       NOTE: This disposition is nonprecedential.

  United States Court of Appeals
      for the Federal Circuit
              __________________________

                 (Serial No. 11/161,741)
                   IN RE JIE XIAO
              __________________________

                      2011-1195
              __________________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences
              ____________________________

               Decided: October 12, 2011
             ____________________________

   JIE XIAO, of Holbrook, New York, pro se.

    RAYMOND T. CHEN, Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for appel-
lee. With him on the brief were LYNNE E. PETTIGREW and
SCOTT C. WEIDENFELLER.
              __________________________

    Before LOURIE, BRYSON, and DYK, Circuit Judges.
IN RE XIAO                                                 2


LOURIE, Circuit Judge.

     Jie Xiao (“Appellant”) appeals from the decision of the
Board of Patent Appeals and Interferences (“the Board”)
affirming the rejections of all pending claims of U.S.
Patent Application No. 11/161,741 (“the ‘741 Application”)
on the ground of obviousness. See Ex parte Xiao, No.
2009-008575 (B.P.A.I. Oct. 26, 2010) (“Board Decision”).
Because the Board correctly determined that the claims
would have been obvious to one of skill in the art, we
affirm.

                       BACKGROUND

    The ‘741 Application relates to combination locks hav-
ing tumbler rings marked with letters rather than num-
bers. Such locks can be configured to open when a user
aligns the letters on successive tumbler rings to spell a
pre-selected “password,” which may prove easier to re-
member than an arbitrary series of numbers or letters.
But the complement of available passwords is limited by
the letters provided on each tumbler ring, and represent-
ing the full alphabet requires rings of sufficient size and
complexity to accommodate at least twenty-six discrete
positions. To expand the number of passwords possible
with smaller tumbler rings, the ‘741 Application describes
a combination lock having a non-alphabetic “wild-card”
position label (e.g., a star, dollar sign, or blank space) on
each tumbler ring. In selecting a password, the wild-card
position can be taken to represent any letter not expressly
provided on a given ring—for example, a user could
remember the combination “DOO*” as “DOOR.”
3                               IN RE XIAO




‘741 Application figs. 1A, 2.
IN RE XIAO                                               4


    The examiner rejected all pending claims, 1, 2, and 4-
18, as obvious under 35 U.S.C. § 103(a) in view of U.S.
Patent 2261 (“Gray”), U.S. Patent 4,395,892 (“Reming-
ton”), U.S. Patent 6,621,405 (“Basche”), and U.S. Patent
Application Publication No. 2006/0169007 (“Fiegener”).
Office Action of Oct. 10, 2007 (“Office Action”) at 3-6.
Claim 1 is representative:

    1. A briefcase comprising a combination lock,
    wherein the combination lock comprises:

    a group of at least three tumbler rings, each
       tumbler ring operable to rotate and to set-
       tle at one of multiple predetermined posi-
       tions and having multiple position-labels
       thereon each corresponding to one of the
       multiple predetermined positions, and
       wherein each tumbler ring has thereon
       only one wild-card position-label and mul-
       tiple alphabetical-letter position-labels
       each being a single English alphabetical-
       letter, and the wild-card position-label is
       different from any one of the twenty-six
       English alphabetical-letters and is config-
       ured for representing any one of the
       twenty-six English alphabetical letters.

‘741 Application at 12.

    In relevant part, the examiner determined that Gray
discloses every element of the claimed lock except a wild-
card position label different from and configured for
representing any letter, and that Fiegener teaches that
position labels can be any symbol or letter that is distin-
guishable from another as a matter of design choice.
Office Action at 3-4. Furthermore, the examiner consid-
5                                                  IN RE XIAO



ered the wild-card position label to be mere printed mat-
ter, unrelated to the function of the claimed lock and thus
not entitled to patentable weight. Id. at 3, 7.

    The Board affirmed the examiner’s rejections. The
Board first noted that Appellant had asserted identical
arguments regarding each claim on appeal, drawn pri-
marily to whether requiring “only one wild-card position-
label and multiple alphabetical position-labels” rendered
the claims nonobvious over the cited art. Board Decision
at 3. The Board therefore considered this the only issue
presented and selected claim 1 as representative for
purposes of the appeal. Id. Proceeding to the merits, the
Board concluded that modifying Gray to include a non-
alphabetic position label as disclosed in Fiegener would
have constituted no more than the substitution of inter-
changeable elements with predictable results and thus
would have been obvious to one of ordinary skill in the
art. Id. at 4-5. Furthermore, the Board reiterated that
the claimed wild-card position labels are printed matter
that cannot distinguish over the cited prior art because
“any printed matter, letter, figure, number, other mark or
blank space may serve as a ‘wild-card’ without any altera-
tion of how the lock functions since what symbol consti-
tutes a ‘wild-card’ is a distinction that is discernable only
to the human mind.” Id. at 6.

    Appellant filed a timely appeal, and we have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A).

                        DISCUSSION

    Under § 103(a), “[a] patent may not be obtained . . . if
the differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
IN RE XIAO                                                6


the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.”
35 U.S.C. § 103(a) (2006). Obviousness is a question of
law based on underlying factual findings, which include
(1) the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) evidence of
secondary factors, such as long-felt need and commercial
success. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). Accordingly, we review the Board’s factual find-
ings for substantial evidence but consider its ultimate
conclusions on obviousness de novo. In re Gartside, 203
F.3d 1305, 1315-16 (Fed. Cir. 2000).

    First, the Board found, and Appellant does not dis-
pute, that (1) Gray discloses a combination lock having
tumbler rings bearing letters and blank spaces as position
labels, and (2) Fiegener teaches letters, numbers, ciphers,
symbols, colors, patterns, textures, or any combination
thereof for use as position indicators on a combination
lock. Board Decision at 3-4. In general, “[t]he combina-
tion of familiar elements according to known methods is
likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Appellant’s arguments to the con-
trary largely depend on distinguishing the ‘741 Applica-
tion from the cited references based on using a wild-card
position label to represent any letter to the user. Thus,
we turn to whether the claimed wild-card position labels
are entitled to patentable weight.

    We agree with the Board that the claimed wild-card
position labels constitute printed matter that cannot be
used to distinguish the prior art. We have held that
patent applicants cannot rely on printed matter to distin-
guish a claim unless “there exists [a] new and unobvious
7                                                 IN RE XIAO



functional relationship between the printed matter and
the substrate.” In re Gulack, 703 F.2d 1381, 1386 (Fed.
Cir. 1983). Relying primarily on In re Miller, 418 F.2d
1392 (CCPA 1969), Appellant argues that the wild-card
position labels exhibit a synergistic functional relation-
ship with the claimed lock and should thus be accorded
patentable weight. See Br. of Appellant at 21-26. Specifi-
cally, Appellant asserts that (1) the wild-card labels
render the claimed lock physically different from and
improved relative to preexisting designs, (2) the wild-card
labels function as more than simple position markers
because they can represent any letter and thereby enable
users to select any desired password even where each
tumbler ring has less than twenty-six positions, and (3)
the Board created an unsupported and improper rule
categorically excluding “mental distinctions” from the
patentability analysis. Id.

    We disagree. First, Appellant’s arguments based on
physical distinctions are unavailing because, as explained
in Miller, “what is significant here is not structural but
functional relationship” between the printed matter and
the substrate. Miller, 418 F.2d at 1396 (emphasis in
original).

     More importantly, the wild-card labels lack a true
functional relationship with the claimed lock. In Miller, a
patent applicant had claimed devices for preparing frac-
tional portions of recipes, such as measuring cups bearing
(1) volumetric indicia different from actual volume and (2)
a legend providing the ratio between the actual and
indicated volumes. Id. at 1394. Thus, to prepare a one-
third portion of a given recipe, a user could select measur-
ing devices bearing a “1/3 recipe” legend and follow the
recipe as written, measuring each ingredient using the
false indicia printed on the device but actually obtaining
IN RE XIAO                                                 8


one third of each specified amount without performing
any calculations. Id. The claims had been rejected, with
the “false indicia” and legend considered mere printed
matter, but our predecessor court reversed and held that
the functional interaction between the claimed cup,
indicia, and legend yielded a new and nonobvious inven-
tion. Id. at 1396. Similarly, in Gulack, we reversed
rejections against an educational device comprising a
band or ring printed with numbers tracking a cyclic
mathematical formula. Gulack, 703 F.2d at 1382-83. We
held that the band and digits were functionally related
because the band not only provided a substrate for the
printed digits but also presented them as an endless loop,
thus illustrating the cyclic nature of the formula. Id. at
1386-87.

    Miller and Gulack thus both concerned printed matter
interrelated with its substrate to an extent that the
overarching invention’s function depended on their inter-
action. Just as a cook would have found Miller’s measur-
ing cup counterproductive without its matched indicia
and legend, Gulack’s mathematical device relied on
combining its physical circularity and cyclical printed
matter to achieve its educational utility. In contrast,
Appellant’s claims demonstrate no such functional rela-
tionship between the wild-card position labels and the
underlying lock. The claimed lock’s function turns solely
on the physical alignment among tumbler rings, regard-
less of what may be printed at each position or how an
individual user subjectively perceives any particular
position label. In short, the presence or identity of a given
position label has no bearing on the lock’s ultimate func-
tion, and the claimed device can be used in the same way
and for the same purposes with or without wild-card
position labels.
9                                                IN RE XIAO



    Finally, the Board did not create a new “mental dis-
tinctions” rule in denying patentable weight to the wild-
card position labels. On the contrary, the Board simply
expressed the above-described functional relationship
standard in an alternative formulation—consistent with
our precedents—when it concluded that any given posi-
tion label’s function as a wild card is a distinction “dis-
cernable only to the human mind.” Board Decision at 6;
see In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(describing printed matter as “useful and intelligible only
to the human mind”) (quoting In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969)). In sum, the Board correctly
denied patentable weight to the claimed use of wild-card
position labels to represent any letter on a combination
lock.

    Appellant’s remaining arguments charge the Board
with improper hindsight reasoning and allege that vari-
ous secondary considerations preclude a finding of obvi-
ousness. Appellant’s hindsight arguments center on
alleged hindsight motivations for deriving wild-card
labels able to represent any letter in a password, but, as
discussed, the claimed wild-card function imparts no
patentable weight and so cannot support such arguments.
As to secondary considerations, the record lacks any
evidence supporting Appellant’s allegations of long felt
need or unexpected results.

                       CONCLUSION

     Accordingly, we affirm the Board’s determination re-
jecting claims 1, 2, and 4-18 as unpatentable under 35
U.S.C. § 103(a).

                      AFFIRMED
