Ex Parte Walker

Patent Trials and Appeals Board

Mar 22, 2019

14060500 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,500 10/22/2013
44341 7590 03/22/2019
JOHNSON & PHUNG
ONE WEST WATER STREET, SUITE 285
ST. PAUL, MN 55107
FIRST NAMED INVENTOR
Brian B. Walker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6784 7778
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
03/22/2019 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 BRIAN B. WALKER
Appeal2018-002339
Application 14/060,500
Technology Center 3600
Before ALLEN R. MacDONALD, JASON V. MORGAN, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 10-13 and 16-18, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to temporary, in-store product advertising for
retail stores. Spec. Abstract.
Appeal2018-002339
Application 14/060,500
Illustrative Claim
Claim 10 is illustrative and reproduced below with the limitations at
issue emphasized:
10. A single-use retail advertising video player
convertible between a stand-alone use condition and a postal
shipping condition comprising:
a flexible LCD or LED electronic display screen having a
depth of less than 1 centimeters;
a flash memory storage unit located in said electronic
display screen, said flash memory storage unit comprising either
a single-level cell based memory or multi-level cell memory, said
flash memory storage unit storing a pre-loaded repeatable video
and audio advertisement of a product;
a video player connected to said flash memory storage unit
for accessing and playing said repeatable video and audio
advertisement on demand;
a non-rechargeable battery providing the sole source of
power to said video player;
a set of graphics on a front face of said video player to
induce a customer to watch said video and audio advertisement
on said video player;
a cardstock box housing having a front face supporting
said electronic display screen thereon; and
an integral flap hingedly connected to said cardstock box
housing and including a mailing label, said integral flap foldable
between a first position covering said electronic display screen
and exposing said mailing label and a second position to form a
kickstand support to maintain the cardstock box housing in an
upright condition and expose said electronic display screen for
customer viewing while hiding said mailing label from customer
sight.
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Appeal2018-002339
Application 14/060,500
References and Rejections 1,2
Claims 10, 11, 13, 16, and 17 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Zealer (2012/0232991 Al; published Sept. 13, 2012),
Hite et al. (US 2011/0131851 Al; published June 9, 2011), Yuen et al.
(US 2008/0316153 Al; published Dec. 25, 2008) ("Yuen"), Kedem et al.
(US 2008/0154404 Al; published June 26, 2008) ("Kedem"), and Chandaria
(US 2009/0319395 Al; published Dec. 24, 2009). Final Act. 4--8.
Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Zealer, Hite, Yuen, Kedem, Chandaria, and Rajaram (US 8,626,588 B2;
Jan. 7, 2014). Final Act. 8-9.
Claim 18 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Zealer, Hite, Yuen, Kedem, Chandaria, Rajaram, and Hickey
(US 2011/0051399 Al; published Mar. 3, 2011). Final Act. 9-13
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Brief. Any other arguments Appellant could
have made but chose not to make in the Brief are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv) (2016). We adopt the Examiner's findings and
conclusions as our own, to the extent consistent with our analysis herein.
Appellant argues error because Hite does not disclose "a cardstock
box housing having a front face supporting said electronic display screen
1 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the Appeal Brief filed June 20, 2017 ("Br."), the
Final Rejection mailed January 23, 2017 ("Final Act."), and the Examiner's
Answer mailed October 17, 2017 ("Ans.").
2 The Examiner withdrew a 35 U.S.C. § 101 rejection of the claims.
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Appeal2018-002339
Application 14/060,500
thereon." Br. 11-12. We find this argument unpersuasive in view of Rite's
disclosure of a "paperboard" display, which can include an electronic
display screen, "which is or is part of the display section." Hite ,r,r 13, 39;
Fig. 14.
Appellant argues error also because Kedem does not disclose "a non-
rechargeable battery providing the sole source of power to said video player"
and "teaches away" from this limitation. Br. 13-14. This argument is
unpersuasive because Kedem discloses "a non-rechargeable battery 11" and
"an external power source[, which] may be connected to the media player."
Kedem ,r 40. Because Kedem's power source "may" be connected, it also
may not be connected, in which case the non-rechargeable battery would be
the "sole power source." Thus, Kedem expressly teaches the limitation and
does not "teach away."
Appellant also argues that Chandaria fails to disclose the "integral
flap" limitation of claim 10 and the corresponding limitation in claim 18.
Br. 15-16. We are not persuaded of error because the Examiner proffers
unrebutted, reasonable findings with respect to this recitation based on the
the combined teachings of Chandaria and Hite. See Ans. 43 ("Argument
C").
Appellant also argues error because the Examiner's use of seven
references to reject the claims amounts to impermissible hindsight
reasoning. Br. 17-18. This argument is unpersuasive because the number of
references used in a rejection is not an argument against obviousness without
3 The Answer omits page numbers. We treat the Answer as if numbered
starting with the page containing "EXAMINER'S ANSWER."
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Appeal2018-002339
Application 14/060,500
more. Appellant does not otherwise provide a persuasive argument that the
Examiner's rejection is based on impermissible hindsight reasoning.
The criterion ... is not the number of references, but what
they would have meant to a person of ordinary skill in the field
of the invention. In Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1383, 231 USPQ 81, 93 (Fed.Cir.1986), cert.
denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987),
the court held that a combination of about twenty references that
"skirt[ ed] all around" the claimed invention did not show
obviousness. In other instances, on other facts, we have upheld
reliance on a large number of references to show obviousness.
Compare In re Miller, 159 F.2d 756, 758-59, 72 USPQ 512, 514-
15 ( CCP A 194 7) (rejecting argument that the need for eight
references for rejection supported patentability) with Kansas
Jack, Inc. v. Kuhn, 719 F.2d 1144, 1149, 219 USPQ 857, 860
(Fed.Cir.1983) (where teachings relied upon to show
obviousness were repeated in a number of references, the
conclusion of obviousness was strengthened). See also, e.g., In
re Troiel, 274 F.2d 944, 947, 124 USPQ 502, 504 (CCP A 1960)
(rejecting appellant's argument that combining a large number of
references to show obviousness was "farfetched and illogical").
In re Gorman, 933 F.2d 982, 986 (fed. Cir. 1991).
In view of the foregoing, we are unpersuaded of error in the rejection
of claim 10 or the rejections of claims 11-13 and 16-18 for similar reasons.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 10-13 and 16-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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