Ex Parte Ellis et al

Patent Trial and Appeal Board

Jun 1, 2017

13329955 (P.T.A.B. Jun. 1, 2017)

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.
SMG-012 5379
EXAMINER
MILLNER, MONICA E
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
13/329,955 12/19/2011
52554 7590
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
06/01/2017
Brian Keith ELLIS
06/01/2017 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 BRIAN KEITH ELLIS and
ROGER BLAINE TRIVETTE
Appeal 2016-001722
Application 13/329,9551
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision rejecting claims 1—10, which constitute all of the
pending claims in the application on appeal. Br. 2. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Southern
Manufacturing Group, LLC. See Br. 1.
Appeal 2016-001722
Application 13/329,955
STATEMENT OF THE CASE
According to Appellants, the application relates to a mounting device
to position a tool in a specific location and angular orientation. See Spec. I.2
CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claims 1 is representative and is
reproduced below with disputed limitations italicized:
1. An adjustable mount comprising:
a fixed mounting plate including a protruding, generally
hemispherically shaped bulb in a central portion thereof;
an adjustable mounting plate including a generally
hemispherically shaped socket in a central portion thereof,
wherein said socket is adapted to receive and come into contact
with said bulb of said fixed mounting plate so that said adjustable
mounting plate spins freely with respect to said fixed mounting
plate;
means for mounting saidfixed mounting plate to a surface;
means for securing said adjustable mounting plate to said
fixed mounting plate
means for attaching an object to said adjustable mounting
plate; and
at least one fine adjustment screw extending between said
fixed mounting plate and said adjustable mounting plate for
adjusting an angle between said fixed mounting plate and said
adjustable mounting plate.
Br. 12.
2 Throughout this Decision, we refer to the following documents: (1)
Appellants’ Specification filed December 19, 2011 (“Spec.”); (2) the non-
Final Office Action (“Non-Final Act.”) mailed November 12, 2014; (3) the
Appeal Brief (“Br.”) filed April 8, 2015; and (4) the Examiner’s Answer
(“Ans.”) mailed September 22, 2015.
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Application 13/329,955
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Ebner et al. (“Ebner”) US 4,068,961 Jan. 17, 1978
Granzow et al. US 4,645,153 Feb. 24, 1987
(“Granzow”)
Nomura US 5,404,182 Apr. 4, 1995
REJECTIONS3
(1) Claims 1—10 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Non-Final Act. 2-4.
(2) Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Granzow and Ebner. Non-Final
Act. 4—6.
(3) Claims 6—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Granzow, Ebner, and Nomura. Non-
Final Act. 7—9.
Our review in this Appeal is limited only to the above rejections and
issues raised by Appellants. We have not considered other possible issues
that have not been raised by Appellants and which are, therefore, not before
us. See 37 C.F.R. § 41.37(c)(l)(iv).
ISSUES
(1) Does the Examiner err in rejecting claim 1 under 35 U.S.C.
§112, second paragraph, as indefinite?
3 The Non-Final Action rejected claims 1—10 under 35 U.S.C. § 112, 2nd
paragraph, for indefmiteness of the term “a fixed mounting plate.” See Non-
Final Act. 2—3. The Examiner has withdrawn this rejection. See Ans. 2.
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Application 13/329,955
(2) Does the Examiner err in finding the combination of Granzow
and Ebner teaches or suggests “a fixed mounting plate including a . . .
means for mounting said fixed mounting plate to a surface,” as recited in
claim 1?
(3) Does the Examiner err in finding the combination of Granzow
and Ebner teaches or suggests an “adjustable mounting plate [that] spins
freely with respect to said fixed mounting plate,” as recited in claim 1 ?
CONTENTIONS AND ANALYSIS
Issue 1
The Examiner rejects claim 1 as indefinite because “looking at
Figures 2 and 4, there appears to be, what would be considered, friction
between the two plates” and “with these frictions in place, it would appear
that the two plates do not necessarily ‘spin freely’ with respect to one
another.” Non-Final Act. 3.
Appellants argue claim 1 is not indefinite because one “skilled in the
art would clearly understand that the term ‘spins freely’ does not refer to
the levels of friction between the plates, instead it refers to the functional
ability of the adjustable mounting plate to rotate in relation to the fixed
mounting plate without mechanical and functional interference.” Br. 6.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (approving, for
pre-issuance claims, the standard from MPEP § 2173.05(e)). A “satisfactory
response” to an indefmiteness rejection “can take the form of a modification
of the language identified as unclear, a separate definition of the unclear
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Application 13/329,955
language, or, in an appropriate case, a persuasive explanation for the record
of why the language at issue is not actually unclear.” Id. at 1311.
Here, Appellants have satisfactorily explained why the language at
issue is not unclear. Absent the Examiner providing evidence from
Appellants’ Specification demonstrating some structure that inhibits spin of
the adjustable mounting plate, we agree one skilled in the art would have
understood the adjustable mounting plate is capable of spinning freely with
respect to the fixed mounting plate. We, therefore, reverse the Examiner’s
35 U.S.C. § 112, second paragraph, rejection of claim 1, and claims 2—10 for
similar reasons.
Issue 2
With respect to the rejection of claim 1 under 35 U.S.C. § 103(a), we
disagree with Appellants’ contentions, and we adopt as our own (1) the
findings and reasons set forth by the Examiner in the Non-Final Office
Action from which this appeal is taken (Non-Final Act. 2—5) and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 3—10). We highlight the following points for
emphasis.
The Examiner finds Granzow’s tilting ball assembly 16 teaches “a
fixed mounting plate including a . . . means for mounting said fixed
mounting plate to a surface,” as recited in claim 1. Ans. 4.
Appellants argue claim 1 is patentable over Granzow and Ebner
because the “Examiner asserts that Granzow discloses a fixed mounting
plate (either 12/14 or 16) when, in fact, it does not. . . . Contrary to the
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Examiner’s assertion, none of these three elements is a fixed mounting
plate.” Br. 8.
We find this argument unpersuasive because Appellants have not
persuasively addressed the Examiner’s finding that tilting ball assembly 16
of Granzow teaches “a fixed mounting plate,” as recited in claim 1. Ans. 4.
For example, Appellants’ merely argue none of the cited three elements is a
fixed mounting plate and “it is unclear how three different elements (a base,
a socket, and a tilting ball) may all represent the same single element (a
fixed mounting plate), or moreover two different elements (a fixed mounting
plate and an adjustable mounting plate) interchangeably.” Br. 8.
Appellants, however, fail to explain why the Examiner’s finding that
Granzow’s tilting ball assembly 16 teaches the claimed fixed mounting plate
is erroneous. Such argument is afforded little weight in the absence of
persuasive evidence in support of the conclusion. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
Appellants argue Granzow does not teach “means for mounting said
fixed mounting plate to a surface” because “Granzow describes ‘feet 27 of
rubber [or] other suitable material to hold the base 12 against shifting when
placed on a table or desk.’” Appellants further argue “the Granzow
reference, in fact, teaches away from securing the base to a surface” by
providing rubber feet as a means for placing the base on a surface because
“[i]n a situation where a base is to be mounted, rubber feet would be wholly
unnecessary.” Br. 8 (citing Granzow 1:13—15).
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Appellants’ arguments fail to address the rejection because the
Examiner finds that Granzow’s tilting ball assembly 16 teaches the claimed
fixed mounting plate. See Ans. 4; see also Non-Final Act. 4. Accordingly,
the arguments are unpersuasive.
Issue 3
The Examiner finds Granzow teaches an “adjustable mounting plate
[that] spins freely with respect to said fixed mounting plate,” as recited in
claim 1. Ans. 4. Specifically, the Examiner relies on socket 14 of Granzow,
which is fixed to tilting ball assembly 16 and is rotatable with base 12 (Non-
Final Act. 5 citing Figs. 1, 12, 14, 16) as illustrated below in Figure 1 of
Granzow.
Figure 1 of Granzow illustrates an apparatus that allows rotation, tilt,
and swivel of a monitor or display device.
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Application 13/329,955
Appellants argue claim 1 is patentable over the cited combination
because neither reference teaches an adjustable mounting plate that spins
freely. Specifically, Appellants argue “[t]he Granzow apparatus is designed
to support a display device, whereby the cords and cables of the display
device may be inserted into the base (12) and extend upwardly, internally
through the support structure (10).” Therefore, “[i]n order to function
properly, the Granzow apparatus must only move in a limited manner to
prevent damage to the display cables; whereas Applicant’s claimed
invention rotates freely” and without limitation. Br. 9. Appellants further
argue Granzow limits the relative movement of socket 14 and base 12 to 180
degrees to prevents damage to the cables. Id. (citing Granzow 3:26—30).
We are not persuaded because, as the Examiner notes, Appellants
argument is not commensurate with the scope of the claim. That is,
Appellants urge an interpretation of “spins freely” that requires a minimum
of 360 degrees of rotation between the mounting plates. Claim terms, during
prosecution before the PTO, are to be given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Any special definition for a
claim term must be set forth in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
Here, Appellants fail to proffer a definition from the Specification that
supports this interpretation of the term. As the Examiner states, “Appellant
wants us to infer that spins freely means 360 degrees, but there is no support
in the original specification as filed to support this assertion. In fact, the
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Application 13/329,955
specification is silent as to how much the plates spin or how to determine
what is considered free spin.” Ans. 8—9.
Accordingly, in view of the Examiner’s interpretation of the claim
term “spin freely,” we agree with the Examiner’s finding that Granzow
teaches an “adjustable mounting plate [that] spins freely with respect to said
fixed mounting plate,” as recited in claim 1.
Next, Appellants argue that because Granzow limits the relative
movement of socket 14 and base 12 to 180 degrees to prevents damage to
the cables (Granzow 3:26—30), “[t]he limited rotation and movement, as
necessitated by Granzow, clearly teaches away from the free and unlimited
rotation of Applicant’s claimed invention.” Br. 9.
This argument is unpersuasive because Appellants do not proffer
sufficient evidence or argument that Granzow criticizes, discredits, or
otherwise discourages the claimed solution. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). This is particularly so in view of the Examiner’s
interpretation of “spin freely” discussed above, which, contrary to
Appellants’ argument, supports the Examiner’s finding that Granzow
teaches an “adjustable mounting plate [that] spins freely with respect to said
fixed mounting plate,” rather than teaching away.
Appellants argue “the Ebner reference cited by the Examiner also
teaches a device that relates to limited movement” and thus Ebner also fails
to teach an adjustable plate that spins freely. Br. 9.
We find this argument unpersuasive because the Examiner relies on
Granzow rather than Ebner to teach an “adjustable mounting plate [that]
spins freely with respect to said fixed mounting plate,” as claimed.
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Appellants further argue Ebner “teaches away from Applicant’s
invention.” Br. 10. This argument is unpersuasive because Appellants do
not proffer sufficient evidence or argument that Ebner criticizes, discredits,
or otherwise discourages the claimed solution. Fulton, 391 at 1201.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 1. The rejections of independent claim 6, and dependent claims 2—5
and 7—10, which are not argued separately, are sustained for similar reasons
See Br. 7.
DECISION
We reverse the Examiner’s decision rejecting claims 1—10 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 1—10 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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