Ex Parte Kain

Board of Patent Appeals and Interferences

Apr 21, 2008

09871199 (B.P.A.I. Apr. 21, 2008)

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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES M. KAIN
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Appeal 2008-0200
Application 09/871,199
Technology Center 3600
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Decided: April 21, 2008
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Before WILLIAM F. PATE, III, TERRY J. OWENS and DAVID B.
WALKER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 5-9, 11-14 and 25-301. Claims 1-3 and 10 have been

1 The Examiner’s rejection of claims 11, 12 and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over Markel, and rejection of claims 4 and 31 under
35 U.S.C. § 103(a) as unpatentable over Lemmeyer in view of Marrujo and
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canceled, claims 15-24 have been allowed, and claims 4 and 31 stand
allowable in view of the Examiner’s withdrawal of his rejection. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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The Appellant claims a child car seat having an armrest with a support
mount where a first fastener secures the support mount to the seat back so
that the first fastener lies above the arm.
Independent claim 6 reads as follows:
6. A juvenile vehicle seat assembly comprising
a seat including a seat bottom and a seat back,
a cantilevered armrest projecting from the seat back, the
cantilevered armrest including an arm and a support mount
appended to the arm and coupled to the seat back to support the
arm in a cantilevered position,
a first fastener coupled to the support mount and the seat
back to maintain the arm in the cantilevered position, the first
fastener being arranged to lie above the arm to cause the arm to
lie between the first fastener and the seat bottom, and
wherein the support mount includes an inner flange
coupled to the arm and an outer flange coupled to the arm and
positioned to lie in spaced-apart relation to the inner flange to
receive a ridge of the seat back in a U-shaped channel formed in
the support mount between the inner and outer flanges and
wherein the first fastener extends through the inner and outer
flanges.

Independent claims 11, 12 and 13 similarly recite a first fastener that
lies above the top surface of the arm. Independent claim 25 recites a means
for fastening the support mount to the seat back above, and below, the arm.
Deloustal have both been withdrawn (Ans. 3). However, claims 11, 12 and
27-29 remain rejected on other grounds, and thus, are appealed.
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Independent claim 27 recites a support mount including an upper wing that
rises above the top surface of the arm, a lower wing that extends below the
top surface of the arm, and fasteners coupling the upper and lower wings to
secure the armrest to the seat back.
The prior art relied upon by the Examiner in rejecting the claims is:
Mitchell 207,764 Sep. 3, 1878
Van Hekken 5,297,851 Mar. 29, 1994
Lemmeyer 6,478,372 Nov. 12, 2002
Marrujo Des. 254,889 May 6, 1980

The Examiner rejected claims 6-9, 11, 12, 25 and 27-29 under
35 U.S.C. § 103(a) as unpatentable over Lemmeyer in view of Marrujo.
The Examiner also rejected claims 13, 14 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Lemmeyer in view of Marrujo and Mitchell.
The Examiner further rejected claims 5 and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Lemmeyer in view of Marrujo and Van
Hekken.
We REVERSE.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Appellant has shown that the Examiner erred in
rejecting claims 6-9, 11, 12, 25 and 27-29 as unpatentable over Lemmeyer in
view of Marrujo.
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2. Whether the Appellant has shown that the Examiner erred in
rejecting claims 13, 14 and 26 as unpatentable over Lemmeyer in view of
Marrujo and Mitchell.
3. Whether the Appellant has shown that the Examiner erred in
rejecting claims 5 and 30 as unpatentable over Lemmeyer in view of
Marrujo and Van Hekken.

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., 127 S.Ct. 1727,
1734 (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., 383 U.S. 1, 17-18
(1966). The Court further explained, “[o]ften, it will be necessary for a
court to look to interrelated teachings of multiple patents; the effects of
demands known to the design community or present in the marketplace; and
the background knowledge possessed by a person having ordinary skill in
the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.”
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KSR, 127 S.Ct. at 1740-41. The Court noted that “[t]o facilitate review, this
analysis should be made explicit,” but “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim” Id. at 1741, citing
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In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Furthermore, in construing means-plus-function claim language in
accordance with 35 U.S.C. § 112, ¶ 6, one must “look to the specification
and interpret that language in light of the corresponding structure, material,
or acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure.” In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994).

ANALYSIS
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Claims 6-9, 11, 12, 25 and 27-29
These claims stand rejected as unpatentable over Lemmeyer in view
of Marrujo. The Examiner states that Lemmeyer discloses a seat assembly
that satisfies all of the limitations of these claims except for coupling of the
first fastener above the arm which is disclosed in the Appellant’s
Specification as being implemented via the upper wings (Final Office Action
2). The Examiner relies on Marrujo for disclosing such wings (Final Office
Action 2; Ans. 4). The Examiner asserts that provision of such wings would
be a matter of design choice, that it is well known to use wider support
mount for greater support, and that such wings would simplify
manufacturing by eliminating the need for cutting out portions of the seat
back as required by the tongue and groove construction of Lemmeyer (Final
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Office Action 3 and 4; Ans. 7-8). Thus, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify the seat
assembly of Lemmeyer to include wings disclosed in Marrujo to result in the
invention claimed where the first fastener lies above the arm (Final Office
Action 3; Ans. 9).
With respect to independent claim 6, the Appellant argues that if the
seat back of Lemmeyer is implemented with the leg of Marrujo, the armrest
would no longer abut upper and lower shelves as taught by Lemmeyer
thereby reducing the support to the arm rest (App. Br. 6). In addition, the
Appellant argues that there is no teaching or suggestion that would have
motivated one of ordinary skill in the art to replace the arm rest of
Lemmeyer with the leg of Marrujo, and that the leg of Marrujo provides no
mechanical (or other) advantage over the arm rest of Lemmeyer (App. Br.
6). Thus, Appellant contends that it would not have been obvious to replace
the arm of Lemmeyer with the leg of Marrujo (App. Br. 6).
In our view, we agree with the Appellant that no motivation has been
established by the Examiner as to why one of ordinary skill in the art would
combine these references in the manner suggested. We fail to see how the
leg disclosed in Marrujo relates to the armrest of Lemmeyer. Technical
problems associated with arm rests are very different from those of legs.
The arm rest of Lemmeyer is a laterally extending, cantilevered beam
member for supporting the arm of a user and is subjected to bending loads.
In contrast, the leg of Marrujo is a vertically extending member that is fixed
at both ends for supporting the seat and the weight of the user under
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compressive loading without buckling. Thus, we find that the Examiner’s
reliance on the leg disclosed in Marrujo is inappropriate.
The Examiner’s statement that provision of wings is merely a matter
of design choice is not persuasive and is effectively refuted by the Appellant,
who contends that locating the fastener above the arm provides a mechanical
advantage over the arm rest of Lemmeyer (App. Br. 6 and 8). The
Examiner’s statement that a wider support mount provides greater support is
well founded for compressive loads as applied in the leg of Marrujo because
a wider mount would distribute loading over a larger area. However, the
Examiner’s reasoning is not persuasive with respect to the beam loading of
the cantilevered arm rest where the load acts to separate the arm rest from
the seat back. The wide support mount of the arm rest would not function to
distribute loading, but rather, function to move the load points on the arm
rest and the seat back, with corresponding changes to the magnitude of the
load based on the dimension of the wing (which acts as a lever arm).
We further disagree with the Examiner’s assertion that such a feature
would simplify manufacturing. While it may make sense for one of ordinary
skill to implement the mounting of the arm rest with an enlarged groove so
that it engages the peripheral surface of the seat back without requiring
cutting of the seat back as articulated by the Examiner, the Examiner has not
articulated a reason as to why one of ordinary skill would provide a wider
support mount via the wings, or couple the fastener above the arm. The
Examiner has not articulated any other reasons for modifying the arm rest of
Lemmeyer to result in the invention of claim 6.
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Therefore, the Appellant has shown that the Examiner erred in
rejecting independent claim 6 as unpatentable over Lemmeyer and Marrujo.
The Appellant further separately argued claims 7-9 but these arguments are
moot because these claims ultimately depend from independent claim 6
discussed above (App. Br. 7). Therefore, Examiner erred in rejecting
dependents claim 7-9 as unpatentable over Lemmeyer and Marrujo as well.
The rejected independent claim 11 recites a first fastener positioned
above the top surface of the arm that is coupled to apertures in the support
mount. The rejected independent claims 12 and 27 recite an upper wing
rising above the top surface of the arm and a first fastener positioned above
the top surface of the arm. The Examiner rejected these claims based on
Lemmeyer and Marrujo (Final Office Action 3 and 4; Ans. 10). The
Appellant relies on the arguments submitted with respect to independent
claim 6 to argue that these claims are patentable (App. Br. 8 and 9). Thus,
for the reasons discussed supra regarding the Examiner’s rejection of claim
6, the Appellant has also shown that the Examiner erred in rejecting
independent claims 11, 12 and 27. In addition, the Appellant has also shown
that the Examiner erred in rejecting dependent claims 28-29 that ultimately
depend from independent claim 27.
Claim 25 is in 35 U.S.C. § 112, sixth paragraph format and recites a
“means for fastening the support mount to the seat back above and below the
arm and on a side of the side edge to support the arm in a cantilevered
position to stabilize the arm against movement.” We refer to the drawings
and the Specification to interpret the recited means as corresponding to the
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upper wing 77, the lower wing 78, the fasteners 88, 89, the holes 86, 87 in
the wings and the seat back for receiving the fasteners, and equivalents
thereto (Figs. 1-3; Spec. 4, ll. 20-33; Spec. 6, ll. 3-15). The Examiner also
rejected this claim based on Lemmeyer and Marrujo (Final Office Action 3
and 4; Ans. 10). The Appellant again relies on the arguments submitted with
respect to independent claim 6 (App. Br. 8). Thus, for the reasons discussed
supra regarding the Examiner’s rejection of claim 6, the Appellant also has
shown that the Examiner erred in rejecting independent claim 25 as well.
Therefore, in view of the above, the Appellant has also shown that the
Examiner erred in rejecting claims 6-9, 11, 12, 25 and 27-29 as unpatentable
over Lemmeyer and Marrujo.

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Claims 13, 14 and 26
The Examiner rejected these claims as unpatentable over Lemmeyer
in view of Marrujo and Mitchell (Final Office Action 5; Ans. 11 and 12).
Independent claim 13 recites a first fastener that lies above the top surface of
the arm, and claim 14 depends from claim 13. Claim 26 depends from
independent claim 25 discussed supra. The Appellant’s separate argument
regarding this rejection is noted but is moot because Examiner’s application
of Mitchell does not cure the deficiencies of the inappropriate combination
of Lemmeyer and Marrujo (App. Br. 11). Thus, for the reasons discussed
supra regarding the Examiner’s rejection of claim 6, we find that the
Examiner erred in rejecting independent claim 13 and dependent claims 14
and 26 as well.
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Claims 5 and 30
Claims 5 and 30 depend from independent claims 11 and 27,
respectively. The Examiner rejected these claims as unpatentable over
Lemmeyer in view of Marrujo and Van Hekken (Final Office Action 7; Ans.
13). The Appellant again argues that the rejection is inappropriate because it
is based on the combination of Lemmeyer and Marrujo (App. Br. 12). We
agree. The Examiner’s application of Van Hekken does not cure the
deficiencies of the inappropriate combination of Lemmeyer and Marrujo.
Thus, the Appellant has shown that the Examiner erred in rejecting
dependent claims 5 and 30.

CONCLUSIONS
On the record before us, Appellant has shown that the Examiner erred
in rejecting claims 5-9, 11-14 and 25-30.

ORDER
The Examiner’s rejections of claims 5-9, 11-14 and 25-30 are
REVERSED.

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REVERSED

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JRG

Richard A. Rezek
Barnes & Thornburg
11 South Meridian Street
Indianapolis, IN 46204
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