Ex Parte Ignarra et al

Patent Trial and Appeal Board

Dec 29, 2015

11406456 (P.T.A.B. Dec. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111406,456
53720 7590
Chen Yoshimura LLP
Attention Ying Chen
2975 Scott Blvd.
Suite 110
04/18/2006
12/31/2015
Santa Clara, CA 95054
FIRST NAMED INVENTOR
Ricardo Santiago Ignarra
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
728244.0001 5444
EXAMINER
BAKER, LORI LYNN
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
12/31/2015 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):
miwa@cyiplaw.com
ychen@cyiplaw.com
pli@cyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICARDO SANTIAGO IGNARRA and
DANIEL JOHN WHITAKER
Appeal2013-000262
Application 11/406,456
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ricardo Santiago Ignarra and Daniel John Whitaker ("Appellants") 1
appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting
claims 1-14, which are all the pending claims. Appeal Br. 1. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the real party in interest is The Accessory
Group Inc. Appeal Br. 2.
Appeal2013-000262
Application 11/406,456
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a lift device for installing a
television in a spa or other indoor or outdoor applications." Spec., p. 1,
11. 6-7. Claims 1, 6, and 7 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A television lift device comprising:
a lower case;
a linear actuator mounted vertically on the lower case,
the linear actuator including a body, a motor sealed with the
body, and a shaft that extends from or retracts into the body,
wherein an upper end of the shaft is adapted for attaching to a
television panel;
one or more linear guides each including a vertical
stationary bar mounted on the lower case and a sliding member
engaged with and vertically slideable along the stationary bar;
and
a mounting structure having a first portion attached to the
sliding member or members of the one or more linear guides
and a second portion adapted for attaching to the television
panel.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Keller us 4,504,867 Mar. 12, 1985
Santoro US 2002/0145088 Al Oct. 10, 2002
Lauter US 2003/0088912 Al May 15, 2003
Schmidt US 2004/0156517 Al Aug. 12, 2004
Kramer US 7,262,519 Bl Aug. 28, 2007
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REJECTIONS
The following rejections are before us for review: 2
I. Claims 1, 2, 5, 6, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt and Santoro.
II. Claims 4, 7, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schmidt, Santoro, and Lauter.
III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmidt, Santoro, Lauter, and Keller.
IV. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmidt, Santoro, and Kramer.
V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmidt, Santoro, Lauter, and Kramer.
2 We note that Appellants also present arguments against the
Examiner's objections to the content of the drawings and the inclusion of
new matter. See Appeal Br. 4--5; Final Act. 2--4. Although Appellants
allege that these issues are "ultimately about the patentability of claims"
(Appeal Br. 5), we note that the claims are not presently subject to any
corresponding rejection, such as under 35 U.S.C. § 112, first paragraph (see
Final Act. 2-8); thus, the Examiner correctly notes that "drawing objections
are not reviewable upon appeal" (Ans. 9). Objections are petitionable
matters, not appealable matters, and are therefore not within the jurisdiction
of the Board. See MPEP §§ 1002.02(c)(3); 1201; see also In re Mindick,
371F.2d892, 894 (CCPA 1967). As such, these objections are not before
us for review as part of the instant appeal.
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Application 11/406,456
ANALYSIS
Rejection I - Claims 1, 2, 5, 6, 13, and 14 as unpatentable
over Schmidt and Santoro
Appellants present argument against the rejection of these claims
together (see Appeal Br. 6-7), and present additional argument against the
rejection of claim 2 (see Appeal Br. 8). We select independent claim 1 as
representative of the issues that Appellants present together, and we address
the additional arguments directed to claim 2 infra.
Claims 1. 5. 6. 13. and 14
The Examiner determined that a combination of teachings from
Schmidt and Santoro renders obvious the limitations of independent claim 1,
as well as independent claim 6 and their associated dependent claims. Final
Act. 4---6. Appellants argue that it would not have been obvious to combine
the teachings from Schmidt and Santoro because the references "are not in
the same field of endeavor," such that "one of ordinary skill in the art would
not be motivated to modify the Schmidt system using the teaching of
Santoro." Appeal Br. 6. We are not persuaded by Appellants' argument.
Initially, we note that the proper two-prong test to define the scope of
analogous prior art is (1) "whether the art is from the same field of endeavor,
regardless of the problem addressed," and (2) even "if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis
added; internal citation omitted). Here, we agree with the Examiner that the
relevant aspects of the present invention, Schmidt, and Santoro are all within
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Application 11/406,456
the same field of endeavor, namely "lifting devices," such that Schmidt and
Santoro qualify as analogous prior art. Ans. 9.
Aside from noting a difference in the environment of typical use,
Appellants do not provide any factual evidence or persuasive technical
reasoning to explain why substituting one known lifting device (Santoro' s
automated device incorporating a linear actuator) for another (Schmidt's
manual device) would be unpredictable or beyond the level of ordinary skill
in the art. See Final Act. 5; Ans. 9; see also Santoro, Abstract, i-fi-129, 39;
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-17 (2007). In other words,
where a claim recites "structure already known in the prior art [here, a lifting
system for spa entertainment] that is altered by the mere substitution of one
element for another known in the field [here, an automated linear actuator
for a manual spring and latch arrangement], the combination must do more
than yield a predictable result." KSR Int 'l Co., 550 U.S. at 416 (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)). Thus, Appellants do
not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness.
Appellants also contend that the Declaration under 37 C.F.R. § 1.132
of Ricardo Santiago Ignarra, dated January 25, 2012 (the "Declaration"),
which generally asserts commercial success and long-felt but unmet need,
should sufficiently overcome any prima facie case of obviousness. See
Appeal Br. 6-7. In particular, Appellants allege that the Examiner did not
sufficiently consider the "extensive factual details" provided in the
Declaration. Id. at 7. We are not persuaded by Appellants' allegation that
the Examiner did not give adequate and proper consideration to the
statements made in the Declaration. Instead, we agree with the Examiner's
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Application 11/406,456
determination that "the objective evidence of nonobviousness is not
sufficient to outweigh the evidence of obviousness." Final Act. 1 O; see id.
at 9--10; Ans. 9--10. Thus, we are not apprised of Examiner error in this
regard.
In particular, evidence of commercial success "is only significant if
there is a nexus between the claimed invention and the commercial success."
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006).
To establish a proper nexus between a claimed invention and alleged
commercial success of a product, Appellant must offer "proof that the sales
[of the allegedly successful product] were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter."
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, "if the feature
that creates the commercial success was known in the prior art, the success
is not pertinent." Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d
1057, 1070 (Fed. Cir. 2011) (requiring a determination of "whether the
commercial success of the embodying product resulted from the merits of
the claimed invention as opposed to the prior art or other extrinsic factors").
Here, Appellants have not established a sufficient nexus between the
television lift device as claimed and the alleged commercial success of the
TAG TV lift device. The Declaration states only in general terms that the
TAG TV lift device "is substantially the same as that described in the instant
patent application." Declaration i-f 6 (emphasis added). The Declaration
does not, however, provide any analysis of how the TAG TV lift device is
specifically tied to the elements recited in the claims, or explain in any detail
why it was the allegedly unique characteristics of the claimed television lift
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- - - -- - - '1 - - - - - - . - -- - -- -
device that necessarily drove sales,_, other than noting that the TAG TV lift
used a linear actuator for lifting the TV whereas other commercial devices
did not. See Declaration i-fi-1 5-7. The only specific structure identified,
namely "a linear actuator," allegedly tied to the commercial success, was
known in the prior art as discussed supra. Accordingly, the alleged
commercial success of the TAG TV lift device is not sufficiently tied to the
claimed subject matter.
We further note that Appellants' general statements regarding alleged
commercial success are insufficient because the Declaration fails to establish
how sales of the TAG TV lift device relate to the overall market for such
television lift devices, and a primary consideration in demonstrating actual
commercial success is whether sales of the claimed invention have captured
a substantial share of the marketplace. See In re Huang, 100 F.3d at 140
(stating that evidence relating "solely to the number of units sold provides a
very weak showing of commercial success, if any" and declining to find
evidence of commercial success because, although the Declaration "certainly
indicates that many units have been sold, it provides no indication of
whether this represents a substantial quantity in this market").
Here, the Declaration does not provide factual evidence of any
specific number of sales of the TAG TV lift device. See supra, note 3. Even
accepting as true the general statements that some TAG TV lift devices were
3 Moreover, we note that although the Declaration states generally that
the TAG TV lift device has been supplied to various spa manufacturers, no
actual sales data has been provided. See Declaration i-fi-1 7, 9. Instead, the
Declaration concludes only that "I believe the commercial success of the
TAG TV lift devices was primarily attributed to the use of a linear actuator
as the lift mechanism." Declaration i-f 11.
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sold, such statements do not establish that those sales necessarily constitute
commercial success when considered in relation to overall market share. In
other words, the Declaration does not provide any data pertaining to overall
market share, and there is no indication that the TAG TV lift device
represented a substantial quantity in the overall market share. See In re
Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) ("Information
solely on numbers of units sold is insufficient to establish commercial
success."). In short, the general assertion of sales for the TAG TV lift alone
does not provide a sufficient showing of commercial success when
considered in terms of market share.
The Declaration also asserts that, at the time of development of the
TAG TV lift device, there was a long-felt but unmet need for such a
television lift device. Declaration i-f 12. With respect to this assertion, we
note that an alleged long-felt need must have been a persistent one that was
recognized by those of ordinary skill in the art, must not have been satisfied
by another before the claimed invention, and must be satisfied by the
claimed invention. See In re Gershon, 372 F.2d 535, 539 (CCPA 1967);
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988)); see
also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332-33
(Fed. Cir. 2009). Here, the evidence of record shows that various solutions
to fulfill the alleged need were known in the art at the time of the invention,
including manual lifting devices (e.g., the device of Schmidt; discussed
supra) and other automated lifting devices (e.g., devices using a motor and
pulley; see Declaration i-fi-15, 12). Even assuming that the TAG TV lift
device's use of a linear actuator, a known element as discussed supra,
represented some improvement over other known lifting devices (see
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Application 11/406,456
Declaration ilil 8, 10, 12), that does not necessarily mean that there was a
recognized long-felt but unmet need in the art for the claimed invention.
After careful consideration of all the evidence of record, including the
evidence of secondary considerations submitted in the Declaration,
Appellants' arguments do not apprise us of error in the Examiner's findings
or conclusion of obviousness. Accordingly, for the foregoing reasons, we
sustain the rejection of claims 1, 5, 6, 13, and 14 under 35 U.S.C. § 103(a) as
being unpatentable over Schmidt and Santoro.
Claim 2
With respect to the rejection of claim 2, Appellants initially group this
claim with the others subject to Rejection I, discussed in detail supra. See
Appeal Br. 6-7. For the same reasons, Appellants' initial argument directed
to the group does not apprise us of error in the Examiner's findings or
conclusion of obviousness for this claim.
Appellants also present an additional argument against the rejection of
claim 2, asserting that "both Schmidt and Santoro fail to teach or suggest the
claimed 'outer housing adapted for attaching to an outside surface of an
outdoor or indoor application, wherein the lower case is disposed within the
outer housing."' Appeal Br. 8. In particular, Appellants contend that the
Examiner misidentified Schmidt's speaker cable 136 as meeting the recited
outer housing, and that---even if the Examiner intended to rely on the overall
frame of Schmidt's spa as the recited outer housing-such reliance would
also be improper as Schmidt's spa frame is not "adapted for attaching to an
outside surface of an outdoor or indoor application" as recited in the claim.
Id.
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The Examiner responds by clarifying that Appellants are correct that
reliance was intended to be on Schmidt's "entire overall frame of the spa."
Ans. 10 (citing Schmidt, Fig. 11; noting that this entire overall frame of the
spa has boundaries that are generally depicted at lines shown coming from
reference number 136). Contrary to Appellants' contention, however, the
Examiner finds that Schmidt's entire spa frame could be attached to an
outside surface of a patio, which is reasonably encompassed within the claim
term "outdoor or indoor application," and this finding is supported by a
preponderance of the evidence. See id.; Schmidt, Fig. 11. Appellants do not
submit a Reply Brief to assert any error with this clarified finding.
Thus, Appellants' additional argument does not apprise us of error in
the Examiner's findings or conclusion of obviousness. Accordingly, for the
foregoing reasons, we sustain the rejection of claim 2 under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt and Santoro.
Rejection II- Claims 4, 7, 11, and 12 as unpatentable
over Schmidt, Santoro, and Lauter
Appellants present argument against the rejection of these claims
together. See Appeal Br. 8. In particular, Appellants reiterate their
argument presented in the context of Rejection I, discussed in detail supra,
and additionally assert only that "Lauter does not cure the deficiency of
Schmidt and Santoro." Id. For the same reasons discussed supra, we are not
apprised of a deficiency in Rejection I based on Schmidt and Santoro.
Thus, Appellants' argument does not apprise us of error in the
Examiner's findings or conclusion of obviousness. Accordingly, for the
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foregoing reasons, we sustain the rejection of claims 4, 7, 11, and 12 under
35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro, and Lauter.
Rejection III- Claim 3 as unpatentable
over Schmidt, Santoro, Lauter, and Keller
With respect to the rejection of claim 3, Appellants initially reiterate
their argument presented in the context of Rejection I, discussed in detail
supra, and additionally assert that "Lauter and Keller do not cure the
deficiency of Schmidt in view of Santoro." Appeal Br. 9. For the same
reasons discussed supra, we are not apprised of a deficiency in Rejection I
based on Schmidt and Santoro.
Appellants also present an additional argument against the rejection of
claim 3, asserting that "Keller does not teach or suggest the feature of ...
'wherein the clear screen is sealed to the plastic body by a water resistant
double-sided tape around its periphery, and wherein a border is formed on
the screen to conceal the tape."' Appeal Br. 9. In particular, Appellants
contend that the structure of Keller is different from that of claim 3 in
several ways-namely, that screen 16 is secured but not sealed to the CRT
body, that double-sided epoxy tape 50 exists only at discrete locations rather
than being continuous around the periphery, and that screen 16 does not
include a border to conceal the tape. Id. at 9-10.
The Examiner responds by stating that these contentions "are not
commensurate with the scope of claim 3," and explaining that Keller was
relied on as a teaching reference as evidence that it was "well known in the
art to seal a clear screen with double sided tape around its periphery."
Ans. 10. We note that limitations not appearing in the claim cannot be relied
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upon for patentability, and that the Examiner's findings from Keller are
supported by a preponderance of the evidence. See In re Self, 671 F .2d
1344, 1348 (CCPA 1982).
We consider each of Appellants' contentions relative to the cited
evidence of Keller. For example, Keller teaches clear screen 16 secured to
the CRT body to shield radiation, and Appellants do not submit a Reply
Brief to explain why such attachment would fall outside of the broadest
reasonable interpretation of the claimed sealed relationship. See Keller,
Abstract, col. 4, 1. 26 - col. 5, 1. 25, Figs. 1, 2. Moreover, Keller's tape 50 is
admittedly disposed around the periphery of the screen and we note that the
claim neither requires the tape to extend continuously nor prohibits the
inclusion of additional fasteners. See id. Finally, Keller's arrangement
includes a border along the periphery of the screen that appears to conceal
the tape between side members 44, 46. See id.
Thus, Appellants' additional argument does not apprise us of error in
the Examiner's findings or conclusion of obviousness. Accordingly, for the
foregoing reasons, we sustain the rejection of claim 3 under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt, Santoro, Lauter, and Keller.
Rejection IV- Claims 8 and 9 as unpatentable
over Schmidt, Santoro, and Kramer
Appellants present argument against the rejection of these claims
together. See Appeal Br. 10. In particular, Appellants reiterate their
argument presented in the context of Rejection I, discussed in detail supra,
and additionally assert only that Kramer "does not cure the deficiency of
Schmidt in view of Santoro." Id. For the same reasons discussed supra, we
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are not apprised of a deficiency in Rejection I based on Schmidt and
Santoro.
Thus, Appellants' argument does not apprise us of error in the
Examiner's findings or conclusion of obviousness. Accordingly, for the
foregoing reasons, we sustain the rejection of claims 8 and 9 under
35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro, and
Kramer.
Rejection V - Claim 10 as unpatentable
over Schmidt, Santoro, Lauter, and Kramer
With respect to the rejection of claim 10, Appellants reiterate their
argument presented in the context of Rejections I and II, discussed in detail
supra, and additionally assert only that Kramer "does not cure the deficiency
of Schmidt in view of Santoro and Lauter." Id. For the same reasons
discussed supra, we are not apprised of a deficiency in Rejections I and II
based on Schmidt, Santoro, and Lauter.
Thus, Appellants' argument does not apprise us of error in the
Examiner's findings or conclusion of obviousness. Accordingly, for the
foregoing reasons, we sustain the rejection of claim 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt, Santoro, Lauter, and Kramer.
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 2, 5, 6, 13,
and 14 under 35 U.S.C. § 103(a) as being unpatentable over Schmidt and
Santoro.
We AFFIRM the Examiner's decision rejecting claims 4, 7, 11, and
12 under 35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro,
and Lauter.
We AFFIRM the Examiner's decision rejecting claim 3 under
35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro, Lauter, and
Keller.
We AFFIRM the Examiner's decision rejecting claims 8 and 9 under
35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro, and
Kramer.
We AFFIRM the Examiner's decision rejecting claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Schmidt, Santoro, Lauter, and
Kramer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
mls
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