Walther, Linda M. et al.

Patent Trials and Appeals Board

Oct 8, 2019

15674744 - (D) (P.T.A.B. Oct. 8, 2019)

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.
15/674,744 08/11/2017 Linda M. Walther 9262-141493-US 1032
19407 7590 10/08/2019
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
MORRIS, TAYLOR L
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
10/08/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA M. WALTHER, FRANK MARTORELLI, and
CRISTOBAL J. RODRIGUEZ

Appeal 2019-001754
Application 15/674,744
Technology Center 3600
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL1

1 The present application (Application No. 15/674,744) is “a continuation of
prior U.S. Patent Application No. 15/430,117 filed February 10, 2017.”
Spec. ¶ 1. This parent Application No. 15/430,117 is, itself, “a continuation-
in-part of co-pending and co-owned U.S. Patent Application No.
13/339,788.” Spec. ¶ 1. As to grandparent Application No. 13/339,788,
“there was an appeal (Appeal No. 2015-003220) in which the Board entered
a Decision on Appeal dated January 25, 2017” reversing the rejections by
the Examiner (hereinafter “’220 Decision”). Appeal Br. 3. Appellant has
also submitted a further appeal in grandparent Application No. 13/339,788,
this further appeal bearing Appeal No. 2019-002517. No decision on this
further appeal has yet been rendered.
Appeal 2019-001754
Application 15/674,744

2
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–8 and 10–13. See Appeal Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to intravenous poles.”
Spec. ¶ 2. Apparatus claim 1 is the sole independent claim, is illustrative of
the claims on appeal, and is reproduced below.
1. An intravenous (IV) pole base configured to couple in a
tessellating manner to at least one other like IV pole base
comprising:
a base footing having a side edge and a plurality of
tessellating elements comprising at least each of a first blank
and a first tab formed at opposing sides of the side edge;
a plurality of rolling members disposed on an underside
of the base footing;
an IV pole coupler formed central to the base footing and
configured to receive and hold an IV pole such that the IV pole
extends outwardly perpendicularly to the base footing.

EVIDENCE
Bachmann US. 3,335,989 Aug. 15, 1967
Hobson US 6,929,588 B2 Aug. 16, 2005
Elzerman US 2008/0234116 A1 Sept. 25, 2008

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Medline
Industries, Inc.” Appeal Br. 3.
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Application 15/674,744

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REJECTIONS
Claims 1, 2, 4, 5, and 10–13 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Elzerman and Hobson.
Claims 3 and 6–8 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elzerman, Hobson, and Bachmann.
ANALYSIS
The rejection of claims 1, 2, 4, 5, and 10–13
as unpatentable over Elzerman and Hobson
Appellant argues all these claims (i.e., claims 1, 2, 4, 5, and 10–13)
together. See Appeal Br. 6–11. We select claim 1 for review, with the
remaining claims (i.e., claims 2, 4, 5, and 10–13) standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 is directed to an intravenous (IV) pole base comprising “an
IV pole coupler” that is “configured to receive and hold an IV pole.” The
Examiner relies on a combination of the first and second embodiments of
Elzerman (see Figs. 1 and 3) as teaching this coupler structure. See Final
Act. 5 (it would have been obvious “to modify the pole in the second
embodiment of Elzerman with the pole receiving structure from its first
embodiment”). Claim 1 further recites “a plurality of rolling members
disposed on an underside of the base footing.” The Examiner relies on “the
removable casters from Hobson” for this teaching concluding that it would
have been obvious to combine Elzerman and Hobson “in order to provide a
means of adapting a base structure to have mobility.” Final Act. 5
(referencing Hobson 2:26–28, Abstract). Regarding the recited “configured
to” claim language, the Examiner states, “any base structure able to receive a
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Application 15/674,744

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cylindrical pole is configured to be the base for an IV pole.” Final Act. 5;
see also Elzerman ¶ 20.
Appellant contends, “Elzerman’s base is not ‘configured’ as an IV
pole coupler.” Appeal Br. 7. Appellant references the earlier ’220
Decision, and specifically where the Board stated “[i]n short, the Examiner
does not indicate where, expressly or inherently, [the prior art to Simmons]
discloses an apparatus ‘configured to’ provide support to an intravenous
pole.” Appeal Br. 8 (quoting ’220 Decision, p. 4). Appellant contends,
“[t]he exact same situation exists now.” Appeal Br. 8.
The Examiner acknowledges that the present rejection “differs from
the reference used in the [earlier appeal, i.e., Simmons], which lacked an
express disclosure” of a pole interface. Ans. 5. However, in the present
matter, the “configuration in Fig. 1 [of Elzerman] is indicated as being a
telescoping pole structure, which has a lower structure which is configured
to receive an upper pole structure.” Ans. 5. Hence, according to the
Examiner, “Appellant’s argument that the rejection of the present
application is the same situation is incorrect.” Ans. 5.
There is merit to the Examiner’s findings and conclusions. The earlier
cited reference to Simmons was acknowledged as lacking a pole support (see
supra), but that is not the case with Elzerman. Elzerman clearly discloses a
base supporting a pole. See Elzerman Fig. 1, ¶ 20.
Addressing Elzerman, Appellant contends, “Elzerman’s base is
configured to connect to that particular pole. Elzerman makes no disclosure
that this exercise pole is or can otherwise serve as an IV pole.” Appeal Br.
8; see also Reply Br. 2 (“Elzerman describes an exercise pole, and only an
exercise pole. An exercise pole is not an IV pole.”), Ans. 4. While it is true
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Application 15/674,744

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that Elzerman is silent as to the disclosed pole being an IV pole, claim 1
does not positively recite an IV pole. Instead, claim 1 recites a coupler
“configured to receive and hold an IV pole.”3 Elzerman clearly teaches
“length adjustability may be achieved by the use of a number of discrete
segments affixable to one another, as for example by threading.” Elzerman
¶ 20. Appellant does not explain how Elzerman’s teaching of pole affixation
would not equally apply to an IV pole.
Appellant also argues, “[i]t is not obvious to add Hobson’s casters
to Elzerman’s base.” Appeal Br. 8. Appellant contends, “[p]lacing wheels
underneath [Elzerman’s] base would run completely contrary to
[Elzerman’s] principle of operation by almost wholly removing the friction
between the base and the floor that Elzerman looks to establish.” Appeal Br.
9. Appellant further argues, “the ordinarily-skilled person’s common sense
would suggest that if the person can lift and manipulate the base in order to
attach (and detach) those casters, they are more than capable of moving the
base once it has been lifted a short distance.” Reply Br. 3; see also Appeal
Br. 10.
One skilled in the art would be cognizant not only of the desired end-
use of the device, but also a need to transport the device to/from the end-user
or to/from a designated exercise area. It is this latter action the Examiner
seems to address by focusing on the use of removable casters to provide
device mobility as needed. See Final Act. 5; Ans. 8 (“The casters of Hobson
allow a user the option of translating the platform along the floor and their

3 This is consistent with our decision in the ’220 Decision which states, “we
agree with the Examiner that an intravenous pole is not positively claimed.”
’220 Decision, p. 3.
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removability lets a user revert the base to an untranslatable state.”). As
indicated above, Appellant contends that the Examiner’s suggested method
of mobility is more cumbersome than other methods of transport that are
available.4 Regardless, Appellant does not dispute Elzerman’s express
disclosure of device mobility. See Elzerman ¶ 17 (the device “is simple in
construction, lightweight, portable and easy to use”). Here, the Examiner
has provided a way to insure such portability by combining Hobson’s
detachable casters with Elzerman’s base. “The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n. 8 (Fed. Cir. 2000).
In summation, even presuming the Examiner’s suggested method of
portability might be less desirable than other methods under certain
circumstances, Appellant is not persuasive that the Examiner’s suggested
method lacks “articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 2, 4, 5, and 10–13 as being obvious over
Elzerman and Hobson.

4 The Examiner notes, “Elzerman fails to account for all use cases,
particularly that by overweight individuals or those who are not agile, as
discussed by Hobson, who are not [] capable of lifting and moving the base
of Elzerman for an extended period of time.” Ans. 8.
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The rejection of claims 3 and 6–8
as unpatentable over Elzerman, Hobson, and Bachmann
Appellant does not argue the rejection of claims 3 and 6–8 separate
from the arguments presented above. To be clear, Appellant states, “[w]hile
we believe that other arguments are available to highlight the allowable
subject matter presented in various ones of these dependent claims, we also
believe that the comments set forth herein regarding allowability of the
independent claim [is] sufficiently compelling.” Appeal Br. 11. As we are
not persuaded of Examiner error in the rejection of claims 1, 2, 4, 5, and 10–
13 above, we likewise are not persuaded of Examiner error in the further
rejection of claims 3 and 6–8 over Elzerman, Hobson, and Bachmann.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 2, 4, 5, and 10–
13
35 U.S.C. § 103(a)
in view of Elzerman
and Hobson
1, 2, 4, 5, and
10–13

3 and 6–8 35 U.S.C. § 103(a)
in view of Elzerman,
Hobson, and
Bachmann
3 and 6–8
Overall Outcome 1–8 and 10–13

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED