Ex Parte Haberstroh et al

Board of Patent Appeals and Interferences

Jun 26, 2012

12875610 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES HABERSTROH and MARTIN P. HABERSTROH
____________________

Appeal 2012-008775
Application 12/875,610
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-008775
Application 12/875,610

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The claimed subject matter relates to a sketching device including a
substantially flat base and a grid of bumps disposed on the base that form a
plurality of intersecting grooves. See Spec. para. [0007]. A bottom of each
of the bumps is spaced apart from a bottom of an adjacent bump. See Spec.
para. [0011]. The bumps and grooves “act as a tactile guide to ensure that a
marking instrument travels along the desired groove with very limited, and
preferably, no deviation.” See Spec. para. [0010].

Claim 1, the sole independent claim on appeal, is reproduced below
with the key disputed limitation emphasized:

1. An improved sketching device, comprising:
a substantially flat base; and
a regular grid of at least LxW bumps disposed on the
base, wherein L is at least 20 and W is at least 20, such that a
bottom of each bump is spaced apart from a bottom of an
adjacent bump by a first distance comprising at least 0.005 mm
and no more than 5 mm; and
wherein the raised bumps are sized and positioned to
form a plurality of intersecting grooves that act as tactile guides
for use with drawing a trace on a paper with a marking
instrument.

Appeal 2012-008775
Application 12/875,610

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REJECTIONS
Appellants seek review of the following rejections:

(1) Claims 1-4 and 6-13 under 35 U.S.C. § 103(a) as unpatentable
over Irrgeher (US 4,451,519, iss. May 29, 1984) and Yokoyama (US
4,669,986, iss. Jun. 2, 1987). Final Rej. 2.
(2) Claim 5 under § 103(a) as unpatentable over Irrgeher, Yokoyama, and
Robertson (US 7,287,339 B2, iss. Oct. 30, 2007). Final Rej. 3.

ANALYSIS
Claims 1-4 and 6-13 over Irrgeher and Yokoyama
The Examiner found that Irrgeher discloses all of the limitations of
independent claim 1 with the exception that the bumps forming the grooves
are spaced apart from each other. Ans. 5. Pointing to Figure 2 of
Yokoyama in particular, the Examiner also found that “Yokoyama discloses
a template having projections thereon, which act as a drawing guide” in
which the “projections e are spaced apart by a width w.” Ans. 5. The
Examiner further found that the width w “is disclosed as being ‘around 1
mm.’” Ans. 5 (quoting Yokoyama, col. 2, l. 58).
The Examiner concluded that it would have been obvious for a person
of ordinary skill in the art to provide the projections and grooves of
Yokoyama in the drawing template of Irrgeher “for the purpose of allowing
a user to more easily fit the tip of a drawing utensil within each groove.”
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Final Rej. 2.1 The Examiner further concluded that it would have been
obvious for a person of ordinary skill in the art to
“substitute . . . spaced apart projections as disclosed by
Yokoyama forming grooves with a flat space at the bottom
along which a user is to move a writing instrument . . . for . . .
abutting projections as disclosed by Irrgeher forming grooves
along which a user is to move a writing instrument.”
Final Rej. 4.
We find the Examiner’s rejection insufficient to explain what would
have prompted a person having ordinary skill in the art to use the projections
e and grooves d of Yokoyama in the grid 2 of embossed elevations 8 and
corresponding grooves (unnumbered) of Irrgeher. The Examiner has not
provided any findings that either Irrgeher or Yokoyama recognized a
problem with the projections (embossed elevations 8) and corresponding
grooves used in Irrgeher to form the grid 2. The reason proffered by the
Examiner to modify the teachings of Irrgeher, i.e., “allowing a user to more
easily fit the tip of a drawing utensil within each groove” (Final Rej. 2), is
unpersuasive in light of the fact that the balls 9, 10 of ballpoint writing
implements do not actually make contact with the bottoms 4 of the grooves
in Irrgeher (Fig. 2). Moreover, Irrgeher already makes use of embossed
elevations 8 with side faces 5 having (i) an upper portion having a flatter
angle 7 (e.g., about 120º) and (ii) a portion adjacent to the bottom 4 of the
grooves having a steeper angle 6 (e.g., about 90º) to provide adequate
guidance for marking implements of different diameters. Col. 1, ll. 56-64;
Col. 2, ll. 57-67. “Owing to the flatter slope of the upper portions of the side
faces of the grooves, an adequate guidance will be provided even for

1 The Office Action dated Sep. 7, 2011.
Appeal 2012-008775
Application 12/875,610

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drawing implements which have a point diameter exceeding the grid line
spacing.” Col. 1, ll. 56-60. Accordingly, Irrgeher specifically discloses that
guidance will be provided by the embossed elevations 8 and corresponding
grooves even if the tip of a writing implement does not actually fit within the
width of the grooves, thereby making any widening of the grooves
unnecessary.
Moreover, we are not persuaded that substituting the spaced apart
projections e as disclosed by Yokoyama for abutting projections (embossed
elevations 8) as disclosed by Irrgeher is merely a substitution of one known
element for another as the Examiner suggests. Although Yokoyama
discloses that it was known in the art to provide a base board with grooves
formed (i) by depositing foamable ink on the base board (Col. 2, ll. 61-63);
(ii) by press means (Col. 3, ll. 43-45); or (iii) integrally with the base board
using a mold (Col. 4, ll. 5-9) and having a width of around 1 mm (Col. 2, l.
58) so as to be capable of receiving the tips of writing tools (Col. 2, ll. 9-10),
the grooves of Yokoyama are on a base board with sufficient flexibility to
absorb writing pressure to allow infants and children “to trace letters or the
like with natural writing pressure suited to themselves” on the base board
itself for repeated training (Col. 1, ll. 44-46, 61-64; Col. 2, ll. 36-40).
The Examiner has not provided any evidence that one of ordinary skill
in the art would have expected Yokoyama’s projections (formed of foamable
ink e) to predictably function in the orthogonal grid 2 configured to be
disposed under paper as disclosed in Irrgeher. See KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). While “the purposes of the devices [of
Irrgeher and Yokoyama] are broadly similar in that they are both intended
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for use as drawing aids to guide a user in drawing lines in a desired fashion”
(Ans. 6), the drawing material backing 1 of Irrgeher and the writing training
device of Yokoyama have differences which the Examiner has failed to
persuasively address in reaching his determination that the claimed subject
matter would have been obvious.
For example, the drawing material backing 1 of Irrgeher is inserted
under a piece of paper (Irrgeher, col. 3, ll. 9-11), while “Yokoyama
explicitly discusses that the writing training device is used without paper to
overcome the drawbacks of prior art devices . . . and a user can trace letters
or the like directly on the base board . . . .” App. Br. 4. In addition, “there
was no indication that the spaced apart foamable ink [e] of Yokoyama could
be disposed in a regular grid of spaced apart bumps that could effectively be
used as a tactile guide with a paper, as required by claim 1.” App. Br. 4.
For another example, “[t]he writing training device of Yokoyama lacks a
regular grid of spaced apart bumps, and instead includes grooves in the
shape of various letters or drawings completely surrounded and defined by
side walls.” Reply Br. 2. We find that the Examiner has failed to articulate
that one of ordinary skill in the art could have substituted one known
element for another, and the results of the substitution would have been
predictable. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Without a persuasive articulated rationale based on a rational
underpinning for modifying the reference as proposed, the Examiner’s
rejection cannot be sustained. For the foregoing reasons, we find that the
Examiner erred in concluding that the limitations recited in claim 1 would
have been obvious from the combination of Irrgeher and Yokoyama; and we
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reverse the rejection of independent claim 1 and its dependent claims 2-4
and 6-13 under § 103(a).

Claim 5 over Irrgeher, Yokoyama, and Robertson
The Examiner articulates no persuasive reason why the teachings of
Robertson might have remedied the deficiencies of the combined teachings
of Irrgeher and Yokoyama as applied to parent claim 1 and as discussed
hereinabove. For the foregoing reason, we find that the Examiner erred in
concluding that the limitations of claim 5 would have been obvious from the
combination of Irrgeher, Yokoyama, and Robertson; and we reverse the
rejection of claim 5 under § 103(a).

DECISION
The Examiner’s rejection of claims 1-4 and 6-13 under 35 U.S.C.
§ 103(a) as being obvious over Irrgeher and Yokoyama is REVERSED.
The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
being obvious over Irrgeher, Yokoyama, and Robertson is REVERSED.

REVERSED

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