Ex Parte Singer

Patent Trial and Appeal Board

Feb 23, 2017

13249295 (P.T.A.B. Feb. 23, 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.
13/249,295 09/30/2011 Charles Howard Singer 1164
70816 7590 02/23/2017
RirharH M Rlank
EXAMINER
19 Ledge wood Commons
Millwood, NY 10546
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
02/23/2017 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 CHARLES HOWARD SINGER
Appeal 2015-0052801
Application 13/249,2952
Technology Center 3600
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
17—21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our Decision considers Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 15, 2013) and Reply Brief (“Reply Br.,” filed Apr. 30, 2014, as well as
the Examiner’s Final Office Action (“Final Act.,” mailed May 29, 2013) and
Answer (“Ans.,” mailed Mar. 12, 2014).
2 Appellant identifies Photo File, Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2015-005280
Application 13/249,295
CLAIMED SUBJECT MATTER
The claimed invention “relates to a picture frame that can be used to
both display and store pictures.” Spec. 1:7—8. Claim 17, reproduced below,
is the sole independent claim on appeal and is representative of the claimed
subject matter:
17. A picture frame, comprising: a front surface with a
viewing window that includes open space or transparent material
for displaying a picture; a storage section with an open top for
storing additional pictures, the storage section being attached to
the front surface, the storage section not being visible when
viewing the displaying surface from the front; a removable
partition for separating the displayed pictures from pictures in the
storage section and for holding in place the forward most pictures
in the viewing window, the storage section containing removable
divider tabs for labeling, identifying, organizing, and separating
stored pictures; an attached means for exhibiting the frame, the
means for exhibiting the frame being an easel frame to allow the
fame [sic] to stand on its own; and a recess or hanging hardware
on the frame’s back for the purposes of hanging up the frame.
Appeal Br., Claims App.
REJECTIONS
Claims 17—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kurata (JP 11-348482 A, pub. Dec. 21, 1999)3, Tran (US 6,202,838 Bl,
iss. Mar. 20, 2011), andHosker (US 4,117,613, iss. Oct. 3, 1978).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kurata, Tran, Hosker, and Teller (US 2,839,857, iss. June 24, 1958).
3 We consider the Figures of Kurata, as well as the English language,
machine translation of Kurata provided by Appellant. Appeal Br. 11
(providing a link to an English translation of Kurata).
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Appeal 2015-005280
Application 13/249,295
ANALYSIS
The Examiner determines that it would have obvious to modify the
photograph case taught by Kurata to include the foldable stand taught by
Tran or the easel stand taught by Hosker “to provide a means to support the
case in display orientation.” Final Act. 3. In the Answer, the Examiner
expounds upon the reason for combining the teachings of Kurata, Tran, and
Hosker and finds:
adding an easel allows the viewing angle of the front surface to
be changed from vertical to “a comfortable [,] near vertical”
angle. Specifically, although the bott[om] surface 15 of the
photograph case 12 taught by Kurata is wide enough to support
the front surface 16 in a vertical orientation, adding an easel
allows the viewing angle of the front surface 16 [of Kurata’s]
photograph case to be held at an incline orientation[,] thereby
making [the front surface 16] more comfortable to view.
Ans. 6—7 (referencing Hosker 2:29—30).
Appellant argues that “[s]uch an arrangement would be both unstable,
if at all physically possible, due to the weight of the box tending to return to
standing upright, and esthetically displeasing to view.” Reply Br. 11.
Appellant’s argument calls into question the Examiner’s reason for
combining the teachings of Kurata, Tran, and Hosker, and we determine that
the Examiner’s reason lacks rational underpinning.
As Appellant points out (Appeal Br. 10; Reply Br. 9), the shape of
Kurata’s photograph case enables the case to stand on its own without the
need for a stand. See, e.g., Kurata, Figs. 1—3. Indeed, Kurata teaches a
photograph case having a depth sufficient to store a plurality of photographs
therein such that the photograph case can act as both a photo frame and an
album. Kurata 5, 18, Figs. 2—3.
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Appeal 2015-005280
Application 13/249,295
Tran discloses a photo album case 10 including a shell 14 for
receiving photo album 12 therein. Tran 4:45—47, Fig. 2. Unlike Kurata,
however, Tran’s photo album case is shaped so that its height is greater than
its depth, and Tran teaches a leg 98 on back wall 28 of shell 14 to support
the case in an upright disposition. Id. at 8:46—62, Fig. 14.
Hosker teaches a box-like structure having a top panel in which
picture-framing openings are formed. Hosker 1:36—38, Fig. 1. Similar to
Tran, Hosker’s box-like structure has a height greater than the depth and
uses an easel mount 16 to support the display in a free-standing position at a
comfortable viewing angle near vertical. Id. at 2:28—31, Fig. 2.
Although Kurata, Tran, and Hosker fail to describe with particularity
the dimensions of the respective photograph cases, there are notable
differences in the shapes of the cases, as shown in the Figures. Infra. Each
of the photograph displays of Tran and Hosker is shaped so that a stand
mounted to the back of the case enables the case to be positioned at a near
vertical angle. In contrast, Kurata’s photograph case has a significant depth
for storing a plurality of photographs therein, and Kurata’s case displays
photographs at a vertical angle without the use of stand. Kurata, Figs. 1—3.
The Examiner, however, does not address these differences in shape or how
the differences in shape correlate to the use of a stand to position the case at
a near vertical angle. Thus, we agree with Appellant that it is unclear how
modifying Kurata’s photograph case to include a stand on the back, as taught
by Tran or Hosker, would result in the front surface of the case being at a
near vertical angle. Reply Br. 11. Further, if the Examiner is proposing to
use the stand in a manner other than disclosed in Tran or Hosker (i.e.
mounted to the back of a display), the Examiner has not provided such an
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Appeal 2015-005280
Application 13/249,295
explanation. Given that the Examiner has not adequately described how the
combined teachings of Kurata, Tran, and Hosker would provide a display
surface at a near vertical angle, the Examiner’s reason for adding the stand
of Tran or Hosker to Kurata’s photograph case, namely to provide a more
comfortable near vertical viewing angle (Ans. 6—7), lacks adequate rational
underpinning.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 17 and claims 18—20 depending therefrom. The
Examiner’s rejection of claim 21 suffers from the same deficiency, and we
similarly do not sustain the rejection of claim 21.
DECISION
The Examiner’s rejections of claims 17—21 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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