Ex Parte Webster et al

Board of Patent Appeals and Interferences

Dec 16, 2009

10362308 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WARREN JAMES WEBSTER and DENIS ROGAN
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Appeal 2008-005677
Application 10/362,308
Technology Center 3600
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Decided: December 16, 2009
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Before: JENNIFER D. BAHR, MICHAEL W. O'NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Warren James Webster et al., (Appellants) appeal under 35 U.S.C. §
134 (2002) from the Examiner's decision rejecting claims 1 and 3-24. Claim
2 has been cancelled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6 (2002).

The Invention
Appellants' claimed invention is directed to a system of displaying
advertising to aircraft passengers during take-off and/or landing of an
aircraft from an airport. Spec. 1:4-5.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A substantially horizontal billboard being
substantially flush with a ground surface and being
dimensioned to be visible to aircraft passengers
during take-off, landing or taxiing of the aircraft
wherein the billboard is located within the airside
of an airport, wherein said airside comprises at
least one runway and at least one taxiway and
wherein said billboard is located adjacent said
runway or taxiway, and wherein said billboard is
positioned away from a straight line of sight of a
pilot of the aircraft during take-off, landing or
taxiing.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Borregard US 2,200,533 May 14, 1940
Valley US 4,879,965 Nov. 14, 1989
Munson US 5,288,163 Feb. 22, 1994
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Franquet (as translated)1 EP 596,850 May 11, 1994
Appellants seek review of the Examiner's rejections under 35 U.S.C.
§ 102(b) of claims 1, 7, and 8 as anticipated by Munson and under § 103(a)
of claims 1, 3-6, and 16-22 as unpatentable over Franquet and Munson;
claims 1, 9-11, 21, and 23 as unpatentable over Valley; and claims 1, 12-15,
21, and 24 as unpatentable over Borregard.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.

OPINION
Appellants argue, inter alia, that the cited prior art fails to disclose or
render obvious a billboard that satisfies the limitation "wherein said
billboard is positioned away from a straight line of sight of a pilot of the
aircraft during take-off, landing or taxiing" in independent claims 1, 16, and
21. Appeal Br. 13, 15, 16, and 17. In order to determine the accuracy of the
Examiner's findings, we must first construe the scope of the claim. As
claimed, the billboard is positioned on an airside relative to a pilot's "straight
line of sight." The particular field of vision that defines a pilot's "straight
line of sight" can vary based on the orientation and physical geometries of
the plane, pilot, taxiways, and runways. Further, the objects visible within a
pilot's line of sight will vary upon movement of both the plane and the pilot.
For example, an object placed to the side of a runway near the far end of the
runway may be visible to a pilot staring straight ahead through a cockpit

1 Appellants do not challenge the accuracy of this translation, obtained by
the USPTO.
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window upon initial touchdown, but not be visible to the same pilot staring
in the same direction after the aircraft has proceeded down the runway.
Therefore, we turn to the Specification to shed light on the meaning of this
limitation. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565,
1576 (Fed. Cir. 1986) (the test for definiteness under 35 U.S.C. § 112,
second paragraph, is whether "those skilled in the art would understand what
is claimed when the claim is read in light of the specification").
The Specification, however, is silent regarding the meaning of a pilot's
"straight line of sight." We find that the Specification does not describe the
pilot's line of sight. In fact, there is no mention of a pilot’s straight line of
sight, or positioning of the billboard away from such straight line of sight, in
the application upon filing. Further, figure 1 depicts an above-ground view
of an airport where each set of billboards 7 appears to be straight ahead and
within a straight line of sight of a pilot on the runway, for at least some
positions of the aircraft during takeoff, landing, or taxiing. Because neither
the claims nor the Specification provides a basis to determine the metes and
bounds of a pilot's "straight line of sight," the limitation is insolubly
ambiguous and not amenable to construction. As such, the limitation is
indefinite, and the prior art rejections must fall because they are necessarily
based on a speculative assumption as to the meaning of the claims. See
Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed.
Cir. 2001) (a claim is indefinite if it is "insolubly ambiguous" and not
"amenable to construction"); In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). We do not sustain any of the Examiner’s rejections under 35 U.S.C.
§§ 102 and 103. It should be understood, however, that our decision in this
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regard is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejection.
The description requirement found in the first paragraph of 35 U.S.C.
§ 1l2 is separate and distinct from the enablement requirement of that
provision. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991). The purpose of the written description requirement in 35 U.S.C. §
112, first paragraph, is to convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, the applicant was in possession of
the invention as now claimed. Id.
As discussed above, the present application did not contain any
description, at the time the application was filed, of the billboard as being
positioned away from a straight line of sight of a pilot of the aircraft during
take-off, landing, or taxiing. Accordingly, the application did not convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, Appellants were in possession of the invention as now claimed.

NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).
As explained above, the limitation "wherein said billboard is
positioned away from a straight line of sight of a pilot of the aircraft during
take-off, landing or taxiing" in claims 1, 16, and 21 is ambiguous and not
described in the original disclosure. Dependent claims 3-15, 17-20, and 22-
24 incorporate this limitation and thus suffer from the same deficiency.
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Therefore, we enter new grounds of rejection of claims 1 and 3-24 under §
112, second paragraph, as being indefinite, and under § 112, first paragraph,
for failure to comply with the written description requirement.

DECISION
The Examiner's decision is reversed as to claims 1 and 3-24. Pursuant
to our authority under 37 C.F.R. § 41.50(b) (2009), we enter a new ground
of rejection of claims 1 and 3-24 under 35 U.S.C. § 112, second paragraph,
as indefinite, and under 35 U.S.C. § 112, first paragraph, as lacking written
description support.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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