Ex Parte Liebendorfer et alDownload PDFPatent Trial and Appeal BoardDec 10, 201495001727 (P.T.A.B. Dec. 10, 2014) Copy Citation 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. 95/001,727 09/15/2011 John E. Liebendorfer 0210D-000018/US/RXA 8745 23911 7590 12/10/2014 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER CLARKE, SARA SACHIE ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 12/10/2014 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 ____________________ JAC-RACK, INC. Requester v. UNIRAC, INC. 1 Patent Owner, Appellant ____________________ Appeal 2014-008185 Inter partes Reexamination Control 95/001,727 Patent US 7,260,918 B2 2 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG and BRETT C. MARTIN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL 1 Unirac, Inc. is the Patent Owner and the real party in interest (Appeal Brief of Patent Owner (hereinafter "App. Br.") 1). 2 Patent US 7,260,918 B2 (hereinafter "the ’918 patent") issued August 28, 2007 to Liebendorfer. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 2 STATEMENT OF THE CASE Claims 7, 8, 10-12 and 14-17 of the ’918 patent are subject to reexamination (App. Br. 2). Claims 7, 10–12 and 14–16 stand rejected while claims 8 and 17 have been determined to be patentable (id.). The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the Examiner's rejections (App. Br. 1, 2) relying on its Appeal Brief and Rebuttal Brief. We have jurisdiction under 35 U.S.C. §§ 134(b) and 315. The ’918 patent issued from application No. 10/116,384, which is a continuation-in-part application of a parent application that issued as U.S. Patent No. 7,434,362. U.S. Patent No. 7,434,362 was the subject of Reexamination Control No. 95/001,706 also appealed to the Board (App. Br. 1, 2), a decision in that related appeal having been rendered by the Board in Appeal 2014-006375 mailed July 10, 2014. We AFFIRM. The ’918 patent is directed to a system and apparatus for removably and adjustably mounting a device such as photovoltaic module on a surface such as a roof (Abstract). Figures 11 and 15 of the ’918 patent are reproduced below. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 3 Figure 11 reproduced above shows a perspective view of clamp 34b formed with leg 58 having base 60, descending member 62 extending therefrom, and ascending member 64 also extending therefrom (col. 6, ll. 36–37; col. 7, ll. 59–66). Clamp 34b also includes means 66 for connecting base 60 to a rail (col. 7, l. 66–col. 8, l. 3). Figure 15 reproduced above shows a perspective view of connector bracket 144 having first flange 146, second flange 148 and elbow 154 (col. 6, ll. 45–46; col. 10, ll. 29–50). Independent claims 7 and 11 read as follows (Claims App., italics added): 7. (Original) A system for removably and adjustably mounting a photovoltaic module or flat panel on an object comprising: a rail formed with three or more tracks, wherein the rail includes three tracks formed of extruded aluminum and further comprises a cavity substantially parallel to the longitudinal axis of the rail, and a means for connecting the rail to the object, wherein the means for connecting the rail to the object is one or more clamps slidably attachable to the rail, and further wherein the one or more clamps is formed with a leg having a base, a descending member monolithically extending from the Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 4 base, and an ascending member monolithically extending from the base in a direction substantially opposite the direction of the descending member. 11. (Original) An apparatus for positioning a photovoltaic module or flat panel on an object, comprising: one or more triple track rails having a proximal end, a distal end, opposing sides, and a hollow chamber extending the length of the one or more triple track rails, wherein one or more grooves is formed in an opposing side; at least one slot extending the length of the one or more triple track rails, wherein the at least one slot is positioned at substantially a right angle to any other slot; a connector bracket having a plurality of flanges for demountable attachment to the module and to the one or more triple track rails, wherein at least one of the plurality of flanges is formed with an elbow. The Examiner rejects the various claims based on the following prior art references: 3 1. Ground 2: Claims 7 and 10 under 35 U.S.C. § 103(a) as obvious over Masami 4 in view of Hisatoyo. 5 (Answer (hereinafter "Ans.") 4– 10). 2. Ground 3: Claims 11–12 and 14–16 under 35 U.S.C. § 103(a) as obvious over Masami in view of Nobuyuki. 6 (Ans. 11). 3 Each of the prior art references are Japanese Patent Publications, and thus, all citations are to the English translations of record. 4 Japanese Patent Publication No. H11-013238 A. 5 Japanese Patent Publication No. H07-153984 A. 6 Japanese Patent Publication No. H09-250219 A. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 5 3. Ground 4: Claims 7 and 10 under 35 U.S.C. § 103(a) as obvious over Nobuyuki. (Ans. 11–12). 4. Ground 5: Claim 7 under 35 U.S.C. § 103(a) as obvious over Masao. 7 (Ans. 12). ISSUES The following issues have been raised in the present appeal. 1. Whether the Examiner erred in finding that the "frame side covers" disclosed in Masami, Nobuyuki and Masao satisfy the limitation reciting "clamps." 2. Whether the Examiner erred in concluding that it would have been obvious to substitute the frame side cover of Masami with the clamp of Hisatoyo. 3. Whether the Examiner erred in interpreting the limitation of independent claim 11 reciting "a connector bracket having a plurality of flanges for demountable attachment to the module and to the one or more triple track rails." 4. Whether the Examiner erred in concluding that claims 11–12 and 14–16 would have been obvious to a person of ordinary skill in the art over Masami in view of Nobuyuki. ANALYSIS With respect to the rejections, the Examiner incorporates by reference the Requester's detailed explanation of the pertinence and manner of 7 Japanese Patent Publication No. H11-324259 A. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 6 applying the prior art as set forth in the Corrected Request for Inter Partes Reexamination of U.S. Patent No. 7,260,918 (hereinafter "Request") (Ans. 4, 10–12; see also Request 33–40, 45–51, 52–56, 59, 60, 67–71). The Patent Owner disagrees with the Examiner for reasons set forth in its briefs. Only those arguments made by the Patent Owner have been considered and any arguments not made are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii). Rejection 1 (Ground 2) In Rejection 1, the Examiner rejects claims 7 and 10 as obvious over the combination of Masami in view of Hisatoyo (Ans. 4–10). The Examiner finds that Masami discloses most of the limitations recited in these claims, and notes that Hisatoyo discloses a solar cell module 2 that is secured via dummy support 19 (i.e., a clamp), and cover 3a (Ans. 4, 5; see Hisatoyo Abstract, ¶¶ 14–15; Figs. 1, 3). The Examiner concludes that it would have been obvious, and a mere substitution, to use clamp 19 of Hisatoyo for that of Masami in order to reduce costs and because Hisatoyo's clamps are more versatile and easier to use (Ans. 5–6; Request 35–39). Issue 1 The disclosures of Masami, Nobuyuki and Masao are similar and the Examiner's rejections of the claims on appeal are based, in part, on the fact finding that the side frame covers disclosed in these references are "clamps." (Ans. 4, 11-12; see also Request 33-40, 45-51, 52-56, 59, 60, 67-71). As such, the Patent Owner states that "a fundamental issue in this reexamination Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 7 proceeding and the Examiner's rejections is whether a cover of a side of a frame of a solar cell module is a clamp." (App. Br. 5). The Patent Owner states that because the rejections are based on the same finding that "frame side covers of these references are clamps," its arguments with respect to Masami apply equally to Nobuyuki and Masao (id.). Hence, while the analysis herein mainly focuses on Masami, we also address herein similar arguments for rejections based on Nobuyuki and Masao, noting any pertinent distinctions. The Examiner initially observes that no special meaning of the term "clamp" is provided in the ’918 patent, and thus, its plain meaning as defined by various dictionaries applies (Ans. 14–15). The Examiner finds that the frame side cover of the prior art meets the structural requirements of the clamp recited in the claims (Ans. 16). The Patent Owner asserts that "none of the frame side covers of these references are clamps" because "these frame side covers cover the frame of the solar cell module." (App. Br. 6). According to the Patent Owner, similarity in the cross sectional shape is inadequate to establish that the covers are clamps and that "to be a 'clamp', the clamp must clamp something." (App. Br. 6–8). This disagreement between the Examiner and the Patent Owner is not dispositive. In particular, the Examiner also found that that even if the term "clamp" is interpreted as requiring the function of a clamp, the frame side cover as shown in Masami (and similarly, Nobuyuki and Masao) "is a clamp because it secures (or joins) various parts together" such as lower framework 12 and horizontal frame 5 in Masami (Ans. 16). Hence, the position of the Examiner is that "even if the claim required the function of a Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 8 clamp [], as discussed above, Masami's frame side cover (as well as the frame side covers of Nobuyuki and Masami) is capable of and actually is shown performing said function." (Id. at 18). We agree with the Examiner's finding. In particular, frame side cover 22 of Masami engages the hook-like engagement part 12a provided on drag flask 12, and the lower portion of frame side cover 22 is provided with a similar engagement part that engages frame 5 (Masami ¶ 19; Fig. 2). Similar structures are evident in Nobuyuki and Masao (see Nobuyuki, Figs. 8, 9; Masao, Figs. 4, 16, 17). The fact that the frame side covers of the applied prior art perform an additional covering function does not detract from the fact that they also perform a clamping function to secure a solar cell module. The Patent Owner disputes the Examiner's finding and asserts that the frame side covers of these references do not perform a clamping function, referring to "Examiner's Annotated Figure 2 of Masami," and the "Patentee's Annotated Figure 2 of Masami" which are reproduced below: Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 9 (App. Br. 8–9). "Examiner's Annotated Figure 2 of Masami" above shows frame side cover 22 with portions thereof annotated as "base," "descending member" and "ascending member." "Patentee's Annotated Figure 2 of Masami" shows frame side cover 22, but with portions corresponding to the "base" and "descending member" in the Examiner's annotated figure removed. Based on the above annotated figures, the Patent Owner argues that the base and the descending member of frame side cover 22 do not function to clamp parts together because these portions can be removed from the frame side cover, but the components drag flask 12 and horizontal frame 5 will remain held together (id. at 9). According to the Patent Owner, the base and the descending member merely perform the function of covering the side frame (id. at 9–10). The Patent Owner's argument is unpersuasive. Frame side covers of the cited prior art references are monolithic, unitary structures (see Masami, Fig. 2; Nobuyuki, Figs. 8, 9; Masao, Figs. 4, 16, 17). As noted, the fact that the frame side covers function as covers does not detract from the fact that they also function as clamps to secure a solar cell module. Contrary to the assertions of the Patent Owner, the base and descending member of the frame side cover support the ascending member in its position shown in Figure 2 of Masami so that the bolt can be tightened to secure the lower framework 12 and horizontal frame 5 in a manner similar to the base and Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 10 descending member of clamp 34b of the ’918 patent. 8 Moreover, we agree with the Examiner that "even using the patent owner's version of Fig. 2, at least the ascending member of the frame side cover 22 is used to hold the lower framework (drag flask 12) to the horizontal frame 5." (Ans. 17). The Patent Owner asserts that in the claims, "the structure of the base, the descending member, and the ascending member all contribute to the clamp being able to perform the function of the clamp of pressing or compressing two parts together so as to hold the two parts together." (App. Br. 9). However, for the reasons discussed above, we disagree with the assertion that the base and the ascending member of the prior art do not contribute to the clamping function, and again observe that nothing in the claims precludes performance of additional functions, such as the covering function. The Patent Owner further points out that the Examiner noted that Nobuyuki uses hardware (bolt 42) to connect the keeper 37 to the rail 21 (id. 8 While not relied upon in our decision, we observe that if the frame side cover is devoid of its base and descending member, it does not appear that the frame side cover could be retained in position illustrated by the Patent Owner in its modified Figure 2 of Masami. As more clearly illustrated and explained in Nobuyuki, the device includes electric conduction washer 43 which is held up against the frame side cover component via rubber washer 44 (see Nobuyuki ¶ 43; Figs. 8, 9). The Patent Owner's argument requires acceptance of an unlikely scenario wherein the frame side cover is secured in place relative to the bolt merely by the rubber washer 44. Moreover, we also observe that Masao differs from Masami and Nobuyuki and further undermines the Patent Owner's argument in that the device of Masao does not even include electric conduction washer 43 or a rubber washer 44 (see Masao Figs. 4, 17). Without the base and descending member, the frame side cover of Masao would pivot and not be in the configuration shown in the Patent Owner's modified Figure 2. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 11 at 10). Based on the bolt 42 of Nobuyuki, the Patent Owner argues that the frame side cover 41 of Nobuyuki and the frame side covers of Masami and Masao (which also use bolts) do not perform a clamping function (id. at 10– 11). This argument is unpersuasive. As noted by the Examiner (Ans. 18), it cannot be disputed that the clamp 34b in the ’918 patent also requires a threaded fastener that extends through the hole 66 and an engaging threaded nut in order for the clamp 34b to function (see Fig. 8). Without such a fastener and a nut, the clamp 34b would not clamp anything. Thus, in the same manner that the invention of the ’918 patent uses a threaded fastener and a nut to secure the clamp 34b, the devices in the prior art references use the disclosed bolt to secure the frame side cover that functions as a clamp and a cover. Issue 2 The Patent Owner also asserts with respect to Rejection 1 (Ground 2) that there would have been no reason to substitute Hisatoyo's dummy support 19 for the frame 5 and frame side cover 22 of Masami because it could not have served the purpose of covering a side of a frame, which is the purpose of Masami's frame side cover (App. Br. 12–13). In this regard, the Patent Owner asserts that "[s]uch a substitution would render Masami unsatisfactory for its intended purpose and change its principle of operation since it would no longer have a frame and a frame side cover." (Id. at 13). However, whereas Masami's frame side cover 22 performs an additional covering function, as discussed supra, it nonetheless performs the clamping function like the support 19 of Hisatoyo (see also Action Closing Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 12 Prosecution (hereinafter "ACP") 5). Moreover, as noted by the Examiner, Hisatoyo also provides a cover 3b, which functions to cover the frame (Hisatoyo, Abstract; ¶ 15). 9 Correspondingly, we agree with the Examiner that claim 7 is obvious in view of Masami and Hisatoyo, the claimed invention substituting one clamp for another known in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). The Examiner has relied on a reason with rational underpinnings sufficient to support the conclusion of obviousness. Id. at 418. Furthermore, as to Rejection 1, the Patent Owner states that "[d]ependent claim 10 stands or falls with independent claim 10." (App. Br. 15). Hence, in view of the above, we find no error in the Examiner's rejection of claims 7 and 10 as obvious over Masami in view of Hisatoyo, and affirm Rejection 1 (Ground 2). Rejection 2 (Ground 3) Claims 11–12 and 14–16 stand rejected as obvious over Masami in view of Nobuyuki (Ans. 11, incorporating by reference Request 40, 45–51). Thus, the position of the Examiner is that it would have been obvious to one 9 Whereas the Patent Owner asserts that the Examiner prematurely closed prosecution in view of newly relying on Hisatoyo's cover 3b in the Action Closing Prosecution (App. Br. 14), we observe that such issues are not appealable to the Board, but instead, must be petitioned to the Director. Indeed, the Patent Owner informs us that it filed such a petition on September 14, 2012 (id.). The petition was denied on November 8, 2012. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 13 of ordinary skill in the art to substitute frames 5 and inter module covering 24 of Masami with Nobuyuki's fixing bracket 87 to demountably attach Masami's photovoltaic modules 15 to track 31 of rail 4 (see Request 48). As to the recited elbow of independent claim 11, the position of the Examiner is that connector bracket 87 shown in Figure 28 of Nobuyuki includes a flange formed with an elbow (id.). Issue 3: Interpretation of Claim 11 The Patent Owner initially argues that the Examiner's rejection is based on an improper interpretation of independent claim 11, which requires "a plurality of flanges for demountable attachment to the module and to the one or more triple track rails." The Patent Owner asserts that even if Masami and Nobuyuki are combined as suggested, the combination fails to satisfy this limitation of claim 11 because the flange of Nobuyuki merely attaches adjacent modules instead of both the module as well as the track rail (App. Br. 16–18). The Examiner's position is that the recitation "for demountable attachment to the module and to the one or more triple track rails" can modify the "connector bracket," the "plurality of flanges," or both, within the limitation (Right to Appeal Notice (hereinafter "RAN" 8)). According to the Examiner, fixing bracket 87 of Nobuyuki satisfies the limitation at issue because it is "used for demountable attachment of a solar module 60 and a stand 73 by way of a screw 88 in Fig. 28." (RAN 8). The Patent Owner argues that the Examiner's interpretation of claim 11 is incorrect in view of the Specification of the ’918 patent, which in Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 14 Figures 14B and 15, "the connector bracket 144 includes a plurality of flanges 146, 148 for demountable attachment to a module and to the one or more triple track rails." (App. Br. 17). We agree with the Examiner's claim construction. As to the actual language of the limitation at issue, the Examiner is correct that the recitation "for demountable attachment to the module and to the one or more triple track rails" can be understood to modify either the "connector bracket" as the Examiner interprets, or the "plurality of flanges" as the Patent Owner interprets. The Patent Owner's interpretation is consistent with the Specification of the ’918 patent. However, the issue at hand is whether the Examiner's interpretation is also consistent with the Specification of the ’918 patent, and reasonable under the broadest reasonable interpretation standard applied in reexamination proceedings. Although the Patent Owner argues claim interpretation based on the embodiment shown in Figures 14B and 15 of the ’918 patent, the Examiner has explained that "it is the examiner's position that the claim [11] reads on the embodiment of Figs. 8–11 as well" as the embodiment of Figures 13–15 (Ans. 23). The Patent Owner does not persuasively challenge this position of the Examiner. Indeed, we are not directed to any specific definition or description in the Specification of the ’918 patent that precludes the term "connector bracket" from being reasonably applied to the structure disclosed in Figures 8–11 of the ’918 patent. Claim 11 also does not recite structural limitations that would preclude the "connector bracket" from encompassing the structure shown in Figures 8–11. We further discern no inherent meaning in the term "connector bracket" that would distinguish between the Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 15 structure shown in Figures 14B and 15 from that shown in Figures 8–11. Hence, in view of the above considerations, we find no error in the Examiner's interpretation, which is reasonable. Issue 4: Obviousness of Claims 11, 12 and 14–16 The Patent Owner argues that even if the Examiner's claim interpretation is correct, the flanges of Nobuyuki's bracket 87 "still do not attach to the module and a triple track rail" because it is the intervening screw that indirectly attaches the bracket 87, and such an arrangement "results in extended separation between the bracket and a 'rail'." (App. Br. 18–19; see also Ans. 21–22; RAN 8). However, as the Examiner finds (Ans. 22), the ’918 patent discloses clamps or brackets that use a bolt hole and a fastener therethrough to allow for attachment (see Figures 8, 10, 15). Even with respect to the embodiment shown in Figure 15 relied upon by the Patent Owner, the Specification of the ’918 patent states that "[i]n operation, bore 152 is provided for insertion of a fastener 153 through bore 152 to secure connector bracket 144 to device 68 or module 68'." (Col. 10, ll. 39–42; Fig. 15). Without fastener 153, the disclosed bracket would not be attached to the module. The Patent Owner further argues that "there would be no reason to replace Masami's frame 5 and inter module covering 24 with the structure of Nobuyuki's fixing bracket 87" because "the inter module covering 24 is an elongated structure that covers the gap that exists between two adjacent solar panel modules." (App. Br. 19). According to the Patent Owner, "Nobuyuki's structure 87 could not serve the purpose of covering an inter Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 16 module gap between adjacent solar panel modules, which is the purpose of Masami's inter module covering 24," so that the modification results in Masami being unsatisfactory for its intended purpose (App. Br. 19–20; see also Reb. Br. 9–10). We remain unpersuaded as to patentability of claim 11. As discussed supra, inter module covering 24 of Nobuyuki also functions as a clamp. As the Examiner finds (Ans. 24), the fixing bracket 87 of Nobuyuki, when substituted for the inter module covering of Masami, would perform this clamping function in the proposed combination. While such substitution would result in the loss of the full covering function of the inter module covering of Masami, the Patent Owner's reliance on the loss of such function is not justified. Firstly, we observe that the rejected claims 11– 12 and 14–16 do not require any type of a cover. Secondly, the actual distinction being made with respect to the covering function is that of the length of the bracket. It would have been obvious to a person of ordinary skill in the art that the bracket of Nobuyuki can be sized in any desired manner to the extent that a covering function was desired. In re Rose, 220 F.2d 459, 463 (CCPA 1955) ("size of the article under consideration [] is not ordinarily a matter of invention"). Finally, a person of ordinary skill in the art would be aware, through common background knowledge in the art that covers, which perform a covering function, may be provided if so desired as evidenced by Hisatoyo discussed supra. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (prior art of record not specifically relied upon in the rejection considered as evidence of the state of the art, common knowledge, and common sense of one of ordinary skill in the art). Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 17 The Patent Owner further argues that substitution of Nobuyuki's fixing bracket 87 for Masami's frame 5 and inter module covering 24 would change the principle of operation of Masami because "Nobuyuki's 'flanges' extend upward in a U shape from a base and Masami's inter module covering 24 has a 'downward U shape'" so that Nobuyki's fixing bracket 87 could not fit in the arrangement of Masami (App. Br. 22). However, the "principle of operation" relevant to an obviousness inquiry relates to the "basic principles" under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959). Hence, a change in the "basic principles" pertains to change that is fundamental in scope so as to relate to scientific or technical principles under which the prior art invention operates. In the present appeal, both Nobuyuki's fixing bracket 87 and Masami's inter module covering 24 operate by clamping components down via a fastener, and thus, use the same principle of operation. In this regard, the Examiner is correct in finding that Nobuyki's fixing bracket 87 could function "to fix the modules 3 at least by way of downward pressure on said modules." (RAN 9-10; see also Ans. 26). Thus, in view of the above, we are unpersuaded by the Patent Owner's various arguments as to why the Examiner's obviousness rejection of claim 11 is erroneous. The Patent Owner does not argue the limitation of claim 12 which depends from claim 11. Hence, claim 12 falls with claim 11. Claim 14 depends from claim 11 and recites "at least one of the plurality of flanges is formed with a lip." (App. Br., Claims App.). The Examiner, in incorporating portions of the Request, concludes that "adding a lip to one of the flanges of the Nobuyuki connector bracket (87) would have Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 18 been an obvious matter of design choice to a person of ordinary skill in the art." (Ans. 11; see also Request 40, 45–51). The Patent Owner argues that the Examiner does not articulate where such a lip would be added, and that a lip is not found in the prior art (App. Br. 5; Reb. Br. 11). However, we observe that claim 14 also does not recite where on a flange the recited lip is formed either. Moreover, providing a lip to increase strength of a structural component is a well-known technique, and we agree with the Examiner that providing such a lip would be an obvious matter of design choice to a person of ordinary skill in the art who would have been able to assess whether a clamp or bracket should be strengthened based on expected loads thereon. Claim 15 also depends from claim 11 and recites "at least one of the flanges is formed with a bore." (App. Br., Claims App.). The Patent Owner argues that "based on the Requestor's identified 'flanges' of Nobuyuki's bracket 87 at page 48 of the Corrected Request, these defined flanges do not include any bore." (App. Br. 24; see also Reb. Br. 11). The Examiner disagrees and finds that "Fig. 28 quite clearly shows a flange with a bore. See the portion of the bracket through which the screw 88 extends." (Ans. 27). The disagreement appears to stem from the fact that it is not entirely clear which portion of Nobuyuki's bracket 87 is being identified by the second "Flange" annotation (Request 48). However, this issue is not dispositive because, regardless of the annotated figure in the Request, the Examiner has made clear that the Examiner considers the portion of Nobuyuki's bracket 87 including the bore is the flange that is being relied upon for the rejection (Ans. 27). The Patent Owner does not persuasively address this position of the Examiner. Moreover, while we do not rely on Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 19 the following observation in our decision, we also observe that nothing in the claim prevents the flange from having an L-shape. Thus, in view of the above, we are unpersuaded that the Examiner erred in rejecting claims 11, 12 and 14–16 as being obvious over Masami in view of Nobuyuki. Correspondingly, we affirm Rejection 2 (Ground 3). Rejection 3 (Ground 4) Claims 7 and 10 stand rejected as obvious over Nobuyuki (Ans. 11– 12). The Patent Owner argues that "Nobuyuki's frame side cover 41 is also not a clamp, for at least the reasons discussed above with respect to Masami's frame side cover 22 not being a clamp." (App. Br. 25). However, as discussed supra relative to Rejection 1, this line of argument is unpersuasive. Correspondingly, Rejection 3 (Ground 4) is affirmed. Rejection 4 (Ground 5) Claim 7 stands rejected as obvious over Masao (Ans. 12). The Patent Owner again relies on its argument with respect to Masami to assert that the frame side cover 41 of Masao is not a clamp (App. Br. 25). However, this line of argument is unpersuasive as discussed supra. Correspondingly, Rejection 4 (Ground 5) is also affirmed. CONCLUSION Rejections 1–4 (Grounds 2-5) are AFFIRMED. Appeal 2014-008185 Reexamination Control 95/001,727 Patent US 7,260,918 B2 20 Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Patent Owner: CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 Washington, DC 20044-4300 Third Party Requester: Mark D. Elchuk HARNESS DICKEY & PIERCE, P.L.C. P.O. Box 828 Bloomfield Hills, MI 48303 Copy with citationCopy as parenthetical citation