Ex Parte Kenton et al

Patent Trial and Appeal Board

Nov 7, 2017

14184414 (P.T.A.B. Nov. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/184,414 02/19/2014 Gregory S. Kenton K92.12-0006 2965
27367 7590 11/09/2017
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
CHAVCHAVADZE, COLLEEN MARGARET
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY S. KENTON and ANTHONY J. MERTES
Appeal 2016-007298
Application 14/184,414
Technology Center 3600
Before ST. JOHN COURTENAY, III, ERIC S. FRAHM,
and JAMES W. DEJMEK, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of claim
1 (Non-Final Action mailed May 11, 2015). Claims 2—16 have been
withdrawn due to a restriction requirement (mailed May 9, 2014). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state the real party in interest is Blue Water Manufacturing
LLC. Br. 3.
Appeal 2016-007298
Application 14/184,414
Exemplary Claim
Appellants disclose and claim a collapsible safety rail system that
provides a portable or permanent protective barrier to prevent falls from
elevated or other work areas (Figs. 1—3; Spec. 2, 4, 5; Abst.). Sole
independent claim 1 under appeal, with emphases added, reads as follows
1. A collapsible safety rail system comprising a
plurality of safety rails, a plurality of support bases spaced from
each other on a substrate, each of said support bases having at
least two spaced and upstanding receiving posts thereon, each
of said plurality of safety rails having a left-hand post and a
right-hand post spaced from said left-hand post, a top rail
connected to and extending from said left-hand post to said
right-hand post, said left-hand post having a bottom end and
said right-hand post having a bottom end, a pivot assembly
interconnecting said bottom end of said left-hand post to a
receiving post on one of said plurality of bases and another
pivot assembly interconnecting said bottom end of said right-
hand post to a receiving post on another of said plurality of
bases both pivot assemblies having a tubular member, one end
of which is inserted in said receiving post on said support base
and is stationary therein, the opposite end of said tubular
member having a slotted section therein, an interconnecting
mounting element inserted in an opposite end of said tubular
member at the location of said slotted section, said
interconnecting mounting element having an upper cylindrical
post mount and a lower end shaft, said upper cylindrical post
mount having being insertable into the lower end of said left-
hand post or the lower end of said right-hand post and said
lower end of said shaft being connectable with the slotted end
section of said tubular member and the interconnecting
mounting element including a pivot pin for pivoting the left
hand and right hand posts between a generally horizontal
position and the upright position, whereby each of said safety
rails is collapsible from the upright position to the generally
horizontal position relative to said substrate by means of said
pivot assemblies.
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Application 14/184,414
The Examiner’s Rejections
(1) The Examiner rejected claim 1 based on the judicially created
doctrine of non-statutory obviousness-type double patenting, over claim 1 of
Kenton (US 8,689,938 B2; issued Apr. 8, 2014) (hereinafter, “Kenton
’938”).2 Non-Final Act. 4—6; Ans. 2—6.
(2) The Examiner rejected claim 1 as being unpatentable under
35 U.S.C. § 103(a) over Kenton (US 6,554,257 Bl; issued Apr. 29, 2003)
(hereinafter, “Kenton ’257”) and Schmidt (US 5,746,533; issued May 5,
1998). Non-Final Act. 2-4; Ans. 2.
Principal Issue on Appeal
Based on Appellants’ arguments (App. Br. 9-13; Reply Br. 5—7), the
following principal issue is presented:
Did the Examiner err in rejecting claim 1 as being unpatentable under
35 U.S.C. § 103(a) over Kenton ’257 and Schmidt as being obvious because
the references are not properly combinable and/or Schmidt is non-analogous
to Appellants’ invention recited in claim 1?
2 Because the Examiner’s Answer (Ans. 2) states that every ground of
rejection made in the Final Rejection is being maintained, the obviousness
double patenting rejection of claim 1 is before us on appeal. Appellants
have therefore not rebutted the Examiner’s prima facie case in regards to the
obviousness-type double patenting rejection of claim 1. Because Appellants
do not contest the merits of the obviousness-type double patenting rejection
of claim 1, no issue is presented by Appellants as to this rejection.
Therefore, we sustain the obviousness-type double patenting rejection of
claim 1 pro forma. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 14/184,414
ANALYSIS
We have reviewed the Examiner’s rejections (Non-Final Act. 2—6;
Ans. 2) in light of Appellants’ contentions in the Appeal Brief (App. Br. 9—
13; Reply Br. 5—7) that the Examiner has erred, as well as the Examiner’s
response to Appellants’ arguments in the Appeal Brief (Ans. 2—5). We
disagree with Appellants’ arguments and conclusions. With regard to claim
1, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Non-Final Act. 2-4;
Ans. 2), and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief (Ans. 2—5). We concur
with the conclusions reached by the Examiner as to claim 1, and highlight
and address specific findings and arguments for emphasis as follows.
We agree with the Examiner’s findings of fact regarding Kenton ’257
and Schmidt (Non-Final Act. 3^4; Ans. 2—5), as well as the Examiner’s
well-articulated rationale for combining the teachings of Kenton ’257 and
Schmidt (see Non-Final Act. 4; Ans. 2—5). Specifically, we agree with the
Examiner that (i) “it would have been obvious to one of ordinary skill in the
art to provide the collapsible safety rail system of Kenton ’257 with a pivot
assembly constructed to allow for the safety rails to be collapsible from an
upright/inline/in-use position to a collapsed/generally horizontal position
relative their supports, as taught by Schmidt, in order to provide a more
versatile and adaptable safety rail system which can be erected for use and
thereafter reconfigured for storage and transportation” (Non-Final Act. 4;
see also Ans. 2—3, 5).
Additionally, we agree with the Examiner (Non-Final Act. 2—A\ Ans.
2—5) that the combined teachings and suggestions of Kenton ’257 (related to
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Application 14/184,414
a similar type of collapsible safety rail system as disclosed and claimed by
Appellants) and Schmidt (related to a “lockable hinge mechanism” (Title)
for a “tubular framework” that “may be partially disassembled, folder or
otherwise collapsed” (col. 1,11. 17—19)) render obvious the subject matter
recited in claim 1.
Appellants’ arguments as to whether one of ordinary skill in the
collapsible safety rail art would have looked to Schmidt (in the collapsible
tubular frame art) to improve a collapsible safety rail system by using
Schmidt’s “pivot assembly constructed to allow for the safety rails to be
collapsible from an upright/inline/in-use position to a collapsed/generally
horizontal position relative their supports” (Ans. 4) (i.e., whether Schmidt is
analogous art), are unpersuasive. For the reasons that follow, we find
Schmidt (as well as Kenton ’257, which is drawn to “[a] collapsible safety
rail system for providing a portable or permanent protective barrier to
provide for fall prevention from elevated or other work areas” (Abst.)) to be
analogous to the subject matter recited in claim 1.
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011); Innovention Toys, LLC v. MCA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In reBigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
A reference is considered analogous prior art: (1) if the reference is from the
same field of endeavor as the claimed subjected matter, regardless of the
problem addressed, or (2) if “the reference still is reasonably pertinent to the
particular problem with which the inventor is involved,” even though the
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reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d
at 1325.
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
the art, because of the similarity to the structure and function of the claimed
invention as disclosed in the application. Id. at 1325—27. It is necessary to
apply “common sense’’ in “deciding in which fields a person of ordinary skill
would reasonably be expected to look for a solution to the problem facing
the inventor.” Id. at 1326 (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992)).
As to the “reasonably pertinent” test: A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the invention and the
prior art are important in determining whether the reference is reasonably
pertinent to the problem the invention attempts to solve. If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection. An inventor may well have been motivated to
consider the reference when making his invention. If it is directed to a
different purpose, the inventor would accordingly have had less motivation
or occasion to consider it. Clay, 966 F.2d at 659.
In the instant case, one of ordinary skill in the collapsible safety rail
art (as in either Kenton ’257 or Appellants’ claim 1) would have looked to
Schmidt (in the collapsible tubular frame art) to improve a collapsible safety
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Application 14/184,414
rail system by using Schmidt’s “pivot assembly constructed to allow for the
safety rails to be collapsible from an upright/inline/in-use position to a
collapsed/generally horizontal position relative their supports” (Ans. 4). In
other words, Schmidt addresses a problem (using hinges and/or a pivot
assembly to collapse a tubular frame) which is reasonably pertinent to the
collapsible safety rail system with pivot assemblies and tubular members
recited in claim 1, and it would have been common sense to look to Schmidt
since Schmidt deals with pivot assemblies for tubular members and
collapsible frames. See Bigio, 381 F.3d at 1326. Therefore, we find
Schmidt and Kenton ’257 to be analogous to the subject matter recited in
claim 1.
With regard to Appellants’ argument (see App. Br. 11—12) that Circuit
Check Inc. v. QXQInc., No 15-1155 (Fed. Cir. July 28, 2015) requires a
finding of non-analogousness, we disagree with this argument for the
following reasons.
In Circuit Check Inc. v. QXQInc., the Federal Circuit reversed and
remanded the Eastern District of Wisconsin’s judgment as a matter of law
that three patents were obvious in light of the prior art. At trial, QXQ argued
that rock carving, where a varnish is applied to rocks and scraped off to
make a design, is analogous to circuit board interface plates, where an
additional layer of paint is applied and then scraped off to mark holes. Not
convinced, the jury determined the patents were nonobvious over the rock
carving prior art. Following the jury’s verdict, the district court overturned
the jury and found the patents were obvious over this art.
The Federal Circuit noted that the underlying facts are presumed to
have been resolved in favor of the winning party, here the patent owner, and
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Application 14/184,414
then it is to be determined if the legal conclusion is correct in light of those
facts. With this background, the Federal Circuit found the jury’s factual
determination that the prior art was not analogous was supported by
substantial evidence. The Federal Circuit stated that the question for
analogous art is not whether an inventor knows of prior art, but whether they
would look to the art to solve the problem. Then, the Federal Circuit
reversed the district court’s finding of obviousness.
Although we agree with Appellants (App. Br. 11—12) that (i) rock
carving and circuit board interface plates may be unrelated (as in Circuit
Check Inc. v. QXQ Inc.)', and (ii) references drawn to concepts within the
common knowledge of humankind may not necessarily be analogous art to
claimed subject matter, we cannot agree with Appellants (App. Br. 12) that
Schmidt is not reasonably pertinent to the problem faced by Appellants
and/or related to the claimed invention. In the case before us, because
Schmidt is concerned with the problem of using hinges and/or a pivot
assembly to collapse a tubular frame, Schmidt is reasonably pertinent to
Appellants’ problem of collapsing safety rails (i.e., tubular members) using
pivot assemblies (see e.g., claim 1; Abs.).
In view of the foregoing, we agree with the Examiner (Ans. 4—5) that
Kenton ’257 and Schmidt are analogous to the subject matter recited in
claim 1, and thus, are properly combinable. Accordingly, we sustain the
Examiner’s obviousness rejection of claim 1 over the combination of Kenton
’257 and Schmidt.
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Application 14/184,414
Summary
In view of the foregoing, Appellants have not persuasively shown that
(i) the base combination of Kenton ’257 and Schmidt fails to teach or
suggest a collapsible safety rail system as recited in claim 1; and/or
(ii) Schmidt is non-analogous art.
CONCLUSIONS
(1) Appellants have not shown that the Examiner erred in rejecting
claim 1 based on the judicially created doctrine of non-statutory
obviousness-type double patenting.
(2) Appellants have not shown the Examiner erred in rejecting claim 1
as being obvious over the combination of Kenton ’257 and Schmidt.
Schmidt is analogous art as it pertains to the subject matter recited in claim
1. Therefore, the Examiner did not err in rejecting claim 1 as being obvious
over the combination of Kenton ’257 and Schmidt.
DECISION
(1) The Examiner’s rejection of claim 1 based on the judicially
created doctrine of non-statutory obviousness-type double patenting, over (a)
claim 1 of Kenton ’938 is affirmed pro forma.
(2) The Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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