Ex Parte Stepka

Board of Patent Appeals and Interferences

Mar 30, 2009

10898014 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN STEPKA
____________

Appeal 2009-2439
Application 10/898,014
Technology Center 1700
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Decided:1 March 30, 2009
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Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, 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).
Appeal 2009-2439
Application 10/898,014

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Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4-7, 11, 17, 18, and 21-23, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6.2
We AFFIRM
Appellant’s invention relates to a plaque for displaying hockey
pucks. According to Appellant, “the present invention provides for the
mounting of a three-dimensional item to so as to permit viewing of plural
surfaces of the item from oppositely facing major surfaces of the plaque.”
(Spec. 4). Claim 1 is illustrative:
1. A plaque for displaying at least one hockey puck comprising a
base that is the shape substantially similar to a hockey stick
comprising a blade portion having a first surface provided as a
display face and an oppositely facing second face and an
oppositely facing second surface that are separated from one
another by a stick edge surface with a dimension corresponding
to a thickness of the base, the stick edge surface extending
beyond the blade portion along the hockey stick shaped base and
including at least one shaped edge surface portion that is shaped
substantially similar to portion of a hockey puck shaped, the
shaped edge surface portion of the stick surface being sized and
shaped for receiving and supporting only a portion of a hockey
puck to the hockey stick shaped base so that when [the] hockey
puck is provided onto the shaped surface portion, a portion of the
hockey puck will appear to be supported within a profile of the
first surface of the hockey stick shaped base and another portion

2 In this decision we have considered Appellant’s arguments presented in
the Appeal Brief, filed August 27, 2000, and the Reply Brief, filed
November 1, 2007.
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of a hockey puck will appear to be supported outside [of] the
profile of the first surface of the hockey stick shaped base.

The following rejections are presented for our review:
Claims 1, 4-7, 11, 17, 18, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Jaroshewich, U.S.
Patent No. 5,377,828, issued January 3, 1995, and Buranelli, U.S. Patent
No. 2,258,535, issued October 7, 1941.
Claims 1, 4-7, 11, 17, 18, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combined teachings of Jaroshewich, and
Curtis, U.S. Patent No. 2,139,150, issued December 6, 1938.
Claims 1 and 11 stand rejected under 35 U.S.C. § 103(a) as obvious
over the combined teachings of Jaroshewich, and Santer, U.S. Patent No.
Des. 168,598, issued January 6, 1953.

ISSUE
For each of the stated rejections the issue presented is: Has
Appellant shown reversible error in the Examiner’s conclusion that it
would have been obvious to a person of ordinary skill in the art in view of
the teachings of Jaroshewich and the other cited prior art references to
form a plaque for displaying at least one hockey puck comprising a blade
portion utilized as a display face as required by independent claim 1.
FINDINGS OF FACT

The Examiner found that Jaroshewich describes devices such as
boards/plaques for displaying hockey pucks comprising at least one
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holding member for retaining the hockey puck. The Examiner found that
Jaroshewich discloses a holding member having a through hole which is
designed to allow multiple sides of the hockey puck to be viewed and
removed when desired. (Ans. 3; Jaroshewich, col. 2, ll. 3-6). Jaroshewich
discloses the pucks may be positioned such that they extend a desired
distance from the board enabling easy removal. (Jaroshewich, col. 2, ll.
14-18). The Examiner found that Jaroshewich discloses the board/plaque
may have any configuration along with various types of indicia coloring or
the like. (Ans. 4; Jaroshewich, col. 1, ll. 62-67). Figures 1-9 of
Jaroshewich depict various shapes and configurations of a display board.
Figure 4 is representative of a shape similar to the blade of a hockey stick.
The Examiner found that the Buranelli, Curtis, and Santer references
describe display devices having a variety of shapes and orientations,
including boards and trophies for circular shaped items, such as coins and
balls, that comprise openings which allow multiple sides of the displayed
object to be viewed. (Ans. 5, 9, and 13; Buranelli, col. 1, ll. 1-6; Curtis,
col. 1, ll. 1-6; Santer, Figs. 1-3). Based on these findings, the Examiner
concluded that it would have been obvious for a person with ordinary skill
in the art to form a plaque for displaying at least one hockey puck
comprising a blade portion utilized as a display face as required by
independent claim 1.

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
is obvious, the question to be asked is whether the improvement of the
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claim is more than the predictable use of prior art elements according to
their established functions. KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1740 (2007). The analysis need not seek out precise teachings directed to
the specific subject matter of the claim, for it is proper to take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ. Id. at 1740-1741.
Where the rejection is based on a combination of references, the test
for obviousness is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d
413, 425 (CCPA 1981).

ANALYSIS
Appellant does not present separate arguments for claims 1, 4-7, 11,
17, 18, and 21-23 on appeal. (Br. 10-14). Accordingly, in assessing
Appellant’s arguments, we will focus on independent claims 1 and 11
since these claims contain the limitations relevant to Appellant's
arguments.
Appellant’s arguments in rebuttal to the stated rejections focuses on
Jaroshewich’s failure to disclose or suggest a hockey stick shaped board
member. Appellant acknowledges that Jaroshewich discloses the board
member used to display the hockey puck can have “any desired
configuration.” However, Appellant contends that this statement is “overly
broad and should not be and cannot be construed to anticipate any and
every shape, such as a hockey stick shape.” (App. Br. 10-11). Appellant
further argues that there is no teaching or suggestion in Jaroshewich that
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the shape of the board member relates to the item displayed. Regarding the
Buranelli, Curtis, and Santer references, Appellant argues that these
references do not cure the deficiencies of Jaroshewich. (App. Br. 12-14).
Appellant’s arguments are not persuasive of reversible error. The
test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. Keller, 642 F.2d
at 425. Appellant has failed to explain a patentable distinction between the
shape of the plaque of the claimed invention and the plaques disclosed in
Jaroshewich. Jaroshewich discloses that the board member may have
various types of configurations, such as a rectangular, square, or circular
configuration as well as “any desired configuration.” We find that a
rectangular configuration as well as the rectangular configuration depicted
in Jaroshewich Figure 4 are shapes that are substantially similar to the
blade of a hockey stick. Based on these teachings in Jaroshewich, a person
of ordinary skill in the art would have reasonably expected that a plaque
could have been formed in the shape described by claims 1 and 11.
Appellant’s arguments regarding the Buranelli, Curtis, and Santer
references are not persuasive of reversible error because they do not focus
on the reason the Examiner relied upon these references.
Appellant argues that Jaroshewich does not disclose or suggest
selectively positioning the pucks in the board member to simulate action.
(App. Br. 11). This argument is not persuasive of reversible error because
this limitation does not appear in either claim 1 or 11.
Finally, Appellant’s arguments regarding the overall shape of the
plaque described in claims 1 and 11 relate to matters of ornamentation.
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That is, Appellant has not asserted the claimed invention is novel or
unobvious due to a functional relationship of the various components.
Matters relating to ornamentation only which have no mechanical function
cannot be relied upon to patentably distinguish from the prior art. In Seid
161 F.2d 229, 231 (CCPA 1947).
ORDER
The rejections of claims 1, 4-7, 11, 17, 18, and 21-23 under 35
U.S.C. § 103(a) are 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)(1)(iv).
AFFIRMED

PL Initial:
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