Ex Parte BarkdollDownload PDFPatent Trial and Appeal BoardNov 12, 201311403428 (P.T.A.B. Nov. 12, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PATRICK J. BARKDOLL ____________________ Appeal 2011-013704 Application 11/403,428 Technology Center 3600 ____________________ Before: MICHAEL L. HOELTER, LYNNE H. BROWNE, and BART A. GERSTENBLITH, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013704 Application 11/403,428 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-4, 6-17, 19, and 20. Claims 5 and 18 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to price channel label holders for merchandise displays. Claims 1 and 14 are independent, claim 1 is reproduced below: 1. A label holder for a retail display apparatus including a shelf, the label holder comprising: a front panel of a plastic material having a front surface; a clip integrally connected to the front panel via a first integral hinge and pivoting relative to the front panel through the first integral hinge, the clip having a second integral hinge disposed between the first integral hinge and a leg portion extending upwardly from the second integral hinge toward the first integral hinge, the leg portion having a gripping surface, the gripping surface and front surface facing one another, the gripping surface including at least one rib projecting towards the front surface for increasing localized engagement of a sign positioned between the gripping surface and the front panel, wherein the clip and front panel consist of a single material of a constant hardness characteristic; and a shelf mount structure connected to front panel adapted to mount the front panel on the shelf, the front surface of the front panel facing away from the shelf mount structure. Appeal 2011-013704 Application 11/403,428 3 PRIOR ART Wilson Nagel US 5,987,795 US 6,266,906 B1 Nov. 23, 1999 Jul. 31, 2001 GROUND OF REJECTION Claims 1-4, 6-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nagel and Wilson. OPINION Claims 1, 3, 4, 6-8, 11-17, 19, and 20 Appellant argues claims 1, 3, 4, 6-8, 11-17, 19, and 20 as a group. See App. Br. 6-13. We select independent claim 1 as the illustrative claim and claims 3, 4, 6-8, 11-17, 19, and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Nagel discloses every limitation of independent claim 1, including “first hinge 16,” except for “a second integral hinge and a leg portion.” Ans. 3. The Examiner finds that “Wilson teaches a paper slip holding clip comprising a panel 46, hinges 58 and 52, and a gripping surface 56, which includes at least one rib 62, which increases localized engagement of the paper slip positioned in the holding clip.” Id. Based on these findings the Examiner concludes that it would have been obvious to merely substitute the clip taught by Nagel for the clip taught by Wilson, since it is a clip design known in the art, and would have produced predictable results. Ans. 4 (emphasis added). In particular, we note that the Examiner’s proposed combination replaces Nagel’s “resilient clip 24” with Wilson’s second integral hinge 52 and leg portion 56, but does not replace Nagel’s first hinge 16. See Ans. 3. Appeal 2011-013704 Application 11/403,428 4 Appellant argues that “the Examiner has failed to explain a rationale as to why one of ordinary skill in the art would substitute the clip taught by Nagel for the clip taught by Wilson.” App. Br. 6; Reply Br. 5. Appellant’s argument is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), in which the Court recognized that a prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). The Examiner has made a proper showing in accordance with KSR. Appellant has not shown that the results of the proposed modification would not be predictable. Accordingly, Appellant has not apprised us of error. Appellant states that Nagel’s label holder is manufactured using an extrusion process and that Wilson’s clip is manufactured by folding a sheet of polypropylene. See App. Br. 7. Based on these differences in the manufacturing processes Appellant argues that “[i]t is unlikely that one would seek to modify the extruded label holding device of Nagel with the clip taught by Wilson.” App. Br. 8; see also Reply Br. 8. In response to this argument, the Examiner notes that “[t]he claims however make no mention of an extrusion process.” Ans. 6. We agree. It is well-established that unclaimed features cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Thus, Appellant’s argument is not persuasive. Appellant states that “the advantages of using extrusion to make devices, such as label holders, are the speed and cost-effectiveness inherent in the extruding process.” App. Br. 10. Appellant argues that “adding the Appeal 2011-013704 Application 11/403,428 5 Wilson clip to the label holding device of Nagel results in a label holder that is expensive and difficult to produce quickly . . . resulting [in a] label holding device [that] would be unsatisfactory for the purpose intended.” App. Br. 10; see also Reply Br. 7. The Examiner responds to this argument by finding that “[t]he purpose of the device is to hold paper for display.” Ans. 6. The Examiner notes that “[i]t is underst[ood] that a device’s design may be modified to suit particular processes for manufacture. However, the limitations claimed do not preclude a device that could be produced by other processes, particularly when the claims make no mention of the desired process.” Id. We agree. Appellant has not shown where the advantages of using extrusion to make the device are claimed. Accordingly, Appellant’s argument is not convincing. Appellant states that “Wilson relies on the serrated edge of the clip to hold paper between the clip and the panel.” App. Br. 12 (citing Wilson, fig. 6). Appellant argues that “using the clip taught by Wilson with the label holding device taught by Nagel, which relies on using a softer material to provide the resiliency, would change the principle of operation of the label holding device in Nagel.” Id.; see also Reply Br. 7. In response to this argument the Examiner determines that: the paper is still to be held in the same location upon insertion from the same direction, with the same type of spring force being applied against it from the resiliency of the upper hinge. Upon modification, the structure remaining from the primary reference functions under the same operating principle as it did before, i.e. the upper hinge applies a resilient force to the clip to hold the paper against the planar surface. Appeal 2011-013704 Application 11/403,428 6 Ans. 7-8. We agree. Appellant has not explained why the modified device would no longer operate in accordance with its principle of operation as explained by the Examiner. Accordingly, Appellant’s argument is not persuasive. For these reasons, we sustain the Examiner’s rejection of independent claim 1 and claims 3, 4, 6-8, 11-17, 19, and 20, which fall therewith. Claim 2 Appellant argues that “it can be seen from FIG. 5 that the short panel 56 is not substantially parallel to the front panel, as required by claim 2.” App. Br. 13; Reply Br. 8. In response to this argument, the Examiner determines “that within the broadest reasonable interpretation of the claim, the leg portion 56 is substantially parallel to the front panel.” Ans. 8. We agree and note that Appellant’s argument refers to Wilson alone and not the device of Nagel as modified in view of the teachings of Wilson. Appellant has not shown where the Specification defines the claim terminology “substantially parallel” in such a manner as to preclude a portion that is slightly off parallel as the leg portion of Wilson would be when Wilson’s clip is substituted for Nagel’s clip. Accordingly, Appellant has not apprised us of error. For these reasons, we sustain the Examiner’s rejection of claim 2. Claim 9 Appellant argues “it is clear from FIG. 5 that hinge 58 in Wilson is not semi-circular and does not have a radius, and therefore could not meet the requirements of claim 9.” App. Br. 14; see also Reply Br. 8. Appellant’s argument is not responsive to the rejection as articulated by the Examiner. The Examiner finds that “Nagel teaches a plastic label holder comprising a front panel 11, a resilient clip 24 connected to the front panel Appeal 2011-013704 Application 11/403,428 7 by an integral first hinge 16, and a shelf mount structure 20.” Ans. 3 (emphasis added). The Examiner determines that “[t]he combination of the references provides support that both the upper and lower hinges can be semi-circular and the claim is therefore obvious.” Ans. 9. Thus, Appellant’s argument is not convincing. For these reasons, we sustain the Examiner’s rejection of claim 9. Claim 10 Appellant states “the Examiner has already asserted that the clip taught by Wilson is being substituted for the clip taught by Nagel.” Ans. 14. Appellant argues “[a]s such, the Examiner cannot use a portion of the clip that has been substituted to show that claim 10 is obvious.” Id. Appellant’s argument is indicative of a misunderstanding of the rejection as set forth by the Examiner. As discussed supra, the rejection substitutes Wilson’s clip component for Nagel’s clip component but does not replace Nagel’s first hinge. Accordingly, Appellant’s argument is not persuasive. For these reasons, we sustain the Examiner’s rejection of claim 10. DECISION The Examiner’s rejection of claims 1-4, 6-17, 19, and 20 is 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)(1)(iv) (2009). AFFIRMED mls Copy with citationCopy as parenthetical citation