Ex Parte 7376993 et al

Patent Trial and Appeal Board

Aug 8, 2016

95000514 (P.T.A.B. Aug. 8, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,514 01/08/2010 7376993 CH13-1K 6127
64194 7590 08/08/2016
Niro McAndrews, LLC
200 West Madison Street
Suite 2040
Chicago, IL 60606
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/08/2016 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
____________________

ARTSANA USA, INC.
Requester

v.

KOLCRAFT ENTERPRISES, INC.
Patent Owner
____________________

Appeal 2015-007617
Inter partes Reexamination Control 95/000,514
Patent US 7,376,993 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

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The ’993 patent was the subject of inter partes reexamination Appeal
2013-008706 (hereinafter “the ’8706 Appeal”), which resulted in the
Decision mailed December 9, 2013 (hereinafter “Original Decision” or
“Orig. Dec.”). The background of the ’8706 Appeal is set forth in the
subsequent New Decision Under 37 C.F.R. § 41.77(f) mailed December 7,
2015 in Appeal 2015-007617 (hereinafter “New Decision” or “New Dec.”)
(New Dec. 2–3).
In the Request for Rehearing (hereinafter “Rehr’g Req.”), the
Requester seeks reconsideration under 37 C.F.R. § 41.79 and modification
of the Original Decision asserting that the Board misapprehended or
overlooked various issues. The Patent Owner submits comments under
37 C.F.R. § 41.79 opposing the Request for Rehearing (hereinafter “PO
Comments”).
We grant the Request to the extent that we consider the Requester’s
arguments infra, but DENY the request to modify our Original Decision.

Issue 1
The Requester argues that proposed Rejections A(1)–A(10) should
have been adopted by the Board in the Original Decision as being obvious
taking into account the “background knowledge possessed by a person
having ordinary skill in the art,” and “inferences and creative steps that a
person of ordinary skill in the art would employ.” (Rehr’g Req. 3–4,
quoting KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 415 (2007); also quoting
Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); MPEP 2141).
The Requester observes that these rejections were not adopted by the
Examiner because Fisher-Price 2002 (hereinafter “FP 2002”) failed to
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disclose legs that are pivotably coupled to the hub, the Board agreeing with
this finding in the Original Decision (Rehr’g Req. 6–7, quoting RAN 21–22
and Orig. Dec. 16–18). According to the Requester:
regardless of whether Fisher-Price 2002 expressly teaches the
limitation of independent claims 1, 17–20, 41, and 59 that at
least two legs are “pivotably coupled” to the hub, the Examiner
previously took notice that a substantially identical reference,
U.S. Patent No. 6,702,643 (“Drosendahl”) (Ex. 4 to Appeal
Brief), teaches that using a pivot to enable movement between
legs and hub is “within the scope of the ordinary practitioner in
the mechanical support arts to achieve this stated goal,” stating:
As enabling a collapsed configuration and an
expanded configuration is an important aspect of
Drosendahl ... [] using a pivot to enable movement
between the rigid members is well within the scope
of the ordinary practitioner in the mechanical
support arts to achieve this stated goal.
February 12, 2010 Office Action at pg. 5.
(Rehr’g Req. 7).
The Requester argues that “[t]he Examiner is considered a person of
‘scientific competence’ in the mechanical supports art whose findings are
‘informed by their scientific knowledge, as to the meaning of prior art
references to persons of ordinary skill in the art.’” (Rehr’g Req. 8–9,
citations omitted). Hence, the Requester argues that using a pivot to enable
movement of legs between collapsed and expanded configurations should
have been considered as being within the background knowledge of those in
the art, and should have been applied by the Board to enter proposed
Rejections A(1)–A(10) in accordance with KSR (Rehr’g Req. 8–9).
We find the Requester’s argument unpersuasive for numerous
reasons. Firstly, we note that the Examiner’s position pointed to by
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Requester was not the Examiner’s final position on the issue as to
obviousness.
Secondly, although KSR discusses the role of common sense, skill and
ordinary creativity of those in the art in the obviousness analysis, it does not
stand for the proposition that basic knowledge or common sense can be a
replacement for core factual findings required for a rejection. Instead,
evidence to support an assertion that structural features of a claim were
known in the art is required. K/S Himpp v. Head-Wear Techs., LLC, 751
F.3d 1362, 1365 (2014) (“Board was correct to require record evidence to
support an assertion that the structural features of [the claims] were known
prior art elements”); see also id. at 1366 (“Board cannot accept general
conclusions about what is ‘basic knowledge’ or ‘common sense’ as a
replacement for documentary evidence for core factual findings in a
determination of patentability”); id. at 1365 (“The determination of
patentability of claims with this limitation therefore requires a core factual
finding, and as such, requires more than a conclusory statement”). The
proposed rejection based on FP 2002 lacks the required core factual finding
with respect to pivotable coupling of the legs.
Thirdly, we disagree with the Requester’s assertion that Drosendahl is
substantially identical to FP 2002. In this regard, we agree with the Patent
Owner that the Examiner’s statement with respect to Drosendahl pertains to
an embodiment disclosed therein in which posts (i.e., legs) are rigid (PO
Comments 3), the Examiner specifically stating the use of a pivot would
“enable movement between the rigidity members” as noted supra (see
Rehr’g Req. 7 quoting February 12, 2010 Office Action at pg. 5). To any
extent that FP 2002 is considered substantially identical to Drosendahl, we
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find FP 2002 would include flexible posts/legs as provided by the main
embodiment of Drosendahl with which FP 2002 resembles as previously
stated by the Requester (Orig. Dec. 17; see also Drosendahl, col. 4, ll. 37–
39; Figs. 2, 3, 6). As the Patent Owner notes, there is no disclosure of rigid
legs in FP 2002 (PO Comments 3), which could potentially make the
Examiner’s statement regarding use of a pivot applicable to rejections based
on FP 2002.
The Requester also disputes the Board’s statement in the Original
Decision that the Requester did not “challenge or persuasively refute” the
Examiner’s finding that the legs of FP 2002 are not pivotably coupled to the
hub (Rehr’g Req. 9, quoting Orig. Dec. 18, which cites RAN 22). The
Requester states that the Examiner made this finding only with respect to
proposed Rejection A(1), but because this finding was not repeated in
refusing to adopt proposed Rejections A(2)–A(10), the Board’s reason for
not adopting proposed Rejections A(1)–A(10) “was the Board’s independent
basis” such that the Examiner’s refusal to adopt these rejections was not ripe
for appeal until the Board affirmed that FP 2002 is a prior art reference
(Rehr’g Req. 9).
However, the record is clear that the lack of a pivotable coupling in
FP 2002 was the finding of the Examiner, and did not originate with the
Board (Orig. Dec. 16, quoting RAN 22). The Requester still offers no
persuasive arguments in the present Request for Rehearing to “challenge or
persuasively refute” the finding that the legs of FP 2002 are not pivotably
coupled to the hub, except for the argument based on the Examiner’s
statement with respect to Drosendahl. The Requester’s argument is
unpersuasive for reasons discussed supra.
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In addition, proposed Rejections A(2)–A(7) pertain to dependent
claims that depend from claims in proposed Rejection A(1). As such, it
cannot be reasonably disputed that the rationale for concluding that proposed
Rejection A(1) fails to establish obviousness of the involved claims are
equally applicable to proposed Rejections A(2)–A(7) that only reach claims
that depend from claims involved in proposed Rejection A(1) (see App. Br.,
Claims App’x; App. Br. 5–6). Thus, this line of argument is unpersuasive as
to Rejections A(2)–A(7), and at most, only applicable to proposed
Rejections A(8)–A(10) that reach claims 41, 42, 59, and 60. Even in the
context of proposed Rejections A(8)–A(10), the Requester offers no
persuasive arguments in the present Request for Rehearing to “challenge or
persuasively refute” the finding that the legs of FP 2002 are not pivotably
coupled to the hub, except for the unpersuasive argument based on the
Examiner’s statement with respect to Drosendahl.1

1 We also note, but do not rely on, the Examiner’s further statements that
claims 41 and 42 require:
the second connectors between the legs and the mat to comprise
rigid mechanical fasteners which couple with apertures which
are part of the first connector. This is not disclosed by the cited
references. Custer shows apertures to couple legs to a play
yard, but that apertures are coupled to the wall of the assembly
with thread, which is not rigid.

We further note, but do not rely on, the Examiner’s further statements that
claim 59 (and thus, claim 60 that depends from claim 59) requires:
means for biasing the legs toward the means for pivotably
holding the legs (the hub). The legs of Yang are not biased
toward the hub. The system of Yang does show a tab which is
biased, but the legs are not biased, as they cannot move away
from the hub and the spring would provide a force away from
the hub.
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Based on the facts above, we see no persuasive basis to grant the
Request for Rehearing and to enter proposed Rejections A(1)–A(10).

Issue 2
In the Original Decision, the Board reversed the Examiner’s refusal to
reject claims 22, 23, and 27 based on the finding that the sliding fastener of
Custer is a component of a compound connector, which couples the legs to
the mat (Orig. Dec. 22–26). Hence, the Board reversed the Examiner’s
refusal to adopt Requester’s proposed Rejection B that was appealed based
on the combination of Graco, Custer, and Yang as to claims 22, 23, and 27,
as well as proposed Rejection C also appealed, based on the combination of
Graco, Custer, and Hu as to claims 22 and 27 (Orig. Dec. 22–26).
The Requester argues that in view of the Board’s finding, a good
cause exists for also entering rejections of claims 1–11, 13–16, 18, and 19 as
obvious over Graco in view of Custer, and either Yang (Rejection B) or Hu
(Rejection C); and to further enter rejection of claims 1–8, 12–16, 18, and 19
as obvious over Graco in view of Custer, and Kim (Rejection D) (Rehr’g
Req. 10–11). The Requester notes that during the reexamination, the
Examiner withdrew the proposed rejections now being sought to be entered,
based on the finding that the sliding fastener of Custer cannot be a
component of a compound connector (Rehr’g Req. 14; RAN 35; Orig. Dec.
23). The Requester argues that:
the Board’s reasoning for maintaining Rejections B and C with
respect to claims 22, 23, and 27 based on the teachings of
Custer is in direct contradiction to the Examiner’s reasons for

(RAN 43).
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withdrawing Rejections P, Q, and R with respect to and
warrants a new ground for rejection.
(Rehr’g Req. 14).
Correspondingly, the Requester argues that because the Board’s
finding contradicts the Examiner’s finding, new grounds for rejection of
claims 1–11, 12–16, 18, and 19 under proposed Rejections P, Q, and R are
warranted (Rehr’g Req. 15).
We first observe that the Board did not reverse the Examiner’s refusal
to adopt the proposed rejection claims 22, 23, and 27 based on Graco,
Custer, and Kim (Rehr’g Req. 11) (Orig. Dec. 26). The Examiner refused to
reject these claims finding that Kim does not disclose the recited cavities,
which the Requester did not contest (Orig. Dec. 26, citing Right to Appeal
Notice 27–28). Thus, the Requester’s arguments and request based on
Custer is not pertinent to the proposed rejection based on Graco, Custer, and
Kim.
As to the Requester’s main arguments based on the finding regarding
Custer, we observe that the Board did not raise this factual issue or make its
finding with respect to Custer on its own. Instead, the Board evaluated the
appeal of the Requester as set forth in its Appeal Brief, which specifically
challenged the Examiner’s finding as to Custer (see App. Br. 25–26). The
proposed rejections appealed to the Board, and evaluated by the Board were:
B. Claims 22–27 are Obvious Under 35 U.S.C. § 103(a) Over
Graco In View of Custer and Yang (Rejection P); [and]
C. Claims 22–27 are Obvious Under 35 U.S.C. § 103(a) Over
Graco In View of Custer and Hu (Rejection Q).
(App. Br. 7–8; see also Notice of Appeal 3–4 (Rejections (17) and
(18)); Orig. Dec. 6).
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In deciding an appeal, the Board generally looks to the arguments
made by the Examiner and the involved parties to determine whether the
Examiner erred, especially in the context of an inter partes reexamination
where both the Patent Owner and the Requester are represented by counsel.
The Board relies on the involved parties to focus the issues and decides on
those issues based on facts and arguments presented by the involved parties.
See Ex Parte Frye, 94 U.S.P.Q. 2d 1072, 1075 (BPAI 2010 (precedential)).
While the Board is authorized to enter a new ground of rejection, this
authority is discretionary. See 37 C.F.R. § 41.77(b). Moreover, inter partes
reexaminations are mandated to be conducted with special dispatch.
35 U.S.C. §314(c).
As acknowledged by the Requester, the Requester chose not to appeal
the Examiner’s refusal to reject claims 1–16, 18, and 19 based on the
combinations of Graco, Custer, and either Yang or Hu (Rehr’g Req. 14). In
arguing claims 22–27, the Requester had argued that Custer discloses a
compound connector (Orig. Dec. 23, citing App. Br. 26). Thus, the
Requester should have appreciated the effect of the Board accepting their
argument on the proposed rejections of claims 1–11, 13–16, 18, and 19 as
obvious over Graco in view of Custer, and either Yang or Hu; and the
rejection of claims 1–8, 12–16, 18, and 19 as obvious over Graco in view of
Custer, and Kim. Accordingly, the appropriate time for putting those
proposed rejections before the Board was in the Requester’s Appeal Brief
and not in the present request for rehearing. Entry of the proposed rejections
as now requested by the Requester would essentially be based on new
arguments as to the requested claims, which could have and should have
been made previously, such new arguments being prohibited in rehearings
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except under 37 C.F.R. § 41.79(b). We discern no basis for finding that the
Requester’s decision to not appeal certain claims of a rejection (while
appealing others of the same rejection) as satisfying an exception set forth in
the rules.
Thus, the line of reasoning discussed above in Issue 2 is an improper
basis for requesting a rehearing. If the Requester desired consideration of
these proposed rejections as to claims 1–11, 13–16, 18, and 19, the
Requester should have appealed those issues. Rehearing is not the
appropriate time to raise such new issues.

DECISION
While we have considered the Original Decision in light of the
Request for Rehearing, and have elaborated on certain aspects of it, we
decline to modify the Original Decision in any respect.

DENIED

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. 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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Patent Owner

HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2100
CHICAGO, IL 60606

Third Party Requester

VOLPE AND KOENIG, P.C.
UNITED PLAZA, SUITE 1600
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103