Ex Parte Fortino et al

Board of Patent Appeals and Interferences

Jun 6, 2008

10418693 (B.P.A.I. Jun. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD D. FORTINO and DAVID N. MANIEZ, JR.
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Appeal 2007-1795
Application 10/418,693
Technology Center 3700
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Decided: June 6, 2008
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Before WILLIAM F. PATE, III, Administrative Patent Judge.
FRED E. McKELVEY, Senior Administrative Patent Judge, and
JOSEPH A. FISCHETTI, Administrative Patent Judge.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
I. Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(3) (2007) of our Decision of January 16, 2008. The Decision
affirmed the Examiner’s rejection of claims 1-30, but did so using a different
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ground of rejection, namely, rejecting all claims using Appellants’ admitted
prior art (APA) in view of Hickman and Holdren.
II. Appellants traverse the Board’s Affirmance of the obviousness type
double patenting rejection based on the following points:

a. Appellants allege that the Board has “changed the basis for the
double patenting rejection [by] now relying on the fact that the commonly
own application relied on as a reference has become a patent.” (Request
for Rehearing 2). We disagree with Appellants’ reasoning because the
underlying rejection, namely an obviousness type double patenting rejection,
remains, in substance, the same rejection. The fact that the status of the
referenced application changed to a patent does not effect the basis for the
rejection because the underlying facts with which the Examiner based the
rejection, did not change with the status. The Examiner in the Final
Rejection dated September 10, 2004 had carefully outlined claims 1 and 21
of US 10/418,691 so as to give a literal comparison with those claims in the
case at issue. A review of claims 1 and 21 in the now issued US 6,957,802
reveals no change in what the Examiner outlined in the Final Office Action,
and thus the substance of the rejections remains unchanged.
b. Appellants also argue “[t]he Decision ignores the Examiner's failure
to explain why the claims on appeal would have been obvious.” (Request
for Rehearing 2). However, Appellants’ Appeal Brief did not challenge any
failure by the Examiner to explain the obviousness type double patenting
rejection. Rather, Appellants’ Brief seized on that idea that “a requirement
for a terminal disclaimer at this time forces the patent owner to make a
premature, and necessarily uninformed, decision.” (Appeal Br. 9). Since
Appellants now have the benefit of the scope of the claims of US 6,957,802,
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the argument carries little weight.
III. Appellants Traverse the Board’s New Ground of Rejection (NGR)
a. Appellants assert that because the Appeal Brief argues each of
independent claims 1, 21, 27, 29, and 30 separately, the NGR should also
have addressed these claims in the same way. However, the NGR
modification to APA using Hickman and Holdren provides a combination
covering all the limitations of independent claims 1, 21, 27, 29, and 30, and
thus the NGR is properly grounded as to all limitations.
b. Appellants assert that the NGR fails “to recognize the context in
which the inventive valve closure assembly is used and the inventive method
is practiced.” (Request for Rehearing 3). In support of this assertion,
Appellants first allege that APA merely describes what is shown in Dean,
and therefore is merely cumulative to Dean. Id. We disagree, because
Appellants’ APA distinguishes from Dean stating that the “valve closure
assembly is hoisted onto the dome and mounted there.” (Specification
1:23, 24). Appellants’ Specification, particularly directed to Figures 34 and
35, describes that the dome is comprised of a side wall 162 (Specification
12:7-8) which is laterally offset from the valve handles A1-A4
(Specification 12:4-21). Thus, when the APA assembly is mounted on the
dome, it is laterally offset from the valve. By contrast, in Dean, the valve
closure assembly mounts directly on top of the valve (Dean, col.3, ll. 43-49),
and thus there is no lateral offset between the mount and the valve.
Second, Appellants assert that Hickman “mounts on a faucet and not
on any surrounding structure containing the faucet” (Request for Rehearing
3). We disagree. The spout in Hickman is analogous to the dome wall 612
in APA in that the positioning mechanism 10 and 14 in Hickman mounts to
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the spout and not coincidentally on the valve, and thus spans a distance
offset from the vertical axis of the turning stem 44 of the valve.
c. Appellants argue that the USPTO classification of the Holden
device is indicative of its being nonanalogous art. We disagree. The
classification of a device while being some evidence of “analogy” is far
outweighed by the similarities and differences in structure and function of
the devices found in the prior art. See In re Ellis, 476 F.2d 1370, 1372
(CCPA 1973). The analogous-art test requires that a reference is either in
the field of the applicant's endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the problem based
on the judgment of a person having ordinary skill in the art. Id. (“[I]t is
necessary to consider ‘the reality of the circumstances,’ -in other words,
common sense-in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor.” Id. (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). The general problem
facing the Appellants is the need to accommodate car-to-car dome variations
by providing an adjustable positioning mechanism (Specification 2:7-9).
Likewise, in Holdren, the problem faced is to provide an infinitely adjustable
position mechanism (Holdren, col.1, ll. 50-53) to support the movements of
a user. Thus, Holdren is reasonably pertinent to the problem Appellants
were trying to solve, because it is concerned with the general problem of an
infinitely adjustable positioning mechanism, and is thus analogous art.
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Appellants assert that the Board has substituted a common sense test
for that provided by the Graham v. Deere inquiry. We disagree. The NGR
is careful to set forth and use the Graham factors in fashioning the NGR in
that it points out the differences between the prior art and what is claimed,
the level of skill in that art, and what one learns from the prior art (Decision,
5-6). KSR merely suggests that the application of common sense is relevant
in determining whether to combine based on the information collected in the
Graham inquiry, and we make such a determination using common sense as
a point of relevance.
e. Appellants next make three specific challenges to the combination
of APA in view of Hickman and Holdren alleging, inter alia, that “the
Decision contains incorrect descriptions of the subject matter…” (Request
for Rehearing 5-6). Appellants maintain that: 1. Holdren's device is not a
positioning mechanism. However, the Holdren device restrains the arm of a
person to allow it to more accurately position the limb via the linkages in the
mechanism, and thus qualifies as a positioning mechanism. Appellants next
argue that: 2. Hickman clamps not to a base distal to the valve, but rather to
the faucet itself at the spout. However, as discussed supra, the mounting
member 10 in Hickman is located along the spout which is radially
outwardly located from the valve, and thus is analogous to the wall mount of
the dome because the base of the part 10 in Hickman is spaced laterally apart
from the valve. Appellants also assert that: 3. the power actuator is not fitted
to the handle of the valve, but rather an adapter is used as an intermediary.
However, Hickman uses clamping screws 30 effectively as an adapter
because the screws are adjustable to accommodate differing diameter
handles.
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e. Finally, Appellants argue that because Holdren is nonanalogous art,
the decision erroneously applies a common sense test under KSR because
this test “is to be applied using patents from the same field of endeavor, or if
not within that field, reasonably pertinent to the problem being addressed.”
(Request for Rehearing 6-7). However, as established supra, the general
problem addressed by Holdren is one of adjustability and positioning, and is
resolved by an adjustable positioning mechanism having an articulated
working end, like that of Appellants.

CONCLUSIONS OF LAW
We conclude:
Our decision to affirm the decision of the Examiner to reject the
claims on appeal under 35 U.S.C. § 103(a) over prior art has not been shown
to have been erroneous.
On the record before us, the Appellants are not entitled to a patent
claiming rejected claims 1-30 on appeal.
This decision on rehearing is a FINAL agency action.
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) (2007).
REHEARING DENIED

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