Ex Parte Hand

Board of Patent Appeals and Interferences

Dec 17, 2009

10844176 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD M. HAND1
____________

Appeal 2009-003846
Application 10/844,176
Technology Center 3600
____________

Decided: December 18, 2009
____________

Before JENNIFER D. BAHR, DANIEL S. SONG, and
STEFAN STAICOVICI, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is K. E. Sales Inc. (Br. 3).
Appeal 2009-003846
Application 10/844,176

2
The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-10. We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
The claimed invention is directed to a display table that is movable
between a standing position and a folded position.
Independent claim 1 reads as follows (Br. 12, Claims App’x.):
1. A display table movable between a standing position on
ground and a folded position comprising, in combination:
a back having a top, a left back leg and a right back leg;
a table top pivotable about a first axis around the top of
the back;
a middle leg mounted on the back and pivotable with
respect to the right back leg about a second axis generally
perpendicular to the first axis; and
a brace mounted on the back, pivotable around the left
back leg about a third axis generally parallel to the second axis,
and which slidably engages the middle leg;
wherein in the standing position the brace engages the
middle leg and the left back leg, right back leg and a single
flange of the middle leg cooperate to support the table when
standing on ground, and in the folded position the table top and
middle leg are folded against the back.

Independent claim 4 recites structure similar to claim 1, except that
claim 4 recites a table top that includes “projections which define a
downwardly opening channel extending away from an underside of the table
top”. (Br. 13, Claims App’x.).

The evidence relied upon by the Examiner in rejecting the claims is:
Nichols US 4,533,179 Aug. 6, 1985
Favini US 6,314,892 B1 Nov. 13, 2001
Chang US 6,431,091 B1 Aug. 13, 2002

Appeal 2009-003846
Application 10/844,176

3
The Examiner rejected claims 1 and 3-10 under 35 U.S.C. § 103(a) as
unpatentable over Favini and Chang.
The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Favini, Chang, and Nichols.

We AFFIRM-IN-PART.

ISSUES
The following issues have been raised in the present appeal:
1. Whether the Appellant has shown that the Examiner’s rejection
of independent claim 1 is erroneous because the suggested combination of
Favini and Chang fails to result in a display table with a brace pivotable
about a third axis generally parallel to the second axis about which the
middle leg pivots.
2. Whether the Appellant has shown that the Examiner’s rejection
of independent claim 1 is erroneous because the suggested combination of
Favini and Chang fails to result in a display table wherein a single flange of
the middle leg cooperates with the left and right back legs to support the
table.
3. Whether the Appellant has shown that the Examiner erred in
rejecting independent claim 4 because the L-shaped spring clips 60, 62 of
Favini do not “define a downwardly opening channel extending away from
an underside of the table top” as claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Appeal 2009-003846
Application 10/844,176

4
1. Favini describes a folding table that includes a table top
assembly 2, a support assembly 4 (i.e., back), and two front leg
assemblies 6 and 7 (i.e., middle legs) (col. 2, ll. 62-67; fig. 1-4).
2. In Favini, the support assembly 4 includes a pair of parallel rear
legs 14 (i.e., right back leg) and 16 (i.e., left back leg), and a header
18 hinged to the table top assembly by hinges 30 and 31 (col. 3, ll. 3-
11; figs. 4, 5, 12 and 13). Hence, the hinges 30 and 31 define a first
axis about which the table top pivots around the top of the support
assembly 4 (i.e., back).
3. In Favini, the leg assembly 6 includes front riser 34 and rear
riser 36 which are connected adjacent their bottom ends by a
horizontal brace 38 (col. 3, ll. 16-19; figs. 4-6, 12, and 13) thereby
providing flanges at the distal ends of the risers. The rear riser 36 of
the leg assembly 6 is pivotally attached to rear leg 14 by spring hinges
44 (col. 3, ll. 22-25; fig. 13) that define a second vertical axis
(perpendicular to the first axis) about which the leg assembly 6 pivots
with respect to rear leg 14.
4. Figure 17 of Favini shows that the distal end of front riser 34
(un-numbered) (i.e., a single flange) of front leg assembly 6 (i.e.,
middle leg) contacts the ground when the table is unfolded and
secured, while rear riser 36 (also un- numbered) is elevated and does
not contact the ground (Fig. 17; col. 5, ll. 21-26). Hence, the left back
leg, right back leg, and the flange of the middle leg of Favini support
the table in the standing position.
5. In Favini, a pair of L-shaped spring clips 60, 62 are located on
the underside of the table top (col. 4, ll. 24-27; figs. 4, 7, and 10).
Appeal 2009-003846
Application 10/844,176

5
The spring clips include a short portion 64 attached to the inner edge
of a table top frame 10, and a relative long portion 68 that extends
parallel to the underside of the table top (col. 3, ll. 36-44; fig. 7).
6. Chang describes a foldable worktable that includes a first side
bar 60 (i.e., brace) with one end pivotably coupled to a left support
board 12 (i.e., left back leg) by a swingable joints 61 and 631 that
define a vertical axis, and the other end of the side bar 60 engaging a
first cross bar 43 (col. 2, ll. 60-63; figs. 1, 3, 4, and 5).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
Appeal 2009-003846
Application 10/844,176

6
when it does no more than yield predictable results.” KSR, 550 U.S. at 415-
16.
The Court also noted that “[t]o facilitate review, this analysis should
be made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections 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.”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Rejection of Claims 1 and 3-10
The Examiner rejects claims 1 and 3-10 as obvious over the
combination of Favini and Chang (Ans. 3-4). With respect to this rejection,
the Appellant only argues the patentability of claims 1, 4 and 9 (Br. 9-10).
Claims 3 and 5-8 (which depend directly from independent claim 1), and
claim 10 (which depends directly from independent claim 4) are not
separately argued by the Appellant. Thus, dependent claims 3, 5-8 and 10
stand or fall with their corresponding independent claim. See 37 C.F.R. §
41.37(c)(1)(vii)(2007).
With respect to independent claim 1, the Examiner’s rejection is based
on the finding that Favini discloses the claimed display table except for the
recited brace (Ans. 3; see also FF 1-4). To cure this deficiency, the
Examiner relies on Chang, asserting that Chang teaches a side bar 60 (i.e.,
Appeal 2009-003846
Application 10/844,176

7
brace) “being pivotable with respect to a left back leg (12) about a third axis
(at hinges 61, 631) perpendicular to the first axis, and serving to secure the
middle leg in the standing position via a fastener (62).” (Ans. 3-4; see also
FF 6). Therefore, the Examiner concludes, inter alia, that it would have
been obvious to one of ordinary skill in the art to modify the table of Favini
by providing it with a brace as taught by Chang, pivotally mounted to the
back, to thereby increase the stability of the table (Ans. 4; see also Ans. 6).
While acknowledging that the “side bar 60 slidably engages cross bar
43” in Chang (Br. 9), the Appellant contends that the side bar 60 of Chang
does not satisfy the brace limitation recited in claim 1 because it pivots about
a vertical axis whereas the cross bar 43 pivots about a horizontal axis
“perpendicular to the vertical axis . . ..” (Br. 9). The Appellant asserts that
“neither Favini nor Chang teaches or suggests a combination of a middle leg
and a brace which pivot about axes generally parallel to one another and
which slidably engage one another.” Id.
We do not find this argument persuasive of reversible error because it
is premised on interpreting Chang’s first support 40 with the cross bar 43 as
corresponding to the middle leg recited in the claims. However, as
discussed supra, the Examiner has not relied upon Chang to satisfy the
limitation reciting a middle leg. Instead, the Examiner relies on Favini for
teaching a middle leg (i.e., front leg assembly 6) mounted on the support
assembly 4 (i.e., back), the front leg assembly 6 being pivotable along a
vertical axis (Ans. 3; see also FF 1 and 3). Thus, the combination proposed
by the Examiner results in Favini’s front leg assembly 6 (i.e., middle leg)
being engaged by Chang’s side bar 60, both Favini’s front leg assembly 6
and Chang’s side bar 60 pivoting about vertical axes generally parallel to
Appeal 2009-003846
Application 10/844,176

8
one another as required by claim 1. Such combination of known prior art
elements that merely yields predictable results would have been obvious to
one skilled in the art. KSR, 550 U.S. at 415-16.
In addition, the Appellant argues that the single flange limitation of
claim 1 is not satisfied by the proposed combination because Favini
discloses two flanges for each front leg assembly 6 and 7, both flanges
engaging the ground (Br. 9). We disagree. As correctly noted by the
Examiner, Figure 17 of Favini clearly shows that only the flange at the distal
end of the front riser 34 of front leg assembly 6 contacts the ground when
the table is unfolded and secured (FF 4; see also Ans. 7). The flange at the
distal end of rear riser 36 does not contact the ground (FF 4). Hence, the
Appellant’s argument to the contrary is not persuasive.
As required, the Examiner has also articulated a reason why one of
ordinary skill in the art would combine the teachings of Favini and Chang in
the manner suggested (Ans. 4 and 6) which is rational and sufficient to
conclude that the claimed invention is obvious. See KSR, 550 U.S. at 418.
Therefore, in view of the above, the Appellant has not shown that the
Examiner erred in concluding that the subject matter of claim 1 is obvious
over Favini and Chang. We likewise find that the Appellant has failed to
show the Examiner erred in rejecting claims 3 and 5-8 which depend from
independent claim 1, patentability of these dependent claims not having been
separately argued.
Independent claim 4 is similar in scope to claim 1, with the exception
that claim 4 further recites the table top comprises “projections which define
a downwardly opening channel extending away from an underside of the
table top” and that the middle leg is positioned in the channel which resists
Appeal 2009-003846
Application 10/844,176

9
movement of the middle leg. The Appellant argues that the Examiner erred
in finding that the L-shaped spring clips 60, 62 of Favini satisfy the recited
“projections” limitation of claim 4 because the L-shaped spring clips do not
define the downwardly opening channel claimed (Br. 10).
We agree with the Appellant. In rejecting claim 4, the Examiner
states that “the underside of the table top of Favini is considered to
encompass the entirety of the channel defined therein; and projections 60,
62, though extending horizontally, certainly extend ‘away’ from the edge of
the channel and thus from underside of the table.” (Ans. 3 and 7-8).
However, the Examiner’s rejection does not address the claim recitation that
the projections define the downwardly opening channel extending away
from the underside of the table top. As conceded by the Examiner (Ans. 8),
the L-shaped spring clips of Favini extend “horizontally” from the edge of
the table top frame (FF 5). Hence, while the L-shaped spring clips of Favini
can be said to define a laterally opening channel, the spring clips do not
define a downwardly opening channel as required by claim 4.
Therefore, in view of the above, the Examiner’s obviousness rejection
of claim 4 as set forth in the Answer is not sustained. The Examiner’s
rejection of dependent claims 9 and 10, which directly depend from claim 4,
is also not sustained for the same reason. As such, we do not reach the
Appellant’s argument with respect to claim 9.

Rejection of Claim 2
The Examiner rejects claim 2 as obvious over the combination of
Favini and Chang, as applied to independent claim 1, and in further view of
Nichols, the Examiner relying on Nichols for disclosing a snap-fit
Appeal 2009-003846
Application 10/844,176

10
connection between structural members (Ans. 5). While noting that claim 2
further recites a cross beam that is connected to the left and right legs by a
snap fit, the Appellant does not specifically argue patentability based on this
recited limitation (Br. 10). A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. 37 C.F.R. 41.37(c)(1)(vii) (2007).
The Appellant also argues that the application of Nichols “fails to
correct the deficiencies of the other references with respect to [c]laim 1.”
(Br. 10). However, as discussed supra, we find no deficiencies with respect
to the combination of Favini and Chang, at least with respect to claim 1 from
which claim 2 depends. Thus, the Examiner’s obviousness rejection of
dependent claim 2 is sustained.

CONCLUSIONS
1. The Appellant has not shown that the Examiner’s rejection of
independent claim 1 is erroneous based on the contention that the suggested
combination of Favini and Chang fails to result in a display table with a
brace pivotable about a third axis generally parallel to the second axis about
which the middle leg pivots.
2. The Appellant has not shown that the Examiner’s rejection of
independent claim 1 is erroneous based on the contention that the suggested
combination of Favini and Chang fails to result in a display table wherein a
single flange of the middle leg cooperates with the left and right back legs to
support the table.
3. The Appellant has shown that the Examiner erred in the
rejection of independent claim 4 because the L-shaped spring clips 60, 62 of
Appeal 2009-003846
Application 10/844,176

11
Favini do not “define a downwardly opening channel extending away from
an underside of the table top.”

DECISION
1. The Examiner’s rejection of claims 1, 3, and 5-8 under 35
U.S.C. § 103(a) as unpatentable over Favini and Chang is AFFIRMED.
2. The Examiner’s rejection of claims 4 and 9-10 under 35 U.S.C.
§ 103(a) as unpatentable over Favini and Chang is REVERSED.
3. The Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a)
as unpatentable over Favini, Chang, and Nichols 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)(1)(iv) (2007).

AFFIRMED-IN-PART

ack

cc:

Miller, Canfield, Paddock and Stone P.L.C.
c/o Robert Kelly Roth
Suite 2500
150 West Jefferson Ave.
Detroit MI 48226