Ex Parte Nykoluk et al

Board of Patent Appeals and Interferences

Jun 17, 2010

10688447 (B.P.A.I. Jun. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CORY O. NYKOLUK and DAVID D. MITTLEMAN
____________

Appeal 2009-007436
Application 10/688,447
Technology Center 3700
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Decided: June 17, 2010
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007436
Application 10/688,447
2
STATEMENT OF THE CASE
Cory O. Nykoluk et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 30, 32-35, and 38-50.
Claim 31 has been objected to and claims 53-56 have been allowed. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
Appellants’ claimed invention is a hand towed piece of baggage
having a towing handle that is pivotally attached to an arm portion of a
towing member. Spec. 1:3-7. Claim 30, reproduced below, is representative
of the subject matter on appeal.
30. A hand towed piece of baggage comprising:
a piece of baggage having a top and a bottom;
a set of wheels rotationally mounted towards said bottom
of said piece of baggage;
a receptacle providing an opening in said top of said
piece of baggage;
an arm portion retractably engaged to said piece of
baggage and having an adjustable axial length extending
between opposite proximal and distal ends, said proximal end
being operatively secured to said piece of baggage and said
distal end positionable between an extended position and a
retracted position through said receptacle, wherein in said
retracted position said distal end is closer to said piece of
baggage than in said extended position;
a connector fixedly mounted to said distal end; and
a towing handle having a hand grip, the towing handle
being separately provided from the connector and engaged to
the connector such that said hand grip can pivot relative to said
connector about a pivot axis that intersects the hand grip when
said arm portion is in said extended position, and such that said
towing handle grip is retracted at least partially into said
receptacle when said arm portion is in said retracted position.

Appeal 2009-007436
Application 10/688,447
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THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claims 30, 34, 35, and 42-47 under 35 U.S.C. § 102(b) as
anticipated by Williams (US 4,538,709).1
2. Rejection of claims 30, 34, 35, and 38-47 under 35 U.S.C. § 103(a) as
unpatentable over Sadow (US 5,890,570), Liang (US 5,464,080), and Sparks
(US 853,566).
3. Rejection of claims 32 and 33 under 35 U.S.C. § 103(a) as
unpatentable over Sadow, Liang, Sparks, and Browning (US 3,606,372).
4. Rejection of claims 48, 49, and 50 under 35 U.S.C. § 103(a) as
unpatentable over Sadow, Liang, Sparks, and Miyoshi (US 5,908,093).
Rejection of claims 30, 34, 35, and 42-47 under 35 U.S.C. § 102(b) as
anticipated by Williams
The Examiner’s determination of anticipation by Williams is based in
part on the finding that Williams discloses a connector (tubular section 50a)
“fixedly mounted” to the distal end of an arm portion (tubular sections 50b
and 50c of telescoping pole 50) as called for in independent claim 30. Ans.
3. In reaching this finding, the Examiner interpreted the term “fixedly” as
not requiring the connector (tubular section 50a) to be immovable with
respect to the distal end of the arm portion (tubular section 50b). Ans. 3, 7.
Appellants argue that “fixedly” means immovable, and that tubular
section 50a of telescoping pole 50 of Williams is not fixedly mounted to the

1 Claim 37 is not part of this appeal. Appellants mistakenly list claim 37 as
appealed in the headings of their arguments (App. Br. 10, 20; Reply Br. 3);
however, Appellants do not list claim 37 as appealed in the Status of Claims
of their Appeal Brief (App. Br. 4) and correctly note that claim 37 is
cancelled in the Status of Claims of their Reply Brief (Reply Br. 2). Claim
37 is not rejected as anticipated by Williams in the Office Action that is the
subject of this appeal. Office Action, February 27, 2008, page 3.
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Application 10/688,447
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distal end of an arm portion because tubular section 50a moves
telescopically with respect to the remaining portions of telescoping pole 50
(i.e., tubular sections 50b, 50c). App. Br. 21; Reply Br. 4.2
The issue before us is:
Does independent claim 30 require the connector to be immovably
mounted to the distal end of the arm portion, and if so, does Williams
disclose such a connection?
We cannot agree with the Examiner’s interpretation that “fixedly
mounted” does not require the connector to be immovable with respect to
the distal end of the arm portion. Appellants’ Specification does not provide
a lexicographical definition of “fixedly.” “Fixed” is commonly understood
to mean “firmly in position, stationary.” The American Heritage®
Dictionary of the English Language, Boston: Houghton Mifflin, 2007,
Credo Reference, 12 Dec. 2007, last accessed on 2 June 2010 at
(definition 1).
Appellants’ Specification describes the connector 54 as “secured to the free
end 38 [the distal end] of telescoping section 30 by a pair of screws or rivets
78 passing through the holes 39 of the free end 38 into the blind-holes 70 of
the connector 54.” Spec. 11:19-22; fig. 6. Thus, the description of the
attachment of connector 54 to the distal end of the telescoping portion 30
found in Appellants’ Specification is consistent with the commonly
understood meaning of fixed as “stationary.” We find no support in the
Specification for the Examiner’s position (Ans. 7) that Appellants’ counter

2 The Docketing Notice mailed April 10, 2009, incorrectly states that no
Reply Brief was filed. The Office received Appellants’ Reply Brief on
September 24, 2008, and the Examiner noted it in a communication dated
January 7, 2009. The Board has considered Appellants’ Reply Brief in
reaching its decision in this appeal.
Appeal 2009-007436
Application 10/688,447
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bore 52, which is rotatable relative to the distal end of telescoping portion
30, is the “connector” of claim 30. Spec. 10:7-9 (referring to “counter-bore
52” and “connector 54”); fig. 4. As such, we interpret independent claim 30
to require the connector to be mounted stationary to the distal end of the arm
portion.
Williams’s tubular section 50a is rotatably connected to tubular
section 50b of telescoping pole 50. Williams, figs. 2, 5 (note 90º rotation of
handle 20 between these figures). Hence, Williams’s tubular section 50a
(connector) is not mounted so as to be stationary with respect to the distal
end of tubular section 50b (the arm portion) as required by independent
claim 30. As such, the rejection of claim 30 is in error, and the rejection of
claims 34, 35, 37, and 42-47 is also in error by virtue of their dependence,
directly or indirectly, from claim 30.
Rejections under 35 U.S.C. § 103(a)
The Examiner found that Sadow discloses all aspects of the invention
of claims 30, 34, 35, and 38-47 except: (1) the hand grip pivoting relative to
the distal end of an arm portion, and (2) a connector fixedly mounted to the
distal end of an arm portion. Ans. 4. The Examiner concluded that it would
have been obvious to modify Sadow to include a rotatable hand grip, as
taught by Liang, in order “to provide an alternative rotating handle.” Id.
The Examiner further concluded it would have been obvious to modify
Sadow’s device to include a connector as taught by Sparks, “to enable one to
install the handle properly.” Id.
Appellants argue that the Examiner’s rationale for the modifications
based on the teachings of Liang and Sparks is insufficient to explain why a
person of ordinary skill in the art would have made such modifications.
App. Br. 15-18; Reply Br. 6-8.
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The issue before us is:
Is the proposed combination based upon a sufficient reason with a
rational underpinning to explain why a person of ordinary skill in the art
would have modified the device of Sadow to reach the subject matter of
claim 30?
Sadow discloses a wheeled carry-on case 11 having a major
longitudinal edge (defined by front wall 28) provided with two ground-
engaging wheels 14, and at least one of the minor longitudinal edges (e.g.,
side wall 22) provided with two ground-engaging wheels 16. Sadow, col. 1,
ll. 62-65; col. 2, ll. 50-53, 62; col. 3, ll. 8; fig. 1. Wheeled carry-on case 11
includes a single retractable handle 20 that is usable to guide wheeled
movement in a direction substantially parallel to the front face (front wall
28) of the carry-on case 11, with the handle 20 rotatable 90 degrees to guide
wheeled movement in a second direction perpendicular to the first direction.
Sadow, col. 1, ll. 33-46; col. 2, ll. 43-44, 55. For motion perpendicular to
the major longitudinal edge, a user positions handle 20 parallel to front wall
28, tilts the carry-on case 11 to place the weight over wheels 14, and pulls
carry-on case 11 in a direction perpendicular to front wall 28.3 Sadow, col.
3, ll. 6-10; fig. 1 (dotted line position of handle 10). For motion parallel to
the major longitudinal edge (lateral motion), the user positions handle 20
perpendicular to front wall 28, tilts the carry-on case 11 to place the weight
over one of the sets of wheels 16, and pushes or pulls the carry-on case 11 in
a direction parallel to the major longitudinal axis. Sadow, col. 3, ll. 11-17;
fig. 1 (solid line position of handle 20).

3 Wheels 14 are attached to carry-on case 11 such that they do not contact
the ground when the case is upright, i.e., not tilted. Sadow, fig. 2.
Appeal 2009-007436
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Liang discloses a steering mechanism for wheeled luggage designed
both to apply only a pulling force (and not torque) to the luggage to facilitate
steering, and to be attached below the center of gravity of the luggage to
increase stability (reduce tippage of the luggage). Liang, col. 1, ll. 5-10, 44-
51. Liang’s suitcase 10 includes a handle (member 34) comprised of a first
rod 54 interconnected to a second rod 56 having a rotatably mounted handle
42. Liang, col. 3, ll. 43-45; figs. 2, 6. Handle 42 includes a handle-securing
ridge 70 configured for rotatable mounting about a second retaining lip 72
on the distal end of second rod 56 so that handle 42 rotates about the
longitudinal axis of second rod 56. Liang, col. 4, ll. 51-57; fig. 10. Handle
42 is rotatably mounted to second rod 56 so that little if any torque is applied
to suitcase 10 due to a user’s application of force to the handle (member 34),
thus reducing the chance of tipping during steering along a curved path.
Liang, col. 1, ll. 41-45 (only a pulling force is applied); col. 3, ll. 48-59.
Sadow’s carry-on case 11 is tilted during movement in each of two
perpendicular directions, requiring the application of torque to the bag via
the handle (Sadow, col. 3, ll. 6-17; fig. 1), while in contrast, Liang’s
rotatable handle is part of a design intended to prevent the application of
torque to the baggage (Liang, col. 1, ll. 5-10, 41-51; col. 3, ll. 48-59). A
person of ordinary skill in the art would recognize that a modification of
Sadow’s handle 20 to be rotatable as taught by Liang would hinder the
application of force needed to tilt Sadow’s carry-on case 11 for movement.
Given this, we agree with Appellants (App. Br. 17) that the Examiner’s
rationale of providing “an alternative rotating handle” (Ans. 4) does not
adequately explain why a person of ordinary skill in the art would make such
a modification to the carry-on case 11 of Sadow.
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Application 10/688,447
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Regarding the addition of a connector to Sadow’s device as taught by
Sparks, Sparks discloses an improvement in the attachment of handles to
spading forks, shovels, or similar instruments so that the handle is rigidly
united to the shank with a minimum of parts and labor. Sparks 1, ll. 5-6, 16-
25, 30-31. Sparks discloses a shank 1 united by a ferrule 2 to a handle
comprised of a U-shaped handle bar 3 and a hand piece 4. Sparks 1, ll. 35-
39; fig. 1. Ferrule 2 is shaped as an inverted cylindrical cup having a closed
upper end 6 forming a transverse groove 7 with a nearly semi-circular cross
section. Sparks 1, ll. 44-52. The portion of bar 3 fitting into groove 7 has a
complementary nearly semi-circular cross section so that bar 3 fits snugly
within groove 7. Sparks 1, ll. 52-55. A bolt or rivet 8 passes through
aperture 9 of bar 3 and aperture 10 of ferrule 2, firmly locking ferrule 2 to
bar 3 so as to prevent rotation of bar 3 with respect to ferrule 2. Sparks 1, ll.
55-65; figs. 1-3.
We fail to see, and the Examiner has not adequately explained, how
Sparks’s use of a connector (rivet 8) to lock an arm portion (shank 1 and
ferrule 2) to a handle (bar 3 and hand piece 4) so as to prevent rotation
would provide a reason to add such a connector to the combined Sadow and
Liang device where the handle is intended to pivot (rotate) with respect to
the arm portion. Similarly, the Examiner’s rationale that such a modification
would “enable one to install the handle properly” (Ans. 4) is unpersuasive.
While Sparks’s connector (rivet 8) is attached using minimal parts and labor,
we fail to see how knowing this method of non-rotatable attachment would
instruct a person of ordinary skill in use of the connector for a rotatable
attachment as claimed.
Given our analysis of the two modifications, we find that the proposed
combination is not based upon a sufficient reason with a rational
Appeal 2009-007436
Application 10/688,447
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underpinning to explain why a person of ordinary skill in the art would have
modified the device of Sadow to reach the subject matter of claim 30. The
rejection of claims 34, 35, and 38-47 is also in error due to their dependence,
directly or indirectly, from independent claim 30.
The rejections of claims 32 and 33, and claims 48-50, are based on the
same proposed combination of Sadow, Liang, and Sparks as the rejection of
claim 30, with further modifications based on either Browning or Miyoshi.
The Examiner does not use either Browning or Miyoshi to correct the
deficiencies of the Sadow, Liang, and Sparks combination. Thus, we find
that the rejections of claims 32, 33, and 48-50 are in error for the reasons
explained in the analysis of independent claim 30, supra.
DECISION
We REVERSE the Examiner’s decision to reject claims 30, 32-35,
and 38-50.

REVERSED

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