Ex Parte McKee et al

Patent Trial and Appeal Board

Feb 16, 2017

13182877 (P.T.A.B. Feb. 16, 2017)

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.
13/182,877 07/14/2011 Paul McKee 507993 7236
53609 7590 02/21/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
RODDEN, JOSHUA E
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
02/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL MCKEE and WARREN SLABAUGH
Appeal 2015-005127
Application 13/182,877
Technology Center 3600
Before ANNETTE R. REIMERS, JEREMY M. PLENZLER, and
ERIC C. JESCHKE, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul McKee and Warren Slabaugh (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 103(a): (1) claims 1—8 and 10—14 as unpatentable over Mudrick (US
7,921,032 Bl; iss. Apr. 5, 2011), Lenticularpromo.com,1 and Kapkin (US
2004/0252378 Al; pub. Dec. 16, 2004); and (2) claim 9 as unpatentable over
Mudrick, Lenticularpromo.com, Kapkin, and Perry (US 1,424,587; iss. Aug.
1 “Key Chain with Lenticular Flip Effect,” Lantor, LTD, Oct. 24, 2010 at
https://www.Lenticularpromo.com, and “2 x 2” “Square Zipper Pull,” Lantor,
LTD, Nov. 26, 2010 at https://www.Lenticularpromo.com (hereinafter
“Lenticularpromo .com”).
Appeal 2015-005127
Application 13/182,877
1, 1922). Claims 15—22 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “tag style souvenirs and hanging
displays for tag style souvenirs.” Spec. para. 2, Figs. 1, 14.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A lenticular tag display system, the system comprising:
a display structure having an axis of rotation, further
comprising a plurality of support members; and
at least one set of lenticular tags, comprising a first plurality
of tags, each tag removably attached to a support member, and
each tag comprising:
a first lenticular image including at least a first and a
second image, the first lenticular image having an axis of
lenticulation about which rotation of the first lenticular image
relative to a viewer of the tag changes which one of the first and
second images is viewed by the viewer, and wherein each tag is
oriented such that its axis of lenticulation aligns parallel to the
axis of rotation of the display structure.
ANALYSIS
Obviousness over Mudrick, Lenticularpromo.com, andKapkin
Claims 1—8 and 10 14
Appellants do not present arguments for dependent claims 2—8 and
10-14 separate from those presented for independent claim 1. See Appeal
Br. 5—12. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 2—8 and 10—14 stand or fall with claim 1.
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Application 13/182,877
Appellants contend that “the Examiner relies upon hindsight
reasoning to solve a non-existent problem.” Reply Br. 5; see also Appeal
Br. 5—7, 10. In particular, Appellants contend that “Mudrick teaches various
souvenirs with a flashing display, which would objectively appear to be
more attention-grabbing than a lenticular display.” Reply Br. 5; see also
Appeal Br. 6—7, 10. As such, Appellants conclude that “modifying Mudrick
to use a lenticular display [as proposed by the Examiner] would not
reasonably be considered as making the display more attention grabbing.”
Reply Br. 5; see also id. at 6; Appeal Br. 6—7, 10. Essentially, Appellants
allege non-obviousness in hanging a known type of tag on a known display
structure.
At the outset, Appellants’ argument regarding the flashing display of
Mudrick “objectively appear[ing] to be more attention-grabbing than a
lenticular display” (see Reply Br. 5) is not persuasive because it amounts to
unsupported attorney argument, and thus is entitled to little, if any, weight.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (arguments and
conclusions unsupported by factual evidence carry no evidentiary weight).
In this case, as pointed out by the Examiner, Appellants acknowledge that “it
was a well known” in the souvenir art “to use ‘lenticular images’ to make
something more attention grabbing.” Ans. 4; see also Spec. para. 4
(emphasis added) (“Using lenticular images on souvenirs is one way to make
those items more attractive to potential customers.”). Further, the Examiner
provides reasoning based on rational underpinnings as to why a lenticular
display as described in Lenticularpromo.com is an improvement over the
flashing display of Mudrick. See Ans. 7. In particular, the Examiner points
out that the flashing display of Mudrick is “solar powered.” Id. (citing
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Application 13/182,877
Mudrick, 3:66—67). The Examiner reasons that “[s]olar power and solar
panels are known to be unreliable depending on where they are used, such as
in areas which are prone to being cloudy and light deficient.” Ans. 7. The
Examiner concludes that a skilled artisan “would realize that a lenticular
image provides an eye catching image which is reliable and does not depend
on power from a power supply (the sun in the case of Mudrick) which is not
always reliable or available.” Id. Appellants do not apprise us of error in
the Examiner’s findings or conclusions. See Reply Br. 5—7.
Appellants address the Examiner’s finding that lenticular displays are
“more easily viewed ... at specific angles” whereas, liquid crystal displays
have “visibility issues . . . when viewed at specific angles” by contending
that “lenticular displays are only visible [at] certain specific angles, and the
eye-catching feature of lenticular displays require the consumer to view the
product at different angles, unlike liquid crystal displays.” See Ans. 8; see
also Reply Br. 6; Appeal Br. 7, 10-12. However, Appellants do not address
the Examiner’s finding that liquid crystal displays “have visibility issues
when viewed at varying levels of light [i.e., the solar powered liquid crystal
displays of Mudrick when viewed in sun lit areas versus cloudy/light
deficient areas or] at a distance.” See Ans. 8; see also id. at 7; Reply Br. 5—
7.
Appellants contend that modifying Mudrick with
Lenticularpromo.com would change the principle of operation of Mudrick.
See Appeal Br. 9; see also Reply Br. 6. In particular, Appellants contend
that the principle of operation of Mudrick “utilizes a solar powered flashing
of the screen that alternates between transparent and opaque such that an
underlying image is visible or covered in a manner that produces a flashing
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Application 13/182,877
optical appearance based on a solar powered controller” and that “[t]he
principle of operation of the Mudrick device in no way relies on relative
motion between the potential purchaser and the product on display.” Appeal
Br. 9; see also Reply Br. 6. According to Appellants, “the proposed
combination proposes modifying [Mudrick’s] teaching to include a
lenticular image which does not provide any flashing, requires no electrical
power, and is not controlled by a controller.” Appeal Br. 9. As such,
Appellants conclude that “it is clear that changing from a solar powered
flashing display to a lenticular image is a change in the principle of
operation for providing the eye catching optical appearance for a name
program.” Id.
In this case, we agree with the Examiner that “replacing the flashing
display of Mudrick with the lenticular images ofLenticularpromo.com”
“would not destroy the principle operation of the device of Mudrick, but
would rather allow the operation of the Mudrick [device] to be performed in
a different manner (lenticular imagery instead of flashing imagery).” See
Ans. 5; see also Advisory Act. 5 (mailed July 14, 2014). We further agree
with the Examiner that modifying Mudrick with Lenticularpromo.com
would “continue to provide the same function of ‘providing the eye catching
optical appearance for a name program.’” See Ans. 5 (emphasis omitted).
Appellants do not apprise us how the operation of Mudrick’s device in a
different manner (i.e., lenticular imagery instead of flashing imagery) would
“eliminat[e] those features which are the primary basis of [Mudrick’s]
device’s desirability [i.e., “act[ing as] a consumer attractant to increase
sales”].” See Reply Br. 7; see also id. at 6; Appeal Br. 9—10; Ans. 5;
Advisory Act. 5. Moreover, Appellants do not apprise us how replacing the
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“unreliable or problematic” “solar-powered” liquid crystal displays of
Mudrick with the lenticular displays ofLenticularpromo.com “would change
the principle of operation of the device taught by Mudrick.” See Reply Br.
6—7; see also Ans. 7—8.
Appellants contend that “to the extent that the Examiner is suggesting
that the name label affixed to the backside of the liquid crystal display [of
Mudrick] be replaced with a lenticular image” as taught by
Lenticularpromo.com and Kapkin, “there is also no reasonable expectation
of success that such lenticular images can be viewed with movement as
enabled by such lenticulation because of the flashing nature of the liquid
display screen.” Appeal Br. 12; see also Reply Br. 7.
As discussed above, the Examiner is proposing to replace the flashing
images of Mudrick with the lenticular images ofLenticularpromo.com. See
Ans. 5; see also Advisory Act. 5 (emphasis added) (“lenticular imagery
instead o/ flashing imagery”). Further, the Examiner’s proposed
modifications to Mudrick do not appear to be uniquely challenging, and
Appellants have not explained with any specificity why a person of ordinary
skill in the art would not have had an expectation of success in making the
proposed modifications. See Appeal Br. 12; see also Reply Br. 7; Ans. 5, 9;
Advisory Act. 4—5; In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)
(noting that all that is required is a reasonable expectation of success, not
absolute predictability of success).
Moreover, Appellants do not provide any evidence or argument
sufficient to show that the proposed modifications would have been beyond
the level of ordinary skill in the art. Neither do Appellants provide any
persuasive evidence or argument sufficient to show that the proposed
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modifications would have been more than a predictable use of the prior art
elements according to their established functions. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability.” Id. at 417.
Appellants contend that “the combination of Mudrick,
Lenticularpromo.com, and Kapkin fail to teach all of the limitations of any
of the rejected claims.” Reply Br. 7; see also Appeal Br. 8. In particular,
Appellants contend that “Kapkin contains no disclosure or teaching of an
axis of lenticulation. Further, Kapkin does not teach an axis of lenticulation
that aligns parallel to the axis of rotation of the display structure.” Appeal
Br. 8 ; see also Reply Br. 7.
At the outset, the Examiner points out that “Kapkin is only being used
to show that it is common to have a horizontal orientation for a lenticular
image. The retail aspect of the display system is taught by the prior art
devices of both Mudrick and Lenticularpromo.com.” Advisory Act. 4.
Further, in response to Appellants’ argument, the Examiner finds and
concludes:
Kapkin show[s] vertical ridges (11 as seen in Annotated Figure
1 of Kapkin Below), wherein these vertical ridges (11) are well
known in the prior art to inherently allow a lenticular image (22)
to function to change images when the lenticular image (22) is
moved from positions (A)-(C) about a vertical axis which is
parallel to the vertical ridges (11) and which is also perpendicular
to a horizontal plane/ground surface. Therefore, when the
lenticular images ofLenctiularpromo.com and Kapkin are hung
from the support members (hooks) of Mudrick, the images will
be oriented horizontally (as seen in the images of both the statue
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Application 13/182,877
of liberty and the bald eagle ofLenticularpromo.com and the bird
as seen in Figure 1 of Kapkin) and will rotate about a vertical
axis (as taught by Kapkin), and wherein the vertical axis of the
Lenticular images of Lenticularpromo.com and Kapkin will
naturally be parallel (when attached to the support members of
Mudrick) to the vertical rotating axis of the display of Mudrick
and perpendicular to a horizontal plane/ground surface.
Ans. 9; see also id. (providing the Examiner’s annotated version of Kapkin’s
Figure 1). The Examiner’s findings and conclusions are supported by the
record and based on rational underpinnings, respectively. Appellants do not
provide persuasive evidence or argument apprising us of error in the
Examiner’s findings or conclusions. See Reply Br. 7.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Mudrick,
Lenticularpromo.com, and Kapkin. We further sustain the rejection of
claims 2—8 and 10—14, which fall with claim 1.
Obviousness over Mudrick, Lenticularpromo.com, Kapkin, and Perry
Claim 9
Appellants contend that “[a]s claim 9 depends from claim 1, the
arguments set forth . . . with respect to claim 1, may also be applied [to] the
rejection of claim 9. The Perry reference . . . does not rectify any of the
deficiencies of Mudrick, Lenticularpromo.com, and Kapkin.” Appeal Br.
13.
For the reasons discussed above, we find no deficiencies in the
Examiner’s rejection of independent claim 1 as unpatentable over Mudrick,
Lenticularpromo.com, and Kapkin. As Appellants do not present any
arguments for claim 9 separate from those presented for claim 1, we likewise
sustain the Examiner’s rejection of claim 9 as unpatentable over Mudrick,
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Application 13/182,877
Lenticularpromo.com, Kapkin, and Perry.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1—14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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