Ex Parte Murphy

Patent Trial and Appeal Board

Jun 3, 2016

12849643 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/849,643 08/03/2010
85444 7590 06/03/2016
Bay Area Technolgy Law Group PC
2171 E. Francisco Blvd., Suite L
San Rafael, CA 94901
FIRST NAMED INVENTOR
Richard Michael Murphy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
108 02 8252
EXAMINER
BALDOR!, JOSEPH B
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
06/03/2016 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 RICHARD MICHAEL MURPHY
Appeal2014-004464
Application 12/849,643
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Michael Murphy (Appellant) seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 55-87. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The disclosed subject matter "is directed toward providing improved
structural elements useful in construction of space structures such as toy
systems of the type that employs struts and connector hubs." Spec. 1, 11. 4---6.
Claims 55, 62, 70, and 76 are independent. Claim 55 is reproduced below:
Appeal2014-004464
Application 12/849,643
55. A connector element for a space structure of
the type utilizing a plurality of struts, said connector
element comprising first and second subparts, at
least one strut receiving element having a strut
receiving socket emanating from each of said
subparts, said subparts having a thickness, said
subparts being attached to one another by use of a
hinge, said hinge comprising at least one pintle and
at least one hinge knuckle, said pintle having a
length and cross-section and said hinge knuckle
having an opening and length, said opening being
sized to capture said pintle cross-section creating
said hinge wherein said first and second subparts
rotate with respect to one another about a common
axis defined by said hinge, the length of said pintle
and said knuckle being such as to provide at least
one gap along said pintle unencumbered by said
knuckle when said pintle and knuckle are joined to
form said hinge.
REJECTIONS
1. Claims 55, 62-69, and 76-87 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Hammond (US 2006/0228980 Al, published Oct.
12, 2006).
2. Claims 56-61 and 70---75 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Hammond and Fouquart (US 3,550,311, issued Dec.
29, 1970).
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Application 12/849,643
DISCUSSION
Rejection I -The rejection of claims 55, 62-69, and
76--87 under 35 U.S. C. § 102(b)
A. Independent Claim 55 (and Dependent Claims 84--87)
Claim 55 recites "the length of said pintle and said knuckle being such
as to provide at least one gap along said pintle unencumbered by said
knuckle when said pintle and knuckle are joined to form said hinge." Br. 13
(Claims App.). In the Final Office Action, the Examiner cited Figures 2 and
4 in Hammond regarding the limitation at issue, identifying element 32 as
the recited "pintle," element 33 as the "knuckle," and elements 32 and 33
together as the "hinge." Final Act. 2, 3.
Appellant argues that "[a]lthough the Examiner points to Fig. 2 of the
reference [as] alleg[edly] teaching 'free space', in fact, neither Fig. 2 [n]or
any other portion of Hammond discloses this feature." Br. 5. 1 Appellant
contends that Figure 1 of Hammond shows "the joining of male and female
elements to create a hinge" and that Figure 2 shows "that the male elements
... abut one another along the hinge." Id. According to Appellant, "[t]here
is no free space or 'gap' whatsoever in Hammond." Id. Appellant also
argues that "[t]his free space along the pintles enables yet another socket
receiving element 80 of Fig. 7B to releaseably connect to connector 42 by
snap fitting knuckles 82 and 83 onto the appropriate free space of the pintle
elements" whereas, "[b ]y contrast, Hammond does not provide any ability to
add such subparts whatsoever." Id. at 5, 6.
1 Appellant appears to refer to the limitation at issue as "free space,"
based, at least in part, on page 15, lines 16-28 of the Specification, which
uses that phrase. See also Br. 2 (citing Spec. 15, 11. 16-28 regarding the
limitation at issue).
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Application 12/849,643
In response, the Examiner provides the following annotated versions
of Figures 1 and 2 of Hammond, each of which has been overlaid with an
arrow-labeled with "Free Space"-identifying a location on each Figure:
:::;:::~:::.:·
~ ..... . ..... :f,..*'*>-\ ~~=4 .. ~~-.. ·/ $'~~ .. " . ./'. ' ;:. .... 4:..'~·:-.. ::-\\":;.,,, .. i:l~;. <" t ~.......... ..· ..: J" ,,, · ·.. ..~....... \x .. ~:t~ .. ;: , :d ~.... :-.~~ .... ~ ......... ,.,, t-t;;,~-~<<~~ .... ~ .. .. .,,, M........ ...... . ~ # ~ :;:: ~ .... . .:-.: ...... r ~ ~"'"'w,;.,,,,, ~~ ~ .. ~'.:!$..\":..xwY.~~ ........ -«~
\!<~~~5 ~:-~:.
(Y\~11~~~~0 ,, v ~:t~:: :
Ans. 11. Without the added annotation, Figure 1 provides "a front
elevational view of an assembled, two-part hinged connector element
according to the invention" of Hammond, whereas Figure 2 provides "a back
elevational view of the assembled connector of FIG. 1." Hammond i-fi-17, 8.
The Examiner states "Fig[ s.] 1 and 2 show a small free space along the
pintle unencumbered by a knuckle when joined. It is admittedly a very
small free space, but a free space non[ e ]theless." Ans. 11.
Here, Appellant has not shown error in the Examiner's finding that
Hammond discloses the limitation at issue. Although Appellant appears
correct that Figure 2 of Hammond does not show a "gap" between the
abutting ends of the two male hinge elements 3 2 (with the interface at issue
shown approximately at the center of Figure 2), the Examiner does not
identify that interface as the "gap" recited in the limitation at issue. Instead,
the Examiner identifies, in annotated Figure 1 for example, the interface
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Application 12/849,643
between ( 1) the left edge of the left most of two female hinge elements 33
and (2) the right edge of bottom socket wall 15. See Ans. 11 (left side of
annotated Figure 1 ). Although the "gap" at this interface is, as noted by the
Examiner, "very small" (Ans. 11 ), the limitation at issue does not specify the
size of the "gap." And, contrary to Appellant's argument (Br. 5, 6), the
limitation at issue does not require the "gap" to be sized to accept an
additional strut receiving element.2 See In re Self, 671F.2d1344, 1348
(CCPA 1982) (rejecting arguments "not based on limitations appearing in
the claims").
For these reasons, we sustain the rejection of independent claim 55.
Because Appellant does not separately argue claims 84--87, which depend
from claim 55 (Br. 6), we also sustain the rejection of claims 84--87.
B. Independent Claim 62 (and Claims 63-69) and
Independent Claim 76 (and Claims 77-83)
Claim 62 recites "said subparts being beveled from said common axis
as said subparts extend therefrom." Br. 14 (Claims App.). Claim 76 recites
"said subparts being beveled from said common axis as said subparts extend
therefrom, thereby increasing the arc of rotation between said subparts
relative to said subparts without said bevel." Id. at 17. In the Final Office
Action, the Examiner cited Figures 3 and 4 in Hammond regarding the
limitation in claim 62 (Final Act. 4) and Figures 3, 4, 7, and 8, and
paragraph 25 of Hammond regarding the limitation in claim 76 (id. at 5).
Appellant states that "another key feature of the present invention is
the beveling of subparts from the common axis of the hinge as subparts
2 Instead, that additional limitation is recited, for example, in claims
56 and 70, which are addressed in Rejection 2.
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Application 12/849,643
extend therefrom" and argues that "Hammond does not show beveling from
hinge knuckles." Br. 6. In support, Appellant contrasts a version of certain
statements from paragraph 25 of Hammond with a version of certain
statements from page 14 of the Specification. Compare Hammond i-f 25, and
Spec. 14, 11. 1-8, with Br. 6. According to Appellant, "[i]n that Hammond
does not teach beveling from the common axis (knuckle) as the subparts
extend therefrom, the advantage of such beveling is not taught." Br. 6.
In response, the Examiner states, "Fig[ure]s 4 and 8 show beveled
sections around the knuckle and pintle which facilitate rotation[;] as further
discussed in paragraph 0025, '[t]o accommodate pivoting[,] ... arm 25, at
the outer side of the axially aligned rod-engaging socket 19, is formed of a
narrower width' (and see diagram below)." Ans. 12. The Examiner also
provided the following annotated version of Figure 8 of Hammond:
Id. at 13. Without the added annotation, Figure 8 provides "an end
elevational view of the connector half section of FIG. 4." Hammond i-f 13.
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Application 12/849,643
Figure 4, in tum, provides "a back elevational view of a single connector
half section constructed according to the invention." Id. i-f 10.
With regard to structural aspects of the limitations at issue, we are not
apprised of error because Appellant essentially recites the language of the
limitations and asserts that Hammond does not disclose that limitation but
do not explain why. See 37 C.F.R. § 41.37(c)(l)(iv) (2013) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1356-57 (Fed. Cir. 2011) (holding that "the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art"). Thus,
Appellant has not shown error in the Examiner's finding that the identified
angled feature (see Ans. 13) satisfies the limitation at issue.
As to Appellant's contention that "the advantage of such beveling is
not taught" (Br. 6), we view this as addressing the requirement from the
limitation at issue in claim 7 6 reciting "thereby increasing the arc of rotation
between said subparts relative to said subparts without said bevel."
Appellant has not, however, shown error in the Examiner's reliance on
paragraph 25 of Hammond-and specifically, the first sentence of that
paragraph highlighted by the Examiner (Ans. 12}-to address this additional
limitation. See Hammond i-f 25 ("To accommodate pivoting action between
two connected half sections 10, about the pivot axis 22, the gripping arm 25,
at the outer side of the axially aligned rod-engaging socket 19, is formed of a
narrower width than the several rod-engaging arms 23. This can be seen in
FIGS. 8 and 9." (emphasis added)).
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Application 12/849,643
Thus, we sustain the rejection of independent claims 62 and 76.
Because Appellant does not separately argue claims 63---69 (which depend
from claim 62) or claims 77-83 (which depend from claim 76) (Br. 6), we
also sustain the rejection of claims 63---69 and 77-83.
Rejection 2-The rejection of claims 56--61
and 70--75 under 35 U.S.C. § 103(a)
For the claims in this Rejection, the Examiner relied on Hammond for
various limitations, but stated that "Hammond fails to teach the feature of
the gap is of length to accept at least one additional strut receiving element
releasably attachable to said pintle at said gap" as recited in claims 55 and
70. Final Act. 8 (claims 56---61), 10 (claims 70-75). The Examiner found,
however, that Fouquart "teaches a gap [] of [a] length to accept at least one
additional strut receiving element releasably attachable to said pintle at said
gap (fig. 4f, there are more than 2 strut receiving slots per pintle )." Id.
According to the Examiner, it would have been obvious:
Id.
to have provided the strut receiving construction toy of
Hammond with the feature of additional gap length as taught by
the strut receiving construction toy of Fouquart for the purpose
of enabling additional connections and a wider variety of
assemblies as taught by Fouquart (column 1 lines 53-61),
making the device more versatile, and more attractive to the
users.
First, we note that, within the arguments related to claim 55 discussed
above (see supra Rejection 1, § A), Appellant contends that claim 70, as
well as claim 55, are distinguishable because "Hammond does not provide
any ability to add such subparts whatsoever and, as a consequence, there is
no disclosure in Hammond of the ability to do so." Br. 6. As noted by the
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Application 12/849,643
Examiner, however, "where Appellant has claimed a free space large enough
to receive an additional element, as in claim 70, the secondary reference of
Fouquart was used." Ans. 11; see also In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
Second, Appellant argues that "[f]or the combination of Hammond
[and] Fouquart to be viable, Hammond must suggest a gap along a pintle
unencumbered by a knuckle" and that "[ w ]ithout this teaching, there would
be no reason to tum to F ouquart as the Examiner suggests as there would be
no way to attach additional connections to the Hammond hinge." Br. 7.
Appellant also argues "in that Hammond shows no gap to receive additional
elements, the Fouquart construction elements would have no way to connect
to the Hammond hinge." Id.; see also id. ("The Hammond hinge would not
be accessible for the joining of additional elements."); id. (arguing that
"there is no teaching in the prior art of a Hammond-like hinge with free
space to receive such additional connections").
For the reasons discussed above (see supra Rejection 1, §A), we see
no error in the Examiner's findings that Hammond teaches a "gap along said
pintle unencumbered by said knuckle when said pintle and knuckle are
joined to form said hinge," as recited in claim 55 (from which claim 56
depends) and as recited in claim 70. See Ans. 13 ("First, Hammond does
teach a gap as discussed above."). Thus, we are not persuaded by
Appellant's arguments based on such a purported error. Moreover, as noted
by the Examiner (id.), Appellant attacks Hammond individually by arguing
that the structures disclosed in Hammond alone-without modification
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Application 12/849,643
based on Fouquart (as proposed}--would not be capable of receiving
additional elements. See In re Merck & Co., 800 F .2d at 1097.
We tum now to Appellant's statement that "if the Examiner is
suggesting that Hammond shows free space which may be microscopic as
suggesting its combination with Fo[u]quart the conclusion is simply wrong."
Br. 7. Although a conclusion of obviousness must be supported by findings
and analysis establishing a reason to combine the known elements in the
manner required in the claim at issue, the analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[an examiner] can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Thus, whether Hammond "suggest[s]" the
proposed combination is not the issue; here, Appellant has not persuasively
addressed the reasoning provided by the Examiner to modify Hammond
based on F ouquart.
Third, Appellant "notes, in claim 62, that the beveling is from the
common axis as the subparts extend therefrom. In other words, as one
moves from the common axis, the subpart is beveled." Br. 7. 3 In support,
Appellant contrasts a version of certain statements from paragraph 25 of
Hammond with a version of certain statements from page 14 of the
3 We note that claim 62 is not addressed in Rejection 2, but that
claims 57 and 71, addressed in Rejection 2, recite limitations similar to the
limitation highlighted by Appellant. See Br. 13 (Claims App.) (claim 57:
"where said subparts are beveled from said hinge as said subparts extend
therefrom"); id. at 16 (claim 71: "where said subparts are beveled from said
hinge as said subparts extend therefrom"). We consider this argument to
address those claims and the claims depending therefrom.
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Application 12/849,643
Specification. Compare Hammond if 25, and Spec. 14, 11. 1-6, with Br. 7-8.
According to Appellant, "[ c ]learly, Hammond does not teach beveling from
the common axis (knuckle) as the subparts extend therefrom and therefore
cannot achieve the benefits derived therefrom." Id. at 8.
The Examiner appears to rely on the same response set forth above.
See supra Rejection 1, § B (discussing Ans. 12-13).
We are not apprised of error based on Appellant's third argument for
the same reasons discussed above. See supra Rejection 1, § B. Appellant
does not persuasively demonstrate how the proposed construction of the
language in claims 57 and 71 (see note 3) distinguishes from the structure
identified by the Examiner (Ans. 13).
For these reasons, we sustain the rejection of claims 5 6-61 and 7 0-7 5
as unpatentable over the combined teachings relied upon by the Examiner.
DECISION
We AFFIRM the decision to reject claims 55-87.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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