Application of Fielder

• Decision Date: 05 April 1973
• Docket Number: Patent Appeal No. 8788.
• Citation: 471 F.2d 640,176 USPQ 300
• Parties: Application of James C. FIELDER and Hubert H. Underwood.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

176 USPQ 300, 471 F.2d 640 (1973)

Application of James C. FIELDER and Hubert H. Underwood.

Patent Appeal No. 8788.

United States Court of Customs and Patent Appeals.

January 18, 1973.

Rehearing Denied April 5, 1973.

Edward D. O'Brian, Anaheim, Cal., attorney of record, for appellants. J. Harold Kilcoyne, Washington, D. C., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents.' R. V. Lupo, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.

LANE, Judge.

This appeal is from the decision of the Board of Appeals sustaining the examiner's rejection of the sole remaining claim in appellants' application¹ for "Tabulating Type Ballot Construction" as unpatentable under 35 U.S.C. § 103. We affirm.

The Subject Matter

Appellants claim a voting ballot of defined structure. The ballot is constructed to allow a voter to indicate his preference in an election by selectively puncturing perforated areas placed next to the names of the candidates or the answers to referendum questions.

The structure of the ballot is shown in Figure 1 as follows:

In the drawing, the ballot card 10, with edges 12, 14, 16 and 18, has rows 28 of perforated areas 30 located adjacent to rows 25 of spaces for indicia 26 (no indicia shown). Figure 1 depicts face 22, and the other face is similarly constructed. The perforated areas 30 on the right side of the card 10 are those which apply to indicia on face 22 while the areas 30 on the left side of the card apply to indicia on the other face. Both faces can be used because of this offsetting of perforated areas. Finally, sloping edge 20 enables a differentiation between the front and back faces of the card.

The ballots are asserted to be easy to make, use by the voter and tabulate by computer, and to provide a relatively inexpensive alternative to the use of conventional voting machines.

The appealed claim reads as follows:

4. A tabulating type card ballot which comprises:

(a) a flat, rectangular, tabulating card having opposed surfaces and parallel side edges connected by parallel ends;

(b) means formed on said card for mechanically differentiating between the surfaces of said cards;

(c) each of the surfaces of said card containing a row of different, separate indicia, each of such indicating an item to be voted on by the use of said card;

(d) a perforated area adapted to be engaged by an instrument so as to be removed from said card leaving a hole in said card so as to indicate a vote corresponding to one of said indicia located along a side edge of said card opposite each of said indicia;

(e) those perforated areas opposite those indicia on one surface of said card being located adjacent to one of the side edges of said card and those perforated areas opposite those indicia on the other surface of said card being located adjacent to the other of the side edges of said card;

(f) said indicia in said rows being spaced from said side edges of said card a sufficient distance so that none of said indicia are disturbed when any of said perforated areas are removed from said card;

(g) the surfaces of said card being printed so as to indicate the correspondence of the indices of each surface of said card and the perforated areas opposite such areas so that a voter can visually determine which of said areas should be removed from said card in voting on a specific item;

(h) said perforated areas being located on said card so that the absence of a specific perforated area may be determined so as to indicate a vote corresponding to the one of said indicia opposite such area.

Prima Facie Obviousness

The board affirmed the rejection of that claim under 35 USC 103 as obvious from Cunningham et al.² (Cunningham) in view of Brougham,³ Nevin⁴ and Lasker.⁵

Cunningham discloses a ballot structured so that votes may be cast by puncturing selected areas located adjacent to indicia and tabulated by machine.

Brougham discloses a record card for use with statistical or other machines in which selected index points may be punctured by the user. The points are perforated to facilitate separation from the card.

Both Nevin and Lasker are directed to sorting cards. They teach the use of both sides of a card and the use of a sloped edge.

The board agreed with the examiner that it would have been obvious to one of ordinary skill in the art to modify the Cunningham ballots by adopting the expedients suggested by Brougham, Nevin and Lasker and thereby arrive at a ballot upon which the claim on appeal reads.

Appellant does not seriously contend that the references would not appear to suggest the claimed subject matter. In fact, the solicitor urges that appellant has conceded that a case of prima facie obviousness has been established.

The burden of appellants' argument is that the claimed invention has enjoyed substantial commercial success and satisfies long-felt, but previously unsolved, needs. Appellants rely on affidavit evidence of record and primarily assert that the board failed to give proper weight to that evidence.

While appellants' brief before this court includes some language which could be taken as a concession of prima facie obviousness, there are some contentions advanced which would appear to be inconsistent with such a concession. At oral argument, however, appellants did not seek to deny that a concession had been made and, indeed, focused on the submitted affidavit evidence rather than any deficiencies in the reference teachings or their combination per se. Suffice to say, we agree with the board and solicitor that a prima facie case of obviousness has been made out by the Patent Office.

Appellants' Rebuttal Case

This court has indicated that a prima facie case of obviousness is established when it would appear that the reference teachings upon which the Patent Office relies are sufficient for one of ordinary skill in the relevant art to make the combination proposed by the examiner. In re Lintner, 458 F.2d 1013, 1016, 59 C.C.P.A. ___, ___ (1972). The inquiry initially centers about the prior art upon which the Patent Office depends for its rejection.

Appellants claim that other specific prior art references, not of record, support patentability. They are critical of the Patent Office for failing to cite and consider them. It was suggested that the solicitor include copies of these references in his brief, and we are asked to take judicial notice of them.

Once prima facie obviousness is found, the burden shifts to the appellant to rebut it, if he can, with objective evidence of nonobviousness. In re Antle, 444 F.2d 1168, 1172, 58 C.C.P.A. 1382, 1387 (1971); In re Palmer, 451 F.2d 1100, 1102, 59 C.C.P.A. ___, ___ (1971). It was therefore appellants' burden in the present case to submit any prior art which they regard as tending to prove nonobviousness. The references to which appellants refer were not before the board, are not part of the record before this court, and are not being offered as proof of facts of which this court will take judicial notice. We do not consider them. 35 U.S.C. § 144. See also In re Moore, 409 F.2d 585, 589, 56 C.C.P.A. 1060, 1065 n. 7 (1969); In re Mergner, 399 F.2d 231, 236, 55 C.C. P.A. 1415, 1421 n. 5 (1968).

Appellants have attempted to overcome the prima facie case of obviousness primarily by the filing of an affidavit of coinventor Fielder accompanied by seven exhibits labeled A through G.

Exhibits A, B and C show a sample ballot and how the ballots are used by the voters and tabulated by election officials.

Exhibits D, E and F are reproductions of generally laudatory newspaper accounts of the use of the claimed ballots in California and Hawaii.

Exhibit G is a comparative analysis of actual cost of an election in which the ballots were used against projected cost using paper ballots.

Patent Office Position

The record does not make clear the positions of the examiner and the Board of Appeals regarding the appellants' rebuttal evidence. The examiner said:

Appellant\'s exhibits have been carefully considered. The apparent commercial use of appellant\'s device is not deemed persuasive of unobviousness thereof in light of the reference.

The board introduced its opinion with the following:

We have given careful consideration to all the arguments presented on appellants\' behalf in the brief and at the oral hearing and to the affidavit and the exhibits of record; however, we do not find them convincing of error as to the stated rejection for reasons to follow herein.

The board's opinion principally deals with the prior art teachings and their combination as proposed by the examiner. The only exposition of the board's reason for not being persuaded of patentability by the affidavit evidence appears in the following paragraph:

Commercial success, of an invention, while a factor to be considered in determining obviousness of the invention, is not of patentable significance where the question of obviousness is not in doubt, as is the case here. In re Rynkiewicz et al., 390 F.2d 742, 55 C.C.P.A. 977 (1968).

Appellants contend that the board gave little or no consideration to the substance of the showing offered by them and argue that this approach to obviousness under § 103 is erroneous. Moreover, appellants strenuously assert that the evidence is persuasive of nonobviousness when properly evaluated on the merits.

The solicitor is of the view that the board did not consider the evidence on the merits since it found patentability not to be otherwise in doubt. The thrust of the solicitor's argument before this court is that evidence of commercial success and satisfaction of long-felt, but previously unsolved, needs is immaterial to the question of obviousness when obviousness is deemed to be established from the prior art without doubt.

OPINION

Both the board and the examiner stated that the affidavit evidence had been "considered," and we have no way of determining the extent...