Ex Parte Oetlinger

Patent Trial and Appeal Board

Feb 26, 2016

13086644 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/086,644 04/14/2011
23598 7590 03/01/2016
BOYLE FREDRICKSON S.C.
840 North Plankinton A venue
MILWAUKEE, WI 53203
FIRST NAMED INVENTOR
Frank E. Oetlinger
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.
599.105 4588
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
03/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
u-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANKE. OETLINGER
Appeal2014-001640
Application 13/086,644
Technology Center 3600
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank E. Oetlinger ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 3-8, 11-16, and 19-21 under
35 U.S.C. § 103(a) as unpatentable over Oetlinger2 (US 6,722,811 B2, iss.
Apr. 20, 2004) and Tsai (US 2004/0036389 Al, pub. Feb. 26, 2004). The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies Blanking Systems, Inc. as the real party in
interest. Appeal Br. 3.
2 The record suggests Appellant is the same person as the named inventor in
the Oetlinger prior art reference. We will refer to the person as "Appellant,"
and refer to the prior art reference as "Oetlinger."
Appeal2014-001640
Application 13/086,644
CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1 illustrates the subject
matter on appeal:
1. A comer piece for interconnecting frame members,
compnsmg:
a first plate member defining an inner face, an opposite
outer face, a first side face, an opposite second side face, and an
end face, the first plate member including a bolt-receiving bore
therethrough extending along a first axis at an acute angle to the
inner face;
a second plate member defining an inner face contiguous
with the inner face of the first plate member, an outer face, a first
side face, an opposite second side face, and an end face, the
second plate member including a bolt-receiving bore extending
between the inner face and the outer face thereof along a second
axis at an acute angle to the inner face thereof and generally
parallel to the inner face of the first plate member;
a first lip extending along a first lip axis and projecting
outwardly from the outer face of the first plate member along a
plane generally perpendicular to the outer face of the first plate
member; and
a second lip extending along a second lip axis and
projecting outwardly from the outer face of the second plate
member along the plane, the plane being generally perpendicular
to the outer face of the second plate member;
wherein the first axis is generally parallel to the inner face
of the second plate member.
Appeal Br. 16 (Claims App.).
ANALYSIS
Claims 1 and 3---8
We initially resolve a claim construction dispute concerning claim 1,
particularly the plane(s) in which the first and second lips project along. The
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Application 13/086,644
Examiner determines the first and second lip limitations in claim 1 are met if
the respective planes of the lips are merely parallel to each other, even if
they are not a "common" plane. Ans. 4. Appellant argues claim 1 requires
the respective planes of the first and second lips to be a common plane.
Reply Br. 2. On this issue, we agree with Appellant because the term "the
plane" in the second lip limitation refers back to "a plane" previously recited
for the first lip. Thus, claim 1 requires the first and second lips to project
along a common plane, that is, the same plane.
In rejecting claim 1 as unpatentable over Oetlinger and Tsai, the
Examiner finds "Oetlinger teaches the comer piece [7] (Fig 6) significantly
as claimed, but does not disclose wherein the first axis [e.g. of bore 60] is
generally parallel to the inner face [e.g. 45] of the second plate member
[e.g. 43]." Final Act. 2. The Examiner also finds Oetlinger's comer piece 7
has first and second lips 63 and 66, but those lips do not project outwardly in
a common plane, as recited in claim 1. Id. at 2-3; Ans. 4--5.
The Examiner cites Tsai as teaching a comer piece 30, having two
plate members, for adjoining frame members in the same plane, and having
bore axes in each plate member extending in a plane parallel to the inner
face of the other plate member. Final Act. 2. The Examiner determines it
would have been obvious to modify Oetlinger's comer piece 7 "to have the
lip members [ 63 and 66] extending along the longitudinal length of the
frame members and, correspondingly having bolt bores [e.g. 60] of each
plate member [e.g. 44] being in a plane parallel to the other of the plate
members [e.g. 43]," so that the connected frame members can lie in the same
plane as taught in Tsai. Id. at 2-3. The Examiner notes this modification
could be accomplished by re-orienting Oetlinger' s plate member 44 by
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Application 13/086,644
ninety degrees in a clockwise direction in Figure 6, "such that the lips
[63 and 66] of the plates [44 and 43] lie in the same plane (along the
longitudinal extent of the frame members)." Id. at 3 (emphasis added).
Appellant argues the Examiner erroneously modifies Oetlinger in a
manner that would render Oetlinger unsuitable for its intended purpose.
Appeal Br. 9--11; Reply Br. 3. Appellant contends the respective projections
of lip 63 and tenon 66 within Oetlinger' s comer piece 7 being disposed in
two distinct, perpendicular planes allows the comer piece to interconnect
side rail 2 with cross rail 4. Appeal Br. 10; Oetlinger, Fig. 2 (showing
connection of rails 2 and 4) and Fig. 6 (showing comer piece 7). According
to Appellant, if comer piece 7 were modified so lip 63 and tenon 66 lie in a
common plane, it could not interconnect rails 2 and 4 as intended by
Oetlinger, because the lip or tenon "would space the comer piece from a
corresponding face of the cross or side rail, thereby rendering the frame
assembly unstable." Appeal Br. 12. Appellant also asserts the Examiner
provides no evidence or reasoning to support modifying comer piece 7 such
that lip 63 and tenon 66 lie in a common plane, as claimed. Appeal Br. 12;
Reply Br. 3--4.
Appellant's arguments are not persuasive. We, rather, agree with the
Examiner that modifying Oetlinger's comer piece 7 so lip members 63 and
66 extend in a common plane would permit the modified piece 7 to connect
two frame members in the same plane as taught in Tsai. Final Act. 2-3;
Ans. 4--5. Perhaps this modification would prevent the modified comer
piece from connecting two frame members in different planes as
contemplated in Oetlinger (see Fig. 2), but "a given course of action often
has simultaneous advantages and disadvantages, and this does not
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Appeal2014-001640
Application 13/086,644
necessarily obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006).
Appellant also objects to the Examiner's reliance on Tsai, because
Tsai's L-shaped connecting plates 30 entirely lack lips, much less first and
second lips that project outwardly in a common plane. Appeal Br. 13. Thus,
according to Appellant, the Examiner's rejection is clear error because Tsai
would not have motivated one of ordinary skill in the art to modify Oetlinger
to include first and second lips projecting outwardly along a common plane.
Id.
These arguments are also not persuasive, because they misconstrue
the Examiner's rejection. The Examiner does not rely on Tsai as disclosing
lips. Rather, the Examiner relies on Tsai as disclosing the desirability of
using a comer piece to connect two frame members in the same plane, from
which the Examiner concludes it would have been obvious to modify
Oetlinger' s comer piece 7 so that lip members 63 and 66 extend in a
common plane. Final Act. 2-3; Ans. 4--5.
For the foregoing reasons, we sustain the rejection of claim 1 as
unpatentable over Oetlinger and Tsai. Appellant argues for the patentability
of dependent claims 3-8 solely by virtue of their dependency from claim 1.
Appeal Br. 14. Accordingly, we likewise sustain the rejection of claims 3-8
as unpatentable over Oetlinger and Tsai.
Claims 11-16 and 19-21
Appellant argues for the patentability of independent claims 11 and
19, and their respective dependent claims 12-16, 20, and 21, on the same
basis as independent claim 1. Appeal Br. 14--15. Accordingly, we sustain
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the rejection of these claims as unpatentable over Oetlinger and Tsai, for the
reasons provided above in connection with claim 1.
DECISION
The decision of the Examiner to reject claims 1, 3-8, 11-16, and
19-21 as unpatentable over Oetlinger and Tsai is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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