2020005266 (P.T.A.B. Apr. 30, 2021)

Simple World Enterprises LLC

Patent Trials and Appeals BoardApr 30, 2021

2020005266 (P.T.A.B. Apr. 30, 2021)

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. 15/339,770 10/31/2016 Mike Smolinski SWLD-1-1001 4770 25315 7590 04/30/2021 LOWE GRAHAM JONES, PLLC 701 FIFTH AVENUE SUITE 4800 SEATTLE, WA 98104 EXAMINER WOOD, KIMBERLY T ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 04/30/2021 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): docketing-patent@lowegrahamjones.com patentdocketing@lowegrahamjones.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MIKE SMOLINSKI ____________ Appeal 2020-005266 Application 15/339,770 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 7–19, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Simple World Enterprises LLC. (Appeal Br. 2). Appeal 2020-005266 Application 15/339,770 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to an apparatus for holding a plurality of items (Spec., para. 7). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An apparatus for holding a plurality of items, the apparatus comprising a base member, the base member including a plurality of receptacles, each receptacle configured to secure a flexible arm, the flexible arm having a first and a second end, the first end configured to attach to the base member and the second end configured to attach to at least one holding element, the base member having a rear face, a front face that is parallel to the rear face, one or more peripheral side walls that extend from the rear face to the front face, and a void that is positioned between two or more portions of the one or more peripheral side walls and spaced apart from the one or more peripheral side walls, the void has a longitudinal axis that extends perpendicular to the rear face, the void is configured to receive one or more attachment mechanisms that secure the base member to a vertical surface with the rear face parallel to the vertical surface, each of the plurality of receptacles is disposed in the one or more peripheral side walls, and each of the at least one holding element holding an object by supporting an entirety of a weight of the object. THE REJECTIONS The following rejections are before us for review: 1. Claims 1–5 and 7–15 are rejected under 35 U.S.C. § 112(a), first paragraph, for failing to show possession of the invention. 2. Claims 1–5, 7–15, 21, and 222 are rejected under 35 U.S.C. § 112(b) as being indefinite. 2 The Final Office Action, at page 3, lists only claims 1–5 and 7–10 as being rejected in the heading for the rejection, but also lists claims 11–15, 21, and Appeal 2020-005266 Application 15/339,770 3 3. Claims 1, 3, 9, 11, 13, and 15 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Tomino (US 6,957,962 B2, issued Oct. 25, 2005). 4. Claims 1, 5, 9, 11, 14, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Restel (US 8,690,398 B2, issued Apr. 8, 2014) and Tomino. 5. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Restel, Tomino, and Swanson (US 2004/0252505 A1, pub. Dec. 16, 2004). 6. Claims 7, 8, 10, 12, 15, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Restel, Tomino, and Ting (US 2014/001631 A1, pub. Jan. 16, 2014). 7. Claims 1, 2, and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Restel, Tomino, Ting, and Barret (US 2012/0120384 A1, pub. May 17, 2012). 8. Claims 2, 18, 21, and 22 are rejected under 35 U.S.C. § 103 as unpatentable over Restel, Tomino, and Weinfeld (US 2,887,974, issued May 26, 1959). 9. Claims 1, 3, 5, 7-17, 19, 21, and 22 are rejected under 35 U.S.C. § 103 as unpatentable over Ting and Tomino. 10. Claims, 1, 2, 5, 10, 11, and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Hoeltge (US 2016/0327202 A1, pub. Nov. 10, 2016), Weinfeld, and Tomino. 22 in the body of the rejection. The omission of claims 11–15, 21, and 22 is considered a typographical error. Appeal 2020-005266 Application 15/339,770 4 11. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Hoeltge, Weinfeld, Tomino, and Swanson (US 2004/0252505, pub. Dec. 16, 2004). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Rejection under 35 U.S.C. § 112(a) The Examiner has determined that claims 1–5 and 7–15 lack support in the Specification because it cannot be determined how the “‘void’ can be . . . positioned within and spaced apart from the one or more peripheral sidewalls since the void [cannot] be positioned within the sidewalls simultaneously” (Final Act. 3; Ans. 3). In contrast, the Appellant has argued that the cited claim limitation is supported by the Specification (Reply Br. 2, 34). We agree with the Appellant. Here, the cited claim limitation is supported by the Specification, for example, at Figure 2. In Figure 2, the void 30 is placed within the sidewalls (23, 34) and also spaced from the sidewalls. Accordingly, this rejection is not sustained. 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 4 The arguments made in the Appeal Brief at page 8 in regard to the rejection under 35 U.S.C. § 112(b) also provide a basis of an argument for this grounds of rejection. In this case, the lack of a heading in the Appeal Brief for the arguments drawn to this rejection is considered a typographical error. Appeal 2020-005266 Application 15/339,770 5 Rejection under 35 U.S.C. § 112(b) The Examiner has determined that the claim limitation that “a void that is positioned between two or more portions of the one or more peripheral side walls and spaced apart from the one or more peripheral side wall,” as recited in independent claims 1, 11, and 16, is indefinite (Final Act. 3, 4; Ans. 23–25). In contrast, the Appellant has argued that the cited claim limitation is not indefinite (Appeal Br. 8; Reply Br. 2–4). We agree with the Appellant. Here, the cited claim limitation is not indefinite. One of ordinary skill in the art would clearly understand the scope of the claim which sets forth that the void is placed within the sidewalls and also spaced apart from a sidewall as shown for instance in Figure 2 of the drawings of the Specification. Accordingly, this rejection is not sustained. Rejection under 35 U.S.C. § 102(a) and § 103 The Appellant argues that the rejection of independent claims 1 and 11 under 35 U.S.C. § 102(a) is improper because the cited prior art fails to disclose the limitation for “a void that is positioned between two or more portions of the one or more peripheral side walls and spaced apart from the one or more peripheral side walls,” as recited in each of the claims (Appeal Br. 10). In contrast, the Examiner has determined that the cited claim limitation is disclosed by Tomino at Figure 1 in the void for the magnet spaces from sidewalls (Ans. 26). Appeal 2020-005266 Application 15/339,770 6 We agree with the Appellant. The Examiner at page 26 of the Answer provides a marked up copy of Figures 1 and 5 of Tomino in which the voids 6a and 6b are located on the rear face, not the side walls. As seen in Figure 1, the rear face is below the side walls as indicated on the marked up copy of Fig. 1. See Ans. 26. Thus, the voids are “beneath” but not “between” the side walls as claimed. For this reason, the rejection of claims 1 and 11 and their dependent claims 3, 9, 13, and 15 under 35 U.S.C. § 102 is not sustained. The rejections of the independent claims 1, 11, and 16 as being unpatentable under 35 U.S.C. § 103 rely on the Tomino reference to disclose the same claim limitation discussed above. As the Tomino reference fails to disclose this claim limitation as noted above, the rejection of each of the independent claims 1, 11, and 16 and their dependent claims under 35 U.S.C. § 103 is not sustained. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims as listed in the Rejections section above DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–15 112(a) Written Description 1–5, 7–15 1–5, 7–15, 21, 22 112(b) Indefiniteness 1–5, 7–15, 21, 22 1, 3, 9, 11, 13, 15 102(a)(1) Tomino 1, 3, 9, 11, 13, 15 Appeal 2020-005266 Application 15/339,770 7 1, 5, 9, 11, 14, 16, 17 103 Restel, Tomino 1, 5, 9, 11, 14, 16, 17 4 103 Restel, Tomino, Swanson 4 7, 8, 10, 12, 15, 19 103 Restel, Tomino, Ting 7, 8, 10, 12, 15, 19 1, 2, 18 103 Restel, Tomino, Ting, Barret 1, 2, 18 2, 18, 21, 22 103 Restel, Tomino, Weinfeld 2, 18, 21, 22 1, 3, 5, 7- 17, 19, 21, 22 103 Ting and Tomino 1, 3, 5, 7- 17, 19, 21, 22 1, 2, 5, 10, 11, and 14 103 Hoeltge Weinfeld, Tomino 1, 2, 5, 10, 11, 14 4 103 Hoeltge, Weinfeld, Tomino, and Swanson 4 Overall Outcome 1–5, 7–19, 21, 22 REVERSED