Ex Parte Garfinkle et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10147669 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BENJAMIN L. GARFINKLE and MANU B. MAKHIJA
____________

Appeal 2009-005800
Application 10/147,669
Technology Center 3600
____________

Decided: October 27, 2009
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Benjamin L. Garfinkle et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 36, 37, 40,
and 42. Claim 41 is objected to as dependent upon a rejected base claim and
is not subject to this appeal. Claims 1-35, 38, and 39 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

THE INVENTION
The Appellants’ claimed invention is a sign holder device for the
support and display of signage capable of a plurality of orientations, and
configurations. Spec. 1:11-15. Claim 36, reproduced below, is
representative of the subject matter on appeal.
36. A sign holder device in the form of individual
parts which, upon assembly, provides for support
and display of signage in a plurality of
orientations, said sign holder device comprising
a base configured to be releasably attachable
to a series of parallel extending wires,
a stem having a first end and second end,
said first end configured to be releasably retained
by said base and said second end configured to
retain a sign frame, and
a sign frame configured to be releasably
retained by said second end of said stem.

THE EVIDENCE
The Examiner relies upon the following evidence:
Alexander US 1,435,785 Nov. 14, 1922
Ware US 1,837,348 Dec. 22, 1931
Reynolds US 2,208,344 Jul. 16, 1940

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THE REJECTIONS
The Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 36 and 40/36 under 35 U.S.C. § 102(b) as
anticipated by Alexander.1
2. Rejection of claims 37, 40/42, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Alexander and Ware.
3. Rejection of claims 37, 40/42, and 42 under 35 U.S.C. § 103(a) as
unpatentable over Alexander and Reynolds.

ISSUES
The Examiner found that Alexander discloses a stem (rod 15) with a
second end (flattened end 23) that releasably retains a sign frame with a
rivet. Ans. 5, 8-9. The Appellants contend that a rivet does not releasably
retain a sign frame as claimed. App. Br. 5.
The first issue before us is:
Have the Appellants shown the Examiner erred in finding that
Alexander discloses a second end of a stem that releasably retains a sign
frame?
The Examiner concluded that the subject matter of claims 37, 40/42,
and 42 would have been obvious in view of Alexander and Ware. Ans. 5-6.
In reaching this conclusion, the Examiner found that the cap 31 of Alexander
is a base, configured to be releasably attachable to a series of parallel wires.
Ans. 5-6 (second rejection using findings of the first rejection at Ans. 4-5).

1 Claims 40 is a multiple dependent claim. We use the nomenclature
“40/36” to refer to the instance in which claim 40 depends from claim 36,
and “40/42 to refer to the instance in which claim 40 depends from claim 42.

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More specifically, the Examiner found that circular members 12 of caps 31
are configured to hold tubes 17 and 18, and that due to the similarity of tubes
and wires, circular members 12 are also configured to hold wires. Ans. 5-6,
8. The Examiner also concluded that it would have been obvious to modify
the sign holder of Alexander with the sign frame and post combination,
taught by Ware, to provide a means to protect the edges of the sign and to
removably attach the post to the sign frame and base. Ans. 6.
The Appellants argue claims 37, 40/42, and 42 as a group. App.
Br. 5-7. We select claim 37 as the representative claim, and claims 40/42,
and 42 stand or fall with claim 37. 37 C.F.R. § 41.37(c)(1)(vii) (2008). The
Appellants contend that threaded cap 31 of Alexander is not the claimed
base because elements 17 and 18 are tubes, not wires, and because upright 8,
not tubes 17 and 18, supports base 15. App. Br. 6-7. The Appellants also
contend it is not possible to combine Ware’s slotted connection with
Alexander’s device. App. Br. 6-7.
The second issue before us is:
Have the Appellants shown the Examiner erred in finding that
Alexander discloses the claimed base?
The third issue before us is:
Have the Appellants shown the Examiner erred in concluding that the
subject matter of claims 37, 40/42, and 42 would have been obvious in view
of Alexander and Ware?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
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(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. Alexander discloses a knock-down type of stand to display and
advertise articles of merchandise for sale that is easily and quickly
assembled and disassembled without the use of tools (except for a
screwdriver), and when disassembled fits into a small box.
Alexander, 1:13-20, 88-93, 98-100. The stand is designed to
display garments for sale (garments on garment hangers 26, hung
on cross-bar 11), and includes a horizontal sign (display card 21)
above and parallel to cross-bar 11, and a second sign (card 25
within card holder 16) positioned above one of the legs (uprights
8) of the stand. Alexander, 1:74-87; fig. 1.
2. The second sign, card holder 16, is comprised of a horizontal strip
22 “riveted or otherwise secured” to the flattened end 23 of the rod
15. Alexander, 1:74-76.
3. Alexander discloses that the device includes two uprights 8, each
inserted into the hollow boss 2 located in the center of base
members 1. Alexander, 1:40-42, 48-50; figs. 1, 4. Uprights 8 are
threaded at the upper end to permit securing to the bottom end of
internally threaded caps 31. Alexander, 1:53-55; fig. 2.
4. Above the connection to uprights 8, extending flanges 10 of caps
31 protrude perpendicularly to uprights 8 to receive cross-bar 11.
Alexander, 1:56-58; fig. 2. Cross-bar 11 extends horizontally
between the extending flanges 10 of each cap 31. Alexander, fig.
1. Above extending flanges 10, caps 31 widen into a first circular
bearing member 12, connected by two spaced straps 13 to a second
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circular bearing member 12. Alexander, 1:59-63; fig. 3. Above
the second circular bearing member 12, cap 31 terminates in a
short slab 14, tapped to receive rod 15 of card holder 16, which
permits rod 15 to place the card holder 16 at various angles.
Alexander, 1: 64-67, 74-76, 79-81; figs. 2, 3. Circular bearing
members 12 are configured to hold tubes 17 and 18. Alexander,
1:68-69, fig. 3.
5. Ware discloses a display frame. Ware, 1:3. Wares discloses an
embodiment with a hollow rectangular metal frame 10 that
includes a passageway 12 with cooperating locking slots 14 along
the lower horizontal portion of the frame 10. Ware, 1:39-40, 51-
53, 68-73; figs. 1, 4. The embodiment also includes a short
pedestal 16 for supporting the frame 10. Ware, 1:88-89; fig. 1.
Pedestal 16 includes a horizontal portion with a pair of headed
studs 13, configured to fit into cooperating locking slots 14 to hold
frame 10 on pedestal 16. Ware, 1:61-71, 76-83; figs. 5, 6.

PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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“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 Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Rejection of claims 36 and 40(36) under 35 U.S.C. § 102(b) as anticipated
by Alexander
Claim 36 contains the requirement that the sign frame is configured to
be releasably retained by the second end of the stem.
We agree with the Appellants that Alexander’s use of a rivet does not
releasably retain the sign frame as claimed. App. Br. 6-7. Alexander
discloses a stand that includes a horizontal bar for displaying garments, with
a first sign above and parallel to the clothing bar, and a second sign
positioned above one of the stand’s legs (Fact 1). The second sign is
comprised of a stem that is “riveted or otherwise secured” to the sign frame
(Fact 2). A rivet is not releasable. See, e.g., V-Formation, Inc., v. Benetton
Group SpA, 401 F.3d 1307, 1312 (Fed. Cir. 2005) (Rivets are considered by
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persons of ordinary skill in the art to be permanent, not releasable,
fasteners). Although the Examiner did not find that “otherwise secured”
would inherently include a releasable fastener, we find that “otherwise
secured,” that is, otherwise securing the stem to the sign frame could include
for example, welding, or other permanent fastening, and would not
necessarily include a releasable fastener. See In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) ("Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." (citations and internal
quotation marks omitted)).
Because Alexander does not disclose every limitation of claim 36,
Alexander does not anticipate claim 36. We also cannot sustain the rejection
of claim 40/36 by virtue of its dependence from claim 36.

Rejection of claims 37, 40(42), and 42 under 35 U.S.C. § 103(a) as
unpatentable over Alexander and Ware
Claim 37 depends from independent claim 36, and contains the
limitation that the “base [is] configured to be releasably attachable to a series
of parallel extending wires.”
We are unpersuaded by the Appellants’ contention that tubes 17 and
18 of Alexander are not wires because the argument is not supported by the
claim. See App. Br. 6. As the Examiner correctly points out, the claim
requires a base “configured to be” releasably attachable to wires, the wires
themselves are not claimed. See Ans. 9. Further, the Appellants’ contention
that tubes 17 and 18 of Alexander are not wires fails to address the rejection
as recited by the Examiner. In particular, the Examiner found that circular
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members 12 of threaded cap 31 of Alexander have the ability to be
releasably attached to parallel wires. Ans. 9-10.
The Appellants’ contention that Alexander does not disclose the
claimed base because base 15 is supported by upright 8 rather than tubes 17
and 18 is also unpersuasive. See App. Br. 6. The Appellant has failed to
address the rejection as proposed by the Examiner. The Examiner’s
proposed rejection does not use upright 8 of Alexander as the base. Rather,
the proposed rejection uses threaded cap 31 of Alexander as the base with
the circular member 12 being configured to attach to a series of parallel
extending wires. Ans. 4-5. Further, the Appellant’s contention is not
supported by the claim, as nothing in claim 37 would prohibit the base from
having a source of support other than the series of parallel extending wires.
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.). The Appellants have failed
to demonstrate the Examiner erred in finding that Alexander discloses the
claimed base.
The Appellants’ contention that it is not possible to combine Ware’s
slotted connection with Alexander’s device is unconvincing because it fails
to address the proposed rejection. See App. Br. 6-7. The Appellants’
argument presumes that the “slotted connection” of Ware will be joined with
Alexander’s device. Id. This is not the case. The slotted connection in
Ware’s device is between the stem and the sign frame (Fact 5), and the
Examiner’s proposed combination attaches both the sign frame and the
externally-threaded stem of Ware to the internally-threaded base (threaded
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cap 31) of Alexander. Ans. 5-6. In other words, the proposed rejection joins
Ware’s sign frame and stem to the base of Alexander without a modification
to the slotted connection of Ware’s device.
The Appellants have failed to demonstrate error by the Examiner in
the rejection of claim 37. Claims 40/42 and 42 fall with claim 37.

Rejection of claims 37, 40(42), and 42 under 35 U.S.C. § 103(a) as
unpatentable over Alexander and Reynolds
The Appellants rebut the Examiner’s rejection based on Alexander
and Reynolds by repeating the argument that Alexander does not disclose a
base that is configured to be releasably attachable to a series of parallel
extending wires. App. Br. 7. This argument is unconvincing for the reasons
explained in the analysis of the rejection based on Alexander and Ware,
supra.

NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 36 and 40/36 under
35 U.S.C. § 103(a) as unpatentable over Alexander.

ANALYSIS
Alexander discloses a sign holder device in the form of individual
parts, which upon assembly provides for support and display of signage
(Facts 1, 2). The device is capable of a plurality of orientations because
short slab 14 is tapped (threaded) to receive rod 15 of card holder 16, and
tightening or loosening rod 15 in the threads of short slab 14 places the sign
holder 16 at various angles (orientations) (Fact 4). Alexander discloses an
upper base (end of threaded cap 31 with short slab 14) configured to
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releasably receive the first end of a stem (rod 15) (Fact 4). Alexander also
discloses a lower base with an opening (circular bearing members 12 and
two spaced straps 13) configured to be releasably attachable to a series of
parallel extending wires (Fact 4). The stem (rod 15) has a second end
(flattened end 23) that retains a sign frame (card holder 16) (Facts 1, 2).
Alexander discloses that the sign frame (card holder 16) is attached by
being “riveted or otherwise secured” to the second end of the stem (rod 15)
(Fact 2). Alexander discloses the device may be readily and quickly
assembled and disassembled without the use of tools except a screwdriver,
and that when disassembled, the device fits into a small box (Fact 1). It
would have been obvious to one of ordinary skill in the art at the time the
invention was made to modify the attachment of the second end of the stem
(flattened end 23 of rod 15) to the sign frame (card holder 16) from a
permanent (e.g. rivet) to a releasable means of securing, in order to allow the
device to be further disassembled to fit into a small box. The releasable
means of securing could be any of a number of widely known means for
releasably attaching one device to another, such as, for example, a bolt that
fits into a hole formed in the second end of the stem (flattened end 23 of rod
15) and is secured on its threaded end by a wing nut, so that, as intended by
Alexander, the use of a tool, except a screwdriver, is not required.

CONCLUSIONS
The Appellants have shown the Examiner erred in finding that
Alexander discloses a second end of a stem that releasably retains a sign
frame.
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The Appellants have failed to show the Examiner erred in finding that
Alexander discloses the claimed base.
The Appellants have failed to show the Examiner erred in concluding
that the subject matter of claims 37, 40/42, and 42 would have been obvious
in view of Alexander and Ware.

DECISION
We REVERSE the decision of the Examiner to reject claims 36 and
40/36 under 35 U.S.C. § 102(b). We AFFIRM the Examiner’s rejections of
claims 37, 40/42, and 42 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 36 and 40/36
under 35 U.S.C. § 103(a) as being unpatentable over Alexander.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

Vsh

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