Ex Parte Prest et al

Patent Trial and Appeal Board

Jul 27, 2015

12103643 (P.T.A.B. Jul. 27, 2015)

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.
12/103,643 04/15/2008 Dana Prest PRSTP002 2347
52785 7590 07/28/2015
PATENT VENTURE GROUP
10788 CIVIC CENTER DRIVE
SUITE 215
RANCHO CUCAMONGA, CA 91730
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
07/28/2015 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 DANA PREST, JEFFERY S. MITCHELL, and
BRUCE R. DEGLER
____________

Appeal 2013-009391
Application 12/103,6431
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 4–6, 11, 12, 14, and 15. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to the Appellants, the real parties in interest are Dana Prest,
Jeffery S. Mitchell, and Bruce R. Degler. Br. 1.
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Rejection
Claims 1, 4–6, 11, 12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Montgomery (US 2007/0090129 A1, pub.
Apr. 26, 2007) and Gary (US 2005/0056655 A1, pub. Mar. 17, 2005).2

Claimed Subject Matter
Claims 1, 6, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An integrated grease gun attachment apparatus for assisting
in lubricating machinery utilizing a grease gun, comprising:
a magnet housing capable of holding a magnet; and
a magnet disposed in the magnet housing,
wherein the integrated grease gun attachment apparatus is
integrated with a head cap for a grease gun, and wherein the
integrated attachment apparatus is positioned opposite a grease
gun pump apparatus that is attached to the head cap.

ANALYSIS
Independent claim 1 and dependent claims 4 and 5
We have considered the Appellants’ arguments against the rejection
of claim 1 (Br. 3–5) and determine that the arguments are unpersuasive.
The Appellants contend that the Examiner errs in finding that
Montgomery discloses “an integrated grease gun attachment apparatus
'integrated with a head cap for a grease gun,' as recited in claim 1.” See
Br. 4.

2 Although the Examiner sets forth separate rejections for claims 1, 4–6, 11,
and 12 and claims 14 and 15 (Final Act. 2–5), we have consolidated these
rejections because they are both based upon the combination of Montgomery
and Gary.
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The Appellants’ contention is primarily based on an alleged meaning
of the claimed term “integrated.” See Br. 3–5. Notably, the Specification
does not explicitly define the term “integrated.” Ans. 3. Accordingly, the
Appellants assert that the broadest reasonable construction of the claimed
term “integrated,” in light of the Specification as would be interpreted by
one of ordinary skill in the art, refers “to being part of, or otherwise into one
whole unit and not separate units” and reference the Specification in support
of the proffered construction, which describes:
Although the embodiments of the present invention have thus
far been described in terms of separate units capable of being
attached to a grease gun, embodiments of the present invention
can also be integrated into the structure of a grease gun, as
illustrated next with reference to FIG. 4. [(Br. 3 quoting Spec.
para. 32)]
Br. 3.
However, the Appellants’ proffered construction is inconsistent with
the Specification because the Specification does not describe or suggest that
“integrated” means “not separate units.” Rather, the Specification suggests
that embodiments having a “separate unit” have a characteristic that
embodiments that are “integrated” may not have, i.e., the capability of being
attached to a grease gun. And, the fact that the Specification provides an
example of an embodiment that is “integrated” that can be cast as one piece
with a head cap does not mean that every embodiment that is “integrated”
must be cast as one integrated piece with a head cap.3 See also In re Am.

3 The Specification describes, “[f]or example, in one embodiment, the
integrated grease gun attachment apparatus 100' and the head cap 202 can be
manufactured by casting the integrated grease gun attachment apparatus 100'
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Acad. of Science Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have
cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.”). But see Br. 3–4.
In rebuttal of the Appellants’ proffered construction of the term
“integrated,” the Examiner proffers that the plain and ordinary meaning of
the term “integrate” is “to bring together or incorporate (parts) into a
whole.” Ans. 3 (citing Dictionary.com). The Examiner’s proffered
construction of the claimed term “integrate” is included in and consistent
with the broadest reasonable construction of the term when read in light of
the Specification as would be interpreted by one of ordinary skill in the art.
Additionally, it is notable that the Appellants’ proffered definition is similar
to the Examiner’s definition, i.e., “to bring together or incorporate (parts)
into a whole” is similar to “to being part of, or otherwise into one whole
unit,” once the portion that is inconsistent with the Specification, i.e., “and
not separate units,” is extracted from the Appellants’ proffered construction.
Turning to the Examiner’s application of the prior art, the Appellants
assert that “Montgomery[’s] support apparatus 10 is not integrated with a
grease gun [or “a head cap for a grease gun,” as recited in claim 1],” rather it
“is an entirely separate entity and only contacts a grease gun barrel 23 when
a grease gun is inserted into the support apparatus 10 and clamped down
using the clamping provisions 64.” Br. 4. The Appellants’ contention is
unpersuasive because it is primarily based on an unsupported definition of
the claimed term “integrated” as “not separate units.” See Br. 4–5.

and the head cap 202 as one integrated piece using any appropriate casting
processes.” Spec. para 34; see also Br. 3–4.
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Montgomery’s support apparatus 10 is integrated with the head cap by
use of clamp provisions 64 and the barrel 23 of the grease gun, which is
fixed to the pump head 21. See Montgomery, paras. 11, 15; see also Ans. 3,
Final Act. 2, 6. In other words, Montgomery’s support apparatus 10, clamp
provisions 64, and pump 21 are part of and/or otherwise one whole unit.
Notably, we agree with the Examiner’s finding, that “if one would to lift up
Montgomery’s device at [mounting plate] 62, the entire device, as whole,
would be lifted together in one piece.” Ans. 5 (discussing issues concerning
the rejection of dependent claim 11). Further, we agree with the Examiner’s
finding that “the integrated attachment apparatus is positioned opposite a
grease gun pump apparatus (25) that is attached to the head cap (25 is
attached to 21 as seen in fig. 1).” Final Act. 2.
The Appellants contend that “Montgomery teaches away from using a
magnet to attach the apparatus to a metal surface because the Montgomery
support apparatus is designed to be used unattached and on the ground.”
Br. 5. The Appellants support this contention by pointing to Montgomery’s
disclosure at paragraphs 23 and 24, which disclose that Montgomery’s
apparatus is designed to be dragged around a workshop like a sled and is
operated by a vertical foot pedal without being fastened to the ground. See
Br. 5. The Appellants’ contention is unpersuasive.
In response, the Examiner correctly explains that Montgomery defines
the term “ground” in a “non-limiting” manner and may encompass without
limitation such concepts as floor, step, bench, or tool cart and so on. See
Ans. 4 (citing Montgomery, para. 23). In this case, the use of Montgomery’s
device on the floor is merely one alternative use of Montgomery’s support
apparatus. Additionally, Montgomery discloses that a conventional use of
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its device is “practiced with two hands, one grasping the barrel 23, [and] the
other grasping the lever 33.” Montgomery, para. 13. Modifying
Montgomery’s support apparatus to include a magnet, as taught by Gary,
adds the capability of being able to attach Montgomery’s housing to a metal
surface. See Final Act. 4. The Examiner explains that the modification
would be beneficial in that it would provide stability while operating
Montgomery’s pump-mechanism 25. See Ans. 4. Further, Montgomery’s
modified support apparatus would maintain the ability to be dragged across a
workshop. See id. As such, the Appellants’ contention is unpersuasive
because a person of ordinary skill, upon reading Montgomery, would not be
discouraged from following the path set out in Montgomery, and would not
be led in a direction divergent from the path that was taken by the
Appellants. See also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Thus, the rejection of independent claim 1 as unpatentable over
Montgomery and Gary is sustained. For the same reasons, we also sustain
the rejection of dependent claims 4 and 5, which is not argued separately.

Independent claim 6
The Appellants contend, “[c]laim 6 is considered allowable for at least
the same reasons advanced under claim 1.” Br. 6. For similar reasons as
discussed above, the Appellants’ contention is unpersuasive. Additionally,
the Appellants contend that Montgomery does not disclose a head cap as
required by claim 6. Br. 6. The Appellants’ contention is unpersuasive for
similar reasons as discussed above. Thus, the rejection of independent claim
6 as unpatentable over Montgomery and Gary is sustained.

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Dependent claim 11
The Appellants contend “[c]laim 11 is considered allowable for at
least the same reasons advanced under claims 1 and 6.” Br. 6. For similar
reasons as discussed above, the Appellants’ contention is unpersuasive.
Additionally, the Appellants contend that the Examiner does not
reasonably explain how Montgomery discloses the added limitation of claim
11, i.e., “wherein the integrated attachment apparatus is integrated with the
head cap as one piece.” Br. 6. The Appellants base this contention on
similar reasons as discussed above. See id. at 6–7. For similar reasons as
discussed above the Appellants’ contention is unpersuasive. Notably, we
agree with the Examiner’s finding that “if one would to lift up
Montgomery’s device at [mounting plate] 62, the entire device, as whole,
would be lifted together in one piece.” Ans. 5 (emphasis added). Thus, the
rejection of dependent claim 11 as unpatentable over Montgomery and Gary
is sustained.

Independent claim 12
The Appellants contend “[c]laim 12 is considered allowable for at
least the same reasons advanced under claims 1 and 6.” Br. 6. For similar
reasons as discussed above, the Appellants’ contention is unpersuasive.
Additionally, the Appellants contend that Montgomery does not disclose a
grease gun cap as required by claim 12. Br. 7. The Appellants’ contention
is also unpersuasive for similar reasons as discussed above. See also Final
Act. 3. Thus, the rejection of independent claim 12 as unpatentable over
Montgomery and Gary is sustained.

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Dependent claims 14 and 15
The Appellants contend claims 14 and 15, which depend from claim
12 directly and indirectly respectively, “are considered allowable over the art
of record for at least the same reasons set forth above with reference to claim
1, 6, and 12.” Br. 7. For similar reasons as discussed above, the Appellants’
contention is unpersuasive.
Additionally, the Appellants contend that the Examiner does not find
that the cited prior art discloses the additional limitations of claims 14 and
15; and, as such, “Examiner appears to be taking Office Notice that the
features cited in claims 14 and 15 are allegedly obvious.” Br. 7. The
Appellants’ comments thereafter are directed to the Examiner’s alleged use
of Official Notice as improper. See id. at 7–9. The Appellants’ contention is
unpersuasive because the Examiner does not rely on Official Notice to reject
claims 14 and 15. See Final Act. 5, Ans. 5–6.
For the rejection of claims 14 and 15, the Examiner finds that
Montgomery’s support apparatus, as modified to include a magnet as taught
by Gary, lacks the limitations of claims 14 and 15. Final Act. 5. Thereafter,
the Examiner determines:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to employ a
metallic housing attractive to a magnet so that the magnet could
be better secured thereon, since it has been held to be within the
general skill of a worker in the art to select known material on
the basis of its suitability for the intended use as a matter of
obvious design choice. In re Leshin, 125 USPQ 416. Due to
the obvious design choice of the metallic material and the
strength of the magnet, the magnet would remain in place
during operation.
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Id. (emphasis added). Accordingly, the Examiner’s rejection is based on a
determination that to one of ordinary skill in the art the limitations of claims
14 and 15 are obvious as a design choice. Ans. 5–6. As such, the
Appellants’ contention is unpersuasive as it does not explain error in the
Examiner’s rejection. Thus, the rejection of dependent claims 14 and 15 as
unpatentable over Montgomery and Gary is sustained.

DECISION
We AFFIRM the rejection of claims 1, 4–6, 11, 12, 14, and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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