Ex Parte Ulrich

Patent Trial and Appeal Board

Jul 15, 2016

12301829 (P.T.A.B. Jul. 15, 2016)

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.
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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.
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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.
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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.
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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.
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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
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[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
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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
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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
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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.").
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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
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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.
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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
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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
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"[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
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