Ex Parte 7017874 et al

Patent Trial and Appeal Board

Aug 28, 2013

95001869 (P.T.A.B. Aug. 28, 2013)

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.
95/001,869 01/09/2012 7017874 2011-RX-1 8089
35775 7590 08/28/2013
DESIGN IP, P.C.
5100 W. TILGHMAN STREET
SUITE 205
ALLENTOWN, PA 18104
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/28/2013 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
____________________

SPACECO BUSINESS SOLUCTIONS, INC.
Requester, Respondent
v.
INNOVATIVE OFFICE PRODUCTS, INC.
Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before: JEFFREY B. ROBERTSON, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued March 28, 2006 to Oddsen, Jr. (hereinafter “’874 patent”).
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STATEMENT OF THE CASE
Claims 11, 12, 14, 16-19,2 22, 31, 43-45, 47-52, and 56-60 are subject
to reexamination. Right of Appeal Notice (“RAN”) 1. The Patent Owner
appeals under 35 U.S.C. §§ 134 and 315 from the Examiner’s Final
Rejection of all claims subject to this reexamination. App. Br. 12-13. We
have jurisdiction under 35 U.S.C. §§ 134 and 315.
The ’874 patent is presently involved in the following infringement
litigation proceedings, both of which have been stayed pending the
conclusion of the present reexamination proceeding (App. Br. 4):
1. Innovative Office Products, Inc. v. SpaceCo, Inc. et al.,
No. 2:05-cv-04037-LS, E.D. Pa.; and
2. Innovative Office Products, Inc. v. Ole Smed et al.,
No. 5:07-cv-00192-MJG-OP, C.D. Cal.
In the present reexamination proceeding, the Examiner adopted fifteen
of Requester’s proposed grounds. See RAN 2-12. The Patent Owner
appeals all fifteen3 of the adopted grounds. App. Br. 12-14.
We AFFIRM.

THE INVENTION
The Patent Owner’s invention is directed generally “to an arm
apparatus for mounting electronic devices.” ’874, col. 1, ll. 18-19. Claims
11, 43- 45, 50, and 58 are independent. Claim 11, reproduced below with

2 Claim 20 was also subject to reexamination but the Appellant cancelled
this claim. See App. Br. 27.
3 Because the Appellant cancelled claim 20, the rejection of this claim is no
longer before us on appeal. See App. Br. 27.
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paragraphing and indentation added, is illustrative of the claimed subject
matter:
11. A forearm extension for use in an extension arm that
adjustably mounts a device to a support mount, said forearm
extension comprising
a body formed by a pair of spaced apart sidewalls, a top
wall and an open bottom, said sidewalls forming an open
interior portion of said body;
a first coupling formed from a first walled member
providing an opening therein, said first walled member
including an inner surface having a plurality of voids formed
therein surrounding said opening, said first coupling rigidly
attached to one end of said body which precludes relative
movement between said first coupling and said body;
and a second coupling formed from a second walled
member providing an opening therein, said second coupling
rigidly attached to the other end of said body which precludes
relative movement between said second coupling and said
body, said first and second walled members preventing
communication between said openings in said first and second
couplings and said interior portion of said body,
wherein said first coupling has a top end and a bottom
end, said plurality of voids extending between said top and
bottom ends,
wherein said body is horizontally disposed between said
first coupling and said second coupling when said first coupling
and said second coupling are disposed such that an axial
centerline of each said first and second couplings are vertical,
further comprising a bushing located within one of the
openings created by either of the first or second walled
members, said bushing being adapted to prevent contact
between the first or second walled member and a shaft inserted
into the respective coupling.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Paldino
Gosdowski
Montague
Gonzalez
Voeller
Terukazu
US 4,653,709
US 5,540,541
US 5,618,090
US 5,697,588
US 6,012,693
JP 63-233417
Mar. 31, 1987
Jul. 30, 1996
Apr. 8, 1997
Dec. 16, 1997
Jan. 11, 2000
Sep. 29, 1988

Donald F. Wilcock & E. Richard Booser, Bearing Design and Application
(1957) (hereinafter “Bearing Design”).

Hudson T. Martin, Anti-Friction Bearings (2nd ed. 1965) (hereinafter “Anti-
Friction Bearings”).

American Society For Metals, Casting Design Handbook (1962) (hereinafter
“Casting Design”).

Steel Founders’ Society of America, Steel Casting Handbook (Charles W.
Briggs ed., 4th ed. 1970) (hereinafter “Steel Casting”).

Iron Castings Society, Inc., Iron Castings Handbook (Charles F. Walton ed.,
1981) (hereinafter “Iron Castings”).

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Voeller, Gosdowski, Bearing Design, and Anti-Friction
Bearings. RAN 2.
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2. Claims 11, 12, 14, 16, 17, 18, and 31 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Voeller, Gosdowski, and
Montague. RAN 4.
3. Claims 19 and 22 stand rejected under 35 U.S.C §103(a) as
being unpatentable over Voeller, Gosdowski, Montague, and Gonzalez.
RAN 5.
4. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Voeller, Gosdowski, Montague, and Terukazu. RAN 6.4
5. Claims 43 and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Voeller, Gosdowski, Casting Design, Steel Casting,
and Iron Castings. RAN 7.
6. Claims 43, 50, 51, and 56 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Voeller, Gosdowski, and Paldino. RAN
7.
7. Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Voeller, Gosdowski, Paldino, and Gonzalez. RAN 8.
8. Claim 57 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Voeller, Gosdowski, Paldino, and Terukazu. RAN 9.
9. Claim 44 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Voeller, Gosdowski, Paldino, and Terukazu. RAN 10.
10. Claim 44 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Voeller, Gosdowski, Casting Design, Steel Casting, Iron
Castings, and Terukazu. Id.

4 As noted above, Appellant cancelled claim 20. As a result, this rejection is
no longer before us on appeal. See App. Br. 27.
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11. Claim 45 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Voeller, Gosdowski, Casting Design, Steel Casting, Iron
Castings, and Montague. Id.
12. Claims 45, 47, and 48 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Voeller, Gosdowski, Paldino and Montague. RAN
11.
13. Claim 49 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Voeller, Gosdowski, Paldino, Montague, and Terukazu.
Id.
14. Claim 58 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Voeller, Gosdowski, Montague or Bearing Design and
Anti-Friction Bearings, and at least one of Paldino, Casting Design, Steel
Casting, and Iron Castings. RAN 12; see also App. Br. 13, n.5.
15. Claims 59 and 60 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Voeller, Gosdowski, at least one of Paldino,
Casting Design, Steel Casting, and Iron Castings, and either Montague or
Bearing Design and Anti-Friction Bearings. RAN 12; see also App. Br. 14,
n.6.

ANALYSIS
Combination of Voeller and Gosdowski
As an initial matter, the Patent Owner/Appellant argues that the base
modification of Voeller in view of Gosdowski, which “forms the foundation
for all of the claim rejections” is improper. App. Br. 15. Appellant sets
forth four reasons to support its position. We deal with each in turn.
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The Patent Owner first argues that “it would not have been obvious to
modify Voeller in view of Gosdowski because the proposed modification of
Voeller would render Voeller unsatisfactory for its intended purpose.” Id.
This is allegedly because Voeller “is intentionally designed so as not to
permit any rotational freedom of the forearm extension (extension 1065)
about a vertical axis.” App. Br. 16. As the Requester/Respondent points out
“[h]ow the Patent Owner knows the undisclosed intentions of the inventor of
the Voeller arm is not entirely clear.” Resp. Br. 3. Respondent further states
that “[p]roviding the Voeller arm with even more articulation, by providing
more rotational joints, cannot be said to render it unsuitable for [its]
purpose.” Id. We agree.
Similarly, Appellant argues that “a modification of Voeller—which
teaches away from providing a forearm extension that has a freedom of
rotation about a vertical axis—in view of Gosdowski, which teaches a
forearm extension that must possess freedom of rotation about a vertical
axis, would not have been obvious.” App. Br. 17. “The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed ….” In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Voeller and Gosdowski each teach
alternative types of couplings, but neither of these references contains any
disclosure that can be considered to teach away from the Examiner’s

5 Reference numeral 106 in Voeller is a hole (see e.g., col. 4, l. 26).
Although Appellant’s brief repeatedly refers to an extension 106, we
presume Appellant intended to reference extension 116 (see e.g., col. 4, l. 1).
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proposed combination. Accordingly, we do not find Appellant’s argument
persuasive.
Appellant next argues that the proposed modification of Voeller
“would require a substantial reconstruction and redesign of the elements
shown in [Voeller] as well as a change in the basic principle under which
[the Voeller] construction was designed to operate.” App. Br. 18 (quoting
In re Ratti, 270 F.2d 810, 813, (CCPA 1959)). Appellant again alleges that
this is so because the Voeller device supposedly was “specifically designed
not to permit freedom of rotation about a vertical axis.” Id. As Respondent
correctly points out “[i]mplementing a simple mechanical design into a
simple mechanical device is obvious to a person of ordinary skill in the art,
and does not require substantial reconstruction of the device.” Resp. Br. 4
(citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)). Accordingly,
we do not find this argument persuasive.
Appellant’s third argument directed to the claimed voids is that “there
is simply no motivation in the prior art to modify Voeller in view of
Gosdowski as proposed by the Examiner.” App. Br. 19. Appellant, however,
proceeds to quote the Examiner’s explanation that “to provide the inner
surface of the first and second couplings of Voeller with voids extending
between the top and bottom of the opening, in view of the teachings of
Gosdowski that such voids reduce[] manufacturing costs” would be obvious.
Id. (citing RAN 3). As Respondent points out, “in KSR, the Supreme Court
held that it is not necessary for the prior art to provide a motivation to
combine references in order for obviousness to be found.” Resp. Br. 4.
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Appellant further argues that a coupling in the ’874 patent has a very
specific meaning that belies the general nature of a term such as “coupling.”
See, e.g., App. Br. 19. As Respondent points out, “the ‘claims, not the
specification embodiments, define the scope of patent protection,’ and a
patentee is not allowed to ‘import a limitation from the specification into the
claims.’” Resp. Br. 5 (quoting Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d
1341, 1348 (Fed. Cir. 2009)). As Respondent further points out, Appellant
improperly advances “a construction that narrowly encompasses only the
specification embodiment.” Resp. Br. 5. The Examiner found that Voeller
teaches a first coupling 118 and second couplings 110, 112, 114. See, e.g.,
RAN 2. Appellant has provided insufficient evidence supporting their
proposed construction that would warrant overturning the Examiner’s
finding that Voeller’s couplings satisfy that recitation in the claims. Thus,
we do not find this argument persuasive.
Appellant lastly asserts that “Gosdowski is non-analogous art to the
invention of the ’874 Patent.” App. Br. 20. Appellant argues that
Gosdowski is non-analogous because it is “a motor-driven pivotal robot
arm” as opposed to the claimed invention, which is “directed to a manually-
adjustable forearm extension for supporting a flat-screen electronic device.”
Id. (citing ’874 patent col. 3, ll. 39-49). As Respondent states, however,
“[n]owhere in the claims is the ‘device’ limited to a flat-screen electronic
device,” nor is the claimed device limited to being manually adjustable.
Resp. Br. 7. Both Voeller and Gosdowski deal with articulating support
arms. Thus, Appellant’s argument attempts to define too narrowly the scope
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of the invention to assert that Voeller and Gosdowski are non-analogous.
Accordingly, we find this argument unpersuasive.

Ground 1—Rejection of Claim 11 as Unpatentable over the Combination of
Voeller, Gosdowski, Bearing Design, and Anti-Friction Bearings
Appellant argues that the aforementioned combination is improper
“because the bushings as taught by Gosdowski are not necessary or desirable
in the arm of Voeller” and that “there is no teaching, suggestion or
motivation in Voeller that any additional support is needed for the shaft
(large rod 212) or that a reduction of friction between the coupling (tube
118) and the shaft (large rod 212) is necessary or desirable in the device of
Voeller.” App. Br. 21-22. As Respondent states, “the Patent Owner
disregards and fails to cite KSR, controlling Supreme Court precedent, which
held that it is not necessary for the prior art to provide a teaching, suggestion
or motivation to combine references in order for obviousness to be found.”
Resp. Br. 8.
Appellant further argues that there must be some objective reason to
combine the teachings of the references at issue. App. Br. 22 (citing Ex
Parte Levengood, 28 USPQ2d 1300 (BPAI 1993)). Appellant asserts that
“[t]here would have been no objective reason to modify Voeller” as
suggested by the Examiner. Id. This contradicts Appellant’s own
concession that “the use of bushings was generally known in the mechanical
arts at the time of filing of Voeller” (id.) as well as the fact that the Examiner
stated a reason for the combination, namely, “to provide support for the shaft
and reduce friction between the coupling and the shaft.” RAN 3. Appellant
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does not challenge this stated rationale other than to state an unsupported
assumption that the inventors in Voeller “decided not to use a bushing.”
App. Br. 22. Given Appellant’s admission that bushings were known and
the fact that the Examiner provided an articulated reasoning with rational
underpinnings for the stated combination, we do not find Appellant’s
arguments persuasive and sustain the rejection.
Ground 2—Obviousness of Claims 11, 12, 14, 16-18, and 31 over
Voeller, Gosdowski, and Montague
Appellant argues the claims subject to the second ground of rejection
as a group. We select claim 11 as representative. See 37 C.F.R.
§ 41.67(c)(1)(vii) (2012). Accordingly, the claims subject to this rejection
stand or fall together. Appellant again presents a lack of teaching,
suggestion, motivation argument with respect to this combination and also
states that the improvement suggested by the Examiner was not necessary.
See App. Br. 23. As Respondent points out “it is not necessary for the prior
art to provide a teaching, suggestion or motivation to combine references
and the teaching, suggestion, and motivation test is not premised upon
‘necessity.’” Resp. Br. 10 (citing KSR).
Appellant further argues that the “arrangement of a bushing in Voeller
would not be desirable because the arm of Voeller for supporting an
electronic device, in which aesthetic considerations were likely important …
would not have been desirable.” App. Br. 24. First, as Respondent points
out, “[t]here is no requirement in the claims…that the assembly be not
unsightly.’” Resp. Br. 11. Furthermore, Appellant appears to be making a
bodily incorporation argument as to a combination of the specific structures
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disclosed in the references as opposed to a combination of the teachings of
the references. “Combining the teachings of references does not involve an
ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Accordingly, we do not find Appellant’s arguments
persuasive and sustain the rejection.
Ground 3—Obviousness of Claims 19 and 22 over Voeller,
Gosdowski, Montague, and Gonzalez
Appellant argues the claims subject to the third ground of rejection as
a group. We select claim 19 as representative. See 37 C.F.R.
§ 41.67(c)(1)(vii) (2012). Accordingly, the claims subject to this rejection
stand or fall together. Appellant first argues that the combination is
improper because Gonzalez “does not clearly teach the limitations of the
lower surface of the body of the forearm extension being aligned above a
lower edge of a first coupling and aligned with a lower edge of a second
coupling” and further states that the “Figures do not unequivocally show that
the lower edge of the ‘second coupling’ (tubular socket 30) is aligned with
the lower edge of the body of the ‘forearm extension.’” App. Br. 25-26. As
Respondent demonstrates, and we agree, Figures 3 and 4 of Gonzalez “show
that the lower edge of the body of the extension arm is aligned above a lower
edge of the first coupling and aligned with the lower edge of the second
coupling.” Resp. Br. 14-15.
Appellant further asserts that if the references are deemed to teach the
claimed limitations, there is no “teaching or suggestion that would have
motivated one of ordinary skill in the art to make this modification to the
device of Voeller or Gosdowski.” App. Br. 26. As is done throughout the
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Brief, Appellant argues a requirement that motivation be found within the
prior art references, which, as we have discussed above, is incorrect. As
such we do not find Appellant’s arguments persuasive and sustain the
Examiner’s rejection.
Ground 5—Obviousness of Claim 43 and 50 over Gosdowski,
and One of Casting Design, Steel Casting and Iron Castings
Appellant argues the claims subject to the fifth ground of rejection as
a group. Claims 43 and 50 stand or fall together. See 37 C.F.R.
§ 41.67(c)(1)(vii) (2012). Appellant again argues that the reference, in this
case Gosdowski, “could not have provided any motivation to one having
ordinary skill in the art to modify Voeller to provide voids surrounding a
coupling, wherein the voids extend through the bottom end but not the top
end.” App. Br. 28. As discussed above, the motivation for a combination
need not be found within the references themselves. Further, as Respondent
points out, “[a]ll of the casting references cited in this reexamination prove
that this arrangement [voids going through the bottom but not through the
top] was also well known in the casting arts.” Resp. Br. 16-17. In this
regard, we find that Casting Design, Steel Casting, and Iron Castings all
disclose this arrangement. As such, we do not find Appellant’s arguments
persuasive and sustain this rejection.
Ground 6—Obviousness of Claims 43, 50, 51, and 56
over Voeller, Gosdowski, and Paldino
Appellants argue the claims subject to the sixth ground of rejection as
a group. Claims 43, 50, 51, and 56 stand or fall together. See
37 C.F.R. § 41.37(c)(1)(iv) (2012). Appellant restates the unpersuasive
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argument that one of the references, this time Paldino, fails to provide the
motivation for the Examiner’s combination. See App. Br. 29. Appellant
then asserts that Paldino “is non-analogous art to the invention of the ’874
Patent, and therefore would not have been considered by one having
ordinary skill in the art.” App. Br. 29. Appellant claims this is so because
“the ’874 Patent is directed to a manually-adjustable forearm extension for
supporting a flat-screen electronic device” while Paldino is directed to “a
tilt-pan head for video cameras.” Id. As Respondent argues, Paldino and
the ’874 patent are “highly related” as “both are mounting devices.” Resp.
Br. 18. We agree with Respondent that Appellant attempts to provide an
“overly narrow reading of the references.” Id. Accordingly, we do not find
Appellant’s arguments as to this rejection persuasive and sustain the
rejection.
Ground 7—Obviousness of Claim 52 over
Voeller, Gosdowski, Paldino, and Gonzalez
Appellant relies on arguments presented in relation to other rejections
already addressed above and found unpersuasive. See App. Br. 30.
Accordingly, we sustain the rejection of claim 52.
Ground 8—Obviousness of Claim 57 over
Voeller, Gosdowski, Paldino, and Terukazu
In response to this rejection, Appellant essentially recasts the four
arguments provided at the beginning of the Brief regarding the alleged
improper combination of Voeller and Gosdowski and restates them to
address the addition of Terukazu, each of which we rejected supra. See
App. Br. 31-33. Appellant also makes what amounts to the same type of
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bodily incorporation argument addressed above that “components of
Terukazu are incompatible with the voids provided in the pivot arms 11, 12
of Gosdowski” and that “[t]hese ball bearing components in Terukazu would
become caught in the voids of Gosdowski.” App. Br. 34. We agree with the
Respondent that “the relevant disclosure of Terukazu is that an extension
arm with an angled body between the couplings was well known in the art
prior to the filing of the ’874 patent.” Resp. Br. 19. Accordingly, we do not
find Appellant’s argument persuasive and sustain this rejection.
Grounds 9-15
Appellant does not make any new argument with respect to these
grounds of rejection, but relies only upon prior arguments that we have
already deemed unpersuasive. See App. Br. 34-37; see also Resp. Br. 22.
As such, we sustain these grounds of rejection for the same reasons
discussed supra.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 11, 12, 14, 16-19, 22, 31, 43-45, 47-52, and 56-60.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.

AFFIRMED

peb
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DESIGN IP, P.C.
5100 W. Tilghman St.
Suite 205
Allentown, PA 18104

Third Party Requester:
SpaceCo Business Solutions, Inc.
1310 East Albrook Drive
Suite 100
Denver, CO 80239