Ex Parte Goodfellow et al

Patent Trial and Appeal Board

Oct 20, 2016

11877045 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111877,045 10/23/2007
34431 7590 10/24/2016
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Andrew GOODFELLOW
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.
20284/362952 7269
EXAMINER
RODDEN, JOSHUA E
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW GOODFELLOW, DAVID GRUZA,
CHRISTOPHER HOLMAN, CANDIE HARRIS, and BRADEN JONES
Appeal2014-004853
Application 11/877 ,045
Technology Center 3600
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review, under 35 U.S.C. § 134(a), of the Examiner's
decision, as set forth in the Non-Final Office Action dated February 28,
2013 ("Non-Final Act."), rejecting claims 1-15, 18-20, 35--41, 43, 44, and
46. The record includes a transcript of the oral hearing held on September
22, 2016 ("Tr."). 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants previously identified Esselte Corporation as the real party
in interest. Appeal Br. 2. Appellants now identify R.R. Donnelley & Sons
Company. See Tr. 2, 11. 3---6; Application Data Sheet 2 (filed August 25,
2015).
Appeal2014-004853
Application 11/877 ,045
BACKGROU-ND
The disclosed subject matter "is related to hanging file folders with a
structure for permitting adjustment of an effective length of its rod for
accommodating variances when adjusting folders along spaced apart rails."
Spec. i-f 1. Claims 1, 13, 37, 38, and 42 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A hanging file folder for mounting to a pair
of spaced apart rails, comprising:
a first rod with a pair of hook portions on
opposing ends thereof for engaging the pair of
spaced apart rails;
a second rod with a pair of hook portions on
opposing ends thereof for engaging the pair of
spaced apart rails;
a file folder body comprising first and second
walls forming a pocket for holding materials
therein;
the first wall of the file folder body being
connected to the first rod and the second wall of the
file folder body being connected to the second rod
such that the pocket is suspended between the first
and second rods; and
wherein at least one of the first and second
rods comprises a resilient structure for permitting at
least one of the hook portions thereof to move
longitudinally and dynamically adjust an effective
length of its rod as the file folder and the rods are
moved along the rails for accommodating variances
in an angle at which the folder is mounted on the
rails and a distance between the rails and
maintaining engagement therewith.
2
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Application 11/877 ,045
REJECTIONS
1. Claims 3, 8, 14, 15, and 18 (and claims depending therefrom)
stand rejected under 35 U.S.C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the subject matter regarded as the
invention. 2
2. Claims 1---6, 8-11, 13-15, 18-20, and 35-37 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Palmgren (US 1,268,143,
issued June 4, 1918) and Yuen (US 6,626,602 Bl, issued Sept. 30, 2003).
3. Claims 1-9, 11, 13-15, 19, 20, 35--41, 43, and 46 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Palmgren and Hardison (US
5,104,269, issued Apr. 14, 1992). 3
4. Claims 12 and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Palmgren, Hardison, and Yeh (US 7,100,775 B2, issued
Sept. 5, 2006).
2 The Examiner rejected claims 1, 13, 37, 38, and 46 (and claims
depending therefrom) under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement, as well as under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly
claim the subject matter regarded as the invention, with both rejections
based on the phrase "dynamically adjust." See Non-Final Act. 3--4. In the
Answer, the Examiner withdraws these rejections. See Ans. 2.
3 Although claim 45 is addressed under Rejection 3 (Non-Final Act.
13, 19-20), that claim was canceled in a prior Amendment. See Amendment
11 (filed June 30, 2011).
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Application 11/877 ,045
DISCUSSION
Rejection 1 - The rejection of claims 3, 8, 14, 15, and 18 (and claims
depending therefrom) under 35 US.C. § 112, second paragraph
The Examiner rejected (1) claims 3, 8, and 18 as reciting certain
language that lacked sufficient antecedent basis and (2) claims 14 and 15 as
reciting certain language that was "indefinite and unclear." Non-Final Act.
4--5. In an Amendment filed on May 24, 2013 ("Amend."), Appellants
amended the language identified by the Examiner. Compare Amend. 5, 7,
with Non-Final Act. 4--5. On appeal, Appellants reference this Amendment,
and submit that, "[a]ccordingly ... the§ 112, second paragraph rejection
should be reversed and withdrawn." Appeal Br. 12. In the Answer, the
Examiner withdraws certain other rejections under 35 U.S.C. § 112, first
paragraph, and second paragraph (Ans. 2; see also supra note 2), but does
not address Appellants' statements regarding this Rejection.
The record is unclear as to whether the Amendment has been entered.
In view, however, of the Examiner;s failure to dispute Appellants; statement
that "[c]laims 3, 8, 10, 14, 15, and 18 were amended in the May 24, 2013
Response" (Appeal Br. 12), for purposes of this Appeal, we treat the
Amendment as having been entered. 4 Moreover, in view of the Examiner's
failure to respond, in the Answer, to the contention that this Rejection should
be reversed (id.), or to otherwise explain why this Rejection should be
sustained, in light of the Amendment, we do not sustain this Rejection.
4 The Claims Appendix in the Appeal Brief reflects the changes made
in the Amendment.
4
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Application 11/877 ,045
Rejection 2- The rejection of claims 1-6, 8-11,
13-15, 18-20, and 35-37 under 35 USC§ 103(a)
as unpatentable over Palmgren and Yuen
A. Claim 1 (and Claims 2-6, 8-11, and 35)
Independent claim 1 recites, among other limitations, "wherein at
least one of the first and second rods comprises a resilient structure for
permitting at least one of the hook portions thereof to move longitudinally
and dynamically adjust an effective length of its rod as the file folder and the
rods are moved along the rails." Appeal Br. 54 (Claims App.) (emphasis
added). Addressing this limitation in the Office Action, the Examiner relied
on Palmgren for certain aspects:
wherein at least one of the first and second rods (AA and BB)
comprise a structure (30) that permits the hook portions (27 and
28) to move longitudinally and dynamically adjust an effective
length of the rod (AA or BB), and wherein it should be
understood that the ability to shorten and lengthen the rods (AA
or BB) would allow for variances in an angle at which the file
folder (26) is mounted on spaced apart rails (11 and 12) and a
distance between the rails ( 11 and 12) and maintaining
engagement therewith (See Page 1, Lines 24--33), (Figure 3 and
Annotated Figures 1 and 2 Below, and Page 2, Lines 15--40).
Non-Final Act. 6; see also id. at 7 (providing annotated versions of Figures 1
and 2 of Palmgren, identifying rods AA and BB). The Examiner stated that
Palmgren does not teach "a resilient structure permitting longitudinal
adjustment of the hook portions" but that Yuen teaches "rod (12) with a pair
of hook portions (20 and 22) on opposing ends thereof, and a resilient
structure ( 44 and 46) permitting longitudinal adjustment of the hook portions
(20 and 22), (Figures 2-5B)." Id. at 7-8.
Appellants argue that the Examiner "acknowledges in the Office
Action with regards to its combination with Hardison that 'Palmgren is
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Application 11/877 ,045
modified by Hardison to teach a better way of adjusting the length of the
rods automatically without having to manually pull the adjustable hook
portions of Palmgren apart."' Appeal Br. 14 (quoting, with emphasis added
by Appellants, Non-Final Act. 26). Appellants then state, "[c]learly,
Palmgren is lacking with regards to disclosing, teaching, or suggesting
dynamic variations in angles and length based on movement of a file folder
along the rails, as provided by the features of claim 1." Id.
The Examiner states that Appellants have "defined the term
'dynamically' as '[r]elating to energy or objects in motion' as described" on
page 10 of the Appeal Brief. Ans. 3. According to the Examiner,
as each of the rods (AA and BB as identified in the Non-Final
[Action]) of Palmgren is capable of being adjusted by hand as
the rods (AA and BB) are moved along the length of the rails (11
and 12), the rods would be classified as 'objects in motion'
during their adjustment.
Id. The Examiner states that "according to [A]ppellant[s'] definition of
'dynamically', ... the rods (AA and BB) of Palmgren can certainly be
'dynamically' adjusted by hand as the rods (AA and BB) are moved along
the rails (11 and 12)" and that "[t]he recited claim language does not
preclude the use of manual movement of the rods, the hook portions and the
resilient structure." Id. at 3--4.
The record here does not support the Rejection because, even
applying the Examiner's proposed construction of "dynamically adjust"-
which includes, in relevant part, manual adjustment of the lengths of rods
AA and BB as those rods are moved along rails 11 and 12-the manual
adjustment relied on by the Examiner would not be possible in the context of
the modified device. In the Rejection, the Examiner identified "a first rod
(AA) with a pair of hook portions (27 and 28) on opposing ends thereof, and
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a second rod (BB) with a pair of hook portions (27 and 28)" and "a file
[fJolder body 26 ... forming a pocket (EE)" in Palmgren. Non-Final Act.
5---6 (discussing annotated versions of Figures 1 and 2 of Palmgren).
To form pocket 26 in Palmgren, however, "cloth 25 or other suitable
material is looped" about "cross-bars or riders 24"-i.e., the identified
"rods" AA and BB. Palmgren 2, 11. 5-14; see also Non-Final Act. 7
(annotated Figures 1 and 2). Although Figures 2 and 3 of Palmgren show
elements 27 /28/29 not covered by cloth or other material, these depictions
do not show the complete device, which includes pockets 26. Compare
Palmgren, Fig. 1 (showing pockets 26), with Figs. 2, 3 (not showing pockets
26); see Palmgren 2, 11. 15-22. Based on the disclosed configuration of the
complete device in Palmgren, and the Examiner's reliance on the relevant
parts thereof in the modified device, we agree with Appellants that manual
adjustment of identified rods AA and BB would not be possible while rods
AA and BB are moved along rails 11 and 12. See Tr. 3, 1. 13 - 5, 1. 9.
Although the Examiner also states that rod 12 of Yuen "can certainly
be 'dynamically' adjusted by hand" (Ans. 5---6), the Examiner has not shown
that such a capability would be available in the modified device, which
includes identified rods AA and BB from Palmgren, not rod 12 of Yuen
(Non-Final Act. 5-9). See also Non-Final Act. 8 (relying on Yuen to teach
"permitting longitudinal adjustment"), 9 (stating that "it would have been
obvious to one of ordinary skill in the art to modify the file folder of
Palmgren to have a resilient structure permitting longitudinal adjustment of
the hook portions ... as taught by Yuen").
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Application 11/877 ,045
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 2---6, 8-11, and 35, which depend from claim 1 as
unpatentable over Palmgren and Yuen.
B. Claims 13-15, 18-20, 36, and 37
Independent claim 13 recites, among other limitations, "wherein at
least one of the rods comprises a resilient structure for permitting at least one
of the hook portions thereof to move longitudinally and dynamically adjust
an effective length of its rod as the file folder and the rods are moved along
the rails." Appeal Br. 56 (Claims App.) (emphasis added). Independent
claim 3 7 recites, among other limitations, "wherein both of the first and
second rods comprise a resilient structure for permitting at least one of the
hook portions thereof to move longitudinally and dynamically adjust an
effective length of its rod as the file folder and the rods are moved along the
rails." Id. at 59 (emphasis added).
For claim 13 (and claims 14, 15, 18-20, and 36, which depend from
claim 13) as well as for claim 37, the Examiner relies on the same deficient
findings and conclusions discussed above with regard to claim 1. See Non-
Final Act. 9-13. Thus, we also do not sustain the rejection of claims 13-15,
18-20, 36, and 37 as unpatentable over Palmgren and Yuen.
Rejection 3 -The rejection of claims 1-9, 11,
13-15, 19, 20, 35-41, 43, and 46 under 35 US. C.
§ 103 (a) as unpatentable over Palmgren and Hardison
A. Claim 1 (and Claims 2-9, 11, and 35)
For Rejection 3, the Examiner relies on the same aspects of Palmgren
to address the limitation at issue discussed above regarding claim 1 (see
supra Rejection 2 §A). Compare Non-Final Act. 13-14, with id. at 6. The
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Application 11/877 ,045
Examiner stated that Palmgren does not teach "a resilient structure
permitting longitudinal adjustment of the hook portions" but that Hardison
teaches
an adjustable hanging rod (10) comprising a rod member (22)
having a pair of hook portions (24 and 26) at opposite ends
thereof, (Figure 1 ); wherein the rod (22) comprises a resilient
structures (32 and 33) which permits the longitudinal adjustment
of the hook portions (24 and 26) to adjust the length of the
hanging rod (10), (Figures 1-3).
Id. at 14, 15.
Appellants rely on the same arguments set forth above regarding
Palmgren. See Appeal Br. 26 (relying on, inter alia, § VII.B.1 (pages 13-
15) of the Appeal Brief). For the same reasons discussed above (see supra
Rejection 2 § A), we do not sustain the rejection of claim 1, or the rejection
of claims 2-9, 11, and 35, which depend from claim 1 as unpatentable over
Palmgren and Hardison.
B. Claims 13-15, 19, 20, 36-41, 43, and 46
Independent claims 13 and 37 recite the limitations set forth above.
See supra Rejection 2 § B. Independent claim 38 recites, among other
limitations,
wherein each one of the at least first and third hook portions
further comprises a resilient structure constructed and arranged
between the mounting portion and the hook, the resilient
structure being configured to permit the hook to move
longitudinally with respect to its rod and thereby dynamically
adjust a distance between the hook portions of each rod as the
file folder and the rods are moved along the rails.
Appeal Br. 60 (Claims App.) (emphasis added).
For claim 13 (and claims 14, 15, 19, 20, and 36, which depend from
claim 13), for claim 37, and for claim 38 (and claims 39-41, 43, and 46,
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Application 11/877 ,045
which depend from claim 38), the Examiner relies on the same deficient
findings and conclusions discussed above with regard to claim 1. See Non-
Final Act. 16-22. Thus, we also do not sustain the rejection of claims 13-
15, 19, 20, 36-41, 43, and 46 as unpatentable over Palmgren and Hardison.
Rejection 4-The rejection of claims 12 and
44 under 35 US.C. § 103(a) as unpatentable
over Palmgren, Hardison, and Yeh
Claim 12 depends from claim 1, and claim 44 depends from claim 3 8.
Appeal Br. 56, 62 (Claims App.). The Examiner's reliance on Yeh does not
remedy the deficiencies in the combined teachings of Palmgren and
Hardison discussed above (see supra Rejection 3). Thus, for the same
reasons discussed above, we do not sustain the rejection of claims 12 and 44
as unpatentable over Palmgren, Hardison, and Yeh.
DECISION
We REVERSE the decision to reject claims 3, 8, 14, 15, and 18 under
35 U.S.C. § 112, second paragraph.
We REVERSE the decision to reject claims 1---6, 8-11, 13-15, 18-20,
and 35-37 under 35 U.S.C. § 103(a) as unpatentable over Palmgren and
Yuen.
We REVERSE the decision to reject claims 1-9, 11, 13-15, 19, 20,
35--41, 43, and 46 under 35 U.S.C. § 103(a) as unpatentable over Palmgren
and Hardison.
We REVERSE the decision to reject claims 12 and 44 under
35 U.S.C. § 103(a) as unpatentable over Palmgren, Hardison, and Yeh.
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Application 11/877 ,045
REVERSED
11