Ex Parte Adams

Board of Patent Appeals and Interferences

Sep 29, 2004

09851639 (B.P.A.I. Sep. 29, 2004)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM E. ADAMS, IV
____________
Appeal No. 2004-1779
Application No. 09/851,639
____________
ON BRIEF
____________
Before COHEN, STAAB and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves the examiner’s rejection of claims 1
through 10. Claim 11, the only other claim pending in the
application, stands allowed.
THE INVENTION
The invention relates to a suction cup device for holding
objects on a wall or other flat surface. Claims 1 and 8, which
are representative of the subject matter on appeal, read as
follows:
Appeal No. 2004-1779
Application No. 09/851,639
1 The appellant does not dispute that the Adams ‘865 patent
is prior art with respect to the subject matter on appeal.
2
1. A holder comprising:
(a) a suction cup having a cup portion, a neck containing at
least one bore having a multi-sided cross section, and
(b) a split ring having two ends, said ends having a multi-
sided cross-section complementary to the bore, each end sized and
fitted within the at least one bore so that the split ring can be
rotated within the bore from a first position to a second
position such that in each position every side of the end of the
split ring is opposite a side of the at least one bore.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Brown 4,506,408 Mar. 26, 1985
Adams (Adams ‘356) 5,078,356 Jan. 7, 1992
Rendall 5,323,996 Jun. 28, 1994
Adams (Adams ‘865)1 6,131,865 Oct. 17, 2000
THE REJECTIONS
Claims 1 through 4, 6 and 7 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rendall in view of Brown.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rendall in view of Brown and Adams ‘865.
Claims 8 through 10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Adams ‘356 in view of Brown.
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Application No. 09/851,639
3
Attention is directed to the main, supplemental and reply
briefs filed August 12, 2002, May 12, 2003 and May 5, 2004, and
to the answer mailed April 2, 2004 for the respective positions
of the appellant and the examiner regarding the merits of these
rejections.
DISCUSSION
Rendall and Adams ‘356, the primary references applied in
support of the rejections of independent claims 1 and 8,
respectively, disclose suction cup holders of the type at issue.
The appellant does not dispute the examiner’s assessment that
Rendall teaches or would have suggested a holder meeting all of
the limitations in claim 1 except for those pertaining to the
multi-sided cross sections of the suction cup neck bore and split
ring ends and that Adams ‘356 teaches or would have suggested a
holder meeting all of the limitations in claim 8 except for those
relating to the multi-sided cross sections of the suction cup
neck bore and hook end portion. The corresponding cross-sections
in these prior art devices are circular so as to permit rotation
of Rendall’s split ring ends and Adams’ hook end portion within
their suction cup neck bores. To cure these admitted
shortcomings in Rendall and Adams ‘356, the examiner turns to
Brown.
Appeal No. 2004-1779
Application No. 09/851,639
4
Brown discloses “a structurally uncomplicated hinge
structure having variable position settings to allow the members
hinged together to be positioned at many different positions
relative to each other” (column 1, lines 9 through 12). The
reference describes the hinge structure as embodied in devices
such as article hangers, door hinges and gate hinges. The Figure
9 embodiment focused on by the examiner includes article fastener
plates 60 and 62, a male hinge component 72 on plate 60 and a
female hinge component 74 on plate 62. In Brown’s words, “the
male component 72 is hexagonal in cross section [and] [t]he
protruding points 76 of the hexagon [act] as ridges which align
with the grooves 78 of female component 74 to effect variable
positioning between plates 60 and 62” (column 4, lines 24 through
28]. Either or both of the ridges and grooves comprise a
resilient deformable material to allow ratchet-like rotation of
the male and female components between locked positional
settings.
In proposing to combine Rendall and Brown to reject claim 1,
the examiner concludes that it would have been obvious
to have modified the cross sections of the ends of the
split ring and the at least one bore of Rendall ‘996 to
be complementary hexagonal cross-sections as in Brown
‘408 (such that when the ring is rotated within the
bore from a first to a second position, inherently
every side of the end of the ring would be opposite a
Appeal No. 2004-1779
Application No. 09/851,639
5
side of the at least one bore) so as to provide for a
more sturdy holder by allowing the split ring to be
more securely maintained in a desired position [answer,
page 6; and pages 7 and 8].
Similarly, in proposing to combine Adams ‘356 and Brown to
reject claim 8, the examiner submits that it would have been
obvious
to have modified the cross sections of the portion of
the J-hook being fitted within the transverse bore and
the transverse bore of Adams ‘356 to be square [sic,
hexagonal] cross-sections as in Brown ‘408 (such that
when the ring [sic, J-hook] is rotated within the bore
from a first to a second position, inherently every
side of the end of the ring [sic, J-hook] would be
opposite a side of the at least one bore) so as to
provide for a more sturdy holder by allowing the J-hook
to be more securely maintained in a desired position
[answer, page 6; and pages 7 and 8].
Neither Rendall nor Adams ‘356, however, conveys any
indication that it would be advantageous to more securely
maintain the split ring or hook respectively disclosed thereby in
a desired rotational position relative to the neck of the suction
cup. Moreover, while Brown teaches that the hinge disclosed
therein can be used in a number of different devices, none of
these devices, or the hinge structure in general, is particularly
relevant to the suction cup holders disclosed by Rendall or Adams
‘356. Given the structural and functional disparities
therebetween, the only suggestion for selectively combining the
suction cup holders disclosed by Rendall or Adams ‘356 and the
Appeal No. 2004-1779
Application No. 09/851,639
6
hinge structure disclosed by Brown stems from hindsight knowledge
impermissibly derived from the appellant’s disclosure. Thus,
even if Brown is assumed for the sake of argument to be analogous
art with respect to the claimed invention (the appellant urges
that it is not), the combined teachings of Brown and either
Rendall or Adams ‘356 would not have rendered obvious the subject
matter recited in claims 1 and 8, respectively.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claim 1, and dependent claims 2
through 4, 6 and 7, as being unpatentable over Rendall in view of
Brown, or the standing 35 U.S.C. § 103(a) rejection of
independent claim 8, and dependent claims 9 and 10, as being
unpatentable over Adams ‘356 in view of Brown.
As Adams ‘865 does not overcome the above noted deficiencies
of Rendall and Brown relative to parent claim 1, we also shall
not sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claim 5 as being unpatentable over Rendall in view of
Brown and Adams ‘865.
Appeal No. 2004-1779
Application No. 09/851,639
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SUMMARY
The decision of the examiner to reject claims 1 through 10
is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2004-1779
Application No. 09/851,639
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LYNN J. ALSTADT
BUCHANAN INGERSOLL, P.C.
ONE OXFORD CENTRE
301 GRANT STREET, 20TH FLOOR
PITTSBURGH, PA 15219