Ex Parte Shteyn

Board of Patent Appeals and Interferences

Oct 1, 2007

09900375 (B.P.A.I. Oct. 1, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YEVGENIY EUGENE SHTEYN
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Appeal 2007-1568
Application 09/900,375
Technology Center 2800
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Decided: October 1, 2007
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Before KENNETH W. HAIRSTON, JEAN R. HOMERE, and
ST JOHN COURTENAY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1 through 13. We have jurisdiction under 35 U.S.C.
§ 6(b) to decide this appeal. We affirm.

Appeal 2007-1568
Application 09/900,375

The Invention
Appellant invented a portable clock having a programmable graphical
user interface (GUI) to indicate specific time slots allocated to a user’s
personal scheduled activities. (Specification 1).
An understanding of the invention can be derived from exemplary
independent claim 1, which reads as follows:
1. An electronic device with a timepiece having a dial face that comprises
a display monitor for providing a graphical representation of a scheduled
activity associated with a time of day segment displayed on the dial face.

In rejecting the claims on appeal, the Examiner relies upon the
following prior art:
Nixon US 6,033,316 Mar. 7, 2000
Hepp US 6,449,219 B1 Sep. 10, 2002
Narayanaswami US 6,477,117 B1 Nov. 5, 2002

The Examiner rejects the claims on appeal as follows:

A. Claims 1, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hepp.
B. Claims 2 through 4, 6, 7, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hepp and Nixon.
C. Claims 9 through 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination Hepp and Narayanaswami.

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Regarding the above rejection, Appellant contends1 that Hepp does
not fairly teach or suggest a dial face that displays a graphical representation
of a scheduled activity associated with a time of day segment displayed on
the dial face, as recited in claim 1. (Br. 5-7.) In response, the Examiner
contends that Hepp’s disclosure of an optoelectronic display including a
figurative character and a timepiece renders the claimed invention
unpatentable. (Answer 3-7.)
ISSUE
The pivotal issue in the appeal before us is as follows:
Has Appellant shown2 that the Examiner failed to establish that the
disclosure of Hepp renders the claimed invention unpatentable under 35

1 This decision considers only those arguments that Appellant submitted in
the Appeal Brief. Arguments that Appellant could have made but chose not
to make in the Brief are deemed to have been waived. See 37 C.F.R.
§ 41.37(c)(1) (vii)(eff. Sept. 13, 2004). See also In re Watts, 354 F.3d 1362,
1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).

2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When
that burden is met, the burden then shifts to the applicant to rebut. Id.; see
also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
Thereafter, patentability is determined in view of the entire record. Id.
However, Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86,
78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection [under § 103] 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, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)).
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Application 09/900,375

U.S.C. § 103(a)? Particularly, does Hepp’s disclosure of an optoelectronic
display with a figurative character and a timepiece render unpatentable
Appellant’s timepiece with a dial face for graphically representing thereon a
scheduled activity associated with a particular time?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
The Invention
1. Appellant invented a timepiece (100) with a dial face (102), which
includes a display monitor (108) that can be programmed to form segments
that graphically represent time slots (110, 112, 114, and 116) allocated to
scheduled activities of a user’s personal calendar. (Specification 3.)
2. The length of each segment designates the duration of the activity
while the color of the segment indicates the type of activity. (Id.)

The Prior Art Relied Upon
3. Hepp teaches an optoelectronic display (1) for dynamically
representing information related to the course of time. (Col. 4, ll. 51-54.)
4. As depicted in Figure 1, Hepp’s display device (1) includes the time
of day (14), the position of the sun (6), the moon (8), selected stars (7), and
the horizon (5). (Col. 5, ll.1-4.)
5. The display device (1) also includes a timepiece with a computer
based clock (2). (Col. 5, ll. 12-13.)
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6. The timepiece in turn includes a dial face (3) that displays objects (11,
12, and 13), typical of the current season, that are associated with a treetop
(10), (Col. 5, ll. 15-19).
7. The objects are displayed on the dial face of the clock (2) to represent
the specific season according to the changes with time of the treetop (10)
during the course of the year. (Col. 5, ll. 8-10).
8. Hepps’ display device further includes a figurative character (15) that
reminds users of the jobs to be done depending on the time and location.
(Col. 5, ll. 24-30).

PRINCIPLES OF LAW
1. OBVIOUSNESS (Prima Facie)
The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966), stated that three factual inquiries underpin any
determination of obviousness:
Under § 103, [1] the scope and content of the prior art are to be
determined; [2] differences between the prior art and the claims
at issue are to be ascertained; and [3] the level of ordinary skill
in the pertinent art resolved. Against this background, the
obviousness or nonobviousness of the subject matter is
determined. Such secondary considerations as commercial
success, long felt but unsolved needs, failure of others, etc.,
might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented. As
indicia of obviousness or nonobviousness, these inquiries may
have relevancy.
Where the claimed subject matter involves more than the simple
substitution one known element for another or the mere application of a
known technique to a piece of prior art ready for the improvement, a holding
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of obviousness must be based on “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l v. Teleflex, Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). That is, “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id., 127 S. Ct. at 1741, 82 USPQ2d at
1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006)). Such reasoning can be based on interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR, 127 S. Ct. at 1740-41, 82
USPQ2d at 1396.

ANALYSIS
35 U.S.C. § 103(a) REJECTION
Claims 1, 5, and 8
As set forth above, independent claim 1 requires a dial face that
displays a graphical representation of a scheduled activity associated with a
time of day segment displayed on the dial face. We find that Hepp
substantially teaches that limitation. As detailed in the Findings of Fact
section above, we have found that Hepp teaches a dial face of a timepiece
that graphically depicts thereon objects to represent a particular season
associated with changes in a treetop over time during the course of a year.
(Findings 6-7). We have also found that Hepp further teaches a figurative
character for providing users with a visual reminder of jobs to be done at
different times during the course of a day. (Finding 8). It is our view that
one of ordinary skill in the art would have readily recognized that Hepp’s
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disclosure of displaying objects in the dial face to represent seasonal changes
teaches Appellant’s claimed graphical representation of a scheduled activity
displayed on the dial face. Particularly, the ordinarily skilled artisan would
have readily appreciated that season changes occur over definite periods of
time in the course of the year. Therefore, a season change can accordingly
be programmed in the clock as an activity or event scheduled to occur (as
depicted on the tree top) at a particular time in the course of the year.
Further, the ordinarily skilled artisan would have readily recognized
that Hepp’s teaching of a figurative character teaches Appellant’s claimed
scheduled activity associated with a time of day segment. Claims are to be
given their broadest reasonable interpretation during prosecution, and the
scope of a claim cannot be narrowed by reading disclosed limitations into
the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550
(CCPA 1969). Our reviewing court has repeatedly warned against confining
the claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed. Cir. 2005)
(en banc). Appellant could have amended the claim consistent with how
Appellant wants the claim to be interpreted. “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d at 322, 13 USPQ2d at 1322.
As rightfully argued by Examiner in the Answer (4), the ordinarily
skilled artisan would have readily appreciated that a time of day segment is
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not limited to a physical representation of a time segment in the dial face.
Broadly construed, it can also be interpreted as being any portion, duration,
or period of time (in the dial face) in the course of a day (during which an
event/activity is scheduled to occur). We therefore, favor the Examiner’s
broader construction of the limitation “time of day segment” over
Appellant’s narrower definition, which has no basis in the claim.
Additionally, we agree with the Examiner, as properly argued in the Answer
(7), that the ordinarily skilled artisan would have readily appreciated that
users cannot be reminded of jobs to be done if such jobs were not previously
scheduled. Thus, Hepp’s disclosure of reminding users of jobs to be done at
particular time periods in the course of a day teaches the claimed scheduled
activities associated with time of day segments.
In light of these findings, we conclude that Hepp’s teachings of
displaying objects in the dial face to depict seasonal change, coupled with
the teaching of reminding users of jobs to be done in the course of a day
would have predictably led the ordinarily skilled artisan to graphically
represent on the dial face a scheduled activity associated with a time of day
segment. It has been held that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007) (citing Graham v. John Deere
Co., 383 U.S. 1, 12 (1966). It follows that the Examiner did not err in
rejecting claim 1 as being unpatentable over Hepp. We affirm this rejection.
Appellant did not provide separate arguments with respect to the
rejections of claims 5 and 8. Therefore, we select independent claim 1 as
being representative of these claims. Claims 5 and 8 consequently fall
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together with representative claim 1. See In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991). See also 37 C.F.R. § 41.37(c)(1)(vii).

Claims 2-4, 6-7 and 12-13
Appellant reiterates the above arguments with respect to the rejection
of claims 2 through 4, 6, 7, 12 and 13, as being unpatentable over the
combination of Hepp in view of Nixon. (Br. 13.) As discussed in the
preceding section, we do not find any such deficiencies in Hepp for Nixon to
remedy. Hepp teaches the scheduled activities.
Further, Appellant alleges that there is no motivation to combine the
references. (Id.) We note that Appellant’s mere allegations, unsupported by
any evidence, do not amount to an argument that particularly shows how the
Examiner’s reliance on the cited combination of Hepp and Nixon does not
render the cited claims unpatentable. In our view, such allegations do not
rebut the Examiner’s prima facie case of obviousness against the cited
claims. We therefore affirm this rejection.

Claims 9-11
Appellant reiterates the above arguments with respect to the rejection
of claims 9 through 11 as being unpatentable over the combination of Hepp
in view of Narayanaswami. (Br. 14.) As discussed in the preceding section,
we do not find any such deficiencies in Hepp for Narayanaswami to remedy.
Further, Appellant alleges that there is no motivation to combine the
references. (Id.) We note that Appellant’s mere allegations, unsupported by
any evidence, do not amount to an argument that particularly shows how the
Examiner’s reliance on the cited combination of Hepp and Narayanaswami
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fails to render the cited claims unpatentable. In our view, such allegations
do not rebut the Examiner’s prima facie case of obviousness against the
cited claims. We therefore affirm this rejection.

CONCLUSION OF LAW
On the record before us, Appellant has not shown that the Examiner
failed to establish that Hepp renders claims 1, 5, and 8 unpatentable over
Hepp. Similarly, Appellant has not shown that the Examiner failed to
establish that claims 2 through 4, 6, 7, 12, and 13 are unpatentable over the
combination of Hepp and Nixon under 35 U.S.C. § 103(a). Additionally,
Appellant has not shown that the Examiner failed to establish that claims 9
through 11are unpatentable over the combination of Hepp and
Narayanaswami under 35 U.S.C. § 103(a).

DECISION
We have affirmed the Examiner’s decision rejecting claims 1
through 13.
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).

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AFFIRMED

eld

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P.O. BOX 3001
BRIARCLIFF MANOR NY 10510
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