Ex Parte PriestDownload PDFPatent Trial and Appeal BoardMay 28, 201512630843 (P.T.A.B. May. 28, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/630,843 12/04/2009 John Brian Priest D100-106 1507 59555 7590 05/28/2015 RATHE PATENT & IP LAW 10611 W. HAWTHORNE FARMS LANE MEQUON, WI 53097 EXAMINER CHIN-SHUE, ALVIN CONSTANTINE ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 05/28/2015 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 ____________________ Ex parte JOHN BRIAN PRIEST 1 ____________________ Appeal 2013-003371 Application 12/630,843 Technology Center 3600 ____________________ Before HUBERT C. LORIN, ROBERT L. KINDER, and BRADLEY B. BAYAT, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 2, 4–10, 13–25, 27–32, and 34–37. Claims 3, 11, 12, 26, and 33 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellant, the real party in interest is DDI, Inc. App. Br. 1. Appellant’s Brief does not include page numbering. In our decision we reference page numbers with page 1 beginning with “BRIEF ON APPEAL” and “1. Real Party in Interest.” Appeal 2013-003371 Application 12/630,843 2 STATEMENT OF THE CASE Appellant’s Invention Appellant’s invention relates to a tree stand for “elevat[ing] a person above the ground on a tree to facilitate hunting or wildlife observation.” Spec. ¶ 1. Claims on Appeal Claims 1, 13, 20 and 27 are independent. We select independent claims 1 and 13 as illustrative: 1. An apparatus comprising: a tree stand post; a tree claw integral with the post as a single unitary body; and at least one cinch line post integral with the post as the single unitary body. 13. A tree stand comprising: a post having a first end, a second end and a non-tubular cross-section between the first end and the second end; at least one platform connected to and extending from the post; wherein the post has an “I” cross sectional shape with a first plate portion, a second plate portion parallel to the first plate portion and an intermediate plate portion interconnecting and extending perpendicular to the first plate portion and the second plate portion, and wherein the intermediate plate portion includes a slot forming a plurality of spaced notches. App. Br., Claims App’x. Appeal 2013-003371 Application 12/630,843 3 Examiner’s Rejections I. Claim 22 is rejected under 35 U.S.C. § 112, second paragraph (2011), as indefinite. II. Claims 1, 4, and 5 are rejected under 35 U.S.C. § 102(b) as anticipated by Pringnitz (US 7,246,683 B2, iss. Jul. 24, 2007). III. Claims 1, 5, 7, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blennert (US 5,518,083, iss. May 21, 1996) and Pringnitz. IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blennert, Pringnitz, and Woof (US 5,080,193, iss. Jan. 14, 1992). V. Claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over DuCellier (US 2008/0236948, pub. Oct. 2, 2008) and Pringnitz. VI. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over DuCellier, Pringnitz, and Woof. VII. Claims 13–16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson (US 4,727,961, iss. Mar. 1, 1988), Serman (US 7,086,433 B1, iss. Aug. 8, 2006), and Pringnitz. VIII. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, and Woof. IX. Claims 4, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Pringnitz, and Koniecka (US 4,721,183, iss. Jan. 26, 1988). X. Claims 2, 17, 18, 20–23, 27, 34, 35, and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, and Koniecka. Appeal 2013-003371 Application 12/630,843 4 XI. Claims 24, 25, 28–32, and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, Koniecka, and Platner (US 6,394,473 B1, iss. May 28, 2002). XII. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, Koniecka, and Woof. ANALYSIS REJECTION I Claim 22 We summarily sustain the Examiner’s rejection of claim 22 under 35 U.S.C. § 112, second paragraph, because Appellant has offered no argument as to error in the Examiner’s rejection. See Ans. 5. REJECTION II Claims 1, 4, and 5 are rejected under 35 U.S.C. § 102(b) as anticipated by Pringnitz. Appellant contends Pringnitz fails to disclose “a tree stand comprising (1) a tree claw integral with the post as a single unitary body OR (2) at least one cinch line post integral with the post as the single unitary body,” as required by claim 1. App. Br. 9. In particular, Appellant argues that the Examiner’s claim construction, and analysis fails to consider the requirement that both the claimed tree claw and cinch line post be “integral with the post as a single unitary body.” See, e.g., App Br. 11. Accordingly to Appellant, “[t]he Examiner improperly construes the term ‘integral’ out of context, ignoring the rest of the limitation reciting that the tree claw and the cinch line posts are integral with the tree stand post ‘as a single unitary body’.” Id. Appellant asserts “integral as a Appeal 2013-003371 Application 12/630,843 5 single unitary body” must be interpreted as something more than just integral and “[t]hose of ordinary skill in the art understand that the limitation ‘integral as a single unitary body’ means something that is homogenously formed such as components that are molded, cast or otherwise formed as a single unitary body.” Id. Finally, Appellant argues forming the tree claw and cinch line post integral as a single unitary body is not simply a matter of design choice. Id. Forming the parts integral as a single unitary body was done with the specific purpose to ensure parts cannot move relative to one another due to temperature changes or shifting weight in the tree stand. Id. The “squeaking or other sounds resulting from such relative movements is prevented, allowing tree stand 20 to be quieter.” Id. (citing Spec. ¶ 20). Appellant also contends Figure 3 of Pringnitz demonstrates member 36 is bolted onto post 25 and therefore is not integral as a single unitary body. See Reply Br. 2–3. The Examiner instead relies on dictionary definitions for “integral” and “unitary,” but the Examiner never addresses the modifier “single” as used in “a single unitary body.” See Ans. 13. The Examiner does not cite to any portion of Appellant’s Specification, nor does the Examiner offer an interpretation of the disputed limitations of claim 1. Id. The Examiner also fails to address Appellant’s argument that forming the parts integral as “a single unitary body” is distinct from just forming the parts as integral. We find the Examiner has not properly construed the claim limitations at issue. Although the Examiner addresses the individual scope of the terms “integral” and “unitary” the Examiner never addresses the requirement that the structures be formed integral as “a single unitary body.” The Examiner does not address the impact of the modifier “single” on claim scope nor does Appeal 2013-003371 Application 12/630,843 6 the Examiner rely on Appellant’s Specification to determine the broadest reasonable interpretation of “integral with the post as a single unitary body,” as recited in Claim 1. Although “[i]t is elementary that the construction of parts integral, instead of by riveting, welding, or otherwise fastening them together, does not amount to invention,” Appellant’s claim 1 requires more than just parts being formed integral. In re Hodgson, 96 F.2d 285, 286 (C.C.P.A. 1938); see also Application of Hotte, 475 F.2d 644, 647 (C.C.P.A. 1973) (finding “integral” is sufficiently broad to embrace constructions united by such means as fastening and welding). Appellant’s claim 1 requires “integral with the post as a single unitary body,” and other decisions addressing similar claim language have concluded forming parts jointly as “a single integral and gaplessly continuous piece” is not obvious in light of similar bolted prior art structures. Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 785 (Fed. Cir. 1983) (“In its argument that the invention here is but making integral what had earlier been made in four bolted pieces, Nortron seeks to limit the focus of inquiry to a structural difference from the prior art and then to show that that difference alone would have been obvious. That effort is not proper under the statute, which requires that an invention be considered ‘as a whole.’”). Regardless, the Examiner in this case has cited dictionary definitions but has not considered each of the claim terms in context and has not cited to, or otherwise relied on, Appellant’s Specification to determine the metes and bounds of the disputed claim limitations. Based on these errors, and in light of Appellant’s contentions that Pringnitz discloses structures separately bolted, and thus not integral as a single unitary body, we do not sustain the Examiner’s rejections of claim 1 Appeal 2013-003371 Application 12/630,843 7 or claims 4 and 5, each dependent from claim 1. REJECTION III Claims 1, 5, 7, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blennert and Pringnitz. Similar to the arguments set forth above, Appellant again contends neither Blennert’s claw or the cinch post, as taught by Pringnitz, are integral and unitary with the post wherein the post, claw and cinch post form a single unitary body. App. Br. 13. Appellant also argues “[s]uch a configuration is NOT merely a matter of design choice. In contrast, as noted above, forming the post, the claw and cinch line posts as one single integral unitary body provides a distinct benefits specific to a tree stand.” Id. The Examiner similarly relies on “the definition of integral and unitary, as stated above, and further notes as stated in the rejection above, that it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art.” Ans. 13–14. Although the Examiner again cites dictionary definitions for “integral” and “unitary,” the Examiner again fails to consider each of the claim terms in light of the Specification. For example, the Examiner does not rely on Appellant’s Specification to determine the metes and bounds of the disputed claim limitations. The Examiner’s finding that forming multiple parts integral as “a single unitary body” would be an obvious design choice also does not adequately address the invention as a whole. Specifically, the Examiner does not address the Specification’s disclosure that the choice to form the parts integral as “a single unitary body” was to achieve the specific objective of reducing noise. See, e.g., Spec. ¶¶ 9, 28 Appeal 2013-003371 Application 12/630,843 8 (“post 124 is integral as a single unitary body with claw 32 and posts 34 to further reduce noise generation”). We therefore do not sustain the Examiner’s rejection of claim 1 or claims 5, 7, and 9, each dependent from claim 1. REJECTION IV Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Blennert, Pringnitz, and Woof. Claims 7 and 8 depend from claim 1. For the reasons set forth above with respect to claim 1, we do not sustain the Examiner’s rejection of claims 7 and 8. REJECTION V Claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over DuCellier and Pringnitz. Although the Examiner now relies on the post (400) and claws (410, 412) of DuCellier, the Examiner’s errors related to claim construction as well as the obviousness analysis are likewise repeated for this rejection. See Ans. 8, 14. As such, for the reasons set forth above with respect to Rejections II and III, we do not sustain the Examiner’s rejection of claims 1 and 5. REJECTION VI Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over DuCellier, Pringnitz, and Woof. Claims 7 and 8 depend from claim 1. For the reasons set forth above with respect to Rejections II and III for claim 1, we do not sustain the Examiner’s rejection of claims 7 and 8. Appeal 2013-003371 Application 12/630,843 9 REJECTION VII Claims 13–16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, and Pringnitz. Claim 13 requires, in pertinent part: the post has an “I” cross sectional shape with a first plate portion, a second plate portion parallel to the first plate portion and an intermediate plate portion interconnecting and extending perpendicular to the first plate portion and the second plate portion, and wherein the intermediate plate portion includes a slot forming a plurality of spaced notches. App. Br., Claims App’x. The Examiner finds Dawson teaches the claimed apparatus with the exception of two elements: a post (102) having an “I” cross-sectional shape, and the claimed cinch line post. Id. The Examiner finds that Serman teaches a post (14) with the claimed “I” cross-sectional shape along with “front and rear attachment surfaces with an intermediate plate therebetween.” Id. The Examiner also finds Pringnitz teaches a slot 33, and a cinch line post 38, as set forth in claims 15 and 16, for anchoring a strap.” Id. Appellant contends the Examiner fails to articulate a valid rationale that would lead one skilled in the art to modify Dawson to satisfy the claim limitations. App. Br. 15, 16. Appellant argues “Claim 13 specifically requires that the plurality of spaced notches extend through the intermediate plate of the I-beam,” but [t]he Examiner fails to articulate any valid rationale that would lead one skilled in the art to specifically disregard the actual teachings of Serman so as to completely reorient the I beam 12 of Serman to locate the slots 33 of Pringnitz in the intermediate portion of the I beam 12. Id. at 16, 17; see also Reply Br. 9–13. Further, Appellant contends Serman teaches away from the orientation of the “I” beam chosen by the Examiner Appeal 2013-003371 Application 12/630,843 10 because Serman suggests if an “I” beam is used to engage “and mount a structure to a tree, the I beam should be oriented such that the intermediate plate faces the tree with the two side plates having edges running along the tree.” App. Br. 19; see also Reply Br. 7–8. We find Appellant’s argument unpersuasive because “the teaching for ‘I’ cross sectional was in view of mast post 14 of Serman, and not the base 12 construction as argued by Appellant.” Ans. 17. Further, as explained by the Examiner, “the modification is not the replacing of Dawson’s post with [] post 14 of Serman or base 12 of Serman as argued by Appellant, but modifying Dawson’s post 102 to be shaped as an ‘I’ cross-sectional shape to provide strength and structural soundness while minimizing material, cost and weight.” Id. We find the Examiner’s proposed modification to Dawson reasonable, the broad face of the “I” of the post (102) of Dawson would be placed adjacent to the tree, and Pringnitz’s slots (33) “would be placed in the side of the post as Dawson’s screw holes 152 for braces 148a,b.” Ans. 17– 18. We also find Appellant’s arguments regarding the orientation of the “I” beam of Serman unpersuasive because the orientation selected by the Examiner is the orientation of Serman’s “I” beam post 14 against the tree as depicted in Figures 7A and 7B. We have considered Appellant’s remaining arguments but find that Appellant fails to present persuasive evidence as to why the proposed combination would not be possible, or why one of ordinary skill in the art would be discouraged from combining the references for the reasons set forth by the Examiner. See, e.g., Ans. 9–10, 18–19. Because we find no error in the Examiner’s proposed combination of references or in the basis for combining those references as argued by Appeal 2013-003371 Application 12/630,843 11 Appellant, we therefore sustain the Examiner’s rejection of claims 13–16. 2 REJECTION VIII Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, and Woof. We find Appellant’s contention that “[t]he Examiner fails to articulate ANY rationale, ANY motivation or any support that would lead one skilled the art to modify the references based upon Woof or how such a modification would be implemented,” (App. Br. 21) unpersuasive because the Examiner incorporates the analysis of both claim 13 and of Woof, as applied to claim 7, for the rejection of claim 19. Ans. 10, 19–20. Appellant does not offer persuasive arguments or evidence as to Examiner error, and therefore we sustain the Examiner’s rejection of claim 19. REJECTION IX Claims 4, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Pringnitz, and Koniecka. Claims 4, 9, and 10 depend from claim 1. For the reasons set forth above with respect to claim 1 and Rejections II and III, we do not sustain the Examiner’s rejection of claims 4, 9, and 10. REJECTION X Claims 2, 17, 18, 20–23, 27, 34, 35, and 37 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, and 2 We do not rely on the Examiner’s alternative finding that the claimed cross section could also be a straight “l” shape line. Ans. 16. An “I” beam is well-known structure and we disagree with the Examiner’s position that Appellant failed to claim an “I” cross sectional shape based on the font type used in the Appeal Brief. See Spec. Fig. 4. Appeal 2013-003371 Application 12/630,843 12 Koniecka. Claims 2 and 21 Claim 2 depends from claim 1 and claim 21 depends from claim 2. For the reasons set forth above with respect to claim 1 and Rejections II and III, we do not sustain the Examiner’s rejection of claims 2 and 21. Claim 23 We have considered Appellant’s arguments with respect to claim 23 (App. Br. 30) and find them unpersuasive for the reasons set forth above and agree with the reasons set forth by the Examiner at pages 11, 20, and 21 of the Answer. We therefore sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a). Claim 35 Claim 35, depends from independent claim 27, and requires “the tree stand post comprise a cast structure.” App. Br., Claims App’x. The Examiner does not rely on any reference to teach this limitation, but instead takes official notice that the making of tree stand post by casting, as set forth in claim 35, is conventional and to make the post of Dawson by the conventional method of casting would have been [known] to one of ordinary skill in the art in view of the conventional teaching for its known advantages. Ans. 11. Appellant’s only contention is that the references relied upon do not teach or suggest the limitation “the tree stand post comprise a cast structure,” as recited in claim 35. App. Br. 31; Reply Br. 15 (“Examiner merely refers to the previous rejection of claim 16 . . . . The Examiner’s rejection of claim 16 fails to address the actual limitations of claim 35.”). Because Appellant fails to address the Examiner’s taking of official notice, we find Appellant’s Appeal 2013-003371 Application 12/630,843 13 contentions unpersuasive because they fail to address the actual rejection of record before us, and thus, we sustain the Examiner’s rejection of claim 35. Because Appellant offers no additional persuasive argument as to Examiner error in the rejection of claims 17, 18, 20, 22, 23, 27, 34, 35, and 37, we sustain the Examiner’s rejection of these claims. REJECTION XI Claims 24, 25, 28–32, and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dawson, Serman, Pringnitz, Koniecka, and Platner. Claim 24 Claim 24 depends from claim 2, which depends from claim 1. For the reasons set forth above with respect to claim 1 and Rejections II and III, we do not sustain the Examiner’s rejection of claim 24. Claim 29 We have considered Appellant’s arguments with respect to claim 29 (App. Br. 34) but find them unpersuasive for the reasons set forth above and we also agree with the reasons set forth by the Examiner at pages 21–23 of the Answer. Claims 30–32 Claim 30 requires “a second aperture extending through the intermediate plate portion proximate the first end of the post, wherein the intermediate plate portion includes a third portion having a third thickness greater than the first thickness.” App. Br., Claims App’x. Claim 31 depends from claim 30 and further requires “a third aperture extending through the intermediate plate portion proximate the second end of the post, wherein the intermediate plate portion includes a fourth portion having a fourth thickness greater than the first thickness.” Id. Claim 32 depends from claim 31 and Appeal 2013-003371 Application 12/630,843 14 further requires “the fourth thickness is greater than the second thickness.” Id. The Examiner finds with regard to the “relative thickness/size,” that “changes in design such as size, shape and making something integral are merely obvious design choices and such changes have no patentable significance unless a new and unexpected result is produced.” Ans. 12 (addressing dimensions of claim 32). Further, the Examiner finds increasing thickness is a matter of design choice “as it is known that a thicker portion serves as reinforcement where apertures pass thru to ensure strength while minimizing material, weight, and costs.” Ans. 23. The Appellant contends that the claimed dimensions are not merely a matter of design choice, but instead the increased thicknesses are necessary for beneficial functions such as to “enable platforms to be directly mounted to the I-beam shaped tree stand post.” App. Br. 35 (referencing dimensions depicted in Fig. 3). We agree with the Examiner that providing for increased thicknesses in areas where other structures, such as platforms, would be mounted is an obvious design choice to a person of ordinary skill in the art, and, as such, we agree with the Examiner’s findings. We therefore sustain the Examiner’s rejection of claims 30–32 under 35 U.S.C. § 103(a). Because Appellant offers no additional persuasive argument as to Examiner error in the rejection of claims 25, 28–32, and 36, we sustain the Examiner’s rejection of these claims. Appeal 2013-003371 Application 12/630,843 15 REJECTION XII Claim 6 depends from claim 1 and intervening claim 2. For the reasons set forth above with respect to claim 1, we do not sustain the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a). DECISION We REVERSE the Examiner’s decision to reject claims 1, 2, 4–10, 21, and 24. We AFFIRM the Examiner’s decision to reject claims 13–20, 22, 23, 25, 27–32, and 34–37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART tkl Copy with citationCopy as parenthetical citation