Ex Parte Tatta

Board of Patent Appeals and Interferences

Aug 5, 2009

10691718 (B.P.A.I. Aug. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW TATTA
____________________

Appeal 2009-001147
Application 10/691,718
Technology Center 3600
____________________

Decided: August 5, 2009
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY
and STEFAN STAICOVICI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001147
Application 10/691,718

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1, 3, 8, 9, 13 and 15 under 35 3
U.S.C. § 103(a) (2002) as being unpatentable over Friedman (US 6,127,938, 4
issued Oct. 3, 2000) and Kassab (US 6,258,200 B1, issued Jul. 10, 2001); 5
finally rejecting claims 2, 6 and 11 under § 103(a) as being unpatentable 6
over Friedman, Kassab and Konsti (US 5,688,579, issued Nov. 18, 1997); 7
finally rejecting claim 4 under § 103(a) as being unpatentable over 8
Friedman, Kassab and Burnette (US 4,848,542, issued Jul. 18, 1989); finally 9
rejecting claims 7 and 12 under § 103(a) as being unpatentable over 10
Friedman, Kassab, Konsti and Burnette; and finally rejecting claim 14 under 11
§ 103(a) as being unpatentable over Friedman, Kassab and Domenig (US 12
5,152,593, issued Oct. 6, 1992). The Examiner indicates the subject matter 13
of dependent claim 5 to be allowable if the claim is rewritten. We have 14
jurisdiction under 35 U.S.C. § 6(b) (2002). 15
We AFFIRM. 16
Claim 1 is typical of the claims on appeal: 17
18
1. A mounting device for mounting an 19
electronic toll payment pass to the interior of a 20
contoured windshield and diminishing the 21
visibility of the electronic toll pass through the 22
windshield, said device comprising: 23
a flexible support substrate having a face 24
surface and a back surface, said flexible support 25
substrate being conformable to the interior of the 26
contoured windshield; 27
a display image covering said face surface 28
of said flexible support substrate; 29
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an adhesive coating on at least a part of said 1
display image, wherein said adhesive coating 2
enables said display image to be selectively 3
attached directly to the contoured windshield of 4
the vehicle as said flexible support substrate 5
conforms to the contoured windshield; and 6
at least one fastener coupled to said back 7
surface of said flexible support substrate that 8
enables the electronic toll payment pass to be 9
selectively mounted to said back surface of said 10
flexible support substrate. 11
12
ISSUES 13
The Examiner finds that Friedman discloses a flexible support 14
substrate in the form of the backing strip of a piece of hook material for 15
making a hook-and-loop connection. (Ans. 3.) The Examiner further finds 16
that Kassab discloses a conventional windshield sticker including an indicia-17
bearing substrate and a transparent adhesive layer for contact with a vehicle 18
windshield. (Ans. 4.) The Examiner concludes that it would have been 19
obvious “to have provided [a] display image to the substrate of Friedman 20
such that information can be displayed through the windshield and to 21
adhesively attach the substrate as taught by the Prior Art disclosed by 22
Kassab.” (Id.) 23
In contesting the rejections of claims 1 and 9, the Appellant contends 24
that the Examiner has not provided a motivation to combine the teachings of 25
Friedman and Kassab. (Br. 11-12.) The Appellant also contends that 26
Friedman and Kassab together would not have disclosed or suggested a 27
device for holding a toll payment pass designed to diminish the visibility of 28
the pass without affecting the pass’ operation. (Br. 7 and 8.) Finally, the 29
Appellant contends that Friedman and Kassab together would not have 30
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provided one of ordinary skill in the art reason to use either a thin, flexible 1
substrate on which a display image is printed, or an adhesive to attach the 2
thin, flexible substrate to a windshield, in a device for holding a toll payment 3
pass. (Id.) 4
The Appellant argues the rejections of claims 2, 6, and 11; claim 4; 5
claims 7 and 12; and claim 14 under separate subheadings. Nevertheless, 6
the Appellant’s contentions with respect to the rejections of each of these 7
dependent claims are limited to the argument that the tertiary references 8
cited against the claims do not overcome the perceived deficiencies of 9
Friedman and Kassab. (Br. 8-11.) 10
This appeal turns on one issue: 11
Has the Appellant shown that the Examiner erred by 12
failing to articulate reasoning with some rational underpinning 13
sufficient to support the conclusion that Friedman and Kassab 14
would have provided one of ordinary skill in the art reason to 15
include in a toll payment pass holder a thin, flexible substrate 16
on which a display image is printed and an adhesive for 17
attaching the thin, flexible substrate to a windshield? 18
19
FINDINGS OF FACT 20
The record supports the following findings of fact (“FF”) by a 21
preponderance of the evidence. 22
1. Friedman teaches that it was known to mount securement 23
elements 14 to the windshield W of a vehicle V to support an electronic toll 24
payment pass 10. (Friedman, col. 3, l. 66 – col. 4, l. 2.) 25
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2. Figures 2 and 5 of Friedman depict the securement elements 14 1
as hook materials for forming hook-and-loop fastenings. 2
3. More specifically, Figures 2 and 5 of Friedman depict the 3
securement elements 14 as including thin, opaque support substrates and 4
fasteners in the form of plastic hooks coupled to back surfaces of the 5
substrates. 6
4. Figures 2-4 of Friedman depict the thin support substrates of 7
the securement elements 14 as being attached flush to the windshield W. 8
This implies that the thin support substrates have sufficient flexibility to 9
conform to the interior of a contoured windshield 10
5. Friedman discloses a holder 20 for an electronic toll payment 11
pass. (Friedman, col. 4, ll. 2-5.) Friedman’s holder 20 includes a main 12
housing member 22 and a slidable drawer member 24. (Friedman, col. 4, ll. 13
5-6.) Friedman’s main housing member 22 has securement elements 36 for 14
complementary engagement with the securement elements 14 to support the 15
main housing member 22 and the slidable drawer 24 on the windshield W. 16
(Friedman, col. 4, ll. 21-23.) 17
6. Friedman’s slidable drawer 24 has securement elements 34 for 18
complementary engagement with securement elements 12 on the electronic 19
toll payment pass 10. (Friedman, col. 4, ll. 16-18.) 20
7. Friedman’s entire holder 20 is attached to the windshield W by 21
means of the securement elements 14. The electronic toll payment pass 10 22
is selectively mounted to the back surfaces of the thin, flexible support 23
substrates of the securement elements 14 through the mediation of the 24
securement elements 36; the main housing member 22; the slidable drawer 25
24; and the securement elements 34. Figures 2 and 3 of Friedman depict the 26
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securement elements 14 as being interposed between the windshield W and 1
the electronic toll payment pass 10. 2
8. Figure 5 of Friedman depicts the main housing member 22 as 3
being opaque, at least to the extent that the securement elements 36 cannot 4
be seen through a front panel of the main housing member 22. As a 5
consequence, the mounting device, including the securement elements 14 6
and the main housing member 22, diminishes the visibility of the electronic 7
toll pass 10 through the windshield W in the sense that the device conceals 8
the electronic toll payment pass 10 from view through the windshield W 9
when the slidable drawer 24 is positioned behind the main housing member 10
22. 11
9. Kassab discloses that it was known to mount a windshield 12
sticker 14, including an indicia-bearing substrate 16, on an inside surface of 13
a windshield 12 of a vehicle 10, so that the indicia on the substrate 16 might 14
be viewed from outside the vehicle 10. (Kassab, col. 5, ll. 35-37, 40-42 and 15
45-47.) 16
10. Kassab discloses mounting the windshield sticker 14 on the 17
inside surface of the windshield 12 with a layer 18 of transparent adhesive. 18
(Kassab, col. 4, ll. 36-37 and 42-47.) 19
11. The structure of a windshield sticker is similar to the structure 20
of the substrate of a hook material for forming a hook-and-loop fastening. 21
Both a windshield sticker and the substrate of a hook material are thin, 22
flexible sheets capable of conforming to the contour of a windshield. 23
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PRINCIPLES OF LAW 1
“[I]f a technique has been used to improve one device, and a person of 2
ordinary skill in the art would recognize that it would improve similar 3
devices in the same way, using the techniques is obvious unless its 4
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 5
U.S. 398, 417 (2007). Likewise, “the application of a known technique to a 6
piece of prior art ready for the improvement” would have been obvious 7
unless the improvement would have been beyond the level of ordinary skill 8
in the art or the success of the improvement could not reasonably have been 9
predicted by one of ordinary skill in the art. Id. 10
11
ANALYSIS 12
With respect to claim 1, Friedman discloses a mounting device for 13
mounting an electronic toll payment pass to the interior of a contoured 14
windshield. (FF 5.) Friedman’s mounting device diminishes the visibility 15
of the electronic toll pass through the windshield. (FF 8.) Friedman’s 16
mounting device comprises (that is, includes) a flexible support substrate, 17
namely, the substrate of one of the securement elements 14. (FF 1-4.) The 18
flexible support substrate is conformable to the interior of the contoured 19
windshield. (Id.) Friedman’s mounting device also comprises fasteners, that 20
is, hooks, coupled to a back surface of the flexible support substrate. (FF 3.) 21
These fasteners enable the electronic toll payment pass to be selectively 22
mounted to the back surface of the flexible support substrate. (FF 7.) 23
With respect to claim 9, Friedman’s disclosure implies a method of 24
mounting an electronic toll payment pass to a contoured windshield of a 25
vehicle in the sense that Friedman’s mounting device is designed for use in 26
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carrying out such a method. When Friedman’s mounting device is used in a 1
method of mounting an electronic toll payment pass to a contoured 2
windshield of a vehicle, the visibility of the electronic toll pass through the 3
contoured windshield is diminished. (See FF 8.) The mounting device itself 4
provides a flexible support substrate. (FF 1-4.) The entire mounting 5
structure or device is attached to the contoured windshield through the 6
flexible support substrate. (See FF 7.) The flexible support substrate has a 7
front surface which abuts against the contoured windshield so that the 8
substrate conforms to the contoured windshield. (Id.) In use, the electronic 9
toll payment pass is attached to the back surface of the flexible support 10
substrate such that the flexible support substrate is interposed between the 11
contoured windshield and the electronic toll payment pass. (Id.) 12
Friedman does not disclose how the flexible support substrates, that is, 13
the substrates of the securement elements 14, are mounted on the 14
windshield. Kassab discloses adhering a windshield sticker to a windshield 15
by means of a layer of transparent adhesive. (FF 10.) Since a windshield 16
sticker and the support substrates of hook materials, such as the securement 17
elements 14 of Friedman, are similar in configuration, flexibility and 18
conformability to the contours of windshields (FF 11), one of ordinary skill 19
in the art would have had reason to improve Friedman’s securement 20
elements 14 by bonding them to a windshield in the same manner that 21
Kassab describes bonding windshield stickers, namely, by a layer of 22
transparent adhesive. 23
Friedman does not disclose including a display image on the surface 24
of one of the support substrates of the securement elements 14 visible from 25
outside the vehicle when the securement elements 14 are bonded to the 26
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windshield. Nevertheless, it would have been apparent to one of ordinary 1
skill in the art without reference to the Appellant’s Specification that the 2
unadorned front surface of the substrate, covered by a transparent but 3
refractive layer of adhesive, might be viewed as unsightly. Kassab describes 4
including indicia on a surface of a windshield sticker visible outside a 5
vehicle. (FF 9.) The unsightly surfaces of Friedman’s securement elements 6
14, visible through the windshield, would have been ripe for improvement 7
by adding indicia to personalize or otherwise decorate the surfaces with 8
display images. The nature of the indicia is material to the patentability of 9
the claims on appeal: Claims 1 and 9 recite neither the nature of the display 10
image nor any functional relationship between the display image and any 11
recited element or step. 12
By these improvements, Friedman’s securement elements 14 would 13
have met the limitations of representative claims 1 and 9. The Appellant 14
presents no persuasive argument or evidence demonstrating that these 15
improvements would have been beyond the level of ordinary skill in the art. 16
Neither has the Appellant presented any persuasive argument or evidence 17
demonstrating that one of ordinary skill in the art could not have reasonably 18
predicted their success in providing an operative but less unsightly mounting 19
for an electronic toll payment pass. 20
21
CONCLUSIONS 22
The Appellant has not shown that the Examiner erred by failing to 23
articulate reasoning with some rational underpinning sufficient to support 24
the conclusion that Friedman and Kassab would have provided one of 25
ordinary skill in the art reason to include in a toll payment pass holder a thin, 26
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flexible substrate on which a display image is printed and an adhesive for 1
attaching the thin, flexible substrate to a windshield. Therefore, the 2
Appellant has not shown that the Examiner erred in rejecting either 3
independent claims 1 and 9 or dependent claims 3, 8, 13 and 15 under 4
§ 103(a) as being unpatentable over Friedman and Kassab. 5
The Appellant’s contentions with respect to the rejections of 6
dependent claims 2, 6, and 11; dependent claim 4; dependent claims 7 and 7
12; and dependent claim 14 are limited to the argument that the tertiary 8
references cited against the claims do not overcome perceived deficiencies 9
of Friedman and Kassab. Since the Appellant has not shown any such 10
deficiencies, the Appellant has not shown that the Examiner erred in 11
rejecting claims 2, 6 and 11 under § 103(a) as being unpatentable over 12
Friedman, Kassab and Konsti; in rejecting claim 4 under § 103(a) as being 13
unpatentable over Friedman, Kassab and Burnette; in rejecting claims 7 and 14
12 under § 103(a) as being unpatentable over Friedman, Kassab, Konsti and 15
Burnette; and in rejecting claim 14 under § 103(a) as being unpatentable 16
over Friedman, Kassab and Domenig. 17
18
DECISION 19
We AFFIRM the Examiner’s decision rejecting claims 1-4, 6-9 and 20
11-15. 21
No time period for taking any subsequent action in connection with 22
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 23
§ 1.136(a)(1)(iv) (2007). 24
25
AFFIRMED 26
Appeal 2009-001147
Application 10/691,718

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