12657841 (P.T.A.B. Jan. 29, 2015)

Ex Parte Merhar et al

Patent Trial and Appeal BoardJan 29, 2015

12657841 (P.T.A.B. Jan. 29, 2015)

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. 12/657,841 01/28/2010 Thomas Merhar 5068.1019 7873 23280 7590 01/29/2015 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER KENNEDY, JOSHUA T ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 01/29/2015 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 THOMAS MERHAR and RALPH LIPPUNER ____________ Appeal 2013-000843 Application 12/657,841 Technology Center 3600 ____________ Before JOHN C. KERINS, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1–3 and 8–19. Appeal Br. 2. Claims 4–7 have been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a channel joining system with a mounting channel and a joining part for joining the mounting channel to a support.” Spec. ¶ 2. Independent claim 1, reproduced below with relevant language in italics, is illustrative of the claims on appeal: Appeal 2013-000843 Application 12/657,841 2 1. A channel joining system comprising: a mounting channel having profile walls; and at least one joining part for joining the mounting channel to a support, the mounting channel having an installation opening delimited by edges, the installation opening running along a longitudinal direction of the mounting channel and having a clear width running perpendicular to the longitudinal direction of the mounting channel, at least one of the profile walls having several fastening openings at a distance from each other in the longitudinal direction of the mounting channel, each fastening opening having a clear length running in the longitudinal direction, and a clear width running perpendicular thereto, the joining part having a contact section for contacting the mounting channel, a holding section for holding the channel joining system on a section of the support, and a fastening section for fastening the joining part to the mounting channel, the fastening section of the joining part having a rotatable engaging section insertable into the mounting channel and serving to engage behind the edges of the installation opening, a length of the engaging section being greater than the clear width of the installation opening but smaller than the clear length of one of the installation openings, a width of the engaging section being smaller than the clear width of the installation opening and smaller than the clear width of a fastening Appeal 2013-000843 Application 12/657,841 3 opening, the engaging section having a first side facing the contact section, a second side facing away from the contact section, and two ends extending between the first and second sides, the first side having a shoulder section having a shoulder length less than the length of the engaging section and a remainder section extending from the shoulder section to the ends of the engaging section, the remainder section having a first height between the first side and second side at the shoulder section less than a height of the shoulder, a height of the ends between the first and second sides being equal to or less than the first height. (emphasis added). EVIDENCE RELIED ON BY THE EXAMINER Onishi US 4,770,378 Sept. 13, 1988 Todd US 4,961,553 Oct. 9, 1990 Andronica US 5,799,907 Sept. 1, 1998 Appeal 2013-000843 Application 12/657,841 4 REJECTIONS ON APPEAL1 Claims 1–3, 8–12, 16, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Andronica and Todd. Ans. 5–9. Claims 13–15, 17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Andronica, Todd, and Onishi. Ans. 9–10. ANALYSIS The rejection of claims 1–3, 8–12, 16, and 18 under 35 U.S.C. § 103(a) A. Appellants’ Positions As to independent claim 1, Appellants contend that it would not have been obvious to modify Andronica to satisfy the language in italics above. According to Appellants, “Andronica clearly desires the notches 96/98 for the Fig. 9 embodiment as shown [in Andronica] and there simply is no reason to eliminate any structure shown as Andronica appears to actually want the ‘hook and notch’ structure.” Appeal Br. 8 (citing Andronica, col. 6, ll. 32–37). Appellants also assert that Andronica “does not desire removal of material, which would lessen securement.” Appeal Br. 8. 1 The Examiner rejects claims 14, 15, 17, and 19 under 35 U.S.C. § 112, second paragraph, for indefiniteness. See Final Act. 2–3 (mailed Feb. 29, 2012). Specifically, the Examiner states that “it is unclear as to whether the claims are drawn to the combination” of the “mounting channel,” “joining part,” and “support” or “just the subcombination” of the “mounting channel” and “joining part.” See id. In the Response to Final Office Action, Appellants submit amendments to claims 14, 15, 17, and 19 to clarify that the subcombination is being claimed. See Response to Final Act. 4–8 (filed Apr. 17, 2012). In the Advisory Action, the Examiner indicates that the proposed amendment would be entered. See Advisory Act. 1 (mailed Apr. 20, 2012). As such, the rejection is moot. Appeal 2013-000843 Application 12/657,841 5 Appellants also argue that the Examiner does not assert that removal of the hooks would have actually been obvious, but rather, the Examiner “simply states ‘if the function of the element is not desired’” without “actually assert[ing] that it is not desired.” Id. According to Appellants, “[t]here is absolutely no teaching or factual evidence, as required by MPEP 2144, that any of the prior art shows that the function of the notches with the hook structure of Andronica is not desired.” Id. As to independent claims 16 and 18, Appellants repeat various arguments made for claim 1. Id. at 11–13. B. The Examiner’s Positions As to claim 1, the Examiner relies on In re Larson, 340 F.2d 965 (CCPA 1965), to assert that “the omission of the additional lips [in Figure 9 of Andronica] which served to increase locking securement thereof would have been obvious if this feature was not desired (i.e. for reasons such as easier manufacture, lack of need for the additional securement, etc[.]).” Ans. 10–11. The Examiner also states that “Todd is relied upon to present a teaching/factual evidence of such an engineering design choice as Todd teaches modifying a similar prior art structure (Fig[.] 2) having a remainder portion with notches (at 32/34) adjacent a shoulder portion (‘V’ shaped portion between 40 and 46) to instead have planar remainder portion (Fig[.] 4) adjacent the shoulder portion, thus showing that the function of the notches with the hook structure is not desired.” Ans. 11. C. Discussion Based on the record on appeal, we conclude that the Examiner improperly rejected claim 1 as unpatentable based on Andronica and Todd. We are persuaded by Appellants’ argument that the following passage from App App Andr secu Andr secti in a with issue artic conc (cita (200 eal 2013-0 lication 12 onica teac rement” (s FI str ex str lip bo th onica, col Figure 9 on, showin longitudin Appellant provides Rejectio ulated reas lusion of o tion omitte 7). Here, 00843 /657,841 hes that re ee Appeal G. 9 show ap 90, 9 tending o ut 102, a s 37, 39 a ttom flan ereof. . 6, ll. 32– shows “a g one of t ally extend s (Reply B the benefi ns based o oning with bviousnes d), quoted the Exami moval of Br. 8): s the bot 2 inserted pening 32 nd then tu re inserted ge 94 for 37. Figure fragmente he modifie ing slot” o r. 2) that t t of “increa n obviousn some rat s.” In re K in KSR In ner has no 6 the materia tom flange through in the top rned 90 d in the cu a better lo 9 from A d elevation d pipe stra f a strut. he Examin se[d] lock ess must ional unde ahn, 441 t’l Co. v. t provided l at issue 94 of eit the longi portion 3 egrees so t-outs 96, cking sec ndronica i al end vie ps of [the Id., col. 3, er admits ing secure be support rpinning t F.3d 977, Teleflex In “articulate would “les her pipe tudinally 4 of the that the 98 in the urement s reproduc w, partly invention ll. 11–14. that the m ment” (An ed by “som o support t 988 (Fed. c., 550 U. d reasonin sen ed below: in cross ] engaged We agree aterial at s. 10). e he legal Cir. 2006) S. 398, 41 g with 8 Appeal 2013-000843 Application 12/657,841 7 some rational underpinning” to support modifying Andronica to negate the admitted benefit of “better locking securement” and has also not provided evidence that such benefit is not desired. In addition, the Examiner has not provided evidence to support the alternate asserted rationale of “easier manufacture.” See Ans. 10–11. We do not agree with the Examiner’s position (id.) that In re Larson, 340 F.2d 965 (CCPA 1965), supports the rejection here. In that case, in addition to aspects of the claimed invention, the prior art reference at issue taught “additional framework”—i.e., additional structure not required by the claimed invention—that provided an “additional feature.” Larson, 340 F.2d at 969. The court held that “[i]f this additional feature is not desired, it would seem a matter of obvious choice to eliminate it and the function it serves.” Id. (citation omitted). In Larson, after eliminating the additional structure, the disclosed device still provided certain benefits, just not the specific additional benefit associated with the additional structure. In contrast, here, the evidence of record shows that removal of the material at issue from the embodiment shown in Figure 9 of Andronica would actually undermine the sole stated purpose of that embodiment: “better locking securement.” Andronica, col. 6, ll. 32–37. Further, we do not agree with the Examiner’s finding that Todd “show[s] that the function of the notches with the hook structure is not desired.” See Ans. 11. Todd discloses that the prior art (as shown in Figure 2) used a particular geometry (which the Examiner refers to as “notches with the hook structure” (Ans. 11)) to create sufficient friction to fix clamp component 40 (and similar component 42 not shown in Figure 2) from App App slidi Todd syste “[f]r clam To re porti 11)) recta mod a sup betw pipe not t desir desir Todd eal 2013-0 lication 12 ng relative is reprod Figure 2 m . . . .” I iction alon p compon medy this on (which on flanges ngular not ifications t porting ch een the ch is attached each that t ed” (Ans. ed and can For simi teaches t 00843 /657,841 to channe uced below shows “a d., col. 4, e is often ents 40 an alleged fa the Exam 86 and 88 ches 78 (s o the prior annel by p annel and to that ch he “functi 11) but ra be perfor lar reasons hat a “rem l 24. See : partial sec ll. 53–54. inadequate d 42 relati iling of th iner refers in combi ee Todd, F art “prev roviding the system annel.” T on of the n ther that th med more , we do no ainder por 8 Todd, col. tion throu Todd also to preven ve to chan e prior art to as a “pl nation with igs. 3, 4). ent[] slippa a positive, compone odd, col. 7 otches wit at function readily w t agree wi tion with n 5, ll. 37–4 gh [a] prio teaches, h t th[e] unw nel 24. Id , Todd tea anar rema a modifi Together ge of a su interfitting nts by wh , ll. 22–28 h the hook —preven ith modifie th the Exa otches” an 4. Figure r art pipe s owever, th anted mo ., col. 6, ll ches the us inder port ed channel these two pport pipe engagem ich the sup . Thus, T structure ting slippa d structur miner’s fi d a “plan 2 from upport at vement” o . 10–12. e of a flat ion” (Ans. with relative to ent ported odd does is not ge—is e. nding that ar f Appeal 2013-000843 Application 12/657,841 9 remainder portion” are “equivalents” that one can “substitute one for the other” as an “engineering design choice.” See Ans. 8, 11. As discussed above, the embodiment in Figure 4 of Todd uses the flat portion on flanges 86 and 88 in combination with rectangular notches 78 to prevent slippage. Todd, col. 7, ll. 1–28. The use of the flat portion alone does not lead to this benefit. For the reasons set forth above, we reverse the rejection of claim 1. For these same reasons, we also reverse the rejection of claims 2, 3, and 8– 12, which depend, directly or indirectly, from claim 1. We turn now to independent claims 16 and 18. Appellants assert many of the same arguments we find persuasive, for the reasons set forth above, with regard to claim 1. Compare Appeal Br. 11–13 with id. at 8–9. Because the Examiner again relies on Andronica and Todd to reject claims 16 and 18 (Ans. 12), we reverse the rejection of those claims for the reasons set forth above. The rejection of claims 13–15, 17, and 19 under 35 U.S.C. § 103(a) In the Final Office Action, the Examiner rejected claims 13–15, 17, and 19 as unpatentable over Andronica, Todd, and Onishi. Final Act. 8. The Examiner’s rejection is based on the same deficient findings discussed above with respect to independent claims 1, 16, and 18. Onishi is not relied upon to remedy the deficiencies of Andronica and Todd. Accordingly, for the reasons set forth above, we reverse the rejection of claims 13–15, 17, and 19. Appeal 2013-000843 Application 12/657,841 10 CONCLUSION For the reasons set forth above, we REVERSE the Examiner’s rejections of claims 1–3 and 8–19 under 35 U.S.C. § 103(a). REVERSED rvb