Ex Parte 7066433 et alDownload PDFPatent Trial and Appeal BoardOct 24, 201495001938 (P.T.A.B. Oct. 24, 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. 95/001,938 03/15/2012 7066433 2012-RX-2 1005 35775 7590 10/24/2014 DESIGN IP, P.C. 5050 W. TILGHMAN STREET SUITE 435 ALLENTOWN, PA 18104 EXAMINER FOSTER, JIMMY G ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 10/24/2014 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 ____________________ SPACECO BUSINESS SOLUTIONS INC. Requester, Appellant v. INNOVATIVE OFFICE PRODUCTS, INC.1 Patent Owner, Respondent ____________________ Appeal 2014-006754 Inter partes Reexamination Control 95/001,938 Patent US 7,066,433 B22 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON APPEAL 1 Innovative Office Products, Inc. is the real party in interest (Respondent Brief 3). 2 Patent US 7,066,433 B2 (hereinafter "'433 patent") issued June 27, 2006 to Oddsen, Jr. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 2 STATEMENT OF THE CASE In this reexamination, the Examiner refused to adopt certain proposed rejections of dependent claims 37 and 39, which were added during the reexamination (Right of Appeal Notice3 (hereinafter "RAN") 1). The Requester appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's refusal to adopt the proposed rejections (Appeal Brief (hereinafter "App. Br.") 3, 8). We have jurisdiction under 35 U.S.C. §§ 134 and 315. The Requester relies on its Appeal Brief and Rebuttal Brief (hereinafter "Reb. Br.") in support of its position. The Patent Owner relies on a Respondent Brief (hereinafter "Resp. Br.") in support of the Examiner's refusal to adopt the proposed rejections. An oral hearing with the representative of the Requester was held before the Patent Trial and Appeal Board on October 8, 2014, a transcript of which will be entered into the record in due course. We are also informed that the '433 patent is the subject of the following pending litigations which are said to be stayed pending the outcome of this reexamination and the reexaminations of other patents involved therein (App. Br. 3; Resp. Br. 4): 1. Innovative Office Products, Inc. v. SpaceCo Business Solutions et al., Case No. 2:05-cv-04037-LS (E.D. Pa.); and 2. Innovative Office Products, Inc. v. Ole Smed et al., Case No. 5:07-CV-00192-MJG-OP (C.D. Cal.). We REVERSE and enter a New Ground of Rejection. 3 The Examiner's Answer mailed August 29, 2013 incorporates by reference the RAN, so we cite to the RAN herein. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 3 THE INVENTION The '433 patent is directed to a reinforced channel for use in an extension arm. Dependent claim 37, and independent claim 1 from which claim 37 depends, read as follows (Claims App., italics added): 1. A reinforced channel for use in an extension arm that mounts a device to a support, said channel comprising a U-shaped body having a longitudinal axis, the longitudinal extent of said body defining first and second spaced apart ends of said body, said body including a pair of spaced apart sidewalls, each sidewall having an upper edge, and a bottom wall therebetween; and a rib assembly within said body between said sidewalls overlying said bottom wall, said rib assembly comprising a plurality of first ribs projecting upwardly from said bottom wall transversely from one of said sidewalls to the other said sidewall and a plurality of second ribs projecting upwardly from said bottom wall at an oblique angle to said sidewalls; wherein said rib assembly extends from said bottom wall to a location below said upper edge on each sidewall; said rib assembly forming within said body an unobstructed channel extending from said first end to said second end between said upper edges of said sidewalls and said rib assembly. 37. The channel of claim 1, said rib assembly having a first height measured between said bottom wall and an upper surface of said rib assembly and said unobstructed channel having a second height measured between said upper surface of said rib assembly and said upper edges of said sidewalls, wherein said second height is greater than said first height. Dependent claim 39 which depends from claim 28 is substantively similar to claim 37 except that claim 39 recites first and second channels and does not require the ribs to project at an oblique angle. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 4 PROPOSED REJECTIONS NOT ADOPTED The Requester appeals from the Examiner's refusal to adopt the following obviousness rejections under 35 U.S.C. § 103(a): 1. Claims 37 and 39 over Silver,4 and optionally, Admitted Prior Art;5 (RAN 35-36) and 2. Claims 37 and 39 over Calandra6 and Roberts.7 (RAN 40-41). 4 U.S. Patent No. 4,244,075 issued to Silver on January 13, 1981. 5 The specification of the '433 patent identifies Figures 1–7 therein as prior art (Figs. 1–7; col. 5, ll. 3–17). In discussing the illustrated prior art extension arm 10, the specification states: The parallelogram retains its position by employing a gas spring 28, which is pivotably and adjustably attached to the first endcap 12 and the upper channel 14, as will be further described below. Generally, the gas spring 28, e.g., a gas type hydraulic cylinder and a retractable piston rod, is sized so as to have a fixed length until an upward or downward force is exerted at the second endcap 18 that exceeds the gas spring's designed resistance. Thus, the gas spring 28 causes the parallelogram to retain its position when the only force exerted at the second endcap 18 is the weight of the device, but permits the parallelogram to be adjusted when a user pushes the device coupled to the forearm extension 20 up or down. (Col. 1, l. 60 to col. 2, l. 5; see also Figs. 1–7; collectively referred to hereinafter as "APA"). 6 U.S. Patent No. 5,385,433 issued to Calandra, Jr. et al. on January 31, 1995. This reference is not to be confused with the '433 patent. 7 U.S. Patent No. 4,087,141 issued to Roberts on May 2, 1978. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 5 ANALYSIS The dispositive issue on appeal relates to the claim limitation requiring the height measured between the upper surface of the ribs and the upper edges of the sidewalls to be greater than the height measured between the bottom wall of the channel and an upper surface of the ribs. (See RAN 43–44). Proposed Rejection 1 The Requester argues, inter alia, that claims 37 and 39 would have been obvious over Silver and APA because these claims "merely add limitations as to the size of components already disclosed in the prior art." (App. Br. 9). Specifically, the Requester argues that the limitations of the claims merely recite the "common sense notion that if one were to implement reinforcing ribs in a channel such as the one shown in the prior art Figs. 1–7 of the '433 patent [i.e., APA], those ribs must be sized accordingly to accommodate the gas spring that resides in that channel." (App. Br. 14). According to the Requester, such sizing would be a matter of obvious design choice involving application of a "known method of reinforcement to a known device." (Reb. Br. 6; see also App. Br. 13–14; Reb. Br. 3–4). The Examiner finds that: [T]he art of record does not support Requester's assertion that a consideration of making an unobstructed channel with greater height than reinforcing ribs to allow extending an element, e.g., gas spring, through the channel falls to a level of mere "common sense." The prior art of record does not establish that such a solution (or even one somewhat similar to it) was Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 6 already used in the art and would therefore constitute a solution that would be predicted by the artisan. (RAN 38–39). The Examiner also finds that "the reinforced channel having these particular proportions is better able to function to accommodate a gas spring," thereby providing a structural benefit that is not suggested or disclosed in the prior art, or attained by combining APA and Silver because, in Silver, the second height is less than the first height (RAN 39–40). The Patent Owner agrees with the Examiner and further argues that the recited proportions are not dictated by the need to accommodate the gas spring because there are other options for accommodating the gas spring, for example, by increasing the size of the entire channel assembly or a single channel (Resp. Br. 10–11). We agree with the Requester that the claims 37 and 39 are unpatentable. As the Requester argued, a person of ordinary skill in the art adding reinforcing ribs to the channel of APA would have sized the ribs to accommodate the gas spring within that channel. The relative sizing and the resulting proportion of the heights recited in the limitation at issue would have been an obvious design choice. While the Examiner and the Patent Owner assert that sizing the ribs to attain the recited proportions is not disclosed in the art, the obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In this regard, a person of ordinary skill is not an automaton, but instead, possesses ordinary creativity. Id. at 421. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 7 The APA establishes that providing a channel accommodating a gas spring therein was known in the art at the time of invention. Structural benefit attained by providing ribs to increase the strength of an extended member such as an arm was also well known in the art (see, e.g., Silver). However, the Examiner and the Patent Owner further assert that a better accommodation of a gas spring is a structural benefit also attained by the claimed invention not suggested in the prior art (RAN 39; Resp. Br. 11). This argument is unpersuasive. Accommodation pertains to size/dimension, and we are not persuaded that there is some "structural benefit" provided in sizing of the ribs to accommodate a gas spring according to the proportions of the limitation at issue. To any extent that such accommodation can be characterized as a "structural benefit" (rather than an issue of sizing) wherein function of accommodating a gas spring is enhanced, we are persuaded that the particular dimensional ratio recited in claims 37 and 39, "wherein said second height is greater than said first height," results in no non-obvious benefit or difference in function, and otherwise gives no unexpected resultThus, providing reinforcing ribs in the channel of APA is merely an application of a known method to the channel of APA. See KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). In noting that the specific height proportion recited in the limitation at issue is not disclosed and asserting that the combination of APA and Silver still fails to result in a second height greater than a first height, the Examiner Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 8 essentially requires explicit teachings in the art and views a person of ordinary skill in the art as an automaton who must rely on such explicit teachings to bodily incorporate the prior art teachings. Such analysis is contrary to obviousness jurisprudence. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). The Patent Owner's further argument that there are other options for accommodating the gas spring, such as increasing the size of the entire channel assembly or a single channel, does not persuasively establish non-obviousness of claims 37 and 39. There are only few options available in the context of sizing the channel and its ribs to accommodate a gas spring in the APA. As noted by the Requester, common sense implementation of Silver's ribs in the APA arm by a person of ordinary skill in the art would have resulted in ribs sized "as small as necessary to accomplish the strengthening function they are used for." (Reb. Br. 4). The proportions recited in these claims would be one of the few obvious options. KSR, 550 U.S. at 421. In view of the above, we agree with the Requester that the relative proportions recited in the limitations at issue would have been an obvious design choice that is well within the skill of those of ordinary skill in the art at the time of invention. Correspondingly, we reverse the Examiner's refusal Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 9 to adopt the proposed rejection of claims 37 and 39 as being obvious over Silver and APA and denominate the same as a New Ground of Rejection under 37 C.F.R. § 41.77(b). Proposed Rejection 2 The Requester also appeals the Examiner's refusal to reject claims 37 and 39 as being obvious over Calandra and Roberts (App. Br. 18–22). However, in view of our reversal of the Examiner's refusal to adopt Rejection 1, we decline to reach this proposed rejection and arguments pertaining thereto. CONCLUSIONS 1. The Examiner's refusal to adopt Proposed Rejection 1 of claims 37 and 39 is REVERSED and denominated as a New Ground of Rejection. 2. We decline to reach Proposed Rejection 2. REVERSED; 37 C.F.R. § 41.77(b) This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that "[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate. However, the Board may elect to defer Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 10 issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. . . . Any request to reopen prosecution before the Examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected." Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the Patent Owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. Requester may file comments in reply to a Patent Owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 11 § 41.77(c) shall be limited in scope to the issues raised by the Board's opinion reflecting its decision to reject the claims and the Patent Owner's response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the Patent Owner and is presented with a brief explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b) for all Patent Owner responses and Requester comments is required. The Examiner, after the Board's entry of a Patent Owner response and Requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board's rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the Patent Owner and/or Requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. peb Appeal 2014-006754 Reexamination Control 95/001,938 Patent US 7,066,433 B2 12 PATENT OWNER: DESIGN IP, P.C. 5050 W. Tilghman Street Suite 435 Allentown, PA 18104 THIRD PARTY REQUESTER: SPACECO BUSINESS SOLUTIONS INC. 13100 East Albrook Drive Suite 100 Denver, CO 80239 Copy with citationCopy as parenthetical citation