Ex Parte Healy

Patent Trial and Appeal Board

Sep 9, 2014

12305472 (P.T.A.B. Sep. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONALL B. HEALY
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Appeal 2012-008023
Application 12/305,4721
Technology Center 3600
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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

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