Ex Parte 6296304 et alDownload PDFPatent Trials and Appeals BoardApr 15, 201495000031 - (D) (P.T.A.B. Apr. 15, 2014) Copy Citation 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) Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 2 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.”). Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 3 § 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. Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 4 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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 5 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. Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 6 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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 7 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, Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 8 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. Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 9 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.”). Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 10 [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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 11 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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 12 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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 13 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 Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 14 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. Appeal 2014-00797 Reexamination Control 95/000,031 Patent 6,296,304 B1 15 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 Copy with citationCopy as parenthetical citation