Ex Parte Larsen et al

Patent Trial and Appeal Board

Aug 10, 2016

13445303 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/445,303 04/12/2012
8131 7590 08/10/2016
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
Eric E. Larsen
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.
MSH-725 7331
EXAMINER
TIJNGE, KRISTINA NS
ART UNIT PAPER NUMBER
3638
MAILDATE DELIVERY MODE
08/10/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ERICE. LARSEN and GEORGE F. LOESEL
Appeal2014-008928
Application 13/445,303 1
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-17, 27-33, and 36-59. Claims 18-26, 34, and
35 are cancelled. Br., Claims App. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, "[t]he inventor herein is the real party in
interest of the application being considered in this appeal." Br. 2.
Appeal2014-008928
Application 13/445,303
Claimed Subject Matter
Claims 1, 37, 48, and 56 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A non-insert magnetic sign, said sign comprising:
a. a first base plate having a bottom edge and a front
surface;
b. a second base plate having a top edge, a back surface,
and a front surface;
c. said first base plate and said second base plate each
having a magnetic coating on the front surface thereof;
d. a hinge connecting the first base plate and second base
plate, said hinge attached to the back surface at the
bottom edge of the first base plate and attached to the
front surface at the top edge of the second base plate;
e. the front surface of each base plate having at least one
attachment, said attachment selected from the group
consisting essentially of:
1. Letters,
11. numbers,
111. symbols, and,
1v. any combination of i., ii., and iii.
Rejections
I. Claims 1-3, 9-15, and 28-31 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Bartinelli (US 6,956,502 Bl,
iss. Oct. 18, 2005) and Healy (US 6,298,591 Bl, iss. Oct. 9, 2001).
II. Claims 4, 16, 17, 27, 32, 33, and 36 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Bartinelli and Healy as
applied to claim 1 above, and further in view of Condon (US
5,246,757, iss. Sept. 21, 1993).
III. Claims 5, 6, and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bartinelli and Healy as applied to claim 1 above,
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Appeal2014-008928
Application 13/445,303
and further in view of Peterson (US 2011/0047838 Al, pub. Mar. 3,
2011).
IV. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Bartinelli and Healy as applied to claim 1 above, and further in
view ofKemeny (US 4,722,146, iss. Feb. 2, 1988).2
V. Claims 37--42, 45, 46, and 48-54 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Meacham (US 2002/0078612
Al, pub. June 27, 2002).
VI. Claim 43 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Meacham as applied to claim 3 7 above, and further
in view of Dechamps (US 4,366,637, iss. Jan. 4, 1983).
VII. Claim 44 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Meacham as applied to claim 3 7 above, and further
in view of Falconbridge (US 3,455,044, iss. July 15, 1969).
VIII. Claims 47 and 55 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Meacham as applied to claims 37 and 48 above, and
further in view of Condon.
IX. Claim 56 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bartinelli.
X. Claim 57 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bartinelli as applied to claim 56 above, and further
in view of Falconbridge.
2 The Examiner identifies incorrectly the U.S. Patent Number to Kemeny as
"US 4,472, 146." Final Act. 7. The correct U.S. Patent Number to Kemeny
is US 4,722,146.
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Appeal2014-008928
Application 13/445,303
XL Claims 58 and 59 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bartinelli as applied to claim 56 above, and further
in view of Behling (US 4,999,938, iss. Mar. 19, 1991).
ANALYSIS
Rejections I-IV
The Appellants argue that Healy's coating is not a magnetic coating.
See Br. 4. The Appellants' argument is not persuasive. We agree with and
adopt as our own the findings and analysis set forth by the Examiner in the
Answer at page 3, lines 1-14. See also DICTIONARY.COM
UNABRIDGED ("magnetic," def. 3, "capable of being magnetized or
attracted by a magnet," http://www.dictionary.com/browse/magnetic (last
visited August 9, 2016)).
The Appellants argue that "Healy does not teach a magnetic sign with
a magnetic coating on two opposing surfaces" and that "Healy teaches
inserts, not magnetic held signs." Br. 4. The Appellants' argument is not
persuasive because the Examiner's rejection does not rely on Healy to teach
a magnetic coating on two opposing surfaces (see Ans. 2), rather the
Examiner's rejection relies on Healy to teach "a magnetic sign with a
magnetic coating on a surface." Final Act. 3. Additionally, we note that the
Examiner relies on Bartinelli' s disclosure along with legal reasoning to
satisfy the remainder of the requirements of independent claim 1. See Final
Act. 3 (citing In reJapikse, 181F.2d1019 (CCPA 1950)); Ans. 2 (citing
St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977)).
The Appellants also argue that Healy "cannot readily be joined with
Bartinelli to support a rejection based on obviousness." Br. 4. The
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Appeal2014-008928
Application 13/445,303
Appellants' argument is not persuasive as it fails to explain error in the
Examiner's articulated reasoning and rationale underlying the conclusion of
obviousness.
We have considered the remaining arguments in the Appeal Brief
directed to the rejection of independent claim 1 and have determined that
they are not persuasive. Thus, we sustain the rejection of claim 1 as
unpatentable over Bartinelli and Healy. We likewise sustain the rejections
of claims 2-17, 27-33, and, 36, which depend from claim 1, because the
Appellants do not provide further arguments for the rejections of these
claims.
Rejections V-VIII
The Appellants argue that:
As to independent claim 3 7, the appellant would note for the
examiner that the arguments set forth Supra for the rejection of
claim l apply equally well to this rejection which means that the
Healy reference is not combinable with either of the two
references to base a rejection on obviousness.
Br. 6. The Appellants' argument is not persuasive because it is incorrectly
premised on a notion that the rejection of claim 37 is based in part on Healy.
The Examiner rejects claim 37 under§ 103(a) as unpatentable over
Meacham. Stated otherwise, the Examiner only applies one reference for the
rejection of claim 37 and that reference is Meacham, not Healy. Thus, we
sustain the rejection of claim 37. We likewise sustain the rejection of
independent claim 48, which is not argued separately. We also sustain the
rejection of claims 38--47 and 49-55, which depend from claims 37 and 48,
respectively, because the Appellants do not provide further arguments for
the rejections of these claims.
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Appeal2014-008928
Application 13/445,303
Rejections IX-XI
The Appellants address the rejection of claim 56 by asserting that
"[t]he appellant would note that if an independent claim is nonobvious under
35 U.S.C. §103, then any claim depending therefrom is nonobvious." Br. 6
(citing In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)). The Appellants'
assertion is not persuasive because it is incorrectly premised on a notion that
claim 56 depends from a claim that is nonobvious. Thus, we sustain the
rejection of claim 56. We likewise sustain the rejections of claims 57-59,
which depend from claim 56, because the Appellants do not provide further
argument for the rejections of these claims.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-17, 27-33,
and 36-59.
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
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