Ex Parte Cowan et al

Patent Trial and Appeal Board

Jul 25, 2018

13032767 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/032,767
94877 7590
J. Todd Rushton
1040 Bountiful Blvd.
Bountiful, UT 84010
FILING DATE FIRST NAMED INVENTOR
02/23/2011 Samuel Mark Cowan
07/25/2018
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
7570
EXAMINER
KIM, SHINH
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
07/25/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL MARK COW AN, ROMAN ZENON SHWED,
and LINDSAY COW AN
Appeal2017-000947
Application 13/032,767
Technology Center 3600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III,
and JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-6, 8, 9, 11, and 12, which are all the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, Samuel Mark Cowan, Roman Zenon Shwed, and
Lindsay Cowan, the named inventors, constitute the real party in interest.
App. Br. 1.
2 Claims 7, 10, and 13-15 have been previously canceled.
Appeal2017-000947
Application 13/032,767
STATEMENT OF THE CASE
Introduction
Appellant's disclosure relates to a display including a number of free
moving display elements that have a portion of the overall display printed
thereon and are positioned on a supporting frame matrix. See Spec 2. Claim
1 is illustrative of the invention and reads as follows:
1. A high resolution scintillating display comprising:
a frame matrix having a plurality of support posts;
a constant display image having a plurality of visual
elements;
a plurality of display elements, each display element
including;
a mounting hole, a front surface, a rear surface, and one or
more of the plurality of visual elements printed on the front
surface,
each one of the plurality of display elements placed on a
specific one of the plurality of support posts in order to form the
constant display and;
each of the plurality of display elements allowed to move
freely on the specific one of the plurality of support posts.
The Examiner's Rejections
Claims 1 and 3 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Saunders (US 1,297,405; iss. Mar. 18, 1919) and Case
(US 7,540,105 B2; iss. June 2, 2009). See Final Act. 2-3.
Claims 4, 5, and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Saunders, Case, and Bekker (US 2005/0108912 Al; pub.
May 26, 2005). See Final Act. 3---6.
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Application 13/032,767
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Saunders, Case, and Noville (US 1,736,664; iss. Nov. 19, 1929). See Final
Act. 5.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Saunders, Case, Bekker, and Noville. See Final Act. 5---6.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Saunders, Case, Hughes (US 7,191,555 B2; iss. Mar. 20, 2007), and Botkin
(US 7,051,984 B2; iss. May 30, 2006). See Final Act. 6-8.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Saunders, Case, Hughes, Botkin, and Kim et al. (US 4,441,237; iss.
Apr. 10, 1984) ("Kim"). See Final Act. 9.
ANALYSIS
Claim 1
In rejecting claim 1, the Examiner relies on Saunders as disclosing the
recited display structure, including a frame matrix and a plurality of display
elements that are allowed to move freely on the support posts of the frame.
Final Act. 2-3 (citing Saunders Fig. 4). The Examiner further relies on Case
as disclosing a display comprising a constant display image formed of a
plurality of display elements. Final Act. 3 ( citing Case Fig. 8). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to modify Saunders with the constant display of Case to improve
the display made of a plurality of elements. Final Act. 3.
Appellants contend the recitation of "each of the plurality of display
elements allowed to move freely on the specific one of the plurality of
support posts" further supports the limitation of "scintillating" in the claim
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preamble, which requires the display elements move freely such that they
"provide the maximum scintillating effect." App. Br. 7-8. Appellants argue
that the display elements of Saunders, as shown in Figure 4 of the reference,
are attached to the board using pins or nails 20 in such a way that their free
movement is prevented. App. Br. 8. Additionally, Appellants refer to the
June 9, 2015, Declaration under 37 C.F.R. § 1.132 (see App. Br. Appendix
B) to indicate the scintillating effect of their display was recognized and
appreciated by their consumers. App. Br. 8.
The Examiner responds that the structure for attaching the display
elements in Saunders allows for the movement of the display elements on
the support system. Ans. 3. The Examiner explains, absent any recited
structural limitation to define the "scintillating" motion of the display panel,
the structure described in Saunders provides such motion because the
disclosed attachment means is capable of moving freely. Id.
We agree with the Examiner's interpretation of the term "allowed to
move freely" as a function of an attachment structure that is not fixed and is
achieved "by the free positioning of the display panels on the supports." See
id. Additionally, we agree with the Examiner's finding that Saunders
discloses attaching the display elements to the support system such that the
display elements can move freely. We further find each of the display
elements of Saunders is attached to the background frame via hangers 15,
which have one end formed into an eye 19 to be attached to and suspended
from staple 16 and have a hook 17 at the other end for attachment to the
perforation 18 on the display element. Saunders 1:74--85. The reference
also teaches that the disclosed attachment structure "permits the tag to swing
freely." Saunders 1: 85-88.
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Regarding the "scintillating" effect of the display, we observe that the
132 Declaration and the consumer emails only support the popularity of
Appellants' displays among consumers, but fail to address the specific
structure necessary to create scintillating effect or demonstrate its novelty.
In fact, Appellants' Specification describes the scintillating effect is created
by having some degree of separation between the display element and the
support frame, on one hand, and between neighboring display elements on
the other, "allow[ing] the display elements to move freely and provide the
maximum scintillating effect." Spec. 5: 14--18. We agree with the Examiner
that the proposed combination teaches or suggests display elements having
those characteristics.
As discussed above, Appellants' arguments have not persuaded us that
the Examiner erred, and we therefore sustain the Examiner's§ 103(a)
rejection of claim 1, as well as claim 3 not argued separately. See App. Br.
9.
Claim 4
In rejecting claim 4, which depends from claim 1, the Examiner
further relies on Bekker as disclosing the recited plurality of perforated
sheets forming a plurality of display elements and a removable waste
portion. Final Act. 4 ( citing Bekker Figs. 14, 18). Appellants argue the
display element of Bekker is for wrist tags or ID tags and not for a
"scintillating high resolution display" and "the non-analogous nature of the
Bekker reference" would not have made the combination obvious unless
impermissible hindsight is used. App. Br. 9. In response, the Examiner
restates the teaching of Bekker, which would have suggested using "display
panels made by the process of perforation" in combination with Saunders
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and Case to provide an efficient way to manufacture the display elements.
See Final Act. 4, Ans. 3--4.
We are unpersuaded by Appellants' contention and further find
Bekker relates to printable tags and may include other types of information
or content printed thereon. See Bekker ,r,r 7 6, 80, 101. Even if not from the
same field of endeavor, a reference may nonetheless be considered if
"reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). See also In re
Klein, 647 F.3d 1343 (Fed. Cir. 2011). "A reference is reasonably pertinent
if ... it is one which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Whether prior art
is "analogous" is a question of fact. Id. at 658. Here, Bekker addresses the
problem of printing perforated sheets including a plurality of tags which is
similar to Appellants' display elements formed on a sheet. Appellants have
not persuasively shown why Bekker' s teaching of a perforated sheet
including a plurality of display elements would not be reasonably pertinent
to the problem of producing printed tags or display elements, as the
Examiner finds.
Based on our analysis above, Appellants' arguments have not
persuaded us that the Examiner erred, and we therefore sustain the
Examiner's§ 103(a) rejection of claim 4, as well as claims 5, 6, and 8 which
are not argued separately. See App. Br. 10.
Claim 9
In rejecting claim 9, the Examiner further relies on Hughes as
disclosing the recited support posts having a larger diameter in the support
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shoulder area compared to the diameter at the terminal end. Final Act. 7-8
( citing Hughes Fig. 2B). The Examiner further finds Botkin teaches the
terminal end has a diameter that is smaller than the diameter of the support
shoulder. Final Act. 7-8 (citing Botkin Figs. 7-10). Appellants argue the
terminal end and base portion of Hughes require the display element rest
against the flat rectangular portion and is, therefore, not free to move, which
is different from the claimed scintillating display where the display elements
are allowed to move freely. App. Br. 11. In response, the Examiner
explains that the retaining plates or the flat rectangular portions provide a
stop for the display elements to be securely attached to the support post.
Ans. 5.
We agree with the Examiner that the retaining plates keep the display
elements or the attachment structure at the distal part of the support post and
away from the frame matrix. Additionally, the retaining plate is shown to be
positioned at a distance from the terminal end allowing enough room for the
movement of the display element. In other words, the attachment structure
of Saunders provides the means that allow the display element to move
freely whereas the teachings of Hughes and Botkin keep the display
elements at the terminal end of the support posts.
In view of our analysis above, Appellants' arguments have not
persuaded us that the Examiner erred, and we therefore sustain the
Examiner's§ 103(a) rejection of claim 9.
Claim 11
In rejecting claim 11, the Examiner further relies on Kim as disclosing
the recited "deforming the terminal end of the support post using heat, such
that at least one dimension of the deformed end is larger than diameter of the
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mounting hole of the display element". Final Act. 9. The Examiner
explains that "Kim discloses a method comprising a support post and
deforming a selected region of the support post using heat, such that at least
one dimension of the deformed end varied." Id. Appellants argue that Kim
teaches "heating a middle section of a 'continuous rod' and then using
torsional force to deform the heated middle or running section of the
continuous rod, (see, abstract, figs 1, 2, 3, etc.)." App. Br. 12. In response,
the Examiner explains that Kim teaches "a method of deforming a metal rod
by using heat" and provides a process for "altering the physical form of
metal using heat." Ans. 6.
We agree with Appellants. Kim discloses softening different sections
along the length of a metal rod by heating those sections and applying torque
to the softened sections in order to deform the rod into a conical shape. See
Kim Figs. 1, 8, 1:60-68. Therefore, as argued by Appellants (App. Br. 12-
14), Kim does not teach or suggest the specific type of deforming of the
support post such that it results in the deformed end being larger than the
mounting hole of the display element after inserting the terminal end of a
supporting post through the mounting hole. Therefore, we do not sustain the
rejection of claim 11.
CONCLUSION
As discussed herein, Appellants' arguments have not persuaded us
that the Examiner erred in finding the combination of Saunders and Case
with the other applied prior art teaches or suggests the disputed limitations
of claims 1, 4, and 9, as well as claims 2, 3, 5, 6, 8, and 12 which are not
argued separately. See App. Br. 9-14. However, with respect to claim 11,
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Appellants' contentions are persuasive of examiner error. Therefore, we
sustain the 35 U.S.C. § 103(a) rejection of claims 1-6, 8, 9, and 12, but we
reach the opposite conclusion with respect to the 35 U.S.C. § 103(a)
rejection of claim 11.
DECISION
The decision of the Examiner to reject claims 1---6, 8, 9, and 12 is
affirmed, but reversed with respect to the rejection of claim 11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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