Bruner, Erwin

Patent Trials and Appeals Board

Apr 2, 2020

15273979 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/273,979 09/23/2016 Erwin Bruner BNEP101AUS 8582
24041 7590 04/02/2020
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
EXAMINER
JUNGE, KRISTINA N S
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERWIN BRUNER
____________

Appeal 2019-003594
Application 15/273,979
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
Erwin Bruner (Appellant)1 seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 1–12, as set forth in the Final Office
Action (“Final Act.,” mailed May 22, 2018) at pages 4–8. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Applicant identifies himself, “Erwin Bruner,” as the real
party in interest. Corrected Appeal Brief (“Appeal Br.,” filed Dec. 4, 2018)
3.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “method[s] for identifying an
equestrian participant. More particularly, the present disclosure relates to a
numbering apparatus for changeably displaying a series of digits for an
equestrian event.” Spec. ¶ 2.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. An equestrian participant identifier method, comprising:
obtaining a panel receiving patch, said panel receiving
patch comprising a dense loop interface provided on an
attachment side of said receiving patch;
obtaining a series of character presentation panels, said
series comprising at least one of:
a character image disposed upon a panel image
presentation surface of each character presentation panel,
respectively to form a set of character images, said set of
character images are selected from a character image
group, said character image group comprising:
a set of numbers within a range of 0 through 9, a
set of alphabet letters within a range of A through Z, and
a complete set of grammatical characters included within
ASCII code languages; and
each character presentation panel comprises a
dense hook interface on an attachment side of said
character presentation panel;
applying said panel receiving patch to a saddle pad, said
panel receiving patch being oriented having said interface side
exposed for receiving at least one character presentation panel;
establishing and associating a unique equestrian
participant identifier with each equestrian participant;
removably attaching at least one character presentation
panel to said panel receiving patch in an arrangement which
replicates said unique equestrian participant identifier to
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identify said respective equestrian participant during a
competition; and,
identifying an equestrian participant using said attached
at least one character presentation panel displayed upon said
panel receiving patch.
Appeal Br. 26–27, Claims App.

REJECTION
Claims 1–12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Walter (US 4,555,435, iss. Nov. 26, 1985) and Froehlich (US
6,782,554 B1, iss. Aug. 31, 2004).

OPINION
In rejecting claims 1–12 as unpatentable over Walter and Froehlich,
the Examiner finds Walter teaches an equestrian participant identifier
method as claimed, except “Walter does not teach the structure of the
character presentation panels.” Final Act. 5. To cure this deficiency, the
Examiner finds:
Froehlich teaches obtaining a series of character presentation
panels (Figure 2), said series comprising: a character image
disposed upon a panel image presentation surface of each
character presentation panel, respectively to form a set of
character images (Figure 2; col. 3, lines 9-11); said character
images selected from a set of numbers, letters, and characters
(Figure 2; col. 3, lines 7-9); each character presentation panel
comprising a dense hook interface on an attachment side of said
character presentation panel (col. 3, lines 14-17); and
removably attaching at least two character presentation panels
adjacent one another to form an at least two character set
(Figure 6, #34 and #36).
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Id. The Examiner determines it would have been obvious “to modify the
invention of Walter with the teachings of Froehlich and provide multiple
individual character panels to allow for more customization, as Froehlich
teaches that the panels can be used on any variety of objects desired (col. 3,
lines 43-45).” Id. In addition to the proposed modification, the Examiner
states “it has been held that constructing a formerly integral structure into
various elements involves only routine skill in the art.” Id. (citing Nerwin v.
Erlichman, 168 USPQ 177, 179 (BPAI 1969)).
Appellant argues independent claims 1, 5, and 9 as a group (Appeal
Br. 13–24). We select claim 1 as representative; thus, claims 5 and 9
therefore, stand or fall with claim 1. 37 C.F.R. §41.37(c)(1)(iv). In
particular, Appellant argues: (1) the “rejection is misplaced because there is
no reasonable rationale for combining the cited references to yield
Appellant’s claimed invention” (Appeal Br. 13); (2) “Froehlich reference
does not qualify as a proper prior art reference for use in an obviousness
rejection under 35 U.S.C. §[]103, because the reference is non-analogous
art” (id. at 16); (3) Walter teaches “away from the use of a series of panels
due to their inability to remain secured if not able to simultaneously be held
in place by the rider’s body” and “from the use of a sole attachment means”
(id. at 19), such that if Walter is modified as proposed by the Examiner, the
invention of Walter would be unsatisfactory for its intended purpose as a
participant identifier. Id. at 22.
Regarding argument (1), the Examiner disagrees and “maintains that
one of ordinary skill in the art would be motivated to combine the teachings
of Froehlich with that of Walter in order to provide multiple individual
character panels to allow for customization by an end user, as Froehlich
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teaches that the panels can be used on any variety of objects desired (col. 3,
lines 43-45).” Ans. 3. Appellant’s argument is not persuasive of error
because, contrary to Appellant’s contention, the Examiner has provided a
reasoned rationale for combining the references based on the teachings of
Froehlich. Besides expressing disagreement with the rejection, Appellant’s
argument does not explain adequately why the Examiner’s rationale for the
combination is unreasonable or improper.
Regarding argument (2), the Examiner disagrees that Froehlich is non-
analogous art because “Froehlich is concerned with the problem of allowing
for individual customization of an article, comprising a base material and
interchangeable panels.” Ans. 4. We agree. Froehlich “addresses a long-
felt need in the area of garments having removable identifying characters or
phrases.” Froehlich 2:1–3. Appellant’s Specification discusses a similar
problem of identifying participants by a numeric identifier and “a long-felt
need for a numeric identifier.” Spec. ¶ 7; see also Spec. ¶ 21 (“In a still
further aspect, the panel receiving patch is applied to an equestrian riding
jacket.”). Accordingly, Froehlich’s apparel-related entertainment system is
reasonably pertinent to the particular problem with which Appellant was
involved because Froehlich teaches individual customization of an article by
having removable identifying characters, “which may be used at sporting or
athletic events to express preferences or information” (Froehlich 2:36–39),
for identifying participants by those identifiers. One of ordinary skill in the
art would have considered Froehlich when seeking to overcome the problem
pertaining to the use of a numbering apparatus for changeably displaying a
series of digits for identifying a participant. See Spec. ¶ 2. Thus, because of
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the matter with which it deals, Froehlich logically would have commended
itself to Appellant’s attention in considering the problem.
We also find Appellant’s attempt to define the field of endeavor more
narrowly than justified by the claim unavailing. See Appeal Br. 17
(“Froehlich reference is in the field of ‘human necessities’, and more
specifically, ‘shirts.’”). Froehlich is concerned with displaying indicia on
clothing. See Froehlich 3:43–45. In particular, Froehlich “relates to . . .
garments bearing indicia and using hook and pile surfaces.” Froehlich 1:6–
7. Appellant’s invention relates to an identification method for identifying
an equestrian participant by a series of character presentation panels.
Froehlich, Abstract. Appellant’s use of the recited method in equestrian
competitions, which includes a participant (rider) wearing attire adorning an
identifier (see, e.g., Spec. ¶¶ 21, 34, Fig. 4), does not make the field of the
claimed invention different from the clothing application in Froehlich. We
are unpersuaded that Froehlich is not in the same field of endeavor, and as
the Examiner correctly asserts, USPTO classification of applications “is not
a barometer of whether art is analogous or not.” Ans. 5.
Regarding Appellant’s argument (3) that Walter teaches away, the
Examiner responds:
Walter incorporates multiple fastening means for holding the
panel in place, including hook and loop fasteners over a
majority of the panel. The addition of slots to aid in holding the
panel in place does not detract from Walter’s ability to read on
the limitations of the claims, nor does Walter require the slot
for holding the panel in place. It is true that the slot aids in
holding it, but the panels are also fastened by hook and loop,
and there is no indication that lacking a slot would render the
panels unable to attach to the saddle pad. It seems to be
speculation that “the friction of a rider’s leg would cause
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individual presentation panels to come loose and displaced”, as
a hook and loop fastener is capable of adhering two objects
together, especially of the material in question.
Ans. 5.
We are not persuaded the Examiner’s proposed modification renders
Walter unsatisfactory for its intended purpose as a participant identifier.
Claim 1 requires a series of character presentation panels, but does not
specify the particular orientation and arrangement of these panels. Even if
we assume that the slots in Walter are required, Appellant has not presented
persuasive technical reasoning that the slots would interfere with the
appearance of the series of labels; “obviousness must be determined in light
of all the facts, and there is no rule that a single reference that teaches away
will mandate a finding of nonobviousness. Likewise, a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In the Examiner’s proposed
modification to Walter, providing multiple character individual panels to
allow for more customization is an advantage that outweighs any potential
disadvantage of providing more slots, as identified by Appellant.
And, whether the weight of a rider’s leg is required to keep the labels
in place in Walter, Appellant makes no persuasive technical argument and
provides no persuasive objective evidence that the weight of the rider’s leg
would not provide such support to multiple labels. As discussed, claim 1
does not require any particular orientation or arrangement of the recited
panels, much less a particular size configuration of the panels. Moreover,
Walter teaches securing its labels with more than one fastening means. See
Walter 3:23–32 (“various alternative fastening means well known in the art,
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such as metal snaps 39, or the like, can be substituted for, or used in
combination”). Thus, Walter teaches redundant fastening means can be
used in combination for securing its label, but Appellant does not show
persuasively that the support of the rider’s leg against the label is of high
importance, let alone necessary. Accordingly, we agree with the Examiner
that the potential problem advanced by Appellant amounts to unsupported
speculation and attorney argument. We also agree with the Examiner that
“[a]dding Froehlich would merely add to the adjustability and versatility of
the Walter invention, and ‘substantial reconstruction and redesign of the
elements in Walter’ would certainly not be needed.” Ans. 6.
Accordingly, we sustain the rejection of claim 1, including claims 5
and 9, which fall with claim 1. We also sustain the rejection of dependent
claims 2–4, 6–8, and 10–12, which are not argued separately.

CONCLUSION
The rejection of claims 1–12 under 35 U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12 103(a) Walter, Froehlich 1–12
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED