Ex Parte Barkdoll

Patent Trial and Appeal Board

Nov 12, 2013

11403428 (P.T.A.B. Nov. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK J. BARKDOLL
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Appeal 2011-013704
Application 11/403,428
Technology Center 3600
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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
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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
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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
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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
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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

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