10479138 (B.P.A.I. Sep. 8, 2010)

Ex Parte Pitt

Board of Patent Appeals and InterferencesSep 8, 2010

10479138 (B.P.A.I. Sep. 8, 2010)

The date for filing an appeal or a request for rehearing should be determined from the MAIL DATE on the accompanying Form PTOL-90A. The procedure for responding to a new ground of rejection is provided in 37 C.F.R. Â§ 41.50. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AGRIPA HOLDINGS LTD. ____________ Appeal 2009-006588 Application 10/479,138 Technology Center 3600 ____________ Before SALLY GARDNER LANE, JAMESON LEE and RICHARD TORCZON, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant, Agripa, seeks review under 35 U.S.C. 134(a) of the final rejection of claims 1, 3-11, 15, 18-20, 22, 23, and 31-42.1 We AFFIRM.2 1 Appeal Brief at 12 (21 July 2008) (Br.). 2 35 U.S.C. 6(b). Appeal 2009-006588 Application 10/479,138 2 OPINION The examiner finally rejected claims 1, 4-11, 19, 20 and 32-42 under 35 U.S.C. 103 as unpatentable over the combined teachings of Suzuki3 and Osada.4 Claim 3 was finally rejected under Â§ 103 as unpatentable over the combined teachings of Suzuki, Osada, and Yamada.5 Claims 15, 18, 22, 23 and 31 were rejected under Â§ 103 as unpatentable over the combined teachings of Suzuki, Osada, and Bennett6. Agripa's disclosure Agripa discloses an advertisement display system for vehicles.7 Agripaâ€™s Figure 4 (right) shows a system that includes an advertisement panel 20 affixed to a truck sidewall 16 using hook- and-loop fasteners 34, 36, 38.8 The panel 20 is formed of a flexible mesh 3 T. Suzuki, Device for fixing advertisement bill, European Patent 0 473 794 B1 (issued 16 October 1996) (Suzuki). 4 M. Osada, Advertisement hanging screen, Japanese Pub'd Appl. 08190355 A (19 July 1996) (transl.). Osada is sometimes called "Masao" in the record. 5 F. Yamada, Y. Fukuda & T. Uraya, Method for imparting pressure sensitive adhesion to velvet type fasteners, U.S. Patent 3,849,840 (issued 26 November 1974). 6 W. Bennett & T.F. Horton, Vehicle curtain quick release device, U.S. Patent 4,828,316 (issued 9 May 1989). 7 Spec. at 1. 8 Spec. at 10, 12, and 14-15. Appeal 2009-006588 Application 10/479,138 3 material, e.g., woven plastic fibers bonded at their intersections.9 The mesh structure allows air to pass through the panel 20, equalizing the air pressures at the underside and exposed side of the panel 20.10 The equalization prevents flapping of the panel at normal vehicle operating speeds.11 Claim 1 Agripa presents the same arguments for claims 1, 4, 5, 7-11, and 37. Claim 1 is representative of these claims.12 Claim 1 defines the invention as (with added indenting13 and emphasis): 1. An advertising panel externally mounted on the side of a vehicle, the panel comprising a sheet of plastic mesh material provided with apertures allowing air passage therethrough and fasteners, the sheet having an image including graphical indicia applied to a first side of the sheet, at least some of the apertures of the mesh extending through the image so as to permit air to pass through the image to a second side of the sheet opposite the first side, the fasteners attaching the mesh to the side of the vehicle so as to prevent the panel from detaching from the vehicle during normal operating speeds of the vehicle, the fasteners including a first component attached to the vehicle and a second component on the panel, the fastener components removably interlocking with one another to permit removable attachment of the panel to the vehicle. 9 Spec. at 11. 10 Id. 11 Id. 12 37 C.F.R. Â§ 41.37(c)(vii). 13 See 37 C.F.R. Â§ 1.75(i) (requiring indenting). Appeal 2009-006588 Application 10/479,138 4 Suzuki and Okada Suzuki discloses an advertisement display system for vehicles. Suzuki's Figure 1 (right) shows a truck 1 with a display panel 4 attached to the truck 1. The panel is attached at the top to a frame 23 and tensioned along the bottom with adjustable straps 17. The ends are attached using "velvet" fasteners 11.14 According to Yamada, "velvet" fasteners are hook-and-loop fasteners.15 Suzuki does not explicitly state that the panel is tensioned to prevent flapping. However, David Lutton, Operations Director at Agripa, explained that those of skill in the art at the time of filing used tensioning of the panel to prevent flapping.16 Osada discusses problems in the art regarding hanging advertisement panels, specifically wind-related problems that could be solved with latches 14 Suzuki at 1:5-12, 2:13-22, and 3:1-17. 15 Yamada at 1:11-28 and Fig. 2. Yamada is not part of the rejection of claim 1. We use it here simply to illustrate what the art would have understood by the term "velvet" fastener. See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (explaining that "extrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.") 16 Declaration of David Lutton at 3 (10 May 2006); accord Br. at 14-15 (attributing to Suzuki a recognition of the flapping problem and a use of tensioning to solve it). Appeal 2009-006588 Application 10/479,138 5 and frames, but Osada rejects such solutions as compromising ease of use.17 Osada also noted problems when using hanging advertisements in specific applications, such as impeded ventilation for automobiles and impaired visibility for occupied structures.18 After diligent study, Osada determined that these problems could be solved by using a sheet structure with numerous openings. Osada Figure 1 (right) shows a hanging advertising panel, with a detail showing the mesh structure of the panel. Osada discusses practical considerations like water-proofing, twist-resistance, visibility through the structure and ability to apply legible advertisements.19 Osada notes that using his air- permeable sheet makes the structure resistant to wind, which simplifies attachment requirements and improves through-visibility. Osada Figure 3 (left) shows a use of the air-permeable structure on a vehicle. The advertisement hangs over the front grille of the vehicle anchored only at the corners, but use of the mesh material means that critical ventilation is not impeded. Agripa argues that the problems associated with a panel on a vehicle grille are different than those associated with a panel hung on the vehicle's side, but Osada explicitly addresses a much broader range of contexts, including wind-problems for advertisements on buildings. 17 Osada at 3, Â¶ 0003. 18 Id. at 3, Â¶Â¶0004-05. 19 Id. at 3-4, Â¶Â¶0006-09. Appeal 2009-006588 Application 10/479,138 6 Agripa argues that the level of skill in the art is too low to lead to an appreciation of the theoretical problems that its inventor solved. Mr. Lutton explains that those in the art need not have a college education.20 The key question in determining the level of skill in an art is what those in the art knew and could do, for which education level is a poor proxy.21 Osada demonstrates that ordinary diligence and use of common materials can solve a broader range of problems associated with a broader range of outdoor advertising situations without any appreciation of the underlying theory.22 Osada teaches that using mesh structures for hung advertising panels affected by wind permits simplified attachments. Suzuki teaches hanging advertising panels on the side of vehicles using a combination of "velvet" and tensioning fasteners. Those in the art easily have enough skill to appreciate that using Osada's structure in Suzuki's system would reduce the adverse effects of wind, which would permit simplifying the fastening system.23 Evidence of against obviousness Agripa presents evidence of nonobviousness.24 Such evidence must be considered, but it will not negate a strong evidence of obviousness.25 20 Lutton Decl. at 3. 21 Ex parte Jud, 85 USPQ2d 1280, 1282 (BPAI 2007). 22 E.g., In re Wiseman, 596 F.2d 1019 (CCPA 1979) (explaining that discovery of the cause of a problem does not create patentability when the art has already attained the solution without such knowledge). 23 In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985) (explaining that those in the art must be presumed to have some modicum of skill); accord KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). 24 Br. 22-26. Appeal 2009-006588 Application 10/479,138 7 Here, where the claimed invention represents no more than a predictable use of prior art elements according to their established functions, the secondary considerations are arguably inadequate as a matter of law.26 In any case, the testimony on nonobviousness does not compel a different conclusion. Unexpected results Agripa presents declarations and test data as evidence of unexpected results, particularly, that mesh panels flap and tear less than sheet-like panels.27 These results cannot be called unexpected in view of Osadaâ€™s teaching that mesh panels avoid wind-related problems. If anything, this evidence, like any expected result, supports the conclusion of obviousness. Commercial success Agripa argues that its invention has attained tremendous commercial success and that this success is directly attributable to the use of the mesh structure.28 The basis for the attribution is the wind-resistance and ease of attachment associated with using a mesh panel.29 The problem with this testimony is that these advantages are precisely the advantages that Osada teaches. Evidence of putative commercial success is entitled to little weight when it is based on advantages already taught in the art.30 25 Wyers v. Master Lock Co., _ F.3d _, 95 USPQ2d 1525, 1537 (Fed. Cir. 2010); accord Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356-57 (1939). 26 Id. 27 Br. at 23-24, citing Declaration of John Pitt at 2 (10 May 2006) and Lutton Decl. at 2. 28 Br. at 24-25 citing Declarations of John Pitt, James Jarvis and Mark Russel-Smith. 29 Id. 30 Toledo Pressed Steel Co., 307 U.S. at 356-57. Appeal 2009-006588 Application 10/479,138 8 Copying Agripa argues that "copying may already be occurring", which falls short of proving copying.31 Lutton declares that Agripa has obtained an injunction in a foreign infringement action,32 but Agripa has not provided sufficient basis for evaluating the relevance of the injunction. In any case, evidence of copying is equivocal at best33 since in the face of strong prior art it may simply show the competitor's recognition of the improvement as part of the prior art. Weight of the evidence Agripa's evidence of secondary considerations is entitled to much less weight than the evidence of obviousness. Claim 6 Claim 6 further defines the invention of claim 1 as an "advertising panelâ€¦, wherein the mesh material is woven mesh material having an air permeability of at least 1000 liters per second per square meter at 100 pascal[s]." This language is reflected in Agripa's disclosure, which explains:34 The construction of the advertising panel 20 will now be described with reference to Figs. 5 and 6. The panel comprises a sheet 22 of plastic mesh material. Typically the mesh 31 Br. at 25. 32 Lutton at 3. 33 See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000) ("[A] showing of copying is only equivocal evidence of non- obviousness in the absence of more compelling objective indicia of other secondary considerations."); see also Cable Elec. Prods. Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985) (explaining why copying may fail to prove non-obviousness and may even suggest obviousness). 34 Spec. at 11. Appeal 2009-006588 Application 10/479,138 9 material comprises a woven polyester base fabric coated with PVC. The base fabric may have between 3 and 10 (preferably 5) threads per cm in both warp and weft directions. Flexible plasticised PVC is applied to both sides to produce a material having a weight of between 100 and 800 g/m2, preferably between about 200 and 550 g/m2, such that the warp and weft fibres are bonded to each other at their intersections. The apertures in the mesh allow an air permeability of between 1000 and 6000 litres/second at 100 pascal[s], preferably about 2800 litres/second. A suitable mesh is that sold by VUFLEX Digital under the name VUFLEX Digital 550, although it is to be understood that any suitable plastic mesh may be used. The air permeability ensures that the panel remains flat against the supporting surface, whether it be a solid wall of a vehicle or a curtain. Air pressure either side of the panel is equalised, thereby preventing flapping of the panel against the supporting surface. The numerical parameters of claim 6 simply reflect properties of VUFLEX Digital 550, a printable mesh product sold for outdoor advertising. Using the VUFLEX Digital product as Osada suggests would meet the requirements of claim 6. Since Agripa has not shown that these values are critical or unexpectedly good, they do not distinguish over the prior art.35 Claims 19 and 20 Claim 19 defines the invention (indenting added) as: A method of modifying a vehicle having a side wall to display at least one advertising panel on the side wall of the vehicle, said method comprising the steps of: securing first fastener components in a predetermined pattern on the wall of the vehicle, and releasably attaching an advertising panel to the first fastener components, 35 In re Dillon, 919 F.2d 688, 695 (Fed. Cir. 1990) (en banc). Appeal 2009-006588 Application 10/479,138 10 the panel comprising a sheet of woven plastic mesh material provided with apertures allowing air passage therethrough and having an image applied to a first side of the sheet, the image including graphical indicia, at least some of the apertures of the mesh extending through the image so as to permit air to pass through the image, and second fastener components provided in a pattern corresponding to the predetermined pattern of the first fastener components on the wall of the vehicle, the first and second fastener components attaching the panel to the side of the vehicle so as to prevent the panel from detaching from the vehicle during normal operating speeds of the vehicle, the first and second fastener components removably interlocking with one another to permit removable attachment of the panel to the vehicle. Claim 20 further limits the method of claim 19 by adding steps of removing the advertising panel and releasably attaching a different advertising panel. Agripa argues that the combination of Suzuki and Osada does not teach or suggest these steps because Suzuki requires tensioning.36 As an initial matter, it is not clear how claims 19 and 20 exclude tensioning. Neither claim on its face excludes the use of a mix of tensioning and removably interlocking fasteners. Suzuki teaches a mix of tensioning straps and velvet fasteners. In any case, as explained above in the context of claim 1, using Osada's mesh in Suzuki's system permits the simplification of the attachment system such that the tensioning fasteners would no longer be necessary. In either case, Agripa's argument does not distinguish either claim over the combined teachings of Suzuki and Osada. 36 Br. at 27. Appeal 2009-006588 Application 10/479,138 11 Claims 32 and 38-42 Agripa separately argues the patentability of claims 32 and 38-42 as a group.37 Claim 32 functionally limits claim 1 to require the mesh to produce substantial equalization between the front and back of the mesh under vehicle operating conditions. The other claims require similar equalization or minimization of the deflection of air flow. Agripa correctly notes that Osada's grille-mounted mesh does not address this situation.38 The argument, however, reads the Osada's teachings and the proposed combination too narrowly. As explained above, Osada addresses a variety of problems where using mesh would help, including wind-related problems like tearing and curling. Moreover, the rejection posits the use of an Osada- like mesh in Suzuki's side-mounted display system. Since Osada teaches air-permeability as a feature of a wind-resistant mesh, applying Osada's teaching to Suzuki's display would necessarily produce pressure equalization and lack of deflection; otherwise, the benefits that Osada teaches would not be obtained. Again, it is not necessary for those in the art to have appreciated why the combination works: it is enough that Osada would have given those in the art confidence that the combination would work. Claims 33 and 34 Claims 33 and 34 further limit their respective parent claims such that "the apertures make up approximately 35% or less of the area of the panel so that the image appears opaque when viewed from a distance." Agripa argues that Osada does not teach this figure.39 Osada, in fact, specifically 37 Br. at 28-29. 38 Br. at 29. 39 Br. at 30. Appeal 2009-006588 Application 10/479,138 12 notes that his "plain woven mesh part retains small openings [that] was, when used as an advertisement hanging screen, easy to print character letters, etc. on".40 While it is not possible to determine precise dimensions from a patent figure, the detail of Osada Figure 1 suggests that only about a quarter of the surface of the mesh is aperture, which is less than 35%. More importantly, Osada gives adequate guidance for those in the art to determine optimal proportions through routine experimentation. Agripa has not shown that the claimed range is critical or produces an unexpectedly good result.41 Claims 35 and 36 Agripa argues that neither Suzuki nor Osada teach the limitation in claim 35 that requires "the edges of the sheet cannot be relocated with respect to the side of the vehicle without removing and reattaching at least one of the fasteners."42 Claim 36 similarly requires "the tension of the sheet cannot be changed without removing and reattaching at least one of the fasteners." The critical limitation is a negative one: in essence, it requires that in the relocation of sheet edges a fastener must be removed and reattached. This limitation would be met by Suzuki's velvet fasteners, but not by the tensioning fasteners, which can be adjusted (thus moving an edge) without actually removing the fastener. Thus, broadly speaking, adjustments in the horizontal direction (involving the velvet fasteners) would meet the limitation, but adjustments in the vertical direction (with the tensioning straps) might not. This does not end the analysis, however. 40 Osada at 4, Â¶0008. 41 See Dillon, 919 F.2d at 695 (discussing criticality). 42 Br. at 30-31. Appeal 2009-006588 Application 10/479,138 13 A negative limitation need not be expressly taught if it can be reasonably inferred.43 Moreover, in this case, the inference arises specifically from the combined teachings of the references. As discussed in the context of claim 1, one benefit of incorporating Osada's mesh teachings into Suzuki's system is that the attachments may be simplified. The combination's air-permeability eliminates the need for the complex tension adjustments of Suzuki alone. If there is no need to adjust tension, then there is no need for tensioning straps, which may be eliminated or replaced with velvet fasteners. Either way, the combination satisfies the negative limitation. Claims 3, 15, and 18 For claim 3, which depends from claim 1, the examiner additionally relied on Yamada, which disclosed details about velvet fasteners. Agripa relies on its arguments regarding claim 1, simply noting that Yamada does not cure the deficiencies of Suzuki and Osada.44 Similarly, for claim 15, which depends from claim 1, and its dependent claim 18, the examiner additionally relied on Bennett, which discloses details about tensioning fasteners. Agripa again relies on its arguments regarding claim 1, simply noting that Yamada does not cure the deficiencies of Suzuki and Osada.45 Since we have concluded that claim 1 was obvious, these arguments do not justify a different result for claims 3, 15 and 18. 43 SÃ¼d-Chemie Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004-05 (Fed. Cir. 2009). 44 Br. at 31-32. 45 Id. at 32. Appeal 2009-006588 Application 10/479,138 14 Claims 22 and 23 Claim 22 is an independent method claim similar to claim 19. Claim 23 depends from claim 22. The examiner again adds Bennett. Agripa advances the same arguments it advanced for claims 19 and 20, arguing that Bennett does not cure the deficiencies.46 We concluded claims 19 and 20 were obvious. The arguments are no more persuasive for claims 22 and 23. Claim 31 Claim 31 is an independent claim, against which the examiner adds Bennett to Suzuki and Osada. Agripa relies on its arguments for claims 1 and 19.47 We affirm the rejection of claim 31 for the same reasons we affirmed the rejection of those claims. Conclusion The claimed subject matter of the rejected claims would have been obvious over the references applied. Agripa's arguments and evidence to the contrary are based on an excessively narrow appreciation of the Suzuki and Osada references and a misapprehension of their combined teachings. AFFIRMED KMF DRINKER BIDDLE & REATH ATTN: INTELLECTUAL PROPERTY GROUP One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 46 Id. at 32-33. 47 Id. at 33.