Ex Parte Parenti et al

Patent Trial and Appeal Board

Mar 14, 2013

12015337 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRIS PARENTI and LOREN VENEGAS
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Appeal 2011-006204
Application 12/015,337
Technology Center 3600
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Before JOHN C. KERINS, BRADFORD E. KILE and WILLIAM A. CAPP,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006204
Application 12/015,337
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-4 and 7-10. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted in this appeal on March 11, 2013.
We AFFIRM.

THE INVENTION
Appellants’ invention relates to a sleeve cover that fits over a vertical
post and displays advertising. Spec. 1, para. [0001]. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. Display apparatus, comprising:
a generally cylindrical body having and open lower end
adapted for placement over a post extending upwardly from a
ground surface and an upper end including an advertising
holder;
the advertising holder comprising a transparent or
translucent form having an open top and an inner surface to
receive a single, flexible insert bearing textual or graphical
material visible through the transparent or translucent form
when installed;
the transparent or translucent form comprising a
continuous cylindrical shape, enabling the insert to be seen
from any angle around the form; and
a cap to close off the open top of the transparent or
translucent form.

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EVIDENCE RELIED UPON AND THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Montgomery
Fite
Venegas
Rachowitz
Foster
US 5,309,656
US 5,329,716
US 6,779,287 B2
US 6,802,143 B1
US 6,976,329 B1
May 10, 1994
Jul. 19, 1994
Aug. 24, 2004
Oct. 12, 2004
Dec. 20, 2005
The following rejections are before us for review:
1. Claims 1-4 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venegas and Rachowitz.
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venegas, Rachowitz, and Fite.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Venegas, Rachowitz, Fite, and Montgomery.

OPINION
Obviousness Rejection of
Claims 1-4 and 7 Over Venegas and Rachowitz
Claim 1
The Examiner finds that Venegas discloses all of the limitations of
claim 1 except that it fails to disclose a flexible sheet insert and a cap to
close off the open top of the transparent or translucent form. Ans. 3-4. The
Examiner relies on Rachowitz as disclosing a display comprising a
transparent or translucent form with a cap to close off an open top. Ans. 4.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify Venegas with a
cap as taught by Rachowitz. According to the Examiner, the person of
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ordinary skill in the art would have been motivated to make the combination
in order to protect the display inserts. Id. The Examiner further concludes
that it would be obvious to use a flexible sheet insert as it is well known to
use inserts that are flexible for insertion into curved, cylindrical channels.
Id.
Appellants traverse the Examiner’s rejection by first arguing that
Venegas fails to disclose a continuous cylinder that displays a single,
flexible insert. App. Br. 3-4. Appellants concede that Figure 4 of Venegas
shows a cylindrical signage area; nevertheless, Appellants argue that the
Figure 4 cylinder is “clearly configured” for multiple signs. App. Br. 3. In
response, the Examiner points to column 3 of Venegas as disclosing an
omni-directional signage area. Ans. 9 (citing Venegas, col. 3, ll. 23-27).
We agree with the Examiner that Venegas discloses a cylindrical
signage area. While Venegas’s Figure 4 cylinder may be capable of
displaying a plurality of smaller signs around the circumference of its
cylindrical shape, Appellants have not directed us to any disclosure in either
the drawings or specification of Venegas that would prevent the Figure 4
embodiment from displaying a single, flexible insert capable of being seen
from any angle around the form.1
Appellants have failed to apprise us of error in the Examiner’s
findings and conclusions. Accordingly, we sustain the Examiner’s rejection
of claim 1.

1 Indeed, the disclosure in column 3, lines 3 through 15, of Venegas
regarding the optional use of transparent materials throughout the signage
area undermines Appellants’ argument that Venegas’s cylindrical
embodiment is necessarily limited to displaying a plurality of separate signs.
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Claim 2
Claim 2 depends from claim 1 and adds the limitation: “wherein the
cap is removable, allowing the insert to be changed.” App. Br., Clms.
App’x. The Examiner finds that Rachowitz discloses a display apparatus
with a removable cap that allows the insert to be changed. Ans. 5 (citing
Rachowitz, Fig. 1, element 34).
In traversing the rejection, Appellants argue that the Examiner’s
purported reason for modifying Venegas with Rachowitz is to provide a
means to protect the display inserts. App. Br. 5. Appellants argue that
removability tends to work against protection. Id.
Appellants’ argument mischaracterizes the Examiner’s position and
we, therefore, reject it. There is nothing inherently inconsistent about
adding a cap to protect the signage inserts from inclement weather and
vandalism and yet nevertheless making the cap removable so that the
signage can be changed from time to time. We sustain the rejection of
claim 2.
Claim 3
Claim 3 depends from claim 1 and adds the limitation: “wherein the
cap is permanently affixed to the transparent or translucent form.” App. Br.,
Clms. App’x. The Examiner finds and concludes that it would have been an
obvious modification to provide a means of attachment that would allow the
cap to be permanently attached.2 Appellants argue that permanently bonding
the cap to the transparent form makes disassembly impossible. App. Br. 5.

2 In Appellants’ specification, “permanency” of affixing the cap to the
transparent display form is accomplished with glue. Spec. 4, para. [0015].
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Claim 3 depends directly from claim 1, not from claim 2. Thus, there
is no requirement that the cap be both removable from and permanently
affixed to the transparent or translucent form. Thus, it is perfectly consistent
with the claims that the claim 2 embodiment has a removable cap and the
claim 3 embodiment has a permanently affixed cap. We agree with the
Examiner that if a person of ordinary skill in the art desired the cap to be
permanently affixed to the display area, accomplishing such a result, such as
by merely gluing the two pieces together, would be well within the skill
level of a person of ordinary skill in the signage art. Ans. 5.
Claim 4
Claim 4 depends from claim 1 and adds the limitation: “wherein the
body and transparent or translucent form are fabricated as an integrally
molded article.” App. Br., Clms. App’x. The Examiner finds that Venegas
discloses a display apparatus where the body and transparent form are
fabricated as an integrally molded article. Ans. 5.
Appellants argue that Venegas does not teach integral molding as
claimed. App. Br. 5. In response, the Examiner states that column 3, lines 9
through 13, of Venegas discloses that elements 320 and 322 of Figure 3 are
integrally formed with the cover. Ans. 9. The Examiner’s observation is
correct. We sustain the rejection of claim 4.
Claim 7
Claim 7 depends from claim 1 and adds the limitation: “wherein: the
cap includes a light source to back-light the insert through the transparent or
translucent form.” App. Br., Clms. App’x. The Examiner finds that
Venegas and Rachowitz do not directly disclose light sources in the cap
portion. Ans. 6. However, the Examiner finds that Rachowitz discloses
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light sources in a region below the cap portion. Id. (citing Rachowitz, Fig. 4,
element 52). The Examiner concludes that it would have been obvious to
move the light source to the cap. Id. The Examiner reasons that such a
modification would provide a means to illuminate the display from a light
source attached to the cap. Id.
Appellants challenge the Examiner’s finding that relocating the light
source of Rachowitz is a modification that is common and well known in the
art. App. Br. 5. Appellants argue that, since Rachowitz already locates a
light source immediately behind the panel, Rachowitz can illuminate the
display with or without a cap. App. Br. 6.
As we understand Appellants’ argument, a person of ordinary skill in
the art would not be motivated to move Rachowitz’s light source from
behind the panel to the cap, because the light source is already in an
acceptable, if not preferable, location. However, the issue is not whether it
is preferable to relocate the light source to the cap; it is whether it would
have been obvious to do so. Rachowitz obtains its electrical power from its
base, which is situated below the display area. Rachowitz, (57) Abstract.
The Appellants’ invention includes embodiments that obtain electrical
power from a solar panel, which is situated above the display area and, more
specifically, in the cap. Spec. 4, para [0017], Fig. 3. Otherwise, both
Rachowitz and Appellants’ invention provide backlighting for the
advertising when their respective products are fully assembled. We agree
with the Examiner that merely relocating the light source is an obvious
modification that is common and well known in the art. Ans. 6.
We reject Appellants’ argument that the Examiner’s failure to cite
references, court decisions, or Office Rules relegates the rejection to nothing
more than the Examiner’s own opinion. See App. Br. 5-6. As persons of
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scientific competence in the fields in which they work, examiners are
responsible for making findings, informed by their scientific knowledge, as
to the meaning of prior art references to persons of ordinary skill in the art
and the motivation those references would provide to such persons. In re
Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary
factual evidence, those findings can establish a prima facie case of
obviousness. Id. We, therefore, reject Appellants’ argument that the
Examiner’s rejection is per se legally insufficient because the Examiner’s
finding as to each and every element of the claim is not supported by a
citation to a reference, case authority, or office rule.3
Obviousness Rejection of
Claims 8 and 9 Over Venegas, Rachowitz, and Fite
Claim 8 depends from claim 7 and adds the following limitations:
wherein:
the cap includes:
a rechargeable battery,
a solar panel to recharge the battery, and
wherein the light source is powered by the battery.
App. Br., Clms. App’x. Claim 9 also depends from claim 7 and is
substantially similar to claim 8 except that it also claims a photocell that

3 Although the Examiner did not expressly rely on Fite in rejecting
claim 7, Fite provides an obvious and common sense example of locating a
solar panel on the top of a device where it will be better exposed to solar
radiation. Further use of practical, common sense would motivate an
ordinary practitioner to locate a rechargeable battery and light proximate to
the solar panel in order reduce the overall length of the electric circuitry.
Thus, Appellants’ placement of a light source in the cap, where it is
proximate to the solar panel and battery amounts to no more than the
exercise of common sense by a person of ordinary skill in the art.
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causes the light source to be activated only when it is sufficiently dark
outside. The Examiner acknowledges that Venegas and Rachowitz do not
disclose a rechargeable battery and a solar panel. Ans. 6. The Examiner
relies on Fite as disclosing a display apparatus with a rechargeable battery to
power the light source and a solar panel to recharge the battery. Id. The
Examiner concludes that it would have been obvious to a person having
ordinary skill in the art at the time the invention was made to modify
Venegas and Rachowitz with Fite’s solar powered rechargeable battery.
Ans. 6-7. According to the Examiner, a person of ordinary skill in the art
would be motivated to make such a modification because it would provide a
means for the display to be seen in the dark. Id.
Appellants argue that the Examiner’s rejection is “insufficient.” App.
Br. 6.4 The Examiner responds by pointing out that Venegas and Rachowitz
disclose a lighted display that is powered by some means. Ans. 9. The
Examiner notes that Fite teaches a lighted advertising display powered by a
solar panel with a rechargeable battery. Id. “Venegas in view of Rachowitz
does not directly disclose the source of power. Fit[e] merely further
characterizes the properties of the power source of the illuminated lights.”
Ans. 9-10. The Examiner reasons that modifying the power source of
Venegas and Rachowitz with Fite’s power source is common and well
known. Ans. 9. Appellants’ only reply is an unsubstantiated, conclusory
statement that the Examiner’s position lacks foundation or support. Reply 2.

4 In Appellants’ own words: “At the very least, Appellants are
entitled to a reasoned rejection, perhaps including an indication as to why
the modification would be ‘obvious,’ not to memntion [sic] to which “art”
the Examiner is referring.” App. Br. 6-7.
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We agree with the Examiner that a person of ordinary skill in the art,
armed with the knowledge provided by Venegas, Rachowitz, and Fite,
would have found it obvious to achieve a solar powered, lighted display as
claimed. Accordingly, we sustain the rejection of claims 8 and 9.

Obviousness Rejection of
Claim 10 Over Venegas, Rachowitz, Fite, and Montgomery
Claim 10 depends from claim 7 and adds the following limitations:
wherein:
the cap includes:
a rechargeable battery to power the light source,
a solar panel to recharge the battery, and
a proximity detector causing the light source to be activated
only when a viewer is proximate to the display apparatus.
App. Br., Clms. App’x. The Examiner finds that the combination of
Venegas, Rachowitz, and Fite disclose all of the elements of claim 10 except
for the proximity detector. Ans. 8. The Examiner relies on Montgomery as
disclosing a solar powered display apparatus with a proximity detector. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of invention to modify the combination of
Venegas, Rachowitz, and Fite with Montgomery's proximity detector. Id.
According to the Examiner, a person of ordinary skill in the art would be
motivated to make such a modification because it would save power. Id.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness and dismisses the Examiner’s reasons for
combining the references as mere “self-evident statements.” App. Br. 7
(emphasis omitted). The Examiner has cited references that disclose or
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suggest all of the elements of claim 10 and the Examiner has offered cogent
reasons why a person of ordinary skill in the art would combine them to
achieve the claimed invention. The Examiner’s rationale has not been
persuasively shown to be unreasonable or lacking in rational underpinnings.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) .
We sustain the Examiner’s rejection of claim 10.

DECISION
The decision of the Examiner to reject claims 1-4 and 7-10 is
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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