Ex Parte Garfinkle

Patent Trial and Appeal Board

Dec 4, 2013

12122888 (P.T.A.B. Dec. 4, 2013)

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.
12/122,888 05/19/2008 Benjamin L Garfinkle 535.19 9770
85444 7590 12/04/2013
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
12/04/2013 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 BENJAMIN L. GARFINKLE
____________________

Appeal 2011-012661
Application 12/122,888
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 3-6 and 14-20.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to sign holder devices. Claims 14
and 18-20 are the only independent claims.
EXEMPLARY CLAIM
Claim 14, reproduced below reformatted, is representative of the
claims on appeal.
14. A sign holder device for the support and display of
signage, said sign holder device comprising
a base, sign holder and a stem, said stem having a first
end appended to said base and a second end for supporting a
sign holder, said stem having a length defined by the distance
between said first and second ends, said length being adjustable
to vary the distance between said base and sign holder by
providing said stem with an inner shaft and outer sleeve, said
inner shaft having an outer surface and said outer sleeve having
an inner surface,
said sign holder device further including at least one
protrusion and at least one indent provided for snap-release
contact as said inner shaft and outer sleeve move with respect to
one another, said at least one protrusion being either on the
outer surface of said inner shaft or inner surface of said outer

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed May 19,
2008), Appeal Brief (“App. Br.,” filed February 18, 2011), and Reply Brief
(“Reply Br.,” filed June 1, 2011), as well as the Examiner’s Answer (“Ans.,”
mailed May 17, 2011).

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sleeve while said at least one indent being located on the outer
surface of said inner shaft or inner surface of said outer sleeve.
THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 3 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Garfinkle (US 4,777,750, iss. Oct. 18, 1988) in view of Shuman (US
4,329,800, May 18, 1982);
claims 3-5, 14, and 16-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Garfinkle in view of Friedman (US 5,169,226, iss. Dec. 8,
1992);
claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnston (US 1,606,369, iss. Nov. 9, 1926) in view of
Friedman; and
claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Annestedt (US Des. 277,584, iss. Feb. 12, 1985) in view of Friedman.
ANALYSIS
Obviousness rejection of claims 3 and 14 based on Garfinkle and
Shuman
With respect to the rejection of independent claim 14 and claim 3
depending therefrom, Appellant argues that the combination of references
does not teach or suggest the limitation “said sign holder device further
including at least one protrusion and at least one indent provided for snap-
release contact” (App. Br. 5). Specifically, Appellant argues that “Shuman
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teaches a telescoping stem having component parts 22 and 24[,] which are
provided with arms 32 and 34 having a set of teeth 36 which interact with
teeth 46 to enable the stem to change its length in a ‘ratchet-like action’”
(id.) (citation omitted). Appellant further argues this configuration neither
teaches the limitation of an indent, defined by Appellant as “to force inward
so as to form a depression; to form a dent,” nor of a protrusion, defined by
Appellant as “the act of protruding: the state of being protruded; something
(as part of excrescence) that protrudes (syn-projection)” (id., fn.1).
Appellant does not point to anywhere in the Specification or claims, or
submit any evidence such as a Declaration, which would require that we
interpret the limitations in accordance with these definitions. Instead,
Appellant points to Webster’s New Collegiate Dictionary, GNC Merriam
Co. 1976, for these definitions (id.). Initially, we note that Appellant’s
definition of “indent” is the definition of the verb, not the noun. Merriam-
Webster’s Collegiate Dictionary defines the noun “indent” as an
“indentation,” and defines “indentation” as “an angular cut in an edge:
notch; [ ] a recess in the surface.” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY 879 (11th ed.). We find that any or all of
these definitions for “indentation” may be used to describe the contours of
teeth 36 or 46 of Shuman. Regarding Appellant’s definition of “protrusion,”
we find that the contours of teeth 36 or 46 of Shuman may be described as
“protruding,” which Merriam-Webster’s Collegiate Dictionary defines as
“project[ing]” or “jut[ting] out from the surrounding surface” (id.).
Appellant’s other statements made with respect to these claims, including
those on pages 1-2 of the Reply Brief, are directed to unclaimed aspects of
Appellant’s invention. Thus, Appellant’s argument is not persuasive.
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Based on the foregoing, we sustain the rejection of claims 3 and 14.
Obviousness rejection of claims 3-5, 14, and 16-20 based on
Garfinkle and Friedman
With respect to the rejection of independent claims 14 and 18-20, as
well as claim 3-5, 16, and 17 depending therefrom, Appellant argues that the
combination of references does not teach or suggest the limitation “said sign
holder device further including at least one protrusion and at least one indent
provided for snap-release contact” (App. Br. 8). Specifically, Appellant
argues:
Friedman teaches rib 50 at the end of flap 52 which is formed
through the outer sleeve of arm 16. Applicant’s device
provides the claimed protrusion/indent combination to be
completely enclosed within outer shaft element 25, a distinction
which can be quite important in the environment in which the
present invention is intended to occupy. Not only does flap 52
detract from the appearance and design concept of the present
invention but creates an element which can easily be caught and
broken by a retail clerk. In addition, the opening created by
flap 52 allows food products to get caught and trapped in the
assembly. This is also true at the detent end of arm 16 with all
of the grooves capable of providing an environment in which
food could be caught. This is compounded by the recognition
that Friedman does not suggest the ability to decouple the inner
shaft and outer sleeve of his portable lighting element and, in
fact, one would in all likelihood not be able to do so in light of
the power cord serpentined therein. Thus if one was simply to
take, through the exercise of hindsight, arm 16 of Friedman and
apply it to applicant’s invention, the result would be a signage
device far inferior to that disclosed and claimed herein.
(App. Br. 8-9). Thus, Appellant does not argue that Friedman does not teach
a cooperating protrusion and indent, but rather that Friedman’s device is
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inferior. Even assuming Appellant is correct, Appellant’s argument does not
establish that Friedman does not teach the limitation of the claim.
Appellant’s other statements made with respect to this rejection, including
those made on page 2 of the Reply Brief, are directed to unclaimed aspects
of Appellant’s invention. For these reasons, Appellant’s argument is not
persuasive.
Appellant also argues that there is no reason to combine the
references, stating:
Garfinkle teaches a sign holder whose height is adjustable but
does not suggest doing so in the claimed fashion. . . . Friedman,
on the other hand, has no language whatsoever which would
suggest his invention is anything but a portable desk light. His
adjustable neck is intended to provide a compact device which
can be carried in one’s pocket and expanded upon use. Simply
put, no one would turn to Friedman in order to modify
Garfinkle without applicant’s disclosure suggesting the
combination.
(App. Br. 8). We agree with the Examiner, however, that “Friedman is cited
as an alternative telescoping stem. Since Garfinkle and [Friedman] teach a
telescoping stem, it would have been obvious to turn to the telescoping stem
taught by Friedman for modification of the telescoping stem of Garfinkle”
(Ans. 13). The Supreme Court has stated that in considering obviousness
“the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” and has affirmed that “[t]he
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 415-16.
In this case, the Examiner substitutes the telescoping arrangement of
Friedman for the telescoping arrangement of Garfinkle. Thus, Appellant’s
argument is not persuasive.
Based on the foregoing, we sustain the rejection of independent claim
14 and 18-20, as well as claim 3-5 and 17 depending therefrom, which
Appellant argues as a group.
With respect to dependent claim 16, Appellant argues the claim with
claims 3-5, 14, and 17-20, and additionally argues the combination of
references does not teach of suggest the limitation “said stem is capable of
moving forward and backward with respect to said base” (App. Br. 9).
Specifically, Appellant argues that:
[I]t is noted that applicant teaches and claims that the sign
holder can be moved backwards and forwards with respect to
the stem and the stem moved backwards and forwards with
respect to the base. These are important characteristics of the
present invention noting that in a retail food environment,
proper orientation of the signage maximizes consumer
awareness and thus can greatly assist in sales. The Garfinkle
patent does not suggest such movement depicted by arrows 50
and 51 in Figs. 3 and 2 respectively. The Examiner seeks to
modify Garfinkle by, again, turning to Friedman teaching not
signage but a collapsible and portable lamp device. Simply put,
no one would turn to Friedman showing rotation of a lamp with
regard to support arm 16 or of movement of support arm 16 to
his battery case 12 and extract those features and incorporate
them in a sign holder device of the type disclosed and claimed
herein. There would be no motivation to do so short of
applicant’s own disclosure and, as noted, the reason that
Friedman provides relative movement among its component
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parts is to provide portability of his lamp device and to enable
the illuminating lamp to be directed upon objects to be
illuminated.
(App. Br. 9). Thus, Appellant does not argue that combining Garfinkle with
Friedman would not result in a stem capable of moving back and forth, but
that there is no reason to combine Friedman, which teaches a portable lamp,
with Garfinkle, which teaches a sign holder. For the reasons discussed
above, however, we find that combining Garfinkle with Friedman would be
obvious to one of ordinary skill. Appellant’s other statements are directed to
unclaimed aspects of Appellant’s invention. For these reasons, Appellant’s
argument is not persuasive, and thus we sustain the rejection of claim 16.
Obviousness rejection of claims 14 and 15 based on Johnston and
Friedman
With respect to the rejection of independent claim 14, from which
claim 15 depends, Appellant argues that the combination of references does
not teach or suggest the limitation “said sign holder device further including
at least one protrusion and at least one indent provided for snap-release
contact” (App. Br. 10-11). Specifically, Appellant argues:
As the Examiner rightfully recognizes, Johnston, the primary
reference, fails to disclose an indent/protrusion combination
used to selectively adjust the spacing between signage and a
base connected to opposite ends of a stem. The Examiner has
turned to nonanalogous art in the form of a portable desk light
to modify the primary reference. One involved in the signage
art simply would not turn to technology involving a lamp
device to make the suggested modification. The references are
nonanalogous and the combination involves hindsight
reconstruction of applicant’s invention. And even if the
combination was tenable, flap 52 and continuous grooves 48 of
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Friedman provide for an inferior device not ideally suited to be
used in the food industry.
(App. Br. 10-11). We agree with the Examiner, however, that:
Both Johns[t]on and Friedman teach devices with
telescoping stems or posts. Both Johns[t]on and
Friedman teaches [sic] one of the telescoping members
having protrusion and the second telescoping member
having an aperture or detent adapted to receive the
protrusion is a snap type relationship. The examiner
maintains that the [sic] Johns[t]on and Friedman are
indeed analogous to one another.
(Ans. 14). In this case, the Examiner substitutes the telescoping
arrangement of Friedman for the telescoping arrangement of Johnston.
Thus, Appellant’s argument is not persuasive.
With respect to Appellant’s argument regarding nonanalogous art:
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary
skill in the art. Id. (“[I]t is necessary to consider ‘the reality of
the circumstances,’-in other words, common sense-in deciding
in which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032, 1036
(C.C.P.A.1979))).
In re Kahn, 441 F.3d 977, 987, (Fed. Cir. 2006). Because both Johnston and
Friedman teach telescoping arrangements that may be substituted for one
another, Friedman’s telescoping arrangement would be reasonable pertinent
to solving problems associated with Johnston’s telescoping arrangement.
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Appellant’s other statements are directed to unclaimed aspects of
Appellant’s invention. For these reasons, Appellant’s argument is not
persuasive, and thus we sustain the rejection of claims 14 and 15.
Obviousness rejection of claims 6 and 14 based on Annestedt and
Friedman
With respect to the rejection of independent claim 14, from which
claim 6 depends, Appellant argues that the combination of references does
not teach or suggest the limitation “said sign holder device further including
at least one protrusion and at least one indent provided for snap-release
contact” (App. Br. 8). Specifically, Appellant argues:
Annestedt teaches a T-shaped stand having a pair of
binder clips for releasable retaining placards. A spindly tubular
stem is shown connecting the binder clip support to a base.
Again, it is hard to imagine that anyone would tum to Friedman
to modify the teachings of the principal design patent. The
prior art does not suggest the combination and, as noted with
respect to the combination of Garfinkle and Friedman as well as
Johnston and Friedman, such combination clearly represents
hindsight reconstruction of applicant’s invention.
(App. Br. 11). Thus, Appellant does not argue that combining Annestedt
with Friedman would not result in a cooperating protrusion and indent, but
that there is no reason to combine Annestedt, which teaches a placard stand,
with Friedman, which teaches a portable lamp. We agree with the
Examiner, however, that:
[B]oth Annestedt and Friedman teaches [sic] the telescoping
members, wherein Friedman teaches a first telescoping member
having protrusion and the second telescoping member having
an apertures or detents adapted to receive the protrusion is a
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snap type relationship. The examiner maintains that the
Annestedt and Friedman are indeed analogous to one another.
(Ans. 14-15). In this case, the Examiner substitutes the known telescoping
arrangement of Friedman for the telescoping arrangement of Annestedt.
Thus, Appellant’s argument is not persuasive.
Based on the foregoing, we sustain the rejection of claims 6 and 14.
DECISION
The Examiner’s rejections of claims 3-6 and 14-20 under 35 U.S.C.
§ 103(a) are AFFIRMED.
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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