Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jan 6, 2012

11021469 (B.P.A.I. Jan. 6, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/021,469 12/21/2004 James C. Smith D525-003.B 3203
767 7590 01/06/2012
BEESON SKINNER BEVERLY, LLP
ONE KAISER PLAZA
SUITE 750
OAKLAND, CA 94612
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3611
MAIL DATE DELIVERY MODE
01/06/2012 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 JAMES C. SMITH and DAVID J. TAYLOR
__________

Appeal 2009-010244
Application 11/021,469
Technology Center 3600
___________

Before: RICHARD E. SCHAFER, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal from the Final Rejection of Claims 62-68. 35
U.S.C. §§ 6(b) and 134(a). We affirm.
STATEMENT OF THE CASE
The Examiner finally rejected Claims 62-68 under 35 U.S.C. § 103(a)
as obvious over the combined teachings of Wu,1 Wilson,2 and Murren.3
App. Br. 11; Ans. 2.

1 U.S. Publication 2004/0069922.
2 U.S. Patent 4,145,044.
3 U.S. Patent 6,827,321.
Appeal 2009-010244
Application 11/021,469

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Subject Matter of the Invention
Applicants disclose a moveable umbrella base stand with an
advertising message. Written Description 4, ¶ 9. An embodiment is
illustrated by Fig. 2, reproduced below. Written Description 7, ¶¶ 19-20.

The base body portion (27) includes a cover or “billboard plate” (70) having
“advertising indicia” L. Written Description, 10, ¶ 52 and 14, ¶ 61. The
advertising may be “company and other organization logos,
trademarks or service marks.” Written Description, 14.
Claim 62 is representative.
Claim 62:
An umbrella base comprising
a body portion having a bottom and a top,
an umbrella holding structure substantially
centered on and accessible from the top of said body
portion for receiving the support shaft of an umbrella for
holding the umbrella in an upright position,
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Application 11/021,469

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a billboard plate on the top of said body portion,
said billboard plate having an opening for
accommodating said umbrella holding structure,
advertising indicia on the billboard plate of said
body portion for conveying an advertising message, said
billboard plate being removable from said body portion
such that the advertising message on the umbrella base
can be changed by replacing one billboard plate with
another billboard plate, and
rolling means on the bottom of said body portion
which permit the umbrella base with its advertising
message to be rolled across a surface from one location
to another.
Brief, 18, emphasis added.
The rejection
The Examiner rejected claims 62-68 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of the Wu, Wilson and Murren
references. The examiner found that there were three differences between
the claimed subject matter and Wu’s teachings: (1) Wu does not teach any
indicia on the umbrella base plate covers; (2) Wu does not teach using
advertising information on the covers and (3) Wu does not teach rolling
means to allow the base to be rolled to a different location. Answer, 3-4.
Applicants have not asserted any other differences.
The examiner concluded that notwithstanding the differences, the
claimed subject matter as a whole would have been obvious. Answer, 3-4.
Analysis
Applicants do not separately argue any of the claims. Since Claim 62
includes all the argued limitations, we select that claim as representative in
deciding the appeal. 37 CFR § 41.37(c)(1)(vii).
Appeal 2009-010244
Application 11/021,469

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Indicia and advertising
Wu teaches a support base for a large umbrella or sunshade. Wu, ¶ 2.
An embodiment of the base is shown in Wu’s Figure 1, reproduced below.
The base includes removable plates or covers 5. Wu’s does not show any
type of text or picture indicia such as a trademark logo or other type of
advertising.
Wu Figure 1

The Examiner found that it was well known to place indicia on a
support base. Answer, 3. The Examiner specifically relied on Wilson as
suggesting placement of textual indicia on a support base. Answer, 3.
Wilson’s Figure 1 (reproduced below) shows a support base including the
word “BasketBall.” The Examiner concluded that it would have been
obvious to place indicia on Wu’s base plate covers. Answer, 3.
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Application 11/021,469

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Wilson Figure 1

Wilson’s disclosure establishes that the person having ordinary skill in
the art is aware that textual indicia may be placed on a support base. The
inclusion of textual indicia on Wu’s base would have been obvious. The
placement of the indicia on Wu’s umbrella support base on Wu’s removable
cover merely combines known elements in a known way to achieve
predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Applicants do not challenge the Examiner’s finding that it is well
known to include indicia on a support base or the conclusion that it would
have been obvious to include some form of indicia on Wu’s removable
cover plates. Rather, Applicants focus on the failure of the art to describe
Applicants’ specific indicia --an advertising message. Brief, 12 (“The
novelty of the invention recited in the appealed claims at least in part resides
in the advertising indicia element of the claim, that is, printed matter.”)
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The Examiner held that an advertising message was printed matter
and that patentability cannot be premised alone on the information content of
the printed matter. Answer, 3.
Applicants argue that the printed matter patentably distinguishes the
claimed subject matter from the prior art and alleges legal error in the
Examiner’s failure to hold the invention patentable. Brief, 13-16. Applicants
argue that all that is necessary is that the printed matter performs some
identifiable function and the advertising message performs a function –
conveying an advertising message:
the printed matter – advertising indicia – unquestionably
performs a function, namely, conveying an advertising
message to persons in the vicinity of the umbrella base.
This function is inextricably tied to the structure on
which it is placed: The advertising message is placed on
a removable billboard plate, which can be interchanged
for changing an advertising message; the umbrella base
structure supporting the advertising message can be
rolled across a surface to readily move the advertising
message from one location to another; and the
advertising message is located at the top of the body of
the umbrella base, creating viewing angles that capture
the attention of potential consumers who might not
otherwise see the message.
Brief, 15.
A printed matter limitation may not be ignored, but it must be
functionally related to the substrate in order to distinguish the invention from
the prior art. “Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983).
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We can see no apparent functional interrelationship between the
umbrella base and the advertising message. The umbrella base functions as
an umbrella base regardless of the presence or absence of an advertising
message. The advertising does not depend on the structure or function of the
umbrella base and the structure and function of the umbrella base does not
depend on the advertising message. Cf. In re Ngai, 367 F3d 1336, 1339
(Fed. Cir. 2004) (holding that that the content of an instruction sheet
included as part of a claim to a kit was not functionally related to the kit).
There simply is no functional interrelationship between the advertising
message and the umbrella base. Thus, the recitation advertising indicia in
Claim 62 does not present a limitation providing an unobvious difference
over the prior art. 4
Applicants reliance on In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) is
misplaced. Lowry related to data structures stored in electronic memory.
The data structures were held to be “not analogous to printed matter.”
Lowery, 32 F.3d at 1584. The structures were “specific electrical or
magnetic structural elements” that were “physical entities that provide
increased efficiency in computer operation.” Lowery, 32 F.3d at 1584. On
the other hand, Applicants advertising indicia are admittedly printed matter:
“Applicants seek a determination of whether the Examiner has improperly
ignored printed matter limitations recited in the rejected claims.” Brief, 11.

4 While basing our opinion and decision solely on the record before us, in light of the
ubiquity and conventionality of incorporating advertising, such as trademarks and
product logos, on virtually anything that may be in public view, it is difficult to
appreciate how the inclusion of advertising on an umbrella stand cover would be alone
sufficient to render the umbrella stand nonobvious to a person having ordinary skill in the
art.
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Wheels
The examiner relied on the Murren reference as suggesting the
addition of wheels to Wu’s umbrella base. Murren teaches a base for
holding a Christmas tree that includes wheels for facilitating movement.
Murren, 1:6-9. The Examiner concluded that it would have been obvious to
add wheels to Wu’s umbrella support base in order to facilitate the
movement of the base. Answer, 4.
Murren demonstrates that those having ordinary skill in the art would
have been aware of the concept of including wheels to facilitate movement
of support stands or bases. The combination of known elements according
to known procedures is obvious when the combination only achieves the
predicted results. KSR, 550 U.S. at 416. The Examiner has provided a
reasonable basis for concluding that it would have been obvious to add
wheels to Wu’s umbrella base.
Applicants argue that Murren
discloses a wheeled tree stand with no advertising
indicia. Murren et al. fails to teach or suggest to provide
rolling means on the bottom of an umbrella base having
advertising indicia such that the advertising message
conveyed by the advertising indicia can be moved from
one location to another.
Brief, 16-17.
Applicants’ argument does not address the examiner’s rejection. The
rejection is based upon the combined teachings of the Wu, Wilson and
Murren references. Applicants merely point to the failure of Murren to
describe certain of the claim elements. Brief, 15. An attack on Murren
alone cannot establish error in the examiner’s rejection. One cannot show
non-obviousness by attacking references individually where the rejections
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Application 11/021,469

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are based on a combination of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). As noted above, Wilson suggests adding
textual indicia to Wu’s umbrella stand cover, Murren teaches adding wheels
to support stands to facilitate movement and the characterization of the
indicia as advertising does not provide an unobvious distinction over the
prior art.
We affirm the rejection of Claims 62-68.

DECISION
We affirm the rejection of Claims 62-68 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Wu, Wilson, and Murren.
AFFIRMED

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