Ex Parte De Beer

Patent Trial and Appeal Board

Oct 31, 2012

11939080 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC R. De BEER
____________

Appeal 2010-010397
Application 11/939,080
Technology Center 3600
____________

Before JOHN C. KERINS, EDWARD A. BROWN and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010397
Application 11/939,080

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STATEMENT OF THE CASE
Eric R. DeBeer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 4, 6-13 and 15-24.
Claims 2, 3, 5 and 14 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on October 18, 2012.
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is to a display item slide. Claim 1,
reproduced below, is illustrative:
1. A slide for attaching to a display item
comprising:
a longitudinal channel with a first end and a
second end and a longitudinal bend extending from
the first end to the second end;
a first bend portion and a second bend portion
joined by the longitudinal bend, the first and
second bend portions each having respective
interior confronting surfaces adapted to receive an
edge of the display item therebetween and
respective exterior surfaces;
a pair of bulges projecting from the first bend
portion, a first bulge being close to the first end
and a second bulge being close to the second end,
each of the bulges having a generally planar outer
face; and
a hanger generally centrally fast with the second
bend portion.
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THE REJECTION
The Examiner has rejected claims 1, 4, 6-13 and 15-24 under 35
U.S.C. §103(a) as being unpatentable over Gavronsky (US 6,988,330 B2,
issued Jan. 24, 2006).
ANALYSIS
Appellant argues claims 1, 4 and 6-13 as a group. Appellant presents
separate arguments for claim 15; for claims 17 and 23-24 grouped therewith;
for claim 18; for claims 19 and 20-21 grouped therewith; and for claim 22.
We will take claims 1, 15, 17, 18, 19 and 22 as representative, and the
remaining claims stand or fall with the respective claim(s) with which they
are grouped.
Prior to addressing the representative claims individually, we note that
we agree with Appellant that the Examiner’s reliance on the scope of claim
38 of Gavronsky, and the Examiner’s position that various claim limitations
falling within the scope of that claim evidences the obviousness of those
limitations, are legally incorrect. In re Benno, 768 F.2d 1340 (Fed. Cir.
1985). We do not rely on this approach in any way in the ensuing analysis.
Claim 1
The Examiner acknowledged that Gavronsky does not disclose the
claim limitation calling for a pair of bulges, with “each of the bulges having
a generally planar outer face.” Ans. 6. The Examiner further noted that
Gavronsky discloses that the bulges disclosed therein, while shown as being
convex, “could readily be concave or another shape/configuraton.” Ans. 9,
Gavronsky, col. 4, ll. 50-52. The Examiner thus concluded that it would
have been an obvious matter of engineering design choice to modify the
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Gavronsky bulges such that they would have a generally planar outer face.
Ans. 7.
Appellant maintains, citing to In re Dembiczak, 175 F.3d 994, 999
(Fed. Cir. 1999), that the alleged modification must be “clear and
particular”, and that the above-quoted portion of the Gavronsky disclosure
“is neither clear nor particular with respect to the claimed planar-shaped
bulges.” Appeal Br. 10; Reply Br. 5. This argument, however, is directed
more to whether Gavronsky actually discloses bulges having a generally
planar outer face, not to what would have been obvious in view of what
Gavronsky actually discloses. It is noteworthy that Appellant does not
directly refute the Examiner’s position that the claimed shape would have
been an obvious engineering design choice, nor present evidence or
reasoning tending to establish that the claimed shape would not have been
such.
Appellant additionally maintains that the open-ended language in the
Gavronsky disclosure that the bulges could be of “another
shape/configuration” discloses not a finite number of possibilities, but rather
an infinite number of solutions. Appeal Br. 10; Reply Br. 5. As such,
Appellant contends that the present situation thus does not fall in line with
the Supreme Court’s observation that when “there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue known options within his or her technical grasp.” Id., quoting KSR
Int’l. Co. v. Teleflex, Inc., 127 S.Ct. 1727 (2007).
We disagree with Appellant on this point. Gavronsky specifically
discloses and illustrates semi-spherical convex bulges, and explicitly
discloses concave bulges as a possible alternative. This effectively covers
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the universe of bulges having curved surfaces--they will be either concave or
convex. This leaves bulges, whether concave or convex, having planar
faces1, and bulges protruding to form a line or tip at their peak, as two of the
most readily apparent and finite number of possibilities for what Gavronsky
discloses as “another shape/configuration.”
Appellant has thus not apprised us of error in the Examiner’s position
with respect to claim 1. The rejection of claim 1, and of claims 4 and 6-13
grouped therewith, is sustained.
Claim 15
Claim 15 depends from claim 1 and further recites that “each of the
bulges is located at an edge of the first bend portion.” Appeal Br., Claims
Appendix. The Examiner maintains that modifying the Gavronsky device to
have the bulges located at the edge of the first bend portion would have been
obvious since the modification is “merely a change in location and has been
suggested or motivated by Gavronsky in column 4, lines 43ff without
departing from the scope of the invention.” Ans. 8-9.
Appellant argues that there is significance to the claimed position of
the bulges, in that this position “aid[s] in the extraction of the slide from a
magazine of slides.” Appeal Br. 12. The Specification attributes the
facilitating of extraction of a slide to the bulges “caus[ing] adjacent slides to
be slightly separated,” without specifically referring to the positioning of the
bulges at the edges of the slides. Spec, p. 6, ll. 4-6. Appellant additionally
argues that the portion of Gavronsky relied on by the Examiner teaches only

1 Appellant describes the bulges as both “convex” and “angular, having a
generally planar outer face.” Spec., p. 5. l. 17, l. 24.
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that the quantity of bulges can be changed, not that the location of the bulges
is suggested. Appeal Br. 12.
The Examiner counters that “[r]elocating the bulges to the edges of
the exterior surface of the slide does fall within the range of ‘other
configurations’ since such a modification would still lessen the likelihood of
multiple nested slides sticking together by providing an air gap between
adjacent slides and reducing the tendency toward scratching or marring
when the slides are stacked or nested together.” Ans. 12.
As noted above, Appellant’s Specification does not place any
particular significance on locating the bulges at the edges of the slides.
Accordingly, we agree with the Examiner that the proposed modification to
position the bulges on the edge of the slide is merely an obvious change in
location of components with the predictable result of providing spacing
between the slides to aid in extracting a slide from a magazine of slides. See
In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (affirming obviousness
rejection of dependent claim where limitation added by dependent claim
“solve[d] no stated problem” and “present[ed] no novel or unexpected
result”); In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950) (affirming finding
that “there would be no invention in shifting the starting switch disclosed by
Cannon to a different position since the operation of the device would not
thereby be modified”); In re Gazda, 219 F.2d 449, 452 (CCPA 1955)
(affirming obviousness rejection based on finding that location of ratchet
means for winding a clock at input end instead of output end of winding
connection is an “obvious expedient”).
Claim 16
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Claim 16 depends from claim 15 and recites that “the edge of the first
bend portion is generally linear with the exception of non-linear portions at
each of the bulges.” Appeal Br., Claims Appendix. Appellant notes that this
limitation is “a result of the location of the bulges” at the edge of the first
bend portion. Appeal Br. 12. However, the limitation is also as a result of
the planar surfaces of the bulges maintaining the elevated height and not
converging back to the level or height of the linear edge, as seen in
Appellant’s Figure 3.
It is not apparent what the Examiner’s position is regarding the
obviousness of this claim limitation, unless it is believed that such a
configuration naturally results from moving the bulges to an edge of the first
bend portion. However, the illustration presented at Answer 14, and termed
the “examiners [sic] modified version”, appears to show the repositioned
bulge converging back to the level of the linear edge. As a result, the
Examiner’s position that moving the bulges to the edge of the first bend
portion would have been obvious as a mere change in location not resulting
in a change in function and there being no disclosed significance to the
change, does not adequately address the purported obviousness of the
limitation set forth in claim 16. The rejection will not be sustained.
Claim 17
Independent claim 17 recites, in pertinent part, a magazine of slides
having a first slide nested together with a second slide in an aligned manner,
in which each slide has a pair of bulges projecting from a first bend portion
proximate first and second ends of the slide, and “wherein the bulges of the
first slide do not coincide with the bulges of the second slide.” Appeal Br.,
Claims Appendix.
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Appellant argues that the slides in the Gavronsky magazine of slides
are identical with one another, including that the bulges are positioned
identically relative to one another. Appeal Br. 14. Based upon the
arguments advanced, Appellant appears to regard the “do not coincide”
limitation as being limited to bulges that are, from one slide to the next,
spaced a different extent from the ends of the slides. Id.
The Examiner takes the position that the “offset” identified in the
annotated version of Figure 6A of Gavronsky appearing at Answer 13
evidences that the bulges of a first slide “do not coincide” with the bulges of
a second slide. We accept the Examiner’s position in this regard.
Broadly and reasonably construed, claim 17 does not require that the
bulges on a first slide be spaced at a different extent from the end than do the
bulges from a second slide in order to not “coincide.” This interpretation is
reinforced by comparing claim 17 with claim 18 depending therefrom. The
latter claim further requires that the “bulges of the first slide are spaced
different distances from the respective ends than the bulges of the second
slide relative to their associated ends.” Under the principle of claim
differentiation, it is presumed that this limitation is not present in claim 17.
See Phillips v. AWH Corp., 415 F.3d 1303, 1314-15 (Fed. Cir. 2005)
(“presence of a dependent claim that adds a particular limitation gives rise to
a presumption that the limitation in question is not present in the
independent claim”). The Examiner’s finding that the bulges are offset as
shown in Figure 6A of Gavronsky meets the limitation calling for the bulges
of one slide to not coincide with the bulges for the next slide in the magazine
is supported by a preponderance of the evidence.
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The rejection of claim 17, and of claims 23 and 24 depending
therefrom and grouped therewith, is sustained.
Claim 18
As noted above, claim 18 requires that the bulges of a first slide be
spaced at different distances from the ends of the slide than the distances at
which the bulges on a second slide are spaced from the ends of that slide.
The Examiner’s findings with respect to the offset of the bulges
shown in Figure 6A of Gavronsky as meeting the claim 17 limitation that the
bulges do not “coincide”, are not pertinent to the claim 18 limitations, in that
the offset illustrated in Figure 6A is not as a result of the bulges being
spaced at different distances from the ends of the slides. Indeed, Figure 7 of
Gavronsky illustrates that the bulges on each slide are disposed at
substantially the same distance from the ends of the slide. Gavronsky,
Figure 7; col. 4, ll. 30-32.
The Examiner’s position with respect to claim 18 appears to be that a
modification to Gavronsky such that the bulges on one slide are spaced from
its ends differently from those on a second slide would have been “merely a
change in location and has been suggested or motivated by Gavronsky in
column 4, lines 43ff.” Ans. 8-9. The Examiner also maintains that even
though this feature is not disclosed by Gavronsky, “this does not negate that
the bulges can be at a distance from the longitudinal ends . . . and allowing
for the bulges to be offset from the ends at staggered positions when
alternating the different slides.” Ans. 14.
We cannot accept the Examiner’s reasoning with respect to the claim
18 limitation. The proposed modification is not merely changing the
location of the bulges of the slides in a manner suggested by Gavronsky,
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rather it is a change in the location of the bulges on every other slide in the
Gavronsky magazine. The proposed modification results in two different
slide configurations that are married into a single slide magazine. The
Examiner has not adequately identified what part of Gavronsky would
render obvious the subject matter of claim 18. The particular spacing of
bulges employed in Gavronsky is not only to simply maintain spacing
between slides, but also to prevent sagging of the slides in between the
bulges. Gavronsky, col. 5, ll. 14-20. The Examiner has not addressed how
the proposed modification would predictably retain the desired uniform
spacing. The rejection is not sustained.
Claim 19
Claim 19 depends from claim 18, for which, as noted above, the
rejection is not sustained. The rejection of claim 19, and of claims 20 and 21
depending therefrom, is thus also not sustained.
Claim 22
Claim 22 depends from claim 17 and includes the limitation found in
claim 16 discussed above, to the effect that the edge of the first bend region
is generally linear, with the exception of non-linear portions at each of the
bulges. For the same reasons discussed above with respect to claim 16, the
rejection of claim 22 is not sustained.

CONCLUSIONS
The Examiner did not err in concluding that the subject matter of
claims 1, 4, 6-13, 15, 17, 23 and 24 would have been obvious in view of
Gavronsky.
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The Examiner erred in concluding that the subject matter of claims 16
and 18-22 would have been obvious over Gavronsky.

DECISION
The decision of the Examiner to reject claims 1, 4, 6-13, 15, 17, 23
and 24 is AFFIRMED.
The decision of the Examiner to reject claims 16 and 18-22 is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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