Ex Parte Tucker et al

Patent Trial and Appeal BoardOct 22, 2012

11676496 (P.T.A.B. Oct. 22, 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. 11/676,496 02/19/2007 Aaron J. Tucker 8293 51702 7590 10/22/2012 CLYDE I. COUGHENOUR 16607 SUTTON PLACE WOODBRIDGE, VA 22191 EXAMINER JUNGE, KRISTINA N S ART UNIT PAPER NUMBER 3611 MAIL DATE DELIVERY MODE 10/22/2012 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 AARON J. TUCKER and KHADIJAH NASHID-TUCKER ____________ Appeal 2010-009520 Application 11/676,496 Technology Center 3600 ____________ Before PHILLIP J. KAUFFMAN, JAMES P. CALVE, and HYUN J. JUNG, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the rejection of claims 1-3, 5, 8-11, 13, 14, 16, and 21-28. App. Br. 7. Claims 4, 6, 7, 12, 15, and 17-20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-009520 Application 11/676,496 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter on appeal: 1. A bus stop sign and signal device comprising: a vertical support; a first sign on said vertical support; a battery housing on said vertical support for housing a battery; a battery in said battery housing; a first illumination means in a housing supported by said vertical support above said first sign; said first illumination means having a first light in said housing for illuminating said first sign and a second light in said same housing for notifying an approaching bus driver to stop at the bus stop; a switch for activating said first illumination means; said vertical support is a post; said first illuminating means is in a housing positioned at an upper end of said post and-said housing is in the form of a hood; said hood is adjustable to aline the direction said first illumination means is pointed in for both illumination of said first sign and notification to said bus driver to stop. REJECTIONS1 Claims 1 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langlois (US 2006/0120068 A1; pub. Jun. 8, 2006) and Warshawsky (US 4,449,170; iss. May 15, 1984). Claims 10, 11, 14, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langlois and Jones (US 6,522,263 B2; iss. Feb. 18, 2003). Claims 2, 5, 13, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langlois, Jones, and Warshawsky. 1 The Examiner withdrew the rejection of claim 9 under 35 U.S.C. § 112, second paragraph as being indefinite. Ans. 3. Appeal 2010-009520 Application 11/676,496 3 Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over Langlois, Warshawsky, and Palmquist (US 2,432,928; iss. Dec. 16, 1947). Claims 22 and 28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Langlois, Jones, and Palmquist. Claims 3, 21, and 24-27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Langlois, Jones, Warshawsky, and Palmquist. ANALYSIS Claims 1 and 8 as unpatentable over Langlois and Warshawsky Claim 1 The Examiner found that Langlois discloses a bus stop sign and signal comprising a first sign (bus schedule assembly 200, Fig. 1) on a vertical support (post, Fig. 1) and a first illumination means with a first light (LED lights 4, Fig. 2) for illuminating the first sign and a second light (LED light 2, Fig. 2). Ans. 4. The Examiner also found that the first and second lights (referred to as “illuminations means,” LED lights 4, 2 in Fig. 2) are capable of illuminating the sign to a certain degree. Ans. 16. Appellants argue that Langlois does not disclose a first light for illuminating the first sign because LED lights 4 are “used for security and convenience lighting to provide enhanced security for waiting passengers.” App. Br. 20. Appellants also argue that the first sign (bus schedule 200) is illuminated by a self-contained light module 32. Id. (citing fig. 4). These arguments do not persuade us of error in the Examiner’s finding that LED lights 4 are capable of illuminating the bus schedule 200. The Examiner had a sound basis for this finding because LED lights 4 are positioned directly above bus schedule assembly 200 (Fig. 1) and illuminate the area around the bus stop, which the Examiner reasonably found includes the bus schedule Appeal 2010-009520 Application 11/676,496 4 assembly 200. Appellants have not shown that claim 1 is structurally distinguishable from Langlois or that Langlois’ structure is not capable of performing this function.2 See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (where the PTO has reason to believe that a functional limitation is an inherent characteristic of the prior art, appellant has the burden to show that the prior art structure does not inherently possess the functional feature). The use of LED lights 32 to backlight bus schedule 200 does not prevent LED lights 4 from illuminating bus schedule 200 as called for in claim 1. Appellants also argue that the “lighting of Langlois is not within a hood, it is under a head 20 supporting a solar panel 22 (Fig. 3) both of which are stationary.” App. Br. 20-21. This argument is not persuasive because claim 1 requires the first illumination means, which has the first and second lights, to be in a housing in the form of a hood and Appellants do not point to any features in claim 1 that distinguish the claimed hood from the head assembly 100 of Langlois (Figs. 1, 2).3 A reference does not have to satisfy an ipsissimis verbis test to disclose a claimed feature. Appellants assert that claim 1 requires the first and second light to be in the same housing and Langlois teaches a light 32 for illuminating the bus schedule 200 that is in a different housing than the second light (LED 2) that is in the upper housing 10. App. Br. 21. This argument does not persuade us of error in the Examiner’s finding that Langlois discloses first and second lights (LED lights 4, 2, not edge-light module 32) in the same housing (head assembly 100) as shown in Figs. 1-3 as discussed supra. Ans. 4, 16. 2 Appellants disclose a light 13 positioned above a bus schedule 3. Fig. 1. 3 Appellants disclose that the hood 6 can be made of galvanized sheet metal and have a length of 4-6 inches, height of 2-4 inches and weight of about 5 ounces. Spec. 6, ll. 11-12; fig. 1. Appeal 2010-009520 Application 11/676,496 5 Appellants assert that claim 1 requires the hood to be adjustable and the “hood” of Langlois is designed to be integral and stationary. App. Br. 20-21. Appellants also contend that it “would not have been obvious to substitute the Warshawsky lamp adjustment because there is no teaching to do so and because Langlois does not want his illumination assembly to be anything other than stationary.” App. Br. 21-22. These arguments do not persuade us of error in the Examiner’s findings that Warshawsky teaches an adjustable hood used to align the direction of an illumination means and determination that it would have been obvious to incorporate such a hood into Langlois to provide an efficient and effective light source to illuminate and signal in appropriate directions. Ans. 4-5 (citing Warshawsky, col. 4, ll. 38-46), 16-17. Nor does this argument apprise us of any disclosure in Langlois that criticizes, discredits, or discourages the use of an adjustable hood with Langlois’ bus stop. Appellants’ argument that “Warshawsky does not illuminate a sign” (App. Br. 21) is not persuasive because the Examiner relied on Langlois to disclose this feature. Accordingly, we sustain the rejection of claim 1. Claim 8 Claim 8 depends from claim 1 and calls for the hood to be elevated on a pipe that is vertically adjustable and rotatable in the vertical support and also “includes a universal joint for independent adjustment.” The Examiner found that Warshawsky discloses a hood (cylindrical shade 14) on a pipe (light source 12) that is vertically adjustable and rotatable and includes a universal joint (clutch 44). Ans. 5 (citing col. 4, ll. 21-25 and 38-46; figs. 1, 2). The Examiner also found that Appellants disclose a universal joint 28 (Fig. 1) that allows movement up and down and rotates, which is the same Appeal 2010-009520 Application 11/676,496 6 movement that Warshawsky discloses. Ans. 19-20. Appellants argue that Warshawsky discloses that element 44 is a clutch assembly 44, not a universal joint. App. Br. 22 (citing col. 3, ll. 36-43). We agree. A skilled artisan would not consider a clutch to be a universal joint. The Examiner’s finding that the clutch assembly 44 corresponds to a universal joint is not consistent with claim 8, which recites that the pipe is vertically adjustable and rotatable in the vertical support, and also includes a universal joint for independent adjustment. Appellants disclose that swivel hood 6 can be raised/lowered 62 or rotated 61 on a pipe 19. Spec. 3, ll. 10-13; fig. 1. A universal joint 28 also is provided in the pipe to allow the hood to be aligned with oncoming traffic when removed from the pole 2. Spec. 5, ll. 5-6; see Reply Br. 4. The Examiner has not adequately explained how the clutch assembly 44, which may allow vertical movement and rotation, also is a universal joint “for independent adjustment.”4 We cannot sustain the rejection of claim 8. Claims 10, 11, 14, and 16 as unpatentable over Langlois and Jones Independent claim 10 recites a bus stop sign and signal device with first and second signs, a first and second illumination means for the first and second signs respectively, and a manually operated switch for activating the first and second illumination means. The Examiner found that Langlois discloses all elements except a second sign on the vertical support with a second illumination means. Ans. 9-10. The Examiner found that Jones 4 An ordinary, customary meaning of “universal joint” includes “[a] geared joint placed between two shafts that allows the shafts to turn or swivel at an angle.” See ACADEMIC PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY (1996) (http://www.credoreference.com/entry/apdst/universal_joint (last visited Oct. 12, 2012)). Appeal 2010-009520 Application 11/676,496 7 teaches a stop sign and signaling device with a first and second sign (pair of brackets 326), each sign having an illumination means including a white light in a shield (light 328) to illuminate the sign. Ans. 10 (citing Fig. 15). Appellants argue that neither Langlois nor Jones teaches a manually operated switch that activates a first and second light of a first illumination means and a first light of a second illuminating means. App. Br. 23. We agree. Langlois uses separate buttons 300 to activate lights of bus schedule assembly 200 and LED lights 2, 4 of head assembly 100. Paras. [0049]- [0050]. Jones uses switches 128, 130, 132 to activate center light housing 24 and outer light housings 26. Col. 8, ll. 42-55; fig. 8. The Examiner has not adequately explained how the combined teachings of Jones and Langlois would yield a manual switch that activates the first and second lights of first illuminating means and a first light of second illuminating means.5 We cannot sustain the rejection of claim 10 or dependent claims 11, 14, and 16. Claims 2, 5, 13, and 23 as unpatentable over Langlois, Jones, Warshawsky Claims 2 and 5 Claim 2 calls for a second sign, a second illumination means, and a switch to activate first and second illumination means. The Examiner found that Jones discloses first and second signs (bracket 326, fig. 15) each with illuminating means (light 328, fig. 15). Ans. 6. We agree with Appellants that the references do not disclose a switch that activates all three lights of the first and second illumination means as discussed supra for claim 10. We cannot sustain the rejection of claim 2 or its dependent claim 5. 5 Although the term “a” can mean one or more, Appellants disclose the use of a single manually operated switch 8 for activating the hood lights 13, 14, 15, and white lights 17, 18. Spec. 7, ll. 7-18; figs. 1, 3. Appeal 2010-009520 Application 11/676,496 8 Claim 13 The Examiner’s reliance on Warshawsky to disclose a hood that is mounted on a pipe that is vertically adjustable and rotatable in the vertical support and includes a universal joint, as called for in claim 13, does not remedy the deficiencies of Langlois and Jones as to claim 10 from which claim 13 depends. App. Br. 25. We cannot sustain the rejection of claim 13. Claim 23 Claim 23 depends from claim 1 and calls for a solar panel adjustably attached to the vertical support. The Examiner relied on Jones to disclose this feature. Ans. 7. Appellants argue that Langlois “precludes the modification by specifically teaching that the solar panel to be used is to be integral and stationary and on the top so as to not be visible from the street.” App. Br. 26 (citing para. [0054]). This argument is not persuasive because Langlois discloses that the solar panel 22 is incorporated into the head assembly and connected to one or more batteries that are integral to the head assembly. Langlois does not state that solar panel 22 must not be visible from the street or otherwise criticize, discredit, or discourage the use of an adjustable solar panel. We sustain the rejection of claim 23. Claim 9 as unpatentable over Langlois, Warshawsky, and Palmquist The Examiner found that Palmquist discloses reflective tape 10 on a first sign 16 that is illuminated by light from a first illumination means as called for in claim 9. Ans. 7 (citing col. 4, ll. 41-44; col. 5, ll. 31-37; fig. 3). Appellants argue that Palmquist teaches a reflector sheet 10 over a metal sheet 15 having raised lettering enameled 16 and the enameled lettering is over the reflector sheet 10. App. Br. 27. Appellants also argue that Langlois teaches a reflector under and behind the indicia so that placing Palmquist’s Appeal 2010-009520 Application 11/676,496 9 reflective tape over the sign of Langlois would cover up and obscure the sign 28, 30. App. Br. 27; Reply Br. 5. We agree with the Examiner that Palmquist discloses reflective tape (transparent sheet 10) on a first sign (raised lettering 16). Ans. 19 (citing Fig. 4); Palmquist, col. 4, ll. 32-34; figs. 3, 4. We also agree that a skilled artisan would understand how to incorporate Palmquist’s reflective tape (transparent sheet 10) into the first sign of Langlois (bus schedule assembly 200) so that the tape is illuminated by first illumination means (Langlois’ LED lights 4) and oncoming traffic. Ans. 19. Palmquist discloses that the reflective tape 10 is transparent. Col. 4, ll. 32-40. The test for obviousness is what the combined teachings of the references would have suggested to a skilled artisan and not whether the features of a secondary reference may be bodily incorporated into, or physically combined with, a primary reference. As such, we sustain the rejection of claim 9. Claims 22 and 28 as unpatentable over Langlois, Jones, and Palmquist Independent claim 28 recites a bus stop sign and signal device with a vertical support that is a “u” shaped post, and a first sign, battery housing, and a first illumination means supported on the vertical support. The Examiner found that Langlois discloses the claimed device except for wiring extending from a battery, which Jones discloses, and reflective tape, which Palmquist discloses (fig. 3). Ans. 13-14 (citing Jones, col. 7, ll. 1-4). We agree with Appellants that Langlois does not disclose a vertical support that is a post in a u-shape. App. Br. 25, 27-28. Although Langlois discloses a u- shaped element (back piece 24) with a recessed area enclosed by reflecting panel (back material 28) (Ans. 11, 13), this element is part of bus schedule assembly 200 (Fig. 4). It forms no part of the vertical support (post 8). Appeal 2010-009520 Application 11/676,496 10 Instead, u-shape element/back piece 24 “is used to secure the module to the bus stop post.” Para. [0057]. Therefore, it is not a u-shaped vertical support and does not support a battery housing or first illumination means. We cannot sustain the rejection of claim 28 or its dependent claim 22. Claims 3, 21, and 24-27 as unpatentable over Langlois, Jones, Warshawsky, and Palmquist Appellants argue that claims 3 and 21 are not obvious because they depend from claim 28, claim 24 is not obvious because it depends from claim 23, and claim 25 is not obvious because it depends from claim 2. App. Br. 28-29. These arguments are persuasive as to claims 3, 21, and 25- 27 because we do not sustain the rejection of claims 28 and 2, but are not persuasive as to claim 24 because we sustain the rejection of claim 23. Appellants’ argument that claim 24 is not obvious because it recites a reflective tape is not persuasive for the reasons set forth supra for claim 9. As such, we sustain the rejection of claim 24 but cannot sustain the rejection of claims 3, 21, and 25-27. DECISION We AFFIRM the rejection of claims 1, 9, 23, and 24 and REVERSE the rejections of claims 2, 3, 5, 8, 10, 11, 13, 14, 16, 21, 22, and 25-28. 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-IN-PART Klh