Ex Parte Garfinkle et al

Board of Patent Appeals and Interferences

Jul 30, 2012

10147669 (B.P.A.I. Jul. 30, 2012)

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.
10/147,669 07/22/2002 Benjamin L. Garfinkle 535.03 2182
85444 7590 07/31/2012
Bay Area Technolgy Law Group PC
4089 Emery Street
Emeryville, CA 94608
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
07/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

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

Appeal 2011-005734
Application 10/147,669
Technology Center 3600
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
JAMES P. CALVE, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Benjamin L. Garfinkle and Manu B. Makhija (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
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43, 46, 49/43, 50/46, 51, and 52.1 We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 1-42 are canceled, and claims 44, 45, 47, 48, 49/44, 50/45,
and 53 are withdrawn from consideration.
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is “directed to a sign holder device in
the form of individual parts which, upon assembly, provide for the support
and display of signage in a plurality of orientations.” Spec. 1, ll. 11-13.
Claims 43 and 51, reproduced below, are representative of the subject matter
on appeal.
43. A sign holder device in the form of individual parts
which, upon assembly, provides for support and display of
signage, said sign holder device comprising
a base configured to be releaseably attachable to a series
of parallel extending wires being oriented in a substantially
horizontal plane,
a stem having a first end and second end, said first end
configured to be retained by said base and said second and
configured to retain a sign frame[.]
51. 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,

1 Claims 49 and 50 are multiple dependent claims. We use “49/43” to refer
to the instance in which claim 49 depends from claim 43, and “50/46” to
refer to the instance in which claim 50 depends from claim 46.
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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
wherein said base is comprised of an upper base and
lower base, said lower base being releasably attachable to said
series of parallel extending wires whereby said upper base is
configured to releasably receive and retain either the first end of
said stem or said sign frame and wherein said lower base and
upper base are provided with protrusions and receiving slots
such that said protrusions are sized and positioned to fit within
said receiving slots releasably locking said upper base to said
lower base.
THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 51 and 52 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. The Examiner rejected claims 43, 46, 49/43, and 50/46 under
35 U.S.C. § 103(a) as being unpatentable over Alexander (US
1,435,785; iss. Nov. 14, 1922).2
CONTENTIONS AND ISSUES
The Examiner determined that claims 51 and 52 are indefinite because
it is unclear from the claim language used in the last “wherein” clause “if

2 The present application was the subject of a prior appeal (Appeal 2009-
005800) in which the Board entered a new ground of rejection of then-
pending claims 36 and 40/36 under 35 U.S.C. § 103(a) as unpatentable over
Alexander, and affirmed rejections under 35 U.S.C. § 103(a) of then-
pending claims 37, 40/42, and 42 as unpatentable over Alexander and Ware
and as unpatentable over Alexander and Reynolds.
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both the upper base and the lower base each have protrusions and receiving
slots or if [the] upper base has one of the protrusion and receiving slot and
the lower base has the other of the protrusions or receiving slots.” Ans. 4.
Appellants assert that claims 51 and 52 are not ambiguous when read in light
of Figures 7A and 7B and the Specification describing these figures. App.
Br. 8.
The Examiner determined that claims 43, 46, 49/43, and 50/46 are
unpatentable because Alexander discloses the claimed sign holder device
including the base and stem as called for in the claims and the circular
bearing members 12 of the base are aligned and thus “have the ability to be
mounted on a series of parallel wires, regardless of whether the wires extend
in a vertical or horizontal plane.” Ans. 5, 6. The Examiner further
determined that “it would have been obvious to one having ordinary skills
[sic] in the art at the time this invention was made to mount the sign holder
device taught by Alexander to a support having a plurality of parallel wire[s]
extending in a horizontal plane to provide a means to change the orientation
of the sign from vertical to horizontal.” Id.
Appellants argue claims 43, 46, 49/43, and 50/46 as a group. App.
Br. 4-6. We select claim 43 as representative and the remaining claims of
the group stand or fall with claim 43. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). Appellants assert that the rejection should not be sustained because:
the combined advertising and display fixture of Alexander
functions only by using tubular members 17 and 18 to bridge
uprights 8 positioned in a vertical plane by securing them one
over the other within circular members 12[.] Alexander could
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not be reconfigured to enable tubular members 17 and 18 to
reside in a horizontal plane while still performing the function
as recited therein.
App. Br. 6.
The issues presented by this appeal are:
Would one skilled in the art understand what is claimed by the last
“wherein” clause of claims 51 and 52 when the claim language is read in
light of the Specification?
Did the Examiner err in basing the rejection of claim 43 on the finding
that Alexander’s circular bearing members 12 of the base have the ability to
be releasably attachable on a series of parallel extending wires being
oriented in a substantially horizontal plane?
ANALYSIS
Rejection of claims 51 and 52 under 35 U.S.C. § 112, second paragraph
The last “wherein” clause of claims 51 and 52 recites:
wherein said lower base and upper base are provided with
protrusions and receiving slots such that said protrusions are
sized and positioned to fit within said receiving slots releasably
locking said upper base to said lower base.
We agree with the Examiner that this claim language is ambiguous on
its face because it does not make clear whether both the lower base and
upper base each contain protrusions and receiving slots, or whether one of
the bases contains protrusions and the other base contains receiving slots.
Appellants contend that one skilled in the art reading this claim language in
light of the Specification would understand the claim to call for the latter
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(i.e., one of the bases is provided with protrusions and the other of the bases
is provided with receiving slots). App. Br. 7.
Figures 7A and 7B depict a base comprised of a lower base 56 having
protrusions 55 formed on a surface thereof, and an upper base 44 having
receiving slots 43 formed therethrough. Fig. 7A (exploded view of two-part
base) and Fig. 7B (side plan view of assembled two-part base); Spec. 4, ll. 5-
8. The Specification describes, with reference to Figures 7A and 7B, that
“[l]ower base 56 is provided with four upwardly extending protrusions 55
which are caused to pass within receiving slots 43. Upon rotation of the
upper and lower bases 44 and 56 with respect to one another, the upper base
can be caused to snap fit to the lower base and be retained thereby.” Spec. 7,
ll. 24-29. While Figures 7A and 7B describe an embodiment of a two-part
base having protrusions on the lower base and receiving slots on the upper
base, by Appellants’ own admission, the claim is clearly not limited to this
specific embodiment because it does not specify on which base (or bases)
the protrusions and receiving slots are located. App. Br. 7 (“The
specification is devoid of any criticality as to the positioning of the
protrusions/combination.”)
We agree with the Examiner that one skilled in the art would not be
able to discern the purported intended scope of this claim language.
Contrary to Appellants’ contention that the claim clearly means that one of
the bases is provided with protrusions and the other base is provided with
receiving slots, it is equally plausible that one skilled in the art would
understand the claim language to mean that both bases each have protrusions
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and receiving slots. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential) (holding that “if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.”) The two interpretations identified by the
Examiner do not present a matter simply of claim breadth because the two
potential interpretations are alternative interpretations. As such, we sustain
the rejection of claims 51 and 52 under 35 U.S.C. § 112, second paragraph,
as being indefinite. See id. (“The USPTO, as the sole agency vested with the
authority to grant exclusionary rights to inventors for patentable inventions,
has a duty to guard the public against patents of ambiguous and vague
scope.”)
Rejection of claims 43, 46, 49/43, and 50/46 under 35 U.S.C. § 103(a)
We are not persuaded by the Appellants’ contention that Alexander
fails to render the claims unpatentable because the tubes 17 and 18 of
Alexander extend parallel to one another in a vertical plane. App. Br. 6;
Reply Br. 2. As the Examiner correctly points out and Appellants
acknowledge, the claim requires a base “configured to be” releasably
attached to wires that extend in a horizontal plane; the wires themselves are
not claimed. Ans. 8; App. Br. 6. As such, the claim language is met as long
as the prior art structure is capable of being releasably attachable to wires
that extend in a horizontal plane. We agree with the Examiner’s finding that
the openings 12 are capable of such attachment. Ans. 5.
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We are not persuaded by the Appellants’ argument that Alexander’s
structure could not be reconfigured to have tubular members 17 and 18
reside in a horizontal plane. App. Br. 6. The claim is directed simply to a
“sign holder.” The Examiner determined that the base (cap 31 having
bearing members 12, straps 13, and slabs 14), stem (15), and sign frame (16)
of Alexander meet the claimed elements. Ans. 4-5. The Examiner’s
determination that this sign holder is capable of being releasably attachable
to a series of parallel extending wires does not propose to reconfigure the
support or the stand of Alexander. Ans. 8. Rather, the Examiner
contemplates the ability of mounting the sign holder of Alexander on
another support structure having horizontal extending parallel wires. Id. In
other words, the Examiner determined that it would have been obvious to
one of ordinary skill in the art that one could attach Alexander’s sign holder
in a variety of orientations. Ans. 5. We agree with the Examiner’s
determination that the base of the sign holder taught by Alexander is
configured so that it is capable of being releasably attachable to a series of
parallel extending wires being oriented in a substantially horizontal plane.
Id. We further find that the Examiner’s reason for reorienting the sign
holder is based on a rational underpinning, and note that Appellants have not
challenged the Examiner’s articulated reasoning in this regard. As such, we
sustain the Examiner’s rejection of claims 43, 46, 49/43, and 50/46 under
35 U.S.C. § 103(a) as unpatentable over Alexander.
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CONCLUSIONS
One skilled in the art would not understand what is claimed by the last
“wherein” clause of claims 51 and 52 when the claim language is read in
light of the Specification.
The Examiner did not err in basing the rejection of claim 43 on the
finding that Alexander’s circular bearing members 12 of the base have the
ability to be releasably attachable on a series of parallel extending wires
being oriented in a substantially horizontal plane.
DECISION
We AFFIRM the decision of the Examiner to reject claims 43, 46,
49/43, 50/46, 51, and 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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