Ex Parte Golle et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10707618 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AARON GOLLE
and JOHN GOLLE
____________

Appeal 2009-002874
Application 10/707,618
Technology Center 2800
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Decided:1 June 24, 2009
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002874
Application 10/707,618

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 4, 10-12, 15, and 16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
I. STATEMENT OF THE CASE
The invention relates to a safety sign utilizing an electroluminescent
(EL) light element having a blue-green illuminated color and a white non-
illuminated color. The sign further includes a yellow tint layer in order to
obtain a yellow color in a non-illuminated daytime operating condition and a
light green color in an illuminated condition. (Spec. ¶¶ 1, 28, 29, and 34).
Claim 1 is illustrative of the subject matter on appeal:
1. An EL sign for use on a vehicle comprising an EL illuminated
color and a non-illuminated color, and further including an EL lighting
element that is white in a non-illuminated condition and blue-green in an
illuminated condition, and a yellow layer that imparts a yellow tint to the
sign in daylight when the EL lighting element is non-illuminated and a light
green appearance at night when the EL lighting element is illuminated.
Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1, 3, 4, 10-12, 15, and 16 under
35 U.S.C. § 103(a) as obvious over U.S. Patent No. 5,533,289, issued July 9,
1996, to Hoffman (hereinafter “Hoffman”).
Appellants’ arguments are directed to claim 1 (Br. 10-11). Since no
other pending claim is separately mentioned, we select claim 1 as the
representative claim. See 37 C.F.R. § 41.37(c)(1)(vii).
II. ISSUE ON APPEAL
The sole issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants shown that the Examiner reversibly
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erred in determining that the invention recited in claim 1 would have been
obvious to one of ordinary skill in the art having the teachings of Hoffman?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. Appellants’ Specification states:
[s]elected embodiments of safety signs as
described in this document include colored EL
material. Both an illuminated color and a non-
illuminated color may be selected. Possible colors
include yellow, white, blue-green, etc. A color can
be chosen in the non-illuminated condition that is
suited for daytime, while a different color can be
chosen for the illuminated condition to optimize
both day and night. The addition in safety sign 500
of a layer 530 further broadens color options. In
one embodiment, the layer 530 is tinted to alter the
color of the EL lighting surface. In one
embodiment, an EL lighting surface is included
that is white in a non-illuminated condition, and
blue-green in an illuminated condition. In one
embodiment, a yellow tinted layer 530 is further
included. This provides a yellow appearance in the
day, with a light green appearance at night. In one
embodiment, the light green complies with
government regulations for color. In another
embodiment, an EL lighting surface is included
that is yellow in a non-illuminated condition, and
yellow in an illuminated condition. In one
embodiment, a yellow tinted layer 530 is further
included. This provides a yellow appearance in the
day, and a yellow appearance at night.

(Spec. ¶ 34).
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Appeal 2009-002874
Application 10/707,618

2. Appellants’ Specification also states that “[o]ne good example of EL
lighting can be obtained from the Durel Corporation of Chandler, AZ”
(Spec. ¶ 29).
3. Hoffman teaches an EL sign and that “[o]ne or more contrast layers or
sheets of translucent colored or contrast material can be disposed over at
least part of the visible portion of the lamp for enhanced visual effect”
(Hoffman, col. 2, ll. 29-32; see also col. 4, ll. 28-30).
4. Hoffman also teaches a preferred electroluminescent lamp 12 is the
Durel 3 lamp, which is also available from the Durel Corporation (Hoffman,
col. 3, ll. 8-9).
IV. PRINCIPLES OF LAW
“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) (citing 35 U.S.C. § 103).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417. “When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” Id. at 402. If
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this leads to the anticipated success, it is likely the product not of innovation,
but of ordinary skill and common sense. Id.
A reference “teaches away” when an artisan upon reading it would be
discouraged from following the path set out in the reference or would be led
in a direction divergent from the path that was taken by the applicant. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As an example, a reference
may teach away from a use when that use would render the result
inoperable. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed.
Cir. 2001); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(explaining that there is no teaching away when the “disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
V. ANALYSIS
Appellants contend that Hoffman fails to teach all the elements of the
claimed subject matter, and that Hoffman actually teaches away from the
claimed subject matter (Br. 10). Specifically, Appellants contend that
Hoffman fails to teach a sign having a first desired color during the daylight
in a non-illuminated condition and a second color during the evening in an
illuminated condition (Br. 10). Additionally, according to Appellants,
Hoffman is silent as to the particular color combination claimed, i.e., the
yellow tint during the day and light green appearance at night (Br. 10-11). It
is Appellants’ position that Hoffman is instead focused on the use of stencils
to provide indicia on a sign at low cost, and that Hoffman teaches away from
Appellants’ invention because Appellants’ invention has nothing to do with
stenciling (Br. 11).
The Examiner finds that Hoffman teaches an EL lighted sign having
an EL illuminated color and a non-illuminated color (Ans. 6). The Examiner
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finds that “[t]he sign would be a first desired color in a non-illuminated
condition (via a particular contrast layer and indicia) and a second different
color when illuminated (via different contrast layers in combination along
with the indicia).” (Ans. 6.) According to the Examiner, “signs are
commonly known in the art to have two or more colors (e.g., yellow, white,
and blue-green)” and this is corroborated by Hoffman (Ans. 3 and 7). The
Examiner also explains that “Hoffman is not necessarily focused on the use
of stencils” and “Appellant is [sic, Appellants are] unnecessarily restricting
Hoffman to teach a stencil” (Ans. 5-6).
Appellants’ Specification indicates that the EL lighting element may
be commercially obtained from the Durel Corporation of Chandler, AZ,
which is also the preferred supplier for the electrolumination lamp 12 taught
by Hoffman (FF 3-4). Accordingly, the selection of a known lighting
element according to its established function would have been well within
the knowledge and skill of the ordinary artisan. The selection of a particular
lighting element, such as those commercially available from the Durel
Corporation, as evidenced by the teachings of Hoffman (FF 4), would have
been within the technical grasp of the ordinary artisan.
We agree with the Examiner that the selection of yellow and light
green would have been obvious to one of ordinary skill in the art (Ans. 7-8)
in order to obtain the color dictated by government regulation (Br. 10; FF 2),
We also agree with the Examiner that combining blue-green and yellow to
make light green is no more than conventional color mixing (Ans. 7-8) and
well within the technical grasp and thus obvious to one of ordinary skill in
the art.
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We further note that Appellants’ arguments are only directed to “a
sign” having different colors in an illuminated and non-illuminated condition
(Br. 10). Since Hoffman teaches the use of more than one colored layer
(FF 3), we agree with the Examiner that the evidence establishes that it
would have been obvious to one of ordinary skill in the art to use two
colored layers to provide different colors to a sign in an illuminated and non-
illuminated condition.
Appellants have presented no reasoning to conclude that the teachings
of Hoffman would have discouraged one of ordinary skill in the art from
using the contrast layers as noted by the Examiner, nor would the use of a
stencil render the use of different colored contrast layers inoperable.
Accordingly, using stencils as indicia does not teach away from the claimed
invention.
Accordingly, Appellants have not shown that the Examiner reversibly
erred in determining that the invention recited in claim 1 would have been
obvious to one of ordinary skill in the art having the teachings of Hoffman.
Appellants indicate that claims 3, 4, 10-12, 15, and 16 “are believed to
be allowable at least for the same reasons provided with respect to [claim 1]”
(Br. 11). Thus, Appellants also have not shown that the Examiner erred in
rejecting any of claims 3, 4, 10-12, 15, and 16 as being obvious over
Hoffman.
VI. CONCLUSION
For the reasons discussed above, we sustain the Examiner’s rejection
of claims 1, 3, 4, 10-12, 15, and 16 under 35 U.S.C. § 103(a) as being
obvious over Hoffman.
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VII. DECISION
We affirm the Examiner’s decision.

VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).

AFFIRMED

cam

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