Ex Parte Lutfallah

Board of Patent Appeals and Interferences

Aug 8, 2008

10752406 (B.P.A.I. Aug. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY G. LUTFALLAH
____________

Appeal 2008-3524
Application 10/752,406
Technology Center 3600
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Decided: August 8, 2008
____________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 24, 30-33, 35, and 36. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 24 and 35 are representative of
the claims on appeal, and read as follows:
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Application 10/752,406

24. A window stop for use in a window assembly having an upper sash
and a lower sash, each sash slidably mounted in a master frame, each sash
having a top rail a bottom rail and a pair of vertical stiles, each vertical stile
having a front wall, the window stop comprising:
a housing defining a cavity, the housing having a cover defining a lip,
the housing further having a tab having an inclined engagement surface in
spaced relation to the lip, the engagement surface comprising a plurality of
ridges, at least one of which is inclined away from the lip, wherein the
engagement surface and lip are adapted to are adapted to cooperatively
engage the frame member, the frame member being any of a plurality of
frame members having a thickness between a minimum thickness and a
maximum thickness, the housing further having a projection extending into
the cavity;
a bolt operably mounted within the cavity and moveable between a
retracted position wherein the bolt is located substantially within the housing
and thereby out of the path of movement of the lower sash and an extended
position wherein the bolt extends from within the cavity and into the path of
movement of the lower sash;
means for biasing the bolt towards the extended position, and
an actuator pivotally mounted to the bolt having a hook at one end for
engaging the projection to retain the bolt in the retracted position when the
actuator is in a locked position, the actuator pivotable from the locked
position to a release position wherein the hook disengages from the
projection to permit the bolt to move towards the extended position.

35. A window stop comprising:
a housing defining a cavity, the housing having an end wall and a
cover defining a lip;
a tab having a base portion mounted to the end wall and extending
away from the end wall, the tab having a planar engagement surface distal
from the base portion, the planar engagement surface being spaced from the
lip and inclined with respect to the lip, the planar engagement surface
extending from an inner edge of the tab proximal to the housing to an outer
edge of the tab distal from the housing; and
a bolt mounted within the cavity and moveable between a retracted
position wherein the bolt is substantially located within the housing and a
locking position wherein the bolt extends from the cavity.

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The Examiners relies on the following references:
Bratcher US 5,806,900 Sep. 15, 1998
Kojima US 6,575,681 B2 Jun. 10, 2003
We affirm.

BACKGROUND
According to the Specification, in sliding window assemblies, “it is
important to be able to selectively limit the distance the sliding window sash
may travel,” such as to allow for venting while preventing ingress or egress
through the window (Spec. 1). The Specification teaches further that
window stops of all types include some means for mounting the
stop usually within a vertical stile of the upper sash window.
As noted above, sash windows are now being formed of
extruded plastic or metal frame members which are joined at
mitered corners, to form a generally rectangular frame. This
results in an essentially hollow sash window frame. Window
stops are typically mounted such that a housing of the stop is
substantially positioned within a frame member of the hollow
sash, with a cover of the housing resting on an outer surface of
a wall of the frame member. To secure the stop within the sash,
a wall of the frame member is received between the cover and a
tab extending from the housing. In the past, the cover and the
tab(s) for any given window stop have been capable of being
mounted in a frame member having a wall of only a single
thickness. This causes window stop manufacturers to produce
multiple housings based on anticipated frame member or wall
thicknesses. This increases attendant costs. This also causes
window manufacturers and assemblers to stock and inventory
multiple window stops depending upon anticipated frame
member thicknesses, increasing attendant costs for the window
manufacturer.

(Id. at 2-3.)
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Thus, the claimed invention is drawn to a window stop that “is
adapted to be mounted to a wall having a thickness between a range of
thicknesses from a minimum thickness to a maximum thickness.” (Id. at 3.)

DISCUSSION
Claims 24, 30-33, 35, and 36 stand rejected under 35 U.S.C. § 103(a)
over the combination of Bratcher and Kojima.
Bratcher is cited for disclosing a window stop comprising a housing
defining a cavity that is capable of being mounted to a wall having a
thickness between a minimum and maximum thickness (Ans. 3). Bratcher
also teaches that a bolt is mounted inside the housing, the bolt being
moveable between an extended and retracted position (id.). Bratcher is
further cited for teaching the use of a biasing means, a cover defining a lip,
and a resilient tab or extension member (id.). In the window stop of
Bratcher, the engagement surface is parallel to the lip (id. at 4).
According to the Examiner, “Bratcher fails to disclose that the
engagement surface is inclined with respect to the lip and that [sic] comprise
at least one ridge or protrusion making the surface as a variable surface and
where at least one ridge or protrusion is inclined away from the lip.” (Id. at
3-4.)
Kojima is cited as evidence that “it is well known in the art to provide
a device that is going to be mounted into a frame with a resilient tab (40)
having an inclined, planar and smooth engagement surface with respect to a
lip (21) of a cover (20) that comprise at least one ridge or protrusion (41a-c)
making the surface as a variable surface and where at least one ridge or
protrusion (41c) that is inclined away from the lip so as to make the device
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capable of being mounted to different thickness of the frame (Figures 7a-
7c).” (Ans. 4)
The Examiner concludes:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to provide the
resilient tab described by Bratcher with an inclined engagement
surface, as taught by Kojima, in order to secure the latch into
the notch or opening on a wall or at a frame having any
thickness.

(Id.)
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] 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 v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). We conclude that the Examiner has set forth a prima facie
case of obviousness. We thus turn to Appellant’s arguments in rebuttal.
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Appellant argues that there is no motivation to combine Bratcher with
Kojima, and that the Examiner has engaged in improper hindsight in
combining the references (App. Br. 1 12). Bratcher, Appellant asserts,
provides no teaching or suggestion to modify the clips (34) to adapt to
window frames having different thicknesses, and the fact that Kojima is a
clip designed for automotive use, demonstrates the Examiner’s use of
improper hindsight (id. at 12-13).
Appellant also argues that “the features of the resin clip of Kojima
would require significant modification to be incorporated into a window
stop,” as the resin clip “is configured for insertion into a circular opening,”
and “not an elongated opening, into which a window stop is typically
inserted.” (App. Br. 14.) Moreover, Appellant argues, “the flange (20) of
Kojima is inclined downward, in contrast to the lip of a window stop, which
is typically parallel to the surface on which it rests.” (Id.)
Appellant argues further:
Additionally, all of the claims at issue recite that the
engagement surface is inclined with respect to the lip, but
Kojima does not discuss any advantages to such an
arrangement. Kojima does disclose having a stepped
configuration of the locking parts (41), and, in the embodiment
shown in FIGS. 6-7C, the locking parts (41) appear to be angled
downward. However, Kojima does not disclose even one
advantage to configuring the locking parts (41) in any type of
angled or inclined arrangement with respect to the flange (20).
Thus, even if one skilled in the art would be motivated to look
outside the relevant art to Kojima to develop a window stop for
insertion into a frame of varying thickness, Kojima provides no

1 All references to the Appeal Brief are to the Second Amended Appeal Brief
dated June 25, 2007.
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motivation or suggestion to utilize an engagement surface that
is inclined with respect to the lip thereof.

(Id. at 14-15.)
Appellant additionally argues that Kojima is non-analogous art, and is
thus not properly combinable with Bratcher (App. Br. 10). According to
Appellant, the instant claims, as well as Bratcher, are drawn to a window
stop for limiting movement of a sliding window, while Kojima is a resin clip
designed to be fitted into an attachment hole in a panel for an automobile (id.
at 11). Appellant thus argues that “[o]ne skilled in the art of windows and
window stops could not be reasonably be expected to look to automobile
panels and clips therefor to solve such a problem.” (Id.) Moreover,
Appellant asserts, “the clip of Kojima is not designed, disclosed, or
contemplated to operate with moving parts.” (Id.)
Appellant’s arguments are not found to be convincing. An
embodiment of the window stop of the invention is shown in Fig. 4 below:

In the window stop shown, the engagement surface (45) comprises a first,
second, and third ridge (78, 80, and 82), each of which is located
successively further away from the lip (49) than its predecessor (Spec. 16, ll.
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8-14). Confronting surfaces (77, 79, and 81) found among ridges (78, 80,
and 82) allow the housing (12) to be installed in a wall (8) having a
thickness between a minimum thickness and a maximum thickness (id. at ll.
14-21).
The window stop of Bratcher is shown in Fig. 3 below:

In the window stop of Bratcher, a resilient clip (34) is used to retain the
housing within the window frame, and extend from the exterior walls and
upwardly toward the faceplate (32) (Bratcher, col. 4, ll. 7-14). The window
stop of Bratcher is identical to the claimed window stop except that on clip
of the claimed window stop there are a first, second, and third ridge (78, 80,
and 82), each of which is located successively further away from the lip.
The Examiner relies on Kojima to make up that deficiency. The resin
clip of Kojima is shown below:
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The resin clip of Kojima is fitted into an attachment hole of a panel to “be
put on an automobile or the like,” wherein the clip is designed to be
“adaptable to a panel when a board thickness of the panel is varied within a
certain range.” (Kojima, col. 1, ll. 6-12.) Specifically, Kojima teaches that
“since the plurality of stepped locking parts 41a, 41b and 41c are provided
for engagement with the aperture edge of the attachment hole 51, any one of
the locking portions is adapted to the thickness and thereby engaged,” and
thus the “same resin clip 10 can be adapted to a plurality of panels 50 with
various thicknesses.” (Id. at col. 5, l. 54-col. 6, l. 2.)
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Thus, we conclude that it would have been obvious to one of ordinary
skill in the art to use the stepped locking parts of Kojima in the resilient resin
clip of the window stop of Bratcher to allow the window stop to be used in
wall of different thickness. We acknowledge that Kojima was written in the
context of the automotive art, while Bratcher is drawn to a window stop.
But, as noted by the Supreme Court:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and one of ordinary skill
in the art would recognize that it would improve similar devices
in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.

KSR, 127 S. Ct. at 1740.
Kojima teaches that stepped locking parts allow a clip to be used to
secure the clip to a panel with a variety of thicknesses, and as noted by the
Specification, window stop manufacturers needed to produce multiple
housings based on anticipated frame member or wall thicknesses, which
increased cost (Spec. 2-3). Thus, there were recognized market forces for a
window stop that could be used walls of differing thicknesses. Moreover,
there is no evidence on record that it would have been beyond the level of
skill of the ordinary artisan to add the stepped locking ridges to the resilient
clip of the window stop of Bratcher to allow the window stop to be used in
walls of differing thicknesses.
Although Kojima does not specifically disclose an advantage to
configuring the locking parts (41) in any type of angled or inclined
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arrangement with respect to the flange (20), we find that it would have well
within the level of skill of the ordinary artisan to determine the best
arrangement to obtain the best result to secure the stop to the wall.
Moreover, the fact that the clip of Kojima is configured for insertion into a
circular opening does not claim 24 unobvious, as Kojima specifically
teaches that it is the stepped locking edges that allow for attachment to
panels of differing thicknesses.
Finally, in response to Appellants argument that the clip of Kojima
would need significant modification to combine it with the window stop of
Bratcher, as noted by the Examiner (Ans. 6), the window stop structure is
well known in the art, as demonstrated by Bratcher. The only modification
that is needed is the addition of stepped locking edges, which are taught by
Kojima, and are also taught by Kojima to allow for attachment of the same
clip to panels or walls of differing thicknesses.
We therefore affirm the rejection as to claim 24. As Appellant does
not argue claims 30-33 and 36 separately (App. Br. 10), the rejection is
affirmed as to those claims as well.

As to claim 35, Appellant argues that claim 35 requires “a tab . . .
having a planar engagement surface distal from the base portion, the planar
engagement surface being spaced from the lip and inclined with respect to
the lip, the planar engagement surface extending from an inner edge of the
tab proximal to the housing to an outer edge of the tab distal from the
housing.” (App. Br. 15) According to Appellant, “Kojima does not disclose
a tab having a planar engagement surface ‘extending from an inner edge of
the tab proximal to the housing to an outer edge of the tab distal from the
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housing.’” (Id. at 16.) Rather, Appellant asserts, “the resin clip (10) of
Kojima has a stepped engagement surface containing several stepped
locking parts (41), rather than a single engagement surface that extends from
an inner edge to an outer edge of the tab.” (Id.)
Appellant’s argument is not convincing. Claim 35 is drawn to a
window stop comprising “a tab . . ., the tab having a planar engagement
surface distal from the base portion, the planar engagement surface being
spaced from the lip and inclined with respect to the lip, the planar
engagement surface extending from an inner edge of the tab proximal to the
housing to an outer edge of the tab distal from the housing.” Claim 35 uses
the transition phrase “comprising,” and thus does not exclude additional
planar engagement surfaces. Thus, there is nothing in claim 35 that requires
a single engagement surface, and the rejection is affirmed.

CONCLUSION
As the Examiner has set forth a prima facie case that claims 24, 30-33,
35, and 36 are obvious over the combination of Bratcher and Kojima, which
has not been rebutted by Appellant, the rejection is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:

PAUL J. NYKAZA, ESQ.
BANNER & WITCOFF, LTD.
10 SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606-7407

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