Ex Parte Hughes

Patent Trial and Appeal Board

Mar 1, 2013

11285015 (P.T.A.B. Mar. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT P. HUGHES
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Appeal 2010-012092
Application 11/285,015
Technology Center 3600
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Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Robert P. Hughes (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 20-24, 26-28, 30, 31, 34-36, 38-40,
42, 43, and 46-52. We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claim 20 is illustrative of the claimed subject matter and is
reproduced below.
20. A display apparatus, comprising:
a foldable frame having a plurality of spaced
apart display panel connectors; and
at least one display panel including a dye
sublimated image printed thereon, said display
panel comprising a layer of stretch fabric being so
configured so as to have a plurality of corners and
further including an aperture located proximal each
of said plurality of corners; wherein each aperture
of said display panel is connected to a different
display panel connector such that said display
panel is stretched between said display panel
connectors and is in stretch tension such that said
display panel appears substantially wrinkle free.

References
The Examiner relies upon the following prior art references:
Brooks US 4,265,039 May 5, 1981
Zeigler US 4,512,097 Apr. 23, 1985
Bannister US 4,569,143 Feb. 11, 1986
Delamere US 4,611,420 Sept. 16, 1986
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Rejections
The Examiner makes the following rejections:
I. Claims 20, 21, 23, 30, and 50 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bannister and Brooks;
II. Claims 24, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bannister, Brooks, and AAPA;
III. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bannister, Brooks, and Zeigler;
IV. Claims 22, 28, 34-36, 38, 39, 46, 48, 49, 51, and 52 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Bannister,
Brooks, and Delamere;
V. Claims 40, 42, and 43 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bannister, Brooks, Delamere, and AAPA;
and
VI. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bannister, Brooks, Delamere, and Zeigler.

SUMMARY OF DECISION
We AFFIRM.

1 Although not recited in the “Evidence Relied Upon” section of the
Examiner’s Answer, the Examiner relied upon Appellant’s Admitted Prior
Art at page 5, line 18, through page 6, line 2, of Appellant’s Specification.
See Ans. 4-5, 8-9.
Pontuti US 5,260,113 Nov. 9, 1993
Appellant’s Admitted
Prior Art (AAPA)1
Spec. at 5, l. 18 – 6, l. 2
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OPINION
Appellant raises four arguments on appeal. First, Appellant asserts
that Brooks teaches away from the claimed invention because (1) an object
of Brooks is to avoid the need for holes in the material of the display face
whereas Appellant’s claims include multiple apertures and (2) Brooks
discusses the problems or difficulties in employing stretch fabric panels and
the solution used by Brooks to address those difficulties is different than the
solution employed by Appellant. App. Br. 4-6.
Second, Appellant contends that the Examiner ignored an express
limitation in claims 20-31, 48-50, and 52 requiring that the claimed display
apparatus comprise a “display panel including a dye sublimated image
printed thereon.” Id. at 6-7. Specifically, Appellant asserts that a dye
sublimated image “has particular physical or structural attributes which
distinguish such an image from alternative (or generic) image types (a silk
screened image, for example).” Id. at 7.
Third, Appellant asserts that the Examiner failed to set forth a
cognizable reason or motivation to combine the “specifically oriented,
elongated apertures” of Delamere with the teachings of Bannister and
Brooks. Id. at 7-8. Appellant contends that because the plastic panel of
Delamere does not have any stretch properties, it would not have the wrinkle
problems associated with stretch fabric designs and thus one of ordinary skill
in the art would not look to Delamere for any teaching to use the apertures
disclosed therein to orient, align, or distribute the stretch or tension vectors
in the installed fabric panel as claimed. Id. at 8. Further, because non-
elongated, non-oriented apertures would sufficiently serve to connect the
stretch fabric display panel to the frame, Appellant asserts that it would be
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redundant to look to another reference, such as Delamere, for its disclosure
of how a panel is attached to a frame. Id.
Finally, Appellant contends that Brooks is non-analogous art because
it is not in Appellant’s field of endeavor nor reasonably pertinent to the
particular problem with which Appellant’s invention is concerned. Id. at 8-
9. Specifically, Appellant asserts that Brooks is directed to a “heavy duty,
industrial-type sign (i.e., the type built to withstand hurricane force winds)”
whereas Appellant’s invention is “specifically designed so that it is
lightweight, foldable, easily transported (on airplanes, etc.), as well as easily
assembled and disassembled.” Id. at 8. Thus, Appellant contends that it is
improper to rely on Brooks to reject Appellant’s claims.
For the reasons explained herein, we do not find Appellant’s
arguments persuasive. First, we disagree that Brooks teaches away from the
claimed invention. The Examiner relied upon Brooks as disclosing the use
of a stretchable fabric to form a display panel, not for any disclosure (or lack
thereof) of using holes in the material display face. See Ans. 4, 10. While
Brooks explains that “[a]nother object of the present invention is to provide
a manner of mounting such a display face which avoids any need for the
formation of holes or other openings in the material of the display face
itself,” Brooks, col. 7, ll. 5-8, and that “[b]etter hardware is provided . . .
[such that] there is no need to make mounting holes in the material,” id. at
col. 22, ll. 38-42, Appellant has not persuasively shown that Brooks would
have discouraged or led one of ordinary skill in the art in a direction away
from using holes when employing a stretchable fabric to form a display
panel. See, e.g., In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A
reference may be said to teach away when a person of ordinary skill, upon
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reading the reference, . . . would be led in a direction divergent from the path
that was taken by the applicant.”) (quoting Tec Air, Inc. v. Denso Mfg. Mich.
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)).
Further, we do not find Appellant’s focus on Brooks’ discussion of the
disadvantages of stretchable fabric for display faces and the differences
between the way in which Brooks constructs the display as compared to
Appellant’s claims persuasive. As Appellant correctly notes, Brooks
discusses many benefits of stretch fabric panels and ultimately discloses a
display sign employing a stretchable fabric as a display face. See App. Br.
5; see also Brooks, col. 1, ll. 4-6. That Appellant employed a different
“solution” as compared to Brooks does not mean, without more, that Brooks
teaches away from the claimed invention.
Second, while the Examiner indicated that the method of producing
the apparatus is not relevant to the patentability of the apparatus when
analyzing an apparatus claim, the Examiner found that “[t]he physical result
of the dye sublimation process is that pigment is placed on the sign fabric.”
Ans. 10. Further, the Examiner found that the physical result disclosed by
Brooks—that pigment is placed on the sign fabric—is the same as that
claimed even though the method of placing the pigment on the fabric is
different. See Ans. 4, 10-11. While Appellant asserts that a dye sublimated
image has particular physical or structural attributes which distinguish it
over other types of pigmented images, the only attribute cited by Appellant
is that “images printed by non-dye sublimation techniques are not as
commercially appealing once stretched” because, for example “they can
exhibit a pixilated type appearance.” Amendment (filed Oct. 23, 2008) at
13-14; see App. Br. 7. A commercially appealing image, however, is an
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aesthetic difference and Appellant has not persuaded us that it has a
mechanical function. Thus, it does not patentably distinguish the claimed
invention from the prior art. See In re Seid, 161 F.2d 229, 231 (CCPA 1947)
(finding that a particular shape and arrangement lacks mechanical function
and therefore cannot be relied on to distinguish structural claims over the
prior art).
Third, the Examiner indicated that one of ordinary skill in the art
would be prompted to substitute “the known apertures taught by Delamere
for the ones disclosed by Bannister” to “achieve the predictable result of
attaching the display panel to the frame.” Ans. 7. The Examiner further
explained that the rationale “is merely the substitution of one known element
for another to achieve a predictable result.” Id. at 11. Appellant has not
persuaded us that the Examiner’s stated rationale was not reasonable, and
Appellant has not provided evidence of any degree of unpredictability with
respect to the result achieved. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result”).
Finally, Appellant has not persuaded us that Brooks is non-analogous
art. “A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
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regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” Id.
(quoting In re Bigio, 381 F.3d at 1325). The “field of endeavor” test
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
While Brooks relates to heavy duty signs, rather than signs used at
trade shows or sales calls, Appellant’s view of the field of endeavor is too
narrowly defined. Brooks is generally directed to “display signs,” see
Brooks, Title, and specifically directed to “signs which employ a stretchable
fabric as a display face,” id. at col. 1, ll. 4-6. Appellant’s claims are
generally directed to “Fabric Display Panels,” and are specifically directed
to display apparatuses comprising a foldable frame and a display panel
comprising a layer of stretch fabric. The display signs of Brooks would
have been considered by a person of ordinary skill in the art because of the
similarity in structure and function to the claimed subject matter as both are
“concerned with fabric display surfaces.” See Ans. 11. Accordingly,
Appellant has not persuaded us that Brooks is non-analogous art.

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DECISION
We affirm the Examiner’s decision rejecting claims 20-24, 26-28, 30,
31, 34-36, 38-40, 42, 43, and 46-52.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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