Douglas A. Moore

Patent Trials and Appeals Board

Aug 19, 2019

14828707 - (D) (P.T.A.B. Aug. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/828,707 08/18/2015 Douglas A. Moore 22562-1492 / 2015-062 5497
96411 7590 08/19/2019
Dinsmore & Shohl LLP
255 East Fifth Street, Suite 1900
Cincinnati, OH 45202
EXAMINER
GUPTA, PARUL H
ART UNIT PAPER NUMBER
2627
MAIL DATE DELIVERY MODE
08/19/2019 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 DOUGLAS A. MOORE
_____________

Appeal 2018-008955
Application 14/828,7071
Technology Center 2600
______________

Before JAMES R. HUGHES, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–6 and 8–20. Claims 7 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellant, Toyota Motor Engineering & Manufacturing
North America, Inc. is the real party in interest (Appeal Br. 2).
Appeal 2018-008955
Application 14/828,707

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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention pertains to a portable
display apparatus that “is collapsible such that it can be quickly moved from
one location to another without significant hindrance” (Spec. ¶ 3; see also
Title; Figs. 1–3, 4A–C, 5, 6, 7A–B; Spec. ¶¶ 1, 2; Abs.; claims 1, 14, and
18). More specifically, Appellant discloses such an apparatus (100) having a
base 110, a telescoping collapsible component 120 supporting an imaging
device 140, and a display assembly 130 composed of light emitting devices
132 that rotate around component 120 and selectively illuminate in order to
display one or more images (Figs. 1, 2; see Spec. ¶¶ 24, 25, 32–35; claims 1,
14, 18). Independent claim 1 is exemplary, and is reproduced below, with
emphases and bracketed lettering added to the key limitations:
1. A portable display apparatus comprising:
a base;
[A] a telescoping collapsible component having a
proximal portion coupled to the base and a distal portion that is
extendible from the base, wherein the telescoping collapsible
component is configured to transition from a collapsed position
in which a plurality of component segments of the telescoping
collapsible component are stacked in a nested configuration to
an extended position; and
a display assembly coupled to the distal portion of
the telescoping collapsible component and to the base, wherein
the display assembly is arranged in a movable configuration
such that, when the telescoping collapsible component is in the
extended position, the display assembly rotates around the
telescoping collapsible component and selectively illuminates
to display one or more images.

Appeal 2018-008955
Application 14/828,707

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The Examiner’s Rejections
The Examiner rejected (i) claims 1–3 and 8–20 under 35 U.S.C. § 103
as being unpatentable over Bolle (US 2011/0149012 A1; issued June 23,
2011), Ben-Ari (US 6,739,725 B2; May 25, 2004), and Rasheta (US
2013/0233986 A1; published Sept. 12, 2013) (Final Act. 2–18); and (ii)
claims 4–6 under 35 U.S.C. § 103 as being unpatentable over Bolle, Ben-
Ari, Rasheta, and Rhee (US 2012/0056041 A1; published March 8, 2012)
(Final Act. 18–19).

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br.
11–23 and Reply Br. 2–8), the Examiner’s rejections (Final Act. 2–19), and
the Examiner’s response (Ans. 3–6) to Appellant’s arguments in the Appeal
Brief. Independent claims 1, 14, and 18 on appeal recite a portable display
apparatus (claims 1, 14) and a method of providing a portable display (claim
18) having a “base,” “a telescoping collapsible component,” and “a display
assembly” arranged so that the display assembly can be rotated around the
telescoping collapsible component (claims 1, 14, 18).
Appellant contends (i) “[t]he inflatable balloon in Ben-Ari inflates and
deflates three-dimensionally around the internal support structure rather than
in a linear direction. (See Ben-Ari, col. 10 lines 18-20). Thus, a telescoping
collapsible component, like that in the present disclosure, would not work
for the inflatable balloon in Ben-Ari” (Reply Br. 5); and (ii) “[p]lacing the
display substrate of Bolle on one end of the support arms of the internal
support structure of Ben-Ari would hinder the rotational movement of the
display substrate of Bolle because the internal support structure of Ben-Ari is
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Application 14/828,707

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designed to enable the inflatable balloon of the three-dimensional display to
unfold around it” (Reply Br. 7–8). We agree.
Appellant also contends the Examiner’s motivation for combining
Bolle, Ben-Ari, and Rasheta is conclusory and insufficient motivation
because it is not provided with a reasoned explanation (see Reply Br. 6–7
citing In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)).
Appellant argues that, as a result, the Examiner fails to address why a person
of ordinary skill in the art would integrate a selfie-stick taught by Rasheta
with a mobile phone to arrive at the recited portable display apparatus (see
Reply Br. 7).
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In the instant case, we agree with Appellant that the Examiner’s
motivation and explanation as to the combination is conclusory. As a result,
we agree with Appellant that “there is no motivation to combine the
teachings of Bolle, Ben-Ari, and Rasheta” (Appeal Br. 19). Based on the
foregoing, we concur with Appellant’s assertions (see Appeal Br. 19–23;
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Reply Br. 6–8) that the Examiner has not properly established factual
determinations and articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness for independent claims 1, 14,
18, resulting in a failure to establish a prima facie of obviousness. As such,
based on the record before us, we find that the Examiner improperly relies
upon the base combination of Bolle, Ben-Ari, and Rasheta to teach or
suggest the disputed claim limitation (limitation [A] in claim 1 supra, and
commensurate limitations recited in claims 14 and 18). See Warner at 1017.
In view of the foregoing, we do not sustain the Examiner’s
obviousness rejection of independent claims 1, 14, and 18, as well as
dependent claims 2, 3, 8–13, 15–17, 19, and 20 depending respectively
therefrom over the base combination of Bolle, Ben-Ari, and Rasheta. And
for similar reasons, and because the Examiner’s obviousness rejection of
dependent claims 4–6 is based on the Examiner’s erroneous obviousness
rejection of independent claim 1 discussed supra, we likewise do not sustain
the Examiner’s obviousness rejection of claims 4–6 over the same base
combination taken with Rhee.

CONCLUSION
Appellant has persuaded us of error in the Examiner’s decision to
reject claims 1–6 and 8–20.2

2 We recognize that Appellant’s arguments present additional issues (see
e.g., Appeal Br. 11–23; Reply Br. 2–8). Because we were persuaded of error
by the issue regarding the telescoping collapsible component, as recited in
claims 1, 14, and 18, we do not reach the additional issues, as the
predetermined time period issue is dispositive of the appeal.

Appeal 2018-008955
Application 14/828,707

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DECISION
We reverse the decision of the Examiner to reject claims 1–6 and 8–
20.

REVERSED