Ex Parte Davison et alDownload PDFPatent Trial and Appeal BoardSep 12, 201612795904 (P.T.A.B. Sep. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121795,904 06/08/2010 61060 7590 09/14/2016 WINSTEAD PC P.O. BOX 131851 DALLAS, TX 75313-1851 FIRST NAMED INVENTOR Daniel P. Davison JR. 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. 44228-POOlCl 1834 EXAMINER NGUYEN, KIEN T ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 09/14/2016 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): lgopalakrishnan@winstead.com patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL P. DAVISON JR. and RICHARD H. REMMER Appeal2014-007564 Application 12/795,904 Technology Center 3700 Before JENNIFER D. BAHR, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel P. Davison Jr. and Richard H. Remmer ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 13 and 21--44. In the Answer, the Examiner enters new grounds of rejection of all claims. Ans. 2-7. We understand the rejections from the Non-Final Action are withdrawn in favor of these new rejections. See Ans. 7 (alluding to Appellants' argument as being "moot in view of the new ground of rejection"). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-007564 Application 12/795,904 THE CLAIMED SUBJECT MATTER Claim 21, reproduced below, is illustrative of the claimed subject matter. 21. An amusement ride system, comprising: an amusement ride; and a fa9ade at least partially covering or adjoining said amusement ride, wherein said fa9ade comprises an advertising billboard located on a surface of said [ fa9ade]. REJECTIONS The following rejections, as presented in the Examiner's Answer, are before us for review: 1) Claims 21, 26, 29, and 30 are rejected under 35 U.S.C. § 102(e) as anticipated by Stromberg (US 7 ,246,559 B2, iss. July 24, 2007). Ans. 2-3. 2) Claims 13, 21, 24, 26-28, 33, 36, and 38--40 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barber (US 4,920,890, iss. May 1, 1990). Id. at 3-5. 3) Claims 31-33, 38, and 41--44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stromberg. Id. at 5---6. 4) Claims 22 and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barber and Stengel (US 6,755,749 B2, iss. June 29, 2004). Id. at 6. 5) Claims 23 and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barber and Kleimeyer (US 6,695,291 B2 iss. Feb. 24, 2004). Id. at 7. 2 Appeal2014-007564 Application 12/795,904 6) Claims 25 and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Barber and Castille (US 2,864,614, iss. Feb. 7, 1957). Id. DISCUSSION Rejection 1: Claims 21, 26, 29, and JO-Anticipation by Stromberg The Examiner finds that Stromberg discloses all the limitations of these claims. Ans. 2-3. 1 In doing so, the Examiner construes the claim term "amusement ride" to be "any object that transports passengers." Id. at 3. The Examiner explains the "term 'amusement' does not add any positive structure and is a relative term" and "[a] car ride could be considered an 'amusement ride' for certain people or children." Id. Appellants do not dispute the Examiner's finding that Stromberg discloses the recited fa9ade. Ans. 2; Reply Br. 3-5. Appellants submit that Stromberg discloses moveable platform 7 that is enclosed and moves between a sidewalk level and a raised position at the level of an elevated bus. Reply Br. at 3--4. Appellants, however, assert that "[t]here is no language in Stromberg that discloses that the moveable platform 7 corresponds to an amusement ride." Id. at 4. Relying on dictionary definitions of "amusement park" and "amusement ride," Appellants argue that the "Examiner is transmogrifying the meaning of the claimed amusement ride to such a degree that the Examiner has arrived at a conclusion that no reasonable person would reach." Id. 1 The Examiner issues new grounds of rejection of all pending claims in the Answer. See Ans. 2-7. Appellants have elected to maintain this appeal by filing a Reply Brief. See 37 C.F.R. § 41.39(b)(2). 3 Appeal2014-007564 Application 12/795,904 As stated by Appellants, Stromberg's moveable platform 7 is an enclosed vehicle that transports passengers. Although Stromberg's moveable platform 7 is not specifically described as transporting people in an amusement park, Appellants do not assert the transit system described in Stromberg could not be used to transport people in an amusement park. See Stromberg, col. 7, 11. 51-56 ("the system finds application in any environment where it is necessary to move people from one location to another."). We note that Appellants' Specification does not define "amusement ride," but does indicate that the claims are not limited to the specific structures disclosed. Spec. i-f 24 ("It should be appreciated by those skilled in the art that the conception and the specific embodiment disclosed may be readily utilized as a basis for modifying or designing other structures."). We also note that Appellants have not addressed the Examiner's assertion that riding a vehicle outside of an amusement park can constitute "an 'amusement ride' for certain people or children." For all the foregoing reasons, Appellants' argument that Stromberg's moveable platform 7 is not an "amusement ride" is not persuasive. The Examiner's finding that Stromberg anticipates claim 21 is supported by a preponderance of the evidence and we sustain the rejection. In contesting the new ground of rejection based on anticipation by Stromberg, Appellants do not provide any separate arguments for the patentability of dependent claims 26, 29, and 30. See Reply Br. passim. Therefore, we also sustain the rejection of claims 26, 29, and 30, which fall with claim 21, on the same basis. See 37 C.F.R. § 41.37(c)(l)(iv) (allowing the Board to decide the appeal as to a ground of rejection of a group of claims argued together on the basis of a representative claim). 4 Appeal2014-007564 Application 12/795,904 Rejection 2: Claims 13, 21, 24, 26-28, 33, 36, and 38--4{}-()bviousness- Barber The Examiner rejects independent claim 13 as obvious in light of Barber. Ans. 4. In so doing, the Examiner finds Barber discloses all the limitations of claim 13, including the fa9ade. Id. Appellants contend the Examiner has not construed fa9ade consistent with the Specification and, therefore, Barber's element 22 does not correspond to the claimed fa9ade. Reply Br. 5---6. Appellants next contend the claimed phrase "thereby enhancing consumer interest in said billboard device ... is a structural limitation not an intended use", as the Examiner asserts, because the claim recites that the advertising billboard is "located on a surface of said fa9ade." Id. at 7. Appellants do not dispute that Barber's 4x4 sign is an advertising billboard, but contend the 4x4 sign is supported above the bridge rather than "located on the surface of bridge 22" as required by claim 13. Id. at 8.2 For the following reasons, we sustain the rejection of claim 13. We initially address Appellants' argument that the Examiner did not properly consider the Specification when construing "fa9ade." We give claim terms their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). Although the claims are interpreted in light of the Specification, limitations from the 2 Although not specifically stated by Appellants, we understand the contentions in the Reply Brief regarding claim 13 to be Appellants' response to the new ground of rejection in the Answer. 5 Appeal2014-007564 Application I2/795,904 Specification are not read into the claims. Jn re Van Geuns, 988 F.2d I I8I, I I84 (Fed. Cir. I993). Appellants' Figure I illustrates fa9ade I 40 as comprising a structure with ornamentation to simulate an environment for the vehicle system, i.e., a drinking glass. In this embodiment, vehicle I80 proceeds down tower I20 and behind or into fa9ade I40. Spec. i-f I 7. In Appellants' Figure 2, fa9ade 229 comprises a structure with ornamentation to simulate an environment for the vehicle system, i.e., a racetrack. Spec. i-f 20. In this embodiment, vehicle 250 proceeds on a track through openings 220 and 230 in fa9ade 229. Spec. i-f 20. In Appellants' Figure 3, fa9ade 340 comprises a structure surrounding the vehicle system without ornamentation relating to the specific environment for the tower ride disclosed in Figure 3. In this embodiment, vehicle 380 proceeds down tower 320 and into fa9ade 340. Spec. i-f 22. Based on the foregoing, we determine that a person of ordinary skill in the art would reasonably construe fa9ade to be a structure that may comprise ornamentation simulating an environment for a vehicle system that accommodates a vehicle passing through it, behind it, or into it. Barber's element 22 is a bridge through which vehicle I2 passes. Barber Fig. IA. Barber's bridge accommodates vehicles I2 passing through it. Id. Based on our construction of fa9ade, Appellants do not apprise us of error in the Examiner's finding that element 22 may reasonably considered to be a fa9ade. Appellants' contention that the 4x4 sign is not located on a surface of the fa9ade is not persuasive. The 4x4 sign is supported by posts that are part of the rear-side surface of element 22. Barber, Fig. IA. The posts supporting the 4x4 sign extend from the bottom of the structure near the 6 Appeal2014-007564 Application 12/795,904 vehicle track continuously to the 4x4 sign. Id. Consequently, the Examiner's finding that the 4x4 sign is located on a surface of the fa9ade is supported by a preponderance of the evidence. Because the 4x4 sign is located on a surface of the fa9ade, it enhances consumer interest in the billboard device. Therefore, we sustain the rejection of claim 13. Appellants do not address the new ground of rejection of claim 21 as unpatentable in light of Barber separately from the rejection of claim 13. See Reply Br. passim. Consequently, we sustain the rejection of claim 21 in light of Barber. 3 With respect to claims 24 and 36, the Examiner finds that "[t]he amusement ride of Barber is considered a roller coaster." Ans. 4--5. The Examiner reasons that claim 24 does not recite particular "structural components of the roller coaster," and "one of ordinary skill in the art would simply incorporate any suitable ride to accommodate any particular environment." Id. at 10. Appellants contend that modifying Barber to incorporate a roller coaster would change the principal of operation of Barber because the result would no longer be a "portable amusement ride that incorporates a multi-function trailer." Reply Br. 9-10. Appellants merely make this assertion, but do not offer any evidence or persuasive technical reasoning to support a conclusion that a roller coaster cannot be incorporated into a portable amusement ride that includes a multi-function 3 To the extent that Appellants implicitly intend to rely on arguments in the Appeal Brief regarding claim 21, i.e., that Barber does not disclose a fa9ade and the advertising billboard is not located on a surface of the fa9ade (Appeal Br. 11-14), those arguments are not persuasive for the same reasons stated above for claim 13. 7 Appeal2014-007564 Application 12/795,904 trailer, or that it would involve more than ordinary skill in the art to do so. Consequently, we sustain the rejection of claims 24 and 36. Appellants do not address the new ground of rejection of claim 33 as unpatentable in light of Barber separately from the rejection of claim 13. See Reply Br. passim. Consequently, we sustain the rejection of claim 33 in light of Barber. 4 Appellants do not address the new ground of rejection of claims 26 and 38 as unpatentable in light of Barber separately from claims 21 and 33. See Reply Br. passim. Consequently, we sustain the rejection of claims 26 and 38 in light of Barber. 5 Dependent claims 27 and 28 recite that the vehicle when traveling "resembles a mass of fluid" and "resembles a droplet of mercury" respectively. Appeal Br. 41 (Claims App.). Claims 39 and 40 contain the same recitations. Id. at 42. The Examiner rejects these claims as directed to matters of "ornamentation only which have no mechanical function [and] cannot be relied [on] to patentably distinguish the claimed invention from the prior art." Ans. 5. The Examiner further explains that the claimed recitations are "a matter of one's perception." Id. at 11. Appellants contend that having a traveling vehicle resemble a mass of fluid or a droplet of mercury relates to mechanical function not ornamentation. Reply. Br. 10-11. The Specification does not describe any 4 To the extent that Appellants implicitly intend to rely on arguments in the Appeal Brief regarding claim 33, i.e., that Barber does not disclose a fa9ade and the advertising billboard is not located on a surface of the fa9ade (Appeal Br. 17-19), those arguments are not persuasive for the same reasons stated above for claim 13. 5 In the Appeal Brief, Appellants also do not argue separately for the patentability of claims 26 and 38. Appeal Br. 14, 19. 8 Appeal2014-007564 Application 12/795,904 structure or mechanical function beyond the structure and function of the vehicle without surface ornamentation that results in the moving vehicle resembling a mass of fluid or droplet of mercury. Rather, the Specification discloses the "vehicle 180 [can] be ... painted to resemble a mass of fluid." Spec. i-f 17. Consequently, the fact that the vehicle may resemble a mass of fluid or a droplet of mercury results from surface ornamentation painted on the vehicle without any structural or functional change to the vehicle. Surface ornamentation that has "no mechanical function whatsoever" cannot be relied on to support patentability of apparatus claims. In re Seid, 161 F.2d 229, 231(CCPA1947). Appellants thus do not apprise us of error in the rejection of claims 27, 28, 39, and 40. We sustain the rejection of these claims. Rejection 3: Claims 31-33, 38, and 41--44-0bviousness--Stromberg With respect to independent claim 3 3, Appellants contend the Examiner's finding that Stromberg discloses an "amusement ride" is erroneous. Reply Br. 12-14. For the reasons stated above in connection with Rejection 1, Appellants' contention is not persuasive and we sustain the rejection of claim 33 for the same reasons. Claims 31 and 43 recite the "fa9ade comprises one or more substantially transparent sections." Appeal Br. 41--42 (Claims App.). The Examiner notes that Stromberg does not "specifically disclose one or more substantially transparent sections on the fa9ade." Ans. 5. The Examiner states that billboards "can be seen everywhere" and are known to be "made of non-transparent material or color paints or transparent plastic or glass panel illuminated with lights." Id. The Examiner concludes "it would have 9 Appeal2014-007564 Application 12/795,904 been a matter of design choice to provide the fa9ade (8) of Stromberg with one or more substantially transparent panels to accommodate any particular environment." Id. at 5---6. Appellants contend that Stromberg does not disclose transparent sections of the fa9ade and the Examiner erred by not citing any authority for the position that the required modification to address this deficiency "is simply a matter of design choice." Reply Br. 2-3 (submitting that the only section of the Manual of Patent Examining Procedure discussing "design choice" is directed to "a rearrangement of the parts"). Stromberg discloses that advertisement panels 29 "may be simple billboard surfaces." Stromberg, col. 7, 1. 20. Appellants do not dispute the Examiner's finding that billboards made of non-transparent or transparent material are ubiquitous and thus were well known in the art. This undisputed finding in combination with Stromberg's disclosure of advertisement panels that "may be simple billboard surfaces" supports the Examiner's conclusion that choosing transparent materials for the construction of the recited advertising billboard would be an obvious design choice. Therefore, we sustain the rejection of claims 31 and 43. Appellants group claims 32 and 44 together. Reply Br. 11-12. Pursuant to 37 C.F.R. § 41.37(c)(l)(iv), we select claim 32 as representative of this group, and claim 44 stands or falls with claim 32. Claim 32 recites that the "transparent sections are used for a retail center." Appeal Br. 41 (Claims App.). The Examiner rejects claim 32 because "'retail center' is merely an intended use of the transparent sections and the term itself does not contain and/or require any structural feature." Ans. 6. Appellants contend that the Examiner erred because Stromberg does not disclose that 10 Appeal2014-007564 Application 12/795,904 fa9ade 8 is used for a retail center. Reply Br. 12. Appellants' contention is not persuasive because it does not address the Examiner's rejection that the recitation is merely an intended use, and not a limitation that structurally distinguishes the claims from Stromberg. Therefore, we sustain the rejection of claims 32 and 44. 6 Appellants do not address the new ground of rejection of claims 38, 41, and 42 as unpatentable in light of Stromberg separately from claim 33. See Reply Br. passim. Consequently, we also sustain the rejection of claims 38, 41, and 42 as unpatentable over Stromberg.7 Rejection 4: Claims 22 and 34-0bviousness-Barber and Stengel Claims 22 and 34 recite the "amusement ride comprises a tower ride." Appeal Br. 40-41 (Claims App.). The Examiner notes that Barber does not disclose a tower ride, but relies on Stengel for disclosing a tower ride and indicates such rides are well known in the art. Ans. 6. The Examiner then concludes it would have been obvious to one of ordinary skill in the art to "substitute the vehicle ride of Barber with the tower ride of Stengel for the purpose of providing an alternative ride to accommodate any particular environment." Id. 6 If the recitation "are used as a retail center" were construed as requiring a positive method step of operating a retail center, claim 32 seemingly would be reciting both an apparatus and method steps of using the apparatus, and, thus, would be indefinite pursuant to 35 U.S.C. § 112, second paragraph. See Ultimate Pointer v. Nintendo Co., LTD, 816 F.3d 816, 826 (Fed. Cir. 2016); IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). 7 Appellants do not dispute the Examiner's assertion that arguments in the Appeal Brief related to claims 38, 41, and 42 are considered moot in light of the new grounds of rejection in the Answer. See Ans. 11; Reply Br. passim. 11 Appeal2014-007564 Application 12/795,904 Appellants contend that modifying Barber to incorporate a tower ride would change the principal of operation of Barber because the result would no longer be a "portable amusement ride that incorporates a multi-function trailer." Reply Br. 15. Appellants merely make this assertion, but do not offer any evidence or persuasive technical reasoning to support a conclusion that a tower ride cannot be incorporated into a portable amusement ride that incorporates a multi-function trailer or that it would involve more than ordinary skill in the art to do so. As the Examiner states a sufficient rationale for the combination supported by the cited references, we sustain the rejection of claims 22 and 34. Rejection 5: Claims 23 and 35--0bviousness-Barber and Kleimeyer Claims 23 and 35 recite the "amusement ride constitutes a bungee ride." Appeal Br. 40-41 (Claims App.). The Examiner notes that Barber does not disclose a bungee ride, but relies on Kleimeyer for disclosing a bungee ride. Ans. 7. The Examiner then concludes it would have been obvious to one of ordinary skill in the art to "substitute the vehicle ride of Barber with the bungee ride as taught by Kleimeyer for the purpose of providing an alternative ride to accommodate any particular environment." Id. Appellants contend that modifying Barber to incorporate a tower ride would change the principal of operation of Barber because the result would no longer be a "portable amusement ride that incorporates a multi-function trailer." Reply Br. 16. Appellants merely make this assertion, but do not offer any evidence or persuasive technical reasoning to support a conclusion that a tower ride cannot be incorporated into a portable amusement ride that incorporates a multi-function trailer or that it would involve more than 12 Appeal2014-007564 Application 12/795,904 ordinary skill in the art to do so. As the Examiner states a sufficient rationale for the combination supported by the cited references, we sustain the rejection of claims 23 and 35. Rejection 6: Claims 25 and 37--0bviousness-Barber and Castille Appellants do not address the new ground of rejection of claims 25 and 37 as unpatentable in light of Barber and Castille. 8 See Reply Br. passim. Consequently, we summarily sustain the rejections of claims 25 and 37 in light of Barber and Castille. DECISION The Examiner's decision rejecting claims 13 and 21--44 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 To the extent that Appellants implicitly intend to rely on the argument in the Appeal Brief regarding claims 25 and 37, i.e., that modifying Barber to incorporate a Ferris wheel changes the principal of operation of Barber because Barber would no longer be "a portable amusement ride that incorporates a multifunctional trailer" (Appeal Br. 36), the argument is not persuasive for essentially the same reasons stated above for claims 22, 23, 34, and 35. 13 Copy with citationCopy as parenthetical citation