Ex Parte Barkdoll et al

Patent Trial and Appeal Board

Mar 16, 2015

12424254 (P.T.A.B. Mar. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK J. BARKDOLL and STANLEY C. VALIULIS
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Appeal 2012-006863
Application 12/424,254
1

Technology Center 3600
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Before BART A. GERSTENBLITH, JEREMY M. PLENZLER, and
KEVIN W. CHERRY, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patrick J. Barkdoll and Stanley C. Valiulis (“Appellants”) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–
16 and 19–27. We have jurisdiction under 35 U.S.C. § 6(b).

1
Appellants identify Southern Imperial, Inc. as the real party in interest.
Appeal Br. 2.
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Application 12/424,254

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Claimed Subject Matter
Claims 1, 12, and 20 are the independent claims on appeal. Claims 1
and 12 are illustrative of the claimed subject matter and are reproduced
below.
1. A hanger for a retail structure, comprising:
a base plate having front and rear surfaces;
a hook extending transversely away from the front
surface of the base plate; and
a continuously curved mounting clip projecting from the
rear surface of the base plate along a curvilinear path to at least
a narrow neck region proximate a terminating end.
Appeal Br., Claims App. 1.
12. A hanger for a retail structure, comprising:
a base plate having a thickness extending between front
and rear surfaces;
a hook extending transversely away from the front
surface of the base plate;
a mounting clip projecting away from the rear surface of
the base plate, the mounting clip having a thickness that extends
between an inner and an outer surface of the mounting clip,
wherein the thickness of the mounting clip is less than the
thickness of the base plate;
wherein the mounting clip is curved, and comprises a
concave portion and a convex portion, the concave portion
projecting from the rear surface of the base plate and
terminating at a point of inflection, the convex portion
beginning at the point of inflection and extending to a
terminating end of the mounting clip, wherein the concave
portion is concave relative to the rear surface of the base plate,
and the convex portion is convex relative to the rear surface of
the base plate, and wherein the mounting clip has a thickness
extending between an inner and an outer surface of the
mounting clip.
Id. at 2–3.
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References
The Examiner relies upon the following prior art references:
Schmidt US 2,097,419 Oct. 26, 1937
Kump US 6,234,436 B1 May 22, 2001
Rejections
Appellants seek review of the following rejections:
I. Claims 12, 16, 20, 21, and 23 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Kump;
II. Claims 13–15, 19, 24, 25, and 27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kump; and
III. Claims 1–11, 22, and 26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kump and Schmidt.
SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Rejection I
The Examiner finds that Kump discloses each and every element of
claims 12, 16, 20, 21, and 23. Ans. 5–6. The Examiner provides the
following annotated version of Kump’s Figure 2 in response to Appellants’
argument:

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Kump’s Figure 2, which shows “a side elevational view of a second
type of product display hook according to the prior art” (Kump 3:44–45), is
shown above with annotations provided by the Examiner (Ans. 11).
Appellants raise several arguments in response to this rejection,
including that Kump does not disclose a “convex portion” as recited in
independent claim 12 or a “convex segment” as recited in independent
claim 20. Appeal Br. 4–5. In support, Appellants point to Kump’s
disclosure that second portion 56 of rear plate 52 “‘lies in a plane parallel’
to the plane of the [face] plate [42].” Id. at 4 (quoting Kump, 5:15–22).
Thus, Appellants assert that because second portion 56 is in a plane that is
parallel to the face plate, it cannot be convex relative to the rear surface of
the base plate as recited in claim 12. Id.
In response to Appellants’ argument, the Examiner finds that the
“portion bulging inward toward the hook . . . [is] a convex portion.”
Ans. 10. The Examiner further states that “[t]he drawings must be evaluated
for what they reasonably disclose and suggest to one of ordinary skill in the
art.” Id. at 11 (citing In re Aslanian, 590 F.2d 911 (CCPA 1979)). The
Examiner further finds that “[b]ulging inward does not require an entirely
curved surface since arcuate has not been claimed.” Id. at 12.
We agree with the Examiner that drawings must be evaluated for what
they reasonably disclose and suggest to one of ordinary skill in the art and
we also agree with the Examiner that claims 12 and 20, and, hence, the
claims that depend therefrom, do not recite an entirely curved surface, but
we cannot ignore Kump’s unambiguous disclosure regarding the curvature,
or lack thereof, of second portion 56. Kump expressly discloses that “[a]s
best seen in FIG. 2, the rear plate includes a first portion 54 which extends
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slightly toward the face plate 42 and a second portion 56 which lies in a
plane parallel to the plane of the face plate 42.” Kump, 5:17–20. In light of
Kump’s teaching that the second portion lies in a plane parallel to the plane
of the face plate, the Examiner’s finding that such surface is convex relative
to the rear surface of the plate is not supported by a preponderance of the
evidence.
Accordingly, we do not sustain Rejection I.
Rejection II
The Examiner concludes that Kump would have rendered the subject
matter of claims 13–15, 19, 24, 25, and 27 obvious to one of ordinary skill in
the art at the time of the invention. Ans. 6–7. Claims 13–15 and 19 depend
from claim 12, and claims 24, 25, and 27 depend from claim 20. In the
context of this rejection, the Examiner relies upon the findings regarding
Kump from Rejection I. See, e.g., Ans. 6 (identifying the elements Kump
fails to disclose, rather than repeating the findings regarding what Kump
discloses). In the context of this rejection, the Examiner does not make an
alternative finding that it would have been obvious to modify Kump’s
second portion 56 to render it convex.
Accordingly, for the reasons explained in the context of Rejection I,
we do not sustain Rejection II.
Rejection III
The Examiner concludes that the combination of Kump and Schmidt
would have rendered the subject matter of claims 1—11, 22, and 26 obvious
to one of ordinary skill in the art at the time of invention. Ans. 7–9. The
Examiner finds that Kump discloses most of the elements of the claims, but
does not disclose a mounting clip that is continuously curved. Id. at 7–8.
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The Examiner finds that Schmidt discloses “a continuously curved mounting
clip attachable to a support (Figures 3-4).” Id.
Appellants assert that the clips shown in Schmidt’s Figures 3 and 4
are not continuously curved because there is a linear portion between the
two curved portions in each embodiment. Appeal Br. 8. Appellants’
construction requires that the entire mounting clip is continuously curved.
We agree with this construction, and the Examiner appears to agree as
well. In response to Appellants’ argument, however, the Examiner states
“[t]here is no disclosure in Schmidt to absolutely determine that the securing
clip (3) is not continuously curved.” Ans. 13. The Examiner further finds
that because Schmidt discloses that the clip is bendable and made of a
resilient material, it would require “at least some amount of curvature to be
formed” when attaching to a visor. Id.
Schmidt’s Figures 3 and 4 are shown below:

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Schmidt’s Figure 3 shows “an enlarged vertical cross section of the
mirror disposed in position on a sun visor,” and Figure 4 shows “a vertical
cross section of a modified form of the invention.” Schmidt, 1:36–40.
As reflected in Schmidt’s Figures 3 and 4, each of clips 3 and 17
appears to include a linear portion between two curved end portions. The
Examiner’s statement that nothing in Schmidt “absolutely determine[s]” that
the clips are “not continuously curved” flips the analysis on its head. The
Examiner is required to show by a preponderance of the evidence that
Schmidt discloses a continuously curved mounting clip if relying on
Schmidt for this element of the claims. Stating that nothing absolutely
determines the opposite, when Figures 3 and 4 show a linear portion does
not satisfy the Examiner’s burden. Further, the Examiner has not identified
a teaching in Schmidt’s written description that supports, again by a
preponderance of the evidence, that the linear portion shown in the figures is
actually curved. That the material may be resilient does not necessarily
mean that it is continuously curved.
Accordingly, we do not sustain Rejection III.
2

2
The Examiner rejected claim 22 as part of this rejection, and states “see
discussion of claim 1” when discussing the rejection as applied to claim 22.
Ans. 9. In the discussion of claim 1, however, the Examiner does not
expressly identify where Kump or Schmidt discloses a convex segment as
recited in claim 20, and, hence by dependency, claim 22. Id. at 7–8.
Accordingly, the stated basis for the rejection of claim 22 does not cure the
deficiencies in the rejection of claim 20, discussed above relative to
Rejection I.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1–16 and
19–27.

REVERSED

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