Ex Parte Fulks

Board of Patent Appeals and Interferences

Feb 22, 2010

10710349 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LORI AMTHOR FULKS
____________

Appeal 2009-006292
Application 10/710,349
Technology Center 3600
____________

Decided: February 23, 2010
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006292
Application 10/710,349

2
STATEMENT OF THE CASE
Lori Amthor Fulks (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-6, 8-10, and 14-18.1 We
have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a collapsible chair with back wheels
that can be pulled by a handle in either a collapsed or an open position.
Spec. 2, para. [0004] and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A collapsible chair having

(A) two front legs without wheels attached;

(B) two back legs;

(C) a flexible seat;

(D) a flexible back;

(E) an arm rest on each side of said seat;

(F) at least one wheel attached behind the bottom of each back
leg so that said wheels do not bear the weight of said chair
except when said chair is tipped;

1 Claims 7 and 11-13 have been objected to by the Examiner as being
dependent upon a rejected base claim and otherwise indicated as being
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim. Claims 19 and 20 have been
allowed by the Examiner.
Appeal 2009-006292
Application 10/710,349

3
(H) flexible material between said seat and each arm rest and
between said seat and said back, that prevents items placed
on said seat from falling off said seat when said chair is
tipped and pulled; and

(G) a handle attached to the top of said chair, whereby said
chair can be tipped and pulled by said handle with the
weight of said chair borne by said wheels when said chair is
in an open or collapsed position.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Logan US 4,290,643 Sep. 22, 1981
Kilmer US 6,312,048 B1 Nov. 6, 2001

The following rejections are before us for review:
The Examiner rejected claims 1-6, 9, 10, and 14-18 under 35 U.S.C. §
103(a) as unpatentable over Logan and Kilmer.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Logan, Kilmer, and Examiner’s Official Notice.

THE ISSUES
1. Whether Logan discloses a folding chair including a seat, a back, arm
rests, and a flexible material in between that prevents objects placed
on the seat from falling off when the chair is pulled, as called for by
claim 1.
Appeal 2009-006292
Application 10/710,349

4
2. Whether the combined teachings of Logan and Kilmer would have
prompted a person of ordinary skill in the art to provide the wheels
and handle of Kilmer’s chair to the folding chair of Logan.
3. Whether the combined teachings of Logan and Kilmer render obvious
a “lock for releasably holding said chair in a collapsed or open
position,” as required by claim 5.
4. Whether the combined teachings of Logan, Kilmer, and Examiner’s
Official Notice render obvious a handle that is “extendable towards
and away from said seat,” as required by claim 8.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Appellant argues the rejection under 35 U.S.C. § 103(a) of claims 1-4,
6, 9, 10, and 14-18 together as a group. Br. 5. Therefore, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii)(2009), we have selected claim 1 as the
representative claim to decide the appeal, with claims 2-4, 6, 9, 10, and 14-
18 standing or falling with claim 1.

Issue (1)
Appellant argues that Logan does not disclose a seat, a back, and arm
rests as separate elements in addition to a flexible material in between, as
called for by in claim 1. Br. 6-7. Pointing to Figure 1 of Logan, the
Examiner responds that Logan discloses a seat (element 1), a flexible back
Appeal 2009-006292
Application 10/710,349

5
(element 22), and an armrest on each side (element 23) that are separated by
compression members. Ans. 6.
Although we agree with Appellant that Logan does not disclose a seat,
a back, arm rests, and a flexible material in between as separate elements,
we note that the scope of claim 1 is not so limiting. As stated by our
reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998),
“the name of the game is the claim.” It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case, although claim 1
requires a flexible seat, a flexible back, an arm rest on each side of the seat,
and a flexible material in between, claim 1 does not require that these
elements be separate, as Appellant argues.
It is our finding that Logan discloses a folding (collapsible) chair
including forward leg portions 24, rearward leg portions 25, arm rest
portions 23, back portion 22, and a seat portion in between arm rest portions
23, all connected in between by a continuous seat material 1. See Logan,
col. 2, ll. 8-25 and 35-38 and fig. 1. Moreover, we find that the forward leg
portions 24 function as front legs, the rearward leg portions 25 function as
back legs, the arm rest portions 23 function as arm rests, the back portion 22
functions as a back, and the seat portion (in between arm rest portions 23)
functions as a seat for an occupant. As such, we conclude that Logan
discloses a folding (collapsible) chair including a seat, a back, arm rests, and
a flexible material in between, as called for by claim 1.
Appellant further argues that the purpose of Appellant’s claimed
flexible material is “to prevent objects placed on the seat from falling off
Appeal 2009-006292
Application 10/710,349

6
when the chair is pulled.” Br. 5-6. Specifically, Appellant argues that
because Logan’s chair includes gaps on each side of the chair,
. . . objects placed on the seat, such as sunglasses,
cans, and toys, will simply roll or slide on the seat
towards the gaps at the back of the seat and then
fall off the seat.
Br. 6.
In a first instance, we note that claim 1 is not limited to “sunglasses,
cans, and toys,” as Appellant argues, but rather to the much broader term,
“items.” Appellant’s Specification does not expressly define the term or
otherwise indicate that this term is used in a manner other than its ordinary
and customary meaning. Accordingly, we construe this term in accordance
with its ordinary and customary meaning. The term “item” refers to “each
thing specified separately in a list.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997). Emphasis added. Since the term “items” is
not limiting with respect to a specific object, we agree with the Examiner’s
position that the chair of Logan is capable of preventing items placed on the
seat, such as a sweater, from falling off the seat when the chair is collapsed.
See Ans. 6. Accordingly, we find that the folding chair of Logan is capable
of preventing items (objects, things) placed on the seat from falling off when
the chair is pulled, as called for by claim 1.

Issue (2)
Appellant argues that because “[t]he rear ‘legs’ of Logan are ‘flexible
tension members’ 11 and 12, which are just cords. . . it would be impossible
to attach wheels.” Br. 7. Appellant further argues that “[c]ompression
members 8 and 9 are rigid, but at such odd angles that it would not be easy
Appeal 2009-006292
Application 10/710,349

7
to attach Kilmer’s wheels to them at the appropriate position and
orientation.” Id. Appellant concludes that, “it would not be obvious to add
Kilmer’s wheels to Logan’s chair.” Id.
Although we agree with Appellant that the flexible tension members
11 and 12 are cords and the compression members 8 and 9 are rigid,
nonetheless, "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398,
421 (2007). Appellant has not provided any evidence to show that it would
be impossible to attach the wheels of Kilmer to the collapsible chair of
Logan. An attorney's arguments in a brief cannot take the place of evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Although flexible
tension members 11-16 are cable wire, Logan specifically discloses that each
flexible tension member passes through a suitable fixing in the ends of
compression members 2, 3, and 6-9. Logan, col. 2, ll. 38-47. A person of
ordinary skill and creativity in the art of collapsible chairs would have
known how to attach Kilmer’s wheels to the fixings of Logan’s chair using
known attachments such as brackets and screws.
Appellant further argues that because “Logan’s chair is light-weight
there is no need to add wheels to it as it can be easily carried.” Br. 7.
Similarly, Appellant argues that adding a handle to Logan’s chair would
conflict with Logan’s purpose, namely, “to provide a light-weight chair that
can be easily carried.” Id. Although we agree with Appellant that adding
the wheels and handle of Kilmer to the chair of Logan would somewhat
increase the weight of Logan’s chair, we find that the chair will nonetheless
function as required, that is, it will be easy to carry or transport between
locations. “The fact that the motivating benefit comes at the expense of
Appeal 2009-006292
Application 10/710,349

8
another benefit, … should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). In this case, we agree with the Examiner that Logan discloses all the
features of claim 1 with the exception of a handle and at least one wheel
attached behind the bottom of each back leg. See Ans. 3.
We further agree with the Examiner that Kilmer discloses a handle
attached at the top of a folding chair and at least one wheel attached behind
the bottom of each back leg. See Ans. 3-4. See also, Kilmer, fig. 1a. As
such, Appellant’s claimed collapsible chair is nothing more than Logan’s
folding chair to which the wheels and the handle of Kilmer’s folding chair
have been added. Moreover, the Examiner has articulated a reasoning with
rational underpinning to modify Logan’s chair with the handle and wheels of
Kilmer’s chair, namely, “to make it easier to the user when transporting the
chair from one location to the other.” Ans. 4. As such, modifying the
folding chair of Logan to include the wheels and handle of Kilmer’s chair
would not have been uniquely challenging to a person of ordinary skill in the
art, because it is “the mere application of a known technique to a piece of
prior art ready for the improvement.” KSR, 550 U.S. at 417. The
modification appears to be the product not of innovation but of ordinary skill
and common sense.
Moreover, Appellant has not alleged, much less shown, that the
modification of Logan to provide the handle and wheels of Kilmer’s chair
would have been beyond the skill of a person of ordinary skill in the art.
Hence, we agree with the Examiner that it would have been obvious for a
Appeal 2009-006292
Application 10/710,349

9
person of ordinary skill in the art to provide the wheels and handle of Kilmer
to the folding chair of Logan in order “to make it easier to the user when
transporting the chair from one location to the other.” Ans. 4.
In conclusion, for the foregoing reasons, the rejection of claim 1, and
claims 2-4, 6, 9, 10, and 14-18, standing or falling with claim 1, is sustained.

Issue (3)
Appellant argues that neither Logan nor Kilmer discloses a lock for
releasably holding the chair in a collapsed or open position. Br. 8. In
response, the Examiner takes the position that element 13 of Logan and the
bungee cords 40, 41 of Kilmer constitute locking devices. Ans. 4 and 9. In
turn, Appellant argues that element 13 of Logan is merely a cord that will
not prevent the chair from collapsing and that the purpose of bungee cords
40, 41 of Kilmer is not to hold the chair in a collapsed or open position, but
rather “after the chair is collapsed, ‘to hold down items such as a cooler,
picnic basket, beach balls, sand pails, and another, preferably smaller beach
chair, and so forth.’” Br. 8.
We disagree with Appellant’s position for the following reasons.
First, although the bungee cords 40, 41 of Kilmer are used to hold down
items, nonetheless, the chair is held in a collapsed state. A person of
ordinary skill in the art would have readily recognized that if the bungee
cords 40, 41 of Kilmer were to be removed, the items held by the chair
would force the chair open. As such, the bungee cords 40, 41 of Kilmer
hold the chair in a collapsed state, as required by claim 5, while providing
the additional benefit of holding items for easy transportation.
Appeal 2009-006292
Application 10/710,349

10
Second, although flexible tension member 13 of Logan is a cord,
nonetheless, when the flexible tension members are placed in tension,
Logan’s chair is maintained in an open position and when tension is released
the chair collapses. Specifically, we find that by means of detachable device
17 tension is applied to the elements forming Logan’s chair and also tension
is released so as to fold the chair. Logan, col. 2, ll. 54-60 and fig. 2. As
such, because the detachable device 17 places the flexible tension members
11-16 in tension so as to maintain the chair in an open position, we find that
the detachable device 17 and the flexible tension members 11-16 constitute a
lock that holds the chair in an open or a collapsed position.
In conclusion, for the foregoing reasons, the rejection of claim 5 is
likewise sustained.

Claim 8
With respect to the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Logan, Kilmer, and Examiner’s Official Notice, the
Examiner’s position is that:
Logan and Kilmer lack the teaching of item on
the seat of a collapsible chair and pulling the
chair by the handle, Examiner is taking official
notice that it is common knowledge to one of
ordinary skill in the art to include an item on the
seat of a collapsible chair and pulling the chair by
the handle making it easier on the elderly to haul.
Ans. 5-6.
However, claim 8 requires a “handle [that] is extendable towards and
away from said seat.”
Appeal 2009-006292
Application 10/710,349

11
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). In this case, we find that the Examiner
has not made any factual finding as to the handle called for in claim 8. We
agree with Appellant that although the heading of the rejection relates to
claim 8, the body of the rejection appears to be related to the subject matter
of claim 18. Br. 4.2 Accordingly, we find the Examiner’s legal conclusion
of obviousness is not supported by facts, and thus, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”).
Therefore, we are constrained to reverse the rejection of claim 8 over
the combined teachings of Logan, Kilmer, and Examiner’s Official Notice.

CONCLUSIONS
1. Logan discloses a folding chair including a seat, a back, arm rests, and
a flexible material in between that prevents items placed on the seat
from falling off when the chair is pulled, as called for by claim 1.
2. The combined teachings of Logan and Kilmer would have prompted a
person of ordinary skill in the art to provide the wheels and handle of
Kilmer’s chair to the folding chair of Logan.

2 Like in the Examiner’s Answer, in the Final Rejection mailed May 3,
2006, the Examiner refers to claim 8 in the heading, but then discusses the
subject matter of claim 18 in the body of the rejection. Ans. 5-6 and Final
Rejection 5.
Appeal 2009-006292
Application 10/710,349

12
3. The combined teachings of Logan and Kilmer render obvious a “lock
for releasably holding said chair in a collapsed or open position,” as
required by claim 5.
4. The combined teachings of Logan, Kilmer, and Examiner’s Official
Notice do not render obvious a handle that is “extendable towards and
away from said seat,” as required by claim 8.

DECISION
The Examiner’s decision to reject claims 1-6, 9, 10, and 14-18 under
35 U.S.C. § 103(a) as unpatentable over Logan and Kilmer is affirmed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Logan, Kilmer, and Examiner’s Official Notice 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

RICHARD D. FUERLE
1711 W. RIVER RD.
GRAND ISLAND, NY 14072