Ex Parte Hochman et alDownload PDFPatent Trial and Appeal BoardMay 16, 201612529688 (P.T.A.B. May. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/529,688 0910212009 51111 7590 AKACHANLLP Melvin Chan 900 LAFAYETTE STREET SUITE 710 SANTA CLARA, CA 95050 05/18/2016 FIRST NAMED INVENTOR Jeremy R. Hochman 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. ELABP032 5464 EXAMINER SHEN,PEDIE ART UNIT PAPER NUMBER 2694 NOTIFICATION DATE DELIVERY MODE 05/18/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PTO-INBOX@AKACHANLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEREMY R. HOCHMAN and JEFFREY T. MADDOX Appeal2014-006524 Application 12/529,688 1 Technology Center 2600 Before: JOSEPH L. DIXON, THU A. DANG, and SCOTT B. HOWARD, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-11 and 22-36, which are pending in this Application. Claims 12- 21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a ladder display system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 Appellants indicate that Barco, Inc. (formerly Element Labs, Inc.) is the real party in interest. Appeal2014-006524 Application 12/529,688 1. A light emitting apparatus comprising: a first display module and a second display module, each comprising light emitting elements; a first support and a second support; and a first spacer and a second spacer, wherein a first end of the first display module and a first end of the second display module are connected to the first support and the first spacer is disposed between the first end of the first display module and the first end of the second display module, a second end of the first display module and a second end of the second display module are connected to the second support and the second spacer is disposed between the second end of the first display module and the second end of the second display module, the first spacer has a first spacer first end and a first spacer second end, both coupled to the first support, the light emitting elements of the first display module extend in a first direction from the first end to the second end of the first display module, the light emitting elements of the second display module extend in the first direction from the first end to the second end of the second display module, and the first support and first spacer extend in a second direction, transverse to the first direction, the second support and second spacer extend in the second direction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: 2 Appeal2014-006524 Application 12/529,688 Manners-Smith et al. us 4,612,720 Sept. 23, 1986 ("Manners-Smith") Daugherty et al. us 5,184,116 Feb.2, 1993 ("Daugherty") Aiken et al. us 5,896,688 Apr. 27, 1999 ("Aiken") Tokimoto et al. US 2001/0022589 Al Sept. 20, 2001 ("Tokimoto") Myers US 6,331,915 Bl Dec. 18, 2001 Amo et al. US 2009/0121988 Al May 14, 2009 ("Amo") REJECTIONS The Examiner made the following rejections: Claims 1-3, 8, 10, 11, 22, 23, 26-30, and 32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manners-Smith as modified by Aiken. Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manners-Smith as modified by Aiken as applied to claims 1-3, 8, 10, 11, 22, 23, 26-30, and 32 above, and further in view of Tokimoto. Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Manners-Smith as modified by Aiken as applied to claims 1-3, 8, 10, 11, 22, 23, 26-30, and 32 above, and further in view of Daugherty. Claim 24, 33, 34, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokimoto as modified by Manners-Smith. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokimoto as modified by Manners-Smith as applied to claims 24, 33, 34, and 36 above, and further in view of Myers. 3 Appeal2014-006524 Application 12/529,688 Claim 31 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Manners-Smith, as modified Aiken as applied to claims 1-3, 8, 10, 11, 22, 23, 26-30, and 32 above, and further in view of Amo. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Tokimoto as modified by Manners-Smith as applied to claims 24, 33, 34, and 36 above, and further in view of Amo. ANALYSIS At the outset, we note Appellants' concern regarding dependent claim 35. (App. Br. 2-3; Reply Br. 2-3). We find that the Examiner rejected claims 24, 33, 34, and 36 together over the combination of Tokimoto and Manners-Smith without dependent claim 35, but the typographical error propagated through the remainder of the introductory paragraphs of the additional rejections. In this Appeal, we concur with the conclusions reached by the Examiner, and adopt as our o\x1n (1) the findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 7-30; Ans. 4--27), and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 28--42). We highlight and amplify certain teachings and suggestions of the references, as well as certain ones of Appellants' arguments as follows. Initially, we note that the relative directions in the claimed invention corresponded to the Cartesian coordinates (X and Y). The first and second supports with spacers are in the Y direction and the light emitting elements are in the X direction. With this as a guide, we address Appellants' arguments below. 4 Appeal2014-006524 Application 12/529,688 Claims 1-3, 8, 10, 11, 26, 28, and 29 With respect to claims 1-3, 8, 10, 11, 26, 28, and 29, Appellants argue the claims together. Consequently, we select independent claim 1 as the representative claim for the group and address Appellants' thereto. With respect to representative independent claim 1, Appellants present various arguments regarding the combination of Manners-Smith and Aiken. (App. Br. 8-11). With respect to Appellants' first argument, Appellants contend that the references criticize, discredit, and discourage the combination as desired by the Examiner. (App. Br. 8). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citation and internal quotation marks omitted). We find Appellants' argument does not identify any specific teaching away from the combination or the claimed invention. The Examiner has identified that the Aiken reference was relied upon solely for the teaching of use of a physical spacer between adjacent display elements. (Ans. 30-31 ). Appellants' second argument is that the Examiner does not off er any explanation of why a person having ordinary skill in the art would have been motivated to include electrical illuminated elements with rolled signage. (App. Br. 9). We note that Appellants' argument is the reverse of the Examiner's combination which modifies the display of the Manners-Smith reference with the spacers from the Aiken reference. The Examiner clarifies the rejection in the Examiner's Answer. (Ans. 5-7). As a result, Appellants' argument does not show error in the combination. 5 Appeal2014-006524 Application 12/529,688 Appellants' third argument is that the combined references would be technically inoperable and adding spacers to Manners-Smith would have unintended consequences making a combined system technically inoperable. In the Manners-Smith reference, retaining-members lock display components in a channel. See Manners-Smith, col. 1, 11. 37-39. Appellants contend that adding spacers makes it highly likely that display components could be disoriented from their proper positions (i.e., by wind, weather, and other conditions blimps are subjected to), contrary to the purpose of having retaining members. (App. Br. 10). However, Appellants' speculation regarding unintended consequences does not support the conclusion that the combination would be technically inoperable. We find the combination would be operable, but there may be additional considerations. We find Appellants' argument does not show the combination would be inoperable and does not show error in the Examiner's combination. Appellants' fourth argument is that claim 1 recites a specific orientation of the spacers disposed between the first and second display module. (App. Br. 10). Appellants rely upon paragraph 24 of the Specification regarding the functionality of the spacer to adjust or maintain a desired distance between modules. (App. Br. 10). We disagree with Appellants and find that the claim language does not provide support for Appellants' argument regarding the adjustment of distance. Moreover, we find the Examiner relies upon the Aiken reference to teach and fairly suggest maintaining a uniform distance between display elements. (Ans. 7) Consequently, Appellants' argument does not show error in the Examiner's conclusion of obviousness. Appellants' fifth argument is that there is no direction of first and second spacers. (App. Br. 11 ). The Examiner has relied upon the retaining 6 Appeal2014-006524 Application 12/529,688 members 24 which act as spacers in the horizontal direction and the joining members 26 which act as a spacers in the vertical direction between display elements. (Ans. 5, 32). We disagree with Appellants and find that the Examiner has identified display elements in a Cartesian coordinate orientation. Moreover, Appellants merely recite the relationship between two display elements stacked above and below one another with no additional display elements in the X direction. Consequently, we find Appellants' argument to be unpersuasive of error in the Examiner's conclusion of obviousness of representative independent claim 1. Reply Brief Appellants set forth similar arguments disputing the Examiner's combination of the Manners-Smith and Aiken references. (Reply Br. 5-10). We find Appellants' arguments to be unpersuasive of error in the Examiner's conclusion of obviousness of representative independent claim 1. Claims 22, 23, 30, and 32 Appellants contend that claim 22 recites "disposing a first spacer about the first support and a second spacer about the second support." (App. Br. 12). The Examiner does not specifically address the claim limitation, but the Examiner provides a detailed explanation of the X and Y coordinate orientation of the combined teachings of the Manners-Smith and Aiken references. (Ans. 33-37). Additionally, we find Appellants merely recite the language of the claim and provide a general allegation of patentability. Merely reciting the language of the claim is insufficient. See 3 7 C.F .R. § 41.37(c)(iv) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim"). 7 Appeal2014-006524 Application 12/529,688 Merely alleging that the references fail to support an obviousness rejection (e.g., App. Br. 12) is insufficient to persuade us of Examiner error. Attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug. 10, 2009) (informative) (available at http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf). Claim 27 With respect to dependent claim 27, Appellants contend that the Examiner's reliance upon Manual of Patent Examining Procedure (MPEP) section 2144.04(IV)(A) is in error. (App. Br. 12). Appellants further contend that MPEP section 2144.04(IV) additionally requires that "the claimed relative dimensions would not perform differently than the prior art device." Appellants contend that this is not the case here where, depending on the length of spacer used, the system has greater flexibility in how close or spread out display modules are from each other. See Fig. 2. This flexibility is not shown or suggested in Manners-Smith. (App. Br. 12-13; see also Reply Br. 8-9). Appellants provide no other argument for patentability. While we agree with Appellants that the Examiner's reliance upon Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984) is not controlling, the Examiner maintains that the size of the spacer is an obvious variation. (Ans. 37-38). We agree with the Examiner. Additionally, we note that this process step does not change the underlying apparatus recited in independent claim 1. As a result, any change in the size of the spacer would still result in the same invention as recited in independent claim 1. 8 Appeal2014-006524 Application 12/529,688 Therefore, Appellants' argument does not show error in the Examiner's conclusion of obviousness of dependent claim 27. Claims 24, 33, and 34 With respect to independent claim 24, Appellants request the Examiner to clarify the structural members and the wiring members. (App. Br. 14--15; Reply Br. 9). We note that Appellants' arguments for claim 24 address the Manners-Smith reference as the primary reference and modifying the Manners-Smith reference in light of the Tokimoto reference. The Examiner clarifies that the rejection is the Tokimoto reference in view of Manners-Smith reference to reject independent claim 24. (Ans. 38--40). We agree with the Examiner and find Appellants' arguments to be unpersuasive of error in the Examiner's conclusion of obviousness of independent claim 24. Claims 4--7 and 9 With respect to claims 4--7 and 9, Appellants rely upon the arguments advanced with respect to independent claim 24 and Appellants provide a general assertion that the Daugherty reference does not remedy the deficiency and that the person having ordinary skill in the art would not combine the Manners-Smith and Tokimoto references. (App. Br. 13-14). We find Appellants' argument does not show error in the Examiner's conclusion of obviousness. Claim 36 With respect to claim 36, Appellants contend that the Examiner's reliance upon official notice ""that a transparent structure is well known in the art"" is not capable of instant and unquestionable demonstration as being 9 Appeal2014-006524 Application 12/529,688 well-known. (App. Br. 15). Appellants' request the Examiner to provide support for the assertion. (App. Br. 15). The Examiner provides three (3) citations, including the Tokimoto reference (which generally discloses the desire for transparent display panels throughout the reference), which evidence the use of transparent materials in display systems. Moreover, the Examiner provides an obviousness simple substitution rationale rendering predictable results in the Final Office Action. (Final Act. 25-27). For this additional reason, we agree with the Examiner. Appellants dispute the Examiner's late presentation of the official notice. (Reply Br. 9-10). We find Appellants' argument to be unpersuasive. Moreover, we note that the use of transparent materials in the claim does not modify the functional apparatus recited in independent claim 24 to distinguish the claimed apparatus from the prior art applied in the rejection. Claim 25 With respect to claim 25, Appellants rely upon the arguments advanced with respect to claim 24 and generally contend that the ivieyers reference should not be combined with the Tokimoto and Manners-Smith references. (App. Br. 16). Because we find Appellants' argument is not a specific argument for patentability, we sustain the rejection of dependent claim 25. Claim 31 With respect to dependent claim 31, Appellants contend that the combination does not teach the claimed first and second spacers can rotate independently of each other. (App. Br. 16-17). Appellants identify different portions of the Amo reference and do not address the portion of the reference identified in the Final Rejection at page 29. The Examiner clarifies the application of the prior art and identifies paragraph 42 and 10 Appeal2014-006524 Application 12/529,688 Figure 3 of the Amo reference to support the independent rotation of the spacers. (Ans. 42). Consequently, Appellants' argument does not show error in the Examiner's conclusion of obviousness of dependent claim 31. We agree with the Examiner. From our review of the teachings of the Amo reference, the claim term "the first and second spacers are can rotate independently of each other" is taught because the connectors are separate and distinct members. Additionally, we find the Examiner's reliance upon the spacers 76 of the Aiken reference discloses: A hollow, cylindrical roll spacer 76 is positioned between each of the forward and reverse web rolls 52, 54 and one of the cross members 60, 64, 66. The roll spacers 76 surround the forward and reverse drive shafts 68, 72 to provide the desired spacing between the vertically aligned forward and reverse web rolls 52, 54 and prevent vertical movement of the web rolls, such that the indicia supported by modular digit mechanism 42 will be positioned in front of the windows on the sign face 14 of the scrolling sign 10. (Aiken col. 6, 11. 39--47; see also Ans. 11). As a result, we find Appellants' argument to be unpersuasive of error in the Examiner's conclusion of obviousness of dependent claim 31. Claim 35 With respect to dependent claim 35, Appellants rely upon the arguments advanced with respect to claim 24. Because we found Appellants' arguments to be unpersuasive of error with respect to claim 24, we similarly find those arguments unpersuasive with respect to dependent claim 35. 11 Appeal2014-006524 Application 12/529,688 CONCLUSIONS The Examiner did not err in rejecting claims 1-11 and 22-36 based upon obviousness. DECISION For the above reasons, we sustain the Examiner's rejections of claims 1-11 and 22-36. 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 12 Copy with citationCopy as parenthetical citation