Ex Parte Hannington

Board of Patent Appeals and Interferences

Mar 29, 2012

11054874 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL E. HANNINGTON
__________

Appeal 2009-013163
Application 11/054,874
Technology Center 3600
___________

Before SCOTT R. BOALICK, ELENI MANTIS MERCADER, and
DENISE M. POTHIER, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
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STATEMENT OF THE CASE
Claims 1-13 were finally rejected under 35 U.S.C. § 103(a) as being
obvious over Logan (U.S. Patent 4,466,208; issued Aug. 21, 1984) and
Fisher (U.S. Patent 5,899,009; issued May 4, 1999).
Claim 14 was finally rejected under 35 U.S.C. § 103(a) as being
obvious over Logan, Fisher, and Moses (U.S. Patent 4,420,898; issued Dec.
20, 1983).
FINDINGS OF FACT
Appellant’s Invention
Appellant discloses an exit sign. Appellant’s Fig. 1, reproduced
below, shows a perspective view of the sign. (Spec. 3:2-3).

As shown, the sign has a substrate 12 and overlying stencil 14 (termed
“indicia layer”). Letter-shaped openings 24 of the stencil 14 expose the
substrate 12 to form the “EXIT” indicium. The substrate 12 and stencil 14
carry respective phosphorescent materials with contrasting afterglows, such
that the indicium can be discerned in darkness. (Spec. 2:1-15; 4:20-28).
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Logan
Logan discloses an exit sign. Logan’s Fig. 1, reproduced below,
shows an exploded perspective view of the sign. (Logan 2:53-54).

As shown, the sign has a substrate 19 and overlying stencil 12.
Letter-shaped openings 13 of the stencil 12 expose the substrate 19 (through
a transparent plate 20) to form the “EXIT” indicium. The substrate 19 is
phosphorescent, such that the indicium can be discerned in darkness. The
stencil 12 does not carry a phosphorescent material. (Logan, abstract; 3:4-
23; 4:32-46).
Fisher
Fisher discloses an exit sign. Fisher’s Fig. 1, reproduced below,
shows a plan view of a lettered face plate 10 of the sign. (Fisher 2:1-3).
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As shown, the letters 12 have borders 16 and interiors 14 that form the
“EXIT” indicium. The borders 16 emit a strong afterglow that can be
discerned before a viewer’s eyes have adjusted to darkness. The interiors 14
emit a weak afterglow that cannot be discerned until a viewer’s eyes have
adjusted to darkness but outlasts the strong afterglow of the border 16.
(Fisher 1:25-39; 2:24-32).
Fisher’s Fig. 2, reproduced below, shows a plan view of a back panel
22 of the sign. (Fisher 2:4-6).
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The weak afterglow is generated by tritium 18 of the back panel 22
(i.e., emitted through the letter interiors 14). The strong afterglow is
generated by the face plate 22 (i.e., emitted from the phosphorescent
material of the letter borders 16). (Fisher 2:34-42).
ANALYSIS
1. Claims 1 and 8-13
Claims 1 and 8-13 were rejected as being obvious over Logan and
Fisher. Claim 1 recites an emergency information sign having a substrate
and an overlying “indicia layer” that exposes portions of the substrate to
form the sign’s indicium. Claim 1 also recites that the substrate and indicia
layer each carry phosphorescent material. The remaining claims depend
from claim 1 and accordingly include these limitations.1

1 Claim 1 particularly recites:
1. An emergency information sign comprising a base substrate
and an indicia layer positioned over the base substrate;
wherein the base substrate has areas which are exposed
and the indicia layer has areas which cover the base substrate,
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The Examiner found that Logan’s substrate 19 and stencil 12
constitute a substrate and indicia layer as claimed, except that Logan’s
stencil 12 does not carry a phosphorescent material. (Ans. 3:19-20). The
Examiner determined that it would have been obvious to add a
phosphorescent material to Logan’s stencil 12 (i.e., the indicia layer) in view
of Fisher’s phosphorescent letter borders 16, so as to likewise provide
Logan’s sign with “another level of illumination.” (Ans. 8:12-17).
We agree with the Examiner in view of Fisher’s teaching of
phosphorescent letter borders 16. Given that the borders 16 merely provide
a second of the two illuminators used to generate the strong and weak
afterglows, a skilled artisan would have recognized that Logan’s sign can
also generate strong and weak afterglows by likewise employing a second
illuminator.2 And since Logan’s stencil 12 forms the borders of the sign’s
letters, a skilled artisan would have recognized the proposed addition of
phosphorescent material to the stencil 12 as a viable way of adding this
functionality of Fisher’s phosphorescent letter borders 16.3

these areas together forming emergency information indicia;
and
wherein the base substrate and the indicia layer each
carry phosphorescent materials which absorb and store light
from a primary light source and emit this stored light during
dark conditions.
2 See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.”).
3 See KSR, 550 U.S. at 418 (“[Obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
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Appellant does not contend that placing phosphorescent material on
Logan’s stencil 12 would fail to yield the invention of claim 1 or be beyond
the level of skill in the art.4 Appellant argues, rather, that the modification is
not obvious over the applied prior art because: (a) “[n]either Logan nor
Fisher show or suggest that both the base substrate and the indicia layer each
carry phosphorescent materials” (Brief 6:6-7:2); (b) “Fisher teaches against
such an arrangement, and instead directs one to place a tritium illuminator
behind the stencil” (Brief 7:2-4); (c) “Logan is not concerned with better
illumination” (Brief 7:7-8); and (d) “if one wanted ‘better illumination’ in
the Logan sign, the ‘addition of phosphorescent material’ would occur in its
phosphorescent sheet 19, not its front E-X-I-T stencil” (Brief 7:9-11). The
arguments are unpersuasive for the reasons below.
(a) Argument 1: “Neither Logan nor Fisher show or suggest that
both the base substrate and the indicia layer each carry
phosphorescent materials”
Appellant argues that neither Logan’s sign nor Fisher’s sign carries
phosphorescent material on both a substrate and indicia layer. (Brief 6:6-
7:2). The argument fails to address the rejection. The argued feature was
met by the proposed modification of Logan’s stencil 12 in view of Fisher –
that is, in view of both Logan and Fisher. Appellant cannot overcome the

claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”).
4 See KSR, 550 U.S. at 418 (“When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”).
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rejection by showing the feature is not taught by either Logan or Fisher
individually.5
(b) Argument 2: “Fisher teaches against such an arrangement,
and instead directs one to place a tritium illuminator behind
the stencil”
Appellant argues that Fisher teaches away from the proposed
modification by placing its tritium 18 behind “the stencil.” (Brief 7:2-4).
We disagree. If Fisher’s face plate 10 is a “stencil” as argued, then the
stencil (face plate 10) exposes a first illuminator (tritium 18) through its
openings (letter interiors 14) and a second passive illuminator
(phosphorescent letter borders 16) on its surface. Likewise, Logan’s stencil
12, as modified in view of Fisher, exposes a first illuminator
(phosphorescent substrate 10) through its openings 13 and a second
illuminator (added phosphorescent material) on its surface.
(c) Argument 3: “Logan is not concerned with better
illumination”
Appellant argues that Logan’s objects (“concern”) are not directed to
illumination. The argument is correct insofar that Logan seeks to claim a
lamp light 60 (Logan’s Fig. 1) for testing the backlight 18. (Logan abstract;
4:47-52). However, the argument neglects that the claimed invention,
Logan, and Fisher are each directed to passively illuminated EXIT signs.
Thus, even assuming for the sake of argument that Logan and Fisher are
directed to different problems, they are nonetheless analogous prior art of

5 See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
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the claimed invention6 and thus must be considered for all that they teach or
suggest by way of technology.7
(d) Argument 4: “[I]f one wanted ‘better illumination’ in the
Logan sign, the ‘addition of phosphorescent material’ would
occur in its phosphorescent sheet 19, not its front E-X-I-T
stencil.”
Appellant argues that a skilled artisan would, if imparting strong and
weak afterglows to Logan’s sign in view of Fisher, add a second illuminator
to Logan’s substrate 19; not to the stencil 12 as proposed. The argument is
not supported by convincing evidence.8 Note also that, even assuming
Logan’s substrate 19 is the best location to add an illuminator, the mere
advantages of that location do not nullify the obviousness of adding
phosphorescent material to Logan’s stencil.9

6 See In re Clay, 966 F.2d 656, 659-60 (Fed. Cir. 1992) (“Two criteria have
evolved for determining whether prior art is analogous: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.”).
7 See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir.
1985) (“A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect.”).
8 See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“[A]rguments of counsel cannot take the place of evidence lacking in the
record.” (quoting Knorr v. Pearson, 671 F.2d 1368, 1373 (CCPA 1982))).
9 See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (“A reference does not teach away […] if it merely
expresses a general preference for an alternative invention but does not
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(e) Conclusion
For the above reasons, we sustain the obviousness rejections of claims
1 and 8-13 over Logan and Fisher.
2. Claims 2-6
Claims 2-6 were rejected as obvious over Logan and Fisher. Each of
claims 2-6 depends directly or indirectly from claim 1 and recites the
substrate and indicia layer as having different “emission characteristics”
(claim 2), “emission rate” (claim 3), “emission color” (claims 4 and 5), or
“level of phosphorescent material carried” (claim 6). In the rejections of
claims 2-6, the proposed modification adds phosphorescent material to the
entirety of Logan’s stencil 12; i.e., such that the afterglows of the substrate
19 and stencil 12 must be distinguishable for the indicium to be displayed in
darkness. (Ans. 4:11-15; 8:18-9:2).
We agree with the Examiner that this modification would have been
obvious. Logan’s indicium is displayed in darkness by the contrast between
the substrate 19 and stencil 12. As explained above, Fisher’s indicium is
displayed in darkness by the strong and weak afterglows of two illuminators.
A skilled artisan would have recognized that these techniques can be
combined by providing Logan’s substrate 19 and stencil 12 with contrasting
strong and weak afterglows.10
Because the substrate 19 and modified stencil 12 have respectively
strong and weak afterglows, they (19, 12) must have different emission

‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.”).
10 See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
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characteristics (claim 2) and emission rates (claim 3). Because the substrate
19 and modified stencil 12 have contrasting afterglows, they would
predictably have different emission colors (claims 4 and 5). And because
the substrate 19 and modified stencil 12 carry respective phosphorescent
materials having different properties, they 19, 12 would predictably carry
different levels of phosphorescent materials (claim 6).
For the above reasons, we sustain the obviousness rejections of claims
2-6 over Logan and Fisher.
3. Claim 7
Claim 7 was rejected as being obvious over Logan and Fisher. Claim
7 depends from claim 1 and adds that the indicia layer has an optical
transmittance of at least 50%. The Examiner determined that optical
transmittance is a result-effective variable of a material’s “glow factor” and,
in turn, the recited transmittance constitutes a routine optimization. (Ans.
5:6-14).
Appellant argues that the determination is not based on the skill in the
art. (Brief 9:6-18). The Appellant’s argument is persuasive. An
optimization is prima facie obvious if the parameter was known to be a
result effective variable.11 However, the Examiner has not explained the
meaning of “glow factor,” much less shown that the optical transmittance of
a phosphorescent material was known to affect its “glow factor.”
We accordingly do not sustain the obviousness rejection of claim 7
over Logan and Fisher.

11 See In re Yates, 663 F.2d 1054, 1056 (CCPA 1981); In re Antonie, 559
F.2d 618 (CCPA 1977).
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4. Claim 14
Claim 14 was rejected as obvious over Logan, Fisher, and Moses.
Claim 14 depends from claim 1 and adds that the substrate has an optical
transmittance less than that of the indicia layer. The Examiner again
determined that optical transmittance is a result-effective variable of a
material’s “glow factor” and, in turn, the recited transmittance of the
substrate constitutes a routine optimization. (Ans. 7:11-18). As with the
rejection of claim 7, the Examiner has not shown that the optical
transmittance of a phosphorescent material was known to affect its “glow
factor.”
We accordingly do not sustain the obviousness rejection of claim 14
over Logan, Fisher, and Moses.
DECISIONS
We affirm the rejections of claims 1-6 and 8-13 under 35 U.S.C.
§ 103(a) as obvious over Logan and Fisher.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Logan and Fisher.
We reverse the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Logan, Fisher, and Moses.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART
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