Ex Parte UlrichDownload PDFPatent Trial and Appeal BoardJul 15, 201612301829 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/301,829 07/01/2009 Franz Ulrich 22846 7590 07115/2016 BRIAN ROFFE, ESQ 9206 Avers A venue, Unit 2 Evanston, IL 60203-1502 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 155.134 2115 EXAMINER SILBERMANN, JOANNE ART UNIT PAPER NUMBER 3638 MAILDATE DELIVERY MODE 07/15/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANZ ULRICH Appeal2013-007260 Application 12/301,829 1 Technology Center 3600 Before PATRICK R. SCANLON, BRANDON J. WARNER, and LISA M. GUIJT, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Franz Ulrich ("Appellant") seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-11, 13-16, and 18-22. Claims 12 and 17 have been cancelled. An oral hearing was held on February 25, 2016. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies Franz Ulrich as the real party in interest. Br. 3. Appeal2013-007260 Application 12/301,829 CLAIMED SUBJECT MATTER Claims 1, 8, and 20 are the independent claims on appeal. Claims 1 and 8 are illustrative of the claimed subject matter and are reproduced below. 1. A playing field for a sporting occas10n, compnsmg: marked lines related to a sport that is played on the playing field; and a uniform distribution of the same sign, either in a plurality of rows and a plurality of columns or according to a specified pattern, arranged on at least a portion of the playing field, wherein the signs on the playing field are structured and arranged, by providing the signs with at least one of selected contrast strength and selected dimensions of parts of the signs, to present different imaging as a function of proximity to the signs such that: the signs are recognizable in close-up photographs taken by a camera, and when viewed by a spectator from a more distant location, the spectator views a uniform surface structure on the playing field comprised of the signs without the signs being individually recognizable whereas when viewed from a more closer location, the signs are individually recognizable, and wherein the marked lines and the signs have different contrast strength with the contrast strength of the marked lines being greater than the contrast strength of the signs. Br. 21, Claims App. 2 Appeal2013-007260 Application 12/301,829 8. Method for applying signs onto the playing field, comprising: applying the same sign in an approximately uniform distribution, either in a plurality of rows and a plurality of columns or according to a specified pattern, arranged on at least a portion of the playing field by a vehicle which is fitted with a marking head which has several nozzles, controlling each of the nozzles in dependence upon the position of the vehicle and which correspondingly apply the signs such that during the application, this vehicle is moved along the playing field with its position being constantly monitored by a positioning system and with control of the nozzles resulting from co-ordination with actual position as determined by the positioning system, and providing the signs with at least one of selected contrast strength and selected dimensions of parts of the signs, to present different imaging as a function of proximity to the signs such that: the signs are recognizable in close-up photographs taken by a camera, and when viewed by a spectator from a more distant location, the spectator views a uniform surface structure on the playing field comprised of the signs without the signs being individually recognizable whereas when viewed from a more closer location, the signs are individually recognizable. Br. 22-23, Claims App. 3 Appeal2013-007260 Application 12/301,829 REFERENCES The Examiner relies upon the following prior art references: Mowry Ulrich Jentsch2 us 6,000, 728 US 2003/0168834 Al DE 29604773 Ul REJECTIONS Dec. 14, 1999 Sept. 11, 2003 May 22, 1997 The following rejections are before us on appeal: I. Claims 1-7, 11, 13-15, and 18-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jentsch and Mowry. II. Claims 8-10 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jentsch, Mowry, and Ulrich. ANALYSIS Rejection I Claims 1-6, 11, 18, and 19 Regarding independent claim 1, the Examiner finds that Jentsch, in Figure 4, discloses a playing field "provided with signs 12 uniformly distributed thereon in a specific pattern that covers at least a portion of the playing field." Final Act. 2. Furthermore, the Examiner finds that the signs of Figure 4 are "arranged in rows and columns" to provide "a matrix of the same sign." Ans. 4--5; see also id. at 3 (finding that Figure 4 of Jentsch shows the same sign arranged in a specified pattern). The Examiner also finds: The signs on the playing field are structured with at least one of selected contrast strength and selected dimensions to present different imaging as a function of proximity to the signs. That 2 References to Jentsch are to the English-language translation found in the record. 4 Appeal2013-007260 Application 12/301,829 is, the signs are not recognizable from far away and the signs are individually recognizable from a closer location. Final Act. 2-3. More specifically, the Examiner states that, "[a]s with any sign, [Jentsch's signs] must be viewed from close enough to read the indicia, and from far enough away will not be readable." Id. at 5; see also Ans. 4 ("[Jentsch's] signs are not recognizable from far away and are individually recognizable from close up."). Regarding the claimed different contrast strengths, the Examiner finds that "it is old and well known to make some markings darker than others so that they may be more noticeable." Final Act. 3. The Examiner also finds that "Mowry teaches using indicia that are darker, lighter, smaller, and larger to create a particular display," and concludes that "[i]t would have been obvious to one of ordinary skill in the art to utilize such differing indicia in the display of Jentsch so that some indicia may be made more easily visible than others, as taught by Mowry." Id. (citing Mowry, 4:34--62). The Examiner also determines that "[i]t would have been obvious to one of ordinary skill to select a particular contrast strength and dimension for the signs so that they may be easily seen by the desired viewer." Id. at 4. Appellant argues that Jentsch does not disclose a uniform distribution of the same sign. Br. 13. According to Appellant, [i]n Fig. 4 of Jentsch, several signs MMJJ are arranged in one column in one area of the playing field and three other signs MMJJ are arranged in another part of the playing field. The group of three signs and the group of four signs do not combine to create a uniform distribution of the same sign on at least a portion of the playing field, i.e., in a plurality of rows and a plurality of columns or according to a specified pattern, e.g., a specified two-dimensional pattern. 5 Appeal2013-007260 Application 12/301,829 Figure 4 shows an overhead view of a soccer field. Jentsch, 11. The field is provided with advertisement logos (i.e., "signs") in the form of either colored grass areas 26 or inserts 12. Id. at 11-12. As shown in Figure 4, these signs include one sign in the center circle of the field, four rectangular signs in the field of play, and four other signs in perimeter areas 30. Figure 4 shows that the four rectangular signs in the field of play are arranged in a pattern forming two uniformly spaced rows and two uniformly spaced columns. Accordingly, these four signs present a uniform distribution of signs in a plurality of rows and a plurality of columns. Appellant's argument that all of Jentsch's signs are not uniformly distributed is not persuasive because the claims employ the open-ended language "comprising," and thus do not preclude additional, non-uniformly distributed signs. 6 Appeal2013-007260 Application 12/301,829 Furthermore, we agree with the Examiner that the four rectangular signs are the same sign. See Ans. 3, 4--5. Figure 4 depicts each one of the four rectangular signs as having the same content: "MM" arranged over "JJ." Appellant does not argue persuasively that these signs of Jentsch are not the same. Rather, in response to the Examiner's statement that "patentable novelty cannot be principally predicated on mere printed matter and arrangements thereof' (Final Act. 5 (citing In re Montgomery, 102 USPQ 248 (CCPA 1954))), Appellant argues that the Examiner disregards the "essence" of the claimed invention. Br. 13. Specifically, Appellant argues that "the invention enables a playing field to include a significant amount of the same advertising or other signs while avoiding irritation to viewers of the sports activity on the playing field" and, with the claimed uniform distribution, "visualization of a repetitive pattern of the signs causes the signs to blend into the background." Id. at 13-14. This argument is not persuasive because, in relying on the "essence" of the claimed invention, it is not commensurate in scope with the claims, which do not recite the alleged benefits noted by Appellant. "It is well established that features not appearing in the claim cannot be relied upon for patentability. See In re Self, 671F.2d1344, 1348 (CCPA 1982)." Moreover, despite the above-mentioned statement that patentability cannot be based on "mere printed matter," the Examiner expressly finds that Jentsch discloses "the same sign arranged in a specified pattern (Ans. 3) and "a matrix of the same sign" (id. at 4--5). Appellant's next argument is that Jentsch does not disclose signs that present the "different imaging" recited in the claims. Br. 14. In particular, Appellant argues 7 Appeal2013-007260 Application 12/301,829 [i]n Jentsch, in view of the dimensioning and configuration of the signs MMJJ therein, when a camera is directed closer to the playing field, it is possible that no complete signs or a pattern of complete signs is recognizable. Rather, only part of one of the large MMJJ signs may be discernible. Then, when the camera pans outward, a complete sign or signs may come into view and when the camera pans to an area where the signs MMJJ are not located, the signs seemingly disappear. Id. These arguments, however, also are not commensurate in scope with the claim language. Independent claims 1 and 20 both require only that the signs ( 1) be recognizable in "close-up photographs taken by a camera;" (2) not be individually recognizable when viewed by a spectator from "a more distant location;" and (3) be individually recognizable when viewed from "a more closer location." Appellant's assertion that it may be "possible" for a camera to discern only a portion of one of Jentsch's signs or to pan to an area of Jentsch's playing field lacking signs does not persuade us that Jentsch fails to meet the three claim limitations mentioned above. Instead, we agree with the Examiner's position that any sign will be recognizable from a distance close enough to discern the sign indicia but not be recognizable from a distance too far away to discern the sign indicia. See Final Act. 3, 5; Ans. 4. The claim terms "close-up," "a more distant location," and "a more closer location" are relative terms that define the scope of the invention very broadly. Appellant argues for a narrow interpretation of the claim language, asserting that "[i]t would be understood by those skilled in the art when interpreting the claims, that viewing the signs from 'a more distant location' is limited to locations at which the activity on the playing field is recognizable" so as to encompass a spectator "at the stadium at which the playing field is located." Br. 10-11; see also Oral Hearing Transcript 13:3--4 ("A spectator implies somebody at the 8 Appeal2013-007260 Application 12/301,829 stadium."). The claims, however, make no mention of a stadium, and Appellant does not direct us to any disclosure in the Specification that suggests a spectator necessarily is in a stadium. Accordingly, we do not find Appellant's argument persuasive. As mentioned above, Figure 4 of Jentsch shows a soccer field. Jentsch, 11. Each of the four rectangular signs, as depicted in Figure 4, has a length that is approximately one-fourth of the length of the field and a width that is approximately one-sixth of the width of the field. We determine that these signs of such size would be individually recognizable when viewed from "a more closer location," such as from a location of a person standing on the side of the field. Also, the signs would be recognizable in "close up photographs taken by a camera" from a similar location. For the reasons discussed above, we also determine that there necessarily is "a more distant location," much farther away from the field, from which the four rectangular signs would not be recognizable. Although Jentsch does not describe expressly that the signs are unrecognizable from a distant location, we agree that it is proper in this instance, as the Examiner has done, to infer that there is a distance from which the signs of Jentsch would not be recognizable. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[An obviousness analysis] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). Accordingly, we agree with the Examiner that Jentsch discloses the imaging limitations recited in the claims. Appellant also argues that Mowry is not analogous to the claimed invention. Br. 15. According to Appellant, "[a]pplication of a security 9 Appeal2013-007260 Application 12/301,829 feature to a financial document to identify a copy thereof~ as disclosed in Mowry, is not analogous art to the field of the invention, i.e., marking of playing fields," and "[ s ]ecurity features for financial documents are in a completely different technology than the invention, a sports playing field wherein marker lines are used to demarcate playing areas." Id. Appellant adds that Mowry "is limited to applications in which a 'copy' of an original document can be made and it is necessary to ascertain the veracity of a document," and such "concerns have no bearing to playing fields." Id. at 16. The criteria for determining whether prior art is analogous, however, are "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Sci. Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 2380 (2015) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Furthermore, "[a] reference is reasonably pertinent if ... 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." Id. (citing Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011)). The Examiner determines that Mowry is analogous art because it "clearly addresses the features of contrast and dimension of indicia in a display." Final Act. 5. We take this to be a determination that Mowry is reasonably pertinent to the particular problem that Appellant faced. Appellant's Specification identifies creating a distinction in discernibility between the marked lines of the playing field and the signs as a particular 10 Appeal2013-007260 Application 12/301,829 problem that the inventor faced. See Spec. 2:9-12 ("[T]he application of the advertising matter takes place with a reduced contrast strength so that for the spectators who are primarily interested in the proceedings and not the advertising activity, the advertising matter is not of an irritating nature and, therefore, not too intrusive."); see also id. at 4:4---6 ("[T]he contrast strength of the pitch markings 2 is materially stronger than that of the applied printed matter because the pitch markings 2 must always be clearly recognizable."). Mowry discloses check 10 having lighter tone area 20 and darker tone area 22 printed thereon. Mowry, 4:35-38, Fig. 1. Lighter tone area 20 comprises first half-tone background image 30 and first half-tone warning image 32, and darker tone area 22 comprises second half-tone background image 34 and second half-tone warning image 36. Id. at 4:47-53, Fig. 2. The warning images are not readily observable on the original check but become apparent on photocopies of the check. Id. at Abstract. The purpose of the lighter and darker tone areas is to ensure that at least one of first half- tone warning image 32 and second half-tone warning image 36 will appear on a reproduced copy of check 10 even if the copier is adjusted to obscure the other half-tone warning image. Id. at 5:39--46. Therefore, Mowry, like Appellant's invention, is concerned with creating a distinction in discernibility between different types of indicia or markings printed on a substrate. As such, Mowry is reasonably pertinent to a particular problem with which Appellant's invention is involved and, thus, is analogous art. See KSR, 550 U.S. at 420 ("Common sense teaches, however, 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."). 11 Appeal2013-007260 Application 12/301,829 Moreover, as noted above, the Examiner also finds that "it is old and well known to make some markings darker than others so that they may be more noticeable" (Final Act. 3) and concludes that "[i]t would have been obvious to one of ordinary skill to select a particular contrast strength and dimension for the signs so that they may be easily seen by the desired viewer" (id. at 4). This finding and conclusion suggest that the claimed different contrast strength would have been obvious to one of ordinary skill in the art even without the teaching of Mowry. We find no error in this position. For the above reasons, we find Appellant's arguments regarding the different contrast strengths unpersuasive. Lastly, Appellant argues that the claimed invention "constitutes a new and unobvious functional relationship between the printed signs and the playing field that supports patentability" and "can distinguish printed matter over prior art." Br. 11-12 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)). In particular, Appellant asserts that there are parallels between the facts of the present case and those of Gulack, arguing that the printed signs [of the claimed invention] are interrelated with the playing field in a similar way that Gulack's numbers were related to his band because the printed signs do not achieve their variable recognition purpose without the playing field, and the playing field without the printed signs would similarly be unable to produce the desired result. Id. at 12. The issue in Gulack was whether claimed printed matter is entitled to patentable weight. See Gulack, 703 F.2d at 1384 ("We understand the board as not giving the printed matter patentable weight because the board felt that there is no functional relationship between the printed matter and the 12 Appeal2013-007260 Application 12/301,829 substrate."). The Examiner here, however, does give patentable weight to the claim language. In other words, the Examiner explains how each claim limitation is either disclosed in the prior art or rendered obvious by the prior art, and does not take the position that a claim limitation is printed matter not entitled to patentable weight. See Final Act. 2--4. As discussed above, despite stating that patentability cannot be based on "mere printed matter" in response to Appellant's argument that Jentsch does not disclose the same sign (id. at 5), the Examiner expressly finds that Jentsch discloses "the same sign arranged in a specified pattern (Ans. 3) and "a matrix of the same sign" (id. at 4--5). As such, the Examiner gives patentable weight to the "same sign" limitation. For the above reasons, we do not find Gulack applicable in this instance and are not persuaded by Appellant's argument. In view of the above, Appellant's arguments do not apprise us of error, and we sustain the rejection of claim 1under35 U.S.C. § 103(a) as unpatentable over Jentsch and Mowry. Appellant relies on the same arguments made in connection with claim 1 in asserting the patentability of dependent claims 2---6, 11, 18, and 19. Br. 16. As such, claims 2---6, 11, 18, and 19 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 7 and 15 Appellant argues that "Jentsch does not disclose two or more sub- section fields with each sub-section field being uniformly filled with the signs," as required by claims 7 and 15. Br. 16-1 7. Contrary to Appellant's assertion, however, Figure 4 of Jentsch shows the playing field divided into two halves or sub-sections by a center line, with each half or sub-section of the field being uniformly "filled" by two of the four rectangular signs. 13 Appeal2013-007260 Application 12/301,829 Therefore, we are not persuaded by Appellant's argument and determine that Jentsch discloses the subject matter of claims 7 and 15. Accordingly, we sustain the rejection of claims 7 and 15 under 35 U.S.C. § 103(a) as unpatentable over Jentsch and Mowry. Claims 13 and 14 In asserting that the subject matter of claims 13 and 14 would not have been obvious, Appellant again argues that Mowry is not analogous art. Br. 17-18. We, however, find this argument unpersuasive for the reasons discussed above. Accordingly, we sustain the rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Jentsch and Mowry. Claims 20--22 Independent claim 20 calls for a "playing field for a sporting occasion." Br. 24, Claims App. According to Appellant, claim 20 differs from claim 1 in that it specifies that the uniform distribution of the same sign is in a plurality of rows and a plurality of columns, the plurality of ro\'l/S extending in a common direction as and parallel to opposed edges of the playing field and the plurality of columns extending in a common direction as and parallel to different opposed edges of the playing field, whereby each row includes a plurality of signs and each column includes a plurality of signs and the signs in adjacent rows and columns are alongside one another. Id. at 18. Another difference is that claim 20 does not recite the different contrast strength limitation of claim 1. Id. at 24, Claims App. Dependent claim 22, however, adds such a limitation. Id. at 25, Claims App. Appellant argues that claims 20-22 would not have been obvious because "Jentsch does not disclose a matrix of sorts with multiple rows and columns and the same sign in each row and column, in addition to the 14 Appeal2013-007260 Application 12/301,829 varying structure of the signs vis-a-vis their contrast strength or dimensions as argued above with respect to claim 1." Id. at 18 (emphasis added). For the reasons discussed above, however, we are not persuaded by Appellant's arguments made in connection with claim 1. These arguments are equally unpersuasive with respect to claims 20-22. Furthermore, we determine that the four rectangular signs of Jentsch define a plurality of rows and columns in which "the plurality of rows extend[] in a common direction as and parallel to opposed edges of the playing field and the plurality of columns extend[] in a common direction as and parallel to different opposed edges of the playing field," with the opposing edges being the sidelines and end lines of the field. Jentsch, Fig. 4. In view of the above, Appellant's arguments do not apprise us of error, and we sustain the rejection of claims 20-22 under 35 U.S.C. § 103(a) as unpatentable over Jentsch and Mowry. Rejection JI Independent claim 8 calls for a "[m]ethod for applying signs onto [a] playing field" using a vehicle fitted with a marking head having several nozzles. Br. 22-23, Claims App. Claim 8 also calls for providing the signs with "different imaging," similar to that recited in claim 1. Id. In rejecting claim 8, and claims 9, 10, and 16 depending therefrom, the Examiner relies on Jentsch and Mowry for disclosing providing signs with different imaging on a playing field, and relies on Ulrich as disclosing "a vehicle including marking head 5 and several nozzles 6 wherein the marking of the field is controlled by a satellite navigation system." Final Act. 4. Appellant argues that this combination of references does not render obvious claims 8-10 and 16. Br. 18-19. Specifically, Appellant argues that 15 Appeal2013-007260 Application 12/301,829 "[a]lthough Ulrich discloses a vehicle with a marking head, use of the vehicle to apply the same sign in an approximately uniform distribution ... is not disclosed." Id. at 19. This argument is not persuasive, however, because the Examiner is not relying on Ulrich to disclose applying the same sign in a uniform distribution---or for providing the signs with the claimed different imaging. Rather, the Examiner relies on Ulrich to disclose using a vehicle to mark a playing field. Final Act. 4. We find no error in this position. Appellant also argues that "[t]he same sign in a uniform distribution is also not disclosed in Jentsch as argued above," and the cited art does not disclose presenting different imaging for the signs. Br. 19. In other words, Appellant is relying on the same arguments asserted in connection with claim 1 in arguing the patentability of claims 8-10 and 16. Because these arguments are not persuasive for the reasons discussed above, we sustain the Examiner's rejection of claims 8-10 and 16 under 35 U.S.C. § 103(a) as unpatentable over Jentsch, Mowry, and Ulrich. DECISION We affirm the decision of the Examiner rejecting claims 1-11, 13-16, and 18-22. 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)(l )(iv). AFFIRMED 16 Copy with citationCopy as parenthetical citation