Ex Parte Dombrowski

Board of Patent Appeals and Interferences

Aug 3, 2007

10222660 (B.P.A.I. Aug. 3, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEON R. DOMBROWSKI
____________

Appeal 2007-1917
Application 10/222,660
Technology Center 3600
____________

Decided: August 3, 2007
____________

Before TERRY J. OWENS, STUART S. LEVY, and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s claimed invention is to a system for mounting advertising
displays that are likely to be changed periodically (Specification 1:6-9). Claims 1
and 6, reproduced below, are representative of the subject matter on appeal.
1. An indoor as well as outdoor display system having
readily changeable planar-type signage comprising:
a signage support structure having a front surface,
lateral sides and a back surface;
signage having a display face with a generally
planar display surface and a contact surface surrounding
said display surface, said display face being sized and
shaped to fit around said support structure front surface;
and
a plurality of spaced apart quick-release fasteners
for removably attaching said display face contact surface
to said support structure at points on one or both of said
lateral sides and back surface, said fasteners having at
least a part thereof permanently affixed to one of said
signage and said support structure, said fasteners being
engaged and disengaged by hand without a tool.

6. An indoor as well as outdoor display system having
readily changeable planar-type signage comprising:
a signage support structure including first and
second generally vertical side members, a generally
horizontal top member, a generally horizontal bottom
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member, and top ends and bottom ends, said first side
member having one of said top ends and one of said
bottom ends, said second side member also having
another of said top ends and another of said bottom ends,
said top member being attached to said first and second
side members at their respective said top ends, said
bottom member being attached to said first and second
side member at their respective said bottom ends, said
top, bottom, first side and second side members defining
a front, back and sides of said support structure, said
back having a plurality of first fastening means thereon;
a mount for immovably mounting said support
structure in a desired location; and
a plurality of different display faces having a
display surface and a contact surface, said contact surface
further having a plurality of spaced apart second
fastening means attached thereto that connect to said first
fastening means and said back of said support structure,
said first and second fastening means being engaged and
disengaged by hand without a tool while said support
structure is immovably mounted, said display face being
sized and shaped to fit around said support structure such
that when said first and second fastening means are
engaged, said display face is held taut across said support
structure and said support structure front and sides are
thereby covered.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Boeniger US 4,773,174 Sep. 27, 1988
Terrels US 5,175,911 Jan. 5, 1993
Sekiguchi US 5,695,346 Dec. 9, 1997
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The following rejections are before us for review:
1. Claims 1, 2, 5, 11-15, and 17-20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Boeniger.
2. Claims 5, 6, 8, 9, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boeniger and Sekiguchi.
3. Claims 3, 4, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Boeniger and Terrels.
4. Claims 7 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Boeniger, Sekiguchi, and Terrels.

ISSUES
The issues before us are whether the Appellant has shown that the Examiner
erred in rejecting:
• claims 1, 2, 5, 11-15, and 17-20 under 35 U.S.C. § 102(b) as anticipated by
Boeniger;
• claims 5, 6, 8, 9, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Boeniger and Sekiguchi;
• claims 3, 4, and 20 under 35 U.S.C. § 103(a) as unpatentable over Boeniger
and Terrels; and
• claims 7 and 10 under 35 U.S.C. § 103(a) as unpatentable over Boeniger,
Sekiguchi, and Terrels.
The issues turn, in large part, on whether Boeniger discloses the claimed
fasteners.
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427,
7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. As shown in Figures 4 and 5, Boeniger discloses a complete display
frame 12, with a plurality of spaced apart frame elements 1, each having
individual rail-like protrusions 5, where the frame elements are spaced
about the perimeter of the back of frame 12 and attached to the frame 12
by clamping fasteners 13-16 (Boeniger, col. 2, l. 57 – col. 3, ll. 27,
Figs. 4, 5). As such, Boeniger discloses a first part of the fastener
(i.e., the frame element 1 having rail-like projection 5) fixed on the
support structure (i.e., frame 12) by means of clamping fasteners 13-16.
2. Boeniger does not disclose a single ridge that extends around the entire
back of the frame.
3. Boeniger discloses eyes 8 that are permanently affixed to the
reproduction 7 (or signage) (Boeniger, col. 2, ll. 16-18 and Fig. 3).
4. Boeniger’s fasteners (i.e., rail-like protrusion 5, spring 6, and eye 8) can
be engaged and disengaged by hand without a tool by merely hooking
one of the spring 6 around the protrusion 5 and the other end of the
spring 6 through the eye 8 (Boeniger, col. 2, ll. 13-18 and Fig. 1).
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5. The customary meaning of “snap” (noun) is “A clasp, catch, or other
fastening device that operates with a snapping sound.” The American
Heritage® Dictionary of the English Language, 4th ed. (2000).
6. The Specification describes the snap fastener as comprised of
“cooperating male and female snap members 48 50” (Specification 3,
l. 24).
7. The Specification further describes that in use the female snap members
50 are pressed onto and engage respective male snap members to secure
the display face 24 to the support structure 22 (Specification 6, ll. 15-30).
8. The spring 6 of Boeniger is not a snap fastener.
9. Sekiguchi discloses the use of one or more upright posts 620 and 622 or
vertical columns connected to the bottom beam 614 of an advertising
display sign 100 to provide a stand to elevate the display above the
ground (Sekiguchi, col. 18, ll. 2-4, Fig. 2).
10. The addition of Sekiguchi’s mounting posts to Boeniger’s display would
entail merely the combination of familiar elements according to known
methods to yield predictable results. In other words, the addition of
mounting posts is no more than a predictable use of prior art elements
according to their established functions.
11. Terrels discloses the use of a snap fastener on boats, aircraft and land
vehicles to mount a canvas cover 12 on a base 13, for example, the
gunwale of a boat (Terrels, col. 1, ll. 10-13 and col. 2, ll. 6-9).
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12. We find no reason why one having ordinary skill in the art, faced with
the teaching of the display system of Boeniger for use in supporting and
suspending flat reproductions, such as photographic reproductions
(Boeniger, col. 1, ll. 6-8) would have modified the display system of
Boeniger to attach the reproductions to the frame using snap fasteners.
13. While we agree that snap fasteners are generally well known; we find no
interrelated teachings in the cited patents; demands known to the design
community or present in the marketplace; or background knowledge
possessed by a person having ordinary skill in the art, that would have
provided an apparent reason to combine the known elements in the
fashion claimed by the Appellant’s claims 3, 4, 7, 10, and 20.
14. The product sold by the Appellant, the Snapquick Interchangeable
Signage product, uses a snap-type fastener (Decl., ¶ 13).
15. The Appellant’s objective evidence of non-obviousness demonstrates
only that any commercial success of the Snapquick Interchangeable
Signage is due to the snap-type fastener and its durability and ease of use.
16. The Appellant’s proof of unit sales does not indicate whether the
numbers sold were a substantial quantity in the relevant market.
17. The Declarant has chosen not to furnish us with any idea of the size of
the market. Also, there is no evidence that the sales of Appellant’s
product have come at the expense of other prior art display systems.
18. The Appellant’s Specification describes the fastening means as including
male and female snap fasteners, hook-and-eye fasteners, keyhole
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fasteners, wing nuts, Velcro, bungee cords, elastically-contracted edges
on the signage, or “any other suitable means … so long as it allows for
the display face 24 of the signage to be attached and detached easily”
(Specification 7:3-10).
19. Boeniger’s fasteners (i.e., rail-like protrusion 5, spring 6, and eye 8) are
equivalent to the structure described in the Appellant’s Specification,
e.g., bungee cords, for the “fastening means” of claim 6.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
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also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
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The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court
to look to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.

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ANALYSIS
Rejection of claims 1, 2, 5, 11-15, and 17-20 under 35 U.S.C. § 102(b) as
anticipated by Boeniger
The Appellant argued claims 1, 2, and 5 as a first group, claims 11-14 as a
second group, claims 17-19 as a third group, and claims 15 and 20 as a fourth
group (Appeal Br. 12-15). We select claims 1, 11, 17, and 15 as representative
claims, respectively, for each group. The remaining claims stand or fall with their
respective representative claim. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
With regard to the first group, the Appellant argued that Boeniger does not
anticipate claim 1 because it does not disclose “a plurality of spaced apart quick-
release fasteners … having at least a part thereof permanently affixed to one of
said signage and said support structure” (Appeal Br. 12). The Examiner found that
Boeniger discloses fastening means comprised of Boeniger’s rail-like protrusion 5,
tensioning spring 6, and eye 8 (Answer 3). The Appellant responded that the ridge
(rail-like protrusion 5) is part of the frame and the holes (eyes 8) are part of the
sign, and therefore are not considered part of the separate claimed fasteners that are
permanently affixed to either the frame or the sign (Appeal Br. 13). We see little
difference between the eye 8 attached to the sign of Boeniger (Finding of Fact 3)
and the female or male snap member attached to the sign of Appellant’s invention.
Similarly, we see no difference between the rail-like protrusions 5 disposed on
multiple frame elements attached around the perimeter of the frame of Boeniger
(Finding of Fact 1) and the female or male snap member attached to the frame of
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Appellant’s invention. In either case, once the fastening member is attached to the
frame or to the sign it becomes a part of the frame or the sign.
Further, the Appellant argues that Boeniger discloses a single ridge (rail-like
protrusion 5) extending around the entire back of the frame, which is not a plurality
of spaced apart fasteners, as claimed (Appeal Br. 13). The Appellant
misunderstands the disclosure of Boeniger. As shown in Figures 4 and 5, Boeniger
discloses a complete display frame 12, with a plurality of spaced apart frame
elements 1, each having individual rail-like protrusions 5, where the frame
elements are spaced about the perimeter of the back of frame 12 and attached to the
frame 12 by clamping fasteners 13-16 (Finding of Fact 1). As such, Boeniger does
not disclose a single ridge as argued by the Appellant. (Finding of Fact 2).
The Appellant further argues that the holes (eyes 8) in Boeniger’s sign do
not interengage with the ridge, but instead require additional springs (Appeal
Br. 13). We do not see where claim 1 recites that part of the fastener
“interengages” with another part of the fastener. Rather, claim 1 recites “said
fasteners having at least a part thereof permanently affixed to one of said signage
and said support structure, said fasteners being engaged and disengaged by hand
without a tool.” We find that Boeniger’s eyes 8 are permanently affixed to the
reproduction 7 (or signage) (Finding of Fact 3). Further, we find that the claimed
fasteners are not limited to two pieces and that Boeniger’s fasteners (i.e., rail-like
protrusion 5, spring 6, and eye 8) can be engaged and disengaged by hand without
a tool by merely hooking one of the spring 6 around the protrusion 5 and the other
end of the spring 6 through the eye 8 (Finding of Fact 4). Accordingly, we find
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that the Appellant has not shown that the Examiner erred in finding that Boeniger
anticipates claims 1, 2 and 5.
The Appellant makes the similar arguments for patentability of claim 11,
which recites “a plurality of interengageable releasable fasteners having a first part
fixed on one of said signage and support structure and another part on other of said
signage and support structure.” In particular, the Appellant argues that the ridge
(rail-like protrusion 5) of Boeniger is part of the support frame itself, and not a
separate fastener part that is “fixed” on the support frame as claimed (Appeal
Br. 14). The Appellant again misunderstands the disclosure of Boeniger. As
shown in Figures 4 and 5, Boeniger discloses a complete display frame 12, with a
plurality of spaced apart frame elements 1, each having individual rail-like
protrusions 5, where the frame elements are spaced about the perimeter of the back
of frame 12 and attached to the frame 12 by clamping fasteners 13-16 (Finding of
Fact 1). As such, Boeniger discloses a first part of the fastener (i.e., the frame
element 1 having rail-like projection 5) fixed on the support structure (i.e., frame
12) by means of clamping fasteners 13-16 (Finding of Fact 1). Further, as we
found supra for claim 1, Boeniger also discloses another part of the fastener (eyes
8) fixed on the signage (reproduction 7) (Finding of Fact 3).
The Appellant further argues that the holes in Boeniger’s sign do not
interengage with the ridge (rail-like protrusion 5), as claimed (Appeal Br. 14). We
do not see where claim 11 requires that the claimed fasteners be limited to two
pieces or require that the part of the fastener fixed on the signage directly engages
the part of the fastener fixed on the support structure. Rather, claim 11 merely
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recites “a plurality of interengageable releasable fasteners” where the fastener has
“a first part fixed on one of said signage and support structure and another part on
other of said signage and support structure.” As we found supra, Boeniger’s
fasteners (i.e., rail-like protrusion 5, spring 6, and eye 8) can be engaged and
disengaged by hand without a tool by merely hooking one end of the spring 6
around the protrusion 5 and the other end of the spring 6 through the eye 8
(Finding of Fact 4). As such, Boeniger’s fasteners are interengageable.
Accordingly, we find that the Appellant has not shown that the Examiner erred in
finding that Boeniger anticipates claims 11-14.
The Appellant makes similar arguments for patentability of claim 17
(Appeal Br. 14-15), which recites “a plurality of quick-release interengageable
fasteners each including at least a portion thereof attached to one of said signage
and another portion thereof attached to said support structure.” For the same
reasons provided supra, we do not see where claim 17 limits the fasteners to being
comprised of only two portions. As such, for the same reasons provided for claim
11, Boeniger’s fasteners are interengageable and have a portion attached to the
signage and another portion attached to the support structure (Findings of Fact 1, 3,
and 4). Accordingly, we find that the Appellant has not shown that the Examiner
erred in finding that Boeniger anticipates claims 17-19.
With regard to claim 15, which recites “wherein said fasteners are snap
fasteners,” and claim 20, which recites “wherein said first part and said second part
of said fastening mechanism are snap fasteners,” the Appellant argues that
Boeniger’s “spring is hooked on the ridge, not ‘snapped’ into place as described in
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the specification of the present application” (Appeal Br. 15). We agree with the
Appellant.
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004). The customary meaning of “snap”
(noun) is “A clasp, catch, or other fastening device that operates with a snapping
sound.” (Finding of Fact 5). The Specification describes the snap fastener as
comprised of “cooperating male and female snap members 48 50” (Finding of
Fact 6). The Specification further describes that in use the female snap members
50 are pressed onto and engage respective male snap members to secure the
display face 24 to the support structure 22 (Finding of Fact 7). One having
ordinary skill in the art would understand the claim term “snap fasteners” when
read in light of the Specification to mean cooperating male and female members
that, when pressed together, engage each other by snapping together. The spring 6
of Boeniger is not a snap fastener within this meaning of the claim term (Finding
of Fact 8). As such, the Appellant has shown that the Examiner erred in rejecting
claims 15 and 20 as anticipated by Boeniger.

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Rejection of claims 5, 6, 8, 9, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Boeniger and Sekiguchi
The Appellant argued that claim 5 is patentable over Boeniger and Sekiguchi
because Boeniger does not anticipate or render obvious claim 5 for the same
reasons provided for claim 1. As we found supra in our analysis of the
patentability of claim 1, we find the Appellant’s arguments unpersuasive.
Claim 6 and 8 recite first and second fastening means. The Appellant argues
that the use of “means” language invokes 35 U.S.C. § 112, ¶ 6, such that the
fastening means should be interpreted to be one and the other of the male and
female snap members (Appeal Br. 16). Even if we agree that “fastening means”
invokes § 112, ¶ 6, we agree with the Examiner that the Specification does not
limit the claimed fastening means to snap members (Answer 8). Rather, the
Specification discloses that the fastener can be any other suitable means, including,
for example, a bungee cord (Finding of Fact 18). We interpret “fastening means”
of claim 6 not to be limited to a snap fastener in view of the structure disclosed in
the Specification, and we find that Boeniger’s fasteners are equivalent to the
structure disclosed in the Appellant’s Specification (Finding of Fact 19). As such,
Boeniger discloses the claimed fastening means.
Claims 6 and 8 further recite “a mount for immovably mounting said support
structure in a desired location.” Claim 9 similar recites “a support structure
mount,” and claim 16 recites “wherein said support structure further includes a
mount permanently affixed thereto, said mount having a portion to fixedly attach
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said mount to a surface, said signage being mounted using said fasteners with said
mount in place.”
The Examiner found that Sekiguchi shows a display system having support
posts 620 and 622, and thus held that “it would have been obvious to one skilled in
the art to provide support posts in the structure of Boeniger, as well known such as
support posts similar to that of Sekiguchi, for supporting the display system [of]
Boeniger fixed in place in a vertical orientation for better viewing or showing”
(Answer 4).
The Appellant argued that claims 6 and 8 are patentable over Boeniger and
Sekiguchi, because Sekiguchi is directed to a display that features moveable
messages and high quality images and that Sekiguchi’s display does not equate to
the display system of the claims (Appeal Br. 17). This is not the proper test for
obviousness. See KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397 (finding that the
Court of Appeals erred in assuming that a person of ordinary skill attempting to
solve a problem will be led only to those elements of the prior art designed to solve
the same problem). The Supreme Court in KSR stated that “[c]ommon sense
teaches, however, that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id. As such,
whether Sekiguchi’s display is similar to the claimed display system is irrelevant to
the issue of whether it would have been obvious to modify Boeniger’s display
system with the mounting posts taught by Sekiguchi.
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The Appellant further argues that the Examiner failed to set forth a prima
facie case of obviousness because the Examiner relied on hindsight to combine
Sekiguchi and Boeniger (Appeal Br. 17). Under a functional approach, as
reaffirmed by the Supreme Court in KSR, the addition of Sekiguchi’s mounting
posts to Boeniger’s display would entail merely the combination of familiar
elements according to known methods to yield predictable results (Finding of Fact
10). See KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395. In other words, the
addition of mounting posts is no more than a predictable use of prior art elements
according to their established functions (Finding of Fact 10). Id. at 1740, 82
USPQ2d at 1395. The Appellant has not argued that the modification of
Boeniger’s display system with mounting posts would have been beyond the skill
of one of ordinary skill in the art or would have led to unpredictable results. Id.
As such, the Examiner set forth a prima facie case of obviousness of claims 6
and 8.
The Appellant argued that claim 9 is patentable over Boeniger and
Sekiguchi because Boeniger does not disclose a first fastener member on a back of
a support structure, a second fastener member on a contact surface of the display
face, where the first and second fastener members connect with one another
(Appeal Br. 17). For the reasons provided supra, we find that Boeniger discloses a
first fastener member (frame element 1 having rail-like protrusion 5) on a face of a
support structure (frame 12), and a second fastener member (eye 8) on a contact
surface of the display face (reproduction 7) (Findings of Fact 1 and 3). We do not
see where claim 9 recites that the first and second fasteners members must be
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directly connected to one another. Rather, claim 9 recites “said contact surface
having spaced apart second fastener members thereon that connected and
disconnect to said first fastener members on said back surface of said support
member manually without any tool.” In Boeniger’s display system, the first and
second fastener members connect and disconnect to one another indirectly by
means of spring 6 (Finding of Fact 4). As such, Boeniger discloses this limitation
of claim 9 and the Examiner has set forth a prima facie case of obviousness of
claim 9. We consider the Appellant’s evidence of commercial success, as it
pertains to claims 5, 6, 8, and 9 infra.
Claim 16 depends from claim 15, which recites that the fasteners are snap
fasteners. As we found supra, that Boeniger does not anticipate claim 15. We
further find that there is no apparent reason why one or ordinary skill in the art, in
view of the teachings of Boehniger and Sekiguchi, would modify the fasteners of
the Boeniger display system to replace them with snap fasteners (Finding of Fact
12). As such, the Examiner erred in rejecting claim 16 as unpatentable over
Boeniger and Sekiguchi.

Rejections of claims 3, 4, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Boeniger and Terrels and claims 7 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Boeniger, Sekiguchi, and Terrels
The Examiner relied on Terrels to demonstrate that a snap button type of
fastening means is well known (Answer 4). Terrels discloses the use of a snap
fastener on boats, aircraft and land vehicles to mount a canvas cover 12 on a base
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13, for example, the gunwale of a boat (Finding of Fact 11). We see no reason
why one having ordinary skill in the art, faced with the teaching of the display
system of Boeniger for use in supporting and suspending flat reproductions, such
as photographic reproductions, would have modified the display system of
Boeniger to attach the reproductions to the frame using snap fasteners (Finding of
Fact 12). While we agree that snap fasteners are generally well known; we find no
interrelated teachings in the cited patents; demands known to the design
community or present in the marketplace; or background knowledge possessed by
a person having ordinary skill in the art, that would have provided an apparent
reason to combine the known elements in the fashion claimed by the Appellant’s
claims 3, 4, 7, 10, and 20 (Finding of Fact 13). See KSR, 127 S.Ct. at 1740-41, 82
USPQ2d at 1396. As such, we find that the Appellants have shown that the
Examiner erred in rejecting claims 3, 4, and 20 and unpatentable over Boeniger
and Terrels and claims 7 and 10 as unpatentable over Boeniger, Sekiguchi, and
Terrels.

Secondary Considerations
The Appellant submitted evidence of secondary considerations in the form
of a Declaration by the inventor, Leon R. Dombrowski, as evidence of non-
obviousness of claims 3-10, 16, and 20. With regard to claims 3, 4, 7, 10, 16, and
20, because we have not sustained the Examiner’s rejections under 35 U.S.C.
§ 103(a) of these claims, we need not consider the evidence of secondary
considerations as it pertains to these rejections.
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With regard to the rejection under 35 U.S.C. § 103(a) of claims 5, 6, 8, and
9, we recognize that evidence of secondary considerations, such as that presented
by the Appellant must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider
anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and
weighing both the evidence relied upon by the Examiner and all of the evidence of
Appellant, including the objective evidence of nonobviousness provided by the
Appellant.
The Appellant attempts to show commercial success of the invention
through evidence of an increase in sales of the Snapquick Interchangeable Signage
product and an increase in its customer base since the introduction of the product
in January 2002 (Appeal Br. 19, Decl. ¶¶ 2-10). The Examiner found that the
evidence of commercial success was not commensurate in scope with the claims,
the evidence is not clear enough to exclude the possibility of commercial success
due to other factors, and the Appellant supplied only gross sales figures and did not
show commercial success absent evidence as to market share (Answer 9-10).
The product sold by the Appellant, the Snapquick Interchangeable Signage
product, uses a snap-type fastener (Finding of Fact 14). However, the claims at
issue, i.e., claims 5, 6, 8, and 9, are not limited to snap fasteners. Rather, these
claims are directed broadly to quick-release fasteners or to fasteners generally.
The Appellant’s objective evidence of non-obviousness demonstrates only that any
commercial success of the Snapquick Interchangeable Signage is due to the snap-
type fastener and its durability and ease of use (Finding of Fact 15). See In re
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Tiffin, 448 F.2d 291, 171 USPQ 294 (CCPA 1971) (holding that the applicant’s
objective evidence of non-obviousness is not commensurate with the scope of
certain claims, reciting “containers” generally, because it establishes non-
obviousness only with respect to “cups” and processes of making them).
Further, the Appellant's evidence of gross sales as an indication of
commercial success is weak, at best. The Appellant’s proof of unit sales, as the
Examiner points out, does not indicate whether the numbers sold were a substantial
quantity in the relevant market (Finding of Fact 16). In re Huang, 100 F.3d 135,
140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996) (without evidence that the sales are a
substantial quantity in the relevant market, “bare sales numbers” are a “weak
showing” of commercial success, if any); In re Baxter Travenol Labs., 952 F.2d
388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“[I]nformation solely on
numbers of units sold is insufficient to establish commercial success.”); Kansas
Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51, 219 USPQ 857, 861 (Fed. Cir. 1983)
(“The evidence of commercial success consisted solely of the number of units sold.
There was no evidence of market share, of growth in market share, of replacing
earlier units sold by others or of dollar amounts, and no evidence of a nexus
between sales and the merits of the invention. Under such circumstances,
consideration of the totality of the evidence, including that relating to commercial
success, does not require a holding that the invention would have been nonobvious
at the time it was made to one skilled in the art.”); Sjolund v. Musland, 847 F.2d
1573, 1582, 6 USPQ2d 2020, 2028 (Fed. Cir. 1988) (“Nor could the jury, from the
bare evidence of units sold and gross receipts, draw the inference that the
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popularity of the [sold units] was due to the merits of the invention.”) (citing Cable
Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888 (Fed.
Cir. 1985) and Kansas Jack, Inc., 719 F.2d at 1150-51, 219 USPQ at 861). The
Declarant has chosen not to furnish us with any idea of the size of the market.
Also, there is no evidence that the sales of Appellant’s product have come at the
expense of other prior art display systems (Finding of Fact 17). Indeed, in absence
of further economic evidence, it is improper to infer that the reported sales
represent a substantial share of any definable market or even that the sales volume
is anything out of the ordinary in the industry in question. See e.g., Cable Elec.
Prods., 770 F.2d at 1028, 226 USPQ at 889.
Accordingly, on the totality of the evidence, weighing all evidence of
obviousness against all evidence of non-obviousness, we hold that claims 5, 6, 8,
and 9 are unpatentable over Boeniger and Sekiguchi.

CONCLUSIONS OF LAW
We conclude that the Appellant failed to show that the Examiner erred in
rejecting claims 1, 2, 5, 11-14, and 17-19 under 35 U.S.C. § 102(b) as anticipated
by Boeniger. The Appellant showed, however, that the Examiner erred in rejecting
claims 15 and 20 under 35 U.S.C. § 102(b) as anticipated by Boeniger.
We further conclude that the Appellant failed to show that the Examiner
erred in rejecting claims 5, 6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable
over Boeniger and Sekiguchi. The Appellant showed, however, that the Examiner
erred in rejecting under 35 U.S.C. § 103(a) claim 16 as unpatentable over Boeniger
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and Sekiguchi, claims 3, 4, and 20 as unpatentable over Boeniger and Terrels, and
claims 7 and 10 as unpatentable over Boeniger, Sekiguchi, and Terrels.

DECISION
The decision of the Examiner to reject claims 1-20 is AFFIRMED-IN-
PART.

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)(1)(iv) (2006).
AFFIRMED-IN-PART

vsh

MCDONNELL, BOEHNEN,
HULBERT & BERGHOFF
300 SOUTH WACKER DRIVE
CHICAGO, IL 60606