Ex Parte Taylor et al

Patent Trial and Appeal Board

Jan 18, 2018

14096000 (P.T.A.B. Jan. 18, 2018)

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.
14/096,000 12/03/2013 Randy Taylor Taylor05 4682
91892 7590 01/22/2018
Incorporating Innovation LLC dba Incorporating
Innovation With Charlena Thorpe, Patent Attorney
6340 Sugarloaf Parkway
Suite 200
Duluth, GA 30097
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Charlena@incorporatinginnovation.com
charlena. thorpe @ charlenathorpe. com
wayne @ charlenathorpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY TAYLOR and BOBBY P. TAYLOR
Appeal 2018-001093
Application 14/096,000
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—3 and 5—13, which are all of the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the named inventors, Randy Taylor and Bobby P.
Taylor, are the real parties in interest. App. Br. 1.
2 Claim 4 has been canceled. App. Br. 34 (Claim App’x).
Appeal 2018-001093
Application 14/096,000
INVENTION
Appellants’ invention relates to an advertising mat. Abstract.
Independent claims 1 and 13 read as follows:
1. A method of advertising comprising:
printing a plurality of advertisements on an advertising
mat wherein the advertisements are from different businesses
that are off the premise of the gas pump; and
placing the advertisement mat on the ground at the base
of a gas pump.
13. A station comprising:
a gas pump; and
an advertisement mat comprising pre-printed
advertisements located on the ground at the base of the gas
pump wherein the advertisements are from different businesses
that are off the premise of the gas pump.
REJECTIONS
Claims 1—3 and 5—133 stand rejected under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement. Final Act. 2—3.
Claim 13 stands rejected under 35 U.S.C. § 112(a) for lack of
enablement. Final Act. 4.
Claims 1 and 134 stand rejected under 35 U.S.C. § 112(b) as indefinite
for failing to particularly point out and distinctly claim the subject matter
3 In the heading of the rejection, the Examiner identifies claims 1—13. Final
Act. 2. Claim 4, however, is not pending. We interpret the rejection as
applying to claims 1—3 and 5—13, and we set forth the correct claim numbers
in this Decision for clarity.
4 In the heading of the rejection, the Examiner identifies only claim 5. Final
Act. 4—5. The Examiner, however, discusses only claims 1 and 13 in the
body of the rejection. Id. We interpret the rejection as applying to claims 1
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which the inventor or a joint inventor regards as the invention. Final
Act. 4—5.
Claims 1—3 and 5—13* * 5 stand rejected under 35 U.S.C. § 101 because
the claimed subject matter is judicially-excepted from patent eligibility.
Final Act. 5—6.
Claims 1,3, and 5—9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Potok et al. (US 2007/0059480 Al; published Mar. 15,
2007) (“Potok”). Final Act. 6-8.
Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Potok and Graham et al. (US 2007/0094075 Al;
published Apr. 26, 2007) (“Graham”). Final Act. 8—9.
Claim 10—12 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Potok and Gratton et al. (US 2012/0181329 Al;
published July 19, 2012) (“Gratton”). Final Act. 9-10.
Claim 13 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Edstrom et al. (US 2004/0257726 Al; published Dec. 23,
2004) (“Edstrom”) and Potok. Final Act. 10—11.
ANALYSIS
We have reviewed the rejections of claims 1—3 and 5—13 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
and 13, and we set forth the correct claim numbers in this Decision for
clarity.
5 In the heading of the rejection, the Examiner identifies claims 1—3 and 5—9.
Final Act. 5. The Examiner, however, discusses claims 1—3 and 5—13 in the
body of the rejection. Id. We interpret the rejection as applying to claims 1—
3 and 5—13, and we set forth the correct claim numbers in this Decision for
clarity.
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Application 14/096,000
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made but chose not to make in the
Briefs are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of Claims 1—3 and 5—13 for Lack of Written Description
In rejecting claims 1—3 and 5—13 under 35 U.S.C. § 112(a), the
Examiner found no support in the Specification for the limitation “wherein
the advertisements are from different businesses that are off the premise of
the gas pump.” Final Act. 2.
The written description requirement is met when the specification
conveys to those skilled in the art that the inventor had possession of and
actually invented the claimed subject matter. 35 U.S.C. § 112(a).
Appellants argue the Examiner erred because Figure 1 and paragraphs 3 and
5 of the Specification support the limitation. App. Br. 6. In particular,
Appellants argue paragraph 5 is sufficient to convey possession because it
describes an advertisement mat with advertisements not only from local
businesses but also advertisements from non-local businesses. Id.
Appellants’ arguments are not persuasive. It is not apparent, and
Appellants have not persuasively explained, how the “non-local businesses”
described in the Specification relate to the recited “businesses that are off the
premise of the gas pump.” We agree with the Examiner that the cited
portions of the Specification do not describe a premise of a gas pump or
provide any definition or boundaries for the disputed limitation. See Ans. 2.
Thus, the Specification does not convey to those skilled in the art that the
inventors had possession of and actually invented “wherein the
advertisements are from different businesses that are off the premise of the
gas pump.”
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of independent claims 1 and 13 for lack of written description support, as
well as claims 2, 3, and 5—12, dependent therefrom.
Rejection of Claim 2 for Lack of Written Description
In rejecting claim 2 under 35 U.S.C. § 112(a), the Examiner found
insufficient support in the Specification for the steps of “determining
existing businesses located within a predetermined distance of the
advertising mat” and “selecting retail businesses from the existing
businesses.” Final Act. 3.
Appellants argue the Examiner erred because it is implicit or inherent
that the businesses described in paragraphs 3 and 5 of the Specification were
determined and selected as recited in the claims. App. Br. 9.
Appellants’ arguments are not persuasive. In particular, we are not
persuaded that the description in the Specification of a mat that includes
advertisements from local businesses (Spec. | 5) inherently or impliedly
describes the disputed “determining” and “selecting” steps of claim 2 or
otherwise requires that the disputed steps be performed. For example, the
description in the Specification does not preclude a local business from
providing an advertisement for the mat without having been selected. Thus,
we agree with the Examiner that there is insufficient evidence that the
inventors had possession of and actually invented the “determining” and
“selecting” steps of claim 2. See Ans. 4.6
6 With respect to written description support, “actual ‘possession’ or
reduction to practice outside of the specification is not enough. Rather ... it
is the specification itself that must demonstrate possession.” Ariad Pharms.,
Inc. v. EliLilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010); see also
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of dependent claim 2 for lack of written description.
Rejection of Claims 10 and 12 for Lack of Written Description
In rejecting claims 10 and 12 under 35 U.S.C. § 112(a), the Examiner
found insufficient support in the Specification for the limitation “applying a
discount at the retailer.” Final Act. 3.
Appellants argue the Examiner erred because the Specification
discloses redeeming a coupon in paragraph 7, and an artisan of ordinary skill
would have understood redeeming a coupon to mean obtaining a discount.
App. Br. 10. In support of their position, Appellants provided a dictionary
definition of “coupon”—“a part of a printed advertisement to be cut off to
use as an order blank or inquiry form or to obtain a discount on merchandise
or services.” Id. (emphasis omitted) (citing Merriam-Webster.com).
Appellants’ arguments are not persuasive. In particular, we are not
persuaded the description in the Specification of redeeming a coupon is
sufficient to show the inventors had possession of and actually invented the
disputed limitation. As the Examiner pointed out, the dictionary definition
of “coupon” relied on by Appellants sets forth two uses for coupons besides
obtaining a discount. Ans. 4. Moreover, one shows that one is “in
2008) (explaining that § 112, | 1 “requires that the written description
actually or inherently disclose the claim element”). “[I]t is not a question of
whether one skilled in the art might be able to construct the patentee's device
from the teachings of the disclosure . . . Rather, it is a question whether the
application necessarily discloses that particular device .... A description
which renders obvious the invention for which an earlier filing date is sought
is not sufficient.” Lockwood, 107 F.3d at 1572 (Fed. Cir. 1997) (quoting
Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)).
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possession” of the invention by describing the invention, with all its claimed
limitations, not that which makes it obvious. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); In re Wertheim, 541
F.2d 257, 262 (CCPA 1976). Here, Appellants have provided insufficient
persuasive evidence that the inventors had possession of and invented the
disputed limitation of claims 10 and 12.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of dependent claims 10 and 12 for lack of written description support.
Rejection of Claim 13 for Lack of Written Description
In rejecting claim 13 under 35 U.S.C. § 112(a), the Examiner found
insufficient support in the Specification for the phrase “a station comprising”
in the preamble of the claim. Final Act. 3.
Appellants argue the Examiner erred because paragraph 6 of the
Specification discloses that a person standing at the base of a gas pump may
view advertisements on the mat while pumping gas. App. Br. 11.
Appellants further argue it is well known that gas pumps are at stations. Id.
Appellants also argue that the recitation of “a station” in claim 13 “is part of
the preamble that forms no part of the claim.” Id.
Appellants’ arguments are not persuasive. In particular, we are not
persuaded by Appellants’ argument that “the preamble is not considered a
limitation.” See id. Regardless of whether the phrase at issue is in the
preamble of claim 13, it is still recited in the claim, and Appellants do not
direct us to any disclosure in the Specification demonstrating that the
inventors were in possession of a station at the time of filing. See Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991) (To fulfill the
written description requirement “the applicant must. . . convey with
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reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention. The invention is, for purposes
of the ‘written description’ inquiry, whatever is now claimed.'’'’). Appellants’
arguments thus fail to identify any error in the Examiner’s finding that the
Specification does not describe “a station,” as recited in claim 13.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(a) rejection
of claim 13 for lack of written description.
Rejection of Claim 13 for Lack of Enablement
In rejecting claim 13 under 35 U.S.C. § 112(a), the Examiner found
that, although the Specification enables an advertising mat lying beside a gas
pump, it does not reasonably enable a gas pump as part of the actual system.
Final Act. 4.
Appellants contend the Examiner has not met the burden of presenting
by a preponderance of evidence why a person skilled in the art would not
recognize in the Specification a description of the invention defined by the
claims. App. Br. 13.
We agree with Appellants. When rejecting a claim for lack of
enablement, “the [United States Patent and Trademark Office] bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the
application.” In re Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993) (citing
In re Marzocchi, 439 F.2d 220, 223—24 (CCPA 1971)). “[T]o be enabling,
the specification of a patent must teach those skilled in the art how to make
and use the full scope of the claimed invention without ‘undue
experimentation.’” Wright, 999 F.2d at 1561. The “undue experimentation”
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analysis involves the consideration of such factors as: (1) the quantity of
experimentation; (2) the amount of direction or guidance presented; (3) the
presence or absence of working examples; (4) the nature of the invention;
(5) the state of the prior art; (6) the relative skill of those in the art; (7) the
predictability or unpredictability of the art; and (8) the breadth of the claims
(the “Wands factors”). In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In order to set forth a proper rejection under 35 U.S.C. § 112(a) for
lack of enablement, at least some of the enumerated factors or similar
considerations must be discussed, and the factors both for and against
enablement must be weighed. As the Examiner fails to make the proper
findings or perform the required weighing of factual considerations, the
Examiner fails to set forth a prima facie case of non-enablement.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(a)
rejection of independent claim 13 for lack of enablement.
Rejection of Claims 1 and 13 for Indefiniteness
In rejecting claims 1 and 13 under 35 U.S.C. § 112(b), the Examiner
found the limitation “different businesses that are off the premise of the gas
pump” unclear and, thus, concluded it is indefinite. Final Act. 4—5.
Appellants contend the Examiner erred because the term “premise”
and the phrase “off the premise” are simple English words with “clear and
unquestionable” meanings. App. Br. 14. Appellants argue the Examiner has
not provided “any explanation why the term ‘premise’ and the phase ‘off the
premise’ do not have an ordinary and customary meaning.” Id. (emphasis
omitted).
Appellants’ arguments are not persuasive because they address only a
subset of the limitation identified by the Examiner as indefinite. Here, we
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agree with the Examiner that the language of a claims, given their broadest
reasonable interpretation, is such that a person of ordinary skill in the
relevant art would read them with more than one reasonable interpretation.
See Ans. 5—6.7 Thus, we agree with the Examiner that claims 1 and 13, read
in light of the Specification, do not inform those skilled in the art about the
scope of the invention with reasonable certainty. See In re Packard, 751
F.3d 1307, 1313 (Fed. Cir. 2014).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 112(b) rejection
of independent claims 1 and 13 for indefiniteness.
Rejection of Claims 1—3 and 5—13 under 35 U.S.C. § 101
In rejecting the claims as directed to patent-ineligible subject matter,
the Examiner determined the claims are directed to the abstract concept of
the placement of advertisements, which is a fundamental economic practice
and/or a method of organizing human activities. Final Act. 5. The
Examiner found the limitations are “merely instructions to implement an
abstract idea and do not even [sic] a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry.” Final Act. 5—6. The Examiner
further determined that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception. Id. at
5.
Appellants argue that, rather than reciting computer-implemented
abstract ideas, the claims recite meaningful limitations beyond generally
7 We note in the phrases "the premise of the gas pump" in claim 1; and "the
gas pump" and "the premise" in claim 13 lack antecedent bases for "the
premise" and "the gas pump."
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linking the use of an abstract idea to a particular technological environment.
App. Br. 18—20. Appellants point out that the claims do not recite, and are
not performed by, any computer. Id. at 17—18. Appellants also argue that
claims 5—9 recite manufacturing steps performed by machines, and that
claim 13 is an apparatus claim. Id. at 20-21.
We agree with Appellants that the Examiner erred in finding that the
claims are directed to an abstract idea. As the Federal Circuit has explained:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
Rather, the “directed to” inquiry applies a stage-one filter to
claims, considered in light of the specification, based on
whether their character as a whole is directed to excluded
subject matter.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(internal citations and quotations omitted). Here, on the record before us,
the Examiner has not shown that the character of each claim as a whole is
directed to excluded subject matter. For example, claim 5 recites the steps
of creating an advertising mat by forming a bottom layer comprised of
plastic, forming a middle layer comprised of a vinyl sheet and printing the
advertisements thereon, and forming a top layer comprised of plastic. App.
Br. 34 (Claims App’x). Thus, the character of claim 5 as a whole is directed
to creating an advertising mat in a particular manner. On the record before
us, we do not agree with the Examiner that claim 5 is primarily directed to
the abstract idea of the placement of advertising. The rest of the claims
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present similar issues which would require more explanation than that
provided by the Examiner.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 1—3 and 5—13.
Rejection of Claims 1, 3 and 5—9 under 35 U.S.C. § 103
In rejecting claim 1 for obviousness, the Examiner found Potok
teaches or suggests the recited limitations (Final Act. 6 (citing Potok
Abstract, Fig. 1,115)), except “placing the advertisement mat on the ground
at the base of a gas pump” (id. at 7). The Examiner found “the act of placing
advertising in any viewable location in which a consumer spends any length
of time has been old and well known long before the filing of Applicant’s
invention.” Id. at 7. The Examiner further found the limitation “wherein the
advertisements are from different businesses that are off the premise of the
gas pump” is nonfunctional descriptive material that does not distinguish the
claimed invention from the prior art. Id.
Appellants argue the Examiner erred by providing no evidentiary
support for the finding that “the act of placing advertising in any viewable
location in which a consumer spends any length of time has been old and
well known long before the filing of Applicant’s invention.” App. Br. 22
(emphasis omitted). Appellants also argue Potok “teaches away” from
placing advertisements outside at a gas pump because Potok teaches only
placing advertising mats inside stores, near the area in which the advertised
product is shelved. Id. at 22. Appellants further argue that claim 1 does not
recite non-functional descriptive material and, thus, Potok does not teach or
suggest the limitation “printing a plurality of advertisements on an
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advertising mat wherein the advertisements are from different businesses
that are off the premise of the gas pump,” as recited in claim 1. Id. at 24—25.
We do not find Appellants’ arguments persuasive. The standard for
determining obviousness is whether the prior art, in light of the knowledge
of a person of ordinary skill in the art at the time of Appellants’ invention,
teaches or suggests the subject matter of the properly supported and
construed claims. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). A
claimed invention may be obvious even when the prior art does not teach
each claim limitation, so long as the record contains some reason that would
cause one of skill in the art to modify the prior art to obtain the claimed
invention. Becks on Marine, Inc. v. NFM, Inc., 292 F.3d 718, 728 (Fed. Cir.
2002). Here, Appellants did not file a Reply Brief and have not persuasively
rebutted the Examiner’s finding that “[t]he entire purpose of advertising is to
get information to the general public, and to be seen by as many people as
possible.” Ans. 8. Thus, the Examiner has provided a factual basis and
articulated reasoning with a rational underpinning to support the conclusion
of obviousness with regard to claims 1 and 3. See Final Act. 6—7; Ans. 8;
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants’ “teaching away” argument fails because Appellants have
not identified where Potok actually criticizes, discredits, or otherwise
discourages placing advertisements at the base of a gas pump. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
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otherwise discourage’ investigation into the invention claimed.” (citing
Fulton, 391 F.3d at 1201)).
We are also not persuaded the Examiner erred in finding claim 1
contains non-functional descriptive material. We agree with the Examiner’s
finding that “which advertisements are selected for display on the ad mat are
inconsequential to the method of printing content on the mat, and placing the
mat in front of a gas pump.” Ans. 9. Appellants did not file a Reply Brief
and have not persuasively rebutted the Examiner’s findings. For example,
Appellants have not presented persuasive argument or objective evidence
that the disputed content or information has a functional or structural relation
to the mat. In other words, Appellants have not persuasively argued that
advertisements from different businesses that are off the premise of the gas
pump are being used to change or affect the manner of printing or placing or
functioning of the advertising mat.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
representative claim 1, and grouped claims 5—9, not argued separately.
Rejection of Claim 3 under 35 U.S.C. § 103
Claim 3 depends from claim 1 and further recites “wherein at least
one of the advertisements includes a matrix barcode.” App. Br. 34 (Claim
App’x).
Appellants contend the Examiner erred because claim 3 does not
recite printed matter, as the Examiner found. App. Br. 26. Appellants argue
that “any alleged printed matter of claim 3 ... is critical to the invention and
functionally related to the substrate and therefore cannot be ignored.” Id.
(citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)).
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We disagree. The “matrix barcode” is not positively recited as
actually being used to change or affect the manner of printing or placing or
functioning of the advertising mat. In Gulack, cited by Appellants, the
printed matter (digits) would not achieve its educational purposes without
the band, and the band without the printed matter would similarly be unable
to produce the desired result. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983).
Here, by contrast, the printed matter (i.e., matrix barcode) does not depend
on the mat, and the mat does not depend on the barcode. See In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004). As the Gulack court pointed out, “[wjhere
the printed matter is not functionally related to the substrate, the printed
matter will not distinguish the invention from the prior art in terms of
patentability.” Gulack, 703 F.2d at 1385.
For these reasons, we are not persuaded the Examiner erred in finding
Potok teaches or suggests the disputed limitations of claim 3. Accordingly,
we sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 3.
Rejection of Claim 2 under 35 U.S.C. §103
Claim 2 depends from claim 1 and further recites “determining
existing businesses located within a predetermined distance of the
advertising mat, selecting retail businesses from the existing businesses, and
printing on the advertising mat advertisements for a predetermined number
of the selected retail businesses.” App. Br. 34 (Claim App’x). In rejecting
claim 2 for obviousness, the Examiner found Graham teaches or suggests the
“determining,” “selecting,” and “printing” steps. Final Act. 8—9 (citing
Graham^ 78).
Appellants contend the Examiner erred because paragraph 78 of
Graham does not teach “the user only selects and prints coupons located
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within a predetermined distance from a location.” App. Br. 28. Appellants
further argue there is no reason to combine Potok and Graham because
“changing the advertising mat of Potox [sic] to include vendor [sic] off-site,
would change the principle of operation of Potox.” Id. at 29.
Appellants’ arguments are not persuasive. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references, but whether the claimed subject matter would have been obvious
to those of ordinary skill in the art in light of the combined teachings of
those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants
have not persuaded us that the claimed subject matter would not have been
obvious to those of ordinary skill in the art in light of the combined
teachings of Potok and Graham. Moreover, we find the Examiner provides
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” See Final Act. 9; Ans. 10—11; In re Kahn, 441
F.3d at 988.
Appellants’ argument that changing Potok’s advertising mat to
include off-site vendors would change the principle of operation of Potok is
not persuasive. See App. Br. 29. Appellants have not persuasively shown
how the advertisements selected for printing and printed on the mat affect
the method recited in claim 2. Not only are Appellants’ arguments
speculative and unsubstantiated, it is well settled that the test for
obviousness is not bodily integration of the teachings but, instead, what the
combined teachings of the references would have suggested to those of
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ordinary skill in the art. In re Keller, 642 F.2d at 425. It is sufficient that
the references suggest doing what Appellants did, although the Appellants’
particular purpose was different from that of the references. In re Heck, 699
F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 538—
39 (CCPA 1967)).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Potok and Graham teaches or suggests the disputed
limitations of claim 2. Accordingly, we sustain the Examiner’s 35 U.S.C.
§103 rejection of claim 2.
Rejection of Claim 13 under 35 U.S.C. § 103
In rejecting claim 13 as obvious, the Examiner found Edstrom teaches
a gas pump and a mat placed at the base in front of the gas pump. Final Act.
10 (citing Edstrom H 31—36). The Examiner also found Potok teaches
advertisements placed on the mat. Id.
Appellants make the same “teaching away” argument for claim 13
that was made for claim 1. App. Br. 31. Appellants argue “Potok teaches
away from placing advertisements outside at a gas pump because this would
be away from where the products are shelved.” Id. (emphasis omitted). For
the reasons discussed above for claim 1, we are not persuaded Potok teaches
away from claim 13.
Appellants further argue the Examiner articulated no reasoning with
rational underpinning supported by evidence in the record to modify
Edstrom’s electrically isolative mats to include advertisements. App. Br. 32.
We disagree. The Examiner concluded:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to place advertising on
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Appeal 2018-001093
Application 14/096,000
the mat of Edstrom in order to take advantage of the time a user
spends in front of a gas pump to advertise products and make
advertising revenue.
Final Act. 10—11. Thus, the Examiner articulated reasoning to combine the
teachings of Edstrom and Potok based on the knowledge of a person of
ordinary skill in the art. The Examiner’s reason to combine the cited
references need not be found in the references themselves, but rather may be
found in any number of sources, including common knowledge, the prior art
as a whole, or the nature of the problem itself as is the case here. DyStar
Textilfarben GmbH& Co. Deutschland KG v. CM. Patrick Co., 464 F.3d
1356, 1361 (Fed. Cir. 2006).
For these reasons, we are not persuaded the Examiner erred in finding
the combination of Edstrom and Potok teaches or suggests the disputed
limitations of claim 13. Nor do we find error in the Examiner’s ultimate
conclusion of obviousness.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 13.
Rejection of Claims 10—12 under 35 U.S.C. § 103
Appellants did not present arguments for the 35 U.S.C. § 103
rejections of claims 10-12. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Accordingly, we affirm the Examiner’s 35 U.S.C. § 103 rejection of
claims 10—12.
DECISION
We affirm the Examiner’s decision to reject claims 1—3 and 5—13
under 35 U.S.C. § 112(a) for lack of written description.
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Appeal 2018-001093
Application 14/096,000
We reverse the Examiner’s decision to reject claim 13 under
35 U.S.C. § 112(a) for lack of enablement.
We affirm the Examiner’s decision to reject claims 1 and 13 under
35 U.S.C. § 112(b) for indefiniteness.
We reverse the Examiner’s decision to reject claims 1—3 and 5—13
under 35 U.S.C. § 101.
We affirm the Examiner’s decision to reject claims 1—3 and 5—13
under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1—3 and 5—
13 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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