Ex Parte KeachDownload PDFPatent Trial and Appeal BoardMay 30, 201311385777 (P.T.A.B. May. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/385,777 03/22/2006 Eckley M. Keach 81452.0002A 3197 29693 7590 05/31/2013 WILEY REIN LLP 1776 K. STREET N.W. WASHINGTON, DC 20006 EXAMINER DAVIS, CASSANDRA HOPE ART UNIT PAPER NUMBER 3611 MAIL DATE DELIVERY MODE 05/31/2013 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 ECKLEY M. KEACH ____________________ Appeal 2010-007289 Application 11/385,777 Technology Center 3600 ____________________ Before MICHAEL C. ASTORINO, JOHN W. MORRISON, and MICHELLE R. OSINSKI, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007289 Application 11/385,777 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-7 and 10-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1, 14, and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the appealed subject matter: 1. A method of billboard advertising, comprising the steps of: a. identifying a roadway having high speed traffic and including an overhead sign structure at least partially traversing the roadway, wherein the overhead sign structure has a forward face directed in a primary orientation toward oncoming vehicle traffic and a rearward portion on an opposing side from the forward face; and b. placing a billboard advertisement on the rearward portion of the overhead sign structure, whereby the advertisement on the rearward portion is capable of being seen by traffic, and wherein the billboard advertisement does not include one or more of solely artistic work, graffiti, government or municipal information, traffic signs, highway information, weather information, and safety information. REJECTIONS Appellant seeks review of the following rejections: (1) claims 1, 3-7, 12, 14, and 18 under 35 U.S.C. § 102(b) as anticipated by Pictures A and B of an overhead sign structure, as prepared by an Examiner on a roadway (I-395, southbound and northbound), and diagram of the roadway depicted in Pictures A and B (hereinafter “Pictures A & B”) (Ans. 3-4); Appeal 2010-007289 Application 11/385,777 3 (2) claims 1, 3-7, 10, and 12-15 under 35 U.S.C. § 102(b) as anticipated by Kishishita (JP 08053815 A, pub. Feb. 27, 1996)1 (Ans. 4-6); (3) claim 2 under 35 U.S.C. § 103(a) as unpatentable over Pictures A & B and Anderson (US 2,765,554, iss. Oct. 9, 1956) (Ans. 6-7); (4) claims 13 and 15 under 35 U.S.C. § 103(a) as unpatentable over Pictures A & B and Dunne (US 4,015,349, iss. Apr. 5, 1977) (Ans. 7); and (5) claims 10, 11, 16, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Pictures A & B and Johnson (US 2,052,771, iss. Sept. 1, 1936) (Ans. 7). ANALYSIS Rejection (1) Appellant argued claims 1, 3-7, 12, 14, and 18 as a group. App. Br. 6- 7.2 We select independent claim 1 as the representative claim, and claims 3- 7, 12, 14, and 18 fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appellant contended that “[t]here is no evidence that [Pictures A & B] were taken one year prior to the filing of the priority application as required under 35 U.S.C. § 102(b)” such that the “evidence is improper.” App. Br. 1 References in this opinion to “Kishishita” will be to the English translation prepared in or around February 2009 by FLS, Inc. and entered into the record as an attachment to the Supplemental Examiner’s Answer mailed December 1, 2009. 2 The heading used by Appellant for the 35 U.S.C. § 102(b) rejection as anticipated by Pictures A & B references claim 19 instead of claim 18. App. Br. 6. This appears to be a typographical error based on Appellant’s arguments traversing the rejection (App. Br. 6-7) and Appellant’s subsequent reference to claim 19 for the 35 U.S.C. § 103(a) rejection as unpatentable over Pictures A & B and Johnson (App. Br. 9-10). Appeal 2010-007289 Application 11/385,777 4 6.3 In response to the Examiner’s statement in the Answer that “Examiner Joanne Silbermann has provided an affidavit stating that she took the photographs on May 7, 1999” which is more than one year before the filing date of the priority application (Ans. 8), Appellant called for the affidavit by stating that “the affidavit referred to in the Supplement[al] Examiner’s Answer . . . has not been made part of the record and was not attached to the Supplemental Examiner’s Answer.” Reply Br. 4. The Examiner responded to Appellant’s challenge by attaching an Affidavit of Joanne Silbermann to an Office Communication mailed April 29, 2010 in which the Reply Brief was entered and considered. See 37 C.F.R. §§ 1.104(d)(2). The Affidavit of Joanne Silbermann evidences that Pictures A & B were taken on or before February 11, 2000, which is more than one year prior to the filing of priority application 60/478,913, filed June 16, 2003.4 As such, we do not find convincing Appellant’s argument that Pictures A & B constitute improper evidence (Reply Br. 4). Appellant next contended that the signs of Pictures A & B show “only traffic and highway information,” which does not “meet the specific exclusion in claim 1 of not including ‘one or more of solely artistic work, graffiti, government or municipal information, traffic signs, highway 3 Appellant did not challenge whether Pictures A & B qualified as prior art under 35 U.S.C. § 102(b) in Appellant’s Reply and Amendment filed March 20, 2007 in response to the Non-Final Office Action mailed September 20, 2006. Appellant’s first challenge to the propriety of Pictures A & B as prior art was in the Appeal Brief. 4 The instant application is a continuation of application 10/758,005, filed January 16, 2004, now US 7,124,526 B2, issued October 24, 2006, which claims the benefit of provisional application 60/478,913, filed June 16, 2003. Spec. 1, para. [0001]. Appeal 2010-007289 Application 11/385,777 5 information, weather information, and safety information.’” App. Br. 6. The Examiner found that a first side of the overhead sign structure of Pictures A & B shows “the date and time ‘Thur 5/6 11:09 AM’” and that a second opposing side shows “information regarding commuter information and food and lodging.” Ans. 4. “The [E]xaminer maintain[ed] that this information (time/date, commuter information and food/lodging) meets the exclusionary claim limitation . . . .” Id. at 9. We agree with the Examiner that at least the food and lodging information shown on one side of the overhead sign structure is not any of the following—solely artistic work, graffiti, government or municipal information, traffic signs, highway information, weather information, or safety information—and can be considered a billboard advertisement under the definition of the term “billboard advertising” used in the Specification.5 Appellant further contended “[i]n this case, it is not clear that the reasoning for the rejection takes into consideration the advertising purpose and the connection to the functional substrate of the overhead sign as explained in Gulak and Ngai.” App. Br. 7 (citing In re Gulak, 703 F.2d 1381, 1386 (Fed. Cir. 1983); In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004)). However, the Examiner found that the content of the printed matter in the appealed claims and the cited reference is not different. As stated above, food and lodging information can be considered a billboard advertisement. 5 The Specification states that “[a]s used herein, billboard advertising refers to pictures, messages, printed matter, electronic images, or other media designed for a commercial purpose and/or marketing purpose and/or including commercial, marketing, advertising information or messages.” Spec. 4, para. [0012]. Appeal 2010-007289 Application 11/385,777 6 For the foregoing reasons, the Examiner did not err in finding that the subject matter of claim 1 is disclosed by Pictures A & B, and we sustain the rejection of claims 1, 3-7, 12, 14, and 18 under 35 U.S.C. § 102(b). Rejection (2) Appellant argued claims 1, 3-7, 10, and 12-15 as a group. App. Br. 7- 8. We select independent claim 1 as the representative claim, and claims 3- 7, 10, and 12-15 fall with independent claim 1. Appellant contended that “[t]he English abstract of [Kishishita]. . . only refers to ‘public information of public agencies’ and ‘traffic lane’ and ‘road information’” which cannot meet the definition of advertisement set forth in claim 1. App. Br. 7-8. The Examiner found that “Kishishita teaches at least in claim 4 that the display information ‘is a weather report, public relations of a country or a public corporation, various kinds of news, either of the corporate advertising besides road traffic information, or its proper combination.’” Ans. 9. We agree with the Examiner that at least the corporate advertising referenced in claim 4 of Kishishita can be considered a billboard advertisement under the definition of the term “billboard advertising.” See Kishishita 2-3, claim 4 (“the display contents comprise, besides road traffic information, all types of news, weather forecasts, national and public authority information, and business advertising”) (emphasis added); id. at 5, para. [0006] (“an outdoor display with the object of displaying commercial messages, advertisements . . . , and the like, using the empty spaces alongside the display boards and the reverse faces of route guidance signs”) (emphasis added); and id. at 11, para. [0022] (“[t]raffic guidance signs or road traffic signs having advertisements . . . on their reverse faces or lateral sides are set-up on the roads”) (emphasis added). Appeal 2010-007289 Application 11/385,777 7 For the foregoing reasons, the Examiner did not err in finding that the subject matter of claim 1 is disclosed by Kishishita, and we sustain the rejection of claims 1, 3-7, 10, and 12-15 under 35 U.S.C. § 102(b). Rejections (3) and (4) Claims 2 and 13 depend from claim 1. Claim 15 depends from claim 14, which was in the group of claims represented by claim 1. See App. Br. 6-7. Appellant’s arguments in support of the patentability of claims 2, 13, and 15 solely related to the perceived deficiencies in Pictures A & B. App. Br. 8-9. Since we have found no such deficiencies, we sustain the rejection, under 35 U.S.C. § 103(a), of claim 2 as unpatentable over Pictures A & B and Anderson and claims 13 and 15 as unpatentable over Pictures A & B and Dunne. Rejection (5) Appellant argued claims 10, 11, 16, 17, and 19 as a group. App. Br. 9-10; Reply Br. 8-9. We select claim 10 as the representative claim, and claims 11, 16, 17, and 19 fall with claim 10. Claim 10 recites that “the advertisement is present on the surface of a replaceable product.” The Examiner found that Johnson “teaches a supplemental sign member 19 adapted to cover the existing sign 6” and that “[t]he sign cover member [19] has a first and second face 21 having indicia different than the indicia on the existing sign 6.” Ans. 7. The Examiner concluded that “it would have been obvious . . . to construct the sign taught by Pictures A and B with a replacement sign cover as taught by Johnson to selectively change the information presented on the sign structure.” Id. at 7- 8. Appellant contended that “[t]he statements in the rejection point to no objective reasons to combine the sign concepts in the ‘prior art.’” App. Br. Appeal 2010-007289 Application 11/385,777 8 9; Reply Br. 9. Appellant’s argument is not convincing since the Examiner has articulated adequate reasoning for making the combination—namely, to selectively change the information presented on the sign structure. Ans. 7; see also Johnson 1, ll. 5-8 (“covering bearing new display matter of a special or seasonal import which is adapted to fit upon the sign body to superpose the new display matter upon the original display matter”). Appellant further contended that “it would be at least inconvenient and certainly unsafe to selectively change the information on the sign using the flexible covers of Johnson, where the overhead sign is over a highway of speeding vehicles.” App. Br. 10. However, one of ordinary skill in the art could have predictably utilized Johnson’s cover with the signage depicted in Pictures A & B for providing special or seasonal information, for example, such that the proposed combination of prior art teachings has rational underpinnings. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 and 418 (2007). Appellant further contended that “the rejection does not even address why one would only change one side of the sign, the rearward facing side as recited in the claimed invention.” App. Br. 10. This argument is unpersuasive since claim 10 merely recites that the advertisement, located on the rearward portion of an overhead sign structure, be present on the surface of a replaceable product, but does not preclude both sides of the sign from being changed. Claims App’x. Arguments must be commensurate in scope with the actual claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). For the foregoing reasons and since we have found no deficiencies in the disclosure of Pictures A & B, the Examiner did not err in concluding that Appeal 2010-007289 Application 11/385,777 9 the subject matter of claims 10, 11, 16, 17, and 19 is unpatentable under 35 U.S.C. § 103(a) over Pictures A & B and Johnson. DECISION The Examiner’s rejections of claims 1-7 and 10-19 under 35 U.S.C. § 103(a) are 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). 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