Ex Parte White

Patent Trial and Appeal Board

Aug 29, 2018

12718050 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/718,050 03/05/2010
26574 7590 08/31/2018
SCHIFF HARDIN, LLP- Chicago
PA TENT DEPARTMENT
233 S. Wacker Drive-Suite 7100
CHICAGO, IL 60606-6473
FIRST NAMED INVENTOR
MichaelJ. White
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P09,0326 (34774-0001) 4073
EXAMINER
VERAA, CHRISTOPHER
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
patents-CH@schiffhardin.com
jbombien@schifthardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. WHITE
Appeal2017-000412
Application 12/718,050
Technology Center 3600
Before STEVEN D.A. McCARTHY, NATHAN A. ENGELS and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
3 decision finally rejecting claim 2---6, 10-12, and 15-17 under pre-AIA 35
4 U.S.C. § 103(a) as being unpatentable over Kump '124 (US 6,698,124 B2,
5 issued Mar. 2, 2004), Kump '755 (US 6,341,755 Bl, issued Jan. 29, 2002)
6 and Seidel (US 6,644,606 Bl, issued Nov. 11, 2003). An oral argument was
7 held on August 23, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
8 We AFFIRM the rejection of claims 1---6, 10, 11, & 15-17.
9 We REVERSE the rejection of claim 12.
The Appellant identifies K-Intemational, Inc., as the real parties in
interest. (See "Appellant's Main Appeal Brief," dated Nov. 16, 2015, at 1).
Appeal2017-000412
Application 12/718,050
1 THE CLAIMED SUBJECT MATTER
2 The claims on appeal are directed to "sign supports of the type that
3 support signs on product display shelves." (Spec. 1, 11. 4---6). According to
4 Paul White, the Vice President of Sales and Marketing for K-Intemational,
5 Inc., the assignee of the underlying application, because sign supports
6 meeting the limitations of the appealed claims:
7 are assembled at the factory and arrive pre-assembled, the
8 customer is confident that the sign supports are properly
9 assembled and capable of withstanding undesirable contact of
10 shopping carts and customers that may otherwise result in
11 disassembly of the sign supports ....
12 Additionally, the preassembly of the sign supports saves
13 the customer valuable time and resources. As described in
14 Applicant's specification at page 2, conventional sign supports,
15 ... are assembled by the user from separate components that are
16 often times mixed in a single box and shipped to the user for
17 assembly and use. The user must both sort out the individual
18 parts in the box and then slidably assemble the components
19 together. Users do not want to spend the extra time necessary for
20 these sorting and assembling operations, nor do they want the
21 chance that the sign support can become free of its engaging
22 bracket base.
23 (Declaration of Paul White, executed Apr. 2, 2013 ("White Deel."), paras. 7
24 & 8).
25 Claims 12, 15, and 17 are independent. Claim 15 is representative of
26 the grouping including claims 1-6, 10, 11, & 15-17. Claims 12 and 15
27 recite:
28 12. A method of assembling and shipping a sign
29 support, wherein the sign support comprises a mounting bracket
30 and a sign holder, wherein the mounting bracket is arranged to
31 selectively engage an associated fixture, wherein the sign holder
32 has a mounting bracket engaging member and a sign holding
2
Appeal2017-000412
Application 12/718,050
1 member, wherein the sign holding member is arranged to engage
2 and hold a sign, and wherein the method comprises:
3 selecting a mounting bracket and corresponding sign
4 holder having adhesive applied to at least one of the mounting
5 bracket and the sign holder, the adhesive having a cover over the
6 adhesive;
7 removing the cover from the adhesive to reveal and
8 adhesive surface;
9 abutting the mounting bracket engaging member of the
10 sign holder against a ledge extending from mounting bracket to
11 align the mounting bracket engaging member with the sign
12 holder;
13 adhesively adhering the mounting bracket engaging
14 member to the mounting bracket to form the sign support; and
15 shipping the sign support so formed to a customer.
16 15. A sign support, comprising:
17 a sign holder having:
18 a sign holding member configured to receive a sign and to
19 removably engage the sign in the sign holding
20 member;
21 a hinge member connected to the sign holding member,
22 the hinge member being resiliently flexible;
23 an engagement member connected to the hinge member,
24 the engagement member including a planar wall, the
25 hinge member and the sign holding member
26 extending from an opposite surface of the
27 engagement member than the planar wall;
28 a mounting bracket having:
29 at least one hooked shaped finger;
30 a planar member connected to the at least one hook-shaped
31 finger, the at least one hook shaped finger extending
3
Appeal2017-000412
Application 12/718,050
1 from a surface of the mounting bracket to affix the
2 engagement member to the mounting bracket2; and
3 an adhesive between the planar wall of the engagement member
4 and the planar surface of the planar member of the
5 mounting bracket to affix the engagement member to the
6 mounting bracket; and
7 a ledge extending from an end of one of the planar wall of the
8 engagement member and the planar surface of the planar
9 member of the mounting bracket, the ledge extending a
10 distance sufficient to abut an edge of the other of the planar
11 wall of the engagement member or the planar member of
12 the mounting bracket, the ledge being the only structure
13 extending from the planar wall or the planar surface, the
14 planar wall and the planar surface being otherwise planar
15 and without projecting structures.
16
17 FINDINGS OF FACT
18 The record supports the following findings of fact ("FF") by a
19 preponderance of the evidence.
20
21 Kump '124
22 1. Kump '124 describes a display system including a display
23 member 504 and a vertical mounting bracket R. (See Kump '124, col. 12, 11.
24 10-12 & Fig. 28). The display member or sign holder 504, as depicted in
25 Figure 31, includes a pair of side walls 672, 674 joined at one end by a
26 central wall 670 to form a "U"-shaped channel 658. (See Kump '124, col.
2 The limitation, "the at least one hook shaped finger extending from a
surface of the mounting bracket to affix the engagement member [ of the sign
holder] to the mounting bracket," appears to be a typographical error.
Should these claims be further prosecuted, the Appellant may wish to amend
this limitation.
4
Appeal2017-000412
Application 12/718,050
1 13, 11. 46-50). The side walls 672, 674 have resilient, flexible fins 678
2 projecting into the "U" -shaped channel 658, thereby enabling the "U" -
3 shaped channel to act as a sign holding member, to receive a sign 652 and to
4 removably engage the sign in the sign holding member. (See Kump '124,
5 col. 14, 11. 1-3).
6 2. The display member 504 also includes an engagement portion
7 or engagement member 632. The engagement portion 632 includes a
8 generally planar forward wall 634. "U"-shaped flanges 626, 628 project
9 forward from opposite edges of the generally planar forward wall 634 to
10 engage side edges of the vertical mounting bracket R. (See Kump '124, col.
11 12, 11. 48-55). Otherwise, the generally planar forward wall 634, as depicted
12 in Figure 31, is flat, with no structures projecting in a forward direction from
13 the wall.
14 3. The display member 5 04 also includes a resiliently flexible
15 hinge member connected, at one end, to the generally planar forward wall
16 634; and, at another end, to the central wall 670 of the "U"-shaped channel
17 658. (See Kump '124, col. 13, 11. 30-37 & Fig. 31 ).
18 4. The vertical mounting bracket R includes a rectangular,
19 generally planar support body or planar member 5 06 connected to a pair of
20 hook-shaped fingers 508,510. The hook-shaped fingers 508,510, as
21 depicted in Figure 29, extend from a forward surface of the generally planar
22 support body 506 to affix the mounting bracket to an upright support 276.
23 (See Kump '124, col. 12, 11. 21-28).
24 5. The vertical mounting bracket R also includes a shelf or ledge
25 644 extending from one end of a planar surface of the generally planar
26 support body 506. (See Kump '124, col. 13, 11. 13-18 & Fig. 30).
5
Appeal2017-000412
Application 12/718,050
1 6. The display member 5 04 is coupled to the vertical mounting
2 bracket R by fitting opposite edges of the generally planar support body 5 06
3 of the mounting bracket into channels formed by the "U" -shaped flanges
4 626, 628 projecting forwardly from the generally planar forward wall 634 of
5 the display member; and then sliding the display member into position along
6 the length of the mounting bracket. (See Kump '124, col. 12, 11. 56-62 &
7 Fig. 28). The shelf 644 extends a sufficient distance from the planar surface
8 to abut a lower edge of the generally planar forward wall 634 of the display
9 member 5 04 when the display member is slid over the generally planar
10 support body 506. (See Kump '124, col. 13, 11. 13-18). The shelf 644 acts
11 as a stop or ledge to properly position the display member 5 04 over the
12 mounting bracket R.
13 7. The rear, planar surface of the generally planar support body
14 506 of the vertical mounting bracket R includes a pair of protrusions 626,
15 628 applying a force to the front surface of the generally planar forward wall
16 63 4 of the display member 5 04 to help secure the display member and the
17 mounting bracket together. (See Kump '124, col. 12, 11. 43--45 & col. 13, 11.
18 6-12). Apart from the shelf 644 and the protrusions 626, 628, no structure
19 projects from the rear surface of the generally planar support body 5 06 as
20 depicted in Figures 28 and 30.
21
22 Seidel
23 8. Seidel describes a mounting support bracket 36 for mounting a
24 scroll-type, windup point-of-sale advertisement on a shelf 10. (See Seidel,
25 col. 2, 11. 37--42 & col. 3, 11. 62 & 63). The windup reel 20 includes a plate
26 34 affixed to a windup reel housing 22. (See Seidel, col. 3, 1. 51 & Fig. 1).
6
Appeal2017-000412
Application 12/718,050
1 An outer surface of the plate 34 has a contact adhesive pad 31 covered by a
2 release layer 33. (See Seidel, col. 3, 11. 58---61 & Fig. 1). The mounting
3 support bracket 36 includes a depending tab 44. A right angled ledge 55
4 projects from a lower end of the depending tab 44 and, together with a ridge
5 58, defines an elongated groove 60. The mounting support bracket 36 also
6 includes hook members 52, 54 near an upper end of the depending tab 44.
7 (See Seidel, col. 4, 11. 24--44 & Fig. 1 ).
8 9. Seidel teaches coupling the windup reel 20 to the mounting
9 support bracket 36 by removing the release layer 33 from the adhesive pad
IO 31; positioning an upper end of the plate 34 in the hook members 52, 54; and
11 pivoting the windup housing 22 and the plate 34 toward the depending tab
12 44 until the adhesive pad 31 on the plate 34 contacts the depending tab and a
13 lower end of the plate 34 snaps into the groove 60. (See Seidel, col. 4, 11.
14 45---65 & Fig. 3). Seidel also teaches that the windup reel 20 is detachable
15 from the mounting support bracket 36. (See Seidel, col. 4, 1. 66- col. 5, 1.
16 20).
17
18 ANALYSIS
19 It would have been obvious in view of the teachings of Seidel to
20 merely substitute an adhesive for the "U"-shaped flanges 626, 628 described
21 by Kump '124 to secure the display member 5 04 described by Kump '124 to
22 the vertical mounting bracket R. (See Final Office Action, mailed Mar. 30,
23 2015 ("Final Act."), at 3 ). Claim 15 recites a simple mechanical device.
24 One familiar with the teachings of Seidel would have had sufficient skill to
25 make the substitution. Furthermore, the Appellant has not suggested a
7
Appeal2017-000412
Application 12/718,050
1 persuasive reason why the substitution, in the context of the present simple
2 mechanical device, would have yielded unpredictable results.
3 Once one substituted an adhesive for the "U" -shaped flanges 626, 628
4 described by Kump '124, it would have been obvious to eliminate the "U"-
5 shaped flanges 626, 628 from the generally planar forward wall 634 of the
6 display member 504; and to eliminate the protrusions 626, 628 from the
7 generally planar support body 5 06 of the mounting bracket R. The provision
8 of facing surfaces that are smooth apart from the shelf or ledge 644 on the
9 mounting bracket R would have facilitated the formation of a strong
10 adhesive bond. As the Examiner correctly finds, the method described by
11 Seidel for adhering Seidel's windup housing 22 and plate 34 to Seidel's
12 mounting support bracket 36 would have suggested retaining the shelf 644
13 described by Kump '124 to permit an assembler to bond the display member
14 5 04 to the mounting bracket R by abutting the generally planar forward wall
15 634 of the display member 504 against the shelf or ledge and then rotating
16 the generally planar forward wall 634 into contact, and adhesive
17 engagement, with the generally planar support body 5 06. (See Final Act. 3).
18 The Appellant argues that one familiar with the teachings of Kump
19 '124 would not have secured the display member 5 04 to the vertical
20 mounting bracket R using a permanent attachment means such as an
21 adhesive. (See "Appellants' Main Appeal Brief," dated Nov. 16, 2015
22 ("Br."), at 6). Seidel, however, teaches that its adhesive attachment is also
23 detachable. (See FF 9). The Appellant's argument is not persuasive.
24 The Appellant also presents evidence of sales volumes, which the
25 Appellant relies on as proof of commercial success. (See Br. 11-13; White
26 Deel., para. 6). Sales volume alone is not persuasive evidence of
8
Appeal2017-000412
Application 12/718,050
1 commercial success. See In re Jell a, 90 USPQ2d 1009, 1017 & 1018 (BP AI
2 2008) (precedential). Furthermore, the testimony of the Appellant's expert,
3 Paul White, indicates that the purported commercial success is due to
4 adhering the sign holder and the mounting bracket before shipping the sign
5 support to the customer. (See White Deel., paras. 7 & 8). This feature is not
6 recited in independent claim 15 or independent claim 1 7. Therefore, the
7 Examiner's evidence is persuasive despite the Appellant's evidence.
8 We sustain the rejection of claim 2-6, 10, 11, and 15-17 under
9 § 103(a) as being unpatentable over Kump '124, Kump '755, and Seidel.
10 Claim 12 stands on a different footing, however.
11 Claim 12 recites the steps of "adhesively adhering the mounting
12 bracket engaging member to the mounting bracket to form the sign support;
13 and shipping the sign support so formed to a customer." The Examiner's
14 finding that the "method of assembling the article and then shipping to a
15 customer would have been obvious ... since it is common to finish
16 manufacturing a product before shipping it to a customer" (Final Act. 4;
17 Ans. 7) is not persuasive in view of Mr. White's testimony to the contrary.
18 (See White Deel., para. 8). Viewing claim 12 as a business method, we do
19 not sustain the rejection of claim 12 under§ 103(a) as being unpatentable
20 over Kump '124, Kump '755, and Seidel.
9
Appeal2017-000412
Application 12/718,050
1 DECISION
2 We AFFIRM the Examiner's decision rejecting claim 2-6, 10, 11, and
3 15-17 under§ 103(a) as being unpatentable over Kump' 124, Kump '755,
4 and Seidel.
5 We REVERSE the Examiner's decision rejecting claim 12.
6 No time period for taking any subsequent action in connection with
7 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
8 § 1.136(a).
AFFIRMED-IN-PART
10