Ex Parte Cave

Patent Trial and Appeal Board

Sep 10, 2013

11717292 (P.T.A.B. Sep. 10, 2013)

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.
11/717,292 03/12/2007 Jerry Lynn Cave JC-07-001 8374
7590 09/11/2013
STUART WHITTINGTON
3142 N. 82ND WAY
MESA, AZ 85207
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
09/11/2013 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 JERRY LYNN CAVE
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Appeal 2011-002135
Application 11/717,292
Technology Center 3600
________________

Before MURRIEL E. CRAWFORD, JAMES A. TARTAL, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002135
Application 11/717,292

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STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 21-32. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We REVERSE.
Appellant’s claimed invention relates to a device for aligning and
securing objects to a vertical wall. Spec. para. [0002].
Claim 21, reproduced below, is illustrative of the subject matter on
appeal:
21. A picture anchor to secondarily secure a picture frame that
has an existing primary hanger system to a wall, the picture
anchor comprising:
a single-piece silicone bumper pad comprising, (i) a front
surface to contact the wall, (ii) an adhesive laden rear surface
perpendicular to the front surface to adhere the picture anchor
to the picture frame, and (iii) one or more tapered side surfaces
connecting respective peripheries of the front and rear surfaces
in a manner that the front surface has a substantially smaller
surface area than the rear surface to reduce an area of the front
surface that will contact the wall and detrimentally impact a
corresponding wall coating and to have a larger adhesive area
of the rear surface that will contact the picture frame to utilize a
lower bond adhesive wherein the thickness of the silicone
bumper pad is proportionate to a size of the picture frame and
the primary hanger system to provide substantially parallel
spacing between the wall and the picture frame and to absorb
vibrations between the picture frame and the wall; and

1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Jun. 1, 2010) and the Examiner’s Answer (“Ans.,” mailed Aug. 16,
2010).
Appeal 2011-002135
Application 11/717,292

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a fastener having a headed end and a sharp end, the
headed end being permanently and non-movably embedded
within the silicone of the bumper pad, the fastener extending
perpendicularly and through to the front surface with the sharp
end being exposed such that, when the rear surface of the
bumper pad is adhesively attached to a back surface of the
picture frame, and the frame is secured to the wall with the
primary hanger system, pressure applied to a front surface of
the picture frame will force the sharp end of the fastener to
penetrate the wall and secure the picture frame.
The Examiner relies upon the following evidence:
Bonfils US 4,211,382 Jul. 8, 1980
Giles US 2005/0006552 A1 Jan. 13, 2005
Claims 21-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giles.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giles and Bonfils.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

Appeal 2011-002135
Application 11/717,292

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ANALYSIS
Obviousness based on Giles
Claims 21-30
Independent claims 21 and 26 require a silicone bumper pad. The
Examiner determined that while Giles teaches a supporting pad, Giles does
not specifically state that the pad could be formed from silicone, as claimed.
Ans. 4. In particular, Giles (para. [0034]) states:
The conforming pad comprises a soft, pliable material that can
change shape to conform to the changing shape of the
unmounted medium. The conforming pad can be comprised of
various materials provided that the material is sufficiently soft
and pliable to change shape with and in response to the
changing medium. Some conforming pad materials can
include, but are not limited to polyurethane, polyethylene,
vinyl, acrylic and various other materials.
The Examiner further reasoned that silicone is a well-known pliable polymer
“with numerous different embodiments providing a wide range of
resilience,” and that one of ordinary skill in the art would recognize silicone
as the obvious equivalent to the polymers suggested by Giles because “a
device made of silicone would have substantially the same properties as a
device made from the suggested polymers.” See Ans. 4 and 7. The
Examiner, however, identifies no disclosure in any cited prior art or other
evidence to support the determination that silicone is functionally equivalent
to the materials identified by Giles or that one of ordinary skill in the art
would consider them to be functional equivalents. See In re Kahn, 441 F.3d
977, 987-88 (Fed. Cir. 2006) (citation omitted) (“rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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Application 11/717,292

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support the legal conclusion of obviousness”). Accordingly, on this record
we cannot sustain the rejection of independent claims 21 or 26, or their
dependent claims 22-25 and 27-30, under 35 U.S.C. § 103(a) as being
unpatentable over Giles.
Obviousness based on Giles and Bonfils
Claims 31 and 32
Independent claim 31 is directed to a method that also requires a
silicone bumper pad. Like Giles, Bonfils does not disclose the use of
silicone. For the reasons discussed above with respect to claim 21, on this
record we cannot sustain the rejection of independent claim 31, or its
dependent claim 32, under 35 U.S.C. § 103(a) as being unpatentable over
Giles and Bonfils.
DECISION
We REVERSE the decision of the Examiner to reject claims 21-32.
REVERSED

rvb