Ex Parte Chick

Board of Patent Appeals and Interferences

May 10, 2011

10884350 (B.P.A.I. May. 10, 2011)

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.
10/884,350 07/02/2004 Mark C. Chick 7544 6863
7590 05/10/2011
Paul M. Denk
Ste. 170
763 S. New Ballas Road
St. Louis, MO 63141
EXAMINER
CHIN SHUE, ALVIN C
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
05/10/2011 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 MARK C. CHICK
________________

Appeal 2010-002141
Application 10/884,350
Technology Center 3600
________________

Before SALLY G. LANE, MICHAEL P. TIERNEY and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 2010-002141
Application No. 10/884,350

2
A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Mark C.
Chick [hereinafter “Appellant”], under 35 U.S.C. § 134(a), from a final
rejection of claims 11-15, the only claims on appeal. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Slusarenko U.S. 4,053,025 Oct. 11, 1977
Rastetter et al. U.S. 2,195,013 Mar. 26, 1940
Rees U.S. 1,258,460 Mar. 5, 1918

The Invention
This invention pertains to a locking bar that extends between a pair of
scaffolding swivel castors. The locking bar maintains these castors in
alignment when the scaffolding is moved. (Spec. 7:1-5).
Sole independent claim 11, which is illustrative of the claimed
invention, is reproduced below:
11. A locking bar for use in combination with a pair of
castors provided upon scaffolding, the locking bar provided for
maintaining the pair of castors in alignment and to prevent their
pivoting during usage, each castor having an axle bearing shaft, a
locking bar provided for affixing onto the axle bearing shaft of each
castor, and which when locked in place, preventing the pivot of the
castors during movement, the locking bar includes a length of shaft,
each end of the shaft having a retention sleeve provided thereon, each
retention sleeve of the locking bar includes a lateral slot provided
partially therein, each castor axle bearing shaft having an adaptor
securing in axial alignment therewith, each adaptor includes an
integral flange opposite from the adaptor's connection with the castor
Appeal No. 2010-002141
Application No. 10/884,350

3
axle bearing shaft, the flange of each adaptor provided for sliding into
the lateral slot of each retention sleeve, and when locked in position,
preventing the turning of the pair of aligned castors and to prevent
their pivoting during scaffolding movement. (Br. Claims App’x 12).

The Rejections on Appeal
1. Claim 11 is rejected under 35 U.S.C. § 103(a) as being obvious over
Slusarenko in view of Rees (Ans. 3).
2. Claims 11-15 are rejected under 35 U.S.C. § 103(a) as being obvious
over Slusarenko in view of Rastetter (Ans. 6).

B. ISSUE
Would one of ordinary skill in the scaffolding art have had reason to
secure a locking bar with laterally slotted end retention sleeves onto a
castor’s axles when it was known to secure a locking bar to a castor’s brake
levers?

C. FINDINGS OF FACT
1. Slusarenko discloses a locking bar attached to a pair of scaffolding
castors (Slusarenko Fig. 1 and 3:17-30).
2. Slusarenko’s locking bar connects to the castor’s brake levers that, in
turn, are secured to the castor’s axle (Slusarenko 2:54-62 and 3:25-27).
3. Both Rees and Rastetter disclose a tubular bar having an end retention
sleeve (Rees 2:91-102; Rastetter 3:46-49).
4. Both Rees’ and Rastetter’s retention sleeve has lateral slots (Rees
3:19-24 and Figs. 9-10; Rastetter 3:55-61 and Figs. 3-4).
5. Both Rees and Rastetter teach the benefit of a secure, yet detachable,
connection between a bar and a support (Rees 1:8-17; Rastetter 1:1-12).
Appeal No. 2010-002141
Application No. 10/884,350

4
6. Rastetter discloses an open retention sleeve that accepts a bar therein
and a locking pin (Rastetter 3:46-54, 4:1-10 and Figs. 3-4).
7. Slusarenko’s locking bar telescopes (Slusarenko 3:22 and Figs. 1-2).

D. PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

E. ANALYSIS
Appellant argues the rejection of sole independent claim 11 in view of
Slusarenko and Rees separate from the rejection of claims 11-15 in view of
Slusarenko and Rastetter. Appellant’s arguments are addressed below.

1. The Invention of Claim 11 is Directed to a Locking Bar and Not
to a Castor or its Axially Aligned Adapter
Claim 11 requires a locking bar having laterally slotted end retention
sleeves. Claim 11 states that this locking bar is “for use in combination with
a pair of castors” and further specifies that each castor has an adapter
secured thereto.
The patentability of a claim “depends on the claimed structure, not on
the use or purpose of that structure.” Catalina Marketing Int’l. Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, in the
preamble, Appellant distinguishes the claimed structure (“a locking bar”)
from the use or purpose of that structure (“for use in combination with a pair
of castors”).
Appeal No. 2010-002141
Application No. 10/884,350

5
“[W]here a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112
F.3d 473, 478 (Fed. Cir. 1997). We find that Appellant’s recitation of a
locking bar with laterally slotted retention sleeves in the body of claim 11 to
be a structurally complete invention and that the recited structural elements
are capable of use with a pair of castors and their adapters, as stated in claim
11 without more. Accordingly, because a structurally complete invention is
claimed, we hold that the further recitation to castors and castor adapters in
claim 11 provides guidance as to the intended use of the invention but does
not further limit the scope of claim 11. We affirm the Examiner’s
determination that “the claimed invention is to a locking bar and neither the
adapter nor caster with axel-bearing shaft is being claimed” (Ans. 9 and 11).

2. Rees and Rastetter are Analogous Art
We understand Appellant to contend that both Rees and Rastetter are
non-analogous art because neither teaches securing a bar to a scaffolding’s
castors and more particularly to a castor’s axle (Br. 8 and 9). A reference is
analogous art if it either is in the field of the applicant’s endeavor or is
reasonably pertinent to the particular problem with which the inventor was
concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Both Rees and
Rastetter address the problem of reliably and securely, but also detachably,
affixing an elongated bar to a support (Rees 1:8-17 and Rastetter 1:1-12).
Appellant faced similar problems when attempting to affix a locking
bar to a scaffolding’s castors. For example, Appellant’s Specification at
page 7 identifies an object of the invention as being to provide “a removable
Appeal No. 2010-002141
Application No. 10/884,350

6
bar.” Further, Appellant’s Specification at page 12 describes the desire “to
provide for safer operation” of the scaffolding “since if the bar becomes
disengaged, generally, the operator may no longer be able to conveniently
steer the scaffold properly” because the scaffolding “without a locking bar
will move randomly about the room.” Consequently, Appellant was also
concerned with the particular problem of providing a reliable and secure but
detachable connection. We hold that Rees and Rastetter are analogous art.

3. Claim 11 is Obvious over Slusarenko in view of Rees and also
Slusarenko in view of Rastetter

Claim 11 requires the locking bar to have a laterally slotted retention
sleeve secured to its ends. The Examiner finds that Slusarenko teaches all
the required features of claim 11 except for the retention sleeve having “a
lateral slot” for which Rees and Rastetter are each relied upon (Ans. 4-6, 8-
12). The Examiner finds that it would have been obvious to provide
Slusarenko’s bar with either Rees’ or Rastetter’s laterally slotted sleeve to
make the bar removable from its mating adapter (Ans. 5 and 8). Appellant
contends that the combination of Slusarenko and Rees, like the combination
of Slusarenko and Rastetter, fails to disclose a retention sleeve having lateral
slots (Br. 8-9).
Rees and Rastetter both disclose lateral slots in the end retention
sleeves that are used to removably secure these sleeves (and the attached
bar) to a mating adapter (Rees 3:19-31 and Figs. 9-12; Rastetter 3:46-65 and
Fig. 3). Furthermore, as mentioned above, both Rees and Rastetter teach the
desire to reliably and securely attach and detach a bar to a mating adapter via
a laterally slotted connection (Rees 1:8-17, 3:19-31; Rastetter 1:1-12, 3:55-
Appeal No. 2010-002141
Application No. 10/884,350

7
61). Accordingly, one skilled in the art seeking to form a locking bar that
can be temporarily but reliably secured in place would have had reason to
select a locking bar with lateral slots for its ease of reliable attachment and
detachment.
Appellant also contends that its invention “connects directly to the
caster axle-bearing shaft” which is not disclosed in either cited combination.
Claim 11 requires the locking bar to be “provided for affixing onto the axle
bearing shaft of each castor” and Slusarenko discloses a locking bar that is
mounted to a castor’s brake levers which, in turn, are secured to the castor’s
axle (Slusarenko 2:57-62, 3:25-30 and Figs 1-2 and 11). We are thus not
persuaded by Appellant’s contention.
Appellant further contends that Slusarenko, in combination with Rees
or Rastetter, does not disclose axial alignment of the locking bar and the
castor’s adapter (Br. 8-9). This latter contention, however, is directed to an
intended use of the locking bar (i.e., axial alignment) and as found above,
such intended usage does not further limit the scope of claim 11. We find
that one skilled in the art at the time of the invention would have understood
that Slusarenko’s locking bar was capable of an axially aligned connection
to a mating adapter because both Rees and Rastetter disclose bar ends in
axial alignment with a mating adapter (Rees Figs. 4-5; Rastetter Figs. 2-3).
Based on the record presented, we hold that Appellant’s claim 11 is
directed to a combination of known elements (locking bar and lateral slots)
for their known purpose (castor alignment and secure but removable
attachment) to achieve a predictable result (a reliable locking bar
connection). We affirm the Examiner’s rejection of claim 11 in view of
Appeal No. 2010-002141
Application No. 10/884,350

8
Slusarenko and Rees and we affirm the Examiner’s rejection of claim 11 in
view of Slusarenko and Rastetter.

4. Dependent Claims 12-15 are Obvious in View of Slusarenko
and Rastetter

Claim 12 further requires the locking bar to include a locking pin to
prevent the separation of the locking bar sleeve from the adapter during use.
Claim 13 is directed to an adapter configuration. Claim 14 is directed to a
sleeve configuration. Claim 15 specifies that the locking bar be “formed of
a pair of telescoping tubes”.
Regarding claim 12, Rastetter teaches the use of a locking pin to
securely, but removably, connect the bar’s sleeve to its adapter (Rastetter
3:66 to 4:10). Claim 13 is directed to a specific adapter design yet we agree
with the Examiner and hold that it would have been obvious to one skilled in
the art to secure Rastetter’s adapter via the castor’s axle nut since Rastetter
also teaches securing the adapter to a support in a manner where the two
cannot easily separate (Rastetter 2:36-42). As regarding claim 14,
Rastetter’s Fig. 4 discloses the claimed requirement of the wider portion of
the retention sleeve containing the slot with the narrower portion of the
sleeve accepting the bar therein. Regarding claim 15, Appellant
acknowledges that “Slusarenko does show a telescoping bar” and indeed,
Slusarenko teaches “telescoping sections” (Br. 10; Slusarenko 3:22).
In view of the above, we hold that claims 12-15 are directed to a
combination of known elements (locking pin, open-slotted retention sleeve
and telescoping bar) for their known purpose (ease of assembly and
disassembly) to achieve a predictable result (an adjustable, temporarily
Appeal No. 2010-002141
Application No. 10/884,350

9
secured locking bar). We affirm the Examiner’s rejection of claims 12-15 in
view of Slusarenko and Rastetter.

F. CONCLUSION OF LAW
One of ordinary skill in the art would have had reason to secure a
locking bar with laterally slotted end retention sleeves onto a castor’s axles
as it was known to secure a locking bar to a castor’s brake levers.

G. ORDER
1. The rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious
over Slusarenko in view of Rees is affirmed.
2. The rejection of claims 11-15 under 35 U.S.C. § 103(a) as being
obvious over Slusarenko in view of Rastetter is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

bim