Ex Parte Kotrla et alDownload PDFPatent Trial and Appeal BoardSep 28, 201613256615 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/256,615 09/14/2011 Johnnie Kotrla 64833 7590 09/28/2016 FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION) P.O. BOX 692289 HOUSTON, TX 77269-2289 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. OTD-031392US (CMRN:Ol23) CONFIRMATION NO. 5520 EXAMINER BAXTER, GWENDOLYN WRENN ART UNIT PAPER NUMBER 3632 MAILDATE DELIVERY MODE 09/28/2016 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 JOHNNIE KOTRLA, GARY R. DRIVER, and CARTER ERWIN1 Appeal2014-009348 Application 13/256,615 Technology Center 3600 Before WILLIAM A. CAPP, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Johnnie Kotrla et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-25. Appeal Br. 2. After the filing of Appellants' Appeal Brief, the Examiner withdrew the only grounds of rejection identified in the Final Office Action for claims 1-10. See Final Act. 3--4, Ans. 5. As a result, only the Examiner's decision to reject claims 11-25 remains. 2 We have jurisdiction under 35 U.S.C. § 6(b ). 1 According to Appellants, the Real Party in Interest is Cameron International Corporation. Appeal Br. 2. 2 We note that the Examiner's Final Office Action does not expressly apply the prior art to claim 23. Appellants, however, have not raised this as an issue and have not separately argued for the patentability of claim 23. From Appeal2014-009348 Application 13/256,615 We AFIRM-IN-PART. CLAIMED SUBJECT MATTER The subject matter of Appellants' application relates generally to "[a] safety-harness attachment for attaching a safety harness thereto." Spec. Abstract. Claims 11 and 17 are independent. Claim 11 is illustrative of the claimed subject matter, and recites: 1. A safety-harness attachment, comprising: a base portion; a first curved latching portion that generally curves between a first end and a second end, wherein the first curved latching portion terminates and fixedly couples to the base portion at the first and second ends; and a second curved latching portion that generally curves between a third end and a fourth end, wherein the second curved latching portion terminates and fixedly couples to the base portion at the third and fourth ends. Appeal Br. 44 (Claims App.). EVIDENCE The Examiner relies upon the following evidence: White '633 us 1,410,633 Mar. 28, 1922 White '302 us 1,541,302 June 9, 1925 Awbrey us 2,349,399 May 23, 1944 Currin us 2, 798,393 July 9, 1957 Middleton us 3,693,310 Sep.26, 1972 our review, claim 23 is directed to the same structural elements recited for claims 12 and 13, although claim 23 depends from claim 1 7 and claims 12 and 13 depend from claim 11. Therefore, our analysis of claims 12 and 13 applies equally to claim 23. 2 Appeal2014-009348 Application 13/256,615 REJECTIONS The Examiner rejects claims 11-25 as follows: I. claims 11 and 14 under 35 U.S.C. § 102(b) as anticipated by Currin; II. claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over Currin and Elkins; III. claims 11 and 15-17 under 35 U.S.C. § 103(a) as unpatentable over White '633 and White '302; IV. claims 11, 17-22, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable over Middleton and Awbrey. ANALYSIS Rejection I -Anticipation Claim 11 The Examiner finds Currin discloses each and every structural element recited for claim 11. Final Act. 4--5. Currin discloses a tool "for breaking or separating the coupling between adjacent hose sections." Currin 1:14--15. Currin's Figure 3, reproduced below, is illustrative of the tool disclosed. P:rc,..~ ·»>= / r .. \/··· 92'1 "" r1i/;~c:(~j ,,~ ,:~11i~:;;~J ~;6 t?. --'1 """" ·.:·: ' ' . ,.. ·•"-'-" l ~ J.& J.~'{_ /A \ r.. v~.t~~. ~ l ~ / ·:<>.<- '-···' _._.~.~ ·:~r~~;;:;zrz,,:::;;;7zzx9::d: ., ... y .JC> The above Figure 3 shows tool 12 attached to the platform of a fire truck 10. Id. 1:55-61. The Examiner finds, inter alia, side frames 18 with their 3 Appeal2014-009348 Application 13/256,615 integral U-shape seat 20 evidence the structural features that claim 11 describes for the first/second latching portions. Final Act. 4--5; Ans. 6. Currin describes the side frames 18, seats 20, and their configuration as follows: Secured fixedly at their lower ends to the opposite sides of the base plate are upstanding, identically formed side frames, each formed from a single piece of rigid rod material. The side frames have been designated at 18, each frame including vertical legs at opposite ends thereof, and a seat of U-shape integral at its upper end with the upper end of the legs. Currin 1:62---68. Appellants argue the Examiner errs by failing to recognize what the claimed structure does because claim 11 expressly recites a "safety-harness attachment" that requires a first and second "latching portion." Appeal Br. 12-13. For example, Appellants assert that, "[i]n sharp contrast to the claimed safety-harness attachment, the hose connecting and disconnecting tool 12 of Currin is used to assist a fireman in connecting and disconnecting a fire hose on a fire truck 10." Id. at 12. "Furthermore, given that the tool 12 of Currin is mounted to a fire truck 10, Appellants stress that there would be absolutely no reason to use a safety-harness to secure a fireman to the fire truck 1 0." Id. at 13. Appellants' focus on how the device of claim 11 is intended to be used is misplaced because "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Accordingly, Appellants' contention that the structure of claim 11 will be 4 Appeal2014-009348 Application 13/256,615 used to attach a safety harness does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with safety harnesses. Id. ("Schreiber's contention that his structure will be used to dispense popcorn does not have patentable weight if the structure is already known, regardless of whether it has ever been used in any way in connection with popcorn.") Appellants do not identify anything specific that is structurally different between the apparatus of claim 11 and the tool 12 Currin describes. Appellants do state, "the safety-harness limitation of the 'safety-harness attachment' recitation and the latching limitation of the 'curved latching portion' recitations of independent claim 11 are descriptive of the structures, rather than mere intended use, and thus define the scope and meaning of the structures themselves." Reply Br. 5. But, Appellants do not explain what, if anything, structurally the alleged "descriptive" language imparts beyond what is plainly described in claim 11. Nor do Appellants identify why a skilled artisan would understand that alleged "descriptive" language establishes a structural point of distinction between the claimed apparatus and Currin's tool 12. Appellants assert Currin's apparatus is ill-suited to function as a safety-harness attachment (id. at 6), but fail to identify any intrinsic or extrinsic evidence to support that position. Such naked assertions, however, cannot overcome the record evidence of structural similarities the Examiner identifies between claim 11 and Currin's tool 12, in an anticipation analysis. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). As a result, we are not persuaded the Examiner's anticipation rejection of claim 11 was erroneous. Claim 14 5 Appeal2014-009348 Application 13/256,615 Appellants contend, Currin does not teach or suggest, inter alia, "the first curved latching portion comprises a first half-circular arc that extends directly to both the first end and the second end [that terminate and fixedly couple to the base portion], and the second curved latching portion comprises a second half-circular arc that extends directly to both the third end and the fourth end [that terminate and fixedly couple to the base portion]," as recited in claim 14. Appeal Br. 13-14. From Currin, the Examiner identifies seats 20 as disclosing the first/second half-circular arc that extends directly to the first/second ends and third/fourth ends, respectively, and identifies side frames 18 as the first/second/third/fourth end members that terminate and fixedly couple to the base portion. Final Act. 4--5; Ans. 6. Currin states side frames 18 are "[ s ]ecured fixedly at their lower ends to the opposite sides of the base plate" and, between each pair of side frames, as seat 20 is integrally coupled "at its upper end with the upper end of the [side frames 18]." Currin 1:62---68. The crux of Appellants' argument appears to be that the vertical legs of the first/second/third/fourth end members 18 of Currin prevent the curved latch portions 20 from extending directly to and terminating at the base plate 14. See Appeal Br. 14. Appellants' position is not commensurate with the scope of claim 14, however. Given the broadest reasonable interpretation, we agree with the Examiner that neither claim 14, nor claim 11 from which claim 14 depends, require the curved latch portion to extend directly to and terminate at the base. The Specification describes the exemplary embodiment broadly. See Spec. i-fi-f 12, 13, 17, and 19. Although claim 11 requires the curved latch portions to "terminate" at the respective ends, it does not require them to 6 Appeal2014-009348 Application 13/256,615 also "terminate" at the base. See Appeal Br. 44 (Claims App.). Instead, claim 11 recites broadly that the respective ends may serve to "couple" the curved latch portions to the base. Claim 14 requires the latching portions to "extend directly to" the respective ends, but again it does not require them to extend directly to the base. Id. at 45. Nor have Appellants pointed to any support, either from the Specification or otherwise, demonstrating a skilled artisan would understand claim 14 as requiring the latching portion to extend directly to and terminate at the base. Consistent with the Examiner's interpretation, Currin describes the "upper end'' of the seat 20, which is a half-circular arc, as being integrally connected to the side frames 18, which is fixedly secured to the base- i.e., the curved latching portions extend directly to and terminate at a respective end, which is fixedly coupled to the base through the vertical legs. Currin 1 :62---68. Therefore, we are not persuaded the Examiner erred in finding Currin anticipates claim 14. Rejections II-IV - Obviousness For each of the Examiner's obviousness rejections (i.e., Rejection H- IV), Appellants assert that the references cited do not qualify as analogous art. Appeal Br. 24-25, 32-33, 40-41. In response, the Examiner recites the guidelines for determining whether a reference qualifies as analogous art, but fails to apply those guidelines to the facts of this case. Ans. 6. In addition, the Examiner never makes any factual findings, in either the Final Action or Answer, relevant to establishing the references are either within the same field of endeavor or reasonably pertinent to the problem(s) facing the inventors. For the following reasons, we agree the Examiner has not made a prima facie case that the cited prior art references qualify as 7 Appeal2014-009348 Application 13/256,615 analogous art. Determining whether prior art is analogous requires consideration of "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) (citation omitted). As the above criteria instructs, if the reference is within the same field of endeavor, then the problem being addressed by the inventor is irrelevant; however, if the reference is not within the same field of endeavor, then the reference must be "reasonably pertinent" to a problem facing the inventor. Precedent provides guidance as to when a reference is reasonably pertinent to the problem: A reference is reasonably pertinent if ... 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. 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. Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citing Clay, 966 F.2d at 659). "The pertinence of the reference as a source of solution to the inventor's problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor's successful achievement." Scientific Plastic Products, Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014). Therefore, "[d]efining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness." Monarch Knitting 8 Appeal2014-009348 Application 13/256,615 Machinery Corp. v. Sulzer Marat GmbH, 139 F.3d 877, 881 (Fed. Cir. 1998) (citing In re Antle, 444 F.2d 1168, 1171-72 (CCPA 1971). The field of endeavor in this case, as Appellants correctly identify it, relates to safety devices and, more specifically, safety devices to protect against falls from elevated work sites. Id. at 24; Spec. i-f 5. Currin "relates to a device for breaking or separating the coupling between adjacent hose sections." Currin 1: 14--15. Elkins "relates to devices for laying and stabilizing pipes and conduits." Elkins 1: 11-12. White '633 "relates to concrete reinforcing devices and particularly to a chair or support for reinforcing bars adapted to be located in concrete ribs or beams." White '633 1 :8-11. White '302 "relates to concrete work and particularly to [a] novel apparatus adapted for use in producing level concrete floors or other plane surfaces." White '302 1 :9-12. Middleton relates to concrete work and, more specifically, to a support member that is capable of holding and properly positioning two intersecting reinforcement cables. Middleton 1 :58- 2:31. Finally, Awbrey relates to concrete work and, more specifically, to a support for concrete reinforcement bars. Awbrey 1: 1-10. In view of the above facts, we are persuaded each of the above prior art references are from a field unrelated to safety equipment. Appellants likewise argue "there is no evidence whatsoever that similar problems exist in [the] disparate fields of art." Appeal Br. 25, 33, 41. In a recent instructive, but non-precedential decision, the Federal Circuit stated, it was the burden of the examiner, not [Appellant], to set forth a prima facie case explaining why a person of ordinary skill in the art would have been motivated to combine references in disparate technological fields. To satisfy this burden, the 9 Appeal2014-009348 Application 13/256,615 [examiner] must explain why a person of ordinary skill in the art would have found the prior art to be "reasonably pertinent to the problem of which the inventor was concerned." In re Natural Alternatives, 2016 WL 4536573, at *4 (Fed. Cir. August 31, 2016) (citing, In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006)). In this case, the Examiner has wholly failed to address Appellants' challenge to the pertinence of the prior art references. And, it is not readily apparent from our review of those references how the technology discussed relates to a particular problem facing Appellants. Therefore, we are persuaded the Examiner has not established that Currin, Elkins, White '633, White '302, Middleton, and Awbrey are analogous art. As a result, because all of the Examiner's obviousness rejections depend on various combinations of those references, we do not sustain Rejections II-IV. DECISION We affirm the Examiner's rejection of claims 11 and 14 as anticipated by Currin. We reverse the Examiner's rejection of claims 12 and 13 as unpatentable over Currin and Elkins. We reverse the Examiner's rejection of claims 11 and 15-17 as unpatentable over White '633 and White '302. We reverse the Examiner's rejection of claims 11, 17-22, 24, and 25 as unpatentable over Middleton and Awbrey. 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-IN-PART 10 Copy with citationCopy as parenthetical citation