Christopher DraegerDownload PDFPatent Trials and Appeals BoardMay 17, 20212020006366 (P.T.A.B. May. 17, 2021) Copy Citation 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. 14/173,013 02/05/2014 Christopher M. Draeger 509544 2378 53609 7590 05/17/2021 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER SALONE, BAYAN ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 05/17/2021 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER M. DRAEGER ____________ Appeal 2020-006366 Application 14/173,013 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, 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 and 4–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Cre8tive Hardware, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-006366 Application 14/173,013 2 THE INVENTION Appellant’s invention relates to removable hardware. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A removable hardware structure comprising: a hardware element; an attachment element for securing the hardware element to a portion of a mounting surface; wherein the attachment element is configured such that securing the hardware element to the portion of the mounting surface does not require puncturing the portion of the mounting surface; the hardware element further comprises a top surface and a bottom surface; and wherein the hardware element is further comprised of at least one protrusion on the top surface and at least one recess on the bottom surface. The preferred embodiment of Appellant’s invention is a decorative hinge plate for a metal garage door or a decorative handle for a metal garage door. Spec. ¶¶ 3, 22, Fig. 2. Instead of fastening the hinge plate or handle to the door with screws, Appellant removably fastens the plate or handle to the door with either magnets or adhesive. Id. ¶ 25. A magnet or adhesive pad fits into a recess on the side of the plate or handle that abuts the door. Id. The recess allows the plate or handle to abut the door in a more-or-less flush configuration. Id. The top or exposed side of the plate or handle is not flat, rather, it features a non-functional, decorative “protrusion” that protrudes from the surface. Id. ¶ 28. The protrusion may take the form of the head of a screw. Id. Appeal 2020-006366 Application 14/173,013 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Buck US 5,411,231 May 2, 1995 Dixon US 6,248,173 B1 June 19, 2001 Vasichek US 6,855,890 B1 Feb. 15, 2005 Schrader US 2014/0115829 A1 May 1, 2014 Conner US 8,739,453 B1 June 3, 2014 The following rejections are before us for review: 1. Claims 1, 5, 8, 16, 18, and 19 are rejected under 35 U.S.C. § 102(b) as anticipated by Vasichek. 2. Claims 1, 5, 8, 16, and 19 are rejected under 35 U.S.C. § 102(b) as anticipated by Conner. 3. Claims 1, 4, 5, 8, 11, 16, and 19 are rejected under 35 U.S.C. § 102(b) as anticipated by Buck. 4. Claims 16, 17, and 19 are rejected under 35 U.S.C. § 102(b) as anticipated by Dixon. 5. Claims 6, 7, 9, and 20 are rejected under 35 U.S.C. § 103(a) being unpatentable over Vasichek and Schrader. 6. Claims 10 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Buck. 7. Claims 4 and 11–13 are rejected under 35 U.S.C. § 103 as being unpatentable over Conner and Buck. 6. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Conner, Buck, and Schrader. Appeal 2020-006366 Application 14/173,013 4 OPINION Anticipation by Vasichek of Claims 1, 5, 8, 16, 18, and 19 Appellant argues claims 1, 5, 8, 16, 18, and 19 as a group. Appeal Br. 5–9. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Vasichek discloses each limitation of claim 1. Final Act. 2–3. In particular, the Examiner finds that Vasichek’s element 14 is a “protrusion” within the meaning of claim 1. Id. Appellant initially criticizes the Examiner for changing position on the protrusion element over the course of prosecution, referring to the Examiner’s action as “regrettable.” Appeal Br. 5. This appeal is taken from the Final Action dated December 16, 2019. Appellant provides neither facts nor legal authority that estop the Examiner from taking the position stated in the Final Action. See generally Appeal Br. We will focus our review on the merits of the Office Action from which the appeal is taken. Appellant argues that Vasichek’s bracket 10 is not a “hardware element” as claimed. Appeal Br. 7. “The Examiner has failed to look to the Specification and drawings for an understanding of hardware element.” Id. Appellant further argues that the Examiner errs in allegedly construing the term “protrusion” too broadly. Appeal Br. 7. Appellant faults the Examiner for relying on a dictionary definition of “protrusion.” Id. at 8. Appellant directs our attention to passages in the Specification that describe a “hardware component” as a decorative handle or hinge plate. Id. at 7. Appellant disputes the Examiner’s finding that Vasichek’s element 14 is a “protrusion.” Id. According to Appellant: There is only one top surface and it covers 18, 14 and 16. Appeal 2020-006366 Application 14/173,013 5 Member 14 is not a separate structure and as such bracket 10 is not a bracket without all three structures together comprising a single top surface. As such, the top surface of bracket 10 must be the top surface of retaining member 14. There is no protrusion whatsoever from Vasichek's top surface 14. Id. at 7–8. In response, the Examiner states that element 14 of Vasichek is a protrusion because it juts out from the top surface of element 18. Ans. 14. Vasichek discloses bracket 10 for holding wires in place proximate a magnetic surface. Vasichek, Abstract, col. 5, ll. 6–25. One non-limiting product application for Vasichek’s bracket is securing the wiring on a boat trailer. Id. col. 1, ll. 10–21. In Figure 2 of Vasichek, the magnetic surface on which wires are secured is identified as element 15. Id. col. 4, l. 52–66, Fig. 2. Vasichek has a mounting surface 50 that abuts magnetic surface 15. Id. col. 5, ll. 6–25, Fig. 2. Bracket 10 has ends 16 and 18. Id. Ends 16 and 18 feature recesses that house magnetics 36 and 38. Id. Disposed between ends 16 and 18 of bracket 10 is retaining member 14 which forms an arch with interior grooves 42 that retain wires 12. Id. col. 7, ll. 5–16, Fig. 2. Thus, the mid-section of member 14 is spaced apart from mounting surface 50 and is otherwise raised vertically above ends 16 and 18 relative to surface 50. Id. Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one Appeal 2020-006366 Application 14/173,013 6 of ordinary skill in the art.”’ Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation analysis involves comparing the claims to prior art. Id. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Id. We thus begin our analysis by construing the claims. We give “hardware element” its ordinary meaning, unless Appellant’s Specification makes clear that it has a special meaning. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (explaining that, unless compelled to do otherwise, a court gives a claim term the full range of its ordinary meaning). If an apparatus claim recites a general structure (e.g., a noun) without limiting that structure to a specific subset of structures (e.g., with an adjective), courts generally construe the claim to cover all known types of that structure that are supported by the patent disclosure. Renishaw PLC, v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Consequently, we review the Specification to ascertain whether Appellant has disclaimed subject matter or otherwise limited the scope of the claims. Id. at 1343. Appellant’s Specification states that the invention generally relates to removable hardware elements. Spec. ¶ 2. The Specification states that the invention “more particularly,” relates to removable hardware structures used on doors. Id. The Specification states that the “typical” location for the inventive device is a garage door. Id. ¶ 3. Having reviewed Appellant’s disclosure, we see no reason to limit the scope of “hardware element” to anything less than its ordinary meaning. Although “hardware element” is certainly broad enough to encompass garage door hinge plates and handles, it is also broad enough to encompass many other structures that Appeal 2020-006366 Application 14/173,013 7 an artisan would consider as “hardware.” Similarly, although “hardware element” is broad enough to encompass structures that are decorative, it is also broad enough to encompass structures that may provide utility. In our view, the only limitation that Appellant recites in claim 1 that is pertinent to our instant inquiry is that the “attachment element” does not puncture the mounting surface. Claims App. With respect to the “protrusion” term, the Examiner construes “protrusion” as broad enough to encompass the raised mid-section of Vasichek element 14. Appellant construes “protrusion” narrowly to exclude element 14. Appellant criticizes the Examiner for assigning only a portion of Vasichek’s bracket 10 as a protrusion, namely, retaining member 14. Appeal Br. 7–8. Appellant’s argument is not persuasive. Figure 2 of Vasichek depicts a cross-sectional profile of bracket 10 Vasichek, Fig. 2. The ends (16, 18) of bracket 10 have a more-or-less uniform thickness. Id. The upper surface retaining member 14 departs vertically from the upper surface of ends 16 and 18. Id. Retaining member 14 is a “protrusion” because it “protrudes” relative to upper surfaces of ends 16 and 18. Id. Retaining member 14 is no less of a protrusion because it is incorporated into the monolithic structure of bracket 10. There is no requirement in claim 1 that the “protrusion” cannot be integrated into the hardware element to form a monolithic structure. Appellant’s hardware element with protrusion is of a similar nature. See, e.g., Spec. ¶ 25, Figs. 3, 4 The Specification makes repeated reference to “recesses” (sometimes referred to as “blind holes” Spec. ¶ 25) and “protrusions.” Recesses serve a utilitarian function in Appellants’ hardware structure, namely, to house an Appeal 2020-006366 Application 14/173,013 8 attachment element such as a magnet or an adhesive pad. Spec. ¶¶ 11–13. In contrast, no utilitarian function is ascribed to a protrusion. Rather, protrusions are described as entirely decorative in nature, merely giving “an impression” of something, such as a screw head. Id. ¶¶ 9, 12, 25, 28. Appellant’s drawings depict elements 32 and 42 as protrusions. Spec. ¶¶ 25, 28, Figs 4, 6. Although Appellant’s Specification identifies such protrusions as taking the form or shape of a screw head (id.), we are not inclined to import a screw head limitation into the claim from Appellant’s Specification. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1327 (Fed. Cir. 2003)(it is improper to read a limitation from the specification into the claims). Appellant’s position also runs afoul of the doctrine of claim differentiation. Claim 4 depends from claim 1 and further limits the claim to a protrusion that “takes the form of a top of a screw.” Claims App. In order to differentiate the scope of claim 1 from that of claim 4, we are constrained to construe “protrusion” as broader than the form of a top of a screw. See Tandon Corp v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987) (explaining that there is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims and, to the extent that the absence of such difference would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant). Under the circumstances, a broad, but reasonable, interpretation of “protrusion” is warranted here. Using a broad, but reasonable, construction of “protrusion,” we agree with the Examiner that the mid-section of Vasichek’s element 14 constitutes a “protrusion” within the meaning of Appeal 2020-006366 Application 14/173,013 9 claim 1. Although it may be true that the structure of element 14 provides a utilitarian, rather than merely decorative function, claim 1 does not limit the protrusion to being purely decorative. Accordingly and in view of the above, the Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s rejection of claims 1, 5, 8, 16, 18, and 19 as anticipated by Vasichek. Anticipation by Conner of Claims 1, 5, 8, 16, and 19 Appellant argues claims 1, 5, 8, 16, and 19 as a group. Appeal Br. 9–10. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv). In much the same manner as the Vasichek ground of anticipation, Appellant argues that Conner fails to disclose a protrusion. Appeal Br. 9. The Examiner identifies Conner element 13 as a protrusion that protrudes from top surface 8 of hardware element 2. Ans. 15. Appellant argues that element 13 is a functional element and is not an element “intended to give the impression of a functional element” as allegedly described in the Specification. Appeal Br. 10. In response, the Examiner points out, correctly, that claim 1 contains no requirement that the protrusion be functional or non-functional. Ans. 16. Connor discloses a firearm support bracket that attaches to a surface magnetically. Connor col. 2, ll. 20–58. We agree with the Examiner that element 13 is a protrusion that protrudes from surface 8 of magnetic base 2. Id. Figs. 1–5. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s rejection of claims 1, 5, 8, 16, and 19 as anticipated by Conner. Appeal 2020-006366 Application 14/173,013 10 Anticipation of Claims 1, 5, 8, 16, and 19 by Buck Appellant argues claims 1, 4, 5, 8, 11, 16, and 19 as a group. Appeal Br. 11–12. Claim 1 is representative. 37 C.F.R. § 41.37(c)(1)(iv). In much the same manner as the Vasichek ground of anticipation, Appellant argues that Buck fails to disclose a protrusion. Appeal Br. 11. The Examiner identifies Buck screw member 22 as a protrusion that protrudes from attachment means 20 on the outer surface 8 of hardware element 12. Ans. 16. Buck discloses a device for removably holding an object, such as a coat hanger, onto a steel door by means of a magnet. Buck, Abstract. We have reviewed the drawings of Buck and agree with the Examiner that Buck discloses protrusions as claimed. Even assuming, for argument sake that screw 22 does not protrude from attachment means 20, attachment means 18 and 20 protrude, to a greater or lesser extent, from oak plaque 12. Id. Figs. 1–3. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the rejection of claims 1, 4, 5, 8, 11, 16, and 19 as anticipated by Buck. Anticipation by Dixon of Claims 16, 17, and 19 Appellant argues claims 16, 17, and 19 as a group. Appeal Br. 10–13. Independent method claim 16 is representative. 37 C.F.R. § 41.37(c)(1)(iv). In much the same manner as the Vasichek ground of anticipation, Appellant argues that Dixon fails to disclose a protrusion. Appeal Br. 12. The Examiner identifies Dixon element 116 as a protrusion from the top Appeal 2020-006366 Application 14/173,013 11 surface of hardware element 112. Ans. 17. As with the ground of anticipation by Conner, Appellant argues that element 116 is functional. Dixon discloses a coating masking member 110 with handles 116 that are attached to surface 112. Dixon col. 4, ll. 13–19. Masking member 110 attaches to a metal door hinge magnetically. Id. col. 2, l. 66 – col. 3, l. 7. Handle 116 protrudes from surface 112 of masking member 110. Id. Fig. 9. Claim 16 does not require that the protrusion element is non- functional. Claims App. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s rejection of claims 16, 17, and 19 as anticipated by Dixon. Unpatentability of Claims 6, 7, 9, and 20 over Vasichek and Schrader Appellant argues claims 6, 7, 9, and 20 as a group. Appeal Br. 13. Claim 6 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). In traversing this ground of rejection, Appellant’s sole argument is a repeat of the same “protrusion” argument that we previously considered in connection with the Examiner’s ground of rejection of anticipation by Vasichek discussed above. That argument is no more persuasive when asserted against the Examiner’s proposed obviousness combination. We sustain the Examiner’s unpatentability rejection of claims 6, 7, 9, and 20 over Vasichek and Schrader. Unpatentability of Claims 10 and 18 over Buck Appellant argues claims 10 and 18 as a group. Appeal Br. 14. Claim 10 is representative. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-006366 Application 14/173,013 12 Claim 10 depends from claim 8 and adds the limitation: “wherein the hardware element is handle shaped or a hinge plate.” Claims App. The Examiner finds that Buck discloses an object 12 that may have “any desired shape.” Final Act. 9, citing Buck col. 3, ll. 20–21. 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 Buck to exhibit the shape of a handle or hinge plate. Id. In traversing the rejection, Appellant relies solely on the “protrusion” argument that was raised in connection with the rejection of claim 1, which argument is no more persuasive here than it was with claim 1. Appeal Br. 14. Appellant does not challenge the Examiner’s finding that Buck could exhibit “any desired shape,” including a hinge plate or handle. Id. We are not apprised of error and, therefore, sustain the Examiner’s unpatentability rejection of claims 10 and 18 over Buck. Unpatentability of Claims 4 and 11–13 over Conner and Buck Appellant argues claims 4 and 11–13 as a group. Appeal Br. 14–17. Claim 4 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 4 depends from claim 1 and adds the limitation: “wherein the at least one protrusion takes the form of a top of a screw.” Claims App. The Examiner finds that Buck discloses decorative screw heads. Final Act. 10. 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 Connor to exhibit a decorative screw head. Id. According to the Examiner, a person of ordinary skill in the art would have done this to provide a decoration that implies that Connor’s hardware structure is secured by screws. Id. Appeal 2020-006366 Application 14/173,013 13 In traverse, Appellant relies on the same “protrusion” argument that we previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Appeal Br. 15. Appellant also argues that a person of ordinary skill in the art would not modify Conner to have a decorative screw head. Id. According to Appellant, Conner does not intend or desire to convey to the user that its magnetic firearm support is permanent. Conner explains the contrary to be true. Conner explains, “It will be appreciated by those skilled in the art that the magnetic firearm supports 1, 1a can be easily detached from the magnetic surface 30 when use is not desired. Moreover, the magnetic firearm supports 1, 1a can be selectively placed in any desired positions on the magnetic surface 30 as deemed necessary to cradle the firearm 24. This expedient may facilitate customization of the magnetic firearm supports 1 according to the particular size, shape and weight of the firearm 24.” Id. Appellant argues that a user of Conner would consider the “look of permanency” associated with the appearance of a screw head to be undesirable. Id. at 16. Appellant expresses concern that a user might place a firearm on Conner’s support that is too heavy. Id. “Placement of such a heavy firearm could damage the firearm for later use as it falls or even hurt the user attempting to hang a heavy firearm using the firearm support.” Id. Conner discloses a support bracket for a firearm. Conner, col. 1, ll. 14–30. The firearm support is attached to the steel surface in a firearm safe or “elsewhere.” Id. Conner’s firearm support uses at least one magnet and, in some embodiments, two magnets, 7 and 7a, are used. Id. col. 2, ll. 33–58, Fig. 3. In some embodiments, bottom magnet 7 may have a pull force of 54 pounds and top magnet 7a may have pull force of 28 lbs. Id. We recognize that the shear force of sliding a magnet along a surface may be less than its pull force. Two magnetic firearm supports are used to support a Appeal 2020-006366 Application 14/173,013 14 pistol or a short firearm. Id. col. 4, ll. 1–23. Three or more of the supports may be necessary to support a long firearm depending on its size, shape, and weight. Id. A typical unloaded pistol weighs less than 2 pounds. A typical carbine, such as an AR-15, weighs about 6.5 pounds. Having fully considered Appellant’s argument, we do not find it to be persuasive. Persons knowledgeable in the hardware arts know that the absence of a visible screw head on the face of a hardware element surface does not determine whether or not the hardware is attached by any particular means. Although a faux screw head might not be desirable for a bracket on the inside of a gun safe, where it is essentially unseen, Conner is not limited to use on the inside of a safe. Id. col. 1, l. 35 (“elsewhere”). It is easy to visualize product applications in a retail display setting or a commercial gun range rental shop display. Every support bracket, no matter what its means of attachment may be, has limitations on how much weight it can support. As with any support bracket, we would expect the user to become familiar with the load bearing capabilities of the support bracket and choose the number, size, and configuration of the support brackets accordingly. In our view, the Examiner does not err in finding that person of ordinary skill in the art would consider it obvious to incorporate a faux screw head, as taught by Buck, to the firearm support bracket of Conner and would be motivated to do so for decorative reasons. We sustain the Examiner’s unpatentability rejection of claims 4 and 11–13 over Conner and Buck. Appeal 2020-006366 Application 14/173,013 15 Unpatentability of Claims 14 and 15 over Conner, Buck, and Schrader Appellant argues claims 14 and 15 as a group. Appeal Br. 17–18. Claim 15 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 14 depends directly from claim 11 and indirectly from claim 8 and adds the limitation: “wherein the attachment element is an adhesive.” Claims App. The Examiner finds that Schrader discloses a hardware element that uses adhesive as an attachment element. Final Act. 11. Appellant’s traverse of this ground of rejection relies solely on arguments that we previously considered and found unpersuasive with respect to claim 11 and find equally unpersuasive here. Appeal Br. 17. We sustain the rejection of claims 14 and 15 over Conner, Buck, and Schrader. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 8, 16, 18, 19 102 Vasichek 1, 5, 8, 16, 18, 19 1, 5, 8, 16, 19 102 Conner 1, 5, 8, 16, 19 1, 4, 5, 8, 11, 16, 19 102 Buck 1, 4, 5, 8, 11, 16, 19 16, 17, 19 102 Dixon 16, 17, 19 6, 7, 9, 20 103 Vasichek, Schrader. 6, 7, 9, 20 10, 18 103 Buck 10, 18 4, 11-13 103 Conner, Buck 4, 11-13 14, 15 103 Conner, Buck, Schrader 14, 15 Overall Outcome 1, 4-20 Appeal 2020-006366 Application 14/173,013 16 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 Copy with citationCopy as parenthetical citation