Ex Parte Keach

Patent Trial and Appeal Board

May 30, 2013

11385777 (P.T.A.B. May. 30, 2013)

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).

AFFIRMED

rvb