Ex Parte Hand et al

Patent Trial and Appeal Board

Sep 20, 2016

12503527 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/503,527 07/15/2009
114586 7590 09/22/2016
Michael Best & Friedrich LLP (Bemis)
100 East Wisconsin A venue
Suite 3300
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Joseph Hand
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.
015005-9566-USOO 8287
EXAMINER
DEERY, ERIN LEAH
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH HAND and JOHN SEAMAN
Appeal2014-007788
Application 12/503,527
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Hand and John Seaman (Appellants)1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 30 and 46-63.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 According to Appellants, the real party in interest is Bemis Manufacturing
Company. App. Br. 2.
2 Claims 1-29 and 32--45 are canceled, and claim 31 is withdrawn.
Appellants' Amendment, 2 (filed April 10, 2013).
Appeal 2014/007788
Application 12/503,527
SUMMARY OF INVENTION
Appellants' disclosure "relates to a hinge assembly for pivotally
coupling a toilet seat to a toilet bowl." Spec. i-f 2. Claim 30, reproduced
below from page 14 (Claims Appendix) of the Appeal Brief, is illustrative of
the claimed subject matter:
30. A hinge assembly for a toilet seat, the hinge assembly
compnsmg:
a hinge post for pivotally supporting the toilet seat on a
toilet bowl;
a mounting member configured to be supported on the
toilet bowl, the mounting member including a bushing
configured to extend into and conform to the shape of an
opening in the toilet bowl;
a bolt connected to the mounting member, the bolt
extending through the bushing and being configured to extend
through the opening in the toilet bowl; and
a nut threadable onto the bolt to secure the mounting
member to the toilet bowl;
\'I/herein the hinge post engages the mounting member to
connect the hinge post to the toilet bowl, and wherein the hinge
post is separate from the mounting member such that the hinge
post is removable from toilet bowl without unsecuring the
mounting member from the toilet bowl.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Hills
Grass
Grimstad
us 3,444,775
us 4,862,556
us 4,878,255
2
May 20, 1969
Sept. 5, 1989
Nov. 7, 1989
Appeal 2014/007788
Application 12/503,527
Hulse bus
Janes
us 6,070,295
US 6,643,851 Bl
REJECTIONS
June 6, 2000
Nov. 11, 2003
Claims 30 and 46-48 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hulsebus and Grass, as evidenced by Grimstad.
Claims 49, 50-52, 54, 55, and 57-63 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hulsebus and Grass, as evidenced by
Grimstad, and further with Hills.
Claims 53, 56, and 57 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hulsebus and Grass, as evidenced by Grimstad, and
further with Hills and Janes.
ANALYSIS
Obviousness Rejection Based on Hulsebus, Grass, and Grimstad
The Examiner finds that Hulsebus discloses the invention
substantially as claimed, but does not disclose "a bushing extending into and
conforming to the shape of the opening in the toilet bowl." Final Act. 2
(citing Hulsebus, 6:14--16, 7:14--25, Figs. 14, 16). The Examiner further
finds that Grass teaches a bushing (insert 4)3 having a plurality of
projections that are capable of extending and conforming to a hole in a toilet
bowl, and concludes that it would have been obvious to a skilled artisan to
include the Grass bushing with the Hulsebus hinge assembly "in order to
compensate for a wide tolerance range of the receiving hole in the toilet."
3 Parentheticals refer to the terminology of the cited references.
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Application 12/503,527
Id. at 3 (citing Grass, 1:50). The Examiner also relies on Grimstad as
evidence for supporting the combination of Hulse bus and Grass, finding that
Grimstad teaches a resilient bushing (bushing 25) configured to receive a
bolt in a porcelain bore of a toilet. Id.
Appellants argue that because "Hulsebus relates to securing a bolt to a
toilet made of porcelain" and "Grass, on the other hand, relates to securing a
screw into a piece of furniture made of wood," the proposed combination of
Hulsebus and Grass "is based on impermissible hindsight in view of
[Appellants'] disclosure." App. Br. 8. Continuing, Appellants argue that
"[t]he circumstances surrounding each of these scenarios are so completely
different that a person of ordinary skill working with porcelain toilets and
bolts would not look to how screws are secured in wooden furniture" and
that anchors (such as disclosed by Grass) are used for blind bores and are
therefore not appropriate for use with a bore extending completely through a
toilet bowl (such as in Hulsebus). Id. In conclusion, Appellants state that
"[t]he combination of Hulsebus and Grass simply does not make sense and
would never occur to one skilled in the art without the benefit of
[Appellants'] disclosure, even in view of Grimstad." Id.
We are persuaded by Appellants' arguments. As noted by Appellants,
the Hulsebus hinge includes a mounting post that extends entirely through
the toilet bowl bore with the head on one side thereof and the threaded
portion on the other side, the threaded portion engaging with a nut to secure
the mounting post to the bowl. App. Br. 7. The mounting post, therefore,
does not engage the sides of the bore. See, e.g., Hulsebus, Fig. 5. The
Examiner purports to modify the Hulsebus hinge to include the Grass
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Application 12/503,527
bushing "in order to compensate for a wide tolerance range of the receiving
hole in the toilet." Final Act. 3. However, because the Hulsebus mounting
post does not engage the sides of the bore, there is no reason to
"compensate" as suggested by the Examiner, nor does the Examiner provide
a sufficient reason why a skilled artisan would so compensate. To the
contrary, it appears the Hulsebus mounting post is usable with "a wide
tolerance range" of bore sizes by being secured to either side of the bowl
flange by a nut and bolt arrangement. See App. Br. 8-9 (explaining the
differences between nut and bolt fasteners and screw and anchor fasteners).
In other words, the reason proffered by the Examiner, i.e., "to compensate
for a wide tolerance range of the receiving hole in the toilet", appears to
already be performed by the Hulsebus device.
The Examiner suggests that it is well known to use inserts, such as
Grass's insert, "between mating surfaces" (Ans. 2), but, as explained above,
the surface of Hulsebus's toilet seat flange hole 26 is not a mating surface
and the Examiner does not propose to modify it to be a mating surface.
Additionally, the Examiner summarily states that the projections of the
Grass insert "would be capable of extending and conforming to a hole in the
toilet bowl." Final Act. 3 (emphasis added); see also Ans. 2. However, as
the Grass projections are designed and intended to "cut radially into the wall
of the associated hole in the furniture part" (Grass 1:65---66), it does not
appear that such projections would conform to the wall of Hulsebus's
device, as the Examiner reasons.
The Examiner's reliance on Grimstad also is unavailing. Grimstad
discloses a toilet hinge assembly that "provide[s] a front to back adjustment
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Application 12/503,527
for the cover." Grimstad 2:53. To provide this adjustability, Grimstad
provides bushing 25 that is securely retained within toilet bowl bore 30, the
bushing having serrations 36 on a top surface thereof. Id. at 3: 1-3, 11-12.
The bushing serrations cooperate with mating serrations 3 5 on a bottom
surface of hinge block 1 7 to retain the hinge block in the desired location
while allowing front-to-back adjustment of the hinge block. Id. at 3: 10-14;
Figs. 5, 7. As the Hulsebus hinge assembly does not provide for front-to-
back adjustability, and the Examiner does not propose to modify the
Hulsebus hinge assembly to make it adjustable in such a manner, it is not
seen how the teaching of Grimstad provides any evidentiary support for the
combination of Hulse bus and Grass.
Accordingly, for the foregoing reasons, we reverse the Examiner's
rejection of independent claim 30, as well as of its dependent claims 46-48,
as being unpatentable over Hulsebus and Grass, as evidenced by Grimstad.
Obviousness Rejection Based on Hulsebus, Grass, Grimstad, and Hills
Claims 49, 50--52, 54, and 61-63
Independent claim 49 recites, inter alia:
a bushing configured to extend into an opening in the toilet
bowl, the bushing including a plurality of projections extending
radially outward therefrom, the plurality of projections
configured to deform as the bushing is inserted into the opening
in the toilet bowl to conform to the shape of the opening.
App. Br. 15 (Claims Appendix). Similarly, independent claim 61 recites,
inter alia:
a hinge post ... including a bushing that extends into the
opening in the toilet bowl, the bushing including a plurality of
projections extending radially outward therefrom, at least some
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Application 12/503,527
of the projections being deformed by insertion of the bushing
into the opening in the toilet bowl so that the bushing conforms
to the shape of the opening.
Id. at 17 (Claims Appendix). The Examiner relies on Grass to teach the
recited bushing, explicitly relying on the rationale provided with respect to
the rejection of independent claim 30. Final Act. 3. The Examiner's use of
Hills does not remedy the deficiencies noted above with respect to the
proposed combination of Hulse bus, Grass, and Grimstad. Accordingly, we
reverse the Examiner's rejection of independent claims 49 and 61, as well as
of their dependent claims 50-52, 54, 62, and 63, as being unpatentable over
Hulsebus, Grass, Grimstad, and Hills for the same reasons as provided
above.
Claims 55 and 57-60
Independent claim 55 does not require a bushing, but does recite, inter
alia, "a bolt ... including a head that is seated within the mounting member,
the bolt engaging an inner surface of the mounting member to prevent
rotation of the bolt relative to the mounting member." App. Br. 16 (Claims
Appendix). The Examiner does not address this recitation in the Final
Action, but adds Janes to the rejection in the Examiner's Answer, stating
that "Janes is used to teach ... that it is known to spline a bolt (see
hexagonal projections at 56) and mate it with a corresponding splined
surface (see hexagonal bore 49) to prevent rotation." Ans. 4.
Appellants argue that none of Hulse bus, Grass, and Hills discloses a
bolt having a head seated within a mounting member. App. Br. 10-11.
Continuing, Appellants argue that Janes cannot properly be combined with
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Application 12/503,527
Hulsebus because "[t]here is no reason to reconfigure the head 208 and the
threaded portion 212 of Hulse bus like the post 54 and the bolt 45 of Janes
because the head 208 and the threaded portion 212 are already integral and
cannot rotate relative to each other." Id. at 11; see also Reply Br. 2.
Appellants further argue that "the splines between the mounting member and
the bolt are used to prevent rotation of the bolt relative to the mounting
member such that the nut can be threaded onto the bolt without requiring a
user to hold the bolt," so "the 'splined section' is not relevant to whether a
toilet seat shifts." App. Br. 12. Moreover, Appellants assert, rotation of the
bolt relative to the mounting member "is not even an issue for Hulsebus
because the mounting post 204 does not include a separate mounting
member and bolt." Id.
We are persuaded by Appellants' arguments. The Examiner finds
head 208 of Hulse bus's mounting post 204 to be the recited mounting
member, and threaded portion 212 of Hulsebus' s mounting post 204 to be
the recited bolt. Final Act. 2. Thus, the Examiner relies on a single
component-Hulsebus mounting post 204---as being both the recited bolt
and the recited mounting member. The Examiner has made no express
finding regarding the requirement of claim 55 that the bolt extend through
the mounting member and engage an inner surface of the mounting member
to prevent relative rotation between the bolt and the mounting member.
Final Act. 3--4. Although not relied on in the Final Action, the Examiner
references Janes in the Examiner's Answer, finding that Janes teaches
splining a bolt to its mating surface "to prevent rotation" and concluding that
it would have been obvious to a skilled artisan "to modify the mounting
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Application 12/503,527
member of Hulse bus to extend through the bore ... to further prevent
rotation of the hinge assembly." Ans. 4. We interpret the Examiner's
reference to Janes as proposing to separate Hulsebus's mounting post 204
into two separate components and then to rejoin the separated components in
such a fashion that they do not rotate, as claim 55 requires that relative
rotation between the bolt and the mounting member be prevented. As noted
by Appellants (Reply Br. 2), the Examiner offers no reason why a skilled
artisan would separate and then rejoin the mounting post of Hulse bus, as
proposed by the Examiner, especially given that Hulsebus already precludes
relative rotation between the Examiner-defined bolt and mounting member
by virtue of them being features of the same, integral component.
Accordingly, for the foregoing reasons, we reverse the Examiner's
rejection of independent claim 55, as well as of its dependent claims 57---60,
as being unpatentable over Hulsebus, Grass, Grimstad, Hills, and Janes.
Obviousness Rejection Based on Hulsebus, Hills,
Grass, Grimstad, and Janes
Claim 53 depends indirectly from claim 49, and claims 56 and 57
depend directly from claim 55. The rejections of independent claims 49 and
55 are reversed above. As the Examiner's application of the cited references
to reject claims 53, 56, and 57 does not remedy the deficiencies noted above
with respect to the independent claims, we likewise reverse the rejection of
claims 53, 56, and 57 for the same reasons as discussed with respect to the
independent claims.
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Appeal 2014/007788
Application 12/503,527
DECISION
The Examiner's decision to reject claims 30 and 46-63 is reversed.
REVERSED
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