Ex Parte Benitez

Patent Trial and Appeal Board

Feb 23, 2016

11977940 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111977,940 10/27/2007
71372 7590 02/23/2016
JEFFREY ff RODDY
525 ROY AL CREST DRIVE
RICHARDSON, TX 75081
FIRST NAMED INVENTOR
Israel Benitez
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IBOOOOlJHR 4333
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
MAILDATE DELIVERY MODE
02/23/2016 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
Ex parte ISRAEL BENITEZ
Appeal2013-010759
Application 11/977 ,940
Technology Center 3600
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 3, 4, 6-8, and 10-14. Br. 2. 1 Claims 1, 2, 5, and 9 have
been withdrawn. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to those surface
mounted devices providing a means to releaseably secure items against a
1 Appellant's Appeal Brief lacks page numbering. We assign such
numbering starting with the title page bearing page number 1.
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Application 11/977 ,940
surface." Spec. if 1. Claims 3, 10, and 12 are independent. Claim 3 is
reproduced below and is illustrative of the claims on appeal:
3. A surface mountable retention system for bulky items
compnsmg:
an affixing surface; and,
a top plate having a centered aperture therethrough, and a
plurality of flanges formed in oppositions to each other, each of
said flanges having, a strap admitting slot and,
a bottom plate, having a centered aperture therethrough;
and,
at least one strap having two ends, each of said ends
terminated by a coupling means by which each of said ends are
releasably coupled to each other; and,
a joining member comprising:
a bushing flared at its terminal ends about which
said top and bottom plates are freely rotatable; and,
an affixing means passing through the bushing
selected from at least one of the following; wood screws,
hollow wall anchors, drywall inserts, toggle bolts,
expansion bolts, and masonry screws.
REFERENCES RELIED ON BY THE EXAMINER
Cameron US 3,632,071 Jan. 4, 1972
Wu US 5,573,211 Nov. 12, 1996
LaCroix US 6,017 ,085 Jan. 25, 2000
THE REJECTIONS ON APPEAL 2
Claims 3, 4, 6, 7, and 10-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cameron and LaCroix.
2 Claim 12 is objected to with the Examiner suggesting "that the Applicant
amend the 'each retention system' to read 'the retention system' so that the
preamble and the body of the claim are directed towards the same
limitation." Final Act. 2.
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Application 11/977 ,940
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Cameron, LaCroix and Wu.
ANALYSIS
The rejection of claims 3, 4, 6, 7, and 10--14
as unpatentable over Cameron and LaCroix
Appellant presents separate arguments for each independent claim 3,
10, and 12. Br. 12-22. Appellant does not present arguments for dependent
claims 4, 6, 7, 11, 13, and 14 other than to state that they are allowable "for
at least the reasons above" directed to independent claims 3, 10, and 12. Br.
22. Accordingly, we separately address claims 3, 10, and 12, with claims 4,
6, 7, 11, 13, and 14 standing or falling with their respective parent claim.
See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 3
The Examiner primarily relies on the teachings of Cameron but
acknowledges that Cameron does not disclose the affixing means passing
through a bushing or that such means are selected from the identified group.
Final Act. 3-5. The Examiner relies on LaCroix for disclosing the use of a
bushing for affixing purposes, as well as the use of a screw. Final Act. 5.
The Examiner concludes that it would have been obvious "to replace the
adhesive as taught by Cameron with the screw and bushing configuration as
taught by LaCroix so that the user does not have to use the inspection holes
to check on the condition of the adhesive as taught by Cameron." Final Act.
5; see also Cameron 1 :46-49, 3: 12-14. The Examiner further reasons that
LaCroix's "screws would provide a more durable connection and thus not
require monitoring [of Cameron's adhesive] by the user." Final Act. 6.
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Application 11/977 ,940
Appellant contends that "Cameron does not disclose 'a top plate', but
instead describes a 'saddle' (26), which is different from a 'plate."' Br. 13.
For support, Appellant states that a "plate" "is defined as 'a thin flat sheet or
strip of metal or other material."' Br. 13 (referencing Oxford Collegiate
Dictionary 2nd ed.). Indeed, as Appellant asserts, item 26 in Cameron is
described as being a "saddle," and not a "plate." See generally Cameron.
Furthermore, Cameron's saddle 26 is configured with two inclined surfaces
68 and 69 (Cameron 3:66-68, Fig. 8) such that it may not be "flat" as the
term "plate" is defined supra. However, we note that Appellant's claimed
"top plate" is also not "flat" but instead is recited as having "a plurality of
flanges," which are sloped. See Spec. i-f 32, Fig. 2. Our reviewing court has
provided guidance that a claim construction that excludes the preferred
embodiment "is rarely, if ever, correct and would require highly persuasive
evidentiary support." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1583 (Fed. Cir. 1996). In view of the above instructions, and the lack of
"highly persuasive evidentiary support," we are not persuaded to adopt
Appellant's narrow construction of the claim term "plate." Accordingly, and
also because Appellant's device and Cameron's device both have strap
admitting slots, we are not persuaded that the Examiner erred in correlating
Cameron's saddle 26 to Appellant's "top plate." Final Act. 3.
Appellant also contends that Cameron does not disclose a bushing
"but instead discloses a 'trunnion."' Br. 13. Be this as it may, the Examiner
did not rely on Cameron for teaching a bushing; instead, the Examiner relied
on LaCroix for such teaching. Final Act. 5. In fact, the Examiner explicitly
stated that it would have been obvious "to replace the adhesive as taught by
Cameron with the screw and bushing configuration as taught by LaCroix."
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Application 11/977 ,940
Final Act. 5; see also Ans. 15. Accordingly, Appellant's contentions
concerning Cameron's trunnion (Br. 13-14) are not persuasive of Examiner
error.
Appellant further contends that LaCroix is non-analogous art because
"LaCroix (class 297) is from a[] different field of endeavor and it is not
reasonably pertinent to the problem faced by the inventor which is how to
attach straps to a surface, such as a wall." Br. 15. Appellant contends that
"LaCroix is concerned primarily with how to attach a hinged tray to a chair
-not how to constrain and secure large bulky objects against a wall." Br.
15. However, attaching straps to a surface, or securing bulky objects against
a wall, were not the only problems faced by Appellant. Besides these,
Appellant's Specification also addresses a need to rotatably affix a plate to a
wall. See Spec. ,-r 9. Presuming, arguendo, Appellant's characterization of
LaCroix is correct (i.e., "how to attach a hinged tray"), then Appellant does
not explain how LaCroix is not reasonably pertinent to Appellant's solution
of affixing a "rotatable flanged face plate" to a surface. Spec. ,-r 19; see also
Ans. 15. Accordingly, Appellant's contention that LaCroix is non-
analogous art is not persuasive.
Appellant additionally "disagrees with [the] Examiner's statements
regarding the modification of Cameron with the bushing and screw
configuration of LaCroix for at least the reason that the Cameron does not
teach or suggest screws, but instead stresses adhesion as the mounting
means." Br. 15. Indeed, Cameron teaches the use of adhesives, not screws,
for mounting purposes (Cameron 1 :46-49), which is the reason the
Examiner referenced LaCroix, which employs screws for mounting
purposes. Final Act. 5 ("LaCroix discloses an alternate means of
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Application 11/977 ,940
rotationally attaching two objects"); Ans. 15; see also LaCroix Figs. 6, 18.
Appellant's disagreement with the Examiner's statements is not persuasive
the Examiner erred in combining Cameron and LaCroix. Final Act. 5---6.
Appellant also states that "[i]n Cameron as modified by LaCroix, the
machine screw and bushing configuration would still not yield an apparatus
attachable to a wall or other surface" because of LaCroix's machine screw.
Br. 15. First, it is not disputed that Cameron uses an adhesive for mounting
purposes. Cameron 1 :46-49. Second, the Examiner is "replac[ing] the
adhesive as taught by Cameron with the screw and bushing configuration as
taught by LaCroix." Final Act. 5. Based on the above, Appellant does not
explain how the use of a screw (even a machine screw) in place of an
adhesive for mounting purposes "would still not yield an apparatus
attachable to a wall or other surface." See also Ans. 15-16. Appellant
proffers no evidence to this effect, and it is not otherwise self-evident from
the record. Appellant's contention is not persuasive of Examiner error.
Appellant also contends that the cited combination employing screws
"does not teach a means to affix the apparatus to a wall, especially sheet
rock." Br. 15-16. The Examiner notes that "affixing means to affix the
apparatus to a wall such as sheet rock" is not a claim recitation. Ans. 17.
Accordingly, and based on the record presented, Appellant's
contentions are not persuasive of Examiner error. We sustain the
Examiner's rejection of claims 3, 4, 6, and 7.
Claim 10
With respect to claim 10, Appellant repeats many of the arguments
previously asserted, such as, for example, Cameron disclosing a trunnion
and not a bushing (LaCroix teaches a bushing); LaCroix is non-analogous
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art; and that it would not have been obvious to replace Cameron's adhesive
with LaCroix's screw and bushing arrangement. Br. 17-18. These
contentions are not persuasive for the reasons previously identified.
Appellant "also disagrees with Examiner's statement that the screws would
provide a 'more durable connection and thus not require monitoring by the
user."' Br. 18. The Examiner explains that "over time adhesives tend to
lose their effectiveness due to environmental conditions and a screw would
provide a more stable structural connection since the screws pierce both the
surfaces and link the two in a manner which is less susceptible to
environmental conditions." Ans. 17. We are not informed by Appellant
how this explanation by the Examiner is in error.
Appellant also contends that the cited combination "still cannot
function to affix the entire combination to a vertical surface such as a wall as
disclosed by Applicant." Br. 18. Again, the Examiner notes that "affixing
means to affix the apparatus to a vertical surface such as a wall" is "not
recited in the rejected claim(s)." Ans. 18. Nevertheless, even if this were a
claim recitation, Appellant does not provide evidence in support of this
contention, and it is not otherwise self-evident that the Examiner's suggested
combination could not be affixed to a vertical surface.
Appellant also addresses how the claimed product can be made via
"multiple plates to be stamped at once" and that this advantage is "not
present in the proposed combination." Br. 18. But again, this is not a
recited limitation.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 10 and 11.
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Claim 12
Claim 12 includes the limitation of "a top plate modifiable from a
bottom plate producing at least two wing-shaped flanges each with a strap
admittance slot." "The Examiner interprets this limitation to read as a
limitation which states that the top plate is capable of being modified so that
it has a different shape or configuration from the bottom plate and includes
at least two wing shaped flanges." Ans. 18. The Examiner states that "the
method of forming the device is not germane to the issue of patentability of
the device itself." Ans. 18 (referencing In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985) ("The patentability of a product does not depend on its
method of production.")). Additionally, "the Examiner wishes to point out
that the claim does not require a process of making the device but is an
apparatus claim." Ans. 19 (emphasis added). Appellant does not indicate
how the Examiner's characterization of claim 12 is in error.
Appellant also makes note of Cameron's bottom plate not being
substantially planar because it "has a recess in the middle for one end of the
trunnion." Br. 19. Appellant's contention is not fully understood since the
preferred embodiment of the bottom plate likewise has a recess in its middle
region through which the attachment mechanism passes. See Spec. i-f 33,
Fig. 2 (discussing and illustrating, respectively, "aperture 17a"). Appellant
contends that the bottom plate being "substantially planar" is salient
"because Applicant's planar bottom plate permits Applicant's apparatus to
be affixed completely flush to a surface such as sheet rock with a toggle
bolt." Br. 19-20. The Examiner notes that the claim limitation of
"substantially planar" "does not require that the entire base plate is flat" and
that Cameron's bottom plate meets this claimed limitation. Ans. 19.
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Application 11/977 ,940
Furthermore, Appellant does not explain how Cameron's bottom plate is
unable to likewise be affixed flush with a surface.
Appellant also addresses LaCroix stating that "LaCroix also does not
teach a planar bottom plate" (Br. 20), but the Examiner relied on Cameron
for this teaching, not LaCroix. See Final Act. 10.
Appellant further addresses the claimed "top plate," which is recited
as being "modifiable from a bottom plate." Appellant contends that "[!]here
is no practical way to modify the Cameron base (25a) to resemble Cameron
saddle (39), or to modify the LaCroix channel ( 46) to resemble the LaCroix
hinge (54)." Br. 20. Appellant does not identify the manufacturing process
by which this modification is rendered thereby giving further credence to the
Examiner's finding supra that claim 12 "is an apparatus claim." Ans. 19.
Appellant also addresses the limitation "each retention system formed
in part from circular plates" contending that "the Examiner concedes that
Cameron does not disclose the top and bottom plates being circular." Br. 20.
Regarding this "formed in part from circular plates" limitation, the Examiner
finds that it would have been obvious make the plates circular, triangular, or
any other shape "in order to conform to different uses in different
environments." Ans. 9-10, 19. "For instance, in some applications it may
be desirable for the apparatus to fit within a certain space or void for which a
square or rectangle would only suffice." Ans. 10. "Or circular
configurations may be more atheistically appealing than square." Ans. 10.
Appellant does not persuade us of error in the Examiner's finding or in the
rationale employed.
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Appellant also relies on arguments previously presented and not found
persuasive. Br. 21-22. Accordingly, based on the record presented, we
sustain the Examiner's rejection of claims 12-14.
The rejection of claim 8
as unpatentable over Cameron, LaCroix and Wu
Appellant presents no arguments regarding the rejection of claim 8
other than to group this claim 8 with the claims discussed above that are
rejected under Cameron and LaCroix. Br. 22. In short, Appellant does not
explain how the Examiner erred in additionally relying on the teachings of
Wu for the reasons stated. See Final Act. 13. We sustain the Examiner's
rejection of claim 8.
DECISION
The Examiner's rejections of claims 3, 4, 6-8, and 10-14 are
affirmed.
1'-lo time period for taking any subsequent action in connection \~\rith
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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