Ex Parte Snow

Board of Patent Appeals and Interferences

Mar 21, 2007

10051000 (B.P.A.I. Mar. 21, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte FRANK J. SNOW
___________

Appeal 2006-1773
Application 10/051,000
Technology Center 3600
___________

Decided: March 21, 2007
___________

Before TERRY J. OWENS, ROBERT E. NAPPI and ANTON W. FETTING,
Administrative Patent Judges.
ANTON W. FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF CASE
This appeal involves claims 17 and 18, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.

We AFFIRM.

Appeal Number: 2006-1773
Application Number: 10/051,000

The appellant invented a method for compiling planetary land property
information. An understanding of the invention can be derived from a reading of
exemplary claim 17, which is reproduced in the analysis below.
This appeal arises from the examiner’s final rejection, mailed September 16,
2005. The appellant filed a brief in support of the appeal on December 12, 2005,
and the examiner mailed an answer to the appeal brief on February 23, 2006. A
reply brief was filed on March 21, 2006.
PRIOR ART
The prior art references of record relied upon by the examiner in rejecting
the appealed claims are:
www.moonshop.com, via www.archive.com, 1998-2000 (moonshop.com)
Galaty, Allaway and Kyle, Modern Real Estate Practice, 15th edition, pp. 131-143
and 355-356, 2000 (Galaty)

REJECTION
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious over
moonshop.com and Galaty.

ISSUES
The issues pertinent to this appeal are
• Whether the specific details of a document’s contents recited in the claim
distinguish the invention over the prior art.
2

Appeal Number: 2006-1773
Application Number: 10/051,000

• Whether the claimed lack of the capacity of a claimed deed to convey
property distinguishes the invention over the prior art.
• Whether data in the claimed document that characterize the delineation of
property subdivisions distinguishes the invention over the prior art.
• Whether the size of land parcels specified in a claimed document
distinguishes the invention over the prior art.
• Whether the claimed steps are found in moonshop.com .
• Whether property subdivision described in the claimed document is obvious
over Galaty.
In particular, the appellant contends that the claim includes a novel creation
of a form and content of a Deed of Claim that does not convey property, that the
delineation of property in the Deed of Claim is novel, that the size of parcels
described in the Deed of Claim are particularly appealing, and that moonshop does
not suggest several of the steps in the claimed method.

FACTS PERTINENT TO THE ISSUES
Claim 17 contains the following limitation elements. We have enumerated
the elements for ease of reference within this opinion.
Limitation
1 17. A method of doing business, comprising operations of:
2 developing, producing, assembling, and offering for sale a documentation
package covering a lunar land property parcel;
3 wherein the package includes decorative and educational imagery related
to the parcel, and further, includes a document herein defined as a Deed of Claim
for the parcel;
3

Appeal Number: 2006-1773
Application Number: 10/051,000

4 wherein, the primary function of the deed, and so stated in the deed's
contents, is to provide an accurate and detailed description of the location and
boundary of the parcel, and not to indicate any legal ownership of the parcel;
5 wherein, the land containing the parcel has been subject to the Apollo
Lunar Space Program of exploration and survey conducted by the U.S.
Government during the 1960's and 1970's, and
6 wherein, the value of the deed is to be based on the possibility that, at
some future time, the U.S. Government may choose to claim some part or all of
Earth's Moon, and as a consequence, may choose to encourage lunar
development by establishing a land grant program ;
7 wherein, as a further consequence, the government may choose to
recognize a land grant claimant's ownership of the Deed of Claim for a specific
land parcel as an essential element of the claimants [sic. claimant’s] request for
the specific land parcel;
8 developing a plan of subdivision of the lunar globe into a decreasing size
sequence of regions, sections, blocks and parcels;
9 wherein, subdivision of the lunar globe results in four equally sized mid-
latitude regions and two equally sized polar regions, said mid-latitude regions
defined as Region 1, Region 2, Region 3 and Region 4, and said polar regions
defined as Region 5 and Region 6;
10 wherein, a first mid-latitude Region 1 is centered on the equatorial center
of the lunar near side, has longitudinal and latitudinal dimensions of 90 degrees,
and the remaining three mid-latitude Regions 2, 3 and 4 are similarly constructed
with center longitudinal spacings of 90 degrees; and where Polar Region 5
contains all that land from North 45 Degrees Latitude to the Lunar North Pole; and
where Polar Region 6 contains all that land from South 45 Degrees Latitude to the
lunar South Pole;
11 wherein, Region 1 has the singular quality of containing the 6 Apollo
landing sites within its boundary and is accordingly subdivided into 6 sections,
each bounded by pairs of longitude and latitude lines, and containing one of the
landing sites, with the result that the sections are not necessarily of equal size;
12 wherein, Regions 2, 3, and 4 are each subdivided into 6 sections, three
above and three below the lunar equator, each section equally bounded by pairs
of 30 degree-spaced lines of longitude and 45 degree-spaced lines of latitude;
13 wherein, Polar Regions 5 and 6 are each subdivided into 4 radial
sections, each section equally bounded by pairs of 90 degree-spaced lines of
longitude and 45 degree spaced lines of latitude;
14 wherein, the sections of Regions 1, 2, 3, and 4 are each subdivided into a
multiplicity of blocks whose latitude and longitude dimensions are 5 degrees;
4

Appeal Number: 2006-1773
Application Number: 10/051,000

15 wherein, the blocks contained in the sections of Regions 1, 2, 3, and 4
are each subdivided into a multiplicity of land property parcels whose latitudinal
and longitudinal dimensions are 1/3 degree each, whereby such dimensions
correspond to a nominal linear value in the range of about 6 miles by 6 miles in the
mid-latitude regions of the moon;
16 wherein, the sections of Polar Regions 5 and 6 are each subdivided into
6 blocks of approximately equal size, each block bounded by pairs of 15 degree-
spaced-lines of longitude and 45 degree-spaced-lines of latitude;
17 wherein, the blocks contained in the sections of Polar Regions 5 and 6
are each subdivided into land property parcels whose latitudinal dimension is 1/3
degree, corresponding to a linear value of about 6 miles;
18 wherein, the longitudinal angular dimension of a desirably square parcel
will vary with the latitude location of a parcel in order to compensate for the
decreasing linear separation of the lines of longitude as they converge towards the
lunar poles;
19 wherein, a calculation is made to determine what integer value of parcel
longitudinal dimension, in terms of degrees and/or minutes of angle, results in an
integer number of parcels having a linear width of the order of 4 to 6 miles;
20 establishing the use of map and photographic imagery, in paper and/or
digital electronic form, as part of the documentation package, that have been
determined to be publicly available from the U.S. Government;
21 wherein, such imagery is used to develop the imagery content of a
documentation package;
22 wherein, such imagery content includes three pairs of map and
photograph of similar size and intended to be suitable for framing; with imagery
scaled in accordance with a sequence which provides a lunar global view and a
large area view indicating the general location of the lunar land parcel, and a local
area view indicating, in more detail, the location and boundary of the lunar land
parcel;
23 establishing a computer-useable database, herein defined as a Master
Map and Chart Set of the Lunar Tract, of all parcel locations, as determined from
lunar subdivision into the area sequence of regions, sections, blocks, and parcels;
24 establishing an inventory of individual lunar parcels, to be drawn from the
above parcel locations database;
25 wherein, for each parcel, a documentation package containing the Deed
of Claim and its associated location-oriented imagery is developed, and
assembled in paper or computer disc format;
26 establishing the offering for sale of a documentation package for
individual lunar parcels;
5

Appeal Number: 2006-1773
Application Number: 10/051,000

27 establishing a computer-useable registry, defined herein as the lunar
Claim Registry, whose uses will include that of maintaining a record of original
ownership of a Deed of Claim, and any subsequent ownership of the deed where
such information is made available to the registry operator;
28 establishing the use of copyright protection of the Lunar Claim Registry,
with its Deed of Claim ownership data contents, as a method for achieving data
storage in the U.S. Archives;
29 establishing an organization of members, in the form, for example, of a
lunar Claim Society, whose focus is the provision of information of common
interest to Deed of Claim owners;
30 wherein, the organization functions include periodic generation of a
newsletter, primarily internet-based, to provide information of potential interest to
society members and other readers.

Moonshop.com describes developing, producing, assembling, and offering
for sale a documentation package covering a lunar land property parcel at e.g., p. 5
and 11.
Galaty describes developing a plan of subdivision into a decreasing size
sequence of regions, sections, blocks and parcels at 132-133 describing the use of
longitudinal and latitudinal based meridian and base lines, incorporating the
correction lines at p. 135-136. Moonshop.com suggests this method of parceling
subdivisions by its macroscopic partitioning by latitude and longitude on the maps
on p. 5.
Moonshop.com describes establishing the use of map and photographic
imagery, in paper and/or digital electronic form, as part of the documentation
package, that have been determined to be publicly available from the U.S.
Government at e.g., p. 11 and 12.
Moonshop.com describes establishing a computer-useable database of all
parcel locations, as determined from lunar subdivision into the area sequence of
regions, sections, blocks, and parcels at e.g., p. 5 the lunar sight map.
6

Appeal Number: 2006-1773
Application Number: 10/051,000

Moonshop.com describes establishing an inventory of individual lunar
parcels, to be drawn from the above parcel locations database at e.g., p. 5 the lunar
site map.
Moonshop.com describes establishing the offering for sale of a
documentation package for individual lunar parcels at e.g., p. 5.
Moonshop.com describes establishing a computer-useable registry
maintaining a record of original ownership of a Deed of Claim, and any subsequent
ownership of the deed where such information is made available to the registry
operator at e.g., p. 9 After Sales service.
Establishing the use of copyright protection of the registry, with its data
contents, as a method for achieving data storage in the U.S. Archives is inherent by
the operation of the regulations in registering for copyright.
Moonshop.com describes establishing an organization of members whose
focus is the provision of information of common interest to Deed of Claim owners
is shown by moonshop.com p. 27 extraterrestrial mailing list.

PRINCIPLES OF LAW
In order to determine whether a prima facie case of obviousness has been
established, we considered the three factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art. We also considered the requirement, as recently re-stated
in In re Kahn, 441 F.3d 977, 78 USPQ2d 1329 (Fed. Cir. 2006), for a showing of a
7

Appeal Number: 2006-1773
Application Number: 10/051,000

“teaching, suggestion, or motivation” to modify or combine the prior art teaching.
As to this test, the court explained,
The ‘motivation-suggestion-teaching’ test asks not merely what the
references disclose, but whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the
prior art, and motivated by the general problem facing the inventor,
would have been led to make the combination recited in the claims….
From this it may be determined whether the overall disclosures,
teachings, and suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons having
ordinary skill in the art at the time of the invention – support the legal
conclusion of obviousness.

441 F.3d at 988, 78 USPQ2d at 1337 (internal citations omitted). It is not just the
explicit teachings of the art itself, but also the understandings and knowledge of
persons having ordinary skill in the art, that play a role in applying the motivation-
suggestion-teaching test.
The Federal Circuit has repeatedly recognized that to establish a prima facie
case of obviousness, the references being combined do not need to explicitly
suggest combining their teachings. See e.g.,, In re Kahn, 441 F.3d at 987-88, 78
USPQ2d at 1336 (“the teaching, motivation, or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the references”); and In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (“for the
purpose of combining references, those references need not explicitly suggest
combining teachings”). The court recently noted,
An explicit teaching that identifies and selects elements from different
sources and states that they should be combined in the same way as in
the invention at issue, is rarely found in the prior art. As precedent
illustrates, many factors are relevant to the motivation-to-combine
aspect of the obviousness inquiry, such as the field of the specific
invention, the subject matter of the references, the extent to which
8

Appeal Number: 2006-1773
Application Number: 10/051,000

they are in the same or related fields of technology, the nature of the
advance made by the applicant, and the maturity and congestion of the
field.
In re Johnston, 435 F.3d 1381, 1385, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006).
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70
USPQ2d 1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217
USPQ 401, 404 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the invention
from the prior art in terms of patentability).
Differences of spacing in lines drawn on printed paper are generally obvious
to a person of ordinary skill in the art (See In re Cavrich, 59 CCPA 883, 451 F.2d
1091, 172 USPQ 121 (CCPA 1971) in which the distinctions between the groups
of spaced lines recited in the appealed claims and the groups of spaced lines
disclosed in the prior art were held to be of minor importance, and that the
modifications would have been obvious to one of ordinary skill in the pattern
drafting art.)
“[T]he steps comprising the process are the essential features for
consideration in determining the right of appellants to a patent – not the particular
material to which the process is applied nor the particular substance obtained by its
application.” In re Fahrni, 41 CCPA 768, 771, 210 F.2d 302, 303, 100 USPQ 388,
390 (CCPA 1954).
9

Appeal Number: 2006-1773
Application Number: 10/051,000

ANALYSIS
Claims 17 and 18 rejected under 35 U.S.C. § 103(a) as obvious over
moonshop.com and Galaty.
Claim 17 is a method claim. The actual enumerated steps are set forth in
elements
2 - developing, producing, assembling, and offering for sale a documentation
package covering a lunar land property parcel. As shown in the above facts,
moonshop.com has incorporated this step.
8 - developing a plan of subdivision of the lunar globe into a decreasing size
sequence of regions, sections, blocks and parcels. As shown in the above facts,
moonshop.com has incorporated this step.
20 - establishing the use of map and photographic imagery, in paper and/or
digital electronic form, as part of the documentation package, that have been
determined to be publicly available from the U.S. Government. As shown in the
above facts, moonshop.com has incorporated this step.
23 - establishing a computer-useable database of all parcel locations, as
determined from lunar subdivision into the area sequence of regions, sections,
blocks, and parcels. As shown in the above facts, moonshop.com has incorporated
this step.
24 - establishing an inventory of individual lunar parcels, to be drawn from
the above parcel locations database. As shown in the above facts, moonshop.com
has incorporated this step.
10

Appeal Number: 2006-1773
Application Number: 10/051,000

26 - establishing the offering for sale of a documentation package for
individual lunar parcels. As shown in the above facts, moonshop.com has
incorporated this step.
27 - establishing a computer-useable registry, defined herein as the lunar
Claim Registry, whose uses will include that of maintaining a record of original
ownership of a Deed of Claim, and any subsequent ownership of the deed where
such information is made available to the registry operator. As shown in the above
facts, moonshop.com has incorporated this step.
28 - establishing the use of copyright protection of the Lunar Claim
Registry, with its Deed of Claim ownership data contents, as a method for
achieving data storage in the U.S. Archives. As shown in the above facts, this is
inherent in the operation of copyright law.
29 - establishing an organization of members, in the form, for example, of a
lunar Claim Society, whose focus is the provision of information of common
interest to Deed of Claim owners. As shown in the above facts, moonshop.com
has incorporated this step.
Thus, all of the claimed steps are anticipated by moonshop.com. As shown
in the principles of law above, the steps comprising the process are the essential
features in determining the rights to a patent.
The additional claim 17 limitations, not reciting steps, but characterizing the
package of non-functional descriptive material that is created, include
Element 3 - wherein the package includes decorative and educational
imagery related to the parcel, and further, includes a document herein defined as a
Deed of Claim for the parcel, all of which are shown by Moonshop.com at p. 5.
11

Appeal Number: 2006-1773
Application Number: 10/051,000

Elements 4-7, which describe the purported function and value of the
document. However, there is no functional relationship between the contents of
the documents and the underlying substrate recited in these limitations. Therefore,
these are descriptions of non-functional descriptive material. When descriptive
material is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability. Further, this
element is a conjectural and aspirational characterization of the document, and
therefore does not limit the actual scope of the claimed document.
Elements 9-19, which describe the convention employed in describing the
moon’s subdivisions. These elements form the bulk of the claim text, and of the
arguments proffered by the Appellant. However, voluminous as this text is, there
is no functional relationship between the contents of the documents and the
underlying substrate recited in these limitations. Therefore, these claim elements
are no more than characterizations of non-functional descriptive material. When
descriptive material is not functionally related to the substrate, the descriptive
material will not distinguish the invention from the prior art in terms of
patentability. Also, this convention for parceling property is a species of the genus
of Galaty’s convention of using longitudinal and latitudinal based meridian and
base lines. Differences of spacing in lines drawn on printed paper are generally
obvious to a person of ordinary skill in the art. Similarly, differences in the
spacing of longitudinal and latitudinal based meridian and base lines used to
establish borders for property plats drawn on printed paper are generally obvious to
a person of ordinary skill in the art. Whether particular purchasers would prefer a
particular size or location, as argued by the appellant, is a matter of subjective
preference, suggesting a limitation on the intended field of use, but does not
12

Appeal Number: 2006-1773
Application Number: 10/051,000

distinguish the invention over the art of record. Therefore, the particular numbers
used to segment the longitudinal and latitudinal boundaries in the claims would
have been obvious variants of those described by Galaty.
Element 21 - wherein such imagery is used to develop the imagery content
of a documentation package, shown by Moonshop.com at p. 5.
Element 22, which describes a global view, intermediate view and local
view shown by Moonshop.com at p. 5, 6 and 10. This element describes the intent
of the views, and is therefore aspirational rather than functional, thus creating 3
pictures. Such an indication of intent describes a limitation on the intended field of
use, but does not distinguish the invention over the art. As to providing 3 views,
this is a species of the number of views provided well within the foreseeable range
of the number of views suggested by moonshop.com, particularly because it was
notoriously well known at the time of the invention to copy whatever views of
maps were desired with the then existing map atlases.
Element 25, wherein, for each parcel, a documentation package containing
the Deed of Claim and its associated location-oriented imagery is developed, and
assembled in paper or computer disc format, is shown by moonshop.com at p. 5.
Element 30 describes the social purpose of the organization recited in
element 29. Such an indication of intent describes a limitation on the intended
field of use and is aspirational rather than functional, and does not distinguish the
invention over the art.
Claim 18 extends the subject matter claimed in claim 17 to documentation of
planets, which is, again, a limitation on intended use that does not distinguish the
invention over the art.
13

Appeal Number: 2006-1773
Application Number: 10/051,000

Accordingly we sustain the examiner's rejection of claims 17 and 18 under
35 U.S.C. § 103(a) as obvious over moonshop.com and Galaty.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as obvious over
moonshop.com and Galaty is sustained.
14

Appeal Number: 2006-1773
Application Number: 10/051,000

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

AWF/jlb
15

Appeal Number: 2006-1773
Application Number: 10/051,000

FRANK J. SNOW
303 SPOTSWOOD ROAD
LOCUST GROVE, VA 22508
16