Ex parte SIMMONS

Board of Patent Appeals and Interferences

Aug 18, 1998

08424064 (B.P.A.I. Aug. 18, 1998)

Application for patent filed April 19, 1995.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GLENN SIMMONS
________________
Appeal No. 97-2456
Application 08/424,0641
________________
ON BRIEF
________________
Before CALVERT, Administrative Patent Judge, McCANDLISH, Senior
Administrative Patent Judge and McQUADE, Administrative Patent
Judge.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Glenn Simmons appeals from the final rejection of claims 1
through 18, all of the claims pending in the application.
The invention relates “generally to measuring devices, and
more particularly, to measuring devices having color coded
Appeal No. 97-2456
Application 08/424,064
-2-
indicia thereon to facilitate the measurement of fractional
lengths with a minimum of errors and loss of time”
(specification, page 1). Claim 1 is illustrative and reads as
follows:
1. A measuring device comprising:
an elongated member having a measuring edge with a finite
length; and
measuring indicia including successive groups of equally
spaced color coded measuring marks located adjacent to and
extending along the length of said measuring edge and a different
group label identifying each of said successive groups;
wherein each individual measuring mark corresponds to a
selected fractional portion of each of said successive groups and
has a different color than all of the remaining measuring marks
in said group and is the same color as said measuring marks in
each of said successive groups which correspond to the
corresponding fractional portion in each of said successive
groups.
The references relied upon by the examiner as evidence of
obviousness are:
Hamalainen 1,142,418 Jun. 8, 1915
Glaese 4,323,234 Apr. 6, 1982
Jones, Jr. (Jones) 5,335,421 Aug. 9, 1994
Cruickshank 2,186,692 Aug. 19, 1987
(British Patent Document)
Appeal No. 97-2456
Application 08/424,064
-3-
The appealed claims stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 1, 3, 7 through 10, 12, 16 and 17 as being
unpatentable over Jones in view of Glaese;
b) claims 2, 4, 5, 11, 13, 14 and 18 as being unpatentable
over Jones in view of Glaese, and further in view of Cruickshank;
and
c) claims 6 and 15 as being unpatentable over Jones in view
of Glaese, and further in view of Hamalainen.
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 9 and 11) and to the examiner’s final rejection and
answer (Paper Nos. 7 and 10) for the respective positions of the
appellant and the examiner with regard to the merits of these
rejections.
As indicated above, all of the examiner’s rejections rest on
the basic prior art combination of Jones in view of Glaese. The
threshold issue in this appeal is whether the Glaese reference is
non-analogous art as urged by the appellant (see page 23 in the
main brief). A reference which is non-analogous is too remote to
be treated as prior art in evaluating the obviousness of a
claimed invention. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d
1058, 1060 (Fed. Cir. 1992).
Appeal No. 97-2456
Application 08/424,064
-4-
Glaese relates to “systems used for measuring the vertical
distance an individual is capable of jumping from a standing
position” (column 1, lines 6 through 8). The Glaese system
includes a jump and reach board 10 having “an easily readable
board surface that can be quickly and accurately read by a
recorder watching a jumper” (column 2, lines 18 through 20). In
this regard, Glaese teaches that
[t]he front surface 11 of the board is provided
with a visually perceptible full size scale (indicia)
as generally shown at 16. The scale 16 is provided in
equally spaced horizontal increments 17 spaced
vertically intermediate the top and bottom board edges
13 and 14 respectively. Preferably, the increments 17
are arranged in wide groups 18, each having an equal
number of increments. Each of these groups 18 is
labeled with an individual reference character 19. The
groups 18 are separated by successive base lines 20.
It is preferred that the increments 18 of each
group be individually color coded. This arrangement is
best illustrated with reference to FIG. 4 wherein the
various colors are indicated by standard color
reference symbols. The base lines 20, for example, may
be colored red. The succession of increments spaced
upwardly from the red base lines 20 for each group may
then be a succession of different colors. In the
example shown in FIG. 4, the next successive increment
upwardly from each base line 20 is colored white. The
colors next in vertical succession are blue, yellow,
green, and black. It is noted that each increment of a
group is colored differently from the remaining
increments of the group and that the increments of the
several groups match one another.
Appeal No. 97-2456
Application 08/424,064
-5-
. . . Therefore, an attendant need only recognize
the reference character associated with a given group
and one of the several colored increments associated
with that group to record a specific elevation [column
3, lines 9 through 44].
There are two criteria for determining whether art is
analogous: (1) whether the art is from the field of the
inventor’s endeavor, regardless of the problem addressed, and (2)
if the reference is not within the field of the inventor’s
endeavor, whether the reference is reasonably pertinent to the
particular problem which the inventor was involved. In re Clay,
supra. In the present case, the field of the appellant’s
endeavor is measuring devices and the particular problem with
which the appellant was involved was to facilitate the
measurement of fractional lengths with a minimum of errors and
loss of time (see the passage from the appellant’s specification
reproduced above). Glaese’s jump measuring system clearly falls
within this field of endeavor and is reasonably pertinent to this
particular problem. Thus, the Glaese reference constitutes
analogous art which was properly considered by the examiner in
evaluating the obviousness of the appellant’s invention.
Jones, the examiner’s primary reference, pertains to “the
provision of rules that minimize or eliminate the tendency of
users to make inaccurate measurements when making measurements
Appeal No. 97-2456
Application 08/424,064
-6-
involving one-eighth inch or one-sixteenth inch graduations on
the rule” (column 1, lines 24 through 28). By the term “rules,”
Jones intends to include “rulers, yardsticks, tape measures,
carpenter squares and the like” (column 1, lines 10 and 11). As
described by Jones, such rules
are marked along opposite edges with inch, half-inch,
quarter-inch, eighth-inch and sixteenth-inch
graduations. One edge having the one-sixteenth inch
graduations in a color different from all the other
graduation markings on that edge and sequentially
numbered within each inch in the same different color.
The other edge not having one-sixteenth inch
graduations and the eighth-inch graduations being in a
different color from all the other graduations on that
side and preferably different from the color of the
one-sixteenth inch graduations and sequentially
numbered within each inch in the same different color
[Abstract].
Jones meets all of the limitations in independent claim 1
except for those requiring each individual measuring mark to have
a different color than all of the remaining measuring marks in
its group and to be the same color as the corresponding measuring
marks in other groups. In this regard and notwithstanding the
appellant’s argument to the contrary (see page 8 in the main
brief), the measuring indicia on either edge of the Jones
measuring device comprises successive groups of equally spaced
Appeal No. 97-2456
Application 08/424,064
-7-
color coded measuring marks located adjacent to and extending
along the length of the measuring edge as broadly recited in this
claim.
The examiner’s conclusion that it would have been obvious to
one of ordinary skill in the art in view of the disclosure of
Glaese to modify Jones’ color coded indicia by providing
individual measuring marks each having a different color than all
of the remaining measuring marks in its group and the same color
as the corresponding measuring mark in other groups (see page 3
in the final rejection), thereby arriving at the subject matter
recited in claim 1, is well founded. The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is
it that the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to
those of ordinary skill in the art. In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). Glaese’s teaching that each
increment of a measuring group be colored differently from the
remaining increments in the group and that the corresponding
Appeal No. 97-2456
Application 08/424,064
-8-
increments of successive groups match one another to facilitate
the reading of the device would have furnished the artisan with
ample suggestion to modify the Jones device in the manner
proposed by the examiner. The appellant’s various arguments that
the references would not have suggested this combination, and in
fact teach away therefrom, are not persuasive because they are
predicated on the alleged shortcomings of each reference vis-a-
vis the claimed invention. Non-obviousness, however, cannot be
established by attacking references individually where the
rejection is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ
375, 380 (Fed. Cir. 1986).
Accordingly, we shall sustain the standing 35 U.S.C. § 103
rejection of claim 1 as being unpatentable over Jones in view of
Glaese.
We shall sustain the standing 35 U.S.C. § 103 rejection of
claims 3, 7 through 9, 12 and 16 as being unpatentable over Jones
in view of Glaese, and the standing 35 U.S.C. § 103 rejection of
claims 6 and 15 as being unpatentable over Jones in view of
Glaese and Hamalainen since the appellant has indicated that
these claims stand or fall together with claim 1 for purposes of
this appeal (see page 5 in the main brief).
Appeal No. 97-2456
Application 08/424,064
-9-
We also shall sustain the standing 35 U.S.C. § 103 rejection
of claims 10 and 17 as being unpatentable over Jones in view of
Glaese.
Claim 10, which depends from independent claim 9 and is
similar in scope to claim 1, calls for a second set of measuring
indicia that is adjacent to a second measuring edge and has
measuring marks which are complementary with the measuring marks
in the first set. Claim 10 also requires the measuring marks in
the second set to be the same color. The Jones measuring device
includes a second set of measuring indicia that is adjacent to a
second measuring edge and has measuring marks which are
complementary with the measuring marks in the first set. To make
the measuring marks in this second set the same color in order to
exhibit the look of the conventional single color measuring
indicia implied in Jones’ background discussion would have been
obvious to one of ordinary skill in the art as a simple matter of
common sense. In this regard, a conclusion of obviousness may be
based on common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion
in a particular reference. In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549 (CCPA 1969).
Appeal No. 97-2456
Application 08/424,064
-10-
Claim 17 depends ultimately from claim 9 and defines the
claimed measuring device as including two members at right angles
to one another (i.e., a carpenter’s square) and first and second
sets of measuring indicia on respective first and second
measuring edges of the device with the marks in the second set
being the same color as the corresponding marks in the first set.
Jones teaches that the measuring device disclosed therein, which
has complementary measuring marks on its two measuring edges, can
take the form of a carpenter’s square. It would have been
obvious in view of Glaese to provide the Jones measuring marks
with the coloring required by claim 17 for the reasons discussed
above in connection with claim 1.
Finally, we shall sustain the standing 35 U.S.C. § 103
rejection based on the combined teachings of Jones, Glaese and
Cruickshank with respect to claims 4 and 13, but not with respect
to claims 2, 5, 11, 14 and 18.
Cruickshank discloses a tape measure composed of a flexible
tape having a measuring scale on one side and items of
information on the other side, a housing for storing the flexible
tape, and an index on the housing denoting the positions along
the measuring scale at which respective items of information are
located.
Appeal No. 97-2456
Application 08/424,064
-11-
Claims 4 and 13, which depend ultimately from independent
claims 1 and 9, respectively, recite a housing for storing a
flexible tape measuring device. Cruickshank would have provided
ample suggestion to the artisan to provide the tape measure
embodiment disclosed by Jones with such a housing to store and
protect the tape.
Claims 2 and 5, which ultimately depend from claim 1, claims
11 and 14, which ultimately depend from claim 9, and independent
claim 18 recite measuring devices comprising, inter alia, a code
chart correlating each color of the measuring marks to a
fractional portion of each of the groups of marks. The
examiner’s reliance on Cruickshank’s information index to remedy
the conceded shortcomings of Jones and Glaese in this regard (see
pages 3 and 4 in the final rejection) is not well taken. In
short, Cruickshank’s disclosure of the information index does not
teach, as asserted by the examiner, “how a chart may be used for
the purpose of interpreting markings on a tape” (final rejection,
page 3), and would not have suggested a measuring device having a
color chart of the type recited in claims 2, 5, 11, 14 and 18.
In summary and for the above reasons, the decision of the
examiner to reject claims 1 through 18 is affirmed with respect
Appeal No. 97-2456
Application 08/424,064
-12-
to claims 1, 3, 4, 6 through 10, 12, 13 and 15 through 17 and
reversed with respect to claims 2, 5, 11, 14 and 18.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
HARRISON E. McCANDLISH ) BOARD OF PATENT
Senior Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-2456
Application 08/424,064
-13-
David C. Bruening
700 Koppers Building
436 Seventh Avenue
Pittsburgh, PA 15219-1818