Ex Parte Venegas

Board of Patent Appeals and Interferences

Aug 15, 2007

09829032 (B.P.A.I. Aug. 15, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK VENEGAS JR.
____________

Appeal 2007-2844
Application 09/829,032
Technology Center 3600
____________

Decided: August 15, 2007
____________

Before ERIC GRIMES, LORA M. GREEN, and NANCY J. LINCK,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 and 5-9. We have jurisdiction under
35 U.S.C. § 6(b). Claim 1 is representative of the claims on appeal, and
reads as follows:
Appeal 2007-2844
Application 09/829,032

1. Support apparatus comprising:
a sign having a hollow, elongated post with a rectangular
cross section and a plurality of spaced-apart through-holes; and
a base comprising
a hollow fillable body having a bottom portion adapted to
rest on a ground surface and a top portion transitioning into a
collar immediately above the fillable body,
the collar including a rectangular bore dimensioned to
receive the cross section of the post and at least one aperture
configured to align with one of the spaced-apart through-holes
of the post when it is received into the collar, and
a fastener received by the aperture and through holes to
hold the sign in an aligned, upright position.

The Examiner relies upon the following references:
Wilson US 4,145,044 Mar. 20, 1979
Brault US 5,220,740 Jun. 22, 1993
Ferrari US 5,833,556 Nov. 10, 1998
Cragg US 6,348,028 B1 Feb. 19, 2002

We affirm.

DISCUSSION
The Examiner has set forth three grounds of rejection over all of the
claims:
1) Claims 1 and 5-91 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Brault and Ferrari (Answer 4);
2) Claims 1 and 5-9 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Brault and Wilson (id. at 5); and

1 The Answer rejects claims 1 and 5-10 (id. at 4-6), but claim 10 was
canceled (Br. 2, n. 1).
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Application 09/829,032

3) Claims 1 and 5-9 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Brault and Cragg (id. at 6).
As Appellant does not argue the rejections separately, and as the
rejections are essentially the same, the following analysis applies to all three
grounds of rejection. In addition, claims 5-9 stand or fall with claim 1 (Br.
2).
Brault is relied upon for teaching a support apparatus having “all of
the limitations of the claimed invention except for the collar having one
aperture and a plurality of spaced apart through holes.” (Answer 4.) Brault
is also relied upon for its teaching that the support apparatus, i.e. base
member, has a plurality of uses (Brault col. 2, ll. 63-66). Brault teaches that
the support apparatus may be used as, for example, “as a stand for traffic
signs, for supporting a post for various games such as for holding the basket
in basketball, for holding a net in tennis or badminton games and for
generally holding pictograms or shelves.” (Brault, col. 3, ll. 1-6.)
Ferrari, Wilson, or Cragg are relied upon for their disclosure of a base
that is either fillable (Ferrari and Wilson) or weighted (Cragg), wherein the
base has a collar having a aperture and a fastener, and for teaching a post
having a plurality of spaced apart holes (Answer 4-6). The Examiner
concludes that “[i]t would have been obvious to one having ordinary skill in
the art to have modified Brault to hav[e] included the collar having an
aperture, a fastener, and the post having a plurality of spaced apart through
holes as taught by [Ferrari, Wilson or] Cragg for the purpose of adjusting the
height of the stand to accommodate various heights when used as a
basketball sign support, a traffic sign, a tennis net support or badminton
game apparatus as discussed . . . [by] Brault.” (Id. at 6.)
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Application 09/829,032

“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). In order to
determine whether a prima facie case of obviousness has been established,
we considered the factors set forth in Graham v. John Deere Co., 383 U.S.
1, 17 (1996); (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; (3) the level of ordinary skill in
the relevant art; and (4) objective evidence of nonobviousness, if present.
We conclude that the Examiner has set forth a prima facie case of
obviousness, and the rejections of claims 1 and 5-9 over the combination of
Brault and Ferrari, Wilson, or Cragg, are affirmed.
Appellant argues that although Brault does refer to the other
applications of holding the basket in basketball, for holding a net in tennis or
badminton games and for generally holding pictograms or shelves, “Brault
does not infer different heights or height adjustability as the Examiner seems
to imply.” (Br. 3 (emphasis in original).) Moreover, Appellant asserts, “the
Examiner seems to imply that Appellant’s use of these features is for height
adjustment but it is not; rather Appellant’s use of ‘through-holes,’ ‘at least
one aperture’ and ‘a fastener’ is to hold the sign in an aligned, upright
position.” (Id. (emphasis in original).)
Appellant argues further that Brault teaches “two perfectly acceptable
post-holding structures, at least one of which includes features that teach
away from any substitution.” (Br. 3.) According to Appellant, a concern of
Brault is proper post rotational orientation, rather than height adjustment,
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Application 09/829,032

and “[s]ince none of the cited references provide any better solution in this
regard, obviousness has not been established.” (Id.)
First, although Appellant may have used “through-holes,” “at least
one aperture” and “a fastener” to hold the sign in an aligned, upright
position, a finding of obviousness does not require that the motivation to
combine references be identical to the Appellant’s to establish obviousness.
In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
As noted by the United States Supreme Court:
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103. One of the ways in which a patent’s
subject matter can be proved obvious is by noting that there
existed as the time of the invention a known problem for which
there was an obvious solution encompassed by the patent’s
claims.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741-42, 82 USPQ2d 1385,
1397 (2007).
Thus, while Brault may not specifically infer height adjustability,
Brault does suggest different uses for his support apparatus, such as holding
the basket in basketball, for holding a net in tennis or badminton games and
for generally holding pictograms or shelves, which require some sort of
height adjustability. As evidenced by Ferrari, Wilson, and Cragg, the use of
a post having a plurality of spaced-apart through-holes was known to the
ordinary artisan as a method of providing height adjustability.
Moreover, Ferrari, Wilson, and Cragg also demonstrate that the use of
“through-holes,” “at least one aperture” and “a fastener” was known in the
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art as a means of attaching a post to a base, whether the base include a collar
or another post (see, e.g., Cragg, Figure 27). Thus, the ordinary artisan
would have recognized that one could place an aperture in the collar of the
support member, wherein the aperture lines up with one of the spaced-apart
through-holes of the post, and then use a fastener to hold the post in an
aligned, uptight position. KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396
(2007) (“[I]f a technique has been used to improve one device, and a person
of ordinary skill would recognize that it would improve similar devices in
the same way, using the technique is obvious unless its application is beyond
his or her skill.”)
CONCLUSION
In summary, we find that the Examiner has set forth a prima facie case
of obviousness, and the rejections 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).

AFFIRMED

Ssc

GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C.
PO BOX 7021
TROY, MI 48007-7021

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