Christopher Draeger

Patent Trials and Appeals Board

May 17, 2021

2020006366 (P.T.A.B. May. 17, 2021)

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.
14/173,013 02/05/2014 Christopher M. Draeger 509544 2378
53609 7590 05/17/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
SALONE, BAYAN
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
05/17/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTOPHER M. DRAEGER
____________

Appeal 2020-006366
Application 14/173,013
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1 and 4–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Cre8tive Hardware, Inc. as the real
party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to removable hardware. Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A removable hardware structure comprising:
a hardware element;
an attachment element for securing the hardware element to
a portion of a mounting surface;
wherein the attachment element is configured such that
securing the hardware element to the portion of the mounting
surface does not require puncturing the portion of the mounting
surface;
the hardware element further comprises a top surface and a
bottom surface; and
wherein the hardware element is further comprised of at
least one protrusion on the top surface and at least one recess on
the bottom surface.
The preferred embodiment of Appellant’s invention is a decorative
hinge plate for a metal garage door or a decorative handle for a metal garage
door. Spec. ¶¶ 3, 22, Fig. 2. Instead of fastening the hinge plate or handle to
the door with screws, Appellant removably fastens the plate or handle to the
door with either magnets or adhesive. Id. ¶ 25. A magnet or adhesive pad
fits into a recess on the side of the plate or handle that abuts the door. Id.
The recess allows the plate or handle to abut the door in a more-or-less flush
configuration. Id. The top or exposed side of the plate or handle is not flat,
rather, it features a non-functional, decorative “protrusion” that protrudes
from the surface. Id. ¶ 28. The protrusion may take the form of the head of
a screw. Id.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Buck US 5,411,231 May 2, 1995
Dixon US 6,248,173 B1 June 19, 2001
Vasichek US 6,855,890 B1 Feb. 15, 2005
Schrader US 2014/0115829 A1 May 1, 2014
Conner US 8,739,453 B1 June 3, 2014
The following rejections are before us for review:
1. Claims 1, 5, 8, 16, 18, and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Vasichek.
2. Claims 1, 5, 8, 16, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Conner.
3. Claims 1, 4, 5, 8, 11, 16, and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Buck.
4. Claims 16, 17, and 19 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dixon.
5. Claims 6, 7, 9, and 20 are rejected under 35 U.S.C. § 103(a) being
unpatentable over Vasichek and Schrader.
6. Claims 10 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Buck.
7. Claims 4 and 11–13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Conner and Buck.
6. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Conner, Buck, and Schrader.
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OPINION
Anticipation by Vasichek
of Claims 1, 5, 8, 16, 18, and 19
Appellant argues claims 1, 5, 8, 16, 18, and 19 as a group. Appeal
Br. 5–9. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Vasichek discloses each limitation of
claim 1. Final Act. 2–3. In particular, the Examiner finds that Vasichek’s
element 14 is a “protrusion” within the meaning of claim 1. Id.
Appellant initially criticizes the Examiner for changing position on
the protrusion element over the course of prosecution, referring to the
Examiner’s action as “regrettable.” Appeal Br. 5. This appeal is taken from
the Final Action dated December 16, 2019. Appellant provides neither facts
nor legal authority that estop the Examiner from taking the position stated in
the Final Action. See generally Appeal Br. We will focus our review on the
merits of the Office Action from which the appeal is taken.
Appellant argues that Vasichek’s bracket 10 is not a “hardware
element” as claimed. Appeal Br. 7. “The Examiner has failed to look to the
Specification and drawings for an understanding of hardware element.” Id.
Appellant further argues that the Examiner errs in allegedly
construing the term “protrusion” too broadly. Appeal Br. 7. Appellant
faults the Examiner for relying on a dictionary definition of “protrusion.”
Id. at 8. Appellant directs our attention to passages in the Specification that
describe a “hardware component” as a decorative handle or hinge plate. Id.
at 7. Appellant disputes the Examiner’s finding that Vasichek’s element 14
is a “protrusion.” Id. According to Appellant:
There is only one top surface and it covers 18, 14 and 16.
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Member 14 is not a separate structure and as such
bracket 10 is not a bracket without all three structures together
comprising a single top surface. As such, the top surface of
bracket 10 must be the top surface of retaining member 14.
There is no protrusion whatsoever from Vasichek's top
surface 14.
Id. at 7–8.
In response, the Examiner states that element 14 of Vasichek is a
protrusion because it juts out from the top surface of element 18. Ans. 14.
Vasichek discloses bracket 10 for holding wires in place proximate a
magnetic surface. Vasichek, Abstract, col. 5, ll. 6–25. One non-limiting
product application for Vasichek’s bracket is securing the wiring on a boat
trailer. Id. col. 1, ll. 10–21. In Figure 2 of Vasichek, the magnetic surface
on which wires are secured is identified as element 15. Id. col. 4, l. 52–66,
Fig. 2. Vasichek has a mounting surface 50 that abuts magnetic surface 15.
Id. col. 5, ll. 6–25, Fig. 2. Bracket 10 has ends 16 and 18. Id. Ends 16
and 18 feature recesses that house magnetics 36 and 38. Id. Disposed
between ends 16 and 18 of bracket 10 is retaining member 14 which forms
an arch with interior grooves 42 that retain wires 12. Id. col. 7, ll. 5–16,
Fig. 2. Thus, the mid-section of member 14 is spaced apart from mounting
surface 50 and is otherwise raised vertically above ends 16 and 18 relative to
surface 50. Id.
Determining whether claims are anticipated involves a two-step
analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The
first step involves construction of the claims of the patent at issue. Id.
“During examination, ‘claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
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of ordinary skill in the art.”’ Id. (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation
analysis involves comparing the claims to prior art. Id. A prior art reference
anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every
claim limitation. Id.
We thus begin our analysis by construing the claims. We give
“hardware element” its ordinary meaning, unless Appellant’s Specification
makes clear that it has a special meaning. See Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (explaining that, unless
compelled to do otherwise, a court gives a claim term the full range of its
ordinary meaning). If an apparatus claim recites a general structure (e.g., a
noun) without limiting that structure to a specific subset of structures (e.g.,
with an adjective), courts generally construe the claim to cover all known
types of that structure that are supported by the patent disclosure. Renishaw
PLC, v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
Consequently, we review the Specification to ascertain whether Appellant
has disclaimed subject matter or otherwise limited the scope of the claims.
Id. at 1343. Appellant’s Specification states that the invention generally
relates to removable hardware elements. Spec. ¶ 2. The Specification states
that the invention “more particularly,” relates to removable hardware
structures used on doors. Id. The Specification states that the “typical”
location for the inventive device is a garage door. Id. ¶ 3. Having reviewed
Appellant’s disclosure, we see no reason to limit the scope of “hardware
element” to anything less than its ordinary meaning. Although “hardware
element” is certainly broad enough to encompass garage door hinge plates
and handles, it is also broad enough to encompass many other structures that
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an artisan would consider as “hardware.” Similarly, although “hardware
element” is broad enough to encompass structures that are decorative, it is
also broad enough to encompass structures that may provide utility. In our
view, the only limitation that Appellant recites in claim 1 that is pertinent to
our instant inquiry is that the “attachment element” does not puncture the
mounting surface. Claims App.
With respect to the “protrusion” term, the Examiner construes
“protrusion” as broad enough to encompass the raised mid-section of
Vasichek element 14. Appellant construes “protrusion” narrowly to exclude
element 14. Appellant criticizes the Examiner for assigning only a portion
of Vasichek’s bracket 10 as a protrusion, namely, retaining member 14.
Appeal Br. 7–8.
Appellant’s argument is not persuasive. Figure 2 of Vasichek depicts
a cross-sectional profile of bracket 10 Vasichek, Fig. 2. The ends (16, 18) of
bracket 10 have a more-or-less uniform thickness. Id. The upper surface
retaining member 14 departs vertically from the upper surface of ends 16
and 18. Id. Retaining member 14 is a “protrusion” because it “protrudes”
relative to upper surfaces of ends 16 and 18. Id. Retaining member 14 is no
less of a protrusion because it is incorporated into the monolithic structure of
bracket 10. There is no requirement in claim 1 that the “protrusion” cannot
be integrated into the hardware element to form a monolithic structure.
Appellant’s hardware element with protrusion is of a similar nature. See,
e.g., Spec. ¶ 25, Figs. 3, 4
The Specification makes repeated reference to “recesses” (sometimes
referred to as “blind holes” Spec. ¶ 25) and “protrusions.” Recesses serve a
utilitarian function in Appellants’ hardware structure, namely, to house an
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attachment element such as a magnet or an adhesive pad. Spec. ¶¶ 11–13.
In contrast, no utilitarian function is ascribed to a protrusion. Rather,
protrusions are described as entirely decorative in nature, merely giving “an
impression” of something, such as a screw head. Id. ¶¶ 9, 12, 25, 28.
Appellant’s drawings depict elements 32 and 42 as protrusions. Spec.
¶¶ 25, 28, Figs 4, 6. Although Appellant’s Specification identifies such
protrusions as taking the form or shape of a screw head (id.), we are not
inclined to import a screw head limitation into the claim from Appellant’s
Specification. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345
F.3d 1318, 1327 (Fed. Cir. 2003)(it is improper to read a limitation from the
specification into the claims).
Appellant’s position also runs afoul of the doctrine of claim
differentiation. Claim 4 depends from claim 1 and further limits the claim to
a protrusion that “takes the form of a top of a screw.” Claims App. In order
to differentiate the scope of claim 1 from that of claim 4, we are constrained
to construe “protrusion” as broader than the form of a top of a screw. See
Tandon Corp v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1023
(Fed. Cir. 1987) (explaining that there is presumed to be a difference in
meaning and scope when different words or phrases are used in separate
claims and, to the extent that the absence of such difference would make a
claim superfluous, the doctrine of claim differentiation states the
presumption that the difference between claims is significant).
Under the circumstances, a broad, but reasonable, interpretation of
“protrusion” is warranted here. Using a broad, but reasonable, construction
of “protrusion,” we agree with the Examiner that the mid-section of
Vasichek’s element 14 constitutes a “protrusion” within the meaning of
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claim 1. Although it may be true that the structure of element 14 provides a
utilitarian, rather than merely decorative function, claim 1 does not limit the
protrusion to being purely decorative.
Accordingly and in view of the above, the Examiner’s findings of fact
are supported by a preponderance of the evidence. We sustain the
Examiner’s rejection of claims 1, 5, 8, 16, 18, and 19 as anticipated by
Vasichek.
Anticipation by Conner
of Claims 1, 5, 8, 16, and 19
Appellant argues claims 1, 5, 8, 16, and 19 as a group. Appeal
Br. 9–10. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
In much the same manner as the Vasichek ground of anticipation,
Appellant argues that Conner fails to disclose a protrusion. Appeal Br. 9.
The Examiner identifies Conner element 13 as a protrusion that protrudes
from top surface 8 of hardware element 2. Ans. 15. Appellant argues that
element 13 is a functional element and is not an element “intended to give
the impression of a functional element” as allegedly described in the
Specification. Appeal Br. 10. In response, the Examiner points out,
correctly, that claim 1 contains no requirement that the protrusion be
functional or non-functional. Ans. 16.
Connor discloses a firearm support bracket that attaches to a surface
magnetically. Connor col. 2, ll. 20–58. We agree with the Examiner that
element 13 is a protrusion that protrudes from surface 8 of magnetic base 2.
Id. Figs. 1–5. The Examiner’s findings of fact are supported by a
preponderance of the evidence. We sustain the Examiner’s rejection of
claims 1, 5, 8, 16, and 19 as anticipated by Conner.
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Anticipation of Claims 1, 5, 8, 16, and 19
by Buck
Appellant argues claims 1, 4, 5, 8, 11, 16, and 19 as a group. Appeal
Br. 11–12. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
In much the same manner as the Vasichek ground of anticipation,
Appellant argues that Buck fails to disclose a protrusion. Appeal Br. 11.
The Examiner identifies Buck screw member 22 as a protrusion that
protrudes from attachment means 20 on the outer surface 8 of hardware
element 12. Ans. 16.
Buck discloses a device for removably holding an object, such as a
coat hanger, onto a steel door by means of a magnet. Buck, Abstract. We
have reviewed the drawings of Buck and agree with the Examiner that Buck
discloses protrusions as claimed. Even assuming, for argument sake that
screw 22 does not protrude from attachment means 20, attachment means 18
and 20 protrude, to a greater or lesser extent, from oak plaque 12. Id.
Figs. 1–3.
The Examiner’s findings of fact are supported by a preponderance of
the evidence. We sustain the rejection of claims 1, 4, 5, 8, 11, 16, and 19 as
anticipated by Buck.
Anticipation by Dixon
of Claims 16, 17, and 19
Appellant argues claims 16, 17, and 19 as a group. Appeal Br. 10–13.
Independent method claim 16 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
In much the same manner as the Vasichek ground of anticipation,
Appellant argues that Dixon fails to disclose a protrusion. Appeal Br. 12.
The Examiner identifies Dixon element 116 as a protrusion from the top
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surface of hardware element 112. Ans. 17. As with the ground of
anticipation by Conner, Appellant argues that element 116 is functional.
Dixon discloses a coating masking member 110 with handles 116 that
are attached to surface 112. Dixon col. 4, ll. 13–19. Masking member 110
attaches to a metal door hinge magnetically. Id. col. 2, l. 66 – col. 3, l. 7.
Handle 116 protrudes from surface 112 of masking member 110. Id. Fig. 9.
Claim 16 does not require that the protrusion element is non-
functional. Claims App. The Examiner’s findings of fact are supported by a
preponderance of the evidence. We sustain the Examiner’s rejection of
claims 16, 17, and 19 as anticipated by Dixon.
Unpatentability of Claims 6, 7, 9, and 20
over Vasichek and Schrader
Appellant argues claims 6, 7, 9, and 20 as a group. Appeal Br. 13.
Claim 6 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). In traversing this
ground of rejection, Appellant’s sole argument is a repeat of the same
“protrusion” argument that we previously considered in connection with the
Examiner’s ground of rejection of anticipation by Vasichek discussed above.
That argument is no more persuasive when asserted against the Examiner’s
proposed obviousness combination.
We sustain the Examiner’s unpatentability rejection of claims 6, 7, 9,
and 20 over Vasichek and Schrader.
Unpatentability of Claims 10 and 18
over Buck
Appellant argues claims 10 and 18 as a group. Appeal Br. 14.
Claim 10 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
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Claim 10 depends from claim 8 and adds the limitation: “wherein the
hardware element is handle shaped or a hinge plate.” Claims App. The
Examiner finds that Buck discloses an object 12 that may have “any desired
shape.” Final Act. 9, citing Buck col. 3, ll. 20–21. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify Buck to exhibit the shape of a handle
or hinge plate. Id.
In traversing the rejection, Appellant relies solely on the “protrusion”
argument that was raised in connection with the rejection of claim 1, which
argument is no more persuasive here than it was with claim 1. Appeal
Br. 14. Appellant does not challenge the Examiner’s finding that Buck
could exhibit “any desired shape,” including a hinge plate or handle. Id.
We are not apprised of error and, therefore, sustain the Examiner’s
unpatentability rejection of claims 10 and 18 over Buck.
Unpatentability of Claims 4 and 11–13
over Conner and Buck
Appellant argues claims 4 and 11–13 as a group. Appeal Br. 14–17.
Claim 4 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 4 depends
from claim 1 and adds the limitation: “wherein the at least one protrusion
takes the form of a top of a screw.” Claims App. The Examiner finds that
Buck discloses decorative screw heads. Final Act. 10. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Connor to exhibit a
decorative screw head. Id. According to the Examiner, a person of ordinary
skill in the art would have done this to provide a decoration that implies that
Connor’s hardware structure is secured by screws. Id.
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In traverse, Appellant relies on the same “protrusion” argument that
we previously considered and found unpersuasive with respect to claim 1
and find equally unpersuasive here. Appeal Br. 15. Appellant also argues
that a person of ordinary skill in the art would not modify Conner to have a
decorative screw head. Id. According to Appellant,
Conner does not intend or desire to convey to the user that
its magnetic firearm support is permanent. Conner explains the
contrary to be true. Conner explains, “It will be appreciated by
those skilled in the art that the magnetic firearm supports 1, 1a
can be easily detached from the magnetic surface 30 when use
is not desired. Moreover, the magnetic firearm supports 1, 1a
can be selectively placed in any desired positions on the
magnetic surface 30 as deemed necessary to cradle the
firearm 24. This expedient may facilitate customization of the
magnetic firearm supports 1 according to the particular size,
shape and weight of the firearm 24.”
Id. Appellant argues that a user of Conner would consider the “look of
permanency” associated with the appearance of a screw head to be
undesirable. Id. at 16. Appellant expresses concern that a user might place a
firearm on Conner’s support that is too heavy. Id. “Placement of such a
heavy firearm could damage the firearm for later use as it falls or even hurt
the user attempting to hang a heavy firearm using the firearm support.” Id.
Conner discloses a support bracket for a firearm. Conner, col. 1,
ll. 14–30. The firearm support is attached to the steel surface in a firearm
safe or “elsewhere.” Id. Conner’s firearm support uses at least one magnet
and, in some embodiments, two magnets, 7 and 7a, are used. Id. col. 2,
ll. 33–58, Fig. 3. In some embodiments, bottom magnet 7 may have a pull
force of 54 pounds and top magnet 7a may have pull force of 28 lbs. Id.
We recognize that the shear force of sliding a magnet along a surface may be
less than its pull force. Two magnetic firearm supports are used to support a
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pistol or a short firearm. Id. col. 4, ll. 1–23. Three or more of the supports
may be necessary to support a long firearm depending on its size, shape, and
weight. Id. A typical unloaded pistol weighs less than 2 pounds. A typical
carbine, such as an AR-15, weighs about 6.5 pounds.
Having fully considered Appellant’s argument, we do not find it to be
persuasive. Persons knowledgeable in the hardware arts know that the
absence of a visible screw head on the face of a hardware element surface
does not determine whether or not the hardware is attached by any particular
means. Although a faux screw head might not be desirable for a bracket on
the inside of a gun safe, where it is essentially unseen, Conner is not limited
to use on the inside of a safe. Id. col. 1, l. 35 (“elsewhere”). It is easy to
visualize product applications in a retail display setting or a commercial gun
range rental shop display. Every support bracket, no matter what its means
of attachment may be, has limitations on how much weight it can support.
As with any support bracket, we would expect the user to become familiar
with the load bearing capabilities of the support bracket and choose the
number, size, and configuration of the support brackets accordingly.
In our view, the Examiner does not err in finding that person of
ordinary skill in the art would consider it obvious to incorporate a faux
screw head, as taught by Buck, to the firearm support bracket of Conner and
would be motivated to do so for decorative reasons. We sustain the
Examiner’s unpatentability rejection of claims 4 and 11–13 over Conner and
Buck.
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Unpatentability of Claims 14 and 15
over Conner, Buck, and Schrader
Appellant argues claims 14 and 15 as a group. Appeal Br. 17–18.
Claim 15 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 14
depends directly from claim 11 and indirectly from claim 8 and adds the
limitation: “wherein the attachment element is an adhesive.” Claims App.
The Examiner finds that Schrader discloses a hardware element that uses
adhesive as an attachment element. Final Act. 11.
Appellant’s traverse of this ground of rejection relies solely on
arguments that we previously considered and found unpersuasive with
respect to claim 11 and find equally unpersuasive here. Appeal Br. 17. We
sustain the rejection of claims 14 and 15 over Conner, Buck, and Schrader.
CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5, 8, 16,
18, 19
102 Vasichek 1, 5, 8, 16,
18, 19

1, 5, 8, 16,
19
102 Conner 1, 5, 8, 16,
19

1, 4, 5, 8,
11, 16, 19
102 Buck 1, 4, 5, 8,
11, 16, 19

16, 17, 19 102 Dixon 16, 17, 19
6, 7, 9, 20 103 Vasichek, Schrader. 6, 7, 9, 20
10, 18 103 Buck 10, 18
4, 11-13 103 Conner, Buck 4, 11-13
14, 15 103 Conner, Buck,
Schrader
14, 15
Overall
Outcome
1, 4-20
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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