*3 DYK, Circuit Judge.
Charles D. Huston Darryl J. Cor- (“appellants”) appeal nish the decision of the United States Appeals Board of Patent (“Board”) and Interferences affirming the 1, 5-18, final of claims and 21-26 Application 08/926,293 U.S. Serial No. (“the application”). '293 parte Ex (Bd. Pat.App. No. 00-0947 July & Int. 2001). Because the properly Board con- cluded that the claims are not entitled to date of an applica- earlier filed tion and would have been one of ordinary skill in the art at the time of invention, we affirm.
BACKGROUND
The claimed matter of the '293 application is directed to a method and apparatus for displaying message on a screen based on golfer’s current position as determined (“GPS”) global positioning satellite system. A is a constellation of satellites that circle the earth transmit- ting signals that are used to determine the location of a receiving signal. device Houston, Charles D. Thompson & L.L.P., Austin, Texas, Knight, argued applications, Huston filed two earlier appellants. 07/804,368 Application U.S. Serial No. comprising steps satellite on December (“the application”), '368 (“CIP”) of: continuation-in-part Appli- global position- States remote positioning United application, the '368 (“the 08/313,718 ap- '718 receiver ing satellite No. cation Serial course; 22, 1994. The September plication”), ultimately as U.S. predeter- issued "plurality application storing, '718 (“the course; patent”). 5,364,093 '093 locations on Patent No. mined contend Appellants re- determining, entitled issue, application, is using '293 receiver on the mote filing date of '368 system; satellite global positioning the benefit *4 filing date making effective application, and than December rather December advertising message displaying Patent and States 1994. The United golf course based golfer to the on (“PTO”) contends that Trademark Office remote position of the receiver on only benefit should application the '293 loca- predetermined to the relative 30, 1994, filing December golf from its own on the course. tions date. application, '293 claim of a differ- 21 adds the limitation Claim to a method patent1 relates The '093 determining for means ential correction determining displaying system for error correction. The transmitting an a golf between approximate distance means enables the differential correction such golf course target a on the ball and the location of the system to calculate The invention of a hazard. golf cup a pro- accurately. Claim golfer more a receiver patent '093 utilizes vides: golf to determine near the ball positioned an adver- system displaying A21. for and, on ball golf of the golf a tising message golfer to a on the distance to a calculates position, positioning using global course specification a hazard. golf cup or comprising: system satellite invention an embodiment describes posi- means correction radio differential that includes bi-directional receiving location for tioned at known correction infor receiving error capable of positioning, global from the sat- signals pat '093 mation and “other information.” determining appar- an system, for ellite ent, 4,11. col. 63-65. location, transmitting a cor- and for ent 1, 5-18, 21-26 the '293 Claims the difference between rection based on appeal. on Claims application are issue apparent and the the known location Claim 1 representative. are location; provides: receiver means global positioning golf- accompanying the transportable for displaying an advertis-
1. A method for golf during play on the course er ing message indicative of the receiving signals for global positioning using course applica- earlier filed date derives from Board errone- appellant and the 1. Both the ). discrep- than ously patent, rather is no material cited the '093 tion Because there discussing application, whether ancy application, '368 when patent and the between benefit from the however, should '293 need to remand to the there is no 10, 1991, filing date. See PTO. (2000) (priority § for benefit of U.S.C. apparent position of the receiver means PROCEEDINGS BELOW on the golf global posi- using rejected examiner 1, 5-18, claims tioning satellite and including a and 21-26 as obvious under 35 U.S.C. link receiving communication correc- 103(a), relying on various combinations tions from the differential correction eight references: U.S. Patent No. means, global positioning receiver 5,056,106 to Wang et al. (“Wang”); U.S. being operable means for determining 5,095,430 Patent No. to Bonito et al. accurate (“Bonito”); U.S. 5,095,430 Patent No. apparent based on the position and the Fukushima (“Fukushima”); et al. U.S. corrections; 5,326,095 Patent No. to Dudley (“Dudley”); 5,524,081 U.S. Patent No. (“Paul”); to Paul storage means storing plurality 5,664,948 U.S. Patent No. to Dimitriadis et predetermined positions accurate (“Dimitriadis”); al. Hurn, Jeff “GPS: A course; Guide to the Utility,” Next Trimble Navi- means linked to said global positioning (“Hurn”); gation, 1989 and “RTCM Rec- receiver means and storage said means ommended Standards Differential Nav- *5 determining for if position the of the Service,” istar 2.0, 1, Version Jan. receiver means coincides with one of the (“RTCM”). plurality predetermined posi- accurate An initial question was whether the Paul tions; and patents Dimitriadis should be consid display coupled means global the prior 102(e) ered as art § under U.S.C. positioning receiver for display- against means application.2 the '293 applica The ing the advertising message golf- to the tion that ultimately issued as Paul was er the 2, 1994, if May the receiver means filed application and the that ultimately coincides with one of predetermined the issued as Dimitriadis was filed 11, positions Thus, accurate global position- of the October 1994. if appli the '293 ing receiver on cation were filing means the to a course. entitled date of filing the date of the application, '293 claim (emphasis add- application, '368 Paul then and Dimitriadis ed). prior would not be art under section 24, 102(e). Claim which depends 21, from claim determined that ap examiner requires a communications link to receive pellants were not entitled to the benefit of and transmit the advertising message: the application date of the '368 be 21, “The of claim said communica- application cause the '368 did not disclose tions link being operable receiving for currently an the matter in the advertising message and for sending said provided by manner paragraph the first message received to the display 112, § means for required by 35 U.S.C. 35 U.S.C. display.” application, '293 claim 24. § 120.3 Specifically, the examiner deter- 102(e) provides: 2. Section person application "A shall be patent An for for an invention (e) patent entitled the invention disclosed in provided by the manner unless — (2) patent granted was described on an paragraph first 112 of section this title in— in application patent by for another filed in the application previously filed in the United by United States before the ap- invention States ... which filed an inventor or plicant patent....” 102(e) 35 U.S.C. previous inventors application named effect, (2000). shall have the same as to such inven- tion, though on the date of filed provides: Section 120 application, patenting if before the 3. filed information, Dimitriad- specific did not '368 that mined 61-67, sys- is, the GPS 11. wherein advertising mes- col. anof display disclose of a GPS re- claims the location forth in the tem determines as set golfer sage to a id., 31-34, ceiver, con- and where accordingly col. 11. The examiner appeal. on patents may presented Dimitriadis advertising messages be sidered predetermined passes art. vehicle when the landmark, geographic as a such location prior art eight description A brief id., 19-28, 11. 11. col. 32-36. col. fol- examiner relied references using “differential Hurn article discloses to a method directed Wang is lows. occurring errors to calculate correction” spread-spectrum employs apparatus signal transmission of a satellite during Wang, col. system. radiolocation that, ability to deter- given its and teaches hand- system uses 11.13-14. The errors, achieves differential GPS mine ref- fixed-position units and receiver held than conven- accurate measurements more distance to determine transmitters erence Radio Technical Commis- GPS. The tional key and direction between (“RTCM”) ref- Maritime Services sion for course, example, locations that differential also discloses erence pin. particular ato and direction distance improves technique significantly is a teaches Id., Fukushima col. 12-35. accuracy of GPS. system to locate the use of a GPS “pro- of a vehicle current rejec- following made The examiner apparatus navigation simplified vided tions: size, easy low cost and which is small (1) 1, 5-7,10,12,13, and 16-18 as claims *6 46-47. col. 11. to use.” 35 being unpatentable under U.S.C. a positioned on a receiver Dudley discloses 103(a) in of Fuku- Wang § over view un- tags positioned used with golf course Dudley; shima and locations on derground predetermined (2) 8, 9, 14, being un- 15 as claims and displays and 103(a) § patentable under 35 U.S.C. receiver) (having the a messages to of Fukushima Wang view over to position relative golfer’s view Dudley and in further of and tags. of location predetermined Bonito; Bonito discloses 11.4-41. Dudley, col. (3) being unpat- 11 and 21-26 as claims lighting pen a to marking computer 103(a) § under U.S.C. entable golfer’s between determine distance Fukushima Wang in view of over Bonito, col. point. and a location selected view Dudley and further and informa- 7,11. discloses 60-65. Paul RTCM; Hurn or either uses system that management tion and (4) 1, 5-7,10,12,13, and 16-18 as claims a GPS to determine unpatentable under 35 U.S.C. being course, Paul, col. 11. on a golf receiver 103(a) in view § over Fukushima 41-43, 61-63, map of the course is where Paul or Dim- and either Wang one station, id., 6,11.61- col. at the stored base itriadis; advertising messages to displays (5) 8, 9, 14, being un- 15 as claims id., 8, 11. 18-20. Dimitriadis golfer, col. 103(a) § under 35 U.S.C. patentable locate current using to teaches Wang in view of Fukushima over provide to location- position of a vehicle (2000). § proceed- U.S.C. termination of of or abandonment ings application.... on the first First, of Paul and either one Dimitriadis agreed or the Board with the exam- Bonito, and in further view of iner that Huston’s was not enti- tled to the December filing date (6) being unpat- claims 11 21-26 as of the '368 application under 35 103(a) U.S.C. § entable under 35 U.S.C. § 120 it found that appli- the '368 because Wang over Fukushima in view of cation did not currently disclose the and either one of Paul or Dimitriadis claimed element of “displaying an advertis- further view of Hurn either ing message” a golfer in a manner RTCM. consistent with paragraph the first of sec- To rebut the examiner’s obviousness tion 112: findings, appellants filed a declaration un- agree We with the Horne, § examiner that der C.F.R. 1.132 from Rick matter appeal under Operations Vice President of of ProShot only Golf, Inc., entitled to the date of the exclusive Hu- licensee of (i.e., instant application that, patent. ston’s '093 Horne stated 1994). While appellants of December have would not have been claimed the benefit of two obvious to combine earlier-filed and Fuku- applications ... appellants patents: shima are not entitled to the benefit of those earlier- lacking What is from Wang and Fuku- filed applications § under 35 U.S.C. shima is anything that would have applications since those earlier-filed do taught, suggested, or motivated me or not disclose the currently claimed sub- ordinary one of skill in the art in De- ject matter in the provided by manner cember 1991 modify paragraph the first of 35 U.S.C. ranging system Wang by adapting Specifically, those applica- earlier-filed positioning system GPS-vehicle of Fuku- tions do not displaying disclose an ad- shima to become a or a GPS-based dif- vertising message a golfer as set ferential GPS-based forth distance deter- appeal. in the claims under mining method and as described present and claimed in the [application]. Id., slip op. at 5 *7 ¶ added). (emphasis Horne Decl. 15 The Board then considered the Horne 26, In an office action dated November declaration sponte and sua found that it 1997, the examiner considered the Horne any was “not weight,” entitled to because declaration and found it unpersuasive: the declaration is “The declaration of Rick Horne ... is directed to whether or not it would have rejection insufficient to overcome the of been obvious in December 1991 to a claims 3-18 upon Wang and 21-26 based person having ordinary skill in the art to in et al. view of Fukushima al. et and teachings have combined the Wang of Dudley.” and Fukushima in the manner set forth rejections examiner issued final of rejections the examiner in all the 1, 3-18, claims and 21-26 in a Final Office However, appeal. before us in this since Action August dated rejections the issue in all the before us appealed Huston to appeal the Board. The in this is whether or not it would Board held that all claims prop- had been have been in obvious December to a rejected erly rejection person “[s]ince least one having ordinary skill in the art to of appealed each of the claims has been have teachings Wang combined the of Huston, slip op. affirmed.” at 33. and the Horne declaration element, golf use of GPS first argument related appellants’ and the course, light in of the combination obvious any weight. to entitled are not thereto Later in its Wang of and Fukushima. Huston, slip op. at 15 found that separately opinion, the Board of ordi- the level determined The Board fully was golf of a course the use GPS on art. The Board pertinent in nary skill reference, art single prior a disclosed ordinary skill in of person that “the found Indeed, the Board noted patent. golf professional a golfer, not a the art is piece “Paul the closest art In our manager.... golf course and/or (from to appeal) us on art before properly re- view, prior art applied 22 n. 6. The Id. at the claimed invention.” clearly level and appropriate flects element, positional found the second Board higher than a the level to be demonstrates Dudley’s light advertising, obvious golf golf professional golfer, and/or teaching positional manager.” Id. course frequency a radio using GPS). (rather than merits of the obviousness Turning to the analyzed the Board rejection of claim accordingly affirmed the re The Board prior art and determined 10, 12, 13, 1, 5-7, 16- jection of claims unpatentable Wang over in view 18 as Wang, Fuku- teachings of the combined op. Dudley. slip Fukushima and shima, would have made it Dudley dependent treated at 17. The Board the invention was at the time obvious standing or 15 as claims ordinary having skill person made claims and falling parent their af (1) Wang’s radiolo- replace the art claims as rejection of those firmed distance system to determine cation Id. at 18. well.4 key loca- receiver from the hand-held course with tions on the The Board also sustained distance from the receiver to determine 21-23, unpatent- and 26 as of claims key locations on receiver to of Fukushima and over view able teaching on Fukushima’s course based Hurn or Dudley in further view of either simplified system presents that a GPS RTCM: is small in apparatus which
navigation that the The examiner determined (2) use; size, easy to in cost and low would have matter been golf- advertising messages display invention was at the time posi- er on the ordinary person having skill made to receiver based on the remote tion teachings of art to combine the in the teachings Dudley’s Dudley Wang, Fukushima set self-evident *8 advantages (1) rejection in above and to fur- forth thereof processing incorporate differential ther added). Thus, (emphases the Id. at 16-17 system accuracy to in the increase key of two elements claim Board identified Hurn or RTCM. taught by as either We 1:(1) system of a the use agree. golf- of course to determine (2) not er; system to at 19-20. Board did sustain of such Id. The and the use Wang in rejection 24 over advertising mes- of claim location-specific transmit Dudley in further and view of Fukushima sages The Board found the golfer. to (2002), Board, 1.192(c)(7) argue patentabili- § appli- appeal to the an In an Here, appellants ty according separately. each claim of group cant must the claims argue claims. separately these arguments did not presented, be 37 C.F.R. Hurn (though, unpatentable view of either or RTCM as over Fukushima in of view below, rejected noted that on al- Wang claim and Paul and in further of view grounds). ternative Id. at 18-19. either Hurn or RTCM: then The The Board turned to the examin- examiner ... determined that the rejection er’s alternative of claims. matter would have been rejec- sustained the Board examiner’s obvious at the time the invention was 1, 5-7, 10, 12, 13, tion of claims person and 16-18 made to a having ordinary skill in unpatentable under U.S.C. the art to being combine the teachings of 103(a) § in Wang over Fukushima view of Wang and either Paul or noted, and Paul or Dimitriadis. ... either As Dimitriadis and to incorpo- further the Board found that the rate was in processing differential the GPS not entitled to the of benefit the earlier to increase accuracy as taught date, and, therefore, fifing Paul Dimi- and either agree. Hurn or RTCM. We triadis, were both filed between 1991 which Huston, slip op. at 29. The Board noted properly pri- were considered that “the applied prior clearly art teaches 102(e). § or art under 35 U.S.C. (e.g., greater accuracy) benefits of ‘dif- ” rejection: Board sustained ferential GPS’ over ‘GPS.’ Id. at 29-30. examiner [T]he reached conclusion rejection The Board sustained the of ... that it would have been at claim 24 as being unpatentable over Fuku- (i.e., time invention was made in Wang shima of view and Paul 1994) person having further view of either Hurn or RTCM: ordinary skill the art to have utilized view, clearly our Paul teaches his apparatus Fukushima’s for a golfer on a fink being operable communication for so that the receiving message GPS receiver would sending the received message to the dis- using global positioning determined play display means and thus the satellite in view of Wang’s teach- appellants’ argument fails to establish ings display advertising messages any rejection error in the examiner’s predetermined at geographic locations claim 24 upon Fukushima view the GPS receiver in view of the teach- Paul and further view ings of either or Dimitriadis. We either Hurn or RTCM. agree. Huston, slip op. at 31-32. Huston, slip at op. 26. The noted Board The Board concluded that “[s]ince specifically “Paul teaches that the appealed least one of each of the from broadcasts the base unit to a cart can affirmed, claims has been decision clubhouse, include from notices weath- the examiner is affirmed.” Id. at 33. alerts, advertising, up- er leader board timely appealed. juris- Huston We have dates, etc.” Id. at 27. The Board further 1295(a)(4)(A). diction under U.S.C. 1, 5-7,10, 12,13, found claims and 16- id., together, 18 stand or fall and that STANDARD OF REVIEW
dependent *9 claims and 15 stand or claims, 28, fall with parent their id. ultimate “The determination of rejection accordingly sustained the as to whether an invention would have been ob these claims. 103(a) § vious legal under U.S.C. is a
The Board then underlying sustained the examin- conclusion on findings Kotzab, er’s of claims 11 and 21-26 as fact.” In re 217 F.3d (Fed.Cir.2000). applications do those earlier-filed since 1313, 1316 We USPQ2d currently sub- the claimed not disclose ultimate conclusion Board’s
review the provided manner ject matter in the deference, re and we without obviousness § 112. of 35 paragraph first U.S.C. the factual deter underlying Board’s view the applica- those Specifically, earlier-filed In re evidence. substantial minations for displaying an ad- tions do not disclose 1305, 1316, USPQ2d Gartside, 203 F.3d set vertising message to a forth (Fed.Cir.2000). scope and The 1769, 1776 appeal. the claims under art are reviewed the content of Huston, slip op. at 5 Id. evidence. substantial and with the examiner agree We with application DISCUSSION did not Board. The '368 the location-specific transmission disclose the I messages golfer using advertising sub in- question specification is whether states that the The first The GPS. “a application de relates to supports the Board’s vention of the '368 stantial evidence accu- apparatus which could date for the method proper that termination quickly determine the 1994, rately and December analysis is obviousness the ball a ball and the distance between 1991, filing date than December rather being played, features on the hole We hold that application. of the '368 golf cup green, such as does. ” cart, a hazard.... The dis- preceding they that are contend Appellants purpose further describes the closure 10, of the December to the benefit entitled “determining approxi- the invention as In application. '368 filing date of the ball and a mate distance between filing gain the benefit order “[t]o target course such as the under 35 application an earlier date of appa- the method and cup. particular, application] later-filed [a U.S.C. re- global positioning satellite ratus use description the written comply with must to de- positioned near the ball ceiver § 112.” Lock of 35 U.S.C. requirement location of the approximate termine the Inc., 107 F.3d Airlines v. Am. wood specification further de- golf ball.” The (Fed.Cir. 1571, USPQ2d 1965-66 “option scribes buttons” 1997). that “[t]he The examiner concluded player “tips” (e.g., to access allow the filing date of application has instant hints), “drinks,” “more” re- caddie display of respect to the 12/30/94 spectively. ... The “more” menu allows messages based on options, other such player to access for such in the support is no since there player can a scorecard where the earlier-filed, parent files.” related play- round for each enter scores for the desired, agreed: Board or food service. If scores er radio net- can be transmitted over the the examiner agree with We to base station work and downloaded appeal is subject matter under particularly] handicap input and is date of the only entitled tournaments. The “drink” during useful (i.e., instant player the. to order button allows 1994). appellants have While drinks.... of two earlier-filed claimed the benefit continues: specification appellants are not applications system 20 is conven- packet of those earlier- radio entitled to the benefit tional, includes modem radio § 120 under 35 U.S.C. applications filed *10 (including and radio 38 It follows that the Board properly interface con- shown). sidered the Paul antenna, patents and Dimitriadis system not The radio 102(e). art under 35 U.S.C. bi-directional in that it can receive 20 is Paul has an filing May effective date of and other error correction information 1994, and Dimitriadis has an fil- effective present position back as well as transmit 11,1994. ing date of October station 12.” base It prop also follows that the Board 4,11. (emphasis add- patent, ’093 col. 60-65 erly rejected the Horne declaration. ed). declaration, his repeatedly Horne referred Relying Stryker, on In re 58 to December 1991 and made clear that he 1340, 1341-42, C.C.P.A. 435 F.2d addressing was whether would have (CCPA 1971), USPQ appellants been obvious in December 1991 to combine argue application Wang the '368 discloses Fukushima art refer “information,” ences: “genus” transmitting lacking and that the '293 is directed to is from Wang WTiat and Fuku- particular “species” transmitting anything shima is would have taught, suggested, or motivated “advertising spec information.” me While the ordinary one of skill in the art in De- ification discloses the transmission of dis modify cember 1991 to the golf course help information messages tance ranging system Wang by adapting golfer’s position golfer based on the system GPS-vehicle positioning of Fuku- GPS, by determined it does not in fact shima to become a GPS-based or a dif- generic disclose the transmission of “other ferential GPS-based distance deter- golf information” to a mining method and as described Thus, er’s as determined GPS. present Applica- claimed U.S. even if could be as a viewed tion Serial No. 08/366/994. information,” subset of “other the trans ¶ added). (emphasis Horne Decl. 15 mission “other information” based on assertion, Contrary to the examiner’s as determined not GPS was spread spectrum the use of code modu- disclosed, particular and in the transmis signals Wang suggest lated not does positional advertising sion of was not dis system, that a GPS-based such as the filing closed. “Entitlement does date system could be success- not extend to matter which is not fully ground-based substituted for the disclosed, but would be obvious over what system Wang. Spread spectrum code expressly only disclosed. It extends signals modulated were well-known in Lockwood, that which is disclosed.” simply December and were one 1571-72, USPQ2d F.3d at Hu 1966. technique multiple available access parent application ston’s fails to disclosure communications. support presently “displaying ¶ added).5 (emphasis Horne Decl. 16 an advertising message” position, based on Thus, and the effective date is therefore we find that substantial evidence 30, 1994. supports the Board’s determination of the multiple Horne made additional references to De- access communications.” Horne ¶ spread spectrum cember 1991: “The code Decl. 10 "The structure technique modulation communication used in of GPS transmissions and the use of GPS as a long long position-fixing was known before December 1991 were known be- simply technique and was one available fore December 1991 and were also well-known *11 system in of positioning satellite view and its of the filing date effective teachings. Fukushima’s Horne declaration. 14. slip op. at
II
there was no mo
Appellants argue that
suggestion
Wang
or
to combine
tivation
is whether
question
The second
Fukushima,
proposed
that the
modifi
determinations should
obviousness
Board’s
change
operating princi
would
cation
be sustained.
invention,
that there was
ple of the
expectation of success
no reasonable
A.
Claim
teachings Wang,
of
and that
view of the
limitations
taught
were not
or
the claim
essence,
its
the Board conducted
ob
proposed
combination.
suggested
steps,
in two
cor
determination
viousness
arguments
need not address these
be
We
key elements it
the two
responding to
cause,
opinion,
later in its
the Board iden
First,
1.
it identified a
identified in claim
art, Paul,
single piece
prior
of
tified a
of a
taught
the use
set of references
fully
golf
the use of GPS on a
disclosed
golf
a
course to determine
system
on
position
golf
course to determine the
of a
Second, it identi
golfer.6
of a
the location
piece
Noting
er.
that Paul “is the closest
the transmission
prior
taught
fied
art that
(from
of
art
art before us
i.e.,
positional advertising,
display
invention,”
appeal)
on
to the claimed
Hu
advertising message to the
on
ston,
fully
slip op. at 22 n.
the Board
a
position
on the
golf
course based
teachings
of Paul:
described
predetermined
relative to
remote receiver
(see abstract)
golf
a
Paul teaches
golf
course.
locations on
infor-
management system
mation and
utiliz-
Positioning System ....
ing the Global
The use of a GPS
1.
golf
player
A
cart 12 or
receives the
golf
satellites,
signals from the four
com-
found the
of a GPS
The Board
use
pares
signals
clocked
and an on-
light
course obvious in
golf
computer
sig-
reads the clocked
board
Wang
and Fukushi-
the combination
position,
nals and determines the
patents:
ma
(ve-
dimension[s], of
three
the receivers
available).
locity of
also
have been obvious at the time
the receivers is
would
[I]t
(i.e.,
There is a
base location 8 on the
the invention was made
fixed
1994)
person having ordinary
course that also receives the satellite
cor-
Wang’s
signals
in the art to have modified
and transmits
skill
differential
channel,
global positioning
signal,
sat-
rection
via another
system to utilize
player,
course to de-
cart or
where the com-
ellite receiver
the cart
puter
of the remote re-
determines the
termine
using
global
player
yard.
to within a
The com-
ceiver on the
¶
August
Wang
protocols
all
Decl. 14
1990 when
was filed with
were
known." Home
as of
¶
added).
(emphasis
Decl.
U.S. Patent Office.” Horne
“In December
Co.,
GPS-
represented
v. John Deere
383 U.S.
See Graham
(1966) (set-
systems, ground-based posi-
positioning
86 S.Ct.
We note the Board’s decision could cart clearer, in play. Dudley types have been it could have teaches that various simply yard- art teaching cited information besides course, outputted by sys- a golf age use of GPS on rather than could also be his advertising messages to combining Wang including and Fukushima to estab- tem Nonetheless, premise. displayed preselected lish that times and look-up in EP- reasoning readily Board’s can be dis- that the table contained cerned, 92 and for micro- and the fact that the Board found ROM 90 RAMs Appellants 7. admit that Paul discloses all of 8. We also find no error in the Board's deter- ordinary mination of the level of skill in the the claimed features of the invention in claim Appellants art. contend that the Board erred exception positional advertising: with the identifying by precisely the level of not more reading essentially "The Board's of Paul is art, argue ordinary in the that the skill correct, except for its characterization of Paul person Board should have found a with ordi- 'prior parent patent '093 [T]he art.' nary golfer, professional "a skill to be discloses the essential features of Paul dis- manager.” (Appellants’ and/or except specific cussed the Board for the 37.) appellants Br. at But have not shown 41.) messages.” (Appellants' broadcast Br. at different, precise definition of the how a more changed pertinent the result. art would have Lee, advertising They urge that In re 277 F.3d can also include
controller 88
(Fed.Cir.2002),
USPQ2d
requires
partic-
are activated
messages which
vacate and remand to the Board.
we
tags
ular
disagree.
We
slip op. at 12
in which the
Lee involved
situation
that:
The Board noted
*13
“general knowledge
on its
to
Board relied
at the time
would have been obvious
[I]t
Lee,
patentability.” In re
277 F.3d
negate
(i.e., December
the invention was made
1345,
USPQ2d at
In such
at
61
1994)
ordinary
30,
person having
to
we held that such “knowl-
circumstances
messages
display advertising
...
to
skill
edge
placed
must be articulated and
on the
on the
course based on
golfer
to the
explained
record.” Id. The court further
in
the remote receiver
position
“that
of the cited references
‘deficiencies
Dudley’s teachings.
view of
general
cannot
remedied
the Board’s
Id. at
and further noted:
knowledge’
conclusions about what is ‘basic
view,
... would have
[it]
[been]
our
”
Id. at
61
or ‘common sense.’
the invention was
at the time
Zurko,
USPQ2d
(quoting
at 1434-35
In re
having ordinary
person
skill
made
1379, 1385,
USPQ2d
258 F.3d
59
display advertising
in the art
(citation
(Fed.Cir.2001))
omitted).
1697
messages to the
quite
Here we confront
different situa-
the remote re-
based on the
Despite
passing
tion.
the Board’s
refer-
Dudley’s teachings
ceiver based on
knowledge
to “common
common
ence
advantages
thereof
self-evident
sense,”
slip op. at
the Board in
added).
(emphasis
Id.
16-17
general
fact
not
on
own
has
relied
its
obviousness,
To establish
Rather,
knowledge.
it has found the moti-
identify
more than
Board must do
in
prior
vation
art references them-
prior
elements in the
art. There must also
cryptic,
selves.
Its conclusions are
but
objective teaching
in the
be “some
they
supported by
are
the record. The
knowledge generally
art
available
or that
quite specific
Paul reference indeed is
in
ordinary
skill in the art would
one of
describing
disadvantages
of the radio
the relevant
lead the individual to combine
frequency system
Dudley:
used
Fine,
teachings of the references.” In re
system
uses embedded radio fre-
1071, 1074, USPQ2d
1598
837 F.2d
5
(RF)
“mark” a
quency
tags to
course.
(Fed.Cir.1988)
“The
RF tags
are detected
a cart
motivation,
may
suggestion
teaching
or
displays yard-
mounted unit which then
explicitly
pri-
come
from statements
age
pin
yardage
to hazards on an
art,
knowledge
ordinary
one
alphanumeric
system has
screen. The
art, or,
skill in the
in some cases the
following
limitations:
the screen is
problem
nature of the
to be solved.” In re
dynamic,
system provides
not
limit-
Kotzab,
1365, 1370, USPQ2d
F.3d
beyond simple yardage
ed information
Cir.2000)
(Fed.
(emphasis add
differentials, and the entire information
ed).
content
relative
Appellants complain that the Board did
not actual location on the course. The
suggestion
operator
not
or moti-
must
to an
specifically find a
commit
survey
vation to
the references
extensive
and installation of re-
combine
art,
except through
equipment
its reliance on
lated markers and
before the
system can
knowledge
common
and common sense.
be demonstrated.
2,11.
Thus,
Paul,
provides
supports
find that substantial evidence
col.
41-51.
system
a GPS
the motivation to substitute
that
Board’s determination
there is a suf
Dudley. Under
the radio
Dudley
ficient motivation to combine
the Board’s decision
such circumstances
course,
and hold
despite
affirmed
its failure to
must be
reasoning
the Board’s
is sufficient.9
cite the Paul reference for this
specifically
Accordingly,
uphold
we
the Board’s deci-
purpose.
affirm
sion and
the Board’s obviousness
stated,
Supreme
As the
Court
rejection of claim 1.
a reasoned
may
supply
we
not
While
agency’s
for the
action
basis
A. Claims
and 24
given,
not
SEC v.
agency itself has
Chenery Corp., 332 U.S.
*14
rejection
We also affirm the
of
(1947),
91
1995
we will
S.Ct.
L.Ed.
claims 21 and 24. The
properly
Board
than ideal clari
uphold a decision of less
concluded that
the additional features of
reasonably
ty
agency’s path may
if the
claims 21 and 24
in light
were obvious
of
Interstate Gas
be discerned.” Colorado
art. Claim 21 adds the limitation
FPC,
581, 595, 65
Co. v.
324 U.S.
S.Ct.
of a
correction
differential
means for de
(1945).
829,
fully why set forth the reasons one of CONCLUSION ordinary skill in the art would have been motivated to select and combine the rele- that Because we find the invention vant art references. claim 1 would have been obvious to one in in skilled the art in December 1994 view The Board sustained the examiner’s re- Fukushima, Wang, Dudley; jection specif- of claim 1 as obvious on two ic, light grounds. claim 21 would have been in alternative Under both of obvious Fukushima, rationales, of Wang, Dudley, and ei- these stated the Board conclud- RTCM; ther Hurn or and that claim 24 ed that the combination of Fukushima and light Wang taught would have been of Fuku- the use of a GPS obvious respect, agree I cannot the Board’s of a receiver on the location determine Huston, No. 00- parte Ex conclusions as to the combination of Paul golf course. (Bd. 14, Pat.App. & Int. slip op. Dudley “cryptic” they are are nonex- — 2001). The Board then cited Dud- July this court in In re Sang-Su istent. As held and, alternatively, Paul or Dimitriadis ley Lee, 1338, 1345-46, USPQ2d 277 F.3d teaching display of mes- (Fed.Cir.2002), “review of ad- position. Id. sages based on receiver’s ministrative decisions must made on the be the motivation to com- The Board found grounds agency. relied on ‘If those in the these two sets of references bine or grounds inadequate improper, are Board, According art itself. to the powerless court is to affirm the adminis- Wang, Fuku- teachings “the combined by substituting trative action what it con- Dudley would have made shima and adequate proper a more siders ” time the invention was made (quoting Chenery basis.’ Id. .v. SEC person having ordinary skill to a Corp., 332 U.S. S.Ct. (1) Wang’s radiolocation replace art” to (1947)). Where, here, L.Ed. 1995 GPS, Fukushima system with because grounds affirming stated Board’s simplified, taught advantages of GPS’s unpat- of claim 1 as examiner’s inexpensive navigation system, id. at 16- insufficient, court, clearly this entable are (2) 17; display advertising messages view, my compelled remand. the course based on the receiver, Dudley position of the because advantages”
taught “the self-evident there- of, Similarly, the Board found id. at mo-
appellants’ argument that insufficient to combine tivation existed *16 “un- Wang, and either Paul or Dimitriadis expressed persuasive reasons examiner’s above in our discussion of’ the COMPANY and SEABOARD LUMBER Wang, under Capital Development Company, Additionally, Dudley. Id. at 26-27. Plaintiffs-Appellants, specifically taught that Paul Board noted v. broadcasting of advertisements to carts, id. at 27. STATES, Defendant-Appellee. UNITED majority does not affirm the Board 01-5097, Nos. 01-5124. Instead, grounds. two on either of these provides concludes that “Paul the motiva- Appeals, States Court of United for the tion to substitute Federal Circuit. majority Dudley.” radio “cite[d] concedes that the Board never 2002. DECIDED: Oct. purpose,” Paul reference for this and the
majority’s support sole for its conclusion is passage from the reference opinion. in the Board’s appear
does not Nevertheless, majority Ante opinion nothing its does maintains “discer[nj” “cryp- more than the Board’s conclusions, all tic” id. at 1281. With due