Ex Parte CronaDownload PDFPatent Trial and Appeal BoardOct 16, 201310587803 (P.T.A.B. Oct. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BJÖRN CRONA ____________ Appeal 2011-005566 Application 10/587,803 Technology Center 2600 ____________ Before MAHSHID D. SAADAT, JASON V. MORGAN, and PETER P. CHEN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-005566 Application 10/587,803 2 STATEMENT OF THE CASE Introduction Appellant’s invention relates to a method and a device for forming patterns for bead-inlaid plates based on converting original pictures to a digital, bitmapped representation using a grid of intersecting lines and color matching for each square (see Spec. 1:22-27). Exemplary claims 1 and 10 read as follows: 1. A method of creating a pattern for a bead-inlaid plate using a computer, comprising the steps of: - providing a colour picture, - converting the colour picture to a digital image file suited for electronic processing, - showing on a monitor associated with the computer the picture that corresponds to the digital image file, - selecting on the monitor, using a user input device of the computer, an area of the shown picture for which a pattern is to be created, - selecting a format of a bead-inlaid plate, - dividing the selected area of the shown picture into a grid of intersecting lines including squares of a uniform size, each of said squares corresponding to a bead on the bead-inlaid plate, so that the grid of intersecting lines also corresponds to the selected format, - determining according to a predetermined algorithm for each square that colour among colours available for beads which best represents or agrees with the colour of the square, - showing on the monitor a picture of the selected area including the colour determined for the square in each square, - changing on the monitor, using a user input device of the computer, at least one colour quantity for the picture of the selected area and/or changing the colour in individual squares, and - finally printing a pattern including the selected colours for the bead-inlaid plate. 10. The method of claim 1, wherein said colours available for beads is a relatively low number of predetermined color hues. Appeal 2011-005566 Application 10/587,803 3 The Examiner’s Rejections Claim 10 stands rejected 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. (See Ans. 3-4). Claim 1 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Morito (US 6,003,577) and Korytar (Artopik, Patterns for Cross Embroidery, http://web.archive.org/web/20021210231743/http://www. artopik.rksoft.sk/index.htm, archive snapshot taken Dec. 10, 2002). (See Ans. 4-10).1 Issues on Appeal Appellant’s contentions present us with the following issues: 1. Under the second paragraph of 35 U.S.C. § 112, with respect to appealed claim 10, would the claim reasonably apprise those of skill in the art of its scope? 2. Under 35 U.S.C. § 103(a), with respect to appealed claim 1, would one of ordinary skill in the art at the time of the invention have found it obvious to combine Morito and Korytar to render the claimed invention unpatentable? PRINCIPLES OF LAW Indefiniteness The general rule is that a claim must set out and circumscribe a particular area with a reasonable degree of precision and particularity when 1 Separate patentability is not argued for the dependent claims rejected over Morito and Korytar, or further in combination with the other cited prior art. (See App. Br. 19-20). Appeal 2011-005566 Application 10/587,803 4 read in light of the disclosure as it would be by the artisan. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Acceptability of the claim language depends on whether one of ordinary skill in the art would understand what is claimed in light of the specification. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). See also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004): The requirement to “distinctly” claim means that the claim must have a meaning discernible to one of ordinary skill in the art when construed according to correct principles . . . . Only when a claim remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction must a court declare it indefinite. (Citations omitted). However, our reviewing court further points out that a claim which is of such breadth that it reads on subject matter disclosed in the prior art is rejected under 35 U.S.C. § 102 rather than under 35 U.S.C. § 112, second paragraph. See In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983), citing In re Borkowski, 422 F.2d 904, 909 (CCPA 1970). Obviousness The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991), and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Supreme Court has explained, “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The Examiner can satisfy Appeal 2011-005566 Application 10/587,803 5 this burden by showing some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Id., 550 U. S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS Rejection under 35 U.S.C. § 112, Second Paragraph The Examiner’s underlying basis for support of this rejection is that the claim term “relatively low” (recited in claim 10) is indefinite as it is not clear what constitutes a relatively low number (Ans. 3-4). Appellant contends that the Specification, at page 4, line 7, explains that the beads can have a number of colors ranging from 1 to 30, which provides a range of numbers for the bead colors (App. Br. 20). We agree with Appellant and find that, while broad in terms of the number of colors describing “a relatively low number,” the language of claim 10 as a whole is such that one of ordinary skill in the art could reasonably ascertain the scope of the claim. Therefore, we do not sustain the rejection of claim 10 under the second paragraph of 35 U.S.C. § 112. Rejection under 35 U.S.C. § 103(a) We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We highlight the following for emphasis. Appellant argues that the combination of the references fails to teach or suggest the claimed steps of showing the picture corresponding to the Appeal 2011-005566 Application 10/587,803 6 digital image file and the user’s changing the color quality of a picture area (App. Br. 10-11). Appellant further challenges the Examiner’s proposed rejection over the combination of Morito and Korytar because: (1) the Examiner did not determine all the factors discussed in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), (App. Br. 10-16); (2) the references are non-analogous (id. 17-18); and (3) Morito teaches away from the combination (id. 19). Appellant’s arguments are not persuasive. The Examiner provides a comprehensive response to Appellant’s arguments by explaining that Figures 4 and 5 of the Korytar document disclose a screen capture of the user interface where the digital image of the picture is divided into squares having a color selectable by the user (Ans. 12-18). We also note that the Examiner has provided sufficient evidence to show the availability of the Korytar as prior art and what it discloses (Ans. 19-26). We also agree with the Examiner that the references are analogous because Korytar describes creating a design by editing the color squares of a digital image, which further enhances manufacturing of the bead-inlaid picture of Morito (Ans. 26-27). We specifically note that Appellant’s challenge to the references individually is not persuasive of error in the Examiner’s position because all of the features of the secondary reference need not be bodily incorporated into the primary reference; consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the Appeal 2011-005566 Application 10/587,803 7 other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). In other words, the teaching value of each reference is in the disclosed method for creating digital images that may be further edited and used for a bead-inlaid picture or an embroidery pattern (see also Ans. 27). Further, we disagree with Appellant’s contention (App. Br. 19) that Morito’s discussion of the low skill-level needed for its disclosed automated process teaches away from the combination. Indeed, in consonance with the record, the Supreme Court has indicated that: [It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem . . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S. at 420 (citation omitted). We also find that the Examiner (see Ans. 4-6, and 12-16) has provided an articulated line of reasoning with a rational underpinning to support the conclusion of obviousness for the proposed combination of Morito and Korytar. KSR, 550 U.S. at 418. We agree with the Examiner that an ordinarily skilled artisan would have recognized and appreciated the obviousness of applying to the bead-inlaid image manufacturing of Morito, Korytar’s teaching of user input on a monitor for selecting specific colors of each square in the digital color image, and thereby improve the design process. Therefore, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a). Appeal 2011-005566 Application 10/587,803 8 CONCLUSIONS On the record before us, we conclude that the Examiner has erred in rejecting claim 10 under the second paragraph of 35 U.S.C § 112. However, because the combination of Morito and Korytar teaches or suggests all the limitations of claim 1, the Examiner has not erred in rejecting claim 1, as well as claims 2-10, falling therewith. DECISION The Examiner’s decision rejecting claims 1-10 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 tj Copy with citationCopy as parenthetical citation