Ex Parte Prell et al

Board of Patent Appeals and Interferences

Jun 9, 2011

11492326 (B.P.A.I. Jun. 9, 2011)

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.
11/492,326 07/24/2006 Edward T. Prell 1576-0107 5833
28078 7590 06/10/2011
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
06/10/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWARD T. PRELL, CHARLES HULSEY, and
MARKUS ALLEMANN
____________________

Appeal 2010-010076
Application 11/492,326
Technology Center 3700
____________________

Before SALLY C. MEDLEY, DANIEL S. SONG, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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Edward T. Prell et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the rejection of claims 1-31 (App. Br. 2). We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
The invention is directed to a vise assembly (Spec. ¶ [001]). Figure 1
depicts a vice assembly 10 which includes a vise having a first clamping
component 14a and a second clamping component 14b; and a first mounting
apparatus 12 (Spec. ¶ [023]; FIGS. 1 & 11). The vise assembly also
includes a second mounting apparatus 160 (Spec. ¶ [023]; FIG. 11).
Independent claim 1 is representative of the appealed claims and reads as
follows (App. Br. 63, Claims Appx., emphasis added):
1. An assembly, comprising:
a vise apparatus including (i) a first clamping
component, (ii) a second clamping component, and (iii) a
slide bar possessing a polygonal-shaped outer surface,
said slide bar being at least partially interposed between
said first clamping component and said second clamping
component;
a first mounting apparatus including (i) a first
clamping device configured to engage said polygonal-
shaped outer surface of said slide bar so as to releasably
hold said slide bar in fixed relation to said first clamping
device, and (ii) a first attachment mechanism configured
to removably secure said first mounting apparatus to a
first support, said first attachment mechanism possessing
a first configuration; and
a second mounting apparatus including (i) a
second clamping device configured to engage said
polygonal-shaped outer surface of said slide bar so as to
releasably hold said slide bar in fixed relation to said
second clamping device, and (ii) a second attachment
mechanism configured to removably secure said second
mounting apparatus to a second support, said second
attachment mechanism possessing a second
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configuration which is different from said first
configuration.

THE REJECTIONS
The following Examiner's rejections are before us for review:
1. Claims 1-6, 9-17, and 20-22 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Varzino (US 6,957,808, issued Oct. 25, 2005).
2. Claims 1-6, 9-17, and 20-22 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Gerritsen (US 7,066,457, issued Jun. 27, 2006).
3. Claims 23 and 25-29 are rejected under 35 U.S.C. § 102(e) as
anticipated by Anderson (US 5,224,692, issued Jul. 6, 1993).
4. Claims 1-22, 24, 30, and 31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anderson in view of Gerritsen and/or Varzino.
5. Claims 7, 8, 18, 19, and 23-31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gerritsen and/or Varzino in view of Anderson.
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in finding that Varzino discloses
first and second mounting apparatuses as recited in independent claims 1 and
12.
2. Whether the Examiner erred in finding that Gerritsen discloses
first and second mounting apparatuses as recited in claims 1 and 12.
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3. Whether the Examiner erred in finding that Anderson discloses
first and second mounting apparatuses as recited in independent claim 23.
4. Whether the Examiner erred in concluding that the combination
of Anderson and Gerritsen and/or Varzino rendered obvious the assembly of
claims 1-22, 24, 30, and 31.
5. Whether the Examiner erred in concluding that the combination
of Gerritsen and/or Varzino in view of Anderson rendered obvious the
assembly of claims 7, 8, 18, 19, and 23-31.

ANALYSIS
Issue 1:
Rejection of claims 1-6, 9-17, and 20-22 as anticipated by Varzino
The Examiner finds that Varzino discloses a vise (citing Varzino FIG.
2), and "first and second mountings" (i.e., bar capturing mechanism 212 and
screw clamp mechanism 372) (Ans. 4; see Varzino col. 5, ll. 14-36; FIG. 1).
The Examiner states that "applicant argues that there are two different
mounting apparatus but the [Examiner] does not get the point because the
invention element 12 and 60 in figure 3 of applicants. The prior art show
two different mounting apparatus [sic] as well 212 and 372." (Ans. 6).
As to independent claim 1, Appellants appear to concede that the base
18 in Varzino, which includes the bar capturing mechanism 212 and the
screw clamp mechanism 372, meets the limitations of a single claimed
mounting apparatus (Reply Br. 5). However, Appellants argue that the
claim requires two different mounting apparatuses, but neither the bar
capturing mechanism 212 nor the screw clamp mechanism 372 considered
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separately includes every limitation of the claimed "first mounting
apparatus" or "second mounting apparatus" (App. Br. 8-11). Particularly,
Appellants argue that Varzino does not disclose that the bar capturing
mechanism 212 includes any portion used to mount it to a support, and
hence this mechanism does not include every limitation of the "first
attachment mechanism" or the "second attachment mechanism" (App. Br. 9).
Appellants also argue that Varzino does not disclose that the screw clamp
mechanism 372 includes any portion used to clamp a slide bar, and hence
this mechanism does not include every limitation of the "first clamping
device" or the "second clamping device" (App. Br. 10). Thus, Appellants
argue that Varzino does not disclose all of the limitations set forth in claim
1.
We agree with Appellants that the base 18 shown in Figure 1 of
Varzino does not include every limitation of both the "first mounting
apparatus" and the "second mounting apparatus" recited in claim 1. Because
the Examiner has not directed us to other disclosure in Varzino of a
mounting apparatus that includes every limitation of the other of the first
mounting apparatus or the second mounting apparatus in addition to the base
18, the Examiner has not established that Varzino discloses each limitation
set forth in claim 1. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987). Hence, we do not sustain the anticipation
rejection of claim 1 based on Varzino, as well as claims 2-6 and 9-11, which
depend therefrom.
Independent claim 12 is substantially similar to claim 1 and the
Examiner relies on the same findings in Varzino for the rejection (Ans. 4;
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App. Br. 67, Claims Appx.). Hence, we also reverse the rejection of claim
12 based on Varzino, as well as claims 13-17 and 20-22, which depend
directly or ultimately therefrom.

Issue 2:
Rejection of claims 1-6, 9-17, and 20-22 as anticipated by Gerritsen
As to independent claims 1 and 12, the Examiner's findings and
Appellants' arguments for patentability, are substantially the same as for
Varzino discussed supra (Ans. 4, 7; App. Br. 29-32, 40 & 41; Reply Br. 2-5;
Gerritsen FIG. 1). While Appellants appear to concede that the base 30
shown in Figure 1 of Gerritsen includes every limitation of a single
mounting apparatus recited in claim 1 (Reply Br. 5), we agree with
Appellants that the base 30 does not include every limitation of both the
"first mounting apparatus" and the "second mounting apparatus" recited in
claims 1 and 12. Because the Examiner has not directed us to other
disclosure in Gerritsen of a mounting apparatus that includes every
limitation of the other of the first mounting apparatus or the second
mounting apparatus in addition to the base 30, we reverse the anticipation
rejection of claims 1 and 12 based on Gerritsen, as well as claims 2-6, 9-11
and 13-17, which depend directly or ultimately from claims 1 or 12.

Issue 3:
Rejection of claims 23 and 25-29 as anticipated by Anderson
The Examiner finds that Anderson discloses a vise (citing Anderson
FIG. 1), "first and second mountings" (i.e., vise 10 and work positioner 12);
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and a "ball and socket clamping assembly" (i.e., ball 13) (Ans. 4; Anderson
col. 2, l. 63 to col. 3, l. 6; FIG. 1). The Examiner also finds that in
Anderson, "[t]he part with the vices jaws is shown on a bar and one
mounting holds the vice [and] the other supports it with base and threaded
holes and screws" (Ans. 8). Based on these findings, we understand the
Examiner's position to be that Anderson's work positioner 12 includes both a
"first mounting apparatus" and a "second mounting apparatus."
As to claim 23, Appellants acknowledge that Anderson's vise 10
meets the limitations of the claimed vise apparatus; and the work positioner
12 meets the limitations of the first mounting apparatus (App. Br. 50-51).
However, we agree with the Appellants that Anderson's vise and work
positioner shown in Figure 1 does not include the claimed second mounting
apparatus (App. Br. 50-51). Because the Examiner has not directed us to
disclosure in Anderson of a mounting apparatus that includes every
limitation of the second mounting apparatus in addition to the work
positioner 12, we do not sustain the anticipation rejection of claim 23 based
on Anderson, as well as claims 25-29, which depend therefrom.

Issue 4:
Rejection of claims 1-22, 24, 30 and 31 as obvious over Anderson in view of
Gerritsen and/or Varzino
The Examiner contends that Anderson discloses the claimed invention
except for the slide bar having a polygonal-shaped outer surface (see claims
1, 21 and 30), a rectangular elongated member (see claims 10 and 31), and a
first attachment (mechanism) that is C-shaped with an externally threaded
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fastener (see claims 2, 13 and 24) (Ans. 5). The Examiner relies on
Gerritsen and/or Varzino for disclosing these limitations, and concludes that
it would be obvious to combine known elements without changing the
function of the invention with predictable results (Ans. 5).
We agree with Appellants that the Examiner's application of Gerritsen
and/or Varzino does not remedy the deficiencies of the Examiner’s reliance
on Anderson with respect to independent claims 1, 12 and/or 23. Thus, we
reverse the obviousness rejection of claims 1 and 12 based on the
combination of Anderson and Gerritsen and/or Varzino, as well as claims 2-
11, 13-22, 24, 30, and 31, which depend from claims 1, 12 or 23.

Issue 5:
Rejection of claims 7, 8, 18, 19, and 23-31 as obvious over Gerritsen and/or
Varzino in view of Anderson
Claims 7 and 18 depend from claims 1 and 12, respectively, and recite
that the first mounting apparatus includes a ball and socket assembly (App.
Br. 65-66, 69-70, Claims Appx.). Claims 8 and 19 depend from claims 1
and 12, respectively, and recite additional limitations pertaining to the
second mounting apparatus (App. Br. 66, 70, Claims Appx.).
Independent claim 23 is similar to claims 1 and 12, differing
therefrom by reciting, inter alia, a ball and socket assembly for the first
mounting apparatus (App. Br. 71, Claims Appx.). The Examiner contends
that Gerritsen and/or Varzino disclose(s) the claimed invention except for a
ball and socket clamping assembly (Ans. 6). The Examiner relies on
Anderson for disclosing a device including a ball and socket placed between
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a base and a securing mechanism which holds an elongated member to make
the first attachment (mechanism) adjustable (Ans. 6). The Examiner
concludes that one skilled in the art at the time of the invention could have
combined the known elements without changing the function of the
invention with predictable results (Ans. 6).
However, the Examiner's application of Anderson does not remedy
the deficiencies of the Examiner's application of Gerritsen and/or Varzino
relative to claims 1, 12 and/or 23. Thus, we reverse the obviousness
rejection of claims 7, 8, 18, 19, and 23-31 based on the combination of
Gerritsen and/or Varzino, and Anderson.

New Ground of Rejection of Claims 1, 12, and 23 under 35 U.S.C. § 103(a)
over Varzino or Gerritsen in view of Anderson
As noted supra, Appellants appear to concede, and in any event we
find, that both the base 18 disclosed in Varzino and the base 30 disclosed in
Gerritsen include every limitation of one of the first mounting apparatus and
the second mounting apparatus recited in claim 1. Appellants also appear to
concede that Anderson discloses the first mounting apparatus recited in
claim 23, which includes similar limitations as those of the first mounting
apparatus in claim 1 (App. Br. 51). We conclude that it would have been
obvious to one skilled in the art to combine Varzino's vise apparatus and
base 18, or Gerritsen's vise apparatus and base 30, with Anderson's work
positioner 12 to result in both "a first attachment mechanism possessing a
first configuration" and "a second attachment mechanism possessing a
second configuration which is different from said first configuration" as
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recited in claim 1. One skilled in the art would recognize that the resulting
combinations of these elements would allow the user to attach the vice
apparatus and objects to the work bench using different attachment
configurations (i.e., to the side edge or to the top surface) based on the
situation, such as workspace considerations, and hence, offer increased
versatility of the assembly. The combinations would yield results
predictable to one skilled in the art. Hence, we conclude that the assembly
recited in claim 1 would have been obvious to one skilled in the art in view
of Varzino or Gerritsen and Anderson. See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 415-16 (2007) ("[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results."). For similar reasons, we also determine that
the assembly recited in claim 12 would have been obvious to one skilled in
the art.
As to claim 23, we find that Anderson discloses the "first mounting
apparatus," and that Varzino's base 18 and Gerritsen's base 30 comprises
every limitation of the "second mounting apparatus," including a C-shaped
portion having a vertical component which meets the limitations of the
recited "frame structure." Hence, we also determine that the assembly
recited in claim 23 would have been obvious to one skilled in the art.
Therefore, we enter a New Ground of Rejection under 37 C.F.R.
§ 41.50(b) with respect to claims 1, 12, and 23 as unpatentable under 35
U.S.C. § 103(a) over Varzino or Gerritsen and Anderson. We leave it to the
Examiner to determine the appropriateness of any additional obviousness
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rejections of remaining dependent claims based on this combination of
references, and other references cited in the record.

CONCLUSIONS
1. The Examiner erred in finding that Varzino discloses first and
second mounting apparatuses as recited in independent claims 1 and 12.
2. The Examiner erred in finding that Gerritsen discloses first and
second mounting apparatuses as recited in claims 1 and 12.
3. The Examiner erred in finding that Anderson discloses first and
second mounting apparatuses as recited in independent claim 23.
4. The Examiner erred in concluding that Anderson in view of
Gerritsen and/or Varzino rendered obvious the assembly of claims 1-22, 24,
30, and 31.
5. The Examiner erred in concluding that Gerritsen and/or Varzino
in view of Anderson rendered obvious the assembly of claims 7, 8, 18, 19,
and 23-31.
6. Claims 1, 12, and 23 would have been obvious over Varzino or
Gerritsen in view of Anderson.

DECISION
1. We reverse each of the Examiner's rejections.
2. We enter a New Ground of Rejection for claims 1, 12, and 23
under 35 U.S.C. § 103(a) as unpatentable over Varzino or Gerritsen in view
of Anderson.

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This decision contains a New Grounds of Rejection pursuant to 37
C.F.R. § 41.50(b), which provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." 37 C.F.R.
§ 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.…

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED; 37 C.F.R. § 41.50(b)

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