Ex Parte Struecker

Patent Trial and Appeal Board

Dec 8, 2014

12708198 (P.T.A.B. Dec. 8, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ORAN STRUECKER
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Appeal 2012-009162
Application 12/708,198
Technology Center 3600
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Before: JENNIFER D. BAHR, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Oran Struecker (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claim 1, which is the only claim pending in
the present application, under 35 U.S.C. § 103(a) as being unpatentable over
Driscoll (US 6,311,957 B1, issued Nov. 6, 2001). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only claim involved in this appeal.
1. An insert for a staircase spindle, comprising:
an insert having a top, a sidewall and a bottom;
a bore extending generally through a center of the insert;
wherein the bore is generally square to receive a square end of a
staircase spindle, and the sidewall is generally cylindrical such
that the insert is received within a hole having a base there
below; and
a fastener extending through the insert and into the base
of a staircase below the insert and hole such that the insert is
connected to the staircase;
wherein the square end of the staircase spindle engages
the base wherein when the fastener extends into the base the
spindle does not rotate.

ISSUE
The issue presented in this appeal is whether the Examiner erred in
determining that it would have been obvious to modify the baluster,
connector, and base assembly of Driscoll’s first embodiment, illustrated in
Figures 1 and 2A, by replacing the adhesive fastener with fastener 52, as
disclosed in Driscoll’s Figure 5B embodiment. See Ans. 4–5; Appeal Br.
5–9; Reply Br. 3–6.

DISCUSSION
The Examiner found that Driscoll discloses, in the first embodiment
illustrated in Figures 1 and 2A, a staircase spindle, insert, and base assembly
as recited in claim 1, with the exception of a separate fastener that extends
through the insert and into the base and prevents the spindle from rotating.
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Ans. 4; see Driscoll, col. 3 l. 66 – col. 4, l. 8 (discussing use of adhesive in
the first embodiment). Appellant does not contest this finding.
The Examiner found that in the embodiment depicted in Figure 5B,
Driscoll discloses separate fastener 52 that extends into the base of a
staircase, thereby connecting the insert (escutcheon or connector 50) to the
base and preventing the spindle from rotating. Ans. at 4–5; see Driscoll, col.
5, ll. 28–30 (discussing receipt of fastener 52, such as a screw or nail, in
passage 51 of escutcheon 50 in the Figure 5B embodiment). Appellant does
not contest this finding. See Appeal Br. 5 (discussing Driscoll’s Figure 5B
embodiment); Reply Br. 4 (same).
The Examiner determined that it would have been obvious to replace
the adhesive means of attachment in Driscoll’s first embodiment with a
fastener as shown in Driscoll’s Figure 5B embodiment “in order to provide a
more secure attachment and prevent movement of the spindle and/or the
insert.” Ans. 5. The Examiner reasoned:
When a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for
another known in the field, the combination must do more than
yield a predictable result. Further, the mere substitution of one
known fastening means (i.e.[,] a mechanical fastener) for a
different, equally well known fastening means (i.e.[,] adhesive)
is well within the level of one having ordinary skill in the art.
Id.
Appellant argues that none of Driscoll’s embodiments, alone or in
combination, discloses or suggests each and every element of Appellant’s
claimed invention because the embodiment of Figures 1 and 2A lacks a
fastener as claimed and the embodiment of Figure 5B lacks a hole in the
base as claimed. Appeal Br. 5–6. Further, Appellant contends that Driscoll
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does not describe its Figure 5B embodiment employing fasteners 52 as being
“substitutable, interchangeable, or combinable with the connector 20 as
disclosed in Fig. 1 to appropriately meet the limitations [of] claim 1.” Reply
Br. 3.
This line of argument is not convincing because the rejection is based
on obviousness, not anticipation. To the extent that this line of argument
addresses the combined teachings of Driscoll’s embodiments, it is premised
on a rigid insistence on an explicit teaching, suggestion, or motivation in the
prior art to make the combination. The Supreme Court has stated that such a
rigid insistence on an explicit teaching, suggestion, or motivation is
incompatible with its precedent concerning obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). Instead, the relevant inquiry is
whether the Examiner has set forth “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550
U.S. at 418).
“[W]hen a patent [application] claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result” in order to be deemed nonobvious. KSR, 550 U.S. at 416. The
Examiner reasoned that it would have been obvious to modify Driscoll’s
first embodiment by replacing the adhesive means of attaching with a
fastener extending through the insert (connector 20) and into the base “since
they are providing the same function of attaching the insert to the base and . .
. both methods will provide the same end result.” Ans. 6. The modification
proposed by the Examiner is nothing more than the mere substitution of one
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well-known fastening means (a fastener such as a screw or nail) for another
(adhesive) known in the field. Thus, the Examiner’s conclusion of
obviousness is supported by articulated reasoning having some rational
underpinning.
Appellant argues that Driscoll teaches away from the modification
proposed by the Examiner because Driscoll discloses that escutcheons as
disclosed in the embodiments of Figures 3A, 3B, 4A, and 4B are used to
cover up gaps left when a polygonal baluster is inserted into a circular
opening and that the escutcheon and fastener assembly of Figure 5B attaches
a baluster to a base without the necessity of holes or openings in the base.
Appeal Br. 7 (citing Driscoll, col. 5, ll. 5–6, 36–38). We do not agree with
Appellant.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Driscoll discloses, in the various embodiments, different solutions to
the problem of attaching a non-circular (polygonal) baluster to a base. See
Driscoll, col. 1, l. 35 – col. 2, l. 9 (describing the complications with
attaching non-circular balusters); col. 3, l. 46 – col. 4, l. 65 (describing the
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first embodiment); col. 4, l. 66 – col. 5, l. 6 (describing an embodiment
employing an escutcheon to cover up gaps left after inserting a polygonal
baluster into a circular opening in the base); col. 5, l. 25 – col. 6, l. 16
(describing various embodiments employing connectors/escutcheons to
secure balusters without the necessity of holes in the base). The passages of
Driscoll cited by Appellant in support of the teaching away argument discuss
escutcheons generally and tout as an advantage of the escutcheon of the
Figure 5B embodiment the fact that it facilitates attachment of a banister to a
base without the necessity of providing an opening or hole in the base.
Driscoll, col. 5, ll. 5–6, 36–38. However, the Examiner did not propose
modification of Driscoll’s Figure 5B embodiment to provide a hole in the
base; rather, as noted above, the Examiner proposed modification of
Driscoll’s first embodiment, depicted in Figures 1 and 2A, to use a fastener,
such as fastener 52, in place of adhesive. Driscoll discourages neither the
use of Driscoll’s first embodiment, which employs a connector fitted into a
round opening in the base, nor the use of a fastener, such as fastener 52
disclosed in the Figure 5B embodiment, in the first embodiment in place of
the adhesive securement means disclosed in the first embodiment.
Appellant also argues that the modification proposed by the Examiner
“would change the principle of operation and render the embodiment of
Driscoll being modified unsatisfactory for its intended purpose by requiring
holes within the base/handrail to receive the escutcheons/connectors.”
Appeal Br. 8. We do not agree with Appellant. The modification proposed
by the Examiner entails “merely substituting one method of fastening an
insert with another means of fastening an insert.” Ans. 6. When modified as
proposed by the Examiner, the connector of Driscoll’s first embodiment
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would be secured by fasteners as disclosed in the Figure 5B embodiment
instead of by adhesive. Id. With either means of attachment, the mode of
operation of Driscoll’s first embodiment remains the same — an insert
(connector 20) fitted into a hole in the base and secured to the base by a
well-known fastening means. The use of fastener 52 rather than adhesive to
secure connector 20 to the base would not render the connector unsuitable
for its intended purpose of attaching a non-circular (polygonal) baluster to a
base provided with a circular hole or opening.
For the above reasons, Appellant’s arguments fail to apprise us of
error in the Examiner’s determination that it would have been obvious to
modify the baluster, connector, and base assembly of Driscoll’s first
embodiment, illustrated in Figures 1 and 2A, by replacing the adhesive
fastener with fastener 52, as disclosed in Driscoll’s Figure 5B embodiment.
Thus, Appellant fails to apprise us of error in the Examiner’s conclusion that
claim 1 is unpatentable over Driscoll. We sustain the rejection of claim 1.

DECISION
The Examiner’s decision rejecting claim 1 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).
AFFIRMED

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