Ex Parte Gompper

Patent Trial and Appeal Board

Sep 14, 2016

13760593 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/760,593 02/06/2013 Brion Gompper
27162 7590 09/14/2016
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
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.
139650.190 5457
EXAMINER
REDMAN, JERRY E
ART UNIT PAPER NUMBER
3634
MAILDATE DELIVERY MODE
09/14/2016 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 BRION GOMPPER
Appeal2014-008963
Application 13/7 60,593
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-10, 12-16, and 19. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
Appeal2014-008963
Application 13/760,593
CLAIMED SUBJECT MATTER1
The claims are directed to an adjustable hinge. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An adjustable hinge comprising
a bracket for mounting on a door frame;
a flange pivotally mounted on said bracket for mounting
on a door;
an adjusting plate having a plurality of bores for passage
of mounting elements therethrough into a door; and
means for securing said flange to said adjusting plate in
releasable manner to allow manual adjustment of said flange
relative to said adjusting plate without removal of said flange
from said adjusting plate.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Solomon
Brockhaus
Cornick
us 2.027,888
us 4,528,718
WO 90/15912
REJECTIONS2
Jan. 14, 1936
July 16, 1985
Dec. 27, 1990
Claims 1, 3, 4, 8-10, 12, 13, 15, 16, and 19 are rejected under 35
U.S.C. § 103(a) as unpatentable over Cornick and Solomon.
1 Each of independent claims 1 and 10 recite "means for securing said flange
to said adjusting plate in releasable manner .... " The Examiner did not set
forth any formal analysis under 35 U.S.C. § 112, sixth paragraph, and
Appellant does not take issue with the Examiner's interpretation of the
claimed means plus function language with regard to the Cornick and
Solomon references.
2 The Final Action indicates that "Claims 2, 11, and 17-18 would be
allowable if rewritten or amended to overcome the rejection(s) under 35
U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this
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Application 13/760,593
Claims 5-7 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cornick, Solomon, and Brockhaus.
OPINION
Obviousness in view of Cornick and Solomon
The Examiner finds that Cornick discloses much of the structure
recited in claim 1 except for an adjustable plate. Final Act. 3. The
Examiner further finds that Solomon "discloses an adjustable hinge
comprising an adjustable plate (10) having oblong holes for the insertion of
screws" (id.) and concludes that it would have been obvious to one of
ordinary skill in the art "to provide the hinge assembly (10) of [Cornick]
with an adjustable plate as taught by [Solomon] since an adjustable plate
allows the hinge assembly to adjust the pivotal movement between the door
and the door frame" (id.). The Examiner additionally determines that one of
ordinary skill in the art at the time of the invention "would look to Solomon
to solve a basic problem of providing Cornick with an adjustable hinge as
taught by Solomon since variances between doors and door-frames are well
known and the fit is often far from exact; an adjustable hinge allows a minor
adjustment between any door and door-frame." Ans. 4.
Office action." Final Act. 5. However, there is no 35 U.S.C. § 112, second
paragraph, rejection set forth in the Final Action or in the Non-Final Action
dated July 3, 2013. As the Examiner has not set forth any rejections under
35 U.S.C. § 112, second paragraph, on the record and as Appellant has not
sought review of any rejections under 35 U.S.C. § 112, second paragraph,
the status of these claims is unclear on the record before us. In addition,
claim 12 depends from claim 11. Therefore, its status is likewise unclear.
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Application 13/760,593
Appellant argues that "the Examiner presents no evidence of any
teaching, suggestion or incentive in Solomon to make the proposed
modification of Cornick." Br. 5 (emphases omitted); see also id. at 6.
Appellant also asserts that the Examiner has resorted to impermissible
hindsight in making the proposed combination (id. at 6) and that
"[ m ]odifying the non-adjustable hinge of Cornick with an adjustable plate as
proposed by the Examiner would change the principle of operation of
Cornick" (id. at 7 (emphases omitted)). Finally, Appellant argues that
providing the hinge assembly of Cornick with an adjustable plate as taught
by Solomon would require considerable reconstruction of the Cornick
device. Id. at 7-8. In particular, Appellant alleges such reconstruction
would require, inter alia, provision of "a pocket 2 [as in Solomon] on the
door [not on the door frame] in order to receive the flange member 14 and
cover 28 [of Cornick]." Id. at 7 (2d alteration in original).
Appellant's arguments are not persuasive. First, the Examiner has
presented evidence of a teaching, suggestion or incentive in Solomon to
make the proposed modification of Cornick, namely, to provide adjustability
between the door and door-frame to accommodate for variances
therebetween. See Ans. 4. Second, Appellant points to no specific incidents
of the Examiner's use of impermissible hindsight in making the proposed
combination. See Br. at 6. Third, Appellant provides no evidence or
reasoning to support the allegation that providing the hinge of Cornick with
an adjustable plate would change the principle of operation of Cornick. See
id. at 7. Although the installation process may be more involved, that is
offset by the benefit of adjustability. Nothing prevents Cornick from
achieving its primary purpose, which is to function as a door hinge.
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Application 13/760,593
As to Appellant's argument concerning the alleged reconstruction that
would be required of the Cornick device to accommodate the adjustable
plate of Solomon, we fail to see why the modified Cornick device would
require provision of a pocket on the door in order to receive the adjusting
plate of Solomon as well as the flange member 14 and cover 28 of Cornick.
Appellant's argument concerning the presence of a pocket in Cornick (id. at
7-8) is one of bodily incorporation. "It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements." In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citation omitted). Appellant does not
apprise us of any technical reason one skilled in the art could not employ the
cited teachings of Solomon without including a pocket on the door of
Cornick. For example, the screws 13 of Solomon can just as easily pass
through the oblong openings 11 of the adjustable plate and directly into the
door without need for first providing a pocket. The fact that judgment and
mechanical skill may be required to arrive at a particular combination does
not necessarily mean that particular combination constitutes a nonobvious
invention. Graham v. John Deere Co. of Kansas City, 383 US 1, 10-12
(discussing Hotchkiss v. Greenwood, 52 U.S. (11How.)248 (1850)).
For the foregoing reasons, we sustain the Examiner's rejection of
claim 1 based on Cornick and Solomon, and of those claims not separately
argued, claims 8-10, 15, 16, and 19.
Claim 3
Claim 3 is separately argued by Appellant. See Br. 8. As for claim 3,
Appellant states: "The Examiner's proposal for modifying Cornick would
result in the flange 46 projecting into a pocket. Thus, a cover plate could not
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Appeal2014-008963
Application 13/760,593
be mounted on the flange 46." Id. (emphasis omitted). As discussed above,
there is no apparent reason to provide the Cornick door with a pocket in
order to receive the adjusting plate 10 of Solomon. Consequently, since
there is no need for a pocket on the Cornick door, the cover plate 28 would
have no difficulty mounting to the flange 46. For this reason, we sustain the
Examiner's rejection of claim 3.
Claims 4 and 13
Claims 4 and 13 require "a cam assembly mounting said flange on
said bracket, said cam assembly including a female cam mounted in said
bracket and having a cylindrical bore and a pin secured to said flange and
rotatably mounted in said bore of said female cam." Appellant argues that
neither Cornick nor Solomon discloses such structure. Br. 8.
The Examiner responds by stating that "the oblong holes and screws
of Solomon clearly shows a cam assembly which is part of the entire
adjustment means for the hinge of Solomon." Ans. 6; see also id. at 7. The
oblong holes 11 and screws 13 of Solomon function to adjust the position of
the adjustable plate 10. See Solomon 1, col. 2, 11. 22-28; Figs. 1, 2, 5. Even
if these structures were considered a "cam" neither screws 13 nor holes 11
would be "mounted in said bracket" which the Examiner regards as hinge
bracket 12 of Cornick. See Final Act. 3. For these reasons, we do not
sustain the Examiner's rejection of claims 4 and 13.
Obviousness in view of Cornick, Solomon, and Brockhaus
The Examiner rejects claims 5-7 and 14 as being unpatentable over
Cornick, Solomon, and Brockhaus. Final Act. 4. As for these claims, the
Examiner determines:
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Application 13/760,593
[Brockhaus] discloses a hinge assembly having a cam (20) with
longitudinal grooves (180) which mate with a hinging element
(30) having mating grooves (181 ). It would have been obvious
to one of ordinary skill in the art at the time of the invention to
provide the cam between hinging plates of [Cornick] with
longitudinal grooves as taught by [Brockhaus] since the grooves
provides [sic] enhanced and a more rigid connecting between
two hinge plates thereby further securing the pivoting closure.
Furthermore, to shape the [cam] as an oval and/ or to shape the
grooves/ribs to be trapezoidal would have been a matter of design
choice and one of ordinary skill in the art at the time of the
invention would shape the grooves/ribs and cam to be of any
desired shape that allows a sturdy and rigid connection.
Final Act. 4.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. In re Warner, 379 F.2d 1011, 1016
(CCPA 1967). This includes those factual inquiries delineated in Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of why the claimed invention would have been obvious. The
Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) noted that the analysis supporting a rejection under 35 U.S.C. § 103
should be made explicit. The Federal Circuit 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,
441F.3d977, 988 (Fed. Cir. 2006) cited with approval in KSR, at 418.
The splines 180 of Brockhaus' hinge pin 20 extend about the entire
periphery of the hinge pin and the hinge pin is circular in cross-section. See
Brockhaus, Figs. 3, 5. Thus, the Examiner's statements fail to explain why
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Application 13/760,593
the hinge pin 20 of Brockhaus with its splines 180 is reasonably regarded as
a cam, as recited in claims 4 and 13 and those claims depending therefrom.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 5, its dependent claims 6 and 7, and claim 14 (which recites
limitations similar to claim 5).
DECISION
The Examiner's rejection of claims 1, 3, 8-10, 15, 16, and 19 as
unpatentable over Cornick and Solomon is affirmed.
The Examiner's rejection of claims 4 and 13 as unpatentable over
Cornick and Solomon is reversed.
The Examiner's rejection of claims 5-7 and 14 as unpatentable over
Cornick, Solomon, and Brockhaus is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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