Ex Parte Brandes

Patent Trial and Appeal Board

Mar 29, 2018

13853804 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/853,804 03/29/2013
29150 7590 04/02/2018
LEE & HAYES, PLLC
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Thomas Brandes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Z013-0003US 2194
EXAMINER
PASKO, NICHOLAS R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
04/02/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BRANDES 1
Appeal2016-004925
Application 13/853,804
Technology Center 2800
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a three-sided reflector
configured to partially encompass a sign post, and to associated methods.
E.g., Claims 1, 11, 14. Claim 1 is reproduced below from page 35
(Appendix of Appealed Claims) of the Appeal Brief:
1 The Applicant is Zumar Industries, Inc., which is also identified as the real
party in interest. Br. 3.
Appeal 2016-004925
Application 13/853,804
1. A three-sided reflector configured to partially encompass a sign
post, comprising:
a sheet of material formed into a U-shaped channel that includes
a substantially flat front, and two substantially flat sides, wherein
a cross section of the U-shaped channel comprises a bend of
about 90° between the substantially flat front and a respective
substantially flat side, and the U-shaped channel is sized to fit
partially around the sign post such that a rear surface of the
substantially flat front abuts a flat surface of the sign post when
the three-sided reflector is attached to the sign post; and
a highly visible material disposed on the substantially flat front
and each of the two substantially flat sides of the U-shaped
channel, so that light striking any of the substantially flat front
and the two substantially flat sides of the U-shaped channel is
reflected.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1-9, 11-15, and 17-20 over Kekeis (US 2006/0174526 Al,
published Aug. 10, 2006) and Stancer (US 2010/0205841 Al, published
Aug. 19, 2010);
2. Claim 10 over Kekeis and Stancer, as evidenced by Standard
Specification/or Retroreflective Sheeting/or Traffic Control, ASTM Int'l
(2010) ("ASTM Int'l");
3. Claim 16 over Kekeis, Stancer, and Bingel (US 7,363,752 B2,
issued Apr. 29, 2008).
ANALYSIS
The Appellant presents arguments for the patentability of independent
claim 1. With respect to independent claims 11 and 14, the Appellant states
that they are allowable for the reasons argued with respect to claim 1. E.g.,
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Application 13/853,804
Br. 28-29 (Claim 11), 29-30 (Claim 14). With respect to the dependent
claims, the Appellant states that they are "allowable by virtue of [their]
dependency" from an allegedly allowable independent claim, "as well as for
additional features that each recites." E.g., Br. 28. However, the Appellant
raises no arguments about any "additional feature[]" of any dependent claim.
See, e.g., id.; cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(explaining that, even if the examiner had failed to make a prima facie case,
the Board would not have erred in framing the issue as one of reversible
error because "it has long been the Board's practice to require an applicant
to identify the alleged error in the examiner's rejections"). Accordingly, we
address the arguments raised by the Appellant with respect to claim 1, and
the remaining claims on appeal will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-22;
Ans. 2-22.
The Examiner finds that Kekeis teaches a three-sided reflector
configured to partially encompass a sign post that meets all of the limitations
of claim 1, except that Kekeis 's reflector has curved sides rather than the
"substantially flat sides" that form a "bend of about 90°" with the front
surface, as required by claim 1. Final Act. 2-3. The Examiner finds,
however, that Stancer teaches a sign display device with the shape recited by
claim 1 (i.e., "U-shaped channel compris[ing] a bend of about 90° between
the substantially flat front and a respective substantially flat side") that
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Application 13/853,804
"provide[ s] at least four discrete areas of contact with a sign to provide a
secure attachment of the sign." Id. at 4--5 (internal quotation marks and
citations omitted). The Examiner further finds that Stancer teaches that its
design "facilitate[ s] easily but securely attaching the panel assemblies to
beams and attaching signs to the attachment assemblies." Id. at 5 (internal
quotation marks and citations omitted). The Examiner concludes:
Id.
Therefore, it would have been obvious to a person having
ordinary skill in the art at the time the invention was filed to
modify the three-sided reflector ofKekeis with the configuration
including the flat front and flat sides having a 90° there between
taught by Stancer to provide "at least four discrete areas of
contact with a sign to provide a secure attachment of the sign"
and "to facilitate easily but securely attaching the panel
assemblies to beams and attaching signs to the attachment
assemblies," as in Stancer (Paragraphs 0009, 0013, 0021, and
0031 ), and since it has been held that a mere change in shape of
an element is generally recognized as being within the level of
ordinary skill in the art when the change in shape is not
significant to the function of the combination, In re Dailey, 357
F.2d 669, 149 USPQ 47 (CCPA 1966). Further, one would have
been motivated to select the U-shape having a flat front and flat
sides for the purpose of securely fitting with a cubically shaped
sign (as suggested by Stancer).
The Appellant argues that ( 1) the Examiner's rejection fails "to
provide articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness," and that (2) "the combination of Kekeis
and Stancer fails to teach or suggest each and every feature" of the claims
"in light of Kekeis, which teaches away from combining the features of each
of claims 1, 11, and 14." Br. 14.
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Application 13/853,804
Those arguments are not persuasive. Figures from the Appellant's
Specification (Figs. 3A & 3B), Kekeis (portion of Fig. 4), and Stancer (Fig.
4) are reproduced side-by-side below:
Spec. Figs. 3A & 3B Portion of Kekeis Fig. 4 Stancer Fig. 4
10"'
11·· "
12 - +-14
Figures 3A and 3B from the Appellant's Specification (left) depict "an
exemplary embodiment of the three-sided reflector." Spec. ii 13. The
portion of Figure 4 of Kekeis depicted above (center) shows "a plurality of
various embodiments of cover members with various instructional indicia
[here, reflective material] applied thereto." Kekeis ii 18. Figure 4 of Stancer
depicted above (right) shows "a perspective view of the sign display
device." Stancer ii 18.
As is visually evident from the figures reproduced above, all three
devices are similar. Figures 3A and 3B of the Specification, which depict an
embodiment of claim 1, appear to simply be the device of Kekeis Figure 4
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Application 13/853,804
using the 90° angles (i.e., the shape) of Stancer Figure 4. Compare Kekeis
Fig. 4, with Stancer Fig. 4. It is apparent from the figures that both the C-
shaped reflector of Kekeis and the more rectangular shape of Stancer (which
falls within the U-shaped, 90° bend limitations of claim 1) were known
shapes for removably attaching a cover to a sign post. Thus, the Examiner
simply proposes the substitution of Stancer' s shape for Kekeis' s shape with
predictable results; alternatively, the Examiner proposes the use of a known
element (Stancer's rectangular shape) according to its established function
(secure attachment to a sign post) with predictable results. Such
combinations typically do not result in nonobvious subject matter. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."); see also id. at 416 ("[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.").
Regardless of whether Stancer teaches that its flat side panels are
superior to the curved sides of Kekeis, see Br. 19, Stancer teaches that its
device "facilitate[ s] easily but securely attaching the panel assemblies to
beams and attaching signs to the attachment assemblies," Stancer i-f 13. A
person of ordinary skill in the art would thus have understood that either
shape is appropriate for attaching a cover to a sign post. See KSR, 550 U.S.
at 416-21. For reasons explained by the Examiner, see Ans. 9--10 (Stancer's
shape does not require use of tools), 18 (Kekeis does not explicitly
discourage the use of tools), we do not agree with the Appellant's assertion
that a person of ordinary skill in the art would have been "discouraged from
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modifying the curved, C-shaped configuration" of Kekeis because Kekeis
states that its cover can be installed without the need for any tools, see Br.
20.
Additionally, we agree with the Examiner that the proposed
modification to Kekeis is "a mere change in shape" that is "not significant to
the function of the combination." See Final Act. 5 (citing In re Dailey, 357
F.2d 669, 672-73 (CCPA 1966)). As is evident from the figures depicted
above, all three designs provide visibility on at least three sides, and the
Appellant fails to persuasively establish that the flat-sided design would be
meaningfully more visible than the C-shaped design of Kekeis. See Br. 22-
23; Ans. 11-14. Even ifthe flat-sided design of claim 1 would have
provided some improvement in visibility relative to the shape of Kekeis, the
Appellant does not persuasively establish that the change in shape provides
such a significant change or improvement in function so as to impart
nonobviousness to a mere change in shape, especially in view of the fact that
the claimed shape was already known in the art (Stancer) as an effective
shape for sign post coverings. See Dailey, 357 F.2d at 672-73.
Finally, for reasons stated by the Examiner and described above, see
Ans. 9-10, 17-19, we are not persuaded that Kekeis "teaches away" from
the modification proposed by the Examiner because it teaches preferred
embodiments that do not require the use of tools, see Br. 25-27.
We affirm the Examiner's rejection of claim 1.
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CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-20 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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