Ex Parte Storm

Board of Patent Appeals and Interferences

Jun 29, 2009

10296278 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAN STORM1
____________

Appeal 2009-003072
Application 10/296,278
Technology Center 3600
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Decided2: June 30, 2009
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Before JENNIFER D. BAHR, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Polytrust Partners B.V. of the Netherlands
(App. Br. 1).
2 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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Application 10/296,278

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 11 and 13. Claims 1-10, 12, and 14 have been previously canceled
(App. Br. 2). We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
The claimed invention is directed to a device for displaying
information, such as advertisements, on a lorry (i.e., tractor-trailer truck).
The device includes a web (i.e., sheet or canvas), a vertically oriented reel
attached to the truck cab for winding and unwinding the web, and an
attachment means to attach the unwound web to the trailer.
Claim 11, the sole independent claim, reads as follows (App. Br.,
Claims App’x.):
11. An assembly comprising a lorry and at least one device
for displaying information, which device comprises:
a web of a material in sheet or canvas form;
a reel which is attached to the outside of the lorry with a
longitudinal axis of the reel oriented substantially vertically, the
reel for winding up and unwinding the web; and
attachment means for attaching the unwound web to the
lorry, wherein:
the lorry comprises a lorry cab and a trailer; and
the reel is attached to the lorry cab and the attachment
means is arranged to engage the trailer.

The prior art relied upon by the Examiner in rejecting the claims is:
Woodard US 3,430,374 Mar. 4, 1969
Witten US 4,518,188 May 21, 1985

The Examiner rejected claims 11 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Witten and Woodard.
We REVERSE.
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ISSUE
Whether the Appellant has shown that the Examiner erred in
concluding that it would have been obvious to one of ordinary skill in the art
to utilize the reel of Woodard in attaching the aerodynamic side panel of
Witten to the truck cab?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Witten describes an aerodynamic side panel 12 and pocket
structure 20 assembly for a tractor-trailer truck. (Col. 4, ll. 7-22; fig.
1). Witten discloses that the side panels extend between the side
surface of the cab and the trailer “to improve their airflow dynamics
when traveling at high speeds and reduce drag.” (Col. 2, ll. 41-46).
2. Witten further discloses that a rearward portion of side panels
12 are slidably received and captured in a pocket structure 20 that is
mounted to a side-wall 22 of the trailer 11. (Col. 4, ll. 16-22; figs. 1-
3). When captured in the pocket structure, the side panels can
partially extend therein or recede therefrom in response to pivoting of
the cab 16 relative to the trailer 11 (col. 4, ll. 35-66; fig. 2). Thus, fore
and aft sliding movement of the side panels occurs as the tractor-
trailer truck maneuvers a corner (fig. 2).
3. The side panels of Witten are secured to a rear side 80 portion
of the cab 16 by fastening wing nuts 86 onto mounting studs 82. (Col.
6, ll. 1-10; fig. 5).
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4. However, Witten does not disclose that the side panels can be
wound and unwound on a reel attached to the cab.
5. Woodard describes an emergency signal for automobiles that
includes a rolled-up flexible sheet 24 attached to horizontal bar 18
stored on the underside of trunk compartment lid 12 via a pair of
bracket arms or tabs 14. (Col. 3, ll. 26-49; figs. 1 and 2). When sheet
24 is unwound, it displays precautionary messages to alert oncoming
traffic. (Col. 3, ll. 52-55; fig. 2).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966).
The Court also noted that “[t]o facilitate review, this analysis should
be made explicit.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness”)). However, “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.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445.

ANALYSIS
The Examiner rejects the pending claims as obvious over the
combination of Witten and Woodard (Ans. 3). The Examiner contends that
Witten describes all of the claimed limitations except for the recited reel for
winding and unwinding the disclosed sheet. Id. The Examiner relies on
Woodard to cure this deficiency of Witten. Id. In particular, the Examiner
contends that utilizing a reel for winding and unwinding a sheet “displaying
information [is] well known in the art of displays, as shown by Woodard.”
Id. Thus, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art “to utilize the reel of Woodard for attaching the sheet
to the cab of Witten so as to provide a device for displaying information that
can be extended or retracted easily if necessary (as taught by Woodard).” Id.
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Initially, the Appellant contends that the references do not provide a
motivation or suggestion to combine Witten with Woodard “to arrive at the
invention of claim 11” (App. Br. 3-4). However, this argument is foreclosed
by KSR, in which the Supreme Court rejected the rigid requirement of a
teaching, suggestion or motivation to combine known elements in order to
establish obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-
19 (2007).
The Appellant also argues that the Examiner used impermissible
hindsight reconstruction in rejecting claim 11 as obvious over Witten and
Woodard (App. Br. 3-6). We agree with the Appellant. While the Examiner
has stated a reason for combining Witten and Woodard, that is, “to provide a
device for displaying information that can be extended or retracted easily if
necessary” (Ans. 3), the stated reason is conclusory and unsupported by
rational underpinnings. See KSR, 550 U.S. at 418. In this regard, the
Examiner’s stated reason does not provide a rational basis as to why one of
ordinary skill in the art of vehicle aerodynamics would seek to allow the
aerodynamic side panels of Witten to be wound up and unwound, except to
summarily assert that the combination of Witten and Woodard is obvious for
allowing easy retraction “if necessary”. We find this summary assertion
insufficient to support the conclusion of obviousness and agree with the
Appellant that the Examiner’s suggested combination appears to be based on
impermissible hindsight. While explicit motivation or teaching to combine
prior art references need not be set forth in the references, it is the
Examiner’s burden to articulate a reason with rational underpinnings as to
why one of ordinary skill in the art would make such a combination. We
conclude that the Examiner’s burden has not been met in the present case.
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Therefore, in view of the above, the Examiner’s obviousness rejection
of independent claim 11 as set forth in the Answer is not sustained. The
Examiner’s rejection of claim 13, which depends from claim 11, is also not
sustained for the same reason.

CONCLUSION
The Appellant has shown that the Examiner erred in concluding that it
would have been obvious to one of ordinary skill in the art to utilize the reel
of Woodard for attaching the aerodynamic side panel of Witten to a truck
cab.

DECISION
The Examiner’s rejection of claims 11 and 13 is REVERSED.

REVERSED

saw

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