Ex Parte Willett

Board of Patent Appeals and Interferences

Nov 23, 2010

11400899 (B.P.A.I. Nov. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREG WILLETT
____________________

Appeal 2009-008634
Application 11/400,899
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

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.
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STATEMENT OF THE CASE
Greg Willett (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner’s decision rejecting claims 1-5 and 7-15 under 35 U.S.C.
§ 103(a) as being unpatentable over Warren (US 1,463,276, iss. Jul. 31,
1923) and Cardone (US 2006/0059047 A1, iss. Mar. 16, 2006). We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

THE INVENTION
The claims are directed to markers for trails, routes and the like
having sponsorship indicia thereon, and to a method of using such markers.
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A signaling device comprising:
an exercise trail marker adapted to be placed along an
exercise trail having a beginning and an end;
geographic indicia on the marker indicating the distance
from the beginning of the exercise trail to the marker; and
sponsorship indicia on the marker.

SUMMARY OF DECISION
We AFFIRM.

ISSUES
The issues presented in this appeal are:
1. Are the geographic indicia recited in claim 1 patentably distinguishable
from the symbols 7 of Warren’s road sign? In other words, are the
geographic indicia functionally related to the substrate (the marker)? See
App. Br. 11-12.
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2. Is Warren’s sign adapted to be placed along an exercise trail, as called for
in claim 1? See App. Br. 10.
3. Is Cardone analogous art? See App. Br. 12-13.

DISCUSSION
Appellant argues all of the claims on appeal together as a single
group. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as
the representative claim to decide this appeal, with claims 2-5 and 7-15
standing or falling with claim 1.
Issue 1 – geographic indicia
Appellant argues that the symbols 7 (“2 MILES”) on Warren’s road
sign are merely “‘road information,’” and that Warren does not “teach or
suggest indicating a distance measurement from a location.” App. Br. 11.
The “geographic indicia” of claim 1 is printed matter whose only
function is to convey information (e.g., mileage) to a person viewing the
marker. See Spec. 3, second para.
“Where the printed matter is not functionally related to the substrate,
the printed matter will not distinguish the invention from the prior art in
terms of patentability.” In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Appellant argues that the function of the “geographic indicia” of claim
1 is different from the function of the symbols 7 of Warren, on which the
Examiner reads the “geographic indicia” limitation. Reply Br. 5.
Specifically, Appellant points out that claim 1 recites “geographic indicia on
the marker indicating the distance from the beginning of the exercise trail to
the marker,” while a person reading Warren’s sign would desire to know
how far it is to something, rather than from something. Id.
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The distinction to which Appellant refers is “‘useful and intelligible
only to the human mind’”; thus, the functional language and the substance of
the printed mater cannot impart patentability to the claim. See In re Lowry,
32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395,
1399 (CCPA 1969)). The “geographic indicia” does not depend on the
marker’s structural elements, and the marker’s structural elements do not
depend on the “geographic indicia.” See Ngai, 367 F.3d at 1339 (“[T]he
printed matter in no way depends on the kit, and the kit does not depend on
the printed matter.”). Thus, the printed matter (the “geographic indicia”)
does not exploit, or interrelate with, the underlying structural elements and,
therefore, is not “functionally related to the substrate.” See id. Accordingly,
the distinction argued by Appellant between claim 1 and Warren is
nonfunctional printed matter, and therefore does not render claim 1
patentable over Warren.
Issue 2 – exercise trail
Appellant argues that Warren does not teach or suggest placing the
disclosed road sign along an exercise trail, and that, accordingly, Warren’s
road sign is not “an exercise trail marker.” App. Br. 10; Reply Br. 14.
Appellant’s Specification does not provide a lexicographic definition
of “exercise trail.” Indeed, Appellant concedes that the words “exercise”
and “trail” are not used together in the originally-filed Specification. App.
Br. 9. We find that Appellant has not amended the Specification to refer
explicitly to an “exercise trail” or to provide a lexicographic definition of
such terminology.
Appellant has not presented any evidence or cogent argument
showing that the Examiner’s position, that the claim terminology “exercise
trail” is sufficiently broad to read on a roadway (Ans. 3, 4), is unreasonable.
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More importantly, Appellant has not presented any evidence or compelling
argument showing that Warren’s road sign is not capable of being placed
along an exercise trail, and thus is not “an exercise trail marker adapted to be
placed along an exercise trail,” as called for in claim 1.
Issue 3 – Analogous Art
Appellant argues that Cardone is directed to a kiosk, and thus is not in
Appellant’s field of endeavor, and further, that in inventing an exercise trail
marker, a person of ordinary skill would not consult a kiosk design. App.
Br. 12. Thus, according to Appellant, Cardone is non-analogous art. Id.
First, we note that the Examiner does not rely on Cardone to support
any proposed modification to the design of Warren’s road sign. Rather, the
Examiner relies on Cardone as evidence that it was well known at the time
of Appellant’s invention to obtain remuneration from a sponsoring agency in
exchange for displaying advertising information pertaining to that agency.
Ans. 3; see Cardone, para. 25. Warren already describes “advertising
matter” 6 on the road sign. Warren, p. 1, ll. 16-17 and 101-104.
For purposes of showing obviousness under 35 U.S.C. § 103(a),
“[a] reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem.” In other words, “familiar items may
have obvious uses beyond their primary purposes.”
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)
(citations omitted). Moreover, in making a determination with regard to
obviousness, we should not limit ourselves to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant but whether it was obvious to a person with
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ordinary skill in the art. Thus, “[u]nder the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007).
One of the problems encountered by Appellant in arriving at the
invention is defraying the cost of making and posting the device (the
marker), or even obtaining a profit therefrom. Spec. 4. Cardone addresses
this same problem, by displaying advertising information pertaining to a
sponsoring agency in exchange for remuneration from that agency (para.
25), and thus would have commended itself to an inventor’s attention in
considering the problem faced by Appellant. Thus, we agree with the
Examiner that Cardone is analogous art.

DECISION
For the above reasons, 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)(1)(iv).

AFFIRMED

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