Ex Parte Grewe et alDownload PDFPatent Trial and Appeal BoardMay 30, 201814492947 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/492,947 09/22/2014 49840 7590 06/01/2018 Atlanta Baker Donelson Intellectual Property Department Monarch Plaza, Suite 1600 3414 Peachtree Rd. A1LANTA, GA 30326 FIRST NAMED INVENTOR Brian Grewe 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. 2170415-000165 7311 EXAMINER 0 BRIEN, JEFFREY D ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): atlip@bakerdonelson.com tdavis@bdbc.com ipdocketing@bakerdonelson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN GREWE, BRETT A. MITCHELL, and BURL M. FINKELSTEIN Appeal2017-008630 Application 14/492,947 Technology Center 3600 Before JENNIFER D. BAHR, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 14--17. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, Kason Industries, Inc. The Appeal Brief identifies "[t]he Applicant" as the real party in interest. Br. 2. 2 Claims 1-13 have been withdrawn from consideration. Id. Appeal2017-008630 Application 14/492,947 THE CLAIMED SUBJECT MATTER Claim 14, reproduced below, is the only independent claim involved in this appeal, and is illustrative of the claimed subject matter. 14. A hinge comprising: a cartridge configured to fit within a channel within a door, the cartridge having a housing having an interior channel terminating a[t] an end wall with a pivot pin mounting hole therethrough, and a mounting flange extending outwardly from said housing; a bushing configured to fit within the cartridge housing end wall pivot pin mounting hole; a steel pivot pin having a cam follower mounting portion with a non-round shoulder section and a round shaft section, a pivot pin mounting portion, and a bearing flange positioned between said cam follower mounting portion and said pivot pin mounting portion, said round shaft section being distal said pivot pin mounting portion and said non-round shoulder section being proximate said pivot pin mounting portion, said bearing flange being positioned to abut and ride upon said bushing; a separate and distinct plastic cam follower having a non- round hole therein configured to mate with said pivot pin cam follower mounting portion non-round shoulder section, said cam follower having at least one camming surface; a plastic cam having at least one camming surface corresponding to the cam follower at least one camming surface, said cam having a pivot pin channel therein configured to receive the pivot pin round shaft section; a compression spring applying a compression force forcing said cam against said cam follower, and a casement mounting bracket coupled to said pivot pin. REJECTION I. Claims 14--17 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Bohacik (US 5,682,644, iss. Nov. 4, 1997) and Lu (US 2007/0101543 Al, pub. May 10, 2007). 2 Appeal2017-008630 Application 14/492,947 DISCUSSION Appellant presents arguments contesting the rejection of independent claim 14, 3 but does not present any separate arguments for dependent claims 15-17. See Br. 4--8. Thus, we decide this appeal on the basis of claim 14, with claims 15-17 standing or falling with claim 14. See 37 C.F.R. § 4I.37(c)(l)(iv) (providing that when multiple claims subject to the same ground of rejection are argued as a group by the appellant, the Board may select a single claim from the group to decide the appeal with respect to the group as to the ground of rejection on the basis of the selected claim alone). The Examiner found that Bohacik discloses a hinge as recited in claim 14, except that Bohacik does not disclose that the pivot pin is steel and the cam and cam follower are plastic, the pivot pin having a non-round shoulder section as claimed, or a bearing flange as claimed. Final Act. 3--4. Instead of securing the pivot pin (pin 16) and cam follower (upper cam member 14) together against rotation relative to one another using a non-round shoulder section on the pivot pin and a non-round opening in the cam follower to mate with the non-round shoulder section, as claimed, Bohacik secures the cam follower to the pivot pin using dowel pin 17. Bohacik 3:43--45; Figs. 3--4. The Examiner determined it would have been obvious to form Bohacik's pivot pin from steel and Bohacik's cam and cam follower from plastic "since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice." Final Act. 3--4 ( citing In 3 The heading for this argument refers to claim 1, but the body of the argument refers to claim 14. See Br. 4--6. 3 Appeal2017-008630 Application 14/492,947 re Leshin, 277 F.2d 197, 199 (CCPA 1960)). Appellant does not dispute the Examiner's determination that the claimed pivot pin, cam, and cam follower materials would have been obvious. See Br. 4--8. The Examiner found that Lu teaches, in a hinge, an alternative means of securing a pivot pin to an adjacent member to prevent relative rotation therebetween. See Final Act. 4. In particular, the Examiner found: Id. [Lu] teaches a hinge having a pivot pin (30), wherein the pivot pin (30) has a non-round shoulder section (34) for connecting to an adjacent member (40) which has a non-round hole (41) therein to mate with said non-round shoulder section (34), a round shaft section (33), a pivot pin mounting portion (31 ), and a bearing flange (32), said round shaft section (33) being distal said pivot pin mounting portion (31) and said non-round shoulder section (34) being proximate said pivot pin mounting portion (31 ). The Examiner determined it would have been obvious "to replace the dowel connecting means of [Bohacik] with a non-round cross-section and non-round hole of [Lu] as it is a simple substitution of one known non- rotatable connecting mechanism for another in a manner that yields predicable results." Id. The Examiner determined "[i]t would have been further obvious to apply a flange as taught in [Lu] to the pin of [Bohacik] between the cam follower mounting portion and the pivot pin mounting portion for abutting against the bushing and preventing the bushing from sliding with respect to the pivot pin." Id. at 5. Appellant argues that Bohacik lacks a non-round shoulder and a bearing flange, as recited in claim 14. Br. 4--5. Appellant also argues that Lu does not have a cam or cam follower, and, thus, "does not show a cam follower mounting portion," as recited in claim 14. Id. at 5. These 4 Appeal2017-008630 Application 14/492,947 arguments are not responsive to the rejection, which relies on Bohacik, and not Lu, for the cam and cam follower, and relies on Lu, and not Bohacik, for the non-round shoulder and bearing flange. See Final Act. 4. "Non- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA 1981)). Appellant contends that Lu's "'head 32' does not 'bear' on the components within the meaning of the term understood from [Appellant's Specification]." Br. 5. Appellant asserts that the term "bearing flange" "is understood from [Appellant's] disclosure to mean a flange which rotates relative to an adjoining surface or 'bears' upon it." Id. According to Appellant, Lu's head 32, in contrast, "does not 'bear' or move relative to another adjoining surface (bushing)." Id. Notably, Appellant does not identify any particular portion of the Specification that supports the definition of "bearing flange" asserted by Appellant, namely, as requiring relative rotation between the bearing flange and adjoining surface. Appellant's Specification describes "an outwardly extending annular stop or bearing flange 35" on pivot pin 33. Spec. 5: 15- 16. The Examiner does not find in Appellant's Specification any "special definition for 'bearing flange"' (Ans. 3), nor do we find in the Specification any special definition for "bearing flange." Thus, the Examiner construes "bearing flange" "to mean 'a flange for bearing,"' and the term "bearing" in accordance with its ordinary and customary definition as "a supporting part of a structure." Id. As such, we understand the Examiner to be construing "bearing flange" as a flange that serves as a supporting structure, i.e., a 5 Appeal2017-008630 Application 14/492,947 flange that supports. The Examiner's construction appears reasonable, and Appellant does not persuade us otherwise. Lu's positioning protrusion 34 engages keyhole 41 of limiting spacer 40 to mount limiting spacer 40 securely on pintle 30, such that pintle 30 (and thus head 32 of pintle 30) does not rotate relative to spacer 40. Lu ,r 19, Fig. 1. However, pintle 3 0 ( as well as its head 3 2) and limiting spacer 40 rotate together between limiting stops 121 on sleeve 12. Id. Lu's head 32 presses against, and thus supports, limiting spacer 40. Id., Fig. 1, ,r,r 18-19. As such, we discern no error in the Examiner's finding that Lu's head 32 is a "bearing flange." Moreover, as the Examiner points out, when the flange (head 32) and non-round shoulder portion (positioning protrusion 34) of Lu are incorporated into Bohacik's hinge, as proposed in the rejection, the flange abuts against Bohacik's bushing 19 and rotates relative thereto. Ans. 3. Thus, the bearing flange (head 32) in the combination is "positioned to abut and ride upon said bushing," as also recited in claim 14. See Br. 10 (Claims App.). Appellant additionally argues that the Examiner has resorted to "hindsight, speculation[,] and conclusory statements which are not ... supported by the cited references, to come up with 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." Br. 7. The Examiner's combination is based not on the teachings in Appellant's disclosure, but on the teachings found in the cited prior art. The Examiner found that Bohacik discloses one means (i.e., a dowel pin) of connecting a pivot pin to a cam follower in a non-rotatable manner, and that 6 Appeal2017-008630 Application 14/492,947 Lu teaches an alternative means (i.e., a non-round projection or shoulder) of connecting a pivot pin (pintle) to another structure in a non-rotatable manner. See Ans. 4. Accordingly, the modification proposed by the Examiner amounts to a simple substitution of one non-rotatable connection mechanism known in the art for another non-rotatable connection mechanism known in the art. "[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007). The Examiner also determined that it would have been obvious to provide a bearing flange, such as head 32 of Lu, on Bohacik's pin 16 to abut against and prevent bushing 19 from sliding relative to pin 16. Final Act. 5. This articulated reason has rational underpinnings, as the bearing flange would support bushing 19 during assembly before cam members 14, 15 and spring means 42, 43 perform this function in the final assembly. In sum, Appellant does not identify any flaw in the Examiner's reasoning or point to any knowledge relied on by the Examiner that was gleaned only from Appellant's disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention, thereby failing to support Appellant's hindsight assertion. See In re McLaughlin, 44 3 F .2d 13 92, 13 9 5 ( CCP A 1971) (" Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper."). 7 Appeal2017-008630 Application 14/492,947 Appellant's bald assertion that the proposed combination would either destroy the clear intention of the reference or modify such in a manner that goes against the clear teachings of the reference is unavailing because Appellant does not identify any clear intention of Bohacik that would be destroyed by the combination or explain how the combination goes against Bohacik' s teachings. For the above reasons, Appellant's arguments do not apprise us of error in the rejection of claim 14. Accordingly, we sustain the rejection of claim 14, as well as claims 15-17, which fall with claim 14, as unpatentable over Bohacik and Lu. DECISION The Examiner's decision rejecting claims 14--17 is 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation