Ex Parte 6296304 et al

Patent Trial and Appeal Board

Apr 15, 2014

95000031 (P.T.A.B. Apr. 15, 2014)

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.
95/000,031 12/10/2003 6296304 44464-035 8113
7590 04/16/2014
IP POWER HOLDINGS LIMITED
PALM GROVE HOUSE
P.O. BOX 438, TOAD TOWN
TORTOLA,
BRITISH INDIAN OCEAN TERRITORY
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/16/2014 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
____________

ATICO INTERNATIONAL USA, INC.
Requester

v.

TOFASCO OF AMERICA, INC.
Patent Owner
____________

Appeal 2014-000797
Reexamination Control 95/000,031
Patent 6,296,304 B1
Technology Center 3900
____________

Before JAMESON LEE, DANIEL S. SONG and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

NEW DECISION
37 C.F.R. § 41.77(f)
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I. INTRODUCTION
In an earlier Decision, 2011-010720, mailed January October 3, 2011
(“Decision”), we reversed the Examiner’s decision not to adopt certain
grounds of rejection proposed by Third Party Requester, Atico International,
Inc. (“Atico”), to claims of U.S. Patent 6,296,304 B1 (“the ’304 patent”). In
particular, we reversed the Examiner’s decision; (1) not to reject claims 46-
48 and 51-53 as failing to comply with 35 U.S.C. § 314(a), and (2) not to
reject claims 25, 46, 51, 55, 58, and 59 as unpatentable under 35 U.S.C.
§ 103(a) over Levine
1
and Aycock
2
. Decision 26. By operation of 37 C.F.R.
§ 41.77(b), those reversals constituted new grounds of rejection applied to
the claims.
Patent Owner, Tofasco of America, Inc. (“Tofasco”), elected to
reopen prosecution. To that end, Tofasco submitted amendments affecting
the above-noted claims, requested entry of new claims 60-67, and also
provided new declaration evidence.
3
Atico filed no comments under 37
C.F.R. § 41.77(c). In due course, the Examiner mailed a Determination
pursuant to 37 C.F.R. § 41.77(d).
4
In that Determination, the Examiner: (1)
determined that the rejection of claims 46 and 51 based on 35 U.S.C.

1
U.S. Patent 5,882,068 issued March 16, 1999.

2
U.S. Patent 5,975,626 issued November 2, 1999 (also referenced herein as
“the Aycock patent”).

3
See “Request to Re-open Prosecution After New Grounds of Rejection”
filed December 5, 2011 (“PO Re-open Req.”)

4
See “Examiner’s Determination Pursuant to 37 CFR 41.77(d)” mailed June
20, 2013 (“Ex’r Determ.”).
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§ 314(a) has been overcome; (2) determined that the rejection of claims 25,
55, 58, and 59 over Levine and Aycock should be maintained; (3)
determined that the rejection of claims 46 and 51 over Levine and Aycock
has been overcome; and (4) declined to enter new claims 60-67. See Ex’r
Determ. 4-9. Tofasco subsequently filed comments under 37 C.F.R.
§ 41.77(e).
5
Atico has not filed any reply to Tofasco’s comments.
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.
6

II. DISCUSSION
In exercising our authority under 37 C.F.R. § 41.77(f), we discern that
we need consider the following matters: (A) the non-entry of claims 60-67;
(B) the Examiner’s determination that the rejection which was applied to
claims 46-48 and 51-53 under 35 U.S.C. § 314(a) has been overcome; (C)
the Examiner’s determination that the prior art rejection of claims 25, 55, 58,
and 59 as unpatentable over 35 U.S.C. § 103(a) over Levine and Aycock
should be maintained; and (D) the Examiner’s determination that the prior

5
See “Patent Owner’s Comments in Response to Examiner’s Determination
Pursuant to 37 CFR 41.77(d)” filed July 22, 2013 (“PO Comm.”).

6
37 C.F.R. § 41.77(f) reads:

(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the
proceeding will be returned to the Board which shall
reconsider the matter and issue a new decision. The new
decision is deemed to incorporate the earlier decision, except
for those portions specifically withdrawn.

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art rejection of claims 46 and 51 based on Levine and Aycock has been
overcome.
A. The Non-Entry of Claims 60-67
The Examiner indicates that new claims 60-67 have not be entered
because they fail to comply with the requirements of 37 C.F.R. § 41.77(b).
Ex’r Determ. 4-5. Tofasco does not challenge the Examiner’s indication that
new claims 60-67 are not in compliance with that section. Tofasco simply
“requests an indication that new Claims 60-67 are patentable.” See PO
Comm. 3.
37 C.F.R. § 41.77(b)(1) requires that any request to reopen
prosecution before the Examiner shall be limited in scope to the “claims so
rejected.” In addressing the claims so rejected, a request to reopen
prosecution may seek to add substitute claims; however, such substitute
claims must be offered to address issues raised by the new grounds of
rejection entered by the Board. There also is a presumption that only one
substitute claim would be needed to replace a cancelled claim. A request to
reopen prosecution under § 41.77(b) is not an opportunity for a patent owner
to add additional claims of different claim scope than previously presented
that seemingly do not address any rejection.
In declining to enter claims 60-67, it is clear that the Examiner is of
the view that those claims are of differing scope than previously examined
claims and that the claims omit features which were present in the claims
subject to the new grounds of rejection. Ex’r Determ. 4. Tofasco does not
respond to the Examiner’s assessment or offer any dispute in that regard.
Neither does Tofasco explain how newly offered claims 60-67 are directed
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to “claims so rejected” in the new grounds or for which claims of the appeal
the new claims 60-67 are being offered as substitutes. It also is not apparent
to us that claims 60-67 have been offered as substitute claims for claims that
have been cancelled, or that claims 60-67 are presented only to address
issues associated with the new grounds of rejection that were set forth in the
Decision.
Upon review, we are not persuaded on this record that Tofasco is
entitled to entry of claims 60-67 in connection with its request to reopen
prosecution under 37 C.F.R. § 41.77(b)(1).
B. The rejection under 35 U.S.C. § 314(a)
In the Decision, we concluded that claims 46-48 and 51-53, as
proposed during the course of inter partes reexamination, enlarged the scope
of the claims of the ’304 patent, and were thus in violation of 35 U.S.C.
§ 314(a). Decision 6-10. As a part of the amendments submitted in
connection with Tofasco’s Request to Re-open Prosecution, Tofasco amends
claims 46 and 51 and cancels claims 47, 48, 52, and 53. PO Re-open Req.
29. In doing so, Tofasco urges that the issue of claim scope enlargement in
connection with claims 46 and 51 has been obviated. Id.
The Examiner determined that the amendments to claims 46 and 51
overcome the rejection that was applied under 35 U.S.C. § 314(a), such that
those claims no longer enlarge the scope of the claims of the ’304 patent.
See Ex’r Determ. 4. In reviewing the record, we do not discern that the
Examiner’s determination is incorrect.
Accordingly, we agree that the above-noted rejection, which was
based on 35 U.S.C. § 314(a), has been overcome.
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C. The rejection of claims 25, 55, 58, and 59
over Levine and Aycock

Claims 25 and 55 are independent claims. Claims 58 and 59 depend
from claim 55. Claim 25 is representative and is reproduced from Tofasco’s
Request to Re-open Prosecution (with underlining and bolding removed):
Claim 25 (New): A folding furniture, comprising:

a seat frame and a back frame constructed to support a
fabric seat thereon, said seat frame comprising two side leg
frames and a construction leg frame foldably supported between
said two side leg frames, each of said side leg frames
comprising a front side crossed leg and a rear side crossed leg
pivotally connected together where said front and rear side
crossed legs cross, a front frame joint pivotally connected to a
top end of said rear side crossed leg, and a back frame joint
pivotally connected to a top end of said front side crossed leg,
said back frame joint having top and bottom surfaces, said back
frame comprising a pair of back frame legs slidably passing
through said two back frame joints, respectively;

wherein each of said back frame joints has a guiding hole
for said back frame leg slidably passing through, and an
inclined hole, said inclined hole being intercrossed with said
guiding hole to form an inclined upper surface and an inclined
lower surface, said inclined surfaces being capable of
supporting a lower side and a upper side of said back frame
leg, said inclined lower surface being inclined with respect to at
least one of said top or bottom surfaces of the back frame joint,
said inclined lower surface being non-perpendicular to at least
one of said top or bottom surfaces of said back frame joint; and

an inclined back support arrangement which comprises a
pair of back support coupling means, each for pivotally
coupling a bottom end of one of said two back frame legs with
a lower portion of one of said two rear side crossed legs of said
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seat frame respectively, so as to support said two back frame
legs in one of a plurality of inclined positions;

wherein said back frame legs and said back frame joints
are capable of supporting a user in plural ones of said inclined
positions; and

wherein said pair of back support coupling means
includes a plurality of locations, spaced along a plane parallel
to a longitudinal axis of each of said rear side crossed legs, at
which the bottom ends of said respective back frame legs may
be coupled, each of said plurality of locations providing a
different corresponding angle between said top or bottom
surface of one of said back frame joints and one of said back
frame legs when said back frame legs are coupled at one of said
plurality of locations.

PO Re-open Req. 10.
As set forth in the Decision, we were persuaded by Atico that claims
25, 55, 58, and 59, as then presented, would have been obvious in light of
the combined teachings of Levine and Aycock. Decision 10-23.
In considering claims 25, 55, 58, and 59 as amended, and with the
benefit of our evaluation of obviousness, the Examiner contends that the
rejection of claims 25, 55, 58, and 59 based on Levine and Aycock should be
maintained. In that regard, the Examiner explains why the amended claims
would have been obvious based on the combined teachings of Levine and
Aycock. Ex’r Determ. 5-8.
7

7
We are cognizant of Tofasco’s contention that the Examiner’s explanation
in that regard constitutes a “new ground of rejection” that is “improper under
37 CFR 41.77(b)” and should be withdrawn. PO Comm. 3-4. That is a
matter for presentation to the Director via Petition. Tofasco, in fact, did
petition the Director. See “Petition Under 37 CFR § 1.181” filed August 20,
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In connection with claims 25, 55, 58, and 59, as amended, Tafasco
contends that the claims call for foldable furniture with rear side crossed legs
and back frame legs, and which exhibits:
plural locations …at which the bottom end of said respective
back frame legs may be coupled, each of said plurality of
locations providing a different corresponding angle between
said top or bottom surface of one of said back frame joints and
one of said back frame legs when said back frame legs are
coupled at one of said plurality of locations.

PO Comm. 5.
Tofasco further summarizes the following in light of the amendments
to the claims:
[Claims 25, 55, 58, and 59] call for foldable furniture which is
capable of supporting a user at any one of several possible
inclinations. In contrast, the chair described in [Aycock] can
support a user in only one position, rather than the multiple,
different support positions which are required in claims [25, 55,
58, and 59]. The same distinction is present between the chair
described in [Aycock] and the chair described in [Levine].

Id. at 6.
Thus, according to Tofasco, the combined teachings of Levine and
Aycock do not account for the multiple possible inclinations aspect of the
folding furniture now required by claims 25, 55, 58, and 59. To that end,
Tofasco characterizes Aycock as being limited to teaching a “single load
configuration” in connection with folding furniture that is distinct from
“multiple load configurations,” such as those of the folding chair of Levine.

2013. The Director responded, denying the Petition. See “Decision on
Petition Under 37 CFR 1.181” mailed October 4, 2013. We do not evaluate
a matter properly presented to, and decided by, the Director.
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Id. at 8. Tofasco further contends that Aycock’s teachings are limited
strictly to such a single load configuration by virtue of “pin 24,” joining
together the leg assemblies of Aycock and which is an element required as a
part of Aycock’s supporter (i.e., supporter body 21). Id. Tofasco concludes
that, because of the alleged requirement of pin 24 in Aycock:
It would be impossible to achieve the support found in
[Aycock] in more than one load configuration – that is the
support could only be found in the fully unfolded seat
configuration of [Levine], and not any other of its other
multiple configurations.

Id. In support of its arguments, Tofasco points to the declaration testimony
of Mr. Michael Aycock, the named inventor of the Aycock patent.
8
Id. at 6-
9. Mr. Aycock testifies that pin 24 in the Aycock patent is a required
element of the foldable furniture of the Aycock patent and that a person of
ordinary skill in the art would not apply the force distribution features of the
Aycock patent’s supporter, as a part of a single load configuration, to
multiple load configuration environments, such as Levine’s folding chair.
See Aycock Decl. ¶¶ 25-31; see also PO Comm. 6-9.
We have considered the arguments advanced by Tofasco and the
declaration testimony of Mr. Aycock. For the following reasons, we are not
persuaded that claims 25, 55, 58, and 59 are patentable over the combined
teachings of Levine and Aycock.
We stated the following in the Decision in connection with the
Aycock patent’s connecting means 24:

8
See “Declaration of Michael Aycock” filed April 5, 2013 (“Aycock
Decl.”).
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[A]lthough Aycock describes articles of foldable furniture
which incorporate a connecting means 24 applied to cross-
member supporter 20, we do not share the Examiner’s view that
such a connecting means or pin is a required element of
Aycock’s inventive supporter. Aycock describes that loading
forces are carried by supporter 21 and that connecting means 24
“is merely for pivotally connecting stems 51, and 52 with the
supporter body 21.” (Aycock col. 4, ll. 11-14.) Aycock further
specifies that “[n]early no stress will be applied to the
connecting means 24.” (Id. at col. 4, ll. 14-15.) Thus, Aycock
makes clear that connecting means 24 serves simply a
connection function separate from the leg supporting function
of the supporter body. The benefit of Aycock’s supporter lies
in the balanced distribution of forces arising from the manner in
which the supporter body carries and supports leg members on
inclined surfaces (Aycock col. 3, l. 66 – col. 4, l. 6). That
benefit is not disclosed as being impact by, or involved with,
connecting means 24.

Decision 18-19.
The portions of Aycock referenced above and quoted in part are
reproduced in full below:
When a downward loading force A1 is applied to the stem 51,
52, a portion of the lower surface of the stem 51, 52 is rested
and supported by the upper supporting groove 223, 233 and a
portion of the upper surface of the stem 51, 52 is rested by the
lower supporting groove 224, 234. Therefore, the reaction force
A2 is well supported by the lower supporting groove 224, 234.
Moreover, since the two stems 51, 52 are inclined in the
opposite direction, the loading force can be evenly supported
and balanced by the supporter body 21. The greater the loading
force will ensure a more firmly construction.
Due to the fact that the loading force A1 is supported by
the supporter body 21, the presence of connecting means 24 is
merely for pivotally connecting the two stems 51, 52 with the
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supporter body 21. Nearly no stress will be applied to the
connecting means 24.

Aycock, col. 3, l. 66 – col. 4, l. 15.
Thus, as was noted in the Decision, the Aycock patent explains that it
is the particular configuration of supporter body 21 that provides a benefit
for a folding furniture assembly, i.e., “the loading force can be evenly
supported and balanced,” when the assembly is in a configuration in which it
must support a downward loading force. It is evident from the Aycock
patent that the structure that is supporter body 21 is separate and
independent from the structure that is connecting means 24. Connecting
means 24 serves a specific and dedicated function that is not associated with
the force distribution benefit arising from the configuration of supporter
body 21.
Indeed, the Aycock patent makes clear that “nearly no force will be
applied to the connecting means 24” when the supporter body is subjected to
a downward load force, and that the connecting means is “merely for
pivotally connecting” the “stems” of Aycock’s furniture assembly. Even
assuming, as is urged by Mr. Aycock, that connecting means 24 is required
of the Aycock patent’s particular piece of folding furniture, neither Tofasco
nor Mr. Aycock explains why the balanced force distribution that is
facilitated by supporter body 21 would not be appreciated reasonably as a
desired attribute in other folding furniture assemblies, such as that of Levine,
irrespective of the presence of the connecting means.
There is no dispute that the folding and reclining chair apparatus of
Levine includes a configuration of back frame legs that may be positioned
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into a “plurality of inclined positions” as now recited in claims 25, 55, 58,
and 59. In that regard, and as was stated in the Decision:
The operation of Levine’s sliding seat joints 240 allows for
both pivoting and sliding of back frame members 420 so that
they may assume the disclosed inclined and non-inclined
positions, and thus does not desire to connect the back frame
members 420 to the joint 240 via a connecting means.

Decision 19-20.
Furthermore, as discussed in the Decision, given that the particular
force distribution benefit of supporter body 21 does not arise from the
presence of connecting means 24, and recognizing that, in evaluating
obviousness, “[i]t is not necessary that the inventions of the references must
be physically combined, without any change,” (citing In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983)), we concluded:
In light of the teachings of [Levine and Aycock], one of
ordinary skill and creativity in the art would have realized that
the force distribution features of Aycock’s supporter body, i.e.,
an intercrossed inclined supporting hole and vertical connecting
hole forming inclined support surfaces, may be implemented
into Levine’s seat joints 240 without requiring the presence of
an undesired connecting means.

Decision 19-20.
We have considered the record before us, including Tofasco’s
arguments and Mr. Aycock’s testimony. Although Mr. Aycock testifies that
one “cannot apply” the teachings of the Aycock patent concerning its
support to a folding chair such as in Levine because of an alleged dichotomy
between single load and multiple load bearing configurations (Aycock Decl.
¶ 29), Mr. Aycock does not explain adequately the underlying basis of that
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testimony. Nothing requires a fact finder to credit inadequately explained
testimony of an expert. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d
1089, 1092 (Fed. Cir. 1997). We are not persuaded that a person of ordinary
skill in the art, who is also a person of ordinary creativity, KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007), would have failed to appreciate
from Aycock’s clear and unambiguous teachings that the benefits attributed
to Aycock’s supporter body would apply also to the folding chair of Levine.
For the foregoing reasons, we are persuaded that the record
demonstrates that claims 25, 55, 58, and 59 would have been obvious in
light of the combined teachings of Levine and Aycock. We maintain the
rejection of claims 25, 55, 58, and 59.
D. The rejection of claims 46 and 51 over Levine and Aycock
In response to the rejection of claims 46 and 51 based on Levine and
Aycock laid out in the Decision, Tofasco amended those claims in attempt to
overcome the rejection. Each of claims 46 and 51 is directed to “folding
furniture,” and each was amended to include, among other features,
“inclination lockers” as a part of the furniture. PO Re-open Req. 13-16.
Further, each of the claims was amended to include the following features in
connection with the “inclination lockers”:
wherein each of said inclination lockers comprises a
locking plug associated with one of said back frame legs and an
engagement rack affixed along an upper side of said lower
portion of one of said rear side crossed legs, said engagement
rack including a plurality of engagement sockets distributed
along said engagement rack, and wherein each of said locking
plugs is arranged to engage with a respective one of said
engagement racks by insertion of one of said locking plugs into
one of said engagement sockets; and
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wherein sack back frame legs may be inclinedly
supported at one of said plurality of inclinedly supported at one
of said plurality of inclination angles relative to said top surface
of one of said back frame joints when said chair is unfolded,
and one of said plurality of inclination angles determined by
which of said sockets said locking plug is inserted into.

Id. In light of those added features of claims 46 and 51, the Examiner
determined that those claims did not read on the combination of Levine and
Aycock. Ex’r Determ. 8. That determination is unchallenged by Atico.
Having considered the record before us, we do not discern error in the
Examiner’s assessment that claims 46 and 51 as now amended are
patentably distinguished over the combination of Levine and Aycock. We
agree that the rejection of claims 46 and 51 over Levine and Aycock has
been overcome.
III. CONCLUSION
In this New Decision under 37 C.F.R. § 41.77(f), we modify our
earlier decision (2011-010720), which forms part of this present decision, to
withdraw rejections of claims 46 and 51 based on: (1) 35 U.S.C. § 314(a) as
impermissibly broadened; and (2) 35 U.S.C. § 103(a) as unpatentable over
Levine and Aycock.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
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AFFIRMED

Ack

PATENT OWNER:

IP POWER HOLDINGS LIMIlED
PALM GROVE HOUSE
P.O. BOX 438, TOAD TOWN
TORTOLA,
BRITISH INDIAN OCEAN TERRITORY

THIRD-PARTY REQUESTER:

FLOYD B. CHAPMAN
WILEY REIN & FIELDING LLP
1776 K STREET NW
WASHINGTON, DC 20006