Ex Parte Phillips et al

Patent Trial and Appeal Board

Dec 30, 2014

12178937 (P.T.A.B. Dec. 30, 2014)

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.
12/178,937 07/24/2008 Charles M. Phillips SR. 295888-00047-1 7255
7590 12/30/2014
David C. Jenkins
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
12/30/2014 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 CHARLES M. PHILLIPS, SR. and MARK P. NOAH
____________________

Appeal 2012-011322
Application 12/178,937
Technology Center 3600
____________________

Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Charles M. Phillips, Sr. and Mark P. Noah (“Appellants”) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1–6 and 11–18.
Appeal Br. 2. Claims 7–10 and 19–21 have been withdrawn. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-011322
Application 12/178,937
2
CLAIMED SUBJECT MATTER
The Appellants’ invention is directed to a “vertical, panel-like
organizer.” Spec. 1, l. 10. Independent claim 1 is illustrative and is
reproduced below.
1. A magnetic organizer comprising:
a generally planar magnetic member having an
attachment surface, said attachment surface having at least one
protuberance thereon, said at least one protuberance being a
double taper ridge;
said double taper ridge extending generally horizontally;
said generally planar magnetic member extending in a
generally vertical plane;
at least one support assembly having a base, a hinge, and
a support arm, said base having a magnetic member therein,
said support arm structured to support a mass,
said support assembly support arm coupled to said
support assembly base by said hinge, said support assembly
base, said support assembly support arm, and said hinge
forming a clamp assembly;
said hinge having an axis of rotation that extends
generally horizontally;
said generally planar magnetic member and said support
assembly base magnetic member being cooperative magnetic
members; and
said clamp assembly structured to engage said double
taper ridge in a clamping manner.

THE REJECTIONS
The Examiner has rejected (see Ans. 5–15):
(i) claims 1–6 under 35 U.S.C. § 103(a) as being unpatentable over
Connors (US 2,893,676, issued July 7, 1959) in view of Kolody (US
6,912,959 B2, issued July 5, 2005) and Moriarty (US 5,695,165, issued Dec.
9, 1997); and
Appeal 2012-011322
Application 12/178,937
3
(ii) claims 11–18 under 35 U.S.C. § 103(a) as being unpatentable
over Connors in view of Kolody.
ANALYSIS
Claims 1–6 as Unpatentable
Appellants have not presented arguments for the patentability of
claims 2–6 apart from claim 1. See Appeal Br. 7–21. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2–6 standing or falling with claim 1.
The Examiner finds that Connors discloses, inter alia, an organizer
comprising support assembly 12 and generally planar member 11 having
attachment surface 10, as recited in claim 1, but does not disclose, inter alia,
the claimed “cooperative magnetic members” and the claimed hinged
“clamp assembly.”1 See Ans. 5–7 (citing Connors, Figs. 1 and 2). The
Examiner instead relies on Kolody for disclosing the claimed hinged “clamp
assembly” and relies on Moriarty for disclosing the claimed “cooperative
magnetic members.” See id. at 8 (citing Kolody, Fig. 8); see also id. at 10
(citing Moriarty, Fig. 3).
In combining Connors with Kolody, the Examiner determines that
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the Connors
support apparatus to include the clamping structure of Kolody
in order to enable the user to remove the fixture post (12) from
its engagement from the wall without having to slide the fixture
post (12) off the end of the plate (10).
Id. at 9–10.

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Appeal 2012-011322
Application 12/178,937
6
In contesting the rejection to claim 1, Appellants present several
arguments, which we address separately, below.
Office Action Failed to Identify a Rationale
Appellants first assert that the rejection is deficient because
“Appellants have been forced to appeal a rejection without knowing the
rationale for that rejection and, more importantly, cannot determine if the
Examiner’s rationale comports with the holding of KSR International.”
Appeal Br. 9; see also id. at 10–11.
As discussed supra, the Examiner set forth the required rationale for
combining Connors with Kolody and for combining Connors with Moriarty
in the Final Office Action, from which Appellants’ have appealed, and in the
Answer. See, e.g., Final Act. 7 (dated Oct. 17, 2011); Ans. 9–10.
Appellants’ arguments do not apprise us of error in the Examiner’s stated
reasons for combining teachings of Connors, Kolody, and Moriarty to render
obvious the claimed subject matter.
Examiner Relied on Common Knowledge
Additionally, Appellants assert that “the Examiner had stated that the
rejection was based on ‘common knowledge[’ and] that the Examiner did
not clarify what ‘common knowledge’ was being relied upon.” Appeal Br.
10; see also id. at 11–14, 16, and 19; see also Reply Br. 2 and 4–5.
Appellants then argue that the rejection is procedurally deficient because
“Appellants were left with a final rejection, no identified rationale for the
rejection, and a vague assertion that there was some unidentified ‘common
knowledge’ that provided the rationale for the rejection.” Appeal Br. 10; see
also id. at 11–12. In making this argument, Appellants apparently rely on
the Examiner’s reference to MPEP § 2144 in the Final Office Action. See
id. at 9 (apparently citing Final Act. 13).
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Application 12/178,937
7
In response to Appellants’ assertion, the Examiner explains, “the
Examiner did not assert that the rationale was common knowledge, the
rationale was reasoned from the teachings within the prior art.” Ans. 16.
Upon reviewing the record, we agree with the Examiner and are not
persuaded by Appellants’ argument that the Examiner relies on “common
knowledge” or otherwise takes official notice of facts not in the record (in
accordance with MPEP § 2144.03) in supporting the rejection of claims 1–6.
No Motivation to Combine Connors with Kolody
Appellants then argue that because Connors’ fixture is structured to be
mounted for an extended period of time, whereas Kolody’s surgical tray is
removed and sterilized between uses, “there is no need to combine the
relatively complex clamp of Kolody with the simple bracket of Connors.”
Appeal Br. 12; see also id. at 17 and 19; see also Reply Br. 2–5.
We are not persuaded by Appellants’ argument, which does not
apprise or persuade us of error in the Examiner reasoning that,
[m]odifying the Connors fixture [to] have the pivoting clamp
structure of Kolody would eliminate the necessity to slide the
Connors clamp off the wall mounting plate and enable the user
to simply pivot the clamp off the wall mounting plate.
Furthermore, the modification would provide a clamping
structure that is capable of being clamped to a wall mounting
plate that does not require the added screw (13) of Connors to
hold the fixture in place. This would improve installation time
since the user would not then be required to employ a
screwdriver or other tool in order to thread the screw (13)
through the fixture to bias it against the wall mounting bracket.
Ans. 16–17.
The Examiner also explains that “Connors . . . discusses using a set
screw to provide a set position . . . between the fixture (12) and plate (10)
and that the foot portion (14) of fixture (12) can be adjusted laterally prior to
Appeal 2012-011322
Application 12/178,937
8
the tightening of the set screw.” Ans. 19 (citing Connors, col. 1, ll. 54–59
and col. 3, ll. 33–41). The Examiner further explains that “the fixture as
disclosed by Connors is not permanent as the Appellant asserts, since the
screw [denoted as 13] is capable of being removed and the user can then
slide the fixture (12) off of the block (10).” Ans. 19–20. We further note
that Appellants apparently agree by stating, “the Connors support device is
already capable of being removed from the base by simply sliding the
support device laterally.” Appeal Br. 12.
Because “[m]odifying the Connors fixture . . . would eliminate the
necessity to slide the Connors clamp off the wall mounting plate and enable
the user to simply pivot the clamp off the wall mounting plate [while]
improv[ing] installation time,” as the Examiner finds, we are not persuaded
by Appellants’ argument that “there is no motivation . . . to combine these
references.” Ans. 16–17; Appeal Br. 12.
Prior Art Teaches Away from Combination
Appellants also argue that “[i]f the clamp of Kolody was combined
with the bracket of Connors, the set screw would serve no purpose and
would not be able to lock the bracket of Connors in place. All of these
factors teach away from the combination.” Appeal Br. 12 (emphasis added);
see also id. at 17–18 and 20–21; see also Reply Br. 4.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference . . . would be led in a direction divergent
from the path that was taken by the applicant.” In re Haruna, 249 F.3d
1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc.,
192 F.3d 1353, 1360 (Fed. Cir. 1999)).
In the present case, we are not convinced that Connors teaches away
from a removable fixture, because Connors’ fixture may instead be removed,
Appeal 2012-011322
Application 12/178,937
9
even after screw 13 locks Connors’ fixture in place. As discussed supra and
explained by the Examiner, “the ‘fixture’ of Connors is not permanently
attached to the block or wall since the screw (13) can be removed and thus
enable the fixture to be detached from the block.” Ans. 20; see also
Connors, col. 1, ll. 54–59 and col. 3, ll. 33–41. The Examiner proposes to
improve this feature by making the removable fixture easier to remove
through modification based on teachings of Kolody.
Combining with Kolody Renders Invention Being Modified Unsatisfactory
Appellants similarly argue that “[i]f the proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose, then there is no suggestion or motivation to make the proposed
modification.” Appeal Br. 17 (citing In re Gordon, 733 F.2d 900 (Fed. Cir.
1984)); see also Appeal Br. 18; see also Reply Br. 7. In particular,
Appellants argue that
when Connors is considered “in its entirety,” it is evident that
the “intended purpose” and “principle of operation” of the wall
fixture support is to be, essentially, permanently fixed to a wall
mount. More specifically, the bracket is fixed to the wall
mount by a set screw that requires the bracket of be [sic] rigid.
In light of this, the proposed modification, i.e. making the
support easily removable in a clamp-like manner, would both
“render the prior art invention being modified unsatisfactory for
its intended purpose” and “change the principle of operation of
the prior art invention being modified.”
Appeal Br. 18.
This argument does not persuade us of error in the Examiner’s finding
that
the principle operation or purpose of the Connors device is to
provide a fixture which comprises a minimum number of
part[s] which can be inexpensively manufactured and readily
mounted, even by unskilled persons. The Examiner has
Appeal 2012-011322
Application 12/178,937
10
modified the Connors device so that the fixture is still able to be
readily mounted and has proposed modifications that would
reduce the number of parts (by eliminating the need for the set
screw) as well as make the mounting process even easier (by
enabling the fixture to be pivotally clamped rather than slid on
and off).
Ans. 20–21 (citing Connors, col. 1, ll. 19–23).
For the foregoing reasons, we are not persuaded by Appellants’
arguments that modifying Connors, as proposed by the Examiner, “would
both ‘render the prior art invention being modified unsatisfactory for its
intended purpose’ or ‘change the principle of operation of the prior art
invention being modified.’” Appeal Br. 18.
Examiner Has Failed to Provide Articulated Reasoning
Appellants also argue that “rejections on obviousness cannot be
sustained with mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Appeal Br. 16 (emphasis omitted) (citing
MPEP § 2142 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))); see
also Appeal Br. 15–17; see also Reply Br. 5–6. Appellants further argue
that “the Examiner has only provided a single sentence in support of the
proposed combination; the Examiner has failed to present an articulated
reasoning in support of the rejection.” Appeal Br. 16. Appellants further
argue that “[b]y providing only this [one] sentence, the Examiner has failed
to provide explicit findings (MPEP § 2141) and failed to provide the ‘key’
support for finding of obviousness (MPEP § 2143).” Id.
We first note that there is no requirement that the Examiner provide
more than one sentence to support a determination of obviousness. Nor do
Appellants’ arguments apprise or persuade us of error in the Examiner’s
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Application 12/178,937
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stated reasons for combining teachings of Connors, Kolody, and Moriarty,
including the Examiner’s explanation that
the Examiner took into consideration the teachings of the prior
art and reasoned a rationale why the combinations would be
obvious. In both cases . . . the modifications were based upon
improving the fixture of Connors so that the attachment would
be more effective, easier to assemble/disassemble and provide a
more secure attachment. The cited rationales are reasoning why
the modifications would be improvements.
Ans. 19.
In the present case, the Examiner proposes to apply teachings of
Kolody and Moriarty to Connors to provide similar improvements.
Applying such known techniques to a known device in the same or a
different field of endeavor that is ready for improvement is likely obvious
when the modification is within the level of ordinary skill in the art and
yields predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
For the foregoing reasons, we are not persuaded by Appellants’
argument that “the Examiner has failed to present an articulated reasoning in
support of the rejection.” Appeal Br. 16.
Examiner Does Not Identify Evidence and Relies on Hindsight
Appellants also argue that
the Examiner has not identified any evidence that there was
some need or motivation (express or implied) to “enable the
user to remove the fixture post (12) from its engagement from
the wall without having to slide the fixture post (12) off the end
of the plate (10)” [and that] the Examiner’s Rational[e] is based
exclusively on hindsight.
Appeal Br. 19.
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Application 12/178,937
12
In the Reply Brief, Appellants further argue that “[b]y relying upon a
rule related to a requirement of a ‘suggestion or motivation,’ the Examiner
has effectively established that the Rationale for the present rejection is
based upon MPEP § 2143 Rationale (G).” Reply Br. 2.
As explained supra, the Examiner did not take “official notice” or
otherwise rely on “common knowledge” in rejecting claims 1–6. See Ans.
5–10. Moreover, we disagree with Appellants’ assertion that the Examiner
“effectively established that the Rationale for the present rejection is based
upon MPEP § 2143 Rationale (G).” See Reply Br. 2. Therefore, we are not
persuaded by Appellants’ argument that “the Examiner’s rationale does not
comply with KSR International.” Appeal Br. 17.
Furthermore, Appellants’ argument that the Examiner must identify
an explicit teaching or suggestion to combine the references is instead
foreclosed by KSR, in which the Court rejected the rigid requirement of a
teaching, suggestion, or motivation to combine known elements in order to
show obviousness. KSR Int’l Co., 550 U.S. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418.
Moreover, even though the Examiner is not required to identify an
explicit teaching or suggestion to combine or modify the references, as none
is required under KSR, it appears that the proposed modification is
nevertheless suggested in the prior art. Notably, Kolody discloses clamp
230 that is simply removed from a table by applying a manual force to
overcome a spring force. See Kolody, col. 12, ll. 30–38; see also Kolody,
Figs. 8a, 8b, and 8c. Additionally, Moriarty discloses an invention that
Appeal 2012-011322
Application 12/178,937
13
“satisfies [the] needs” for a “simple and inexpensive support apparatus for
securely and safely supporting pipettes.” See Moriarty, col. 2, ll. 23–29.
Therefore, the Examiner’s determination that “the modifications were based
upon improving the fixture of Connors so that the attachment would be more
effective, easier to assemble/disassemble and provide a more secure
attachment” appears to be suggested by the prior art. Ans. 19 (emphasis
added).
Furthermore, with respect to Appellants’ assertion that “the Examiner
has merely used ‘hindsight reconstruction,’” we disagree. Appeal Br. 19.
As correctly explained by the Examiner,
it must be recognized that any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight
reasoning. But so long as it takes into account only knowledge
which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge
gleaned only from the applicant's disclosure, such a
reconstruction is proper.
Ans. 21 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)).
For the foregoing reasons, we are not persuaded by Appellants’
argument that the “Examiner’s Rational is based exclusively on hindsight.”
Appeal Br. 19.
Examiner’s Interpretation of Claimed Terms is Overly Broad
Appellants also argue that “the Examiner is interpreting the claims in
an overly broad manner.” Appeal Br. 20. In particular, Appellants argue
that the Examiner is incorrect in construing the claimed term “attachment
surface” to read on Connors’ “wall upon which a mounting is fixed.” See id.
Appellants then explain that because Connors’ “fixture support does not
contact the wall, i.e. there is no ‘physical connection’ between the support
and the wall, it is not clear how the wall is an ‘attachment surface.’” Id.
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Application 12/178,937
14
In response to this argument, the Examiner points out error in
Appellants’ assertion that Connors’ “fixture support does not contact the
wall” and notes that Connors instead discloses that “the upper and lower
ends (25 and 26) of the fixture contact the wall.” Ans. 21 (citing Connors,
col. 3, ll. 11–14); Appeal Br. 20.
Additionally, Appellants have not provided any persuasive evidence
(e.g., definition within their Specification) to support their argument that
Connors’ wall 11 cannot be construed as the claimed “attachment surface.”
Attorney argument in a brief cannot take the place of evidence. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Accordingly, we do not find
error in the Examiner’s finding that “the attachment surface of Connors is
the wall (11) for which the fixture (12) is attached to via a mounting plate
(10; protuberance).” Ans. 21.
Combining with Moriarty Renders Invention Being Modified Unsatisfactory
Appellants further argue that combining Connors’ fixture with
Moriarty’s magnetic coupling “would ‘render the prior art invention being
modified unsatisfactory for its intended purpose’ and ‘change the principle
of operation of the prior art invention being modified.’” Appeal Br. 21.
Appellants also argue that “adding a magnet to [Connors’] fixture support
base would make the act of sliding more difficult.” Id. at 20.
We note that the modified device enables “the user to remove the
fixture post (12) from its engagement with the wall without having to slide
the fixture post (12) off the end of the plate (10).” Ans. 16 (emphasis
added). In other words, as the modified device eliminates the need for
sliding, Appellants’ argument that sliding would be more difficult is not
persuasive. Accordingly, Appellants’ argument does not indicate error in
the Examiner’s determination that “the inclusion of the Moriarty magnet and
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Application 12/178,937
15
magnetic surface would provide an improved and easier attachment with a
reduced number of parts which aligns with the principle mode of operation
of Connors.” Ans. 22 (citing Connors, col. 1, ll. 19–23).
Summary of Claims 1–6
For the foregoing reasons, we are not apprised of error in the rejection
of claim 1 and we sustain the rejection of claim 1, including claims 2–6,
which fall with claim 1, under 35 U.S.C. § 103(a), as being unpatentable
over Connors, Kolody, and Moriarty.
Claims 11–18 as Unpatentable
In contesting the rejection of these claims, Appellants argue that “for
all the reasons set forth above [in connection with Connors and Kolody], the
rejection of Claims 11-18 under 35 U.S.C. § 103(a) is improper and should
be reversed.” Appeal Br. 21.
As discussed above in connection with claims 1–6, supra, we do not
find error in the Examiner’s rejection, including the Examiner’s reliance on
Connors and Kolody.
For these reasons, we sustain the rejection of claims 11–18 under
35 U.S.C. § 103(a), as being unpatentable over Connors in view of Kolody.

SUMMARY
The Examiner’s decision to reject claims 1–6 under 35 U.S.C.
§ 103(a) as being unpatentable over Connors, Kolody, and Moriarty is
affirmed.
The Examiner’s decision to reject claims 11–18 under 35 U.S.C.
§ 103(a) as being unpatentable over Connors and Kolody is also affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2012-011322
Application 12/178,937
16

AFFIRMED

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