Ex Parte FAIRORTH et al

Patent Trial and Appeal Board

Feb 26, 2016

13008261 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/008,261 01/18/2011
121964 7590 02/26/2016
McNees Wallace & Nurick, LLC/
TAIT Towers Manufacturing, LLC
100 Pine Street
Harrisburg, PA 17101
FIRST NAMED INVENTOR
James FAIRORTH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
23852-0006-C2 8452
EXAMINER
IHEZIE, JOSHUA K
ART UNIT PAPER NUMBER
3633
MAILDATE DELIVERY MODE
02/26/2016 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 JAMES FAIR OR TH, MICHAEL TAIT, and ADAM DA VIS
Appeal2013-007507
Application 13/008,261
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and MICHAEL L. WOODS,
Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Fairorth et al. ("Appellants") seek our review under 35 U.S.C.
§ 134(a) of the Examiner's Final rejection of claims 1--4, 7-9, 13-16, 19, 20,
and 22. Br. 2. Claims 5, 6, 10-12, 17, 18, 21, and 23 have been cancelled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2013-007507
Application 13/008,261
CLAIMED SUBJECT MATTER
Appellants' invention relates to "portable lighted structures[, such as]
stage platforms and structures having lighting integrated therein." Spec. i-f 2.
Claims 1, 13, and 20 are independent and claim 1 is reproduced below, with
emphasis on a certain claim limitation at issue in this appeal.
1. A light-emitting stage having a first stage component,
a second stage component, the first stage component
compnsmg:
a first side having a rotatable latch member;
a second side having a receiving member, the receiving
member having a post; and;
wherein the first stage component is configured to
engage the second stage component;
wherein the first stage component and the second stage
component each include video producing elements; and
wherein the rotatable latch member is part of a
connector that applies a drawing force between the first stage
component and the second stage component when clamping
and drawing together the first stage component and the second
stage component.
Appeal Br. 13 (Claims App.) (emphasis added).
THE REJECTIONS
I. Claims 1--4, 7-9, 20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mensching (US 5,323,564, issued June 28,
1994), Hamilton (US 4,303,969, issued Dec. 1, 1981), and Wheeler (US
3,194,595, issued July 13, 1965). 1 Ans. 2.
1 First, despite listing claim 23 in the rejection, we note that claim 23 is
cancelled. Compare Ans. 2, with Br. 2. Second, in the Answer, the
Examiner modified the rejection from the Final Office Action. Compare,
e.g., Final Act. 2 (rejecting claims 1--4, 7-9, 13-16, 19, 20, and 22 as
unpatentable over Mensching, Hamilton, and Wheeler), with Ans. 2
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Application 13/008,261
IL Claims 13-16 and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mensching and Wheeler. 2 Ans. 5.
ANALYSIS
Rejection I: Claims 1--4, 7-9, 20, and 22
Appellants contest the rejection of claims 1--4, 7-9, 20, and 22
collectively. Br. 7 ("Claims 1-4, 7-9, 13-16, 19-20 and 22 stand or fall
together"). In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim
1 as the representative claim to decide the appeal of the rejection of these
claims, with claims 2--4, 7-9, 20, and 22 standing or falling with claim 1.
In rejecting claim 1, the Examiner finds that Mensching discloses a
stage comprising, inter alia, first stage component 146 and second stage
component 146a '. Ans. 2 (emphasis added) (citing Mensching, Figs. 3, 7).
The Examiner further finds that Mensching' s first stage component 14 6
comprises first rotatable latch member 180 and a second side with receiving
member having post 182, wherein the first and second stage components are
configured to engage with one another. Id. (emphasis added) (citing
Mensching, Figs. 6B, 9).
(rejecting claims 1--4, 7-9, 20, and 22). By not petitioning to the Director
within two months from the date of the Answer, however, Appellants
waived any arguments that the rejection in the Answer should be designated
as a NEW GROUND OF REJECTION. See 37 C.F.R. § 41.40(a) ("Failure
of appellant to timely file such a petition will constitute a waiver of any
arguments that a rejection must be designated as a new ground of
rejection").
2 Rejection II is not present in the Final Office Action. See Final Act. 2-5;
see also n. 1 (Appellants waive any arguments that the rejection should be
designated as a new ground of rejection) (citing 37 C.F.R. § 41.40(a)).
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Application 13/008,261
Figure 7 depicts Mensching's side 146 with latch hook 180, which is
rotated (as shown with arrows) to engage latch post 182 on opposed side
l 46a' to interlock adjacent deck segments. Mensching: col. 3, 11. 32--49;
col. 5, 11. 20-24; col. 7, 11. 6-12.
The Examiner acknowledges that Mensching "does not disclose a
connector that applies a constant force," and instead relies on Wheeler for
disclosing a rotatable latch member connector that connects to U-shaped
loop member 26 for clamping and drawing two components 12, 14 together. 3
Ans. 3 (citing Wheeler, Figs. 3, 10, col. 2, 11. 60-61).
3 The Examiner also relied on Hamilton for disclosing the claimed "light-
emitting" component of claim 1, but this finding and the related reasoning
for combining Hamilton with the other cited art is not argued by Appellants.
Ans. 3 (citing Hamilton, Fig. 1, col. 3, 11. 31-32); see Br. 4--12.
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Application 13/008,261
Figure 3 of Wheeler is reproduced, below:
(
J
I
Figure 3 depicts Wheeler's crowing latch, which latches part 12 to
frame 14 through the engagement of hook 2 4 in eye 2 6 to hold the latched
parts in their locked position. See Wheeler, col. 3, 1. 19---col. 4, 1. 43.
Based on these findings, the Examiner concludes that
[i]t would have been obvious to one having ordinary skill
to modify the rotatable latch connector of Mensching et al. with
the constant force applying connector of Wheeler et al. to
provide a strong connection between the two stage components
and also provide ease of assembly.
Ans. 3 (emphases added).
In contesting the rejection, Appellants present five arguments, which
we address separately below.
First, Appellants argue that the Examiner erred in relying on official
notice and erred in identifying disclosure within Appellants' Specification as
admitted prior art. Br. 8.
In the Answer, the Examiner modified the rejection to remove the
reliance on official notice and remove reference to Appellants' Specification
as admitted prior art. Compare Final Act. 3, with Ans. 2-3. Accordingly,
Appellants' first argument is not persuasive, as it is not responsive to the
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Application 13/008,261
revised rejection and does not identify error in the rejection presented in the
Answer.
Second, Appellants argue that the Examiner has failed "to provide
rational[e] or motivation for modifying Mensching's rotatable latch
connector with Wheeler's safety device for a cowling latch." Br. 8.
Appellants further assert that the "Examiner has failed to provide adequate
support demonstrating that one skilled in the art would look to the Wheeler
safety device to improve the Mensching connection to make it allegedly
faster and sturdier." Id. at 9 (emphasis added).
In response to Appellants' second argument, the Examiner explains
that "any motivation to modify the latch of Mensching[] with the draw latch
of Wheeler would be an added benefit to get expected results." Ans. 7.
The Examiner has failed to provide the necessary "articulated
reasoning with some rational underpinning" needed to support the legal
conclusion of obviousness. KSR Int. 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness is the clear articulation of the reason(s) why
the claimed invention would have been obvious. See id. The Supreme
Court noted that the analysis supporting a rejection should be made explicit.
Id. Further, the Federal Circuit has stated that "rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988
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Application 13/008,261
(Fed. Cir. 2006) (citation omitted), cited with approval inKSR, 550 U.S. at
418.
In the present case, although the Examiner is correct in that the
combination would produce predictable results, the Examiner's reasoning
that the proposed modification would "provide a strong connection" and
"provide ease of assembly" is inadequate-without more explanation-to
meet the initial burden. Ans. 6. Although Wheeler's clamping latch would
bring Mensching's interlocking deck segments closer together, through the
application of a constant drawing (or clamping) force, we do not see how it
would necessarily be stronger or necessarily result in an easier assembly.
Nevertheless, we determine that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to use
Wheeler's latch to apply a "drawing force" to connect Mensching's two
stage components, because doing so constitutes nothing more than applying
a known technique (i.e., Wheeler's "draw latch") to a known device (i.e.,
Mensching's interlocking deck segments), which was ready for
improvement, to yield predictable results. MPEP § 2143(I)(D). As further
explained by the Court, "if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR, 550 U.S. at
417. When considering obviousness of a combination of known elements,
the operative question is thus "whether the improvement is more than the
predictable use of prior-art elements according to their established
functions." Id.
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Application 13/008,261
Wheeler discloses that its device "ensures certain operation of
concealed latches[,] .... is extremely simple in its construction and
operation[, and] may readily be applied to already existing latches."
Wheeler col. 1, 11. 53-56 (emphases added). Here, we determine that a
person of ordinary skill in the art would understand the replacing
Mensching's latch hook 180 with Wheeler's simple and easy-to-use latch
would predictably result in a closer-fitting connection between the deck
segments, thereby reducing any unwanted gaps and possible misalignment
between the deck segments. We note that common sense has long been
recognized to inform the analysis of obviousness if explained with sufficient
reasoning. In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).
Third, Appellants argue that "Wheeler is directed to a safety latch for
an aircraft exterior .... [and that there] is no reason that one skilled in the
claimed technology would look to a safety latch for aircraft exteriors." Br.
9.
In response to Appellants' third argument, the Examiner explains that
"Wheeler discloses using a latch to join two components, and both the
applicant and Mensching [] disclose using a latch to join two stage elements,
therefore the invention of Wheeler is pertinent and is considered analogous
art." Ans. 7-8 (citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992) (a prior
art reference must either be in the field of applicant's endeavor or, if not,
then be reasonably pertinent to the particular problem with which the
applicant was concerned, in order to be relied upon as a basis for rejection of
the claimed invention.)).
Appellants' third argument is not persuasive. As explained correctly
by the Examiner, Wheeler is analogous art, as Wheeler's latch pertains to the
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Application 13/008,261
same problem that Appellants are concerned with, namely, latching or
clamping two components. Ans. 7-8.
Fourth, Appellants assert that the proposed modification would render
Mensching's deck inoperable, because "mounting of the Wheeler latch with
the exposed actuator handle protruding through large deck openings." Br.
10.
that
In response to Appellants' fourth argument, the Examiner explains
the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in anyone or all of the
references[, but rather], the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art.
Ans. 8 (citing In re Keller, 642 F.2d 413 (CCPA 1981)).
Appellants' fourth argument is not persuasive. In addition to the
Examiner's explanation, Appellants do not provide any evidence to support
the assertion that the proposed combination would result in an "actuator
handle protruding through large deck openings." Br. 8; see also Estee
Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (attorney
argument cannot take the place of evidence in the record).
Fifth, Appellants assert that the proposed combination "fails to apply
the constant force between a first stage component and a second stage
component as claimed." Br. 10.
We are not persuaded by Appellants' fifth argument. The Examiner's
finding that Wheeler's "draw-latch" provides a "force ... that clamps and
draws" two components together is supported by a preponderance of the
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Application 13/008,261
evidence, and Appellants fail to explain why this finding is in error. Ans. 3;
see also Br. 10.
For the foregoing reasons, we affirm the rejection of claim 1, and of
claims 2--4, 7-9, 20, and 22, which fall with claim 1. Because our analysis
relies upon facts and reasoning that the Examiner did not use, however, we
designate the affirmance of the rejection as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
Rejection II: Claims 13-16 and 19
In contesting Rejection II, Appellants rely on the same unpersuasive
arguments relied on in contesting Rejection I. Br. 7. For the same reasons
we affirm Rejection I, we also affirm the rejection of claims 13-16 and 19
under Rejection II. Because our analysis relies upon facts and reasoning that
the Examiner did not use, however, we designate the affirmance of the
rejection as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
SUMMARY
We affirm the Examiner's decision to reject claims 1--4, 7-9, 20, and
22 under 35 U.S.C. § 103(a) as unpatentable over Mensching, Hamilton, and
Wheeler. However, for the reasons discussed supra, we designate our
affirmance of the rejection of these claims as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
We also affirm the Examiner's decision to reject claims 13-16 and 19
under 35 U.S.C. § 103(a) as unpatentable over Mensching and Wheeler. As
with Rejection I, however, we also designate our affirmance of the rejection
of these claims as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
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Application 13/008,261
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] NEW
GROUND OF REJECTION pursuant to this paragraph shall not be
considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
record ....
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; 37 C.F.R. § 41.50(b)
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