Ex parte DORI

Board of Patent Appeals and Interferences

Jun 26, 1998

08151944 (B.P.A.I. Jun. 26, 1998)

Application for patent filed November 15, 1993.1
-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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte PATRICK DORI
________________
Appeal No. 96-2779
Application 08/151,9441
________________
HEARD: JUNE 9, 1998
________________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision in an appeal from the final rejection
of claims 1 and 3-15, all the claims remaining in the
application.
Appeal No. 96-2779
Application 08/151,944
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Appellant’s invention pertains to a method of and an
apparatus for displaying information along an extended area of
compliant ground. By way of example, appellant’s method and
apparatus may be used to display a series of repetitive
advertising or public service messages in a sandy bathing
beach or a snow-covered ski area. Independent claims 1, 3, 9
and 14, copies of which are appended to appellant’s brief, are
representative of the appealed subject matter.
The references of record relied upon by the examiner in
support of the rejections are:
Moorhead 3,832,079 Aug. 27, 1974
Brown 4,958,446 Sept. 25, 1990
Giliberti 5,088,855 Feb. 18, 1992
A new reference relied upon by this merits panel of the
Board in support of a new rejection is:
Bruess D51,917 Apr. 2, 1918
Claims 1, 3, 4 and 7-14 stand rejected under 35 U.S.C. §
103 as being unpatentable over Brown in view of Moorhead.
Claims 5, 6 and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Brown in view of Moorhead and
further in view of Giliberti.
The rejections are explained in the examiner’s answer
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(Paper No. 11).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 10) and the reply brief (Paper No. 12).
The § 103 Rejection of Claims 1, 3, 4 and 7-14
Based on Brown and Moorhead
Brown pertains to “[a] disposable sandal . . . adapted to
apply an advertising message repeatedly into sandy soil at a
beach or the like” (abstract). As illustrated in Figure 1,
“[t]he lower exposed surface 16 of the sole 12 is integrally
molded with projections 18 defining a mirror image advertising
message” (column 2, lines 25-28). As the individual wearing
such a sandal walks along a beach, the message is stamped
repeatedly along the sand. See Figure 2.
Moorhead relates to an apparatus and process for forming
a pattern in the surface of wet, compliant concrete. As
explained in column 1 of Moorhead in the background section of
the specification, it is sometimes desirable for aesthetic
purposes to provide a pattern in the surface of concrete to
simulate hand laid bricks, stones, cobblestone, etc.
According to Moorhead, this effect had been effectuated by
Appeal No. 96-2779
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means of hand tools to strike the pattern in the concrete
(column 1, lines 24-26). In this regard, Moorhead states:
Hand stamping tools have been increased in size
to effectuate coverage of broad areas. However, the
process is relatively time consuming because of the
fact that a man can only impress a limited amount of
concrete as to the square footage that is being
impressed. This [Moorhead’s] invention overcomes
the limitations of hand stamping concrete by
providing a continuously rolling impressment.
[column 1, lines 55-62]
Specifically, Moorhead provides a tractor-like apparatus which
includes a roller 16 having a surface 17 comprising ribs or
blades 18 arranged in the pattern to be impressed into the
concrete for continuously rolling impressment of the pattern.
The test for obviousness is not whether the features of
one reference may be bodily incorporated into the structure of
another reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Moreover, a conclusion of obviousness may be
based on common knowledge and common sense of the person of
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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).
Applying these principles to the presently appealed
claims, the examiner’s conclusion that the combined teachings
of Brown and Moorhead would have suggested the subject matter
recited in claim 1 is well founded. A person of ordinary
skill in the art would have readily appreciated as a matter of
common sense that Brown’s method is limited in terms of the
area over which the message can be impressed in a reasonable
amount of time. Further, the ordinarily skilled artisan would
have readily appreciated that Moorhead’s teachings of
providing a roller means to facilitate impressing a pattern in
wet concrete is not limited to stamping concrete but has a
broader applicability to other processes where impressing a
repetitive pattern is done manually. These considerations
would have provided the artisan with ample suggestion to
provide an impressing means in Brown whereby the messages are
impressed into the sand by rolling contact between the
impressing means and the compliant ground to enhance the
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overall efficiency of the process. The resulting method would
meet all of the limitations of independent claim 1.
Considering next independent apparatus claim 9, the step
of providing an impressing means in Brown in view of
Moorhead’s teachings whereby the messages are impressed into
the sand by rolling contact also results in the apparatus of
claim 9. Accordingly, we will sustain the standing § 103
rejection of claim 9 based on the combined teachings of Brown
and Moorhead.
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We will also sustain the standing § 103 rejection of
claims 10-13 since appellant states on page 5 of the brief
that these dependent claims stand or fall with claim 9.
Turning to independent claim 3, this claim does not
require that the messages be impressed by rolling. Rather,
claim 3 calls for the steps of smoothing the compliant ground
to establish a path of smoothed compliant ground, and
impressing the messages into the compliant ground at regularly
spaced intervals along the path of smoothed compliant ground.
Appellant argues that in Brown the messages are not impressed
in the sand at regularly spaced intervals. This argument is
not well taken. In our opinion, the method of using Brown’s
sandals would inherently result in messages being impressed in
the sand at regularly spaced intervals, since the length of a
person’s stride is consistent from stride to stride during
normal walking. We appreciate that our views in this respect
differ from those of appellant as expressed on page 1 of the
reply brief.
Appellant also argues that the applied references do not
teach smoothing the ground to establish a smooth path prior to
impressing the message. However, appellant’s specification
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states on page 3 that during the peak tourist season, it is
conventional for a grounds keeper to comb the beach each
morning with a rake to maintain the beach clean and orderly
for the day’s use. Accordingly, it would have been obvious to
utilize Brown’s sandals to impress messages into the sand of a
beach that has been earlier raked smooth, the resulting method
corresponding to that of independent claim 3 in all respects.
We will not sustain the § 103 rejection of claims 4, 7
and 8, each of which depends from claim 3 and adds that the
messages are impressed by rolling the impressing means along
the smoothed compliant ground “immediately subsequent to
smoothing” the compliant ground. In rejecting these claims,
the examiner has taken the position that “[i]t is inherent of
the Moorhead apparatus to impress a pattern ‘immediately’
subsequent to the smoothing means/process . . .” (answer, page
6). This position is not well taken. We appreciate that in
Moorhead, the concrete is tamped, floated and troweled in
preparation for impressing the pattern in the concrete (column
2, lines 39-43). We also appreciate that tamping, floating
and troweling concrete constitutes smoothing the surface
thereof. It is not apparent to us, however, that Moorhead’s
Appeal No. 96-2779
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pattern impressing step inherently takes place “immediately
subsequent” to smoothing the concrete surface. Rather,
Moorhead’s disclosure at column 4, lines 52-54 (the concrete
is floated and troweled and then maintained in this state
until impressed) and column 2, line 54 (the concrete is in a
semi-plastic state prior to being impressed) suggest that a
period of time elapses between the smoothing and impressing
steps.
We also will not sustain the standing § 103 rejection of
independent apparatus claim 14 as being unpatentable over
Brown in view of Moorhead. Claim 14 requires that the
apparatus thereof includes “means for smoothing the compliant
ground . . . along the extended area immediately ahead of the
impressing means.” As noted in the previous paragraph, it is
not inherent in Moorhead that smoothing the concrete take
place immediately subsequent to impressing the pattern
therein. Likewise, Moorhead does not teach, suggest or infer
that the pattern forming apparatus should include as a part
thereof a means for smoothing the concrete in the area
immediately ahead of the roller 16. The examiner has not
explained, and it is not apparent to us, why in combining the
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teachings of Brown and Moorhead to effectuate impressing the
message of Brown by rolling means, the resulting apparatus
would also include the “means for smoothing” as called for in
the last paragraph of claim 14. Accordingly, the
rejection of claim 14 based on Brown and Moorhead is not
sustainable.
The § 103 Rejection of Claims 5, 6 and 15
Based on Brown, Moorhead and Giliberti
Giliberti pertains to a small tractor for compacting
surfaces. To this end, the tractor is equipped with a
compacting cylinder 20. The cylinder is mounted for movement
between an operative position wherein it engages the ground
(e.g., Figure 5) and an inoperative position wherein it is
spaced from the ground (e.g., Figure 7). In addition,
Giliberti can be fitted with a brush 86 for raking a sand trap
of a golf course (see Figure 1).
Claim 5 depends from method claim 3 and further requires
that the smoothing step includes raking. In that appellant
discloses on page 3 of the specification that it is
conventional for a grounds keeper to comb the beach each
morning with a rake to maintain the beach clean and orderly
Appeal No. 96-2779
Application 08/151,944
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for the day’s use, utilizing Brown’s sandals to impress
messages into the sand of a beach that has been earlier raked
smooth would result in the method of claim 5. Thus, we will
sustain the rejection of claim 5, the teachings of Giliberti
being mere surplusage to the rejection.
Claim 6 depends from claim 5 and further requires that
the step of impressing by rolling take place “immediately
subsequent to raking.” As noted above in our discussion of
claims 4, 7 and 8, the combined teachings of Brown and
Moorhead do not teach, suggest or infer the step of smoothing
compliant ground immediately subsequent to impressing a
pattern therein. Giliberti does not make up for the
deficiencies of Brown and Moorhead in this regard. It follows
that the rejection of claim 6 based on Brown, Moorhead and
Giliberti is not sustainable.
Claim 15 depends from claim 14 and adds that the “means
for smoothing” includes a rake. While we appreciate that
Giliberti’s brush 86 for raking sand responds to the rake
requirement of dependent claim 15, Giliberti’s teachings do
not make up for the above noted deficiencies of Brown and
Moorhead with respect to basic combination needed to meet the
Appeal No. 96-2779
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terms of independent claim 14. Accordingly, the rejection of
claim 15 is not sustainable.
New Rejection Pursuant to 37 CFR § 1.196(b)
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new rejection.
Claims 1, 3, 5 and 9-13 are rejected under 35 U.S.C. §
103 as being unpatentable over the newly cited Bruess
reference.
Bruess discloses a tire having a thread pattern
comprising a series of symbols each in the form of a stylized
message “Ohio.” It would have been obvious to one of ordinary
skill in the art to provide the tire of Bruess on an
automobile. The resulting combination would correspond to the
apparatus of claim 9. In this regard, Bruess’s tire having a
tread pattern in the form of raised symbols representing the
stylized message “Ohio” comprises means for temporarily
displaying including rolling impressing means, as called for
in the first two paragraphs of the body of claim 9. The
automobile on which such a tire is mounted comprises means for
rolling the rolling impressing means along the compliant
Appeal No. 96-2779
Application 08/151,944
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ground, as called for in the last paragraph of claim 9.
The apparatus called for in dependent claims 10, 11 and
13 would also result from providing the tire of Bruess on an
automobile. The subject matter of claim 12, wherein the
graphic elements are recessed within the outer surface, is
considered to be an obvious alternative to that which is
disclosed in Bruess, wherein the graphic elements are raised
upon the outer surface of the tire.
As to method claim 1, it would further have been obvious
to drive an automobile equipped with a tire like that of
Bruess on soft compliant ground. The resulting method
correspond to the method of claim 1 in all respects, in our
view.
Concerning method claim 3, in light of appellant’s
disclosure on page 3 of the specification that it is
conventional to comb a beach with a rake in preparation for
the day’s use, it would also have been obvious to drive a
vehicle equipped with a tire like that of Bruess on a freshly
combed sandy beach. The resulting method would correspond to
the method of claims 3 and 5.
Summary
Appeal No. 96-2779
Application 08/151,944
-14-
The § 103 rejection of 1, 3, 4 and 7-14 as being
unpatentable over Brown in view of Moorhead is affirmed with
respect to claims 1, 3 and 9-13, but is reversed with respect
to claims 4, 7, 8 and 14.
The § 103 of claims 5, 6 and 15 as being unpatentable
over Brown in view of Moorhead and Giliberti is affirmed with
respect to claim 5, but is reversed with respect to claims 6
and 15.
In addition, we have made a new rejection of claims 1, 3,
5 and 9-13 pursuant to 37 CFR § 1.196(b).
The decision of the examiner is affirmed-in-part.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground 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)).
Appeal No. 96-2779
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37 CFR § 1.196(b) provides, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
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
ground 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
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of the prosecution before
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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.
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)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-2779
Application 08/151,944
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Appeal No. 96-2779
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Samuelson & Jacob
25 E. Salem St.
P.O. Box 686
Hackensack, NJ 07602