Ex Parte Chase

Board of Patent Appeals and Interferences

Mar 19, 2012

11784356 (B.P.A.I. Mar. 19, 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.
11/784,356 04/06/2007 John Chase JCH 0104 PUS2 4966
22045 7590 03/19/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
SULLIVAN, MATTHEW J
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
03/19/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN CHASE
____________

Appeal 2009-014667
Application 11/784,356
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Chase (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s rejection of claims 1-20 under 35 U.S.C. § 103(a) as
unpatentable over Gerner (US 5,191,676, iss. Mar. 9, 1993) and Becker (US
2,637,063, iss. May 5, 1953). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-014667
Application 11/784,356

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THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a glide assembly mountable
to a leg of a piece of furniture, such as a chair or desk. Claim 1 (the sole
independent claim), reproduced below, with emphasis added, is
representative of the subject matter on appeal.
1. A glide assembly adapted to be
securely fastened to the free end of a leg of a piece
of furniture, said glide assembly comprising:
a body defining a bore extending partially
through said body to define an interior surface, an
open end, and a closed end of said body, the free
end of the leg adapted to be inserted within said
bore;
a post extending from said closed end at
least partially toward said open end of said body
and adapted to be received through an opening of
and within the free end of the leg with the free end
of the leg being adapted to be matingly received
between said post and said body; and
a clip supported upon said post and adapted
to be in abutting contact with an interior surface of
the free end of the leg to securely fasten said body
about the free end of the leg.

OPINION
Appellant argues claims 1-20 as a group. See App. Br. 14-27. We
select independent claim 1 as the representative claim, and claims 2-20 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Gerner substantially discloses the glide
assembly of independent claim 1, except that Gerner fails to teach a clip;
however, Becker teaches a glide assembly including a clip 20 supported on a
post 15 and adapted to be in abutting contact with an interior surface of a
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Application 11/784,356

3
free end of the leg to securely fasten the body about the free end of the leg.
Ans. 3-4. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art “to provide Gerner with the clip as provided by
Becker in place of the interference fit bosses.” Ans. 4.
Appellant contends that the Examiner’s rejection based on Gerner and
Becker relies on hindsight (App. Br. 15-18), is an improper reconstruction
(App. Br. 25-27), and lacks motivation to combine in order to arrive at the
presently claimed subject matter (App. Br. 22-24).
We are not persuaded of hindsight, improper reconstruction or lack of
motivation to combine as contended by Appellant. Gerner and Becker each
disclose glides for connection to the leg of a chair or other item of furniture.
See Gerner’s Fig. 1 and Becker’s Fig. 2. In Gerner, the glide is connected to
the bottom of a chair leg via bosses 61 on the outer surface of a post 60
inside the glide 1 which holds the leg 2 of the chair 3 against ribs 70 on the
inside surface of the glide 1 to keep the glide 1 on the leg 2. See col. 5, l. 49
to col. 6, l. 4 and Figs. 3 and 5. In Becker, fastener member 20 on top of
post 16 holds the glider shoe 10 to the furniture leg 1 by the edges 24 of the
fastener member 20 biting into the inner wall 2 of the furniture leg 1. See
col. 3, ll. 7-31 and Figs. 2 and 6. The Examiner modified Gerner by the
teachings of Becker to simply substitute one known glide fastening
mechanism (i.e., Becker’s clip 20) for another (i.e., Gerner’s bosses 61).
The Supreme Court recognized that “[T]he simple substitution of one known
element for another” generally will be obvious unless the substitution would
have been beyond the level of ordinary skill in the art; or the results of the
substitution would not have been predictable by one of ordinary skill in the
art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-417 (2007).
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Application 11/784,356

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With respect to Appellant’s lack of motivation arguments, we note
that we are not relying on the Examiner’s stated reasoning of “allow[ing] the
overall glide assembly to be consistently installed and uninstalled without
lasting wear,” but rather are relying on the Examiner’s articulation that
Becker’s clip 20 is being substituted for Gerner’s bosses 61. See Ans. 4.
Since the Examiner has articulated that Becker’s clip 20 is being simply
substituted for Gerner’s bosses 61 and since Appellant has not alleged, nor
provided persuasive evidence showing, that the Examiner’s proposed
substitution of Becker’s clip 20 for Gerner’s bosses 61 would have been
either beyond the level of ordinary skill in the art or unpredictable to a
person of ordinary skill in the art, we are not persuaded of hindsight,
improper reconstruction, or lack of motivation in the Examiner’s rejection
based on Gerner and Becker.
Appellant also cites to In re Edge, 359 F.2d 896 (CCPA 1966) for the
proposition that the omission of an element from a referenced device in a
claimed device with the retention of the element’s function in the claimed
device is an indicia of nonobviousness, and allege that claim 1 is nonobvious
over the Examiner’s combination of Gerner and Becker “because, although
the bosses and ribs of the combination is eliminated in the claimed glide
assembly, the function of each of the bosses and ribs in retained in the
claimed clip since it securely fastens the glide assembly about the free end of
the leg.” App. Br. 19. We are not persuaded of an indicia of
nonobviousness with respect to claim 1, because unlike in Edge, Appellant’s
claimed subject matter does not omit the fastening mechanism of bosses and
ribs while retaining their function, but rather replaces the prior art fastening
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Application 11/784,356

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mechanism of Gerner with a known prior art fastening mechanism of Becker
that performs the same function.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1, and claims 2-20 which depend, directly or indirectly,
from claim 1, under 35 U.S.C. § 103(a) as unpatentable over Gerner and
Becker.

DECISION
We affirm the Examiner’s rejection of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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