Ex Parte Mueller

Board of Patent Appeals and Interferences

Mar 11, 2009

10130073 (B.P.A.I. Mar. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL MUELLER
____________

Appeal 2008-3207
Application 10/130,073
Technology Center 3600
____________

Decided:1 March 11, 2009
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Michael Mueller (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 17, 20-23, 25-28, and 31-34. Claims
1-16, 18, 19, 24, 29, and 30 have been canceled. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a license plate provided
with both a luminous sheet and reflecting means so as to combine the
advantages of a self-illuminating license plate with the legal requirements of
reflectivity. Specification 1:19-20 and 2:1-4.
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A license plate, comprising:
an upper side configured to face an observer
in a mounted state;
a lower side configured to face away from
the observer in the mounted state;
an electroluminescent sheet; and
a retroreflective arrangement arranged as at
least one separate layer on the electroluminescent
sheet.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Onksen US 3,064,378 Nov. 20, 1962
Hoffman US 5,339,550 Aug. 23, 1994
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Thorp US 6,168,876 B1 Jan. 2, 2001
Gall US 6,324,778 B1 Dec. 4, 2001
McKenzie US 6,385,876 B1 May 14, 2002

Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 17, 20-23, 25, 27, and 31-33 as being unpatentable over
Hoffman and Thorp; claim 26 as being unpatentable over Hoffman, Thorp,
and Gall; claim 28 as being unpatentable over Hoffman, Thorp, and
McKenzie; and claim 34 as being unpatentable over Hoffman, Thorp, and
Onksen.

SUMMARY OF DECISION
We AFFIRM.
ISSUES
In contesting the rejection of claims 17, 20-23, 25, 27, and 31-33 as
being unpatentable over Hoffman and Thorp, Appellant argued that neither
Hoffman nor Thorp discloses a “license plate” and, therefore, the
combination of Hoffman and Thorp fails to render unpatentable the present
claims. Appeal Br. 4-5. Appellant additionally argued that because
Hoffman teaches mounting a sign on the inside surface of the automobile
window, the sign need not be weatherproofed, thereby teaching away from
the proposed combination and the claimed subject matter. Appeal Br. 5. In
response, the Examiner pointed out that the rejection is based on the
embodiment of Figure 8 of Hoffman, wherein the sign is mounted to a
license plate bracket of a motor vehicle. Answer 7. Appellant also argued
that the Examiner’s articulated reason for the combination of Hoffman and
Thorp is flawed, because nothing in the record or in Hoffman discloses or
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suggests that a mere illuminated sign, as disclosed by Hoffman, requires a
fail safe feature. Reply Br. 2. Appellant has not presented any arguments
for patentability of any of claims 17, 20-23, 25, 27, and 31-33 apart from the
other claims. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii)
(2008), we select claim 17 as the representative claim, with the remaining
claims in the group standing or falling with claim 17.
In contesting the rejections of claims 26 and 28, Appellant merely
argued that the Examiner did not rely on Gall or McKenzie for any teaching
that would remedy the perceived deficiency in the combination of Hoffman
and Thorp. Appeal Br. 7-8.
In contesting the rejection of claim 34, Appellant further argued that
the combination of Hoffman, Thorp, and Onksen does not disclose, or even
suggest, the use of both an electroluminescent sheet and a light source
mounted above the license plate. Appeal Br. 8. According to Appellant,
none of Hoffman, Thorp, and Onksen discloses or suggests that an
electroluminescent sheet alone is not sufficient to illuminate the license plate
or that the concurrent use of an electroluminescent sheet and a light source
mounted above the license plate is more effective in illuminating the plate
than either light source individually. Id.
In light of the above, the issues presented for our review are:
(1) Has Appellant demonstrated the Examiner erred in determining that
the combination of Hoffman and Thorp renders the subject matter of
claim 17 obvious? This issue turns on whether Hoffman’s sign of the
Figure 8 embodiment can reasonably be considered a “license plate”
and on whether the Examiner has provided reasoning with rational
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underpinning for combining the retroreflective feature of Thorp with
the electroluminescent sheet feature of Hoffman.
(2) Has Appellant demonstrated error in the Examiner’s rejections of
claims 26 and 28? This issue also turns on whether Hoffman’s sign of
the Figure 8 embodiment can reasonably be considered a “license
plate” and on whether the Examiner has provided reasoning with
rational underpinning for combining the retroreflective feature of
Thorp with the electroluminescent sheet feature of Hoffman.
(3) Has Appellant demonstrated that the Examiner erred in determining
that the combination of Hoffman, Thorp, and Onksen renders obvious
a license plate illuminated by an electroluminescent sheet mounted to
a motor vehicle such that a light source is mounted above the license
plate, as required in claim 34?

FACTS PERTINENT TO THE ISSUES
FF1 It was known in the art at the time of Appellant’s invention to provide
license plates with a self-illuminating feature. Specification 1:12-16.
FF2 It was not only known, but required by legislation, at the time of
Appellant’s invention, to provide license plates with a certain
reflectivity. Specification 1:19-22.
FF3 Appellant’s contribution is improving the known self-illuminating
license plate by providing the luminous sheet with a reflecting means,
so as to combine the advantages of a self-illuminating license plate
with the legally required reflectivity. Specification 2:1-4.
FF4 Appellant does not define “license plate” in the Specification. Nor
does Appellant’s Specification provide any indication that “license
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plate” is used in the present application in a manner that differs from
its ordinary and customary meaning.
FF5 A “license plate” is ordinarily understood to be a plate, adapted to be
mounted to a conventional bracket onto the rearwardly facing body
panel or bumper of a motor vehicle, bearing some sort of indicia, such
as an alphanumeric string used to identify the vehicle, which
alphanumeric string may be any combination of letters, numbers, and
symbols and which, in the case of a vanity plate, may be an
alphanumeric string that has special significance to the owner of the
vehicle.
FF6 Hoffman discloses an illuminated sign “adapted specifically to be
mounted to the license plate bracket 72 of a motor vehicle 70, at
which a license plate is conventionally mounted.” Hoffman, col. 5, ll.
18-21; Figure 8.
FF7 Hoffman’s illuminated sign includes an indicia-bearing member 18.
Hoffman, col. 5, ll. 27-28; Figure 8. The indicia illustrated in Figure 8
of Hoffman is the alphanumeric string “FSU,” which may have
special significance to the owner of the vehicle, such as the acronym
of the owner’s college.
FF8 Hoffman’s illuminated sign includes a backing plate 10; an
electroluminescent lamp 12, which takes the form of a sheet, as
illustrated in Figure 8, mounted to the backing plate 10; the indicia-
bearing member 18 placed over the lamp 12; a transparent panel 76
between the lamp 12 and the indicia-bearing member 18; and a
transparent cover panel 74. Hoffman, col. 5, ll. 24-31 and Fig. 8.
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FF9 In the Figure 8 embodiment, Hoffman’s backing panel 10, transparent
panel 76, and cover panel 74 are each substantially identical in size
and shape to conventional license plates, that is, 12 inches wide by 6
inches high. Hoffman, col. 5, ll. 33-37.
FF10 In light of our findings FF6 through FF9, the illuminated sign of
Hoffman’s Figure 8 embodiment is a “license plate.” See FF4, FF5.
FF11 Thorp teaches providing “a backlighted structure that combines the
properties of fluorescence, retroreflectivity and electroluminescence
in a single device whereby both daytime and nighttime visibility are
markedly improved.” Thorp, col. 2, ll. 36-40. Hoffman’s composite
structure overcomes the deficiency of prior known
electroluminescent-backed films by providing reflectivity from
incident light, such as automobile headlights, in the event of electrical
power failure, with the addition of a retroreflective film to provide a
“fail safe” feature. Thorp, col. 2, ll. 47-52.
FF12 A person of ordinary skill in the art would have understood that
license plates are intended to be visible and legible both during the
day and at night. Indeed, Hoffman’s sign would not be illuminated if
it were not intended to be visible and legible at night.
FF13 Appellant admits that a conventional license plate illumination system
at the time of Appellant’s invention included lamps mounted above
the license plate. Specification 5:20-28.
FF14 Onksen shows that it was well known at the time of Appellant’s
invention to provide a lamp assembly in the rearwardly presented
body panel of an automotive vehicle above the license plate for the
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purpose of illuminating the license plate. Onksen, col. 2, ll. 45-51;
Figure 1.
FF15 Onksen corroborates the Examiner’s finding (Answer 8) that
legislatures have mandatory specifications for such illumination.
Onksen, col. 1, ll. 24-25.

PRINCIPLES OF LAW
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id., at ___, 127 S. Ct. at 1740. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
Common sense teaches . . . that familiar items may
have obvious uses beyond their primary purposes,
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and in many cases a person of ordinary skill will
be able to fit the teachings of multiple patents
together like pieces of a puzzle. . . . A person of
ordinary skill is also a person of ordinary
creativity, not an automaton.
Id. at ___, 127 S. Ct. at 1742. Moreover, an artisan must be presumed to
know something about the art apart from what the references disclose. See
In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).

ANALYSIS
Appellant’s arguments do not demonstrate error in the rejection of
claim 17. As shown in our findings above, the illuminated sign of
Hoffman’s Figure 8 embodiment is a “license plate.” Moreover, the
illuminated sign of Hoffman’s Figure 8 embodiment satisfies all of the
limitations of claim 17, with the exception of a retroreflective arrangement.
The Examiner determined that it would have been obvious to a person of
ordinary skill in the art to provide the license plate of Hoffman with a
retroreflective layer, as taught by Thorp, to provide a “fail safe” means of
illumination in case of a failure of the electroluminescent sheet. Answer 3.
For the reasons that follow, the Examiner’s reasoning has rational
underpinning to support the legal conclusion of obviousness.
Thorp teaches improving electroluminescent structures by providing
reflectivity from incident light, such as automobile headlights, in the event
of electrical power failure, with the addition of a retroreflective film to
provide a “fail safe” feature. A person of ordinary skill in the art would
have understood that license plates, when mounted on rearwardly facing
body panels or bumpers of motor vehicles, are intended to be visible and
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legible both during the day and at night and further that license plates are
required to have a certain reflectivity. Such a person thus would have
readily recognized that the addition of a retroreflective film to Hoffman’s
license plate (the illuminated sign of the Figure 8 embodiment) would
improve Hoffman’s license plate in the same manner taught by Thorp,
namely, by providing a “fail-safe” feature in the event of loss of electrical
power to, or failure of, the electroluminescent lamp 12 of Hoffman’s license
plate and, moreover, would satisfy the reflectivity requirement mandated by
legislatures. We agree with the Examiner that the modification would have
been obvious.
Appellant’s argument with respect to Hoffman’s illuminated sign
being mounted on an inside surface of the automobile window is not
persuasive of error in the Examiner’s rejection, because the argument is not
directed to the embodiment relied upon by the Examiner in making the
rejection, and because weatherproofing is not a requirement of claim 17.
Appellant’s arguments regarding claims 26 and 28, which rely solely
on the perceived deficiencies of the combination of Hoffman and Thorp
discussed above, likewise have not demonstrated error in the Examiner’s
rejections of claims 26 and 28.
As shown by our findings above, a person of ordinary skill in the art
would have understood that a conventional license plate mounting
arrangement on a conventional rearwardly facing body panel or bumper of
an automotive vehicle includes a lamp assembly mounted above the license
plate bracket. While the additional illumination provided by the
conventional lamp assembly mounted above the license plate bracket may be
redundant to the illumination provided by the electroluminescent lamp 12 of
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Hoffman’s license plate, a person of ordinary skill in the art practicing the
invention disclosed in Hoffman’s Figure 8 embodiment would have found
no reason to dismantle or remove the pre-existing, required lamp assembly
on the rearwardly facing body panel or bumper. Therefore, Appellant’s
argument does not demonstrate that the Examiner erred in determining that
the combination of Hoffman, Thorp, and Onksen renders obvious a license
plate illuminated by an electroluminescent sheet mounted to a motor vehicle
such that a light source is mounted above the license plate, as required in
claim 34.

CONCLUSIONS OF LAW
(1) Hoffman’s sign of the Figure 8 embodiment can reasonably be
considered a “license plate.” Further, the Examiner has provided
reasoning with rational underpinning for combining the retroreflective
feature of Thorp with the electroluminescent sheet feature of
Hoffman. Therefore, Appellant has not demonstrated the Examiner
erred in determining that the combination of Hoffman and Thorp
renders the subject matter of claim 17 obvious.
(2) Appellant likewise has not demonstrated error in the Examiner’s
rejections of claims 26 and 28.
(3) Appellant has not demonstrated that the Examiner erred in
determining that the combination of Hoffman, Thorp, and Onksen
renders obvious a license plate illuminated by an electroluminescent
sheet mounted to a motor vehicle such that a light source is mounted
above the license plate, as required in claim 34.

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In light of the above, Appellant has not persuaded us that the
Examiner’s decision to reject claims 17, 20-23, 25-28, and 31-34 should be
reversed.

DECISION
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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