Ex Parte HegerDownload PDFPatent Trial and Appeal BoardNov 14, 201311794213 (P.T.A.B. Nov. 14, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BERND HEGER ____________________ Appeal 2011-012353 Application 11/794,213 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, JEREMY M. PLENZLER, and BEVERLY M. BUNTING, Administrative Patent Judges. BUNTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012353 Application 11/794,213 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 9- 13, 15, 17, 24, and 30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to a hinge device and method for operating the same. Claims 9, 15, and 30 are independent. Claim 9, reproduced below, is illustrative of the claimed subject matter: 9. A hinge device for a built-in domestic appliance, the hinge device comprising: a first hinge element and a second hinge element as well as a pivot joint around which the two hinge elements are mounted rotatably relative to each other; the first hinge element having a first bore and the second hinge element having a second bore; the two bores being mutually aligned at a predefined turning angle of the second hinge element relative to the first hinge element; and a pin element being detachable inserted into at least one of the first and second bores. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Buckner Korth Clark Jenks U.S. 1,642,226 U.S. 1,921,622 U.S. 3,643,291 U.S. 2003/0051314A1 Sep. 13, 1927 Aug. 8, 1933 Feb. 22, 1972 Mar. 20, 2003 Appeal 2011-012353 Application 11/794,213 3 REJECTIONS The Examiner made the following rejections: Claims 12 and 13 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3. Claims 9, 11, 12, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by Buckner. Ans. 4. Claims 9, 11, 12, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by Jenks. Ans. 4. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Buckner and Korth. Ans. 5. Claims 9, 11-13, 15, 17, 24, and 30 are rejected under 35 U.S.C. 103(a) as unpatentable over Clark and Jenks. Ans. 5. ANALYSIS Indefiniteness: Claims 12 and 13 The Examiner finds that the positive limitations directed to the structural elements of a domestic appliance render the scope of the claim confusing, as it is unclear whether the Appellant is claiming a hinge subcombination or hinge-appliance combination. Ans. 3. The Examiner treats the claims as a hinge subcombination for examination purposes. Ans. 4. Appellant contends that claim 12 positively recites a hinge device with clarity and particularity as including “a first hinge element that is secured stationarily to a housing of the built-in domestic appliance, and a second hinge element that is secured to a door for closing an opening in the housing.” App. Br. 7-9; Reply Br. 9-11. According to Appellant, claim 12 further defines the arrangement of features recited in claim 9. Reply Br. 10. Appeal 2011-012353 Application 11/794,213 4 The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Appellant’s position that a skilled artisan would understand that claim 12 is directed to a hinge device is more persuasive. The Examiner has not adequately explained why one of ordinary skill in the art would not have been able to understand the metes and bounds of the claims as currently written. Accordingly, we do not sustain the Examiner’s rejection of claims 12 and 13. Anticipation: Claims 9, 11, 12, and 15 - Buckner Appellant provides arguments pertaining to all the claims subject to this rejection and offers additional arguments for dependent claim 12. App. Br. 9-10. We select claim 9 as representative, and separately consider claim 12. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Buckner discloses each of the elements of claim 9, including a first hinge element 12, a second hinge element 17’, a pivot joint 18, and a pin 19 inserted through the bores of the two hinge elements. Ans. 4, 7. Appellant asserts that the Examiner erred since Buckner discloses a hinge for an automobile seat and does not disclose the hinge device features for a built-in domestic appliance. App. Br. 9-10; Reply Br. 12. According to Appellant, the automobile seat hinge of Buckner includes lock yokes 17’ that pivot with respect to leaves 12 of a seat frame, and a pin 19 inserted through openings in the side of the lock yokes and leaves that retains the lock yokes in a closed position. Reply Br. 12. Appeal 2011-012353 Application 11/794,213 5 This argument is not convincing, since the limitation Appellant relies on, “for a built-in domestic appliance,” is found in the preamble and recites an intended use of the hinge device that does not serve to structurally distinguish the claimed hinge.1 Further, Appellant does not explain or inform us as to why the Examiner’s findings regarding Buckner’s structural elements of a first hinge element having a first bore, a second hinge element having a second bore, pivot joint, and pin that is detachably inserted into at least one of the first and second bores, are in error. Ans. 7. Based on the record before us, we sustain the rejection of claim 9, and claims 11 and 15 fall therewith. With respect to claim 12, Appellant contends that Buckner discloses a hinge for an automobile seatback, and does not disclose the claim limitation of “the first hinge element is secured stationarily to a housing of a built-in domestic appliance, and the second hinge element is secured to a door for closing an opening in the housing.” App. Br. 8. In response, the Examiner indicates that since the limitation of “built-in domestic appliance” was not afforded patentable weight, any related structural recitations were not considered to be positive limitations. Ans. 8. Appellant has the better position, as the body of claim 12 positively recites the structural elements of the housing and door associated with the built-in domestic appliance. The Examiner has not properly considered how these positively claimed structural limitations relating to a housing and door are met by the seat of Buckner. As such, we do no sustain the rejection of claim 12. 1 See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Appeal 2011-012353 Application 11/794,213 6 Anticipation: Claims 9, 11, 12, and 15 - Jenks Appellant provides arguments pertaining to all the claims subject to this rejection and offers additional arguments for dependent claim 12. App. Br. 10-11. We select claim 9 as representative, and separately consider claim 12. The Examiner finds that Jenks discloses each of the elements of claim 9, including a first hinge element 20, a second hinge element 30, a pivot joint 40, and a pin 50 inserted through the bores 24, 34 of the two hinge elements. Ans. 4, 8. Appellant asserts that the Examiner erred since Jenks discloses a hinge for an automobile seat and does not disclose the hinge device features for a built-in domestic appliance. App. Br. 10-11; Reply Br. 14-15. For the reasons provided with respect to the anticipation rejection of claim 9 over Buckner, the preamble limitation of “for a built-in domestic appliance” recites an intended use that does not serve to structurally distinguish the claimed hinge over that of Jenks. Again, Appellant does not explain or inform us as to why the Examiner’s findings regarding Jenks’ structural elements of a first hinge element 20, a second hinge element 30, a pivot joint 40, and a pin 50 is inserted through the bores 24, 34 of the two hinge elements, are in error. Ans. 8. Based on the record before us, we sustain the rejection of claim 9, and claims 11 and 15 fall therewith. With respect to claim 12, Appellant contends that Jenks discloses a hinge for an automobile seatback, and does not disclose the claim limitation of “the first hinge element is secured stationarily to a housing of a built-in domestic appliance, and the second hinge element is secured to a door for closing an opening in the housing.” App. Br. 10-11; Reply Br. 15. In Appeal 2011-012353 Application 11/794,213 7 response, the Examiner indicates that since the limitation of “built-in domestic appliance” was not afforded patentable weight, any related structural recitations were not considered to be positive limitations. Ans. 8. Appellant has the better position for the reasons provided with respect to the anticipation rejection of claim 12 over Buckner. As such, we do not sustain the rejection of claim 12. Obviousness: Claim 10 – Buckner, Korth Claim 10 depends from claim 9, and includes the limitation “at least one of the two bores and the pin element have complementary threads so that the pin element can be screwed into at least one of the bores.” Clms. App’x. The Examiner finds that Buckner discloses the limitations of claim 10 substantially as claimed, expect for the locking pin and one of the bores being threaded. Ans. 5. The Examiner relies on Korth to disclose a locking pin 7 having a threaded portion engaging a threaded bore of a hinge member 2, to position the hinge members without removing the locking pin. Id. Noting that Buckner and Korth both teach a method of using a locking pin to limit the relative movement of two hinge members, the Examiner reasons it would have been obvious to a skilled artisan to substitute one method for the other, “to achieve the predictable result of positioning the locking pin with one of the hinge members without completely removing the pin from the hinge.” Id. Appellant argues that the Buckner and Korth references are non- analogous art. App. Br. 11; Reply Br. 16-17. The established precedent of our reviewing court sets up a two-part test for determining whether art is analogous: “First, we decide if the reference is within the field of the inventor’s endeavor. If it is not, we proceed to determine whether the Appeal 2011-012353 Application 11/794,213 8 reference is reasonably pertinent to the particular problem with which the inventor was involved.” In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one, which because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.2 With respect to the field of endeavor, Appellant contends the field of endeavor of claim 10 is a hinge for a housing of a built-in domestic appliance, in contrast to Buckner and Korth, which are each directed to the field of automobile seats. App. Br. 12; Reply Br. 16-17. This contention is not convincing since the recitation of “built-in domestic appliance” in the preamble of claim 9 was simply an intended use. Additionally, this argument is not commensurate with the scope of claim 10, which does not require a housing. Next, Appellant addresses whether the subject matter of Buckner and Korth, i.e., securing the seatback of an automobile, would have commended itself to the problem faced by Appellant of reducing or precluding the risk of injury and crushing of fingers that may be caught between the hinge elements and a housing of a built-in domestic appliance while the hinge elements are moving. App. Br. 12; Reply Br. 16-17. According to Appellant, the Buckner and Korth references are concerned with the problem of securing the seatback in an upright position and have nothing to do with solving the aforementioned problem of trapping a finger between moving hinge elements. App. Br. 12-13; Reply Br. 16-17. 2 See In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). This is consistent with the notion that “familiar items may have obvious uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). Appeal 2011-012353 Application 11/794,213 9 Acknowledging that Appellant is using the hinge for a different purpose, to avoid a risk of injury, the Examiner correctly states that the hinges of Buckner, Korth, and claim 10 are each directed to the problem of keeping the hinged members of a hinge in a desired position relative to one another. Ans. 9. Thus, the Examiner reasonably concludes that the hinges of Buckner and Korth are reasonably pertinent to solve the problem in which the inventor was involved, that is, to prevent the hinged members from moving relative to one another via a locking pin. Ans. 9. We note that preventing movement of the hinge elements of Buckner and Korth using a locking pin will likewise avoid the problem of fingers being caught between the moving hinge elements. Further, our reviewing courts have held that it is not necessary for the prior art to serve the same purpose as that disclosed in Appellant’s Specification in order to support the conclusion that the claimed subject matter would have been obvious.3 Appellant does not point to any feature of the hinge device of claim 10 that is structurally distinguishable from either Buckner or Korth, or inform us that the hinge device of Buckner or Korth is not capable of performing the function of preventing movement of the hinge elements to avoid injury. Thus, Appellant does not apprise us of error in the Examiner’s findings or conclusion of obviousness, which is supported by a rational underpinning. The rejection of claim 10 is sustained. 3 See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). See also In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418- 21 (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Appeal 2011-012353 Application 11/794,213 10 Obviousness: Claims 9, 11-13, 15, 17, 24, and 30 – Clark, Jenks Appellant argues claims 9, 11-13, 15, 17, 24, and 30 as a group. App. Br. 13-14; Reply Br. 17-19. We select claim 9 as representative, and claims 11-13, 15, 17, 24, and 30 stand or fall with representative claim 9. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Clark discloses an appliance having a hinge device substantially as claimed, expect for a pin inserted in aligned bores formed in the first and second hinge elements. Ans. 5. The Examiner relies on the disclosure of Jenks to teach first and second hinge elements 20, 30 and a pin 50 inserted into the bores 24, 34 of the first and second hinge elements to lock the hinge elements within a desired open or closed position, “specifically within approximately 90 degrees and 180 degrees open position.” Ans. 5, citing Jenks, col. 1, ll. 48-53; col. 2, ll. 47-49. Based on these teachings, the Examiner concludes it would have been obvious to a skilled artisan to “modify the first and second hinge elements of Clark with the bores and pin as taught by '314, to keep the door of the freezer in a locked, open position so that the door would not fall accidentally to cause injury to the person gaining access to the freezer cabinet.” Ans. 5-6. Appellant argues that the Examiner erred for numerous reasons. Essentially, Appellant contends the Examiner fails to establish or explain how Clark’s hinge could be modified to include the pin of the Jenks reference, “since each of these references discloses completely different types of hinges.” App. Br. 13; Reply Br. 18. Explaining further, Appellant points out Clark discloses a hinge for a chest freezer, but fails to disclose the bores or pin element, and Jenks discloses a hinge for a door entryway that includes a locking pin 50 for locking a first leaf or second leaf in a desired open or closed position by inserting the locking pin 50 “through apertures in Appeal 2011-012353 Application 11/794,213 11 extensions in the first leaf 20 and the second leaf 30.” App. Br. 13-14; Reply Br. 18. Appellant contends it is unclear how the hinge of Clark can be modified to include the pin of Jenks since Clark does not include a first leaf and second leaf having a plurality of extensions through which a pin may be inserted. App. Br.13; Reply Br. 18. Appellant’s arguments are not convincing for several reasons. As previously determined, the intended use limitation in the preamble “for a built-in domestic appliance” does not structurally distinguish the claimed hinge structure over the prior art. As such, Appellant does not apprise us of error in the Examiner’s finding that Clark discloses a hinge having a first hinge element and second hinge element or that Jenks discloses a hinge having bores in the first and second hinge elements that receive a pin to lock the hinge elements in a desired open or closed position. Additionally, Appellant is improperly attempting to bodily incorporate selected features of each reference in a manner inconsistent with the findings of the Examiner and to attack the references individually where the Examiner has relied on the combined teachings of the references.4 Appellant does not apprise us of error in the Examiner’s proposed modification of the hinge of Clark to include Jenks’ bores within each hinge element and pin inserted in the aligned bores to lock the hinge elements in place with respect to each other. 4 “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “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). Appeal 2011-012353 Application 11/794,213 12 Appellant further argues that one of skill in the art would not have a reason to incorporate the extensions and locking pin of Jenks into the Clark hinge, since Clark is a “completely different hinge arrangement.” App. Br. 14; Reply Br. 18. This argument is not persuasive as there is no requirement of an express teaching, suggestion, or motivation to combine known elements to establish obviousness.5 Nor do these arguments persuade us of error in the Examiner’s reasons for combining teachings of these references as set forth in the Answer.6 The Examiner reasonably explains how it would have been obvious to modify the first and second hinge elements of Clark with the bores and pin of Jenks “to keep the door of the freezer in a locked, open position so that the door would not fall accidentally to cause injury to the person gaining access to the freezer cabinet.” Ans. 10. Thus, the Examiner’s reason to combine the teachings is expressly articulated and is supported by rational underpinnings.7 Appellant also maintains that Clark teaches away from a combination in which the hinge includes extensions for inserting the locking pin as in Jenks, since Clark is concerned with the problem of reducing the size of the hinge, and including the extension and locking pin into the Clark hinge would increase the size of the hinge. App. Br. 14; Reply Br. 19. This argument is not convincing, since the Examiner only relies on Jenks for the hole and pin elements, and not the extensions. Further, the cited passage in Clarke suggests the desirability of the hinge taking up a relatively small 5 See KSR, 550 U.S. at 418-19. 6 See also KSR, 550 U.S. at 416 (the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results). 7 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Appeal 2011-012353 Application 11/794,213 13 space so that the overall dimensions of the appliance do not increase. See Clark, col. 1, ll. 25-30. Appellant has not persuasively explained why adding holes to the hinge members of Clarke would require an increase in size of the hinge members. For these reasons, we sustain the rejection of claim 9, and claims 11- 13, 15, 17, 24, and 30 fall therewith. DECISION The Examiner’s rejection of claims 12 and 13 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s rejection of claims 9, 11, and 15 under 35 U.S.C. § 102(b) as anticipated by Buckner is affirmed. The Examiner’s rejection of claim 12 under 35 U.S.C. § 102(b) as anticipated by Buckner is reversed. The Examiner’s rejection of claims 9, 11, and 15 under 35 U.S.C. § 102(b) as anticipated by Jenks is affirmed. The Examiner’s rejection of claim 12 under 35 U.S.C. § 102(b) as anticipated by Jenks is reversed. The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Buckner and Korth is affirmed. The Examiner’s rejection of claims 9, 11-13, 15, 17, 24, and 30 under 35 U.S.C. § 103(a) as unpatentable over Clark and Jenks is affirmed. 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) (2011). AFFIRMED Appeal 2011-012353 Application 11/794,213 14 hh Copy with citationCopy as parenthetical citation