Ex Parte Lowe et alDownload PDFPatent Trial and Appeal BoardApr 21, 201411705488 (P.T.A.B. Apr. 21, 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. 11/705,488 02/12/2007 Mark Jeffrey Lowe 41061.0130 4528 7590 04/21/2014 George R. Schultz Schultz & Associates, P.C. One Lincoln Centre 5400 LBJ Freeway, Suite 1200 Dallas, TX 75240 EXAMINER O BRIEN, JEFFREY D ART UNIT PAPER NUMBER 3677 MAIL DATE DELIVERY MODE 04/21/2014 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 ____________ Ex parte MARK JEFFREY LOWE and UDHAYA BHASKAR NALLAMOTTU ____________ Appeal 2012-003688 Application 11/705,488 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003688 Application 11/705,488 2 STATEMENT OF THE CASE Mark Jeffrey Lowe and Udhaya Bhaskar Nallamottu (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 5, 6, 8-11, and 13-15. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claims 5 and 8 are the independent claims on appeal. Claim 5 is illustrative of the claimed subject matter and is reproduced below. 5. An adjustable hinge comprising: a hinge cup pivotally connected to a hinge arm via a pin having a pivoting axis; the hinge arm including a first plate having a rectangular access aperture and an overlay adjustment screw in a threaded adjustment hole; the first plate integrally formed with a second plate and a deformable hinge plate; wherein the second plate further comprises an elongated hole generally aligned with the rectangular access aperture and including a receiving surface adjacent the adjustment screw; wherein the hinge arm further includes a first set of guide flanges connected to the second plate located adjacent to and flanking the deformable hinge plate and a second set of guide flanges connected to the second plate located opposite the deformable hinge plate and extending generally perpendicularly from the second plate; wherein the hinge arm is of one-piece construction including the first plate, the deformable hinge plate, and the second plate; wherein the overlay adjustment screw abuts the receiving surface; where the overlay adjustment screw advances when turned thereby altering the location of the first plate relative to the second plate by bending the deformable hinge plate; and, Appeal 2012-003688 Application 11/705,488 3 wherein access to a vertical adjustment screw in the elongated hole is provided by the rectangular access aperture. App. Br., Claims App’x 1. References The Examiner relies upon the following prior art references: GB ’2521 GB 1,506,252 Apr. 5, 1978 Isele US 2004/0163213 A1 Aug. 26, 2004 Booker2 US 6,996,877 B2 Feb. 14, 2006 Domenig US D523,323S Jun. 20, 2006 Rejections Appellants seek review of the following rejections: I. Claims 5, 6, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over GB ’252 and Booker; and II. Claims 8-11, 13, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over GB ’252, Isele, Domenig, and Booker. SUMMARY OF DECISION We AFFIRM-IN-PART. OPINION Rejection I The Examiner concludes that the combination of GB ’252 and Booker would have rendered obvious the subject matter of claims 5, 6, and 14 to one of ordinary skill in the art at the time of invention. Ans. 4-6. The Examiner 1 The Examiner refers to this reference as simply “‘252” (e.g., Ans. 4), whereas Appellants refer to this reference as the “‘252 reference” (e.g., App. Br. 8). For some degree of consistency, we refer to GB 1,506,252 as “GB ’252.” 2 The Examiner refers to this reference as “‘877.” E.g., Ans. 4. Appeal 2012-003688 Application 11/705,488 4 finds that GB ’252 discloses the elements of the claims, except that it “does not specifically disclose a cup, the shape of the access aperture and hole formed in the first and second plates, but is instead silent as to the connection of the hinge arm to the door.” Id. at 4-5. The Examiner finds that Booker discloses these elements of the claims and concludes that it would have been obvious to one of ordinary skill in the art at the time of invention “to apply the shape of the aperture and hole as well as the specific cup structure of [Booker] to the hinge of [GB ’252] in order to allow for adjusted attachment to a furniture door member.” Id. at 5. Appellants raise several arguments in response to this rejection.3 First, Appellants contend that GB ’252 “does not disclose a first set of guide flanges connected to the second plate located adjacent to and flanking the deformable hinge plate and a second set of guide flanges connected to the second plate located opposite the deformable hinge plate and extending generally perpendicularly from the second plate.” App. Br. 8-9. Appellants assert that claim 5 “requires the first set of guide flanges and the second set of guide flanges be included on the hinge arm.” Id. at 10. Appellants assert that “[f]langes F1 and F2, relied upon by the Examiner to disclose the first set and second set of guide flanges of the claim, are connected to intermediate part 2 and not to lower holding piece 5” of GB ’252. Id. In response to Appellants’ argument, the Examiner explains that “the claims require only that the flanges be ‘connected to the second plate.’” Ans. 11. Thus, because the claims do not require a direct connection, a 3 Appellants do not separately argue claims 5, 6, and 14. See App. Br. 6-15; Reply Br. 6-8. We select claim 5 as representative. Accordingly, claims 6 and 14 stand or fall with claim 5. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). Appeal 2012-003688 Application 11/705,488 5 one-piece construction, or an integral formation for this connection, GB ’252 discloses that “flanges F1 and F2 are connected to the second plate 5 via the intermediate part 2 and the fastening member 11.” Id. Claim 5 is directed to an adjustable hinge comprising, inter alia, “a first set of guide flanges connected to the second plate . . . and a second set of guide flanges connected to the second plate.” App. Br., Claims App’x 1 (emphases added). We interpret the claim language, where necessary, giving the claims their broadest reasonable interpretation in light of the Specification. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Appellants have not pointed to anything in the claims or Specification that requires a direct connection. Thus, the broadest reasonable interpretation of “connection,” includes an indirect connection. As found by the Examiner, GB ’252 discloses that the two sets of guide flanges are connected to second plate 5 via intermediate part 2—the guide flanges are indirectly connected to second plate 5. See Ans. 11.4 Accordingly, Appellants’ first argument is not persuasive. Second, Appellants contend that there is no suggestion or motivation to modify GB ’252 to form hinge arm 1 and intermediate part 2 of a “one piece construction.” App. Br. 10-11. Appellants assert that GB ’252 teaches away from such modification because it would result in the device not operating as intended. Id. Specifically, Appellants contend that “[i]f the hinge arm and the intermediate part were of one piece construction as suggested by the Examiner (in order to arrive at all the Appellant’s [sic] claim elements), the adjustment functionality would be lost.” Id. at 12 (also 4 Appellants do not assert that GB ’252 fails to disclose an indirect connection. See generally App. Br.; Reply Br. Appeal 2012-003688 Application 11/705,488 6 explaining that if one desired to form GB ’252 in a configuration without the adjustment functionality, one would follow the embodiment disclosed therein where the intermediate part is removed, but that such configuration would also remove the flanges). Additionally, Appellants assert that forming the “three separate pieces” of GB ’252 (i.e., hinge arm 1, intermediate part 2, and mounting plate 4) as a “one-piece construction” would require substantial reconstruction and thus would not have been obvious. Id. at 12-13. In response to Appellants’ arguments, the Examiner explains that the proposed combination does not require modification of GB ’252’s hinge arm 1 and intermediate part 2 to form them as a one piece construction. Ans. 11. The Examiner reasoned that claim 5’s recitation that the hinge arm is of “one-piece construction” includes only three elements, “the first plate, the deformable plate and the second plate.” Ans. 12. Thus, the Examiner finds that the claim does not require that the “one-piece construction” includes “the guide flanges or other parts of the hinge arm such as the ‘overlay adjustment screw’ which are not specifically claimed as being part of the ‘one-piece construction.’” Id. In their Reply Brief, Appellants contend that “the claimed guide flanges are included on the hinge arm which is indeed claimed as one-piece construction and therefore the F1 and F2 flanges of [GB ’252] do not accurately represent Appellant’s [sic] claimed guide flanges.” Reply Br. 6. Appellants reiterate that claim 5 recites that “the first plate, not the features of the first plate, is integrally formed with a second plate and a deformable hinge plate. . . . Claim 5 also states that the hinge arm is of one-piece construction including the first plate, the deformable hinge plate, Appeal 2012-003688 Application 11/705,488 7 and the second plate.” Id. at 6. In light of these recitations and the description and figures in their Specification (see id. at 7 (stating that “Figures 3, 5, 11, and 12 clearly depict grippers 131 and 132 [(the first set of guide flanges)] and guides 137 and 138 [(the second set of guide flanges)] extending from, integrally formed with, and of one-piece construction with the second plate of the hinge arm”)), Appellants summarize their position by stating that “the entire hinge arm is clearly and unambiguously claimed as being of one-piece construction. The unitary hinge arm includes a first plate, a deformable hinge plate, a second plate, and a first and second set of guide flanges.” Id. Claim 5 recites that the hinge arm includes at least five elements: (1) “a first plate,” (2) “a second plate” (formed integrally with the first plate), (3) “a deformable hinge plate” (also formed integrally with the first plate), (4) “a first set of guide flanges,” and (5) “a second set of guide flanges.” App. Br., Claims App’x 1; see Reply Br. 7 (identifying the same five elements). Claim 5, however, expressly recites “wherein the hinge arm is of one-piece construction including the first plate, the deformable hinge plate, and the second plate.” App. Br., Claims App’x 1. Thus, of the at least five elements included in the hinge arm, only three are specifically recited as included in a one-piece construction—the first plate, the deformable hinge plate, and the second plate. Id. With respect to Appellants’ Specification, we disagree with Appellants’ argument that the figures clearly depict grippers 131, 132 and guides 137, 138 as “integrally formed with and of one-piece construction with the second plate of the hinge arm.” See Reply Br. 7. The written description portion of Appellants’ Specification makes clear that when Appeal 2012-003688 Application 11/705,488 8 Appellants wanted to describe two or more structures as integrally formed, they knew how to do so. See Spec. para. [0027] (“In one preferred embodiment, the hinge section is integrally formed with the adjustment plate and the abutment plate.”). Appellants, however, did not include a similar description of the connection between, or structures of, the second plate and the grippers 131, 132 and guides 137, 138. Thus, neither the language of the claim nor the description in the Specification clearly limits the two sets of guides and the second plate to an integral formation or one-piece construction. Had Appellants intended to require the two sets of guide flanges to be of one-piece construction, the two sets should have been identified in the “wherein” clause quoted above. Similarly, had Appellants intended to require the two sets of guide flanges to be integrally formed with the second plate, the claims should have expressly recited such.5 Accordingly, Appellants’ second argument is not persuasive. Third, Appellants contend that “[t]here is no motivation to combine the rectangular aperture and elongated hole of [Booker] with the hinge of [GB ’252] as the hinge of [GB ’252] already accomplishes a vertical adjustment via its intermediate part 2.” App. Br. 14; see also Reply Br. 8 (same). In response to Appellants’ arguments, the Examiner further explains that [GB ’252] “is silent as to the shape of the aperture and hole and . . . [Booker] teaches a known hinge configuration having a rectangular aperture and elongated hole.” Ans. 12. The Examiner finds that “[t]he use of a 5 We note that claim 5 does not exclude the two sets of guide flanges from being part of the one-piece construction. We simply conclude that claim 5, as currently drafted, does not require such construction. Appeal 2012-003688 Application 11/705,488 9 rectangular aperture grants easy access to the adjustment screw 11 and use of an elongated hole would allow for vertical adjustment with respect to the intermediate plate 2 which could be utilized for more fine[-]tuned vertical adjustment or to simply increase the range of vertical adjustment.” Id. Accordingly, the Examiner concludes that it would have been obvious “to make a simple substitution of one known element for another to obtain predictable results” (i.e., the use of the specific shape of hole taught by Booker). Id. at 12-13. We agree with the Examiner that the combination of GB ’252 and Booker would have been obvious to one of ordinary skill in the art at the time of the invention. First, the substitution of Booker’s aperture shape and elongated hole for the aperture and hole of GB ’252 fits into one of the scenarios the Supreme Court, in KSR Int’l Co. v. Teleflex Inc., described as likely to have been obvious: “when a patent claims a structure already known in the 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.” 550 U.S. 398, 416 (2007). Here, Appellants have not provided any argument or evidence that the combination resulting from the substitution would not perform the same or similar function with predictable results. Further, even though intermediate plate 2 allows for some vertical adjustment of GB ’252’s hinge, the Examiner’s finding that the substitution would allow for an increased range of adjustment and vertical adjustment with respect to the intermediate plate 2 provides advantages over the structure of GB ’252 and thus would have prompted one of ordinary skill in the art to combine the teachings of the references in the manner relied upon Appeal 2012-003688 Application 11/705,488 10 by the Examiner. Thus, Appellants’ argument that one of ordinary skill in the art would not have been prompted to make the substitution as proposed by the Examiner is not persuasive. Accordingly, we affirm Rejection I. Rejection II The Examiner concludes that the combination of GB ’252, Isele, Domenig, and Booker would have rendered the subject matter of claims 8-11, 13, and 15 obvious to one of ordinary skill in the art at the time of invention. Ans. 6-9. Appellants raise several arguments in response to this rejection, including that GB ’252 “does not disclose . . . a first set of guide flanges extending from the abutment plate . . . for contact with the cabinet frame or a second set of guide flanges extending generally perpendicularly from the abutment plate for contact with the cabinet frame” as recited by claim 8. App. Br. 15 (emphases added). Appellants assert that GB ’252 “cannot be modified to make the hinge arm 1 contact the cabinet frame as required by the claims . . . because the mounting plate 4 (or the combination of the mounting plate 4 and the intermediate part 2) of [GB ’252] is required for the device to perform as disclosed.” Id. at 15-16. In response to Appellants’ arguments, the Examiner finds that “[t]he hinge . . . of [GB ’252] is capable of being mounted directly to a cabinet frame without the need for a mounting piece, such as for mounting to a cabinet frame having a shape similar to that of the mounting piece, or a thin edge piece of a cabinet frame.” Ans. 13. In their Reply Brief, Appellants assert that the Examiner’s finding that GB ’252’s hinge is capable of being mounted directly to a cabinet frame is Appeal 2012-003688 Application 11/705,488 11 erroneous because such mounting “would inhibit the intended use of the hinge” as “[s]uch a modification would prevent the hinge . . . from being vertically adjustable.” Reply Br. 9-10. GB ’252 discloses that hinge arm 1 is mounted to a cabinet frame via mounting plate 4. See, e.g., GB ’252 at 2, ll. 6-11 (noting that while intermediate part 2 is optional, mounting plate 4 is still employed for mounting). While the Examiner’s finding that hinge arm 1 could, in theory, be mounted to nearly any surface, the Examiner has not explained why one of ordinary skill in the art would consider doing so (especially when each embodiment of GB ’252 expressly requires mounting plate 4) or how GB ’252’s hinge could function as intended without mounting plate 4. Accordingly, the Examiner has not established that it would have been obvious to one of ordinary skill in the art at the time of invention to mount GB ’252’s hinge arm directly to a cabinet without the use of a mounting plate. Accordingly, we do not sustain Rejection II. DECISION We AFFIRM the Examiner’s decision rejecting claims 5, 6, and 14 under 35 U.S.C. § 103(a) as unpatentable over GB ’252 and Booker. We REVERSE the Examiner’s decision rejecting claims 8-11, 13, and 15 under 35 U.S.C. § 103(a) as unpatentable over GB ’252, Isele, Domenig, and Booker. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2012-003688 Application 11/705,488 12 AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation