Ex Parte Hillman et al

Board of Patent Appeals and Interferences

Sep 28, 2006

09724279 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL D. HILLMAN, EVAN T. WARD, and PAUL B. SPECHT
____________

Appeal No. 2006-1919
Application No. 09/724,279
Technology Center 3600
____________

ON BRIEF1
____________

Before CRAWFORD, LEVY, and FETTING, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 12,
13, 15, 17, 18, 38-41 and 49-51. Claims 1-11 have been allowed. Claims 19-37,
46-48 and 54-72 have been withdrawn from consideration. Claims 52 and 53 have
been cancelled. Claims 14, 16, and 42-45 have been objected to (brief, page 2).

We AFFIRM.

1 The Oral Hearing scheduled for August 10, 2006 has been waived by appellants in a communication filed, via
facsimile, on July 21, 2006.
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Application No. 09/724,279

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BACKGROUND
The appellants’ invention relates to a cordless blind (specification, page 1).
In particular, the appellants’ invention relates to a cordless blind having one or
more spring motors to balance the bottom rail of the blind, independent of the
extent to which the blind or shade is raised or lowered (specification, page 3).

Claim 12 is representative of the invention and is reproduced as follows:
A cordless blind comprising:
a headrail;
a bottom rail suspended from the headrail by a first cord and a second cord;
a window covering disposed between the headrail and the bottom rail;
a drive actuator including:
a spool,
a spring motor coupled to the spool,
a biasing element coupled to the spring motor and configured to
provide a force biased against movement of the bottom rail, and

a bias adjustment mechanism coupled to the biasing element, the bias
adjustment mechanism being configured to provide a selective variable
application of a biasing force by the biasing element.

The prior art references of record relied upon by the examiner in rejecting
the appealed claims are:
Griswold 350,429 Oct. 5, 1886
Judkins et al. (Judkins) 5,176,192 Jan. 5, 1993
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Kuhar 5,482,100 Jan. 9, 1996
Claims 12, 13, 15, 17, 18 and 49-51 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kuhar in view of Griswald.
Claims 38-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kuhar in view of Judkins.
Rather than reiterate the conflicting viewpoints advanced by the examiner
and the appellants regarding the above-noted rejections, we make reference to the
answer (supp. answer, mailed May 5, 2004) for the examiner's complete reasoning
in support of the rejections, and to the brief (filed June 16, 2003) and reply brief
(filed November 7, 2003) for the appellants’ arguments thereagainst.
Only those arguments actually made by appellants have been considered in
this decision. Arguments which appellants could have made but chose not to make
in the brief have not been considered. See 37 C.F.R. § 41.37(c)(1)(vii)(eff. Sept.
13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully considered the
subject matter on appeal, the rejections advanced by the examiner, and the
evidence of obviousness relied upon by the examiner as support for the rejections.
We have, likewise, reviewed and taken into consideration, in reaching our
decision, appellants' arguments set forth in the briefs along with the examiner's
rationale in support of the rejections and arguments in rebuttal set forth in the
examiner's answer.
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Upon consideration of the record before us, we make the determinations
which follow. We begin with the rejection of claims 12, 13, 15, 17, 18 and 49-51
under 35 U.S.C. § 103(a) as being unpatentable over Kuhar in view of Griswald.
We observe at the outset appellants’ statement (brief, page 6) that the claims of this
group stand or fall together. Consistent with this statement, appellants argue the
limitations of independent claim 122. Accordingly, we select claim 12 as
representative of the group.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of obviousness. See In
re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to
provide a reason why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching, suggestion or
implication in the prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d
1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir.
1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of
complying with the burden of presenting a prima facie case of obviousness. Note

2 Although the brief (page 12) includes in heading (c) a statement that claims 49-51 are not obvious over Kuhar in
view of Griswald, we note that in the short discussion that follows, that the patentability of claims 49-51 is based
upon the arguments presented for the patentability of the other claims in the group.
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In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If
that burden is met, the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039, 228
USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ
143, 147 (CCPA 1976).

Turning to claim 12, we find from our review of the record that the teachings
of Kuhar and Griswold would have suggested to an artisan, for the reasons
advanced by the examiner and amplified by our comments, infra, the obviousness
of the invention recited in claim 12. The examiner's position (answer, pgs. 6-7) is
that Kuhar teaches a cordless blind comprising a headrail, a bottom rail suspended
from the headrail by a first cord and a second cord, a window covering disposed
between the headrail and the bottom rail. The examiner asserts that Kuhar teaches
a drive actuator that includes a spool and a spring motor coupled to the spool.
The examiner notes that Kuhar fails to teach the “biasing element” and the
“bias adjustment mechanism” recited in the last two paragraphs of claim 12. To
overcome this deficiency of Kuhar, the examiner turns to Griswold for a teaching
of these two limitations, and makes the following argument in support of this
combination:
Griswold discloses a well known adjustment system in the form of knobs
and threaded member g and spring K. It is noted that the adjustment knob is
necessarily accessible from outside of the device. Such is used to adjust the
force exerted by the spring. One of ordinary skill in the art experiencing
problems with different sized blinds being operated by a spring motor would
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have looked to the prior art for a means to adjust the tension exerted by a
spring motor and would have found Griswold, It would have been obvious
to modify Kuhar to have such an adjustment system as taught by Griswold
so as to adjust the blind operation to accommodate different sized blinds.
While the knob is not threaded onto the axle g, such is an obvious
attachment expedient.

Appellants' position (brief, page 9) is that the Kuhar and Griswold references
are neither analogous art, nor in the same field of endeavor.3 Respecting the Kuhar
reference, appellants state that “Kuhar relates to cordless blinds wherein a constant
variable spring motor is adapted to balance the blinds by providing a variable force
that is ‘at its highest level when the blind … is fully raised … [and] at its lowest
point when the window covering is fully lowered.” (brief, page 9). Respecting the
Griswold reference, appellants state that “Griswold does not attempt to provide a
balanced system at all, let alone attempt to balance a varying amount of weight.”
(brief, page 10). Appellants further argue (brief, page 10) that :
While Griswold’s suspension device purports to ‘counterbalance’ the
suspended article, it is apparent from the specification that, by design, the
suspension device will unwind under to the weight of the suspended article
in the absence of the force applied by the brake J. Griswold does not
disclose or suggest that the weight of the suspended article varies as the
cords B are wound onto and unwound from the drum A, or that the
suspension device is configured or intended to balance either a constant or
varying weight. Because the weight of the suspended article is not variable,
and Griswold does not attempt to balance the weight of the suspended
article, it follows that Griswold also does not endeavor to use a spring motor
to balance a varying weight as addressed in Kuhar.

3 See appeal brief, pg. 9, 2nd paragraph. The brief refers to a prior art reference, Carouso, that was not actually relied
upon by the examiner in the rejection of claim 12. This is noted in the examiner’s answer and the reply brief.
Accordingly, the Carouso reference has not been relied upon in deciding this appeal.
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Appellants assert (brief, page 10) that the examiner has provided no factual
basis for a suggestion or motivation to combine the references, and that the
examiner’s assertions are conclusory and rely on an improper hindsight analysis.
In support of this position, appellants state that “Kuhar does not suggest engaging
the spring motor with a biasing element and bias adjustment mechanism, and
Griswold does not suggest implementing the brake J and drum A to engage the
spring motor of a cordless blind to assist with balancing a varying weight.”
The examiner responds that “one faced with Appellants’ particular problem,
i.e. the ability of a spring motor used to support suspended articles to be adjusted
so that it may be in a balanced condition regardless of the weight of the suspended
articles, would have looked to the art precisely related with this objective and
would have found Griswold” (answer, page 6). The examiner (answer, pages 6
and 7) cites portions of Griswold (from pages 1 and 2) to support the position that
“[T]he spring system K,g, of Griswold is used to adjust the amount of force that
the spring C applies to winding of the cords B onto the spool A (answer, page 7).”
In the reply brief (page 2), appellants’ assert that “contrary to the Examiner’s
position, a person skilled in the art would not be motivated to add Griswold’s brake
mechanism to Kuhar’s cordless blind system because Griswold’s brake applies
force only in the direction of unwinding a cord or chain.” Appellants further
assert (reply brief, pages 2 and 3) that Griswold brakes in one direction only and
that Griswold only works when the object is too heavy (i.e. the downward force of
the object is greater than the upward force being exerted on the object by the
springs.
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From our review of Kuhar, we find that Kuhar is directed to a venetian
blind or shade in which lifting cords and locking mechanisms are eliminated (col.
1, lines 9 and 10). The invention features techniques for increasing the friction on
the cords used to raise and lower the blinds to assist in maintaining a desired
position against any spring force which may exist through the range of travel of the
bottom bar (col. 2, lines 19-23). It is disclosed that the force is at its highest level
when the blind is fully raised and is at its lowest level when the blind is fully
lowered (col. 2, lines 42-47). The features of the invention are accomplished by
providing selection criteria for the springs, providing additional spring motors, and
the use of friction imparting devices (col. 2, lines 54-58). Kuhar additionally
discloses that although springs varying in width and height are shown, other
spring configurations could be used, such as for example, a spring with a round
cross-section (col. 3, lines 61-66). Kuhar further describes a headrail, (Fig. 7,
element 94) a bottom rail suspended from the headrail by a first and a second cord,
(Fig. 7, element 92) a window covering disposed between the headrail and the
bottom rail, (Fig. 7, generally) and a drive actuator that includes a spool and a
spring motor coupled to the spool. Fig. 2 shows a spool 30 coupled to the spring
motor illustrated by storage drum 10, output drum 20, and spring 45. Kuhar
additionally discloses slots 56 for increasing the tension on cord 52 (col. 4, lines
52-54). From the disclosure of Kuhar, we find that the reference addresses the
problem of adjusting the springs as necessary to compensate for heavier or wider
window coverings. (See also col. 2, lines 57 and 58).
Turning to Griswold, we find that Griswold relates, inter alia, to devices
employed to counterbalance the weight of an article suspended from a support so
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that the article will remain at any position into which it may be vertically adjusted,
and yet can be easily raised (page 1, lines 8-13). Griswold describes a coiled
spring C that acts as a counterbalance for the article suspended from the cords B
(col. 1, lines 39-44). Element J designates a disk brake (page 1, lines 98 and 99).
The portions of Griswold relied upon by the examiner (answer, page 4) show that
spring K is used to adjust the amount of force that the applied by the spring C.
Griswold further discloses (page 2, lines 43-51) that in order to vary the pressure in
which the brake will act upon the drum, bow-shaped springs K have their ends
bearing upon the brake. They may be adjusted toward and from the brake so as to
increase or decrease their resistance. As noted by the examiner (answer, page 4)
Griswold describes the thumb-screws g being used to increase or decrease the
pressure that the spring K applies to the spring C.
From the disclosure of Kuhar of recognizing the need to accommodate the
different widths and heights of blinds by varying the type of spring, the width of
the spring or the thickness of the spring, we find that an artisan would have been
motivated to have a mechanism that was capable of adjusting the spring instead of
having to replace the spring. From the disclosure of Griswold of having a device
for counterbalancing the weight of a suspended article so that the article may
remain at whatever vertical position it was adjusted to, we find that an artisan
would have been motivated to provide the adjustable blind balancing mechanism
of Kuhar with a biasing element and bias adjustment mechanism as taught by
Griswold.
We note that appellants have not argued that the combination of Kuhar and
Griswold is insufficient to meet the limitations of claim 12. Rather, appellants
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focus their arguments on an alleged lack of motivation to combine these two
teachings to arrive at the claimed invention.
We are not persuaded by appellants’ assertion that there is no motivation or
suggestion to combine the teachings of the references. As aptly stated by the
examiner (answer, page 6) the problem appellants’ address is “the ability of a
spring motor used to support suspended articles to be adjusted so that it may be in
a balanced condition regardless of the weight of the suspended articles.” As noted
above, Kuhar makes note of this problem throughout his disclosure and suggests
ways of dealing with it. These ways include varying the width, thickness and type
of spring used. From this disclosure and the disclosure of Griswold, an artisan
would have been taught to provide an adjustable spring instead of replacing the
type or structure of spring used. We additionally agree with the examiner (answer,
page 7 ) that an artisan would have been led to Griswold because the reference is
directed to counterbalancing the weight of an article suspended from a support so
that the article will remain in any position into which it may be vertically adjusted ,
and yet can be easily raised. We add that an artisan would look to Griswold for a
way of employing an external bias adjustment mechanism that works by increasing
or decreasing the friction that is applied to a spring.
Appellants’ argument that Griswold only brakes in one direction is noted,
but is unpersuasive because Kuhar is concerned with balancing blinds in both
directions and suggests the use of springs as a way of achieving proper balancing
(regardless of whether the object is too heavy and moves downward, or is too light
and moves upward).
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Nor are we persuaded by appellants’ assertion (brief, page 9) that with
respect to Kuhar, Griswold is not analogous art, nor in the same field of endeavor.
As noted, supra, from the disclosure of Griswold that the reference is directed to
counterbalancing the weight of an article suspended from a support so that the
article will remain in any position into which it may be vertically adjusted , and yet
can be easily raised, we find that Griswold is in the same field of endeavor as
Kuhar and is analogous art.
Nor are we persuaded by appellants’ assertion (brief, page 10) that
Kuhar neither discloses or suggests coupling a biasing element to the spring motor
and coupling a bias adjustment element to the biasing element because it is
Griswold is relied upon for these features. In addition, although the phrase “spring
motor” does not appear in Griswold, we find from the recited structure of the
spring and the spring biasing device that Griswold discloses a spring motor which
is adjustably biased by bow shaped springs hat are biased against brake J.
Moreover Kuhar suggests the combination by disclosing that the spring be changed
to accommodate different widths and heights of blinds.
From all of the above, we hold that the combined teachings of Kuhar and
Griswold would have suggested the language of claim 12 and are not convinced of
any error on the part of the examiner. Accordingly, the rejection of claim 12, and
claims 13, 15, 17, 18 and 14, 9-51, which fall with claim 12, is sustained.
We turn next to the rejection of claims 38-41 under 35 U.S.C. § 103(a) being
unpatentable over Kuhar is view of Judkins. We note at the outset that appellants’
only present arguments for claim 38. Accordingly, we select claim 38 as
representative of the group.
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The examiner's position (answer, page 8) is that Kuhar teaches a cordless
blind comprising a headrail, a bottom rail suspended from the headrail, a window
covering disposed between the headrail and the bottom rail, and a spring motor
being adapted to apply a force to the bottom rail in the direction of the headrail.
The examiner asserts (answer, page 11) that Kuhar fails to teach or suggest
altering the weight of the bottom rail to balance the system. To overcome this
deficiency of Kuhar, the examiner turns to Judkins for the disclosure of this
limitation and makes the following argument (answer, page 5) in support of the
combination:
One way to provide weight to the bottom rail of a blind, which is desirable
for a variety of reasons, e.g. better hanging characteristics, is to provide a
weight in the form of a bar W, seen in Figs. 23 and 24. It would have been
obvious in view of this teaching to provide Kuhar with such a weight to also
achieve, for example, better hanging characteristics.

Appellants’ position is that “Neither Kuhar nor Judkins et al. discloses or
suggests applying a varying amount of weight to a bottom rail to counterbalance
the force applied by a spring motor.” (Appeal brief, pg. 11). Appellants state that
Judkins “contains no disclosure or suggestion of using the weight W to
counterbalance the force of a spring motor as recited in claim 38 because the shade
does not have a spring motor, and the locking mechanism locks the shade in
place.” (Appeal brief, pgs. 11-12).
The examiner appears to agree that neither reference—when taken alone—
discloses this limitation. However, the examiner asserts that the combination of
these two references meets this limitation and that these references are combinable
because they are clearly analogous art. (answer, page 8).
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In the reply brief Appellants assert (reply brief, page 3) that Judkins and
Kuhar are not analogous. Appellants concede (id.) that both references relate
broadly to blinds and shades, but assert that “Kuhar relates to cordless blinds
wherein variations in the weight of the blind affect the ability of the blind to be
balanced in a given position, whereas Judkins relates to a traditional corded blind
that is not balanced by a spring motor and instead includes a locking mechanism to
control the raising and lowering of the shade to maintain the bottom rail in a fixed
position” (reply brief, page 3). Appellants then conclude that “one skilled in the
art would not be motivated to look to corded blinds for solutions to balancing
cordless blinds.” (reply brief, page 3).
From our review of the Kuhar and Judkins references, we find that the
references, when combined, would have suggested to an artisan all of the
limitations of claim 38, as advanced by the examiner. At the outset, we find that as
acknowledged by appellants (reply brief, page 3), “the references relate broadly to
blinds and shades” and (id.) “Judkins et al. relates to a traditional corded blind.”
Both references are analogous art because they are both directed to corded blinds.
We presume appellants are correct in noting that Judkins generally relates to
a corded blind system4. However, Appellants are incorrect in asserting that
Judkins is not at all concerned with balancing blinds. Judkins discloses bottom
rails generally, and discloses adding weights to bottom rails to pull the shade in a
downward direction (col. 2, lines 10 and 11). Judkins further discloses that the
bottom rail is balanced to help offset curling or rolling of the shade (col. 4, lines 11

4 Although Judkins does not specifically refer to the term blind, because the reference is directed to a shade, and
appellants assert on the record (reply brief, page 3) that Judkins is directed to a traditional corded blind, we find that
the disclosure of a shade in Judkins also refers to or suggests a blind.
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and 12). It is further disclosed (col. 8 lines 35-40 and 53-54) that the weight is
placed in the bottom rail to center the web section of the shade beneath the load for
the stiffness needed to support a relatively heavy shade, and to assist in lowering of
the shade in an even and aesthetically pleasing manner, which will minimize
rolling of the shade during operation. Judkins additionally discloses that the
weight should be placed in the bottom rail to prevent rolling. From this disclosure,
we find that an artisan faced with the problem of keeping a heavy shade balanced
to prevent it from rolling up, would have been motivated to add weights to the
bottom rail of the shade as taught by Judkins. Thus, one of ordinary skill in the art
that was faced with the problem of balancing a bottom rail—regardless of whether
it was corded or cordless—would have looked to Judkins for a teaching of putting
weights in the bottom rail of a blind/shade in order to balance the bottom rail. We
are not persuaded by appellants’ assertion (brief, page 11) that neither reference
discloses or suggests applying a varying amount of weight to a bottom rail to
counterbalance the force of a spring motor because it is the combined teachings of
the references that must be considered. From the disclosure of Judkins of
providing an optional weight in the bottom rail to pull the shade in a downward
direction to center the wide web section of the shade beneath the load for the
stiffness needed to support a relatively heavy shade, we find that an artisan would
have been motivated to add weights to the bottom rail of Kuhar as an alternative to
or in addition to modifying the force provided by the spring member.
Accordingly, we do not agree with appellants (brief, page 12) that the combination
of Kuhar and Judkins is based upon impermissible hindsight.
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Nor are we persuaded by appellants’ assertion (brief, page 11 and
reply brief, page 3) that in Judkins, there is no suggestion of altering the weight of
the bottom rail to balance the system and that balancing the blinds is not an issue.
From the disclosure of Judkins (col. 4, lines 6-12) that adding the weight to the
bottom rail causes the shade to be balanced to help offset curling and rolling, we
find that keeping the shade balanced is an issue in Judkins and that altering the
weight of the shade will balance the system.
From all of the above, we find that the combined teachings of Kuhar and
Judkins would have suggested to an artisan the language of claim 38, and we are
not convinced of any error on the part of the examiner in rejecting claim 38.
Accordingly, the rejection of claim 38, and claims 39-41, which fall with claim 38
is sustained.

CONCLUSION
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To summarize, the decision of the examiner to reject claims 12, 13, 15, 17,
18, 38-41 and 49-51 under 35 U.S.C. § 103 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)(1)(iv).

AFFIRMED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1919
Application No. 09/724,279

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ANTHONY J. SITKO
MARSHALL, GERSTEIN & BORUN
6300 SEARS TOWER
233 SOUTH WACKER DRIVE
CHICAGO, IL 60606-6357

SL/lg