Ex Parte Hicks et alDownload PDFPatent Trial and Appeal BoardSep 27, 201611884689 (P.T.A.B. Sep. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111884,689 21567 7590 Wells St John P,S, 601 W. Main Avenue Suite 600 Spokane, WA 99201 12/07/2007 09/27/2016 FIRST NAMED INVENTOR Craig Frederick Hicks 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. CU20-001 5820 EXAMINER JOHNSON, BLAIR M ART UNIT PAPER NUMBER 3634 MAILDATE DELIVERY MODE 09/27/2016 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 CRAIG FREDERICK HICKS, CHARLES BILEK, MARTIN HABERLAND, GARY DRINKWATER, NIGEL FRANK SPORK, and GLEN D. P ACHOLKE Appeal2014-006964 Application 11/884,689 Technology Center 3600 Before CYNTHIA L. MURPHY, KENNETH G. SCHOPPER, and TARA L. HUTCHINGS, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's rejections of claims 13, 15-20, 22-30, 32, 33, 35, 36, 39--44, 46, 49, 51-54, and 56----67.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 The Appellants identify the real party in interest as "Centor Australia Pty Ltd." (Appeal Br. 1.) 2 "Claims 1-12, 14, 21, 31, 34, 37, 38, 45, 47, 48, 50 and 55 hav[e] been previously canceled." (Appeal Br. 1.) Appeal2014-006964 Application 11/884,689 STATEMENT OF THE CASE The Appellants' invention "is directed to a screen assembly" that "contains a flexible sheet like member (for instance an insect screen) which can be pulled across the window or door cavity." (Spec. 1, lines 5-8.) Illustrative Claim3 13. A screen assembly comprising: a flexible screen having a front edge area, a supporting member about which the screen can be wound/unwound and which is substantially vertical and has an upper end and a lower end, a biasing means to create a tension in the screen, a drum/pulley supported upon at least one end of the supporting member, the drum/pulley is configured as a cone and comprising a first end and a peripheral circumference that tapers diametrically from the first end to a smaller second end, the smaller second end more proximate the screen and the cone configuration being aligned vertically with the supporting member along the second end to the first end of the drum/pulley, a line member that can be wound onto and off the drum/pulley, the line member being operatively associated with the screen such that as the screen is extended, the line member is wound onto the drum/pulley, and as the screen is retracted, the line member is wound off the drum/pulley, the screen, when wound about the supporting member, having a diameter which increases as the screen material is wound about supporting member, and which decreases as the screen material is unwound from the supporting member, the diameter of the drum/pulley, at the position where the line member winds onto the drum/pulley or off the drum/pulley, 3 This illustrative claim is quoted from the Claims Appendix ("Claims App.") accompanying the Appeal Brief. 2 Appeal2014-006964 Application 11/884,689 being about the same diameter of the supporting member containing the screen, the line member being operatively attached to the front edge area of the screen, the line member comprises: a first part which winds onto and off the drum/pulley, a second part which is attached to the first part via a joiner block, the first [sic] part being operatively connected to an upper front edge area and a third part which is attached to the first part via the joiner block, the third part being operatively connected to a lower front edge area of the screen, and wherein the line member is configured such that the joiner block moves in an opposite direction to the direction of movement of the front edge area of the flexible screen. References Gambon us 1,134,326 Apr. 6, 1915 O'Connor us 2,013,500 Sept. 3, 1935 npnfAn TN 11SU~ Li.QO T11nP L1. 1 O/:;Q _L.J V_l__I_LV_l__I_ '--' u -..1,-..1vv,-.v__., .J \..-J-_l__l_V -., _I__/ VV Cheng US 2004/0154758 Al Aug. 12, 2004 Tussinger US 2005/0161175 Al July 28, 2005 Rejections I. The Examiner rejects claims 13, 15-20, 22-30, 32, 33, 51-54, and 56----67 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon. (Non-Final Action 2.) II. The Examiner rejects claims 35, 36, 39--44, and 46--49 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, Gambon, and O'Connor. (Id. at 4.) 3 Appeal2014-006964 Application 11/884,689 ANALYSIS Claims 13, 24, and 60 are the independent claims on appeal. (Claims App.) As the Appellants argue the independent claims separately, we address each individually below. But before doing so, we touch on a common theme threading through all of these arguments. The Appellants repeatedly direct our attention (see Appeal Br. 10, 19, 24, 31, 37, 47; Reply Br. 4, 5, 7, 13) to the Supreme Court's mandate that "rejections on obviousness grounds cannot be sustained by mere conclusory statements" and that "there must be some articulated reasoning with some rational underpinnings to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). We heed to this directive in our analysis. We note, however, the Supreme Court's caution that "[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation." KSR, 550 U.S. at 419. We additionally note that the Supreme Court provides precedent as to when a rejection on obviousness grounds can be sustained without a formalistic teaching, suggestion, and motivation. KSR, 550 U.S. at 416. For example, an obviousness rejection can be sustained when "a structure already known in the prior art" is "altered by the mere substitution of one element for another known in the field" and the combination "yield[ s] a predictable result." Id.; see also MPEP § 2143 Rationale (B). Also, an obviousness rejection can be sustained when "familiar elements" are combined "according to known methods" and the combination "yield[ s] predictable results." Id.; see also MPEP § 2143 Rationale (A). Thus, ifthe Examiner's reasoning falls within either of these precedents, the Examiner 4 Appeal2014-006964 Application 11/884,689 need not list a formal teaching, suggestion, or motivation in order for an obviousness rejection to be sustained. With these principles in mind, we tum to the Appellants' separate arguments for independent claims 13, 24, and 60. Independent Claim 13 Independent claim 13 recites a "screen assembly" comprising a "screen," a "supporting member," and a "drum/pulley" having a "cone configuration." (Claims App.) The Examiner finds that Denton discloses a screen assembly comprising a screen 52, a supporting member 46, and a cone-shaped drum 48. (See Non-Final Action 2; see also Denton Fig. 6.) Independent claim 13 also requires the "smaller" end of the cone- shaped drum/pulley to be "more proximate the screen." (Claims App.) In Denton's screen assembly, cone-shaped drum 48 is oriented in the opposite manner, with its larger end more proximate to screen 52. (See Denton, Fig. 6.) However; Gambon discloses cone-shaped drums having the claimed orientation; and the Examiner determines that "it would have been obvious to modify Denton to have the conical drums of Gambon." (Non-Final Action 4; see also Gambon, Fig. 3.) Thus, the Examiner proposes substituting one element (i.e., a cone- shaped drum having its larger end more proximate the screen) for another known in the field (i.e., a cone-shaped drum having its smaller end more proximate the screen). The Appellants do not assert that a cone-shaped drum having the claimed configuration is not conventional; and the Appellants do not assert that the Examiner's proposed substitution would not have yielded predictable results. As such, we are unpersuaded by the Appellants' arguments that the Examiner lists an incorrect, incomplete, or 5 Appeal2014-006964 Application 11/884,689 otherwise unsuitable teaching, suggestion, or motivation for the proposed substitution of known elements. (See Appeal Br. 18-19.) The Appellants also advance arguments premised upon the phrases "the orientation of the drums is not addressed" and "obvious design choice" which occur in the Examiner's rejection. (See Appeal Br. 10, 13-15; see also Reply Br. 3.) The Appellants' arguments implicate that the claimed orientation of the drum/pulley is absent in the prior art of record and that the Examiner is leaning solely on "obvious design choice" to compensate for this absence. (Id.) We are unpersuaded by these arguments because, as discussed above, the Examiner finds that Gambon shows the claimed orientation (see Non-Final Action 3) and this finding is supported by Gambon's disclosure (see Gambon Fig. 3). Insofar as the Examiner mischaracterizes the proposed substitution of drum orientations as an "obvious design choice," we do not consider this reversible error. Independent claim 13 additionally requires a "line member" to comprise a "first part," a "second part," and a "third part." (Claims App.) The Examiner finds that Tussinger teaches a single drum with a three-part line member; and the Examiner determines that it would have been obvious to provide Denton with such a line-drum arrangement. (See Non-Final Action 2; see also Tussinger Fig. 7 .) Thus, the Examiner proposes substituting one element (i.e., two drums and a separate line member for each) for another known in the field (i.e., one drum and a three-part line member). The Appellants do not assert a three- part line member is a not a conventional concept; and the Appellants do not assert that the Examiner's proposed substitution would not have yielded a predictable result. As such, we are unpersuaded by the Appellants' 6 Appeal2014-006964 Application 11/884,689 arguments that the Examiner lists an inapt, inaccurate, or otherwise inappropriate teaching, suggestion, or motivation for the proposed substitution of known elements. (See Appeal Br. 18-19.) Independent claim 13 further requires that the first and second parts of the line member be attached to the first part "via a joiner block." (Claims App.) The Examiner finds that Cheng teaches using a joiner at a cord junction and that it would have been obvious to use such a joiner in the three-part line member of Denton's modified screen assembly. (See Non- Final Action 3; see also Cheng Fig. 7.) Thus, the Examiner proposes a combination of familiar elements (i.e., the elements in Denton's modified screen assembly and a joiner block) where the prior art includes each element claimed, although not necessarily in a single prior art reference. The Appellants do not assert that a joiner block is not a conventional concept; and the Appellants do not assert that the Examiner's proposed combination would not have yielded predictable results. Although the Appellants contend and evidence that implementing a joiner block into the recited screen assembly is "complex" (Appeal Br. 17; Declaration 3-5), they do not contend that one of ordinary skill in the art could not have combined the elements as claimed by known methods. As such, we are unpersuaded by the Appellants' arguments that the Examiner lists an unfitting, unsupported or otherwise improper teaching, suggestion, or motivation for the proposed combination of familiar elements. (See Appeal Br. 19-20.) The Appellants argue that "the Denton screen assembly would require a substantial reconstruction and redesign of the elements shown in the primary reference to Denton to include the joiner block." (Appeal Br. 18.) 7 Appeal2014-006964 Application 11/884,689 We are unpersuaded by these arguments because the Examiner's rejection does not involve an incorporation of a joiner block into the elements shown in Denton's screen assembly. Instead, the Examiner's rejection involves first modifying Denton's screen assembly by the substitution of a three-part line member, and then incorporating a joiner block into the three-part line member. The Appellants do not adequately address why Denton's modified screen assembly (already having a three-part line member) would require a substantial reconstruction and redesign to accommodate a joiner block. Thus, we sustain the Examiner's rejection of independent claim 13 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I). Independent Claim 24 Independent claim 24, like independent claim 13, recites a "screen assembly" comprising a "screen," a "supporting member," and a "drumJpulley" having a "cone configuration." (Claims App.) Independent claim 24, like independent claim 13, also requires the "smaller" end of the cone-shaped drum/pulley to be "more proximate the screen." (Id.) With respect to the claimed orientation of the drum/pulley, the Appellants advance arguments the same or similar to those discussed above in connection with independent claim 13. (See Appeal Br. 23-32.) For the same reasons discussed above, we are unpersuaded by these arguments. Independent claim 24 further requires "a single drum/pulley only." (Claims App.) In Denton's screen assembly, there are two cone-shaped drums 48 and a corresponding arrangement of line members. (See Denton, Fig. 6.) The Examiner finds that Tussinger discloses a three-part line- member arrangement routed to a single drum and that it would have been 8 Appeal2014-006964 Application 11/884,689 obvious to provide Denton with such a single-drum arrangement. (Non- Final Action 2-3; see also Tussinger Fig. 7.) Thus, as discussed above in connection with independent claim 13, the Examiner proposes substituting one element (i.e., two drums and a separate line member for each) for another known in the field (i.e., one drum and a three-part line member). The Appellants do not assert that a single- drum arrangement is not known in the field; and the Appellants do not assert that the Examiner's substitution would not yield a predictable result. The Appellants do contend and evidence that "[t]his is a very complex procedure to implement" (Appeal Br. 22; see also Declaration 3-5), but they do not assert that one of ordinary skill in the art could not have substituted one known element for another. As such, we are unpersuaded by the Appellants' arguments and evidence that the proposed substitution would not save money and/or would not mitigate imbalances. (Appeal Br. 21.) As indicated above, if the Examiner's rejection satisfies KSR's simple- substitution precedent, the Examiner need not list a formal teaching, suggestion, or motivation in order for the rejection to be sustained. The Appellants also argue that "modifying the Denton assembly to have a single drum as taught by Tussinger creates a host of new issues and problems that have to be overcome and resolved to implement a functioning screen." (Appeal Br. 21.) However, as noted by the Examiner "every invention is a compilation of separate features, the alteration of any one of which may improve one aspect of the overall invention to the detriment of another." (Answer 4.) Tussinger shows that, at least in some situations, a single-drum arrangement may have advantages which outweigh occasioning drawbacks. 9 Appeal2014-006964 Application 11/884,689 The Appellants further argue that "modifying the Denton device to have a single drum instead [of] two requires changing the principle of operation of the Denton device being modified." (Appeal Br. 22.) We are unpersuaded by this argument because Denton's screen assembly would still operate by screen 52 being wound and unwound on support member 46. The drum-line arrangement causing movement of the support member 46 would be modified, but this principle of operation would remain the same. Thus, we sustain the Examiner's rejection of independent claim 24 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I). Independent Claim 60 Independent claim 60, like independent claim 13, recites a "screen," a "supporting member," and a "drum" having a "cone configuration" with its smaller end "more proximate the screen." (Claims App.) With respect to the claimed orientation of the cone-shaped drum; the Appellants advance arguments that are the same or similar to those discussed above in connection with independent claim 13. (See Appeal Br. 35--41.) For the same reasons discussed above, we are unpersuaded by these arguments. Independent claim 60, similar to independent claim 24, requires the drum to be "the only drum secured to the supporting member." (Claims App.) The Appellants advance arguments akin to those discussed above in connection with independent claim 24 (see Appeal Br. 32-35) and, for the same reasons discussed above, we are unpersuaded by these arguments. Thus, we sustain the Examiner's rejection of independent claim 60 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I). 10 Appeal2014-006964 Application 11/884,689 Dependent Claims The Appellants do not raise any additional issues for analysis with respect to dependent claims 15-20, 22, 25-30, 32, 33, 35, 36, 39--44, 46, 49, 51-54, 56-59, 61---63, and 65---67. (See Appeal Br. 19-20, 32, 42.) Thus, we sustain the Examiner's rejection of claims 15-20, 22, 25-30, 32, 33, 51-54, 56-59, 61---63, and 65---67 as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I); and we sustain the Examiner's rejection of claims 35, 36, 39--44, and 46--49 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, Gambon, and O'Connor (Rejection II). Claim 23 depends from independent claim 13 and further requires that "only a single drum/pulley is provided." (Claims App.) The Appellants advance arguments similar to those discussed above in connection with independent claim 24 (see Appeal Br. 45) and, for the same reasons discussed above, we are unpersuaded by these arguments. Thus, we sustain the Examiner's rejection of dependent claim 23 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I). Claim 64 depends from independent claim 60 and further requires a "joiner block" that "connects [a] single line structure to [a] double line structure." (Claims App.) The Appellants advances arguments akin to those for independent claim 13 (see Appeal Br. 45--48) and, for the same reasons discussed above, we are unpersuaded by these arguments. Thus, we sustain the Examiner's rejection of dependent claim 64 under 35 U.S.C. § 103(a) as unpatentable over Denton, Tussinger, Cheng, and Gambon (Rejection I). 11 Appeal2014-006964 Application 11/884,689 DECISION We AFFIRM the Examiner's rejections of claims 13, 15-20, 22-30, 32, 33, 35, 36, 39--44, 46, 49, 51-54, and 56----67. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation