Ex Parte Laurita

Patent Trial and Appeal Board

Sep 11, 2014

14038999 (P.T.A.B. Sep. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH N. LAURITA
____________

Appeal 2014-007280
Application 14/038,999
Technology Center 3600
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
BRANDON J. WARNER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Joseph N. Laurita (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s final decision rejecting claims 1–13. Br. 2. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention relates to a device for mounting a chair. See
Spec. 1.
Appeal 2014-007280
Application 14/038,999
2

Claims 1, 3, 11, and 12 are independent. Br. 24–32. Independent
claim 1 is illustrative of the claimed invention and reads as follows:
1. An apparatus comprising:
a swivel device comprising:
a mounting device;
a base, wherein the mounting device is connected
to the base so that the mounting device can rotate with
respect to the base;
a device for keeping a chair stationary on the
mounting device, such that when the mounting device
rotates with respect to the base, the chair rotates with
respect to the base, and when the mounting device does
not rotate, with respect to the base, the chair does not
rotate with respect to the base;
a first cavity located between the mounting device
and the base; and
a device for aiding rotation of the mounting device
with respect to the base located in the first cavity;
wherein there is a first opening of the mounting
device, such that the first opening of the mounting device
has an entrance at a first surface of the mounting device,
passes through a body portion of the mounting device,
has an exit at a second surface of the mounting device
which opposes the first surface of the mounting device,
and leads to the first cavity located between the mounting
device and the base;
wherein the first cavity leads to a first opening of
the base;
wherein the first opening of the base has an
entrance at a first surface of the base, passes through a
body portion of the base, has an exit at a second surface
of the base which opposes the first surface of the base,
and leads to an area outside of the swivel device;
wherein the first cavity has a volume, the first
opening of the mounting device has a volume, and the
first opening of the base has a volume, and the volume of
the first cavity is substantially greater than the volume of
the first opening of the mounting device and the volume
of the first opening of the base;
Appeal 2014-007280
Application 14/038,999
3

wherein the mounting device is connected to the
base so that the mounting device can rotate with respect
to the base by a pivot pin which is centrally located with
respect to both the mounting device and the base;
wherein the first opening of the mounting device is
not centrally located with respect to the mounting device;
wherein the first opening of the base is not
centrally located with respect to the base;
wherein the device for aiding rotation of the
mounting device with respect to the base located in the
first cavity includes a plurality of bearing balls ;
wherein the plurality of bearing balls define the
periphery of a shape;
wherein the first opening of the mounting device
overlaps the shape; and
wherein the first opening of the base overlaps the
shape.

REJECTIONS
The following rejections are before us for review1:
I. The Examiner rejected claim 12 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement.
II. The Examiner rejected claims 12 and 13 under 35 U.S.C.
§ 102(b) as anticipated by Lu (US 5,779,309, iss. Jul. 14, 1998).
III. The Examiner rejected claims 1–10 under 35 U.S.C. § 103(a) as
unpatentable over Guerrini (US 7,328,952 B2, iss. Feb. 12,
2008) and Yu (US 6,997,512 B1, iss. Feb. 14, 2006).
IV. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Guerrini.
ANALYSIS
The Lack of Written Description Rejection

1 The rejection of claims 1, 3, 4, and 11–13 under 35 U.S.C. § 112(b),
as being indefinite, has been withdrawn by the Examiner. See Ans. 2.
Appeal 2014-007280
Application 14/038,999
4

The Examiner finds that Appellant’s disclosure fails to describe that,
at least one of the plurality of bearing balls makes
contact with the first inner flat surface of the
mounting device, the second inner flat surface of
the base, and the disc device, and does not make
contact with any other part of the apparatus when
the disc device rotates with respect to the mounting
device and the base

as recited in claim 12 (Br. 31–32, Clms. App.). Final Act. 2 (emphasis
added); see Ans. 2–3.
Pointing to Appellant’s Figure 23A, the Examiner opines that in
addition to the recited elements, bearing balls 232 also contact second disc
device 240. Ans. 3. More specifically, the Examiner asserts that bearing
balls 232 contact inner flat surface 210c of mounting device 206, second
inner flat surface of base 260 via contact with second disc device 240, and
first disc device 234. Id.
In response to the rejection, Appellant argues that the Specification
describes an embodiment where second disc device 240 and base 260 are
molded into a one-piece unit. Br. 13 (citing Spec. 30, ll. 8–9).
The Examiner responds that even if second disc device 240 and base
260 are molded into a one-piece unit, bearing balls 232 “still contact the disc
device 240,” and thus makes contact with an element in addition to
mounting device 206, base 260, and disc device 234. Ans. 4.
Although we appreciate the Examiner’s position, nonetheless, when
second disc device 240 and base 260 are molded into a one-piece unit, they
form a unitary, integral component, namely, a base. In such case, second
disc device 240 becomes merely an upper portion of base 260 and bearing
balls 232 contact that upper portion of base 260.
Appeal 2014-007280
Application 14/038,999
5

We thus conclude that Appellant’s Specification reasonably conveys
to those skilled in the art that Appellant had possession of the subject matter
of claim 12 as of the filing date of the present application. Therefore, we do
not sustain the rejection of claim 12 under 35 U.S.C. § 112(a) for failing to
comply with the written description requirement.

The Anticipation Rejection Based Upon Lu
The Examiner finds that Lu teaches all the limitations of claims 12
and 13. Final Act. 16–17. In response, Appellant incorrectly argues the
disclosures of Yu rather than the disclosures of Lu, upon which the
Examiner’s rejection of record is based. Br. 21–23; see also Ans. 12–13.
Thus, Appellant’s arguments are not commensurate with the Examiner’s
rejection. Accordingly, we sustain the rejection of claims 12 and 13 under
35 U.S.C. § 102(b) as anticipated by Lu.

The Obviousness Rejection Based Upon Guerrini and Yu
Claims 1, 2, 4, 5, and 7–10
Appellant does not present arguments for the patentability of claims 2,
4, 5, or 7–10 apart from claim 1. See Br. 18. Therefore, in accordance with
37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the representative
claim to decide the appeal of the rejection of these claims, with claims 2, 4,
5, and 7–10 standing or falling with claim 1.
The Examiner finds that Guerrini discloses all the limitations of
independent claim 1, but fails to disclose “water outlets in the device that
pass[] through a body portion of the device.” Final Act. 5–6; see also
Guerrini, Fig. 1. The Examiner further finds that Yu discloses a swivel
device for a chair including water outlets 13, 52. Id. at 6; see also Yu,
Appeal 2014-007280
Application 14/038,999
6

Fig. 2. The Examiner concludes that it would have been obvious for a
person of ordinary skill in the art to modify the swivel device of Guerrini
with Yu’s water outlets disposed on the base and the mounting device “in
order that both the outer and [the] inner components (including components
in the cavity) of the device may be cleaned and [also provide] an outlet for
water to escape the device after cleaning or rinsing with water.” Id. at 6–7.
Appellant argues that neither of Yu’s water outlets 13, 52 leads to a
cavity between mounting device 5 and base 1, but rather the water outlets
lead to the exterior. Br. 16–17 (citing Yu, Figs. 1 and 2). We are not
persuaded by Appellant’s argument because, as the Examiner correctly
finds, “Yu[] teaches a device that will route water.” Ans. 6. More
specifically, all the components of Yu’s swivel cushion are contained within
a cavity formed by mounting device 5 and base 1, which include water
outlets 52, 13, respectively. See Yu, Fig. 1. Moreover, as the Examiner
notes, any water entering through outlets 52 and reaching the interior of
Yu’s device will pass through outlets 26 in plate 2 and exit through outlets
13. Ans. 6. Appellant does not show error in the Examiner’s findings or
reasoning.
Appellant also argues that the Examiner’s reasoning to combine the
teachings of Guerrini and Yu does not come from “any suggestion” in either
of the references. Br. 17. This argument appears to be holding the
Examiner to the old teaching, suggestion, or motivation (TSM) standard;
such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
415 (2007) (“We begin by rejecting the rigid [application and requirement of
a TSM to combine known elements in order to show obviousness]”). The
proper inquiry is whether the Examiner has articulated adequate reasoning
based on a rational underpinning to explain why a person of ordinary skill in
Appeal 2014-007280
Application 14/038,999
7

the art would have been led to combine the teachings of Guerrini and Yu.
See id. at 418.
In this case, the Examiner correctly finds that Guerrini suggests
including the water outlets of Yu in the swivel device of Guerrini because
Guerrini specifically discloses cleaning its swivel device with water. See
Ans. 7 (citing to Guerrini, col. 4, ll. 46–48). Thus, the Examiner has
provided an adequate reason with rational underpinnings, namely, in order to
clean and allow the water to escape the modified device of Guerrini and Yu,
to support the conclusion of obviousness. See Final Act. 6–7.
Accordingly, we sustain the rejection of independent claim 1, and
claims 2, 4, 5, and 7–10 falling with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Guerrini and Yu.

Claims 3 and 6
The Examiner finds that because Guerrini’s holder 20 directly
connects to a flat side of mounting device 12, then holder 20 is part of the
flat surface of mounting device 12, and thus, the channels formed by ridges
of holder 20 are likewise part of the flat surface. Ans. 9.
In response, Appellant argues that merely because Guerrini’s holder
20 connects to mounting device 12, this does not mean that the channels
formed by the ridges of holder 20, which are part of a curved surface of
holder 20, are also part of the flat surface of mounting device 12. Br. 18–19.
The words of a claim must be given their plain meaning unless the
plain meaning is inconsistent with the Specification. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). In this case, an ordinary and customary definition
of the term “part” is “one of the often indefinite or unequal subdivisions into
which something is or is regarded as divided and which together constitute
Appeal 2014-007280
Application 14/038,999
8

the whole.” Merriam-Webster’s Collegiate Dictionary (10th ed. 1997).
This definition is consistent with Appellant’s Specification, which describes
the portion of flat surface 8b of mounting device 206 located between
protruding triangular prism structures 224a, 224b as a “channel.” Spec. 7, ll.
18–20 and Fig. 14A. As such, the limitation of a first and second channel
being “part of a flat outer surface of the mounting device” requires that the
channel have a surface that is a portion (subdivision) of the “flat outer
surface of the mounting device.”
The Examiner’s claim interpretation, and the resultant rejection based
thereon, relies on the view that an indirect connection between the ridges of
holder 20 and the flat surface of mounting device 12 meets the limitation of
first and second channels being “part of the flat outer surface of the
mounting device.” However, the channels formed by the ridges of holder 20
are located above the flat outer surface of mounting device 12 (rather than
being a coextensive part of the surface itself) and thus do not constitute a
“channel” that is “part of a flat outer surface,” as called for by independent
claim 3. As such, the Examiner’s claim interpretation is unreasonably broad
in view of the plain and ordinary meaning of the term “part” as it would be
understood by persons of ordinary skill in the art.
Accordingly, we do not sustain the rejection of independent claim 3,
and its dependent claim 6, under 35 U.S.C. § 103(a) as unpatentable over
Guerrini and Yu.

The Obviousness Rejection Based Upon Guerrini
Appellant argues that Guerrini fails to disclose a first, second, and
third device adapted to receive a first, second, and third chair leg,
respectively, “wherein the second device is between the first device and the
Appeal 2014-007280
Application 14/038,999
9

third device.” Br. 1920. According to Appellant, because Guerrini only
discloses a two-legged chair, “Guerrini does not suggest in any way
providing a second device in between a first device and a third device.” Id.
at 20.
We are not persuaded by Appellant’s argument because, as the
Examiner correctly finds, Guerrini discloses a plurality of ports 42, i.e., four
pairs, for receiving clips 20. Ans. 10. We agree with the Examiner that such
a teaching “suggests that the clips 20 or devices may be rearranged based on
the locat[ion] of the ports 42 and the chair to be supported.” Id. at 10–11
(citing Guerrini, col. 4, ll. 17–26 and Fig. 4). Furthermore, because Guerrini
discloses four pairs of receiving ports 42, we agree with the Examiner that it
would have been obvious for a person of ordinary skill in the art at the time
of the invention was made to adjust the placement of clips 20 such that a
second clip 20 is located between first and third clips 20 in the device of
Guerrini depending on the type of chair used. Id. at 11–12. Appellant has
not shown error in the Examiner’s findings or reasoning.
Lastly, attorney argument such as the cost and complexity of
providing a second clip 20 between first and third clips 20 (see Br. 21)
cannot take the place of evidence in the record. Estee Lauder, Inc. v.
L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Guerrini.

SUMMARY
We reverse the Examiner’s decision to reject claim 12 under
Appeal 2014-007280
Application 14/038,999
10

35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
We affirm the Examiner’s decision to reject claims 12 and 13 under
35 U.S.C. § 102(b) as anticipated by Lu.
We affirm the Examiner’s decision to reject claims 1, 2, 4, 5, and 7–
10 under 35 U.S.C. § 103(a) as unpatentable over Guerrini and Yu.
We reverse the Examiner’s decision to reject claims 3 and 6 under 35
U.S.C. § 103(a) as unpatentable over Guerrini and Yu.
We affirm the Examiner’s decision to reject claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Guerrini.
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-IN-PART

llw