Michael DeKeuster et al.

Patent Trials and Appeals Board

Mar 3, 2022

2022000325 (P.T.A.B. Mar. 3, 2022)

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. 14/497,803 09/26/2014 Michael T. DeKeuster 25493-468090 3921 27717 7590 03/03/2022 Seyfarth Shaw LLP 233 S. Wacker Drive Suite 8000 Chicago, IL 60606-6448 EXAMINER CRANDALL, JOEL DILLON ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 03/03/2022 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): patentdocket_chi@seyfarth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL T. DEKEUSTER, CHRISTOPHER H. POTTER, and BRIAN A. WALESA ____________ Appeal 2022-000325 Application 14/497,803 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 2, 10-14, 19, 20, 25, 26, and 27 as unpatentable under 35 U.S.C. § 103 over Schallock (US 2,568,827, iss. Sept. 25, 1951), and Petri (US 3,707,303, iss. Dec. 26, 1972); and claims 6-9, 17, 18, and 21-24 over Schallock, Petri, and McMahan (US 4,842,252, iss. June 27, 1989). We have jurisdiction under 35 U.S.C. § 6(b).2 We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Snap-On, Inc. as the real party in interest. Appeal Br. 4. 2 This case came before us for regularly scheduled oral hearing on February 24, 2022. Appeal 2022-000325 Application 14/497,803 2 THE INVENTION Appellant’s invention relates to automotive jacks. Spec. ¶¶ 2-3. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A jack having a frame, a lifting portion moveable relative to the frame, and a saddle base coupled to the lifting portion and including a first opening and a second opening, and that is adapted to lift an item having a lift point, the jack comprising: a spring-biased retention member including a spring and disposed in the second opening of the saddle base; and a saddle including: a lift portion including a lift point interface adapted to engage the lift point; and an engagement member extending from the lift portion to an end, the engagement member includes an indent between the end and the lift portion, wherein the indent is adapted to be disposed in the first opening and cooperatively engage the spring-biased retention member to detainably couple the saddle to the saddle base. OPINION Unpatentability of 1, 2, 10-14, 19, 20, 25, 26, and 27 over Schallock and Petri Appellant argues claims 1, 2, 10-14, 19, 20, 25, 26, and 27 as a group. Appeal Br. 12-14. We select claim 1 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Schallock discloses the invention substantially as claimed except for a spring-biased retention member in a second opening, for which the Examiner relies on Petri. Final Act. 2-3. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the saddle base of Schallock with a spring biased retention member as taught by Petri. Id. Appeal 2022-000325 Application 14/497,803 3 at 3. According to the Examiner, a person of ordinary skill in the art would have done this to facilitate removal and replacement of a jack saddle. Id. Appellant argues that the prior art fails to disclose a spring-biased retention member including a spring that is disposed in the second opening of the saddle base. Appeal Br. 12. Similarly, Appellant argues that the prior art fails to disclose a saddle that includes an engagement member with an indent that is adapted to be disposed in the first opening and cooperatively engage a spring-biased retention member so as to detainably couple the saddle to the saddle base. Id. at 12-13. Appellant ascribes error to the Examiner’s conclusion that it would have been obvious to modify Schallock with the teachings of Petri to arrive at the claimed invention. Id. at 13. In so doing, Appellant argues that Petri is directed to a paper punch device that does not have a saddle base, or a saddle, or an engagement member that extends from a lift portion of automobile jack. Id. In response, the Examiner explains that Petri is not used to teach a saddle base. Ans. 3. Instead, Petri is relied on to teach fixing an element with respect to a base piece in a manner that allows such element to be easily removed and replaced. Id. In further explaining the rejection, the Examiner states: [O]ne would find it necessary to modify the saddle base element 13 of Schallock which retains the shank 17. While Petri does not specifically teach modifying a saddle base of a jack, as argued, Petri is considered to teach modifying the saddle base of Schallock since the saddle base is the base piece for attachment of an element [Petri; col. 1, lines 9-14]. Therefore, the combination of Schallock in view of Petri is considered to teach the claimed modification of the saddle base. Id. at 4. Appeal 2022-000325 Application 14/497,803 4 In reply, Appellant appears to operate under the mistaken impression that Petri is limited to paper punch devices. Reply Br. 4. Appellant argues that Petri improves prior art paper punches by replacing set screws with spring biased retention means. Id. Otherwise, Appellant appears to concede that Petri’s spring biased retention means saves time compared to prior art set screws. Id. Appellant further argues that Schallock does not need a retention means as its saddle is held in place by gravity. Id. Schallock is directed to an automobile jack. Schallock, col. 1, ll. 1-4. Schallock features lift head 13 which has an axial bore or socket 16 for receiving shank 17 of lift saddle 18. Id. col. 3, ll. 3-19, Figs. 1-3, 6. The Examiner’s findings of fact that such features correspond to the saddle base, saddle, first opening, and engagement member of Appellant’s claim 1 is well supported by the record before us. Final Act. 2. Petri is directed to a means for securing an insert to a base piece. Petri, Abstract. As perhaps best illustrated in Figure 1, ball 10 is biased by spring 11 into V-shaped groove 15 of shank 7. Id. col. 2, ll. 19-43, Fig. 2. Shank 7, which is an element of the insert, is disposed and retained in bore 5. Id. Ball 10 and biasing spring 11 are disposed in transversely extending opening 9, which constitutes a “second opening” as used in claim 1. Id. Thus, taken together and in combination, Schallock and Petri disclose all of the elements of Appellant’s claim 1. Appellant’s arguments that the prior art lacks elements of the invention is unpersuasive. In arguing that Schallock lacks a spring-biased member or that Petri lacks a saddle, Appellant is attacking the references individually rather than in combination in the manner proposed by the Examiner. However, it is well settled that non-obviousness cannot be Appeal 2022-000325 Application 14/497,803 5 established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant’s argument that Schallock does not need a retention means because its saddle is held in place by gravity is not persuasive. The fact that the prior art may already perform adequately does not preclude a skilled artisan from seeking to improve upon it. See Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (explaining that the desire to enhance commercial opportunities by improving a product is universal). Schallock’s saddle could potentially come loose if the jack were transported on its side or upside down or if it is struck in an inopportune manner. Securing the saddle with a conveniently operated retention means is viewed as an improvement. Id. (explaining that an implicit motivation to combine exists when the improvement is technology- independent and the combination of references results in a product that is more desirable). Next, Appellant argues against the Examiner’s findings and conclusion that the teachings of Schallock and Petri are combinable. Appeal Br. 15. None of these arguments is persuasive. First, Appellant cites the Federal Circuit’s decision in the case In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) for the proposition that the Examiner’s rejection fails to satisfy a “teaching, suggestion, or motivation” test. Id. (citing). Appellant argues that there is no reason or suggestion to use Petri to modify Schallock to achieve the claimed invention. Appeal Br. 15. However, the requirement that the “TSM” test be satisfied by explicit disclosure within prior art Appeal 2022-000325 Application 14/497,803 6 references was abrogated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (explaining that the so-called TSM test is incompatible with Supreme Court precedent). Furthermore, Kahn acknowledged that a teaching, motivation or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references. Kahn, 441 F.3d at 987-88 (citing In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). Other than offering a conclusory statement in its Appeal Brief, Appellant never addresses, much less refutes, the Examiner’s stated reason for making the proposed combination. Appeal Br. 15; Final Act. 3 (to allow removal and replacement with a minimum loss of time and effort compared to other fastening means). Appellant next argues against the proposed combination on the basis that Petri constitutes non-analogous art. Appeal Br. 15. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Appellant argues that Petri “has absolutely nothing to do with floor jacks.” Id. Nevertheless, Appellant appears to acknowledge that a reference can be analogous if it is reasonably pertinent to the particular problem facing the inventor. Id. at 16 (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Appellant acknowledges that a reference is “reasonably pertinent” to the problem facing an inventor if it would “logically commend itself” to an inventor’s intention in considering his problem. Id. at 16 (citing In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). However, after citing the law that is applicable to the issue, Appellant merely leaps to the conclusion that “Petri is so completely unrelated” to Schallock that one skilled in the art would Appeal 2022-000325 Application 14/497,803 7 never have combined Petri with Schallock. Id. Appellant arrives at this conclusion without ever identifying the “problem” that the inventor was facing or why Petri is not reasonably pertinent to such otherwise unidentified problem. Id. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Here, Petri positions an easily replaceable element with respect to a base piece. Petri, col. 1, ll. 1-15. Contrary to the Appellant’s mischaracterization of its teachings, Petri is not limited to paper punches. As explained in the opening paragraph of its specification, Petri states: [I]t will be apparent that the invention herein disclosed is applicable to many other situations wherein it is desired to fixedly secure an element with respect to a base piece so that such element may be removed and a similar element replaced with a minimum loss of time. Id. col. 1, ll. 9-15. Petri then explains that one of the objects of its invention: [I]s the provision of a relatively simple holding device which not only secures the removable element in place relative to the base piece but also insures a high degree of accuracy in locating the element relative to the bore within which it is received. Id. col. 1. col. 42-47. In other words, Petri addresses the problem of retaining a shank (or engagement member) in a bore (or opening) in a manner that allows for ease of removal or replacement of the shank element. Id. Appellant’s invention relates to the identical problem as evidenced by the following statement in Appellant’s Specification: Appeal 2022-000325 Application 14/497,803 8 The present application relates to floor jacks with interchangeable saddles that can be removably coupled to a saddle base of the floor jack. For example, the saddles can be removably coupled to the jack through detent mechanisms including, e.g., pins or spring-biased balls. Spec. ¶ 6. Petri is reasonably pertinent to the problem faced by Appellant in developing a jack with an easily removable or replacement saddle element. Thus, Petri is analogous art to the claimed invention and the Examiner does not err in relying on its teachings in the rejection before us. Before proceeding further, it behooves us to observe that spring biased retaining mechanisms are ubiquitous across a broad spectrum of mechanical devices. We view Petri as simply one example of using a spring biased retaining mechanism. A person of ordinary skill in almost every mechanical discipline (not to mention a host of lay persons) would have been familiar with spring biased detent mechanisms. The mechanical concept underlying the spring biased detent mechanism is exceeding simple and is readily comprehended by casual observation. In cases such as this, it is not unreasonable to permit inquiry into other areas where one of even limited technical skill would be aware that similar problems exist. Application of Heldt, 433 F.2d 808, 812 (CCPA 1970). Appellant argues that the Examiner engaged in impermissible hindsight in combining Petri with Schallock. Appeal Br. 17. According to Appellant, the Examiner relies on information gleaned “only” from Applicant’s Specification. This statement does not align with the facts of record. It is settled law that 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 Appeal 2022-000325 Application 14/497,803 9 unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. Here, Appellant presents neither evidence nor persuasive technical reasoning that adapting the simple mechanical concept of a spring biased detent mechanism to a car jack involves more than ordinary skill or produces unexpected results. In the rejection, the Examiner finds that a person of ordinary skill in the art would have modified Schallock’s jack with a spring biased retention member to alleviate time and effort compared with other fasting means. Final Act. 3. This reasoning is sufficient to support the rejection. See Kahn, 441 F.3d at 988 (requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR, 550 U.S. at 418. Such reasoning is also sufficient to obviate Appellant’s hindsight argument. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of “no moment” where the Examiner provides a sufficient, non-hindsight reason to combine the references). The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well- founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claims 1, 2, 10-14, 19, 20, 25, 26, and 27 over Schallock and Petri. Unpatentability of 6-9, 17, 18, and 21-24 over Schallock, Petri, and McMahan Appellant argues claims 6-9, 17, 18, and 21-24 as a group. Appeal Br. 14. Claim 21 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 21 is an independent claim that differs in scope from claim 1 in that Appeal 2022-000325 Application 14/497,803 10 the spring biased detent mechanism includes a pin and knob arrangement. Claims App. The Examiner finds that Schallock and Petri disclose the invention substantially as claimed except for a knob that is adapted to move a spring- biased pin into and out of engagement with the indent on the engagement member, for which the Examiner relies on McMahan. Final Act. 13-15. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify the spring-biased retention member of Petri with the knob operated retention member of McMahan. Id. at 15. According to the Examiner, a person of ordinary skill in the art would have done this to retain the pin in position during use while maintaining the ability to quickly release the engagement portion. Id. Appellant argues that neither Petri nor Schallock disclose a spring- biased retention member that is disposed in an opening of a saddle base. Appeal Br. 14. Appellant further argues that neither Petri nor Schallock disclose a saddle with an engagement member that has an indent adapted to engage the spring-biased retention member. Id. According to Appellant: [T]here is absolutely no disclosure or suggestion in McMahan, of a spring-biased retention member disposed in an opening of a saddle base, and a saddle that includes an engagement member having an indent adapted to engage the spring-biased retention member to removably couple the saddle to the saddle base, as claimed. Id. Appellant’s arguments are not persuasive. As discussed more fully in connection with the rejection of claim 1, Schallock discloses an automotive jack (J) with a saddle base (13), and a saddle (18) that has an engagement Appeal 2022-000325 Application 14/497,803 11 member (17). Schallock, Fig. 1. The Examiner is proposing to modify Schallock with a spring-biased retention member in a second opening (Petri, Fig. 2, elements 9-11) which takes the form of a spring loaded pin that is actuated by a pull knob (McMahan, Fig. 2, elements 28, 34). Appellant’s arguments that Petri and McMahan lack a saddle and an opening in a saddle base are viewed as attacks on individual references in a rejection that is based on a combination of references. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. We agree with the Examiner that the combination of Schallock, Petri and McMahan disclose all of the elements of claim 21. In traversing the rejection, Appellant relies on the same non- analogous art argument with respect to Petri that we found unpersuasive with respect to the rejection of claim 1 and find equally unpersuasive here. Appeal Br. 15-17. Appellant also accuses the Examiner of combining parts of different components in the prior art references that have different functions and purposes. Id. at 15. This argument is unpersuasive as common sense dictates that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S. at 420. As previously discussed, Petri explicitly teaches that its spring- biased retention means is “applicable to many other situations” besides paper punches. Petri, col. 1, ll. 5-15 Appellant, once again, accuses the Examiner of engaging in an improper hindsight analysis. Appeal Br. 17. We see no evidence of hindsight in the Examiner’s findings and reasoning and Appellant offers no evidence of such beyond a single conclusory sentence. Id. In the rejection, the Examiner provides a cogent rationale for making the combination, Appeal 2022-000325 Application 14/497,803 12 namely, time efficient removal and replacement. Final Act. 14-15. The Examiner’s reasoning is sufficient to support the rejection and obviates Appellant’s hindsight argument. Kahn, 441 F.3d at 988; Cree, 818 F.3d at 702 n.3. The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well- founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claims 6-9, 17, 18, and 21-24 over Schallock, Petri, and McMahan. CONCLUSION Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 2, 10-14, 19, 20, 25, 26, 27 103 Schallock, Petri 1, 2, 10-14, 19, 20, 25, 26, 27 6-9, 17, 18, 21-24 103 Schallock, Petri, McMahan 6-9, 17, 18, 21-24 Overall Outcome 1-2, 6-14, 17-27 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED