Ex Parte Garfinkle

Patent Trial and Appeal BoardDec 17, 2012

11412514 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/412,514 04/27/2006 Benjamin L. Garfinkle 535.10 8470 85444 7590 12/18/2012 Bay Area Technolgy Law Group PC 4089 Emery Street Emeryville, CA 94608 EXAMINER HOGE, GARY CHAPMAN ART UNIT PAPER NUMBER 3611 MAIL DATE DELIVERY MODE 12/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BENJAMIN L. GARFINKLE ____________________ Appeal 2010-012030 Application 11/412,514 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, REMY J. VANOPHEM, and SCOTT E. KAMHOLZ, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge KAMHOLZ. Opinion Dissenting filed by Administrative Patent Judge VANOPHEM. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012030 Application 11/412,514 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 1, 2, 4, and 6-9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to decorative and informative signage. Spec. 1. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A sign system for displaying product information proximate a product being vended, said sign system comprising a base for maintaining said sign system in a predetermined orientation, a substantially planar face appended to said base and having a front surface and a rear surface, a primary sign releasably retained to said front surface, said primary sign having an opening or window therein, at least one channel configured to the front or rear surface of said planar face and positioned substantially behind said opening or window in said primary sign and a secondary sign releaseably retained within said channel such that at least a portion of said secondary sign is visible through said opening or window, and wherein said opening or window in said primary sign is sized to enable a portion, but not all, of said secondary sign to be visible therethrough. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Sholkin Forsythe US 2,259,272 US 6,581,316 B2 Oct. 14, 1941 Jun. 24, 2003 Appeal 2010-012030 Application 11/412,514 3 REJECTIONS Appellant seeks our review of the following rejections: Claims 1, 4, and 6-9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Forsythe. Ans. 3. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Forsythe and Sholkin. Ans. 4. ANALYSIS Appellant argues claims 1, 4, and 6-9 as a group. We select claim 1 as representative and decide the appeal with respect to all claims in this group on the basis of claim 1 alone; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant also relies on the arguments presented for patentability of representative claim 1 as the basis for addressing the rejection of claim 2. App. Br. 6. As such, the outcome of our review of the second ground of rejection turns on our analysis of the first ground of rejection as to claim 1. In response to the Examiner’s finding that Forsythe discloses all limitations of claim 1 (Ans. 3), Appellant argues that “the thrust of the present invention is completely unrelated to that of Forsythe” (App. Br. 5) and that the record reflects no “support relied upon by the Examiner for concluding” that the cited art discloses “said opening or window in said primary sign is sized to enable a portion, but not all, of said secondary sign to be visible therethrough” as claimed. App. Br. 6. In response, the Examiner observes that the “thrust” of the invention is irrelevant in the context of an anticipation rejection (Ans. 3) and that a “point by point” explanation of “how each and every limitation in the claims is anticipated by Forsythe” has been provided. Ans. 4. Appeal 2010-012030 Application 11/412,514 4 Appellant replies that all claims are distinguished from Forsythe because in Forsythe’s system “all of the information displayed by the EPL appears through the primary sign.” Reply Br. 2. Appellant’s argument does not apprise us of error in the rejection because the argument is not commensurate in scope with claim 1. Claim 1 requires that the opening or window in the primary sign “enable a portion, but not all, of said secondary sign to be visible therethrough” (emphasis added). The claim does not require that a portion, but not all, of the information on the secondary sign be visible through the opening or window, but merely a portion of the secondary sign itself. Moreover, comparison of Forsythe’s Figures 10B and 11 reveals that a portion, but not all, of each EPL 22a is visible through a respective window in product description sheet 224. We are apprised of no error in the Examiner’s rejection and affirm the rejection of claims 1, 4, and 6-9. We affirm the rejection of claim 2 for similar reasons. DECISION For the above reasons, the Examiner’s decision to reject claims 1, 2, 4, and 6-9 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). AFFIRMED Appeal 2010-012030 Application 11/412,514 5 VANOPHEM, Administrative Patent Judge, dissenting. I disagree with my colleagues because anticipation requires “…the presence in a single prior art reference disclosure of each and every element of the claimed invention, arranged as in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d. 1452, 1458 (Fed. Cir. 1984). The Examiner failed to identify all of the elements of independent claim 1 in the Forsythe reference. For example, Forsythe discloses at column 3, lines 54-56, that each EPL 22A displays prices of different versions or special prices associated with a single product’s ITEM ID. Therefore, the complete display consists of some version of a price associated with a single product ITEM ID. (See Forsythe, col. 9, ll. 55-56). The complete display is identified by reference character 280. Further, Forsythe discloses at column 9, lines54-56, that product description sheet 224 includes apertures 274 which line up with display 280 of EPLs 22A when sign 220 is assembled with installed EPLs 22A. Therefore, Forsythe clearly discloses that the opening in product description sheet 224 is the same as the display 280 and therefore does not anticipate independent claim 1, since the claim sets forth “…and wherein said opening or window in said primary sign is sized to enable a portion, but not all, of said secondary sign to be visible therethrough.” I concur completely with my colleagues that the “thrust” of the invention in the context of an anticipation rejection is irrelevant (Ans. 3). However, the Appellant correctly points out that the EPLs are inserted as electronic modules within cassette 222 such that all of the information displayed by the EPL appears through the primary sign retained within sheet holder 223 against front surface 256 of the cassette 222 (App. Br. 5). Appeal 2010-012030 Application 11/412,514 6 For the above reasons, I would reverse the rejection of claims 1, 4 and 6-9 under 35 U.S.C. § 102(b) as being anticipated by Forsythe. Since my colleagues do not address the separate rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Forsythe and Sholkin, I will not do so, either. mls