Ex Parte Trainello

Board of Patent Appeals and Interferences

Jan 8, 2009

11141224 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY SALVATORE TRAINELLO
____________

Appeal 2008-6277
Application 11/141,224
Technology Center 2841
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Decided: January 8, 2009
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 13-20, the only
claims pending in the application. We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
Appeal 2008-6277
Application 11/141,224

The invention relates to “a measuring and marking instrument that can
measure and mark accurately and quickly without depending on the skill of
the person using the ruler.” (Spec. 3:1-3.) Claim 13 is illustrative of the
invention and is reproduced below:
13. A method of using an improved conventional ruler that
eliminates the skill required to measure and mark material quickly and
accurately, comprising the steps of:
(a) providing said conventional ruler including,
a recognizable shape made of a common rigid material of a
predetermined size, said conventional ruler having the usual indicia
lines along each edge, one said edge having a row of v-grooves
centered on said indicia lines, said v-grooves sized to fit the point of a
marking instrument,
(b) positioning said conventional ruler on said material,
(c) selecting a portion of said v-grooves enable a human to measure and
mark said material quickly and accurately at each corresponding said
indicia line, whereby with the inclusion of said v-grooves on said
conventional ruler, the skill required to measure and mark said
material quickly and accurately is eliminated.

The Examiner relies on the following prior art references to show
unpatentability:
Kurtz, Jr. 1,877,341 Sep. 13, 1932
Owen, Jr. 1,808,705 Jun. 2, 1931

Appellant requests review of the following grounds of rejection:
1. claims 13 and 14 under 35 U.S.C. § 102(b) as anticipated by Kurtz;
and
2. claims 15-20 under 35 U.S.C. § 103(a) as unpatentable over Kurtz
in view of Owen.
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Application 11/141,224

Appellant does not present arguments which are reasonably specific to
any particular claim. Accordingly, we decide the first ground of rejection on
the basis of independent claim 13 and the second ground of rejection on the
basis of independent claim 16.
ISSUES
Has Appellant shown that the Examiner reversibly erred in finding
that Kurtz discloses v-grooves which are “centered” on indicia lines as
claimed in appealed claim 13 and holes which are “centered” on indicia lines
as claimed in appealed claim 16?
Has Appellant shown that the evidence of non-obviousness, including
Appellant’s evidence of commercial success, outweighs the Examiner’s
evidence of obviousness?
We answer both of these questions in the negative for the reasons
discussed below.
FINDINGS OF FACT
1. Kurtz discloses a drafting ruler “adapted to emphasize the transverse
marginal indicia of the ruler” (ll. 2-7).
2. Figure 3 of Kurtz is reproduced below.

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Application 11/141,224

Kurtz Figure 3 shows one end of the ruler (ll. 20-21). The ruler
includes “the usual transverse measuring indicia 3 . . . with suitable
numerals 9” (ll. 26-29). A metallic strip 4 is positioned along one
edge of body 1 of the ruler (ll. 31-32). Strip 4 includes a plurality of
uniform notches 5 along its outer edge (ll. 32-33). Strip 4 further
includes “a plurality of spaced rectangular holes 7 arranged in
predetermined relationship to the transverse indicia 3 and the notches
5” (ll. 39-42). The holes 7 are uniformly spaced apart (l. 68) and
“provide four points each spaced with respect to both the notches and
the indicia” (ll. 43-45).
3. Appellant concedes that Kurtz discloses v-grooves 5 which are
“uniform meaning they are all the same shape or appearance.” (Br.
10.) However, Appellant contends that Kurtz fails to anticipate the
claimed method because Kurtz does not state that the v-grooves 6 or
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Application 11/141,224

holes 7 align with the indicia, which is critical to allowing marking of
a material quickly and accurately at each indicia line. (Br. 10, 11.)
4. The Examiner contends that because Kurtz’ “holes 7 are in a
predetermined relationship to the transverse indicia 3 and the notches
5 . . . these three features must be aligned in some manner.
Furthermore, the indicia lines, holes and notches are clearly illustrated
as being aligned in Fig. 3 of the Kurtz, Jr. device” (Ans. 4-5,
referencing Fig. 3 of Kurtz). The Examiner maintains that Kurtz’
ruler is “capable of the same functions” (Ans. 6) claimed by
Appellant.
5. Appellant points out that Kurtz’ v-grooves 5 are spaced from the
indicia 3 by an intervening longitudinal groove 6, space 4, rectangular
holes 7, and longitudinal groove 8. Appellant maintains that because
of the spacing created by these intervening features, Kurtz’ v-grooves
are not “precisely centered on the indicia” in a manner that allows the
user to accurately mark and measure at each indicia line in accordance
with the claimed method. (Br. 10.)
6. Fig. 2 of Appellant’s Application is reproduced below:
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Application 11/141,224

Application Fig. 2 illustrates a preferred embodiment of the invention
(Spec. 7:1) in which one edge of ruler 4 includes “a series of v-
grooves 6 that are . . . equally spaced longitudinally at each inch and
fraction of an inch or millimeter” (Spec. 5:8-10). The Specification
states that “[t]he advantage of having the v-grooves 6 and through
holes 8 on the present invention 4 is it enables a person to repeatedly
and quickly make an accurate mark at each division on the ruler”
(Spec. 6:1-3).
7. The Specification does not explicitly use the claim language “v-
grooves centered on said indicia lines.”
8. The Examiner concedes that Kurtz fails to disclose that the holes are
round as claimed in claims 15-20. (Ans. 4.) The Examiner relies on
Owens for a disclosure of using round holes with a measuring and
marking instrument for the purpose of accommodating a marking
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Application 11/141,224

implement, such as a pencil. (Ans. 4.) The Examiner contends that it
would have been obvious to the ordinary artisan at the time of the
invention to have replaced Kurtz’ rectangular holes 7 with Owens’s
round holes for the purpose of accommodating an ordinary pencil.
(Ans. 4.)
9. Appellant argues that Owens and Kurtz both disclose complete tools
which, unlike Appellant’s ruler, are complicated and difficult to
understand. (Br. 12.)
10. Appellant also relies on evidence of commercial success to establish
non-obviousness. (Br. 13.) Specifically, Appellant relies on a single
email dated August 8, 2007, from Chris Edwards, Director of
Procurement for General Tools & Instruments, New York, NY. In the
email, Mr. Edwards states: “We will accumulate the information on
what we would like to do with an Easy-Mark program over the next
few weeks. We will present it to our executive review board in early
September and then we should be ready to talk in mid September.”
11. The record on Appeal contains no evidence of whether Mr. Edwards
was expressing interest in a ruler which falls within the limitations of
Appellant’s claimed method and whether his interest related to the
specifically claimed features of Appellant’s ruler.
PRINCIPLES OF LAW
During examination, claim terms must be given their broadest
reasonable construction consistent with the specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
The proper test of a publication as a § 102(b) bar is “whether one
skilled in the art to which the invention pertains could take the description of
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the invention in the printed publication and combine it with his own
knowledge of the particular art and from this combination be put in
possession of the invention on which a patent is sought.” In re Elsner, 381
F.3d 1125, 1128 (Fed. Cir. 2004) (citing In re LeGrice, 301 F.2d 929, 936
(CCPA 1962)).
Description for the purposes of anticipation can be by drawings alone
as well as by words. In re Bager, 47 F.2d 951, 953 (CCPA 1931). See also,
In re Reynolds, 443 F.2d 384, 389 (CCPA 1971) (“[W]e think a person
skilled in the art would suspect that there was some reason for the
relationships shown in the drawing and would not regard such disclosure as
accidental or arbitrary.”).
The test for obviousness is what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art. In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991).
When there is motivation to solve a problem and there are a
finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options
within his or her technical grasp. If this leads to anticipated
success, it is likely the product not of innovation but of ordinary
skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious
under § 103.

KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007).
Commercial success or other secondary considerations of non-
obviousness may be attributed to the patented invention only where “the
marketed product embodies the claimed features, and is coextensive with
them.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir.
2006) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc.,
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229 F.3d 1120, 1130 (Fed. Cir. 2000)). See also, Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 305 n. 42 (Fed. Cir. 1985) (“Case
law requires that a nexus be established between the merits of the claimed
invention and the evidence proffered on secondary considerations, if the
evidence on secondary considerations is to be given substantial weight in the
calculus of obviousness/nonobviousness.”).
ANALYSIS
Appellant and the Examiner disagree over whether Kurtz discloses v-
grooves which are positioned on a ruler in a manner which allows a person
to perform the claimed method step of measuring and marking material
quickly and accurately at the indicia lines on the ruler (FF 3, 4). More
specifically, Appellant and the Examiner disagree over whether Kurtz’ v-
grooves are centered on the indicia lines (claim 13, step (a)). Appellant
maintains that Kurtz’ v-grooves are not “centered on said indicia lines” as
claimed because Kurtz’ indicia lines are separated from, or not sufficiently
close to, the base of the v-grooves (FF 5) as illustrated, for example, in Fig.
2 of the Application (FF 6).
Interpreting the claim language in light of the Specification, we find
that the broadest reasonable interpretation of “v-grooves centered on said
indicia lines” reads on Kurtz’ Fig. 3 configuration in which the v-grooves
are separated from each other in a manner which corresponds to the spacing
of the indicia, even though the v-grooves are spaced from the indicia lines
and separated therefrom by holes and grooves (see FF 2). Stated differently,
we find no basis for interpreting this claim language as precluding a
separation between the v-grooves and indicia, or requiring a configuration in
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which the indicia lines extend to the base of the v-groove as illustrated in
Fig. 2 of the Specification. (See, e.g., FF 6, 7.)
Appellant indicates that it is the centering of the v-grooves which
enables one to perform the step of measuring and marking. Because Kurtz
clearly discloses an arrangement in which the v-grooves are centered on the
indicia lines in the manner claimed, it would be expected that the claimed
step could likewise be performed using Kurtz’ ruler (see FF 1). Appellant
has not otherwise provided persuasive arguments to refute the Examiner’s
finding of anticipation for the reasons explained in the Answer (see Ans. 4-
6).
We are likewise in agreement with the Examiner that the claim 16
feature “round holes centered on said indica lines” is suggested by the
Examiner’s proposed combination of Kurtz and Owens (FF 8). Appellant
has not provided persuasive arguments to refute the facts and reasons relied
on by the Examiner in concluding that claims 15-20 would have been
obvious within the meaning of 35 U.S.C. § 103(a) for the reasons well-stated
in the Answer (see FF 9; Ans. 4-6). Moreover, we are in agreement with the
Examiner that Appellant’s evidence of commercial success (FF 10) does not
present persuasive evidence of non-obviousness. As noted by the Examiner,
at best, Mr. Edwards’ email establishes evidence of commercial intent (Ans.
6). In addition, Appellant has not shown the requisite nexus between the
alleged commercial success and the claimed features (FF 11).

CONCLUSION
Appellant has not shown that the Examiner reversibly erred in
rejecting claims 13 and 14 under 35 U.S.C. § 102(b) as anticipated by Kurtz;
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Application 11/141,224

and claims 15-20 under 35 U.S.C. § 103(a) as unpatentable over Kurtz in
view of Owen.
The decision of the Examiner rejecting claims 13-20 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
tc

JERRY S. TRAINELLO
4947 TAYWATER DELL
SARASOTA, FL 34235

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