Ex Parte KeuningDownload PDFPatent Trial and Appeal BoardMar 29, 201612753648 (P.T.A.B. Mar. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121753,648 04/02/2010 Timothy J. Keuning 45069 7590 03/29/2016 FRED ZOLLINGER III P.O. BOX 2368 NORTH CANTON, OH 44720 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. AU005aOfUS 5087 EXAMINER SILBERMANN, JOANNE ART UNIT PAPER NUMBER 3638 MAILDATE DELIVERY MODE 03/29/2016 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 TIMOTHY J. KEUNING Appeal2014--001093 Application 12/753,648 1 Technology Center 3600 Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and JASON W. MELVIN, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy J. Keuning (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of: (1) claims 1-14 as unpatentable over Prest (US 4,722,145, iss. Feb. 2, 1988); and (2) claims 15 and 16 as unpatentable over Prest and Donelan (US 2003/0077562 Al, pub. Apr. 24, 2003). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is the Inventor, Timothy J. Keuning. Br. 3. Appeal2014--001093 Application 12/753,648 CLAIMED SUBJECT MATTER Claims 1, 9, 11, and 14 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter. 1. A customizable exit sign kit comprising a sign plate with an outer surface having text and a plurality of arrows; the kit further including a removal device that is capable of removing an arrow from the sign plate without damaging the sign plate. ANALYSIS Obviousness of Claims 1-14 over Prest Appellant argues claims 1-14 together in contesting the rejection of these claims as obvious over Prest. See Br. 11-14. We select claim 1 as the representative claim for this group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. 41.37(c)(l)(iv). We have considered Appellant's arguments raised in the Appeal Brief, but do not find them to apprise us of error in the Examiner's rejection of claim 1 as being obvious over Prest. The Examiner finds that Prest teaches a customizable kit including a sign plate with an outer surface having indicia thereon and a removal device "that is capable of removing some of the indicia without damaging the outer surface of the sign plate." Final Act. 2. While "Prest does not specifically teach the indicia as including arrows," the Examiner considers that "to be entirely a matter of design choice." Id. The Examiner also notes that "Prest teaches applying non-permanent messages on the sign plate," and that "it would have been obvious ... to utilize arrows or any other text or symbols to provide any non-permanent message as desired." Id. The Examiner also 2 Appeal2014--001093 Application 12/753,648 explains that "patentable novelty cannot be principally predicated on mere printed matter and arrangements thereof, but must reside basically in physical structure." Id. In response to the Examiner's reasoning, Appellant first contends that "[a]rt is analogous when it is from the same field of endeavor as the claimed invention," but that "[t]he dry erase advertising sign of Prest '145 is not related to emergency exit sign technologies and is thus not in the same field of endeavor as the Applicant's emergency exit signs." Br. 12. Whether a reference in the prior art is "analogous" is a fact question. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). Our reviewing court has provided two criteria useful in finding whether art is non-analogous: "(1) whether the art is from the same field of endeavor, 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." Compare Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010). One determines whether a prior art reference is within the same field of endeavor as the subject matter of a claim by comparing the structure and function of the subject matter recited in the claim to that of the subject matter disclosed in the reference. In re Bigio, 381F.3d1320, 1326 (Fed. Cir. 2004). Furthermore, the Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be 3 Appeal2014--001093 Application 12/753,648 able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 402. The Examiner reasons that because Prest (and Donelan) "each describe signs which are used to convey messages to viewers ... they are both analogous to Appellant's invention, which also is a sign used to convey a message to a user." Ans. 3. Further, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int 'l 550 U.S. at 417. Appellant has not apprised us of any error in the Examiner's findings or conclusions, and we find none. Appellant also contends that "the user does not need to add anything to the sign of the present invention," but that "Prest '145 teaches that the end user [must] add the markings that are removable," which "does not suggest the claimed invention wherein removable arrows are provided to the end user." Br. 13. However, the Examiner correctly points out that "[a]s shown in Prest, indicia may be applied using marking device 15 and may be removed." Ans. 3 (citing Prest, col. 2, 11. 27-28). Furthermore, the Examiner also explains that claim 1 is not limited to "the time at which such removable indicia are applied," as Appellant argues. Id. We agree. Appellant further contends that because the "claims are for an exit sign which requires arrows directing those using the sign to the nearest exit," that "[ t ]he plurality of removable arrows is a critical element of the claimed exit sign." Br. 13. However, Appellant offers no evidence to support this argument. "Attorney's arguments in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation 4 Appeal2014--001093 Application 12/753,648 omitted); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which are unsupported by factual evidence are entitled to little probative value). Cf In re Chu, 66 F .3d 292, 298-99 (Fed. Cir. 1995) (holding that an applicant adequately supported that a limitation was not merely an obvious design choice by providing evidence in the form of technical articles); In re Rice, 341 F .2d 309 (CCPA 1965) (rejecting "a general allegation in a brief' as failing to establish that certain design aspects are critical to functionality of the claimed device). Appellant continues by arguing that "[t]he plurality of arrows recited in each claim have a specific function related to the sign plate on which they appear," so as to "serve a critical function to the exit sign which is why the sign is designed to allow the user to remove the undesirable arrows to form a functional sign." Br. 14. We disagree, as we find the claimed "plurality of arrows" is not functionally related to the substrate (e.g. "a sign plate with an outer surface"). The sign will perform the function of conveying information regardless of what text or arrows are placed on its outer surface. Ans. 4 ("[T]he arrows are functionally related to the substrate, but only in as much as any indicia on a sign is related to the sign substrate"). We are instructed by our reviewing court that nonfunctional printed matter cannot render nonobvious an invention that would have otherwise been obvious. 2 2 We must make a threshold determination of whether a limitation is directed to printed matter, and "a limitation is printed matter only if it claims the content of information." In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Stated otherwise, "printed matter must be matter claimed for what it communicates." Id. at 850. The claims on appeal recite text and arrows as the outer surface of a sign, and thus claim the text and arrows for what they 5 Appeal2014--001093 Application 12/753,648 In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when printed matter is not functionally related to the substrate, such printed matter will not distinguish the invention from the prior art in terms ofpatentability); Ex parte Nehls, 88 USPQ2d 1883, 1889 (BP AI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272, 1274 (BP AI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), affd, (Rule 36) (June 12, 2006); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative). Appellant also contends that "[ t ]he invention is a customizable exit sign having 'a plurality' of arrows so that the person installing the sign may configure the sign for use at a variety of locations." Br. 14. However, claim 1 merely recites a removal device "capable of removing the arrow from the sign plate," that does not impart any additional structure or function to distinguish over Prest. In re Sinex, 309 F.2d 488, 492 (CCP A 1962). As the Examiner reasons, like Appellant's removal device, the damp wiper of Prest is capable of removing indicia from the sign plate. Final Act. 2. See also Prest, col. 2, 11. 26-30. There is an extensive body of precedent on the question of whether a statement in a claim of purpose or intended use constitutes a limitation for purposes ofpatentability. See generally Kropa v. Robie, 187 F.2d 150, 155- 59 (CCPA 1951) and the authority cited therein, and cases compiled in 2D. Chisum, Patents§ 8.06[1][d] (1991). Furthermore, it is well established that "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which communicate. Accordingly, we proceed to analyze the functional and structural relationship that the arrows have with the substrate carrying them. 6 Appeal2014--001093 Application 12/753,648 the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). "Section 103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." KSR, 550 U. S. at 406. We agree with the Examiner that "Appellant's indicia do not provide any new or unobvious relationship between the indicia and the substrate." Ans. 4. Based on the record before us, we sustain the Examiner's rejection of claims 1-14 over Prest. Obviousness of Claims 15 and 16 over Prest and Donelan Claims 15 and 16 depend from claim 1 and further recite that the sign plate is either semi-transparent (claim 15) or transparent (claim 16). Br. 20, Claims App. The Examiner cites Donelan for teaching "a changeable display using a substrate that is transparent," (citing Donelan, para. 40), and reasons that "it would have been obvious ... to utilize a transparent substrate (which is inherently also semi-transparent) as in Donelan for the display of Prest so that either side of the display may be used, thus providing additional display options." Final Act. 4. Appellant advances the same arguments for claims 15 and 16 that we found unpersuasive for claim 1. See Br. 15-17. As Appellant has not apprised us of Examiner error, we summarily sustain the Examiner's rejection of claims 15 and 16 over Prest and Donelan. 7 Appeal2014--001093 Application 12/753,648 DECISION We AFFIRM the Examiner's rejections of claims 1-16. 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) (2012). AFFIRMED 8 Copy with citationCopy as parenthetical citation