Ex Parte Siegal

Board of Patent Appeals and Interferences

Feb 20, 2009

10205805 (B.P.A.I. Feb. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. SIEGAL
____________

Appeal 2008-0430
Application 10/205,805
Technology Center 3700
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Decided:1 February 23, 2009
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Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-0430
Application 10/205,805

David M. Siegal (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 3-11. Claims 1 and 2 are withdrawn. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
The claimed invention is to a threaded push-on ring retainer for
stabilizing a toilet bolt while a toilet is being lowered onto a floor ring.
Spec. 3, ¶0012.
Claim 3, reproduced below, is representative of the subject matter on
appeal.
3. A retainer and bolt assembly, sized, constructed and
arranged for securing a toilet to a floor ring, the floor ring
having at least one elongated slot, the assembly comprising:
a bolt, having a threaded shank, and a head on an end
thereof to hold the bolt against upper movement through the
elongated slot; and
a retainer having a base portion having an outer perimeter
lying in a first plane and defining an opening, and a plurality of
elongated fingers extending from the base portion, each finger
having a head section having at least one engaging thread ridge,
said head sections being disposed in a second plane and
defining a bolt bore aperture which is parallel to and spaced
apart from the opening of the base portion in the first plane,
said fingers extending inclinedly in a direction from the first
plane to the second plane;
wherein the fingers are constructed to deflect upwardly
towards the second plane so that the retainer can be pushed in a
first direction from the second plane towards the first plane over
the threaded shank, and so that the retainer can be tightened in
the first direction by turning the retainer whereby the fingers act
to hold the bolt more securely, rather than deflecting out of
position as the retainer is tightened over the bolt.

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THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Kimak US 4,990,004 Feb. 5, 1991
Fraleigh US 6,698,986 B2 Mar. 2, 2004

THE REJECTIONS
The following Examiner’s rejections are before us for review:
Claims 3-11 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Kimak.
Claims 3-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fraleigh and Kimak.
The Appellant has argued claims 3-11 as a group for each rejection
supra. As such, we select claim 3 to be representative of the group for each
rejection and claims 4-11 will stand or fall with representative claim 3.

ISSUES
Has the Appellant demonstrated error in the Examiner’s determination
that Kimak’s split, stepped flexible web structure satisfies the claimed
subject matter of the retainer’s fingers extending inclinedly in a direction
from the first plane to the second plane?
Has the Appellant shown that the Examiner erred in making a legal
conclusion of obviousness by the contentions raised in the Briefs and the
Declaration submitted to rebut the prima facie case of obviousness?

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FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Claim 3 recites in part: “said fingers extending inclinedly in a
direction from the first plane to the second plane.”
2. The Appellant’s Specification does not provide a definition for the
claim term “extending inclinedly.” Spec., passim.
3. Extend means “1: to spread or stretch forth.” Webster’s Ninth New
Collegiate Dictionary 439 (1987).
4. Inclined means “2a: having a leaning or slope b: making an angle with
a line or plane.” Webster’s Ninth New Collegiate Dictionary 609
(1987).
5. Kimak’s Figure 1 shows a retainer having a base portion 12 and a
stepped web structure 16 extending from the base 12 and split at one
or more locations 18. As such, Kimak describes a split, stepped web
structure and one of ordinary skill in the art would understand this
structure as “fingers.” The web structure 16 has two angularly related
surfaces. The first surface 16a extends axially and the second 16b
extends radially inward. Kimak, col. 2, ll. 41-50, see also Figs. 1 and
2 reproduced below.

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Kimak’s Figure 1 is reproduced below.

Kimak’s Figure 1 is said to depict a perspective view of the retainer.
6. Kimak’s Figure 2 is reproduced below.

Kimak’s Figure 2 is said to depict a cross sectional side view of the
retainer.

PRINCIPLES OF LAW
A determination that a claim is anticipated under 35 U.S.C.
§ 102(b) involves two analytical steps. First, the Board must
interpret the claim language, where necessary. Because the
PTO is entitled to give claims their broadest reasonable
interpretation, our review of the Board’s claim construction is
limited to determining whether it was reasonable. In re Morris,
127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board
must compare the construed claim to a prior art reference and
make factual findings that ”each and every limitation is found
either expressly or inherently in [that] single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998).
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
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“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, and (3) the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 at ___, 127 S. Ct.
at 1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”) The Court in Graham further noted that evidence of secondary
considerations “might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented.” 383
U.S. at 18.
It should be noted that to be given substantial weight in the
determination of obviousness or non-obviousness, the evidence of secondary
considerations must be relevant to the subject matter as claimed, and
therefore the examiner must determine whether there is a nexus between the
merits of the claimed invention and the evidence of secondary
considerations. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).
In the case of evidence of commercial success, the Federal Circuit has
acknowledged that the appellant bears the burden of establishing commercial
success, stating:
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In the ex parte process of examining a patent
application, however, the PTO lacks the means or
resources to gather evidence which supports or
refutes the applicant’s assertion that the
sale constitutes commercial success. C.f. Ex parte
Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens
in civil proceedings inappropriate in ex parte
prosecution proceedings because examiner has no
available means for adducing evidence).
Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial
success.
In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC,
57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482
(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by
the claims subject to the obviousness rejection was not probative of non-
obviousness).
Objective evidence of non-obviousness, including commercial
success, must be commensurate in scope with the claims. In re Tiffin, 448
F.2d 791 (CCPA 1971) (evidence showing commercial success of
thermoplastic foam “cups” used in vending machines was not commensurate
in scope with claims directed to thermoplastic foam “containers” broadly).
In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
In other words, the Appellant must offer proof “that the sales were a direct
result of the unique characteristics of the claimed invention – as opposed to
other economic and commercial factors unrelated to the quality of the
patented subject matter.” In re Huang, 100 F.3d at 140 (Fed. Cir. 1996); see
also In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“For objective
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evidence to be accorded substantial weight, its proponent must establish a
nexus between the evidence and the merits of the claimed invention.”). An
inventor’s opinion as to the purchaser’s reason for buying the product is
insufficient to demonstrate a nexus between the sales and the claimed
invention. See In re Huang, 100 F.3d at 140 (Fed. Cir. 1996).
Further, gross sales figures do not show commercial success absent
evidence as to market share. Cable Electric Products, Inc. v. Genmark, Inc.,
770 F.2d 1015, 1026-27 (Fed. Cir. 1985). See also In re DBC, 545 F.3d
1373, 1384 (Fed. Cir. 2008) (finding that evidence of sales alone is not
sufficient to demonstrate nonobviousness of a claimed invention) and In re
Huang, 100 F.3d at 140 (“evidence related solely to the number of units sold
provides a very weak showing of commercial success, if any.”).

ANALYSIS
Claim Construction
Claim 3 requires the fingers of the retainer to be “extending
inclinedly.” Fact 1. The Appellant’s Specification does not provide a
definition for “extending inclinedly.” Fact 2. The ordinary and customary
meaning of “extend” is to spread or extend forth. Fact 3. The ordinary and
customary meaning of “inclined” is to have a lean or slope or to make an
angle with a line or plane. Fact 4. The Specification does not preclude
either definition for “inclined.” As such, both definitions are equally valid.
The PTO uses the broadest reasonable interpretation when construing
claims. See In re Morris, 127 F.3d at 1055. Absent an express definition in
their Specification, the fact that Appellants can point to definitions or usages
that conform to their interpretation does not make the PTO’s definition
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unreasonable when the PTO can point to other sources that support its
interpretation. In re Morris, 127 F.3d at 1056. The definition for “inclined”
of making an angle with a line or plane is broader than the having a slope or
lean definition. Accordingly, we construe the term “inclined” as making an
angle with a line or plane. Therefore, given all of the evidence before this
panel, the broadest reasonable interpretation in light of the Specification for
the claim limitation of fingers “extending inclinedly” is that the fingers make
an angle with a line or plane.
Comparison to the Kimak (§ 102(b) rejection)
Kimak describes a split, stepped web structure extending from the
base of the retainer. Fact 5. Kimak describes the two surfaces composing
the split, stepped web structure are angularly related. Fact 5. In particular,
Kimak describes that surface 16a extends axially and that surface 16b
extends radially inward. Fact 5. As shown in Figures 1 and 2, the extension
of Kimak’s surfaces 16a and 16b is toward the central axis of the retainer as
a whole in order to have the thread split structure 18 closer to the central axis
compared to the base portion 12. Facts 5 and 6. To achieve this
configuration, the split, stepped web structure inclines at a first near
90°angle to the base, then extends approximately parallel to the base, and
finally inclines at a second near 90° angle. As such, the split, stepped web
structure is inclined near 90° angle to the first plane that the base lies in and
extends, with another near 90° angle, to a second parallel plane where the
thread head sections are disposed. Accordingly, Kimak’s stepped web
structure satisfies the claimed structure of the fingers and the spaced
relationship of the fingers extending inclinedly in a direction from a first
plane to a second plane.
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Scholer Declaration
The Scholer Declaration does not persuade us that the Examiner erred
in rejecting claim 3 as being anticipated by Kimak. In ¶ 6, Mr. Scholer
declares that the web and nut portions are perpendicularly arranged.
However, Kimak does not describe a perpendicular arrangement, but instead
describes arrangement of the surfaces extending first axially and then
radially inward. See Fact 5. This description in Kimak does not limit the
surfaces to be perpendicularly arranged (90° angles) as declared by Mr.
Scholer. In ¶ 7, Mr. Scholer declares Kimak’s fingers are at a zero angle and
will tend to deform and loosen when weight is placed on the bolt. However,
Kimak’s description does not describe its fingers (Kimak’s split, stepped
web structure) are at a zero angle, Kimak, passim. Moreover, functional
limitation of preventing deformation and loosening by the claimed structure
is not within the claim. As such, Mr. Scholer declaring such deformation
and loosening would occur is not commensurate with the claim. In ¶ 8, Mr.
Scholer declares tests were performed on: 1) the claimed retainer, 2) a
retainer having fingers and no pointed tips, and 3) a retainer having fingers
with no inclination. However, we do not know whether the latter two
retainers were the retainers of Kimak or Fraleigh (used to reject the claims
under § 103(a) in combination with Kimak). Accordingly, we do not know
if the efficacy declared is being compared to Kimak and Fraleigh or some
other retainers of the prior art not used to reject the claimed retainer.
35 U.S.C. § 103(a) Rejection
Inasmuch as the Appellant relies on his arguments that Kimak fails to
teach a plurality of fingers that extend in an incline, see App. Br. 10 and
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Reply Br. 2-4, we are not persuaded of error on the Examiner’s part for the
reason given supra.
We disagree with the Appellant that the Examiner failed to articulate a
reason to combine Fraleigh and Kimak, App. Br. 10. The Examiner stated
“in consideration of Kimak[’s teachings], it would have been obvious to one
of ordinary skill in the retainer and bolt art to associate finger and slots with
the Fraleigh retainer in order to facilitate bolt securement. (Kimak, col. 1[,]
lns. 19-23).” Ans. 5. To us, this is the Examiner’s articulated reason with a
rational underpinning to support the Examiner’s legal conclusion of
obviousness. See KSR, 550 at ___, at 1740-41.
We are not persuaded by the Appellant’s contention that “neither
[Fraleigh’s nor Kimak’s] construction leads to the benefit of a push-on
retainer that firmly holds the bold in place.” See App. Br. 10-12 and Reply
Br. 4-5. For the reasons we determined that Mr. Scholer’s declaration is
deficient in showing error on the Examiner’s part with respect to Kimak, see
our reasoning supra. For Fraleigh, in ¶ 5, Mr. Scholer declares in light of
Fraleigh’s construction, Fraleigh’s threads could be soft enough for the toilet
bolt to be pushed back down if the toilet’s bottom hit the top of the bolt. In
¶ 8, Mr. Scholer declares performing tests on three retainers. While Mr.
Scholer declares performing a test on the claimed retainer, Mr. Scholer does
not declare testing the Fraleigh retainer. Therefore, Mr. Scholer’s
conditional conclusion that the Fraleigh retainer would permit the toilet bolt
to push through the threads is his speculative opinion because it appears no
tests were performed on the Fraleigh retainer.
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As such, the Appellant’s arguments and Scholer declaration fail to
persuade us that the Examiner erred in making a prima facie determination
of obviousness of the claimed invention.
Secondary Considerations (Siegal Declaration)
Inasmuch as we have concluded that the subject matter of the claims
is prima facie obvious, and because Appellant has furnished evidence in
rebuttal of obviousness, we now turn to consider this evidence. When such
evidence is presented, it is our duty to consider all evidence anew. See, e.g.,
In re Eli Lilly and Co., 902 F.2d 943 (Fed. Cir. 1990). We are also mindful
that objective evidence of non-obviousness in any given case may be entitled
to more or less weight depending on its nature and its relationship with the
merits of the invention. See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d
1530 (Fed. Cir. 1983).
Appellant argues that Mr. Siegal’s declaration evidences commercial
success of the retainer. App. Br. 13-14 and Reply Br. 6-7. First, it should be
noted that Mr. Siegal is the sole inventor and it has been held that the
inventor’s opinion as to a purchaser’s reason for buying the product is
insufficient to demonstrate a nexus between the sales and the claimed
invention. See In re Huang, 100 F.3d at 140. Second, gross sales of the
Johni Quick BoltTM per quarter in comparison to sales of the Johni-Bolt® of
500,000 units per quarter (Siegal Declaration, ¶ 16, 17, 19, and 20), without
evidence as to whether this represents a substantial share of any definable
market, provides a weak showing of commercial success. See Id., at 139-40.
Although, the Johni Quick BoltTM may be seeing strong initial sales
numbers, such an initial strong sales numbers may speak more to the desire
on the part of the customers to experiment with a new device, than it does to
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attributes of the product itself or the unexpected benefits thereof. Even
assuming that Appellant had sufficiently demonstrated commercial success,
that success is relevant in the obviousness context only if it is established
that the sales were a direct result of the unique characteristics of the claimed
invention, as opposed to other economic and commercial factors unrelated to
the quality of the claimed subject matter. Id. In other words, a nexus is
required between the sales and the merits of the claimed invention.
Appellant has not supplied sufficient evidence to permit us to ascertain
whether these sales were attributable to the unique characteristics of the
claimed invention, rather than other factors, such as characteristics of the
Appellant as a vendor, a mass advertising campaign for the Johni Quick
BoltTM and foregoing advertising on Johni Bolt®, for example.
After reviewing all of the evidence before us, including the totality
of Appellant’s evidence, it is our conclusion that, on balance, the evidence of
nonobviousness fails to outweigh the evidence of obviousness discussed
above and, accordingly, the subject matter of the claims would have been
obvious to one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103(a) at the time Appellant’s invention was made. See Richardson-Vicks
Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).

CONCLUSIONS
The Appellant has not demonstrated error in the Examiner’s
determination that Kimak’s split, stepped flexible web structure satisfies the
claimed subject matter of the retainer’s fingers extending inclinedly in a
direction from the first plane to the second plane.
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The Appellant has not shown that the Examiner erred in making a
legal conclusion of obviousness by the contentions raised in the Briefs and
the Declaration submitted to rebut the prima facie case of obviousness.

DECISION
The Examiner’s decision is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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LV:

Matthew W. Siegal
Stroock & Stroock & Lavan LLP
180 Maiden Lane
New York ,NY 10038
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