in order to show that the
combination is obvious may be “a helpful insight,” it cannot be used as a
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rigid and mandatory formula. KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct.
1727, 1741 (2007). While there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,
“the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 1742.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740.
ANALYSIS
Issues (1) and (3)
Consistent with Appellant’s Specification, a physical disruption of the
side surface of the cam, such as grooves formed in the peripheral surface of
the cam member, constitutes visible indicia placed on the side surface of the
cam. (FF1.) Moreover, as conceded by Appellant and illustrated by Watts
and Jardine, the grooves or notches formed in the gripping surfaces of the
head 702 of Watts and cam 5 of Jardine are visible from the side surface of
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the cam. (FF2 through FF5.) Therefore, the grooves or notches formed in
the gripping surfaces of the head 702 of Watts and cam 5 of Jardine are
visible indicia placed on the side surface of the cam. Moreover, the grooves
or notches are distance markings along the periphery of the cam that are
capable of being used to gauge how far from the outer end of the gripping
surface the head or cam contacts the side of the crevice when the climbing
cam is placed in a crevice. (FF9.) Consequently, the grooves or notches are
capable of being used by an experienced climber to judge whether the
climbing aid is securely situated within the crevice by gauging how far from
the outer end of the gripping surface the head or cam contacts the side of the
crevice. (FF7 and FF8.)
In light of the above, Appellant fails to convince us that either Watts
or Jardine lacks visible indicia placed on a side surface of the cam for, or
capable of, indicating the quality and safety of cam placement in a rock.
That Appellant’s disclosed color-coded indicia may provide an improved or
more user-friendly indication of the quality and safety of cam placement
does not alter the fact that the grooves or notches in the cam members of
Watts and Jardine are also capable of indicating the quality and safety of
cam placement in a rock.
Moreover, for the reasons discussed below in addressing issue (2),
Appellant fails to persuade us that the modification of Watts and Jardine
proposed by the Examiner to provide color-coded indicia on the head 702 of
Watts or the cam 5 of Jardine would not have been obvious. Thus, even
assuming arguendo that Appellant’s argument had convinced us that the
grooves or notches provided in the gripping surfaces of Watts and Jardine
are not capable of indicating the quality and safety of cam placement in a
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rock, the argument still is not persuasive of error in the rejection of the
claims as unpatentable over Watts, Kensey, and Shivers and over Jardine,
Kensey, and Shivers.
Issue (2)
Neither Watts nor Jardine describes a color-coded indicia on the
climbing cams, as called for in claims 4, 6-8, 11-13, 15, and 17-20. (FF6.)
The Examiner finds that an experienced climber familiar with climbing cams
would have understood that a cam that contacts the sides of a crevice in the
nearly fully expanded state such that the cam member contacts the crevice
walls near the outer end of the gripping surface is not situated securely in the
crevice, while a climbing cam disposed in the crevice such that the cams are
in a more compressed state would be capable of expanding further and
allowing the remaining teeth or gripping area to catch within the crevice or
crack in the event of slight movement within the crack due to force on the
climbing cam. (FF7.) Appellant does not dispute these findings. (FF8.) In
fact, Appellant concedes that a climber using the cam of Watts or Jardine
would rely on experience and subjective judgment to determine the quality
and safety of the placement of the cam and that the visual verification
system of Appellant’s invention “simply supplements the climber’s
experience and judgment.” (FF8.) Stated differently, an experienced
climber would gauge the safety of the positioning of the device within a
crack on the basis of the distance of the point or region of contact of the cam
members with the sides of the crack from the outer end of the gripping
surface of the cam members. Even without the benefit of the teachings of
Kensey, common sense would have suggested marking the cam of Watts or
Jardine to indicate a degree of compression found by experience to be safe.
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Such marking would provide an indicia for indicating when cam placement
is not safe.
Kensey describes placing visible indicia comprising color-coded
regions on the side surface of a component of a device to aid the user of the
device in ascertaining whether the component has moved more than a
predetermined safe amount into an unsafe region. (FF11 and FF12.)
Moreover, Appellant concedes that the colors red, yellow, and green are
associated with danger, caution, and safety, respectively. (FF13.)
Accordingly, a person of ordinary skill in the art, being also a person of
ordinary creativity, would readily appreciate that a color-coded indicia
system placed on the cam members indicating a safe region of contact and
an unsafe region of contact would improve the climbing cams of Watts and
Jardine in the same way that the color-coded indicia means provided on
Kensey’s plunger actuator improves the device of Kensey. Appellant does
not allege that the placement of color-coded indicia on the head 702 of Watts
or the cam 5 of Jardine would be beyond the technical grasp of a person of
ordinary skill in the art or yield unpredictable or unexpected results.
Appellant thus fails to persuade us that the modification proposed by the
Examiner would not have been obvious. Moreover, the modified device
satisfies the limitations of claims 8, 13, and 19 of a colored zone correlating
to a predetermined portion of a rock-contacting surface.
Issue (4)
Appellant’s argument that there is nothing in any reference cited by
the Examiner that shows a graduated scale is not persuasive of error in the
Examiner’s rejections. As noted in our findings above, the notches or
grooves formed in the gripping surfaces of the head 702 of Watts and the
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cams 5 of Jardine are visible from the side surface. (FF2 through FF5.)
Further, the grooves or notches formed in the gripping surfaces of Watts and
Jardine are distance markings along the periphery of the cam that are
capable of being used to gauge how far from the outer end of the gripping
surface the head or cam contacts the side of the crevice when the climbing
cam is placed in a crevice. (FF9.) The series of notches or grooves thus
satisfies the limitation of a “graduated scale.” (FF14.)

CONCLUSIONS OF LAW
1. Appellant has not demonstrated the Examiner erred in the rejections by
finding that the grooved or toothed peripheral surfaces of the cam
members of Watts and Jardine satisfy the claim limitation of visible
indicia for, or capable of, indicating the quality and safety of cam
placement in a rock.
2. Appellant has not demonstrated the Examiner erred in the rejections by
determining it would have been obvious to use color coded zones on the
cam members of Watts and Jardine to indicate the quality or safety of the
engagement of the cam with the rock.
3. Appellant has not demonstrated the Examiner erred in the rejections by
finding that the grooves of Watts and Jardine are indicia placed on a side
surface of the cams, as called for in claims 3 and 20.
4. Appellant has not demonstrated the Examiner erred in the rejections on
the basis that none of the applied references teaches a graduated scale.
Therefore, Appellant fails to demonstrate the Examiner erred in
rejecting claims 1 and 3-20 as unpatentable over Watts, Kensey, and Shivers
or as unpatentable over Jardine, Kensey, and Shivers.
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DECISION
The 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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