Ex Parte Garfinkle

Patent Trial and Appeal Board

Jul 30, 2013

12035156 (P.T.A.B. Jul. 30, 2013)

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.
12/035,156 02/21/2008 Benjamin L. Garfinkle 535.18 9425
85444 7590 07/31/2013
Bay Area Technolgy Law Group PC
4089 Emery Street
Emeryville, CA 94608
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
07/31/2013 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 BENJAMIN L. GARFINKLE
____________

Appeal 2011-008325
Application 12/035,156
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, HYUN J. JUNG, and
ADAM V. FLOYD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5, 7-9, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Soporowski (US 4,698,928, iss. Oct. 13, 1987) and
Abramson (US 4,884,351, iss. Dec. 5, 1989). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Application 12/035,156

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CLAIMED SUBJECT MATTER
Claims 1, 7, 9, and 12 are the independent claims on appeal. Claim 1,
reproduced below with added emphasis, is illustrative of the subject matter
on appeal.

1. A sign for displaying product information to a
consumer, said sign comprising first and second
components for supporting primary and secondary
product information, a first support member for
supporting said sign in an orientation to enable
said product information to be visible to a
consumer, a connecting interface comprised of an
extender and molded feature enabling said first and
second components to releaseably attach to one
another, said second component provided for
supporting supplemental product information in an
orientation to enable said supplemental product
information to be made visible to a consumer.

OPINION
Claims 1-3, 5, 9, and 12
The Appellant does not argue separately against the rejection of
claims 1-3, 5, 9, and 12. See Br. 3-6. Notably, the Appellant’s reiteration of
the Examiner’s findings for claims 2, 3, and 5 does not amount to a separate
argument. See Br. 5. We select claim 1 as the representative claim and as
such, claims 2, 3, 5, 9, and 12 fall with claim 1.
The Appellant contends that “Soporowski at no point suggests
attaching one sign holder to another sign holder using any expedient and
certainly does not suggest that elongated slot 10 and/or cylindrical member
22 can be used for this purpose.” Br. 4. The Appellant’s contention is not
persuasive because the Examiner relies on Abramson, and not Soporowski,
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to disclose the attachment of multiple signs together. See Ans. 3-4, 7.
Indeed, the Examiner explains that interconnecting adjacent sign holders 4
utilizing Soporowski’s elongated slot 10 and cylindrical member 22 would
have been obvious in view of the teaching of Abramson. Ans. 7.
More specifically, the Examiner finds that Soporowski’s sign holder 4
reads on the “first component” as recited in claim 1. See Ans. 3-4, 7. The
Examiner also finds that Soporowski does not disclose a “second
component” and as such, a connecting interface enabling said first and
second components to releaseably attach to one another. Id. However, the
Examiner finds that the sign holder 4 includes a longitudinal cylindrical
recess 10 and a longitudinal cylindrical member 22. Ans. 4; see
Soporowski, col. 2, ll. 43, 44, col. 3, ll. 1-8. The Examiner turns to
Abramson to remedy the deficiency of Soporowski with regard to the
rejection of claim 1. The Examiner finds that Abramson discloses
“engaging one sign holder 14 to another sign holder 12 using the elongated
slot in the bottom edge of the sign holder 14 with the elongated cylindrical
member in the top edge of the sign holder 12.” Ans. 7. The Examiner
concludes that “[i]t would have been obvious . . . to interconnect two or
more sign holder[s] 4 [as] taught by Soporowski by interconnecting the
cylindrical member [22] with the elongated slot [10] as taught by Abramson
to provide a means to display more information or to create a larger sign
holder.” Ans. 5.
The Appellant also contends that the Examiner is engaging in
hindsight by combining the teachings of Soporowski and Abramson because
the former is a merchandise sign while the latter is a reflective sign for
address and resident identification. Br. 4. The Appellant argues that the
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Application 12/035,156

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purposes of each are “completely different and unrelated.” Id. Additionally,
the Appellant “is certainly cognizant of Abramson’s use of male and female
members 15 and 19, however these corresponding members in Soporowski
are clearly used, as noted above, not for joining signage but for creating the
appropriate support for the single sign disclosed therein.” Id. However, the
Appellant’s contentions are not persuasive as they do not explain why the
Examiner’s reason to combine the teachings of references, i.e., “to provide a
means to display more information or to create a larger sign holder” is in
error.
The Appellant also points to “the thrust of applicant’s invention” to
rebut the Examiner’s prima facie case of obviousness. Ans. 4. See Ans. 5-6.
However, the Appellant does not cogently explain why the Examiner’s
rejection is lacking the features which are recited in claim 1. It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). For
example, claim 1 calls for “a first support member,” and does not call for
first and second support members. But see Br. 5, 6. As such, if the
Examiner’s rejection lacks evidence or technical reasoning concerning a
second support member, the rejection of claim 1 is sustained since the
second support member is not recited in claim 1.
Thus, the rejection of claims 1-3, 5, 9, and 12 as unpatentable over
Soporowski and Abramson is sustained.
Claim 4
Claim 4 recites “[t]he sign of claim 1 wherein said first component
further comprises a top edge having a channel for releaseably receiving
additional product identifying information.” The Examiner finds that
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“Soporowski teaches the top edge having a channel [(recess 10)], wherein
this channel can be used to releaseably receive additional product
information.” Ans. 5. The Appellant contends that Soporowski fails to
teach the limitation of claim 4 because “Soporowski teaches a top channel
solely for the purpose of connecting the sign to the appropriate mounting
bracket 30.” Br. 6 (emphasis added). This contention acknowledges that
Soporowski teaches “a top edge having a channel,” as such the Appellant’s
contention is directed to the remainder of the limitation, i.e., “for releaseably
receiving additional product identifying information.”
The Appellant’s contention is not persuasive. Soporowski includes an
embodiment where its channel (recess 10) is not received by mounting
bracket 30. Indeed, Soporowski’s figures 3 and 4 illustrate an embodiment
where the sign holder 4 is mounted on a moveable easel support 42 and in
this embodiment the channel (recess) 10 is open for releaseably receiving
other structures, including additional signage. The Appellant acknowledges
the embodiment where the sign holder 4 is received by the easel support 42
(see App. Br. 4, 6), but does not explain why the available channel 10 cannot
releaseably receive additional signage. Thus, the Examiner’s rejection of
claim 4 as unpatentable over Soporowski and Abramson is sustained.
Claims 7 and 8
Claim 7 is directed to a sign comprising, among other things, “a
connecting interface comprised of an extender and molded feature enabling
said first and second components to releaseably attach to one another” and
“a support member emanating from said first component and a support
member emanating from said second component.” Claim 8 depends from
claim 1 and recites “wherein when said first and second components are
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engaged by joining a support member from one of said first and second
components to said connecting interface.”
The Appellant contends that the Examiner’s combination of
Soporowski and Abramson would not have resulted in first and second
support members. See Br. 6. Although each of Soporowski and Abramson
disclose a connecting interface and a support (see Ans. 3-5, 7), the Examiner
does not adequately articulate how the combined teachings of Soporowski
and Abramson would have resulted in a connecting interface and a support
member emanating from both the first component and the second component
or first and second components engaged by joining a support member from
one of the first and second components to the connecting interface. Thus,
the Examiner’s rejection of claims 7 and 8 as unpatentable over Soporowski
and Abramson is not sustained.

DECISION
We AFFIRM the rejection of claims 1-5, 9, and 12.
We REVERSE the rejection of claims 7 and 8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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