Ex Parte Kroening

Board of Patent Appeals and Interferences

Sep 8, 2011

11029163 (B.P.A.I. Sep. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES L. KROENING
____________

Appeal 2010-000196
Application 11/029,163
Technology Center 3600
____________

Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James L. Kroening (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-16, 19, and 20. Claims 17 and 18
were withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
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The Invention
The claimed invention is to a method and apparatus for commercial
advertising on a vehicle roadway.
Claim 1 and 20, reproduced below, are illustrative of the subject
matter on appeal.
1. A method for commercial advertising on a
vehicle roadway comprising the steps of:
placing a visual commercial advertising
message on one or more roadway components
such that the visual commercial advertising
message is capable of falling within a field of view
of one or more of a driver and one or more
passengers in a vehicle, the field of view
associated with the roadway component during
operation of a vehicle; and
providing a cue to the visual commercial
advertising message, wherein the visual
commercial advertising message contains one or
more of: a horizontally placed message, a
vertically placed message, and wherein the cue
includes one or more of an audible cue, a visual
cue, and a tactile cue such that the visual
commercial advertising message is within the field
of view of the one or more of a driver and one or
more passengers in the vehicle when the cue is
received by the one or more of a driver and one or
more passengers in the vehicle.

20. An apparatus for commercial advertising
on a vehicle roadway comprising:
one or more roadway components;
a visual commercial advertising message
associated with at least one of the one or more
roadway components such that the visual
commercial advertising message is capable of
falling within a field of view of one or more of a
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driver and one or more passengers in a vehicle, the
field of view associated with the roadway
component during operation of a vehicle; and
a cue to the visual commercial advertising
message provided on another of the one or more
roadway components, wherein the visual
commercial advertising message contains one or
more of: a horizontally placed message, a
vertically placed message, and wherein the cue
comprises a modified surface associated with the
vehicle roadway such that when the vehicle is
traveling across the modified roadway surface, an
audible cue is provided.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Chapel US 1,526,742 Feb. 17, 1925
Wheeler US 2,457,512 Dec. 28, 1948
White US 3,102,352 Sep. 3, 1963
Schmanski US 4,249,832 Feb. 10, 1981
Adams US 4,790,684 Dec. 13, 1988
Reisman US 5,322,385 Jun. 21, 1994
Gort US 7,033,013 B2 Apr. 25, 2006

City of Elk River - Signs in Right-of-Way, www.ci.elk-river.mn.us, last
accessed Jul. 7, 2007.

The Rejections
The following Examiner’s rejections are before us for review:
Claim 20 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Ans. 3.
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Claim 19 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Reisman. Ans. 3.
Claims 1-4, 6, 7, 9-12, 14, 15, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wheeler. Ans. 4.
Claims 1-4, 6, 7, 9-12, 14, 15, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wheeler in view of Chapel or
White. Ans. 4-5.
Claims 1-4, 6, 7, 9-12, 14, 15, 19, and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wheeler in view of Reisman.
Ans. 5.
Claims 1-16, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Adams in view of Gort. Ans. 5-6.
Claims 1-16, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gort in view of Adams. Ans. 6.
Claims 5, 8, 13, and 16 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Wheeler, Wheeler/Chapel, Wheeler/White, or
Wheeler/Reisman and further in view of Schmanski. Ans. 6-7.

DISCUSSION
We have carefully reviewed the Examiner’s rejections in light of the
Appellant’s arguments and the Examiner’s response. As a result of this
review, we determine that the Examiner’s rejections under 35 U.S.C. § 112,
second paragraph, for claim 20, under 35 U.S.C. § 102(b) for claim 19,
under 35 U.S.C. § 103(a) over Wheeler in view of Reisman for claims 1-4,
6, 7, 9-12, 14, 15, 19, and 20, under 35 U.S.C. § 103(a) over Adams in view
of Gort or Gort in view of Adams for claims 1-16, 19, and 20, under 35
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U.S.C. § 103(a) over Wheeler/Reisman and further in view of Schmanski for
claims 5, 8, 13, and 16 are in error for the reasons given within the
Appellant’s Brief. We also determine that the Examiner’s rejections under
35 U.S.C. § 103(a) over Wheeler and Wheeler and Chapel or White for
claims 1-4, 6, 7, 9-12, 14, 15, 19, and 20 and Wheeler, Wheeler and Chapel
or White, and Schmanski for claims 5, 8, 13, and 16 are not in error. Our
reasons for such a determination follow.
Obviousness based on Wheeler alone
Given the Examiner’s position, the determinative issue for this ground
of rejection is whether the printed matter patentably distinguishes the
claimed invention from Wheeler.
Printed matter may patentably distinguish a claimed invention from
the prior art when the critical question of whether there is a new and
unobvious functional relationship between the printed matter and the
substrate is answered in the affirmative. In re Ngai, 367 F.3d 1336, 1338
(Fed. Cir. 2004). To show a new and unobvious functional relationship, it
has to be shown that the printed matter would not achieve its purpose
without the substrate and the substrate without the printed matter would
similarly be unable to produce the desired result. Id. at 1339.
Contrary to the Appellant’s belief, the substrate is neither the roadway
nor the associated cue. App. Br. 17. The substrate is the roadway
component that the visual commercial advertising message is placed upon.
See Claim App’x. (“placing a visual commercial advertising message on one
or more roadway components …. within a field of view . . . . of a driver . . .
in a vehicle . . . during operation of a vehicle”). Appellant has not
established that the printed matter would not achieve its purpose without the
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substrate and the substrate without the printed matter would similarly be
unable to produce the desired result. As such, Appellant has not shown a
new and unobvious functional relationship between the printed matter and
the substrate.
For the above reasons, we sustain the Examiner’s rejection of claim 1
as unpatentable over Wheeler alone. Appellant does not argue separately
claims 2-4, 6, 7, 9-12, 14, 15, 19, and 20 for this ground of rejection. Thus,
claims 2-4, 6, 7, 9-12, 14, 15, 19, and 20 fall with claim 1.
Obviousness based on Wheeler and Chapel or White
Claims 1-4, 6, 7, 9-12, 14, and 15
Appellant does not separately argue this set of claims for this ground
of rejection. We select claim 1 as representative.
The determinative issue for this set of claims within this ground of
rejection is whether the combined teachings of Wheeler and Chapel or White
teach the visual commercial advertising message being within the field of
view of one or more of a driver and one or more passengers in the vehicle
when the cue is received by the one or more of a driver and one or more
passengers in the vehicle. See App. Br. 18.
The Examiner and Appellant agree that the combined teachings of
Wheeler and Chapel or White would teach placement of the visual
commercial advertising message on the back of the stop sign meant for
oncoming traffic that is disclosed in Wheeler. Ans. 5 and App. Br. 18. We
concur and we additionally find that Wheeler’s figure 2 “is a plan view,
greatly reduced in scale of a highway intersection provided with signal
generating areas of the present invention.” Wheeler, col. 2, ll. 22-24. We
also find that Wheeler’s purpose is to provide a cue to inattentive drivers
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with audible and tactile signals. See Wheeler, col. 1, ll. 5-10 and col. 5, ll.
11-29.
The Appellant posits that since the advertisement is on the back of the
stop sign, then the cue from the “rumble strips” is not received at a time
when the advertisement is visible. Thus, Appellant concludes the
aforementioned element is missing from the combination of references.
App. Br. 18.
However, the Examiner explains that a person having ordinary skill in
the art when viewing Wheeler’s figure 2 would understand that the back of
the stop sign meant for traffic coming from the right would be visible to the
traffic coming from the left and we further find vice versa. Ans. 11. The
Examiner further finds that when combined with the advertising messages of
Chapel and White, the advertisements would be within the field of view
when the cue was provided. Id.
We agree with the Examiner’s findings of fact and analysis and the
comparison of such to the claim element in dispute. As shown in Wheeler’s
figure 2, vehicle E approaching from the left would cross the “rumble strips”
D which serve as the cue that the vehicle is approaching the left stop sign.
Wheeler teaches the cue intrudes into the driver’s consciousness as a
warning signal. The intrusion into the driver’s consciousness would cause
the driver to look in advance, i.e., down the road toward the intersection A.
Upon looking, the approaching stop sign would be in the driver’s field of
view. In addition, since the stop sign for the opposing lane of traffic is
proximate the intersection A, the back of that opposing stop sign would also
be within the driver’s field of view. As such, contemporaneously within the
driver’s field of view are both the stop sign and the back of the stop sign for
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the opposing lane of traffic. Since the combined teachings of Wheeler and
Chapel or White teach placement of advertising on the back of a stop sign
and generating a cue to signal the approach of an intersection,
contemporaneously within the driver’s field of view is the stop sign and the
back of the other stop sign having advertisements when the vehicle traverses
the “rumble strips” D. The claim language is not limited to having the
advertising message on the roadway component in the direction of the
traveling vehicle. All that is required is the advertising message be within
the field of view. As such, the combined teachings of Wheeler and Chapel
or White teach the visual commercial advertising message being within the
field of view of at least the driver in the vehicle when the cue is received by
the driver in the vehicle which satisfies the claim language as set forth in
claim 1.
For the above reasons, we sustain the Examiner’s rejection of claim 1.
Claims 2-4, 6, 7, 9-12, 14, and 15 fall with claim 1 since Appellant did not
argue these claims separately.
Claims 19 and 20
For the same reasons above, we sustain the Examiner’s rejection of
claim 19. Claim 20 falls with claim 19 since the Appellant did not argue
separately claim 20.
Obviousness based on Wheeler, Chapel or Wheeler, and Schmanski
Appellant does not separately argue claims 5, 8, 13, and 16 for this
ground of rejection. As such, we select claim 8 as representative since it
directly depends from claim 1.
In addition to incorporating Appellant’s previous arguments, which
have been addressed supra, Appellant rhetorically posits why one would
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desire to alert a driver to the presence of a jersey barrier via rumble strips.
App. Br. 21.
The determinative issue for obviousness in this case is not one of
desires. Rather, the determinative issue is whether the claim at issue is more
than a simple arrangement of old elements, with each element performing
the same function it had been known to perform, and which yields more than
a person having ordinary skill in the art would expect from such an
arrangement. In this case, claim 8 further limits claim 1 to include a
roadway component that at least includes a jersey wall. The Examiner found
providing the combination of Wheeler and Chapel or White with a jersey
wall modified with indicia as taught by Schmanski would not have required
any major reconfiguration of any element of the combination. Ans. 7. We
agree. From a review of the combined teachings of Wheeler, Chapel or
White, and Schmanski and comparing these teachings to the claim at issue,
we conclude that the claim at issue appears to be no more than simple
arrangement of old elements with each element performing the same
function it had been known to perform and which yields no more than a
person having ordinary skill in the art would expect from such an
arrangement. As such, we conclude claim 8 is obvious.
For the reasons above, we sustain the Examiner’s rejection of claim 8.
Claims 5, 13, and 16 fall with claim 8.

DECISION
The Examiner’s decision to reject claim 20 under 35 U.S.C. § 112,
second paragraph, is reversed.
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The Examiner’s decision to reject claim 19 under 35 U.S.C. § 102(b)
as being anticipated by Reisman is reversed.
The Examiner’s decision to reject claims 1-4, 6, 7, 9-12, 14, 15, 19,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Wheeler is
affirmed.
The Examiner’s decision to reject claims 1-4, 6, 7, 9-12, 14, 15, 19,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Wheeler in view
of Chapel or White is affirmed.
The Examiner’s decision to reject claim Claims 1-4, 6, 7, 9-12, 14, 15,
19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Wheeler in
view of Reisman is reversed.
The Examiner’s decision to reject claims 1-16, 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Adams in view of Gort or Gort
in view of Adams is reversed.
The Examiner’s decision to reject claim Claims 5, 8, 13, and 16 stand
rejected under 35 U.S.C. 103(a) as being unpatentable over Wheeler,
Wheeler and Chapel, or Wheeler and White and further in view of
Schmanski is affirmed.
The Examiner’s decision to reject claims 5, 8, 13, and 16 under 35
U.S.C. 103(a) as being unpatentable over Wheeler and Reisman and further
in view of Schmanski is reversed.
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) (2010).
AFFIRMED
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