Ex Parte Herran

Board of Patent Appeals and Interferences

Dec 9, 2010

11443598 (B.P.A.I. Dec. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/443,598 05/31/2006 Alberto Jose Herran AJH1 3837
7590 12/09/2010
DOUGLAS J. VISNIUS
2519 ST. HEATHER WAY
ORLANDO, FL 32806
EXAMINER
PUROL, DAVID M
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
12/09/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALBERTO JOSE HERRAN
____________________

Appeal 2009-008637
Application 11/443,598
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D. A.
MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Alberto Jose Herran (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Lipof (US 3,222,841, iss. Dec. 14,
1965) and Neer (US 5,680,893, iss. Oct. 28, 1997). We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

THE INVENTION
The claims are directed to a privacy screen system and a method of
using the system. Spec., para. 2. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A privacy screen system comprising:
a frame having a plurality of fully enclosed frame
openings;
screening having a first side and a second side; and
a pattern of colored pigments selectively applied to the
first side of said screening for decreasing a person's ability to
see an object located adjacent the second side of said screen
when the person is positioned adjacent the first side of said
screening in comparison to other patterns of colored pigments;
said screening with said pattern of colored pigments
fastened within at least one of the plurality of fully enclosed
frame openings of said frame, and screening without said
pattern of colored pigments fastened within any of the
remaining plurality of fully enclosed frame openings.

SUMMARY OF DECISION
We AFFIRM.

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ISSUE
Appellant argues all of claims 1-20 together as a group. Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select claim 1 as
representative, with claims 2-20 standing or falling with claim 1.
The issue presented for our review is whether the combined teachings
of Lipof and Neer would have rendered obvious the subject matter of claim
1, including “screening with said pattern of colored pigments fastened within
at least one of the plurality of fully enclosed frame openings of said frame.”
In particular, Appellant argues that the combination proposed by the
Examiner (i.e., incorporating the pattern of colored pigmentation as taught
by Neer into the screen system of Lipof for the purpose of aesthetics (Ans.
3)) would not have been obvious because: (1) Lipof is not a privacy screen,
and thus the modification would render Lipof’s screen system unsuitable for
its intended purpose (Reply Br. 7) and change its principle of operation
(Reply Br. 9); (2) there is no suggestion or motivation to make the proposed
combination (Reply Br. 8); (3) the combination is redundant because Neer
already discloses “a Lipof-type screen enclosure” (App Br. 6; Reply Br. 11);
(4) Neer teaches away from the combination because all alternatives taught
by Neer are contrary to the claimed invention (App. Br. 9; Reply Br. 14); and
(5) the proposed combination of Lipof and Neer fails to disclose “screening
with said pattern of colored pigments fastened within at least one of the
plurality of fully enclosed frame openings of said frame,” as called for in
claim 1, and both patents teach away from such (App. Br. 10; Reply Br. 15).

DISCUSSION
Appellant’s statement that Lipof “never mentions privacy” (App. Br.
5) is consistent with our own findings. See Lipof, col. 3, l. 18 (merely
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nominally describing the “screens 32,” but not providing any details
thereof).
Nevertheless, Appellant’s arguments that the proposed combination of
Lipof and Neer would render Lipof unsuitable for its intended purpose, and
change its principle of operation, are not well founded. These arguments are
premised primarily on the mistaken notion that an object of Lipof’s screen
enclosure is to provide similar visibility through the screening to a person on
either side of the screening. See Reply Br. 6. Lipof lists several objects of
the screen enclosure, the principal one of which is to provide a screen
enclosure with structural members constructed in a manner to reduce the
cost of the structural members, and another of which is to provide a screen
enclosure with structural members that are economical and simple to
fabricate. Col. 1, ll. 11-36. Notably, Lipof does not list as one of its
objectives providing similar visibility through the screening to a person on
either side of the screening. See id. Thus, the modification proposed by the
Examiner would not render the Lipof screen enclosure unsuitable for its
intended purpose, or change its principle of operation.
While the Supreme Court has stated that a rigid insistence on
teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007), in this case, Neer provides sufficient motivation for the proposed
combination. Specifically, Neer recognizes that a shortcoming of
conventional monochromatic screening is that it does not provide privacy
from onlookers looking through the screening, and proposes the decorative
pattern as an artistic and visually pleasing solution to that problem. Neer,
col. 3, ll. 17-40; col. 5, ll. 26-31. Neer’s solution preserves the ability of the
homeowner to look out through the screen at the surrounding scenery while
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simultaneously greatly limiting the ability of persons on the outside to see
through the screen into the enclosed area. Neer, col. 3, ll. 36-40. A person
of ordinary skill in the art would have been prompted by the teachings of
Neer to provide such visually pleasing privacy patterns on the screens of
Lipof’s screen enclosure in order to gain those same advantages. The
modification proposed by the Examiner is nothing more than the mere
application of a known technique to a piece of prior art ready for the
improvement. See KSR, 550 U.S. at 417.
While it is not entirely clear to us what Appellant means by the
terminology “Lipof-type screen enclosure,” we find nothing in Neer’s
teachings of various alternative attachment methods which would either
render redundant or teach away from the application of Neer’s artistic
privacy patterns to Lipof’s screen enclosure. Simply that there are
differences between two references is insufficient to establish that such
references teach away from any combination thereof. See In re Beattie, 974
F.2d 1309, 1312-13 (Fed. Cir. 1992). Further, prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). While Neer may disclose attachment methods which differ
from that of Lipof, Neer in no way criticizes, discredits, or otherwise
discourages the use of the artistic privacy patterns on screening for an
enclosure of the type described by Lipof.
Incorporation of the pattern of colored pigmentation as taught by Neer
(Neer, col. 4, ll. 60-65; col. 6, ll. 57-63) into the screen system of Lipof, as
proposed by the Examiner, would involve providing a screen 32 of Lipof
within at least one of the enclosed frame openings (defined by any four of,
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for example, an upstanding corner column A, chair rail R, load bearing
column C, floor plate F, side wall column B, roof perimeter beam T, rafter S,
and purlin P). See Lipof, fig. 1. This would satisfy the claim limitation
“screening with said pattern of colored pigments fastened within at least one
of the plurality of fully enclosed frame openings of said frame,” alleged by
Appellant to be lacking in the combination. Thus, the Examiner correctly
concluded that the combination of Lipof and Neer would have rendered
obvious the subject matter of claim 1, including the limitation in question.

CONCLUSION
The combined teachings of Lipof and Neer would have rendered
obvious the subject matter of claim 1, including “screening with said pattern
of colored pigments fastened within at least one of the plurality of fully
enclosed frame openings of said frame.”

DECISION
For the above reasons, the Examiner’s decision 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)(1)(iv).

AFFIRMED
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hh

DOUGLAS J. VISNIUS
2519 ST. HEATHER WAY
ORLANDO, FL 32806