Ex Parte HealyDownload PDFPatent Trial and Appeal BoardSep 9, 201412305472 (P.T.A.B. Sep. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONALL B. HEALY ____________ Appeal 2012-008023 Application 12/305,4721 Technology Center 3600 ____________ Before NINA L. MEDLOCK, BART A. GERSTENBLITH, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–7.2 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. Introduction Appellant’s disclosure relates to a sign holder that enables the supply of electricity to a sign insert (Spec. 2, ll. 8–10). 1 According to Appellant, the real party in interest is Visual Graphics Systems, Inc. (App. Br. 3). 2 Our decision refers to the Appellant’s Appeal Brief (“App. Br.,” filed Dec. 9, 2011) and Reply Brief (“Reply Br.,” filed Apr. 24, 2012), and the Examiner’s Answer (“Ans.,” mailed Mar. 28, 2012). Appeal 2012-008023 Application 12/305,472 2 Claims 1 and 4 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A sign holder for supporting a sign insert having front and rear surfaces, and containing electrical terminals parallel to, and attached to, at least one of said surfaces for enabling the supply of electrical power to the sign insert, comprisign [sic]: a base, a groove in the base for receiving the sign insert, at least one gasket positioned in the groove, said gasket including a resilient section adapted to engage at least one of said surfaces of the sign insert for retaining the sign insert securely in place within the groove, and at least one electrical conductor attached to the gasket in a position where it makes electrical contact with one of the electrical terminals on the sign insert, when the sign insert is placed in the groove. App. Br. 17, Claims App’x. Prior Art Relied Upon Bailey US 2,967,284 Jan. 3, 1961 Turner US 2007/0199222 A1 Aug. 30, 2007 Rejection on Appeal Claims 1–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Turner and Bailey. OPINION Independent claims 1 and 4 Appellant argues that Bailey does not disclose the concept of an electrical conductor attached to a gasket, i.e., “at least one electrical conductor attached to the gasket in a position where it makes electrical Appeal 2012-008023 Application 12/305,472 3 contact with one of the electrical terminals on the sign insert when the sign insert is placed in said groove,” as required by claims 1 and 4 (App. Br. 7, 9). Appellant argues that electrical conductors 52 in Bailey are beneath gasket 16 (which includes resilient block 18) rather than attached to the gasket (App. Br. 9–10). The Examiner responds that member 50, not member 18, of Bailey is considered to be the gasket (Ans. 6). Appellant argues that socket member 50 does not function as a gasket (App. Br. 8). We agree with Appellant. The disclosure of Bailey makes a distinction between gasket 16 and socket member 50 (col. 2, l. 71–col. 3, l. 3). The purpose of gasket 16 in Bailey is to form a seal with a printed circuit board that is received therein (Fig. 3; col. 2, ll. 56–60). This is the ordinary function of a gasket, and this is the way that the Specification (Spec. 2, ll. 11–13) describes a gasket: “At least one resilient gasket, preferably two, is positioned in the groove and adapted to engage the sign insert so as to retain the insert securely in place within the groove despite thickness variations between different signs.” Indeed, the Specification (Spec. 3, ll. 6–12 (as amended)) makes a distinction between grooves 10 and 12 and gaskets 20, positioned within grooves 10 and 12. As shown in Figure 1 of the Specification, the gaskets protrude from the grooves to receive and make contact with the sign insert. This distinction between the gasket and the groove is reflected in claims 1 and 4, which both recite “at least one gasket positioned in the groove.” Thus, we conclude that socket member 50 of Bailey is not within the broadest reasonable interpretation of the claim term “gasket.” Although socket member 50 of Bailey is attached to an electrical contact, gasket 16 of Bailey is not. Appeal 2012-008023 Application 12/305,472 4 The Examiner also submits that Turner has a resilient gasket (Ans. 6). However, Turner does not teach an electrical contact. We have carefully reviewed the cited prior art, and there is no disclosure or suggestion of an electrical conductor that is attached to the gasket, i.e., “at least one electrical conductor attached to the gasket in a position where it makes electrical contact with one of the electrical terminals on the sign insert when the sign insert is placed in said groove,” as required by claims 1 and 4. We, therefore, cannot sustain the rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as being unpatentable over Turner and Bailey. We reach the same conclusion as to claims 2, 3, and 5–7, each of which depends from one of claims 1 and 4. DECISION The decision of the Examiner to reject claims 1–7 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation