Ex Parte Friedman

Patent Trial and Appeal Board

Jul 29, 2013

11591902 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRIAN HUNTER FRIEDMAN
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Appeal 2011-005667
Application 11/591,902
Technology Center 3700
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Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/591,902
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejections of claims
9, 10, and 12-17. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED INVENTION
The claims are related to interior structures for embedding in fan
blade connector components. Spec. 1. Claim 9, reproduced below, is
representative of the claimed subject matter:
9. A cast fan blade connector component for attaching a fan
blade to a fan motor, comprising:
a plastic resin ornamental body; and
a skeleton having a plurality of elongated links and a
plurality of posts interconnected to each other through said
links, said posts having a threaded bore therein, said skeleton
being separate and distinct from said ornamental body and at
least partially embedded within said ornamental body with said
threaded bores exposed from said ornamental body.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chiang
Scofield
Bucher1
US 5,458,463
US 5,462,412
US 6,213,716 B1
Oct. 17, 1995
Oct. 31, 1995
Apr. 10, 2001

1 This reference was not listed as evidence relied on, but is clearly relied on
for a rejection of claim 10. Ans. 6.
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REJECTIONS
The Examiner made the following rejections:
Claims 9, 12, and 13 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Chiang.
Claims 14-17 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Scofield.
Claims 9, 12, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chiang.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Chiang and Bucher.
Claims 14-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Scofield and Chiang.

ANALYSIS
Anticipation by Chiang
Addressing claim 9, the Examiner finds that Chiang discloses all of
the limitations of claim 9 including a “skeleton [that] is separate and distinct
from the ornamental body at least partially embedded within the ornamental
body with the threaded bores exposed from the ornamental body.” Ans. 4.
Specifically, the Examiner finds that the skeleton has a “plurality of
elongated links (31) and a plurality of posts (32) interconnected to each
other through the links and having an internal threaded bore therein.” Id.
Appellant argues that “the structure recited by the examiner as the skeleton
is certainly not ‘embedded within the ornamental body’” (App. Br. 4) and
“[t]hese ribs are of the same structure as the body and are therefore not
separate and distinct.” Id. at 5. We agree with Appellant. The ribs 31 are
not a distinct element, but rather are part of the body 30, and thus are not
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embedded in the body. Thus, the Examiner has erred by finding that
integrally formed ribs are a skeleton embedded in the body. As such, we do
not sustain the rejection of independent claim 9 and dependent claims 12 and
13 which depend therefrom.

Anticipation by Scofield
Addressing claim 14, the Examiner determines that
An ornamental housing is formed about the
skeleton so as to be separate and distinct from the
skeleton, and to encase the link and the posts,
while allowing the bore of each post to remain
exposed from the housing. Therefore, although the
method of manufacture is not specifically
disclosed by Scofield et al., it is inherent that this
method has been performed at some point in the
past in order to arrive at the complete apparatus.
Ans. 4. Appellant argues the ridges 31
are formed at the time the entire body is molded
and are simply an extension of the exterior surface.
These ridges are not a "separate" and "distinct"
structure. Furthermore, these ridges again do not
extend into the body and are therefore again not
encased" in the body, as specifically recited in
claim 14.
App. Br. 10. We agree with Appellant. Since the ribs are integrally formed
in the ornamental housing or structure 62, the Examiner’s finding that they
are “encased” in the housing is not supported by Scofield. As such, the
Examiner has erred by finding that the ornamental housing is made by
“forming an ornamental housing about the skeleton so as to be separate and
distinct from the skeleton and to encase the link” as required by claim 14.
See Claims App’x. Thus, we do not sustain the rejection of independent
claim 14 or dependent claims 15-17 as anticipated by Scofield.
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Obviousness over Chiang
Addressing claim 9, the Examiner finds that Chiang teaches all of the
elements of claim 9 but does not disclose “that the skeleton is separate and
distinct from the body. Chiang does however teach that a separately made
metal reinforcing member (40) can be embedded into the ornamental body
of a fan medallion [column 2, lines 45-47].” Ans. 6. The Examiner
concludes that
It would have been obvious to a person having
ordinary skill in the art at the time the invention
was made to modify the fan blade connector of
Chiang by forming the skeleton separately and
then embedding it into the ornamental body, as
taught for the reinforcing member (40), because
the process was known in the same reference and
could have been implemented by one of ordinary
skill with predictable results.
Id. Appellant argues that claim 9 requires that “[t]he skeleton is separate
and distinct from said ornamental body and at least partially embedded
within the ornamental body with the threaded bores exposed from the
ornamental body” (App. Br. 6); and “the structure [in Chiang] recited by the
examiner as the skeleton is certainly not ‘embedded within the ornamental
body.’” Id. Each of these arguments fails to address the rejection made by
the Examiner. The Examiner proposes to modify Chiang by forming the
skeleton separately and embedding it in the ornamental body (30) as taught
by the reinforcing member 40. As no arguments are advanced against the
Examiner’s modification, Appellant’s arguments are not persuasive.
Appellant challenges the Examiner’s rationale to modify Chiang by
arguing “the references do not suggest any motivation for, or the desirability
of, Applicant's unique construction of a separate and distinct skeleton
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embedded within an ornamental body. As such, it is improper to utilize this
reference to establish obviousness.” App. Br. 8. Appellant’s argument
appears to be holding the Examiner to a teaching, suggestion, or motivation
(TSM) standard; such a standard is not required. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting [TSM]”). The
proper inquiry is whether the Examiner has articulated adequate reasoning
based on a rational underpinning to explain why a person of ordinary skill in
the art would have been led to modify Chiang. In this case, the Examiner
has reasoned that “because the process was known in the same reference and
could have been implemented by one of ordinary skill with predictable
results.” Ans. 6. Appellant characterizes the modification as a
“combination that would either destroy the clear intention of the reference or
modify such in a manner that goes against the clear teachings of the
reference. Furthermore, it is submitted that it is only through such hindsight
that the Applicant's invention can be gleamed [sic] from the cited
references.” App. Br. 9. However, Appellant has not identified any error in
the Examiner’s reasoning to form the skeleton components in the manner
similar to the way that the reinforcing member 40 is formed would not lead
to predictable results. As such, we sustain the rejection of independent
claim 9, and dependent claims 12 and 13 as unpatentable over Chiang.

Obviousness over Chiang and Bucher
Addressing claim 10, the Examiner finds
Chiang discloses all elements substantially as
claimed, but fails to disclose that the skeleton is
made of a cast metal, instead having a metal
reinforcing member (40) embedded in the interior
of the resin ornamental body (30) [column 2, lines
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41-46] that does not include the links and posts.
Bucher et al. teach a fan blade connector
component which has posts and links connected to
an interior member (161) analogous to the
reinforcing member (40) of Chiang.
Ans. 6. The Examiner then concludes “[i]t would have been obvious to a
person having ordinary skill in the art to make the skeleton links as part of
the metal interior reinforcing member, as taught by Bucher et al. in order to
further strengthen the entire fan connector component.” Ans. 6-7.
Appellant does not contest this rejection. As such, we sustain the rejection
of claim 10 as unpatentable over Chiang and Bucher.

Obviousness over Scofield and Chiang
Addressing claim 14, the Examiner finds “Scofield et al. do not
disclose that the skeleton is separate and distinct from the body. Chiang
teaches that a separately made metal reinforcing member (40) can be
embedded into the ornamental body of a fan medallion (30) [column 2, lines
45-47].” Ans. 7. The Examiner then concludes
It would have been obvious to a person having
ordinary skill in the art at the time the invention
was made to modify the method of Scofield by
forming the skeleton separately and then
embedding it into the ornamental body, as taught
by Chiang, because the process was known in the
art and could have been implemented by one of
ordinary skill with predictable results.
Id. Appellant argues that Scofield “the structure recited by the examiner as
the skeleton is certainly not ‘separate and distinct’ nor is it a housing
‘formed about’ the skeleton” (App. Br. 11); and “does not include the
separate and distinct skeleton nor the embedded skeleton specifically
claimed by Applicant, it is respectfully submitted that the Scofield patent
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does not anticipate claim 14.” App. Br. 13. However, these arguments do
not address the rejection made by the Examiner. In particular, the Examiner
finds that Chiang teaches “forming the skeleton separately and then
embedding it into the ornamental body.” Ans. 7. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, Appellant’s
arguments are not persuasive.
Appellant then argues “[i]n the Chiang patent the metal plate is
merely held along its peripheral edge within the recess. This plate is not
‘embedded’ or ‘encased’ in the true sense of the word, but merely mounted
to the body.” App. Br. 13. This directly contradicts the teaching of Chiang
which describes “a reinforcing metal member 40 embedded in the plastic-
molded body 30.” See Chiang, col. 2, ll. 46-47. Thus, we are not persuaded
that the reinforcing member 40 is not embedded in the body 30.
Finally, Appellant argues “the combination of Scofield et al. and
Chiang would only result in a metal body with a metal plate mounted to it,
not a plastic body with a metal skeleton embedded within the plastic body,
as defined by claim 14.” App. Br. 13. First, claim 14 does not require a
plastic body. Furthermore, this argument fails to address the Examiner’s
combination which has a “skeleton separately and then embedding it into the
ornamental body.” Thus, we are not persuaded by Appellant’s argument.
Appellant challenges the Examiner’s rationale to combine Scofield
and Chiang by arguing that there is no “teaching, suggestion or incentive
supporting the combination.” App. Br. 13. Once again, Appellant’s
argument appears to be holding the Examiner to a teaching, suggestion, or
motivation (TSM) standard. The proper inquiry is whether the Examiner has
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articulated adequate reasoning based on a rational underpinning to explain
why a person of ordinary skill in the art would have been led to combine
Scofield and Chiang. The Appellant does not challenge the Examiner’s
rational to combine the references. For the above reasons, we sustain the
rejection of independent claim 14 and dependent claims 15-17 as
unpatentable over Scofield and Chiang.

DECISION
For the above reasons, the Examiner’s rejections of claims 9, 10, and
12-17 are 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)(1)(iv).

AFFIRMED

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