Ex Parte Belokin

Patent Trial and Appeal Board

Sep 26, 2012

11544675 (P.T.A.B. Sep. 26, 2012)

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.
11/544,675 10/10/2006 Paul Belokin 7390.136/P 8927
41254 7590 09/26/2012
JACK A. KANZ
502 SOUTH COTTONWOOD DRIVE
RICHARDSON, TX 75080
EXAMINER
STERLING, AMY JO
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
09/26/2012 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
____________

Ex parte PAUL BELOKIN
____________

Appeal 2011-005901
Application 11/544,675
Technology Center 3600
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Paul Belokin (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-9. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2011-005901
Application 11/544,675

2
THE INVENTION
Appellant's claimed invention relates to a suction cup with a non-
circular peripheral edge which uniformly adheres to a mounting surface.
Spec. 4, para. [006]. In order to insure uniform edge sealing in suction cups
having non-circular geometries, the edge thickness of the suction cup is
relatively constant around the periphery of the cup regardless of the radial
distance of the edge from the center of the cup. Spec. 6, para. [015]. Claims
1 and 7 are independent. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A suction cup having a substantially disc-shaped body
defined by relatively convex outer surfaces and relatively
concave inner surfaces joined at the lateral periphery of the
body to define a non-circular peripheral edge wherein the
thickness of said body at said non-circular edge is substantially
constant along the entire periphery of said body.
Independent claim 7 is also directed to a suction cup having “a
peripheral edge of non-circular geometry wherein the thickness of said
peripheral edge is relatively constant regardless of the radial distance of said
peripheral edge from said central portion.”
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Henderson (US 2003/0161991 A1; pub. Aug. 28,
2003).
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Henderson.
Appeal 2011-005901
Application 11/544,675

3
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kalb (US 2003/0230694 A1; pub. Dec. 18, 2003) and Romei (US
2,974,820; pub. Mar. 14, 1961).
ISSUES
The issues presented by this appeal are:
Does Henderson disclose a suction cup wherein the thickness of the
body of the cup at the peripheral edge is substantially constant along the
entire periphery of the body, as called for in independent claim 1, or is
relatively constant regardless of the radial distance of the peripheral edge
from the central portion, as called for in independent claim 7?
Did the Examiner articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to combine the teachings of Kalb and Romei in a manner to result
in a suction cup having a rectangular peripheral edge wherein the thickness
of the body of the cup at the peripheral edge is substantially constant along
the entire periphery of the body, as called for in claim 6?
ANALYSIS
Anticipation of claims 1-3, 5, and 7-9 by Henderson
The Examiner relies on the depiction of the suction cups in the
Figures of Henderson for the disclosure of a peripheral edge having a
constant thickness1, as called for in the claims. Ans. 7 (stating that “[t]he

1 We use “peripheral edge having a constant thickness” to refer by way of
shorthand to the requirements in claim 1 of a peripheral edge having a
thickness that is “substantially constant along the entire periphery of said
Appeal 2011-005901
Application 11/544,675

4
specification of the Henderson reference does not discuss the thickness of
the other periphery of the suction cup and therefore the relevant argument
pertains to the drawings.”).
Henderson discloses six embodiments of wall-mountable molded
products, each including an oval suction cup(s). Henderson, paras. [0013]-
[0036]; figs. 1-5 (depicting a bathroom hook 10 including a suction cup 16);
figs. 6-10 (depicting a toothpaste/toothbrush holder 20 including a suction
cup 26); figs. 11-14 (depicting a soap dish 30 including a suction cup 36);
figs. 15-18 (depicting a larger soap dish 40 including two suction cups 46
and 46a); figs. 19-21 (depicting a corner tray 50 including four mounting
structures 60, each having a suction cup 66); and figs. 22-24 (depicting a
mirror assembly 70 including a mounting structure 80 having two suction
cups 86).
In the Grounds of Rejection section of the Answer, the Examiner
relies on the first embodiment disclosed in Henderson as the basis for the
anticipation rejection. Ans. 3 (pointing to “suction cup (10)” and Figure 4).
In the Response to Arguments section of the Answer, however, the
Examiner relies on Figures 1, 3, 4, 6, 8, 11, and 18 “taken as a collection.”
Ans. 7. Figures 1, 3, 4, 6, 8, 11, and 18 show suction cups from four
different embodiments of Henderson.

body” and in claim 7 of a peripheral edge having a thickness that is
“relatively constant regardless of the radial distance of said peripheral edge
from said central portion.”
Appeal 2011-005901
Application 11/544,675

5
In the context of anticipation, a prior art reference anticipates the
claimed invention under 35 U.S.C. § 102(b) only if every element of a
claimed invention is identically shown in that single reference, arranged as
they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). In
this case, the suction cups in each of the six embodiments of Henderson are
referred to by different element numbers, i.e., 16, 26, 36, 46 and 46a, 66, and
86. As such, we cannot assume that the suction cups of each embodiment
are the same. To the extent the Examiner relied on multiple distinct
embodiments in Henderson taken as a collection, the elements of the
claimed invention are not identically shown in the reference, arranged as
they are in the claims.
To the extent the Examiner relied on the first embodiment of
Henderson, as shown in Figures 1-5, we do not find by a preponderance of
the evidence that these Figures show a constant thickness of the peripheral
edge as claimed. Figure 1 is a perspective view of a bathroom hook 10
having a suction cup 16. We see only a portion of the peripheral edge of the
suction cup 16 along the right side of the cup in Figure 1 of Henderson.
Even assuming that the Examiner is correct that in the perspective view of
Figure 1, “the converging lines depict[] that one portion of the edge is
visually closer than the other” (Ans. 7), we nonetheless cannot discern from
the perspective view of Figure 1 the thickness of the peripheral edge on the
top and bottom of the suction cup 16 as compared to the remainder of the
peripheral edge of the cup. Figure 2 is a front elevation view of the hook of
Figure 1. Figure 3 is a top plan view of the hook of Figure 1. Again, we see
Appeal 2011-005901
Application 11/544,675

6
in Figure 3 only a portion of the top peripheral edge of the suction cup 16.
We cannot discern from the views depicted in Figures 2 and 3 the thickness
of the peripheral edge on the sides, bottom, and top of the edge of the
suction cup. Figure 4 is a view in vertical section taken generally along the
line 4-4 in Figure 2. In Figure 4, we see the inner surface of the right side of
the suction cup 16. We cannot discern any meaningful information about
the thickness of the peripheral edge of the suction cup in this view. Figure 5
is a view in vertical section taken generally along the line 5-5 in Figure 3.
Figure 5 does not depict any part of the suction cup 16.
When considering Figures 1-5 in total for all that they show, we do
not find by a preponderance of the evidence that Henderson discloses in this
first embodiment a suction cup with a peripheral edge having a constant
thickness as called for in claims 1 and 7. Accordingly, we do not sustain the
rejection of independent claims 1 and 7 and their respective dependent
claims 2, 3, 5, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by
Henderson.
Unpatentability of claim 4 over Henderson
The Examiner’s conclusion of obviousness of claim 4 over Henderson
is based on the same erroneous finding that Henderson discloses a suction
cup having a substantially constant thickness along the entire peripheral
edge of the body. As such, we do not sustain the rejection of claim 4 under
35 U.S.C. § 103(a) as being unpatentable over Henderson.
Appeal 2011-005901
Application 11/544,675

7
Unpatentability of claim 6 over Kalb and Romei
Claim 6 depends from independent claim 1 and further recites
“wherein said non-circular peripheral edge is rectangular.” Kalb discloses a
suction cup 22 that appears to have a conical body with a circular peripheral
edge. Kalb, paras. [0003], [0023]; figs. 1, 2. The Examiner found, and
Appellant does not appear to specifically contest, that the thickness of the
body edge of Kalb’s suction cup is substantially constant along the entire
periphery of the body. Ans. 5; App. Br. 21. Romei discloses a partition for
dividing a dinner plate into a plurality of sectors, in which the partition is
removably secured to the plate by a suction cup. Romei, col. 1, ll. 16-24.
Romei discloses, with reference to Figure 6, an embodiment which employs
a suction cup 11′ having a square top plan form instead of the circular form
of a conventional suction cup. Romei, col. 2, ll. 15-19; fig. 6. Romei
provides no disclosure as to the thickness of the peripheral edge of Romei’s
square suction cup 11′.
Even assuming that it would have been obvious to replace the circular
suction cup of Kalb with the square suction cup as disclosed in Romei, the
Examiner has failed to provide an adequate explanation as to what would
have led one of ordinary skill in the art to modify the suction cup of Kalb to
have a substantially constant thickness along the entire periphery of the
body. For this reason, we do not sustain the rejection of claim 6 under
35 U.S.C. § 103(a) as being unpatentable over Kalb and Romei.
Appeal 2011-005901
Application 11/544,675

8
CONCLUSIONS
Henderson does not disclose a suction cup wherein the thickness of
the body of the cup at the peripheral edge is substantially constant along the
entire periphery of the body.
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
been led to combine the teachings of Kalb and Romei in a manner to result
in a suction cup having a rectangular peripheral edge wherein the thickness
of the body of the cup at the peripheral edge is substantially constant along
the entire periphery of the body.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-9.

REVERSED

hh