Ex parte Crum

Board of Patent Appeals and Interferences

Oct 8, 1998

08422933 (B.P.A.I. Oct. 8, 1998)

Application for patent filed April 17, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT W. CRUM
__________
Appeal No. 97-4083
Application 08/422,9331
___________
ON BRIEF
___________
Before McCANDLISH, Senior Adminstrative Patent Judge, FRANKFORT and McQUADE,
Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Robert W. Crum originally took this appeal from the final rejection of claims 1
through 23, all of the claims pending in the application. In the main brief (Paper No. 9), the
appellant states that “[a]ppeal of claims 2 to 6 and 11 to 15 is waived” (page 1).
Appeal No. 97-4083
Application 08/422,933
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Thus, the appeal as to claims 2 through 6 and 11 through 15 is hereby dismissed, leaving
for review the standing rejections of claims 1, 7 through 10 and 16 through 23.
The invention relates to the “framed display of artwork, especially via backlighting of
translucent artwork” (specification, page 1). Claims 1 and 16 are illustrative and read as
follows:
1. Artwork display means for wall-supportable translucent laminar artwork,
comprising shallow back-lighting means to underlie and back-light such an artwork,
transparent cover means to overlie and protect the artwork supported wall-parallel, and
decorative frame means to outline the artwork.
16. Display method for wall-supported artwork, comprising the steps of back-
lighting a laminar wall-parallel location for translucent artwork, diffusing light reaching that
back-lighted location, locating a laminar translucent artwork at that location, locating an
opaque border peripherally about that location, and outlining the artwork with multiple
decorative frame means.
The references relied upon by the examiner as evidence of obviousness are:
Lawrence 2,588,545 March 11, 1952
Green 4,850,125 July 25, 1989
Bianchi 4,976,057 Dec. 11, 1990
The claims remaining on appeal stand rejected as follows:
a) claim 9 under 35 U.S.C. § 112, second paragraph, as failing to particularly point
out and distinctly claim the subject matter the appellant regards as the invention;
b) claims 1, 7, 8 and 16 through 23 under 35 U.S.C. § 103 as being unpatentable
over Bianchi in view of Lawrence; and
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Application 08/422,933
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c) claims 9 and 10 under 35 U.S.C. § 103 as being unpatentable over Bianchi in
view of Lawrence, and further in view of Green.
Reference is made to the appellant’s main and reply briefs (Paper Nos. 9 and 11)
and to the examiner’s answer (Paper No. 10) for the respective positions of the appellant
and the examiner with regard to the merits of these rejections.
As a preliminary matter, it is noted that the appellant has raised as an issue in this
appeal the refusal of the examiner to enter the amendment filed subsequent to final
rejection on December 24, 1996 (see, for example, pages 1 through 5, 11 and 12 in the
main brief). It is well established, however, that the refusal of an examiner to enter an
amendment after final rejection is a matter of discretion which is reviewable by petition to
the Commissioner rather than by appeal to this Board. In re Mindick, 371 F.2d 892, 894,
152 USPQ 566, 568 (CCPA 1967). Accordingly, we shall not review or further discuss
the examiner’s refusal to enter the appellant’s amendment.
Turning now to the standing 35 U.S.C. § 112, second paragraph, rejection, the
examiner considers claim 9 to be indefinite because “[c]laim 9 recites a decorative frame,
however, claim 9 depends from claim 7 which also recites a decorative frame. It is not
clear if there are one or two decorative frames in the device” (answer, page 3). The
appellant has not specifically disputed the examiner’s reasoning that claim 9 is indefinite.
Instead, the appellant appears to contend that any problem with the claim is
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Application 08/422,933
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overcome by the amendment filed subsequent to final rejection (see page 5 in the main
brief). As indicated above, however, this amendment has not been entered. In this light,
we shall sustain the standing 35 U.S.C. § 112, second paragraph, rejection of claim 9.
We shall not sustain, however, any of the standing 35 U.S.C. § 103 rejections of
claims 1, 7 through 10 and 16 through 23.
Bianchi, the examiner’s primary reference, discloses a simulated neon sign. The
sign includes hollow plastic tubing 10 formed, for example, in the shape of the letters
“EAT,” an opaque plastic backing sheet 11 having clear areas 12 co-extensive with the
tubing, a light diffuser 14, a pair of fluorescent tubes 16 and a housing 18, these elements
being arranged and assembled as illustrated in Figures 2 and 3a. As conceded by the
examiner, Bianchi’s sign does not meet the limitations in independent claims 1 and 21
relating to the transparent means or the limitations in independent claims 1, 16 and 23
relating to the frame/frame means.
Lawrence discloses a display device for illuminated transparencies. The device
includes a casing 1, portions 4, 5, 6 and 7 on the front of the casing giving the effect of a
picture or mirror frame, feet 15 for supporting the casing on an underlying surface, a clear
plate 16 closing the front of the casing, an opaque plate 17 having an opening therein
disposed immediately behind the clear plate, a photographic or ornamental
Appeal No. 97-4083
Application 08/422,933
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transparency 25 framed by the opening in the opaque plate, and a diffusion plate 27
and electric bulb 29 disposed behind the transparency for illuminating same with back-
light.
According to the examiner, it would have been obvious to a person having ordinary
skill in the art “to utilize [Lawrence’s] cover plate in the device of Bianchi to protect the
display” (answer, page 4) and “to include [Lawrence’s] decorative frame in the device of
Bianchi to give the frame a more decorative effect” (answer, page 4).
The appellant’s position that this proposed modification of Bianchi in view of
Lawrence is based on impermissible hindsight is persuasive. The disparities between the
simulated neon sign disclosed by Bianchi and the photograph/ornamental display
disclosed by Lawrence make it evident that the particular modifications of the Bianchi sign
proposed by the examiner rest on an improper use of the appellant’s claims as a template
to selectively pick and choose from among isolated disclosures in the prior art. Green,
the third reference relied upon by the examiner, discloses a picture unit having a
transparent plastic frame whose appearance can be altered via the use of mat board
inserts. This disclosure does not cure the foregoing fundamental flaw in the basic Bianchi-
Lawrence combination.
The following new rejections are entered pursuant to 37 CFR § 1.196(b).
Appeal No. 97-4083
Application 08/422,933
The comment on page 1 of Appendix A to the main brief demonstrates that the2
appellant already is aware of the above noted inconsistency in claim 9.
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Claims 7 through 10 are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter the appellant regards
as the invention.
Claims 7 through 10 contain various references to an opaque border which are
completely lacking in proper antecedent basis. As a result, the scope of these claims is
indefinite. Claim 9 is additionally indefinite in that the recitation therein that the larger
decorative frame is along the perimeter of the “inner” edge of the opaque border is
inconsistent with preceding claim language and the underlying specification which
indicate that a different decorative frame is along the perimeter of the inner edge of the
border.2
Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by Lawrence.
Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a claimed invention.
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984). It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference, i.e., that all
of the limitations in the claim be found in or fully met by the
Appeal No. 97-4083
Application 08/422,933
Due to the indefinite scope of claims 7 through 10, which depend from claim 1, the3
subject matter recited in these claims cannot at this time be evaluated for patentability over
the prior art since to do so would require undue speculative assumption as to the meaning
of the claims. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962).
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reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
In the present case, Lawrence’s casing 1 and electric bulb 29 meet the recitation in
claim 1 of the shallow back-lighting means, Lawrence’s clear plate 16 meets the recitation
in claim 1 of the transparent cover means, and Lawrence’s frame portions 4, 5, 6 and 7
meet the recitation in claim 1 of the decorative frame means. In addition, although
Lawrence’s display device is disclosed as being supportable on an underlying surface via
feet 15, it is not evident why such device is not inherently capable of being wall supportable
in the broad sense set forth in claim 1. Thus, Lawrence discloses, expressly or under
principles of inherency, each and every element of the invention recited in claim 1.3
Claim 16, and claims 17, 19 and 20 which depend therefrom, are rejected under 35
U.S.C. § 103 as being unpatentable over Lawrence in view of Green.
Lawrence teaches, or would have suggested, a display method and artwork
meeting all of the limitations in these claims except for those relating to the “wall-parallel
location” (independent claim 16). Green teaches framed artwork that is conventionally
known to be wall mountable for display purposes. It would have been
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Application 08/422,933
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obvious to a person having ordinary skill in the art at the time the invention was made to
suitably modify the Lawrence display device and support it on a wall as is known to be
conventional, thereby arriving at the subject matter recited in claims 16, 17, 19 and 20, in
order to expand the display range of the device. In this regard, a conclusion of
obviousness may be based on common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular reference. In
re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
In summary:
a) the decision of the examiner to reject claim 9 under 35 U.S.C. § 112, second
paragraph, is affirmed;
b) the decision of the examiner to reject claims 1, 7 through 10 and 16 through 23
under 35 U.S.C. § 103 is reversed; and
c) new rejections of claims 1, 7 through 10, 16, 17, 19 and 20 are entered pursuant
to 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one or more claims, this decision
contains new grounds of rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes of judicial review.”
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Application 08/422,933
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Regarding any affirmed rejection, 37 CFR § 1.197(b) provides:
(b) Appellant may file a single request for rehearing within two months from
the date of the original decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new grounds of rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the Primary Examiner
pursuant to 37 CFR § 1.196(b)(1), in order to preserve the right to seek review under 35
U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before the examiner unless, as a
mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and this does not result in
allowance of the application, abandonment or a second appeal, this case should be
returned to the Board of Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for reconsideration thereof.
Appeal No. 97-4083
Application 08/422,933
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No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
HARRISON E. McCANLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/pgg
Charles A. McClure
P.O. Box 1168
Appeal No. 97-4083
Application 08/422,933
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Tampa, FL 33601