Ex Parte KrumpeDownload PDFPatent Trial and Appeal BoardJul 29, 201612889518 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/889,518 09/24/2010 82074 7590 08/02/2016 Carlson, Gaskey & Olds/Masco Corporation 400 West Maple Road Suite 350 Birmingham, MI 48009 FIRST NAMED INVENTOR Geraint Krumpe 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. 022-3005-U; 60137-688PUS1 6487 EXAMINER CHAN, KO HUNG ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERAINT KRUMPE Appeal2014-005339 Application 12/889,518 Technology Center 3600 Before LINDA E. HORNER, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Geraint Krumpe (Appellant)1 seeks review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellant identifies Liberty Hardware Mfg. Corp. as the real party in interest. Appeal Br. 1. Appeal2014-005339 Application 12/889,518 BACKGROUND The disclosed subject matter "relates to hooks and more particularly to hooks that may hold more than one article." Spec. i-f 1. Claims 1, 5, 7, 9, 11, and 13-16 are independent. Claim 1 is reproduced below: 1. A hinge hook comprising: a first hook having a first shape, said first hook rotatable about an axis; a second hook having a second shape, said second hook rotatable about said axis, wherein said first shape and said second shape are mirror images of each other and wherein upon rotation said first hook and said second hook come into contact with each other; and a base coupled to said first and said second hooks, said base including an attachment interface configured for a fixed attachment to a rigid structure. REJECTIONS 1. Claims 1, 2, 4--9, 11, 12, and 14--24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Siegel (US 5,480,076, issued Jan. 2, 1996) and Lattin (US Des. 38,025, issued May 22, 1906). 2. Claims 3, 10, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Siegel, Chung (US 6,484,363 Bl, issued Nov. 26, 2002), and Lattin. 2 Appeal2014-005339 Application 12/889,518 DISCUSSION Rejection I -The rejection of claims 1, 2, 4-9, 11, 12, and 14-24 A. Claims 1, 2, 7, and 11 Appellant argues the patentability of claims 1, 2, 7, and 11 as a group. See Appeal Br. 8-10. We select independent claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2013). To reject claim 1, the Examiner relied on Siegel for various limitations but stated that Siegel fails to disclose the final clause of claim 1 ("a base ... "). See Final Act. 3 (dated July 5, 2013). The Examiner stated, however, that "Lattin teaches hooks that are mirror images of each other with a base that has an attachment interface capable of being fixed to a rigid structure, such as a bathroom wall (See Figure below)." Id. According to the Examiner, it would have been obvious "to combine the teaching of a base taught by Lattin with the device taught by Siegel ... for the purpose of hanging attire, such as a bathrobe, etc. on a bathroom wall." Id. First, Appellant argues that the proposed modification would render Siegel unsatisfactory for its intended purpose and would change the principle of operation of Siegel. Appeal Br. 8-10. According to Appellant, "[i]n order for the hanger of Siegel to be satisfactory for its intended purpose, the hanger must be capable of being manipulated by a user relative to the garment, i.e. the user must be able to insert the entire hanger body through the neck opening of a garment" and "must be able to remove the hanger from the garment such that the garment can be worn." Id. at 8. Appellant contends that "[ m ]ounting the arms of Siegel to a base such as that of Lattin would make it impossible for a user to easily move the hanger into and out of neck openings of various garments" and thus, the proposed 3 Appeal2014-005339 Application 12/889,518 modification "would clearly render Siegel unsatisfactory for its intended purpose." Id. In addition, Appellant argues that the proposed modification would change the principle of operation of Siegel because "[u]sing a base of Lattin to modify Siegel would result in a structure that would no longer be considered to be a clothes hanger within the ordinary meaning afforded the term by one of ordinary skill in the art." Id. at 9. Appellant contends that "[ m ]odifying Siegel to include a base as taught by Lattin would eliminate primary functions of a clothes hanger, i.e. transportability and ease of manipulation." Id. Appellant argues that "another main purpose of the hanger is that the hanger can be slid along the pole such that additional hangers can also be hung on the pole" and that the "proposed modification would eliminate this essential operational capability of the clothes hanger itself." Id. The Examiner responds that the proposed modification "would not preclude or prevent this new [i.e., modified] device from being able to support a jacket .... " Ans. 4. With these arguments, Appellant has identified various attributes of the device in Siegel that would not be present after the proposed modification but has not persuasively shown that the modification would undermine the intended purpose of Siegel-supporting garments using the disclosed retractable arms. Cf In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing a rejection because modifying the prior art by turning a filter upside down would render it incapable of filtering, and thus, inoperable for its intended purpose); see also Siegel, col. 3, 11. 52-56 (discussing the "primary object of the invention"). Further, although the modified device would be "coupled" to a "base" (as in Lattin) mounted on a wall (see Final 4 Appeal2014-005339 Application 12/889,518 Act. 3 ), Appellant has not shown that such a device could not be employed-using its retractable arms (see Siegel, col. 3, 11. 52-56}-to insert the hanger body through the neck of a "narrow necked garment" (id.). Indeed, a garment could be manipulated relative to such a device, even though the device is mounted. As to the alleged change in the principle of operation, Appellant has not shown that one of ordinary skill in the art would consider the modified device as other than a "clothes hanger" and, moreover, has not identified legal support that such evidence (if provided) supports this argument. Further, we do not agree that the "primary functions" and "essential operational capability" asserted by Appellant (Appeal Br. 9) represent the basic principle of operation of the device in Siegel. Cf In re Ratti, 270 F .2d 810, 813 (CCPA 1959) (stating that the proposed modification would "require a substantial reconstruction and redesign of the elements shown in [the prior art] as well as a change in the basic principles under which the [prior art] was designed to operate"). For reasons similar to those discussed above, we consider the basic principle of operation to be supporting garments using the disclosed retractable arms. Second, Appellant argues that the "proposed modification would confer absolutely no benefit to Siegel, and would actually make Siegel worse as hanging clothes would become more difficult." Appeal Br. 10. According to Appellant, "[t]his is hindsight reconstruction in its purest form." Id. We are not apprised of error based on this argument. Even assuming the modified device would be more difficult to use, an inferior combination is not necessarily inapt for obviousness purposes. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Further, although Appellant 5 Appeal2014-005339 Application 12/889,518 contends that the Examiner engaged in hindsight, Appellant does not persuasively address the reasoning provided (Final Act. 3; Ans. 4). We determine that the reasoning supports a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not addressing the reasoning provided, Appellant has not shown error in the relevant findings or the conclusion as to obviousness. Third, Appellant contends that "Siegel clearly teaches away from the proposed modification as the modification would destroy the benefits provided by Siegel and Siegel would cease to be a clothes hanger." Appeal Br. 10. We are not apprised of error, however, because Appellant has not identified any statement in Siegel that criticizes, discredits, or otherwise discourages the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .... "). For these reasons, we sustain the rejection of independent claim 1. Claims 2, 7, and 11 fall with claim 1. B. Claim 4 The Examiner rejected claim 4 as unpatentable over Siegel and Lattin. See Final Act. 4--5. Appellant argues that "the rejection of claim 4 in its current form is improper" because "claim 4 is dependent upon claim 3 [,] which does not stand rejected based on the combination of Siegel and Lattin," but rather, "claim 3 stands rejected based upon a combination of ... Siegel, Lattin, and Chung." Appeal Br. 10. Appellant also argues that "claim 4 recites the combination of a first hook with a single eyelet, a second 6 Appeal2014-005339 Application 12/889,518 hook with a first pair of eyelets, and a base with second pair of eyelets" and that "[n]either Siegel nor Lattin disclose or teach this combination." Id. The Examiner states "the clarification to claim 3 has been added: [Siegel], as modified above, teaches wherein said first eyelet comprises a single eyelet (18) and wherein said second eyelet ( 40 and 42) and said single eyelet is disposed between said first pair of eyelets (Figure 9, [Siegel])." Ans. 7. We are not apprised of error based on these arguments. Although the Examiner relies on Siegel and Lattin to address claim 4 and relies on Siegel, Lattin, and Chung to address claim 3, Appellant does not provide legal support for the contention that this is per se improper. We consider the rejections of claims 3 and 4 separately, in light of the art relied upon by the Examiner in each rejection. We tum now to the contention that the Examiner "has failed to specifically identify the first pair of eyelets and the second pair of eyelets, leaving [A]ppellant to guess at the [E]xaminer's interpretation." Reply Br. 5---6. Based on its dependence from claim 3, claim 4 includes the requirement for a "second eyelet [that] comprises a first pair of eyelets." Appeal Br. 18 (Claims App.). The Examiner provided sufficient notice as to where this limitation is found in the prior art, however, by identifying elements 40 and 42 in Siegel as the "second eyelet." Ans. 7; see also Reply Br. 6 (stating that the Examiner "appears to be arguing that 40, 42 are the first pair of eyelets"); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (stating that the Office "satisfies its initial burden of production by 'adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond"' (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007))). The Examiner also clearly identifies a 7 Appeal2014-005339 Application 12/889,518 "second pair of eyelets." See Final Act. 4 (addressing claim 4 and stating "a second pair of eyelets (See Lattin Figure above)"); see id. (identifying "Pair of Eyelets" in an annotated version of the figure from Lattin). We are also not apprised of error based on the argument that element 18 in Siegel does not satisfy the "single eyelet" limitation in claim 3 (and thus, claim 4) because Figure 4 of Siegel "shows that first arm 12 has element 18 which comprises an upper protrusion ([Siegel,] col. 4, lines 65- 67) with a bore 22 that is paired with a lower protrusion 20 with a bore 24." Reply Br. 6 (emphasis omitted). The relevant limitation in claim 3 recites "wherein said first eyelet comprises a single eyelet." Appeal Br. 18 (Claims App.) (emphasis added). Under the broadest reasonable interpretation, "comprises" here means "includes but is not limited to." See Versa Corp. v. Ag-Bag Int'! Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004) (addressing "comprising" in the body of a claim and stating that "'comprising' language is not limiting and may include features not recited in the claim"). Here, claim 4 does not recite additional language indicating that the relevant language limits the "first eyelet" to only one eyelet. Cf Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271-72, 1272 n.8 (Fed. Cir. 1986) (construing "comprising four cubes" in the body of a claim as limiting based on other recited limitations). Thus, that support arm 12 in Siegel includes protrusion 18 and protrusion 20 does not preclude protrusion 18 from satisfying the "first eyelet" limitation. As to the arguments addressing Siegel individually (see Reply Br. 6 (paragraph beginning "Finally")), nonobviousness cannot be established by attacking the references individually when the rejection is based upon a combination of prior art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. 8 Appeal2014-005339 Application 12/889,518 Cir. 1986). Appellant has not demonstrated that the combination of Siegel and Lattin fails to disclose the limitations in claim 4. For these reasons, we sustain the rejection of claim 4. C. Claim 5 For claim 5, the Examiner relied on Siegel for certain limitations and on Lattin for other limitations, including the "wherein" clause at the end of claim 5 (beginning "wherein said first hook"). See Final Act. 10. First, Appellant argues that claim 5 is allowable for the same reasons claim 1 is allowable. Appeal Br. 11. Because claim 1 is not allowable (see supra§ A), we are not apprised of error based on this argument. Second, Appellant argues that "[ m ]odifying Siegel to include the eyelet configuration as taught by Lattin would clearly render Siegel unsatisfactory for its intended purpose as such a modification would require removal of the stops" 26, 48 in Siegel and thus, "Siegel would no longer have structure that would be capable of holding the arms in the fully extended position as required by Siegel." Appeal Br. 11. The Examiner responds that there "is no structure in the modification that prevents the arms from being extended to support an item; especially, since the hooks (arms) on the hanger do not make a 360 degree rotation or are required to make such rotation." Ans. 7-8. In reply, Appellant states that "[t]he stops are required to hold the arms 12, 34 in the proper orientation relative to each other" and that "Appellant is not arguing that the arms have to make a 360 degree rotation." Reply Br. 7. According to Appellant, "the structure in Siegel must be capable of holding the two arms 12, 34 straight relative to each other when fully extended" and the "proposed modification would interfere with this structural requirement of Siegel." Id. 9 Appeal2014-005339 Application 12/889,518 We are not apprised of error based on this argument. "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. Here, Appellant has not shown that the proposed modification would require the removal of stops 26 and 48 in Siegel. Thus, we sustain the rejection of claim 5. D. Claim 6 Claim 6 depends from claim 5 and recites a hinge hook "wherein said second eyelet comprises a second pair of eyelets and said first eyelet is disposed between said second pair of eyelets." Appeal Br. 19 (Claims App.). The Examiner stated that Siegel, as modified, does not satisfy the added limitation of claim 6 but concluded that it would have been obvious to further modify Siegel, as modified, to arrive at the claimed invention. See Final Act. 11 (discussing "mere duplication of the essential working parts" and "design choice"). First, Appellant argues that claim 6 is allowable for the same reasons claim 5 is allowable. Appeal Br. 11. Because claim 5 is not allowable (see supra § C), we are not apprised of error based on this argument. Second, Appellant "fails to see why one of ordinary skill in the art, upon viewing Lattin, would be motivated to modify one of the single eyelets to comprise a pair of eyelets." Appeal Br. 12. According to Appellant, "[ s ]uch a modification makes no sense as it would confer absolutely no benefit to the Lattin configuration." Id. Third, Appellant argues that, with the discussion of design choice, the Examiner is "clearly engaging in 10 Appeal2014-005339 Application 12/889,518 hindsight reconstruction." Id. Appellant argues that "when viewing the figure of Lattin, the [E]xaminer's proposed modification is difficult to visualize due to the vertically stacked nature of the eyelets, i.e. Lattin teaches a configuration where the hooks do not contact each other when rotated." Id. In response, the Examiner states Siegel "teaches hooks (12) with interlacing eyelets since in Figure 9, elements 40, 18, 42, 20." Ans. 8. According to the Examiner, "the reconstruction is not hindsight because [Siegel] teaches interlaced eyelets." Id. at 8-9. We are not apprised of error here because the Examiner's revised findings render moot Appellant's second and third arguments. The Examiner now relies on the configuration of elements 18/20 and 40/42 in Siegel-rather than modifications to the structure of Siegel, as modified with the base of Lattin (see Final Act. 11 }-to address the added limitation in claim 6. Elements 40/42 in Siegel would satisfy the recited "second eyelet" and element 18 would satisfy the recited "first eyelet ... disposed between said second pair of eyelets." See Siegel, Fig. 9. Thus, we sustain the rejection of claim 6. E. Claim 8 Claim 8 depends from claim 7 and recites a hinge hook with a first hook and a second hook "with each of said first and said second hooks having an upwardly curved distal end." Appeal Br. 19 (Claims App.) (emphasis added). In rejecting claim 8, the Examiner stated that Lattin teaches multiple hooks "having an upwardly curved distal end." Final Act. 5---6 (citing Final Act. 4). According to the Examiner: 11 Appeal2014-005339 Application 12/889,518 It would have been an obvious matter of design choice to further modify the hooks taught by Siegel et al. with the further teaching of upwardly curved distal end taught by Lattin for the purpose of increasing the radius of curvature of the hook to better support attire made from material that is slick, like silk. Id. at 6. Appellant argues that, in the modified device, once the hanger was released to go back to the extended position the garment would not sit properly on the hanger as the curved distal ends would cause portions of the garment to stick up and potentially cause shoulders of the garment to deform if hung for an extended period of time. Appeal Br. 12. Rejections based on obviousness must be supported by "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here; the Examiner has not provided adequate reasoning to modify Siegel as proposed to satisfy the limitation at issue. The reasoning does not support the conclusion of obviousness because the Examiner has not shown the relevance of that reasoning in the context of a device such as that disclosed in Siegel. Thus, we do not sustain the rejection of claim 8. F. Claims 12, 14, 16-20, 22, and 24 As with claim 8, claims 12, 14, 16, 22, and 24 each recite one or more hooks with an "upwardly curved distal end" or "ends." See Appeal Br. 20- 23 (Claims App.). For claim 12, the Examiner fails to provide a reason to modify Siegel with the "upwardly curved distal ends" disclosed in Lattin. See Final Act. 7-8. Thus, we do not sustain the rejection of claim 12. 12 Appeal2014-005339 Application 12/889,518 For claims 14 and 16 (and claims 17-20, which depend from claim 16), the Examiner does not address the "upwardly curved distal end" limitations at all. See id. at 3 (claim 16), 8 (claim 14 ). Thus, we do not sustain the rejection of claims 14 and 16-20. For claim 22 and for claim 24, the Examiner stated that it would have been obvious to further modify Siegel, as modified, "with the further teaching of first and second hooks upwardly curved distal end taught by Lattin for the purpose of securing garments." Final Act. 9. The reasoning provided does not support the conclusion of obviousness, however, because the modified device of, for example, claim 1 (from which claim 22 depends) was already capable of securing garments. See Final Act. 3 (discussing "the purpose of hanging attire"). Because the Examiner has not provided further reasoning to support the additional modification required by claims 22 and 24, we do not sustain the rejection of these claims. G. Claim 9 Claim 9 recites, in relevant part, a "base which includes a second pair of eyelets through which [an] axis extends." Appeal Br. 20 (Claims App.). Addressing this limitation, the Examiner initially identified element 36 in Siegel (see, e.g., Fig. 6) as the "base." See Final Act. 6 (citing Fig. 92). Appellant argues that "element 36 is part of arm 34 ([Siegel,] col. 5, lines 33-34), and as such, cannot reasonably be considered as corresponding to the claimed base" and contends that the Examiner "has not specifically identified which elements correspond to the first and second pairs of eyelets." Appeal Br. 13 (emphasis omitted). 2 We agree that "elements '14' and '3 6' are incorrectly identified in Figure 9, and should actually be reversed from each other." Appeal Br. 13. 13 Appeal2014-005339 Application 12/889,518 The Examiner responds that although the Examiner "mentioned th[ e] base taught by S[ie]gel[,] the [E]xaminer also made it clear that Lattin teaches a base (as seen in the figure) that has an attachment member." Ans. 9. The Examiner states that although Siegel "may call elements 18, 20, 40 and 42 protrusions ... [,]given the pla[i]n meaning of 'eyelet' the 'protrusion' are synonyms with 'eyelets' because they allow for a hinge pin to be supported there though." Id. Here, the Examiner does not specifically identify the "second pair of eyelets" relied upon to address the limitation at issue. Considered as a whole, the statements by the Examiner regarding claim 9 (Final Act. 6; Ans. 9) do not make sufficiently clear whether structure in Siegel, Lattin, or some combination allegedly satisfies the limitation at issue. See Reply Br. 10 (arguing that the Examiner "has not specifically identified all of the claimed structures" in claim 9). Thus, we do not sustain the rejection of claim 9. H. Claim 15 Claim 15 recites a hinge hook wherein, in relevant part, "upon rotation said first hook and said second hook, said first shape and said second shape come entirely into contact with each other." Appeal Br. 22 (Claims App.). The Examiner found this limitation satisfied "via elements 66 and 68" in Siegel. Final Act. 8. First, Appellant argues that claim 15 "is allowable for the same reason claim 1 is allowable." Appeal Br. 14. Because claim 1 is not allowable (see supra§ A), we are not apprised of error based on this argument. Second, Appellant argues that "[t]he hooks of Siegel do not come entirely into contact with each other." Id. The Examiner responds that "[ w ]hen peg ( 66, Figure 2 [of Siegel]) is pushed into aperture ( 68, Figure 2) 14 Appeal2014-005339 Application 12/889,518 the two hooks are flush to each other." Ans. 11. Appellant replies that the Examiner "has argued that Siegel discloses hooks 28E." Reply Br. 11. Appellant argues that "[i]t is clear from Figure 3 that only the distal ends of the arms 12, 34 come into contact with each other when peg 66 is in aperture 68" and that "[t]here clearly is a gap at the location of the examiner's hooks 28E as these hooks are located almost halfway up the arms." Id. We are not apprised of error because Appellant does not address the rejection as articulated; the Examiner has identified elements 12 and 34 in Siegel-not elements 28E-as the recited "first hook" and "second hook," respectively. See Final Act. 8. Thus, we sustain the rejection of claim 15. I. Claims 21 and 23 Claims 21 and 23 each recite a hinge hook with a base "including at least one fastener to fix said base to the rigid structure such that said base is not moveable relative to the rigid structure." Appeal Br. 23 (Claims App.). For these claims, the Examiner stated that Siegel, as modified, "teaches at least one fastener holes (to accommodate fasteners) to fix said base to the rigid structure such that said base is not moveable relative to the rigid structure." Final Act. 8. Appellant argues that these claims are allowable for the same reasons that claim 1 is allowable and for the same reasons that claim 18 is allowable. Appeal Br. 15. The arguments for claim 18 include three groups: (1) the arguments for claim 1; (2) the arguments for claim 8; and (3) additional arguments specifically for claim 18. See id. at 14--15. We address each of these groups in tum. Because claim 1 is not allowable (see supra§ A), we are not apprised of error based on those arguments. As to the arguments for claim 8, claims 21 and 23 do not recite the "upwardly curved distal end" limitation 15 Appeal2014-005339 Application 12/889,518 discussed above regarding claim 8 (see supra§ E). Thus, we are not apprised of error based on those arguments. Addressing claim 18 specifically, Appellant first argues that "[n]either reference discloses or teaches a fastener that fixes a base to a rigid structure as claimed." Appeal Br. 14. The Examiner responds that "Lattin does teach two apertures or bores that are clearly used to retain a fastener, such as a screw or a nail" and that "while the fasteners are not explicitly shown in the illustration of Lattin[,] it is well known to one of ordinary skill in the art that brackets use fasteners such as screws and nails to be affixed to a wall or a variety of other surfaces." Ans. 12. Here, Appellant has not persuasively demonstrated error in the Examiner's position that one of ordinary skill in the art would view the identified "Fastener Holes" in Lattin (see Final Act. 4) as implicitly teaching the use of the recited "fastener." Second, Appellant argues that "Siegel teaches away from using a fastener as one of ordinary skill in the art would not want to use a fastener to fix a hanger to a wall." Reply Br. 12. We are not apprised of error because Appellant has not identified any statement in Siegel that criticizes, discredits, or otherwise discourages the claimed solution. See Fulton, 391 F.3d at 1201. For these reasons, we sustain the rejection of claims 21 and 23. Rejection 2 - The rejection of claims 3, 10, and 13 under 35 U.S.C. § 103(a) A. Claim 3 Addressing claim 3, the Examiner stated that "Chung teaches the configuration of an element with an eyelet disposed between two eyelets of a second element (Figures 1 and 4 )" and that 16 Appeal2014-005339 Application 12/889,518 It would have been an obvious matter of design choice to arrange the eyelets in the aforementioned configuration, since applicant has not disclosed that the stated arrangement of the eyelets solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with the eyelet arrangement taught by Siegel et al. and/or Chung. Final Act. 12. First, Appellant argues that claim 3 "is allowable for the same reason claim 1 is allowable." Appeal Br. 16. Because claim 1 is not allowable (see supra Rejection 1, §A), we are not apprised of error based on this argument. Second, Appellant states that the Examiner "is proposing to modify one of the sets of protrusions 18, 20 or 40, 42 [of Siegel] to be a single eyelet that would be located between the other set of protrusions" and argues that "[s]uch a modification would fill the mounting space needed for the spring." Appeal Br. 16. According to Appellant, the Examiner "has offered no explanation as to how the eyelets of Siegel would be modified to work in conjunction with the required spring of Siegel." Id. Appellant contends that "if the hanger in Siegel were modified as proposed by the [E]xaminer, the hanger would no longer be able to operate as intended and would be rendered unsatisfactory for Siegel's intended purpose" and "[t]hus, Siegel teaches away from the proposed modification." Id. at 16-17. We are not apprised of error based on this argument. As noted by the Examiner (Ans. 13-14), "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981 ). "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. Appellant has not provided persuasive evidence or technical reasoning that the 17 Appeal2014-005339 Application 12/889,518 proposed modification would have been beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 417-18. Moreover, Appellant has not identified any statement in Siegel that criticizes, discredits, or otherwise discourages the claimed solution. See Fulton, 391 F.3d at 1201. Third, Appellant contends that the Examiner "has failed to specifically identify the first pair of eyelets and the second pair of eyelets in Siegel." Reply Br. 14. We disagree. As to the "second pair of eyelets," claim 3 does not recite that limitation; rather, that limitation is recited in claim 4, which depends from claim 3. Further, the Examiner provided sufficient notice as to the "first pair of eyelets" limitation by identifying elements 40 and 42 in Siegel as the "second eyelet." Ans. 14; see also Reply Br. 14 (stating that the Examiner "appears to be arguing that 40, 42 are the first pair of eyelets"). Fourth, Appellant argues (as argued with regard to claim 4) that element 18 in Siegel does not satisfy the "single eyelet" limitation in claim 3 because Figure 4 of Siegel "shows that first arm 12 has element 18 which comprises an upper protrusion ([Siegel,] col. 4, lines 65-67) with a bore 22 that is paired with a lower protrusion 20 with a bore 24." Reply Br. 14 (emphasis omitted); cf id. at 6 (addressing claim 4). We are not apprised of error, however, because this argument does not address the rejection as articulated. The Examiner relies on Chung, not Siegel, for the "single eyelet" limitation. See Final Act. 12 (stating that Siegel fails to teach the added limitation of claim 3 but that "Chung teaches the configuration of an element with an eyelet disposed between two eyelets of a second element (Figures 1 and 4)"); Ans. 14 ("Chung is used for its teaching of a single eyelet disposed between two eyelets."). Further, to the 18 Appeal2014-005339 Application 12/889,518 extent the Examiner does rely on Siegel regarding the "single eyelet" limitation, for the same reasons discussed above (see supra Rejection 1, § B), that support arm 12 in Siegel includes protrusion 18 and protrusion 20 does not preclude protrusion 18 from satisfying the "first eyelet" limitation. See Ans. 14 (addressing claim 3 and stating that Siegel "teaches wherein said first eyelet comprising a single eyelet (18) and wherein said second eyelet ( 40 and 42) and said single eyelet is disposed between said first pair of eyelets (Figure 9[)]"). For these reasons, we sustain the rejection of claim 3. B. Claim 10 Claim 10 depends from claim 9. Appeal Br. 20 (Claims App.). The Examiner's added reliance on Chung does not remedy the failure to specifically identify the "second pair of eyelets" recited in claim 9, as discussed above (see supra Rejection 1, § G). Thus, for the same reasons discussed above, we do not sustain the rejection of claim 10. C. Claim 13 Addressing claim 13, the Examiner stated that Siegel, as modified, fails to teach the final three clauses (beginning "a base coupled ... "). See Final Act. 13. Appellant notes this statement and argues that the Examiner "offers no explanation of how this combination of claim elements is met by the combination of references." Appeal Br. 17. We agree. See Final Act. 12-14. In the Answer, the Examiner does not address this argument. See Ans. 13-14. Because the Examiner has failed to present a prima facie case of obviousness, we do not sustain the rejection of claim 13. 19 Appeal2014-005339 Application 12/889,518 DECISION We AFFIRM the decision to reject claims 1-7, 11, 15, 21, and 23, and we REVERSE the decision to reject claims 8-10, 12-14, 16-20, 22, and 24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 20 Copy with citationCopy as parenthetical citation