Ex Parte Lin

Patent Trial and Appeal Board

Sep 13, 2013

10886930 (P.T.A.B. Sep. 13, 2013)

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.
10/886,930 07/08/2004 Austin S. Lin 1697.312.01 9869
64935 7590 09/16/2013
TILLMAN WRIGHT, PLLC
P.O. BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
TRAN, HANH VAN
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
09/16/2013 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 AUSTIN S. LIN
____________________

Appeal 2011-010846
Application 10/886,930
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010846
Application 10/886,930

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 22-26 and 29-42.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The rejected claims are directed to a kit for making a table for
attachment to a rigid support, such as a floor lamp (Spec. 3, ll. 1-19).
Claims 22, 23, and 37 are the sole independent claims.
EXEMPLARY CLAIM
Claim 22, reproduced below, is indicative of the claims under appeal.
22. A kit for making a table for attachment
to two or more rigid supports consisting of:
a surface with a first aperture adapted to
receive a grommet, wherein the surface consists of
two interlocking pieces;
two or more grommets each of which is
adapted to attach to said surface and possesses a
second aperture that is adapted to receive one of
said rigid supports, wherein the grommets and
apertures are not tapered; and
which table, upon installation of one of said
grommets within said surface and around one of
said rigid supports, is substantially supported by
friction.

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed July 8,
2004) and Appeal Brief (“App. Br.,” filed January 10, 2011), as well as the
Examiner’s Answer (“Ans.,” mailed April 1, 2011).

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THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 22, 30, and 31 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention;2
claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ibrahim (US 6,443,407 B1, iss. Sep. 3, 2002) in view of Love (US
4,589,351, iss. May 20, 1986), Zaremba (US 6,123,206, iss. Sep. 26, 2000)
and McBride (US 5,458,243, iss. Oct. 17, 1995);
claims 23-26, 29, 30, 35, and 36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ibrahim in view of Love and Zaremba;
claims 31-34 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ibrahim in view of Love, Zaremba and McBride, and further in view of
Babinec (US 6,380,294 B1, iss. Apr. 30, 2002) and Dinan (US 4,262,439,
iss. Apr. 21, 1981);
claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ibrahim in view of Dinan; and
claims 38-42 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ibrahim in view of Dinan, and further in view of Zaremba.
ANALYSIS

2 The Examiner rejected these claims in the final Office Action mailed June
8, 2010, and the Examiner’s Answer does not indicate the Examiner has
withdrawn the rejection. Thus, this rejection remains outstanding.
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Rejection under 35 U.S.C. § 112
Claims 22, 30, and 31 were rejected in the final Office Action mailed
June 8, 2010, under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter
that Appellant regards as the invention. Based on statements made in the
Examiner’s Answer, we understand that the rejection is maintained even
though it is not discussed in the Grounds of Rejection section, because the
Examiner’s Answer does not expressly indicate withdrawal of this rejection
(Ans. 2-3). In the final Office Action, the Examiner states that certain
limitations in claims 22, 30, and 31 are indefinite. We note that if the scope
of a claim would be reasonably ascertainable by those skilled in the art, then
the claim is not indefinite. Energizer Holdings Inc. v. Int’l Trade Comm’n,
435 F.3d 1366 (Fed. Cir. 2006) (holding that “anode gel” provided by
implication the antecedent basis for “zinc anode”); Ex parte Porter, 25
USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) (“controlled stream of
fluid” provided reasonable antecedent basis for “the controlled fluid”). Only
claims “not amenable to construction or insolubly ambiguous are indefinite.”
Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir.
2008) (citations and quotation marks omitted). In this case, we agree with
Appellant that the claim limitations “the grommets and apertures are not
tapered” as required by claim 22, “the grommets interlock with the surface”
as required by clam 30, and a kit consisting of grommets that “comprise”
foam as required by claim 31, are not insolubly ambiguous (App. Br. 5-7).
Therefore, we reverse the rejection of claims 22, 30, and 31 under 35 U.S.C.
§ 112, second paragraph.
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Rejections under 35 U.S.C. § 103(a)
With respect to independent claim 22, Appellant seems to argue that
Ibrahim does not teach the claimed limitation of “a table for attachment to
two or more rigid supports,” as recited in the preamble of claim 22.
Specifically, Appellant states, “it is not clear that the trays of Ibrahim all
attach to the tripod” (App. Br. 8). We do not find this argument persuasive,
as the Examiner states that column 3, lines 41-47 of Ibrahim teach a
frictional interface between portions 40 and 42 and center post 14 (Ans. 3-
4), and Appellant does not establish, either with reference to the
Specification or the claims, why such an interface does not teach the claimed
limitation of “attachment.”
Appellant next seems to argue that Ibrahim does not teach two
substantially identical interlocking pieces (App. Br. 8-9). We note, however,
that claim 22 only requires interlocking pieces, not substantially identical
interlocking pieces. We also note that Appellant does not state why the
portions 40 and 42 of Ibrahim, which interlock with one another through the
use of buttons 52 and slots 56, do not teach the claimed “interlocking.”
Regardless of the use of the buttons and slots, we find that portion 40 with
buttons 52 teaches one claimed interlocking piece, and portion 42 with slots
56 teaches another claimed interlocking piece, such that Ibrahim teaches a
“surface that consists of two interlocking pieces” as required by claim 22.
Appellant further argues that Love discloses a tapered wedge clamp,
and thus Love does not remedy the deficiency of Ibrahim by teaching the
claimed limitations that “the grommets and apertures are not tapered.” We
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note, however, that the Examiner’s rejection relies on McBride to teach
grommets and apertures that are not tapered (Ans. 5).
Finally, Appellant argues there is no motivation to combine these
references (App. Br. 10-11). We note, however, that the Supreme Court has
stated that in considering obviousness “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 550
U. S. 398, 418 (2007). The Court also has emphasized “the need for caution
in granting a patent based on the combination of elements found in the prior
art,” and has affirmed that “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 415-16. In this case, the Examiner simply adds
the familiar elements of
a table surface with a first aperture, a plastic
grommet adapted to attach to said surface and
possesses a second aperture that is adapted to
receive a rigid support, which table, upon
installation of said grommet within said surface
and around said rigid support, is substantially
supported solely by friction in the absence of
additional clamps or hardware
as taught by Love and Zaremba with non-tapered grommets and apertures as
taught by McBride, to yield the predictable result of an adjustable table
(Ans. 4-5).
For these reasons, we sustain the rejection of independent claim 22.
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With respect to independent claim 23, Appellant argues the rejection
is in error for reasons similar to those argued with respect to claim 22. We
are not persuaded by these arguments for reasons discussed above.
Appellant additionally argues “Love does not teach that the grommets
possess different sized apertures. The grommets of Love possess the same
sized apertures. Because Love relies upon compression from the shelf
around the wedge against the support, it is unnecessary to provide different
sized grommets” (App. Br. 12). We agree with the Examiner, however, that
“it would have been obvious and well within the level of one skill in the art
to provide the kit with more than one grommet in order to allow the kit to be
used with various rigid supports having different diameters” (Ans. 9).
Further, we find that it would have been obvious for those grommets to have
different sized apertures, so that the grommets would fit different sized rigid
supports.
For these reasons, we sustain the rejection of independent claim 23.
We sustain the rejection of dependent claims 26, 29, 30, and 36, after
carefully considering Appellant’s arguments (App. Br. 13-15). With respect
to dependent claim 26, we find that it would have been obvious to size the
diameters of the apertures to be about 5% less than those of the rigid
supports. It is well known that an interference or friction fit may be used to
retain grommets on supports, and Appellant has not demonstrated that there
is anything critical about the 5% difference in diameters. Regarding
dependent claim 29, we find that Ibrahim teaches “substantially identical”
interlocking pieces, as Appellant has not established with reference to either
the Specification or the claims why the portions 40 and 42 of Ibrahim, which
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interlock with one another through the use of buttons 52 and slots 56, are not
“substantially identical.” With respect to dependent claim 30, we find that it
would have been obvious to interlock the grommets with the surface. It is
well known to form an interlocking structure in a surface to lock a grommet
into the surface. With respect to dependent claim 36, we find it would have
been obvious to make the thickness of the grommets and the surface
substantially uniform and equal, such as for aesthetic reasons.
We also sustain the rejection of dependent claims 31-34, after
carefully considering Appellant’s arguments (App. Br. 15-18). We find it
would have been obvious to make either or both of the grommets and
surface from a rigid, deformable foam, such as an EVA foam. Appellant has
not shown there is anything critical about using this known foam material,
and one of ordinary skill may choose a known foam material based on the
desired characteristics of the support made from the material (e.g., minimum
or maximum weight to be supported, weight of the support itself, etc.).
With respect to independent claim 37, Appellant argues the
combination of Ibrahim and Dinan does not teach all the limitations of the
claims. Specifically, Appellant argues “Ibrahim teaches a try [sic] that rests
on cross arms on a tripod. Ibrahim does not teach a tray that is supported
solely by friction on a solid support” (App. Br. 19). We disagree, however,
and note that Ibrahim shows an embodiment in Figures 5-12, in which trays
22 are supported on lower portion 14b of center post 14, without reference to
stabilizing arms 18. Regardless, we find it would have been obvious to
support the trays in Ibrahim solely by friction and without the assistance of
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stabilizing arms 18, as this would allow a user of Ibrahim to position the tray
at heights on center post 14.
Appellant also argues with respect to claim 37
Ibrahim does not disclose a tray made of deformable
foam. There is nothing within Ibrahim or the prior art which
would suggest that one could or should use deformable foam to
make the tripod tray of Ibrahim and, thereby, avoid the use of a
cross bar to support the shelf. Dinan does not teach the use of a
deformable foam material as the means of support for the shelf

(App. Br. 17). For reasons discussed above, we find it would have been
obvious to make a tray from a known deformable foam. Appellant has not
shown there is anything critical about using such a material, and one of
ordinary skill may choose a known foam material based on the requirements
the tray made from that foam is to meet.
For the above reasons, we sustain the rejection of independent claim
37.
We sustain the rejections of dependent claims 38-42, after carefully
considering Appellant’s arguments (App. Br. 19-20). We find that it would
be obvious to size the diameter of the aperture to be at least ½ inch, to be
between 1 and 2 inches, and to be about 5% less than the diameter of the
rigid support. One of ordinary skill may choose the aperture diameter size
based on the desired use of the table, such as the type of support to which the
table is to be attached. We also find that Ibrahim teaches substantially
identical interlocking pieces, as discussed above. We further find that it
would be obvious to manufacture the table from an EVA foam for the
reasons discussed above.
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Appellant does not separately argue any of the other dependent
claims. Thus, we also sustain the rejections of these claims for the same
reasons as the independent claims.

DECISION
The Examiner’s rejections of claims 22-26 and 29-42 are
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)(1)(iv).

AFFIRMED
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