Ex Parte Oddsen

Board of Patent Appeals and Interferences

Dec 16, 2009

10892799 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ODD N. ODDSEN, JR.
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Appeal 2009-001452
Application 10/892,799
Technology Center 3600
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Decided: December 17, 2009
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Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001452
Application 10/892,799

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STATEMENT OF THE CASE
Odd N. Oddsen, Jr. (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, 4, 6-12, and 14-22. Claims 3,
5 and 13 have been cancelled. We have jurisdiction over this appeal under
35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a channel for use in an extension arm
for mounting electronic devices. Spec. 1, para. [0002] and Spec. 5, para.
[0014]. The channel 104 includes an elongated U-shaped body 130 having a
bottom wall 180 and sidewalls 182, integrally cast rollers 132, and a boss
integrally formed with the bottom wall 180, the boss having a threaded hole
186 adapted to receive a ball stud 138. Spec. 5, para. [0014]; Spec. 9, para.
[0035]; Spec. 15, para. [0053]; and figs. 10A and 10D.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A channel for use in an extension arm that adjustably mounts a
device to a support, said channel comprising

an elongated body having a bottom wall;

a first roller disposed at a first end of said body;

a second roller disposed at a second end of said body, said first
and second rollers integrally formed with said body;

a boss integrally formed with said bottom wall adjacent a first
end of said body, said boss having a bore therein;

and a ball stud received within said bore, wherein said bore
extends partially through said boss.
Appeal 2009-001452
Application 10/892,799

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Schwartztrauber US 3,939,591 Feb. 24, 1976
Matsubara US 6,502,972 B2 Jan. 7, 2003

Appellant’s Admitted Prior Art (APA), Spec., paras. [0007] and [0008]; and
figs. 4A and 4B.

Appellant seeks review of the Examiner’s rejection of claims 1, 2, 4,
6-12, and 14-22 under 35 U.S.C. § 103(a) as unpatentable over APA and
Matsubara or Schwartztrauber.

THE ISSUE
The Examiner found that APA discloses all the features of
independent claims 1, 7, 11, and 18 with the exception of a channel having a
bottom wall and “a boss integrally formed with said bottom wall.” Ans. 4.
Pointing to the disclosures of Matsubara or Schwartztrauber, the Examiner
notes that an integrally formed boss is well known. Id. The Examiner
concludes that a person of ordinary skill would have been prompted to
modify the nut and hole assembly of APA with the boss of either Matsubara
or Schwartztrauber because it “would have resulted in the known advantage
of reducing the number of parts during assembly.” Id.
Appellant argues that the combined teachings of APA and Matsubara
would not result in the claimed invention because the “the fulcrum axis 20 of
Matsubara, which includes threaded length 20b and ball 20c would be
incorporated with the stiffener 70 of FIGS. 4A and 4B” and not the bottom
wall of APA. App. Br. 19. Similarly, with respect to the combined
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teachings of APA and Schwartztrauber, Appellant argues that, “the hub or
boss of Schwartztrauber would be incorporated with the stiffener 70 of FIGS
4A and 4B” rather than the bottom wall of APA. App. Br. 47. See also,
Reply Br. 8, 9.
The Examiner responds that because the stiffener 70 of APA is
welded to an inner surface of the channel bottom 60, the stiffener is
considered a part of the channel bottom. Ans. 3. See also, Spec., para.
[0008] and fig. 4A. As such, as far as we understand the Examiner’s
position, although the boss of either Matsubara or Schwartztrauber would be
incorporated with the stiffener 70 of APA, because the stiffener 70 is welded
to an inner surface of the channel bottom 60, the boss is integrally formed
with the channel bottom 60.
Accordingly, the issue presented for our consideration in the instant
appeal is as follows:
Has Appellant shown that the Examiner erred in finding that the
combined teachings of APA and Matsubara or Schwartztrauber discloses a
channel having a bottom wall and “a boss integrally formed with said
bottom wall,” as required by each of independent claims 1, 7, 11, and 18?

SUMMARY OF DECISION
We REVERSE.

Appeal 2009-001452
Application 10/892,799

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OPINION
At the outset, we note that the term "integral"1 covers more than a
unitary construction. “‘Integral’ is sufficiently broad to embrace
constructions united by such means as fastening and welding.” Advanced
Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1072 (Fed.Cir.
1989), quoting In re Hotte, 475 F.2d 644, 647 (CCPA 1973) (emphasis
added). In this case, according to the Examiner’s proposed combination, the
boss of either Matsubara or Schwartztrauber replaces the nut 74 and
through-hole assembly of the APA’s stiffener 70. As such, we find that the
modification of the APA with the boss of either Matsubara or
Schwartztrauber would have led to a boss that is integrally formed with the
stiffener 70 of APA. Further, because the stiffener 70 of APA is welded to
an inner surface of the channel bottom 60, we further find that the stiffener
70 is integrally formed with the channel bottom 60. See Spec. 4, para.
[0008] and fig. 4A.
However, just because the boss of Matsubara or Schwartztrauber is
integrally formed with APA’s stiffener 70, and the stiffener 70 is integrally
formed with the channel bottom 60, we do not find that the boss of APA and
Matsubara or Schwartztrauber is integrally formed with the channel bottom
60, as suggested by the Examiner. We find such an interpretation of the
phrase integrally formed to be unreasonably broad.
Claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the

1 Similar to the Examiner, we also find that an ordinary and customary
meaning of the term “integral” is “formed as a unit with another part.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). See also,
Ans. 5.
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specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
this case, Appellant’s Specification clearly describes a boss integrally
formed with the bottom wall 180 of channel 104, that is, a boss directly
formed on the bottom wall 180. See Spec., para. [0053] and fig. 10D. To
interpret the phrase integrally formed to encompass the Examiner’s proposed
combination so as to include an intermediate component, namely, the
stiffener 70, connected between the boss of Matsubara or Schwartztrauber
and APA’s channel bottom 60, would mean that the boss is also integrally
formed with all other components of APA’s arm device, because all
components are interconnected in some manner. See Spec. 1-2, para. [0004]
and fig. 1. For example, according to the Examiner’s interpretation, the boss
would also be integrally formed with the sidewalls 62 and the cast rollers 66
as parts of channel 14, and the gas spring 28 via the ball stud 72. Moreover,
the boss would also be integrally formed with the first and second end caps
12, 18, the lower channel 16, and the forearm extension 20 merely because
the upper channel 14 is connected to these elements. See Appellant’s Figure
4A. However, independent claims 1, 7, 11, and 18 require that the boss be
integrally formed with the bottom wall. An overly broad interpretation, as
the Examiner suggests, would eviscerate the meaning of the phrase
integrally formed because it would mean that all components of APA’s
channel 14 as modified by the boss of Matsubara or Schwartztrauber are
integrally formed merely because they are interconnected to each other in
some manner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions which render phrases in
claims superfluous).
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For the above stated reasons, we conclude that Appellant has
established that the Examiner has not discharged the initial burden of
establishing a prima facie case of obviousness of the subject matter of
independent claims 1, 7, 11, and 18 or their dependent claims 2, 4, 6, 8-10,
12, 14-17, and 19-22. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
claim dependent therefrom is nonobvious). Therefore, the rejection of
claims 1, 2, 4, 6-12, and 14-22 cannot be sustained.

CONCLUSION
Appellant has shown that the Examiner erred in finding that the
combined teachings of APA and Matsubara or Schwartztrauber would have
led to a channel having a bottom wall and “a boss integrally formed with
said bottom wall,” as required by each of independent claims 1, 7, 11, and
18.

DECISION
The Examiner’s decision to reject claims 1, 2, 4, 6-12, and 14-22 is
reversed.

REVERSED

Appeal 2009-001452
Application 10/892,799

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