Ex parte Smith et al.

Board of Patent Appeals and Interferences

May 26, 2000

08570605 (B.P.A.I. May. 26, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK V. SMITH and JESSE M. CARTER
____________
Appeal No. 1998-0625
Application No. 08/570,605
____________
ON BRIEF
____________
Before HAIRSTON, FLEMING, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, which are all of the claims
pending in this application.
Appellants' invention relates to an emergency auto visual
communication system which displays a message to an observer
from the interior of a vehicle. Claim 1 is illustrative of
the claimed invention, and it reads as follows:
Appeal No. 1998-0625
Application No. 08/570,605
2
1. An emergency auto visual communication system for
exhibiting from a vehicle to an observer, comprising
a computer with keyboard that controls and
intercommunicates to an illuminated electronic display board;
the illuminated electronic display board removably
attached to the inside of a rear, front, or side window of the
vehicle, the illuminated electronic display board displaying a
message that can be seen through the window upon actuation of
a switch mounted within the communication system powered by
D.C. current from the vehicle through its cigarette lighter
socket and without the use of the vehicle braking system.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hutchison 4,949,071 Aug.
14, 1990
Fahs 5,132,666 Jul.
21, 1992
Claims 1 and 2 stand rejected under 35 U.S.C. § 102 as
being anticipated by Hutchison.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hutchison in view of Fahs.
Reference is made to the Examiner's Answer (Paper No. 7,
mailed May 27, 1997) for the examiner's complete reasoning in
support of the rejections, and to appellants' Brief (Paper No.
Appeal No. 1998-0625
Application No. 08/570,605
3
6, filed February 27, 1997) for appellants' arguments
thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we
will reverse both the anticipation rejection of claims 1 and 2
and also the obviousness rejection of claim 3.
Appellants argue (Brief, page 4) that "Hutchison does not
teach each of applicants' limitations, i.e., computer with
keyboard and a display board removably attached to the inside
of a vehicle window." (emphasis in original). Appellants
contend (Brief, page 4) that "control unit 11 is not a
computer with keyboard for inputting messages but merely a
repository for prearranged statements." As to the second
limitation, appellants (Brief, page 5) point to column 3,
lines 59-61, column 4, lines 1-5, and Figures 3-4, as evidence
that Hutchison is limited to a display device "either mounted
Appeal No. 1998-0625
Application No. 08/570,605
4
on the rear shelf or hanging on the outside of a partially
lowered window." (emphasis in original).
We disagree with appellants' interpretation of the noted
passages for the second limitation. Hutchison describes
(column 3, line 58-column 4, line 5) means for mounting the
display on a shelf, for hanging the display from a side
window, or "for suspending the display unit 12 from a number
of suction fasteners 14b from a side window 'W' or the rear
window 'R.'" Figure 4 shows the outside door handle of an
automobile and the display unit shown in shadow. Thus, in
Figure 4 the display unit is
hanging on the inside of the window. Appellants' claim
requires that the display board be "removably attached to the
inside of a rear, front, or side window of the vehicle"
(emphasis added). Since Hutchison shows and discloses a
display which can be attached to the rear window (via suction
cups) or to the side window (via suction cups or a clip that
hangs over the edge of the window), Hutchison meets the
limitation of being removably attached to the inside of the
vehicle window.
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Application No. 08/570,605
5
However, as to whether Hutchison discloses a computer, we
agree with appellants. A computer is a device which can
calculate or manipulate data. Hutchison's control unit, on
the other hand, has no such function. Hutchison's control
unit is limited to selectively illuminating the display
according to the actuated signal cartridge. Accordingly,
Hutchison does not disclose a computer with a keyboard. Since
Hutchison fails to meet every element of the claims, we cannot
sustain the anticipation rejection of claims 1 and 2.
Regarding claim 3, the examiner has applied Fahs to the
teachings of Hutchison to show the obviousness of using a
DC/AC converter. Appellants have not argued the combinability
of Hutchison and Fahs, but rather repeats the arguments for
claims 1 and 2. Since the addition of a DC/AC converter does
not overcome
the deficiency noted above, we will reverse the obviousness
rejection of claim 3.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection against appellants' claims 1
through 3:
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Application No. 08/570,605
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Claims 1 through 3 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hutchison in view of Fahs.
Hutchison discloses (column 3, line 48-column 4, line 5)
a visual communication device including a display screen of
light emitting diodes which is removably attached to the
inside of a rear or side window of a vehicle by suction
fasteners (see discussion above) and which displays a message
which can be seen through the window. The display is powered
by the battery of the automobile through a cigarette lighter
adapter and connector (column 5, lines 8-11). However,
instead of a computer with a keyboard to control the display,
Hutchison discloses a control unit with ON/OFF switch 27 and
signal cartridges that are inserted into the rear of the unit
for selection and actuation via a set of buttons. As
explained above, the control unit of Hutchison does not
constitute a computer.
Fahs discloses a vehicle mounted electronic display, the
purpose of which is to display emergency information from the
interior of the car. (See column 1, lines 40-56 and line 64-
column 2, lines 2). Fahs' display screen is controlled by a
Appeal No. 1998-0625
Application No. 08/570,605
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processor (column 1, lines 67-68) and driver controlled
programming device "for providing personalized data to the
display screen" (column 2, lines 5-7). "To operate the
electronic display system with an electronic message that can
be scrolled, flashed, animated, etc., the program unit 118 is
connected to CPU 106. Program unit 118 includes a keyboard
.... The user enters one or messages into the CPU 106, via
said keyboard" (column 4, lines 29-35). Thus, Fahs teaches
using a computer with a keyboard to control the display screen
so that the user can personalize messages and so that the
messages can be scrolled, flashed, or animated. Therefore, it
would have been obvious to the skilled artisan to substitute a
computer with a keyboard for the program unit of Hutchison.
Consequently, claims 1 and 2 would have been obvious over
Hutchison in view of Fahs.
Regarding claim 3, Fahs teaches (column 3, line 62-
column 4, line 7) that when the vehicle is stationary, power
can be provided from an external power source. However, when
the vehicle is moving, a dc/ac inverter is used to provide the
necessary wattage from the vehicle battery to the CPU and
Appeal No. 1998-0625
Application No. 08/570,605
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display screens. Since Hutchison powers the display and
control unit
using the vehicle battery (column 5, lines 8-11), it would
have been obvious to include a dc/ac inverter for providing
the necessary wattage. Accordingly, claim 3 would have been
obvious over Hutchison in view of Fahs.
CONCLUSION
The decision of the examiner rejecting claims 1 and 2
under 35 U.S.C. § 102 is reversed. The decision of the
examiner rejecting claim 3 under 35 U.S.C. § 103 is reversed.
A new ground of rejection of claims 1 through 3 under 35
U.S.C. § 103 has been added pursuant to provisions of 37 CFR §
1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "[a] new ground of rejection shall not
be considered final for purposes of judicial review."
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Application No. 08/570,605
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37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 1998-0625
Application No. 08/570,605
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 1998-0625
Application No. 08/570,605
11
HERBERT W. LARSON
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