Ex Parte Zivic et al

Board of Patent Appeals and Interferences

Jul 23, 2009

11185686 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JENNIFER ZIVIC, ALICIA COX, and ALAN BECK
__________

Appeal 2009-002656
Application 11/185,686
Technology Center 3700

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Decided:1July 23, 2009
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Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and JEFFREY
N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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 2009-002656
Application 11/185,686

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and/or obviousness. We have jurisdiction under
35 U.S.C. § 6(b). The following claim(s) are representative.
1. A file, comprising:
a first panel disposed adjacent a holding location;
a holding member associated with the first panel and being configured
and dimensioned for holding and retaining a stack of paper in the holding
location; and
a second panel comprising a high-traction surface that has a
sufficiently high frictional coefficient to provide elevated traction and
gripping against a desktop to resist or prevent sliding thereagainst;
wherein the second panel is rotatably associated with the first panel
for movement between a closed position and an open position.

CITED REFERENCES
Su US 5,630,509 May 20, 1997
Rogers US 6,116,412 Sept. 12, 2000
Sellers US 6,478,292 B1 Nov. 12, 2002

GROUNDS OF REJECTION
1. Claims l, 2, 6-11, 13 and 14 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Rogers.
2. Claims 1-11, 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rogers in view of Sellers.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rogers and Sellers further in view of Su.

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1. Claims l, 2, 6-11, 13 and 14 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Rogers.

ISSUE
The Examiner argues that each and every element claimed is disclosed
by Rogers including a second panel comprising a high-traction surface that
has a sufficiently high frictional coefficient to provide elevated traction and
gripping against a desktop to resist or prevent sliding thereagainst.
The Appellants argue Rogers does not disclose a file or a second panel
comprising a high-traction surface that has a sufficiently high frictional
coefficient.
The issue is: Have Appellants demonstrated that Rogers does not
disclose a file or a second panel comprising a high-traction surface that has a
sufficiently high frictional coefficient as claimed?

FINDINGS OF FACT
For all rejections before us, we agree with the facts set forth by the
Examiner in the Answer at pages 3-5.
We additionally find that:
1. The Specification, page 4, indicates that the high-traction surface has a
frictional coefficient that is sufficiently high to provide sufficient traction
and gripping against a desktop to support the holding portion and held stack
hanging therefrom, while substantially preventing the second panel from
sliding off the desktop.
2. Appellants admit that, in Rogers, the anchoring portion 12 serves to
secure the eyeglass pouch to the tabletop by means of an anchoring weight
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Application 11/185,686

20 and a stabilizing weight 21, the anchoring weight 20 causing a friction fit
therewith that prevents the anchoring eyeglass pouch 10 from sliding off the
tabletop edge under its own weight. (See, e.g., Col. 4, lines 1-5; Figs. 2, 4.)
(Br. 5.)

PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
ANALYSIS
The Appellants argue that Rogers does not disclose a file or a second
panel comprising a high-traction surface that has a sufficiently high
frictional coefficient.
We agree with the Examiner that the pouch of Rogers includes all the
structural limitations of the claims and the pouch of Rogers is capable for
holding and retaining a stack of paper, “for example, a stack of paper
consisting of three (3) pieces of paper of any size such as 1”x1”” (Ans. 3).
Appellants have not provided evidence to the contrary.
The Specification, page 4, indicates that the high-traction surface has
a frictional coefficient that is sufficiently high to provide sufficient traction
and gripping against a desktop to support the holding portion and held stack
hanging therefrom, while substantially preventing the second panel from
sliding off the desktop. Appellants admit that, in Rogers, the anchoring
portion 12 serves to secure the eyeglass pouch to the tabletop by means of an
anchoring weight 20 and a stabilizing weight 21, the anchoring weight 20
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causing a friction fit therewith that prevents the anchoring eyeglass pouch 10
from sliding off the tabletop edge under its own weight. (See, e.g., Col. 4,
lines 1-5; Figs. 2, 4.) (Br. 5.)
Because Appellants admit that Rogers operates by causing a frictional
fit, we do not find Appellants have provided evidence that the frictional fit
of Rogers is not a high-traction surface that has a sufficiently high frictional
coefficient, as claimed.
As such we agree with the Examiner’s analysis and rationale to all
separately argued claims in the statement of the rejection and with the
Examiner’s response to Appellants’ arguments as set forth in the Answer,
and adopt them as our own. The anticipation rejection over Rogers is
affirmed.
CONCLUSION OF LAW
Appellants have not demonstrated that Rogers does not disclose a file
or a second panel comprising a high-traction surface that has a sufficiently
high frictional coefficient as claimed. The anticipation rejection is affirmed.

2. Claims 1-11, 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rogers in view of Sellers.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rogers and Sellers further in view of Su.

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.” In re
Rijckaert, 9 F.3d 1531, 1532, (Fed. Cir. 1993) (citations omitted). Only if
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that burden is met, does the burden of coming forward with evidence or
argument shift to the Applicant. In order to determine whether a prima facie
case of obviousness has been established, we considered the factors set forth
in Graham v. John Deere Co., 383 U.S. 1, 17 (1996); (1) the scope and
content of the prior art; (2) the differences between the prior art and the
claims at issue; (3) the level of ordinary skill in the relevant art; and (4)
objective evidence of nonobviousness, if present.
The motivation to combine references does not have to be identical to
patent owner’s to establish obviousness. In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416, (2007).
Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 550
U.S. 398 (2007) explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock [,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.

KSR, 127 S. Ct. at 1740.

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ANALYSIS
2. Claims 1 - 11, 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rogers in view of Sellers.
Appellants argue that Sellers is in a different field of endeavor and not
reasonably pertinent to the claimed invention.
We are not persuaded. When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability. We
agree with the Examiner that one of ordinary skill in the art would have
implemented a predictable variation of the friction mechanism of Sellers into
the friction fit glass holder of Rogers.
We agree with the Examiner’s analysis and rationale in the statement
of the rejection and with the Examiner’s response to Appellants’
Arguments as set forth in the Answer, and adopt them as our own.

ANALYSIS
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rogers and Sellers further in view of Su.
Appellants argue that there is no motivation to combine the
expandable feature of Rogers with Su.
The Examiner finds that it would have been obvious to one having
ordinary skill in the art in view of Su to modify the file of Rogers so the
pocket comprises an expandable accordion pocket for accommodating
various sizes of contents.
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We are not persuaded by Appellants’ argument that there is no
motivation to combine the expandable feature of Rogers with Su.
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. We agree with the Examiner
that one of ordinary skill in the art would have implemented a predictable
variation of the expandable file of Su to make the pocket of Rogers
expandable.
We agree with the Examiner’s analysis and rationale in the statement
of the rejection and with the Examiner’s response to Appellants’
Arguments as set forth in the Answer, and adopt them as our own.
Each of the obviousness rejections is affirmed.

SUMMARY
The anticipation and obviousness rejections are 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).

AFFIRMED

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