Ex Parte Wilczak et al

Patent Trial and Appeal Board

Sep 28, 2016

12223501 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/223,501 07/3112008 Richard Wilczak
29471 7590 09/30/2016
MCCRACKEN & FRANK LLC
P.O. Box 787
Elmhurst, IL 60126
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
28944/40270 9005
EXAMINER
MAI, TRIM
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
09/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@mccrackenfrank.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD WILCZAK and CHRISTOPHE DEGOIX
Appeal2014-005857
Application 12/223,501
Technology Center 3700
Before JENNIFER D. BAHR, LEE L. STEPINA and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-8, 11, 12, and 18-20. 1 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Subsequent to the Final Office Action, Appellants sought to cancel claims
9, 10, and 13-17. Appeal Br. 2. In an Advisory Action filed February 7,
2014, the Examiner entered Appellants' cancelation. Therefore, only claims
1-8, 11, 12, and 18-20 are pending in this application.
Appeal2014-005857
Application 12/223,501
THE INVENTION
Appellants' invention "relates to luggage, and more precisely to
luggage of the pull-along type, commonly called trolleys." Spec. 1:1-2.
Claim 1, the sole independent claim, is reproduced below, and is
representative of the subject matter on appeal.
1. Luggage of the pull-along type, which comprises:
a container;
a sleeve fixed to the container;
a telescopic tube mounted in a sliding fashion in the sleeve
between a retracted position and a deployed position, the
telescopic tube being provided with a locking member which
ensures retention of the tube in the retracted position, the
locking member comprises a ball, mounted in the tube, acted
upon by a spring and capable of cooperating with a hole
arranged in the sleeve,
wherein in the retracted position of the tube, the ball is
partially received in the hole; and
a resilient element, interposed between the tube and the
sleeve, mounted in a support at the bottom of the sleeve;
wherein there is a clearance between the tube and the
support when the telescopic tube is in the retracted position,
wherein the resilient element is located in the clearance; and
wherein under the effect of an impact directed toward the
direction of the retraction of the tube in the retracted position,
the ball partially received in the hole and the resilient element
enable the tube to be pushed in an elastic manner into the sleeve
beyond the retracted position against a restoring force exerted
on the tube by the resilient element, the tube returning in the
retracted position by means of the resilient element as soon as
this impact disappears.
Appeal Br. 14 (Claims App.).
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Appeal2014-005857
Application 12/223,501
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kazmark
Tsai '266
Tsai '362
Tu
us 5,522,615
us 5,692,266
us 5,884,362
us 6,161,253
June 4, 1996
Dec. 2, 1997
Mar. 23, 1999
Dec. 19, 2000
The following rejections are before us for review:
I. Claims 1--4, 8, 11, 12, and 18-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kazmark and Tu.
II. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kazmark, Tu, and Tsai '266.
III. Claims 1--4, 8, 11, 12, and 18-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tu and either Kazmark or
Tsai '362.
IV. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tu and Tsai '266.
ANALYSIS
For claim 1, the only independent claim from which the remaining
claims depend, Appellants assert the Examiner has not shown the prior art
discloses the last element:
wherein under the effect of an impact directed toward the
direction of the retraction of the tube in the retracted position, the
ball partially received in the hole and the resilient element enable
the tube to be pushed in an elastic manner into the sleeve beyond
the retracted position against a restoring force exerted on the tube
by the resilient element, the tube returning in the retracted
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Appeal2014-005857
Application 12/223,501
position by means of the resilient element as soon as this impact
disappears.
Appeal Br. 4--7, 10-12. The only references the Examiner relies upon to
disclose the above element are Kazmark and Tsai '362. Final Act. 2-3, Ans.
2-3, 6, 8-9, 11.2 We agree with Appellants that neither Kazmark nor Tsai
'362, when claim 1 is interpreted properly, provide the evidence necessary to
sustain the Examiner's rejections.
We begin by addressing a dispute between the Examiner and
Appellants, which inherently raises an issue regarding the scope of claim 1.
Specifically, Appellants make a point of arguing that neither Kazmark nor
Tsai '362 enable the tubes to be moveable within the sleeve once the
retractable handle is in the retracted position. Appeal Br. 4 ("In fact, the
retaining means of ... Kazmark, Jr . ... provide[ s] for the securement of the
respective tubes in the respective sleeves such that the tubes are not
moveable within the sleeve in the retracted position."), 10-11 ("[I]n the
retracted position, the tube [of Tsai '362] cannot be pushed beyond its
retracted position in a normal, non-destructive use so long as the button[] is
not pushed."). The Examiner notably does not refute, with any evidence or
technical reasoning, Appellants' position on this point.
On the other hand, the Examiner does point out, for both Kazmark and
Tsai '362, that a user does not know when exactly it has reached the locked
position and, therefore, when exactly to release the button on the handle to
engage the locking mechanism, which would result in the user pushing the
handle (i.e., applying a downward force on the handle) past the retracted
2 The Examiner concedes "Tu '253 is not clear about the tube being enabled
to be pushed beyond the retracted position against the resilient element."
Ans. 6.
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Appeal2014-005857
Application 12/223,501
position. Ans. 8, 11. The Examiner finds that this would cause the
lowermost spring to compress and provide a reaction force upward to move
the handle into the retracted position and engage the locking mechanism,
once the handle bottoms-out and the user releases the handle. Id.
Appellants likewise do not refute persuasively the Examiner's position on
this point.
The decisive issue, therefore, is whether claim 1 requires the locking
member to enable the telescopic tube to be "pushed in an elastic manner into
the sleeve beyond the retracted position against a restoring force exerted on
the tube by the resilient element, the tube returning in the retracted position
by means of the resilient element as soon as this impact disappears" even
after the tube is in the retracted position and the locking member is engaged
with the ball partially received in the hole.
To answer this question, we first tum to the language of claim 1. We
note claim 1 states, "wherein in the retracted position of the tube, the ball
[of the locking member] is partially received in the hole [arranged in the
sleeve.]" Appeal Br. 14 (Claims App.) (emphasis added). Next, claim 1
subsequently states,
the ball partially received in the hole and the resilient element
enable the tube to be pushed in an elastic manner into the sleeve
beyond the retracted position against a restoring force exerted on
the tube by the resilient element, the tube returning in the
retracted position by means of the resilient element as soon as
this impact disappears.
Id. (emphasis added). Finally, claim 1 requires the claimed luggage to
enable that response "under the effect of an impact directed toward the
direction of the retraction of the tube in the retracted position." Id.
(emphasis added). In view of the above claim language, we agree with
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Appeal2014-005857
Application 12/223,501
Appellants that claim 1 requires the locking member to enable the telescopic
tube to be pushed in an elastic manner into the sleeve beyond the retracted
position and returned to the retracted position by the resilient element as
soon as this impact disappears even after the tube is in the retracted position
and the locking member is engaged with the ball partially received in the
hole.
The Specification is consistent with this understanding. In particular,
the Specification teaches that "the tube and its hand grip [for known
luggage] remain exposed to certain impacts, in particular those transmitted
from the hand grip to the tube, even in the retracted position." Spec. 2: 16-
19. The invention is described as "intended in particular to remedy this
problem, by proposing a luggage of the pull-along type, which is less
sensitive to impacts than known luggage." Id. at 2:29-31. It does so
because "the tube retains a certain movement in the retracted position which
allows it to be pushed in under the effect of an impact, in particular a vertical
impact, with a damping effect of the impact provided by the resilient
element." Id. at 3:4--8 (emphasis added).
As a result, when claim 1 is properly interpreted, the Examiner's
evidence about how Kazmark and Tsai '362 may function beyond the
retracted position, while a user continues to hold the button on the luggage
handle to keep the locking mechanism from engaging, is deficient.
Moreover, because the Examiner does not refute, with any evidence or
technical reasoning, Appellants' position regarding how the locking
mechanism of Kazmark and Tsai '362 function, when the tube is in the
retracted position, the Examiner has not established, by a preponderance of
the evidence, that Kazmark and/or Tsai '362 disclose
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Application 12/223,501
wherein under the effect of an impact directed toward the
direction of the retraction of the tube in the retracted position, the
ball partially received in the hole and the resilient element enable
the tube to be pushed in an elastic manner into the sleeve beyond
the retracted position against a restoring force exerted on the tube
by the resilient element, the tube returning in the retracted
position by means of the resilient element as soon as this impact
disappears,
as claim 1 requires. Because the Examiner's Rejections I-IV are wholly
dependent on Kazmark and/or Tsai '362 disclosing that element, we do not
sustain Rejections I-IV.
DECISION
The decision of the Examiner to reject claims 1-8, 11, 12, and 18-20
is REVERSED.
REVERSED
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