Ex Parte Stansbury

Board of Patent Appeals and Interferences

May 30, 2012

10669829 (B.P.A.I. May. 30, 2012)

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.
10/669,829 09/24/2003 Mark A. Stansbury NSAC-2 5707
52450 7590 05/30/2012
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
KING, ANITA M
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
05/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MARK A. STANSBURY
____________________

Appeal 2010-005222
Application 10/669,829
Technology Center 3600
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and CHARLES N.
GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005222
Application 10/669,829
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 5-
12, 15, 17-22, 26, 28-31, 34, 35, 40, 43, 45-53 and 56-58. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a furnace mount and the combination of a
furnace and mount. Claim 15, reproduced below, is illustrative of the
claimed subject matter:
15. A mount for supporting a furnace above the floor,
comprising:
a substantially rigid main body member having a first
surface adapted to engage the floor and a second surface spaced
from said first surface and adapted to support the furnace above
the floor;
a vibration dampening component positioned on and
connected with said second surface, said vibration dampening
component having an outer adhesive surface adapted to engage
and couple said main body member with the furnace; and
wherein said main body member has a locating portion
extending from said second surface to abut an outer surface of
the furnace and position said second surface relative to the
furnace, said locating portion includes two upstanding members
that are oriented perpendicular to one another.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Griswold
Rosenzweig
Brabson
Born
US 1,647,828
US 1,880,153
US 1,887,283
US 3,326,508
Nov. 1, 1927
Sep. 27, 1932
Nov. 8, 1932
Jun. 20, 1967
Appeal 2010-005222
Application 10/669,829
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Franz
Benton
US 3,583,215
US 4,721,275
Jun. 8, 1971
Jan. 26, 1988

REJECTIONS
Claims 5, 8-11, 26, 30, 31, 34, 35, 40, 43, 45, and 56-58 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Brabson and Born.
Ans. 4.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brabson, Born and Rosenzweig. Ans. 6.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brabson, Born and Franz. Ans. 7.
Claims 15, 17-20, 28, 46, 47, 48, 49 and 50 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Brabson, Benton and Born. Ans.
7.
Claims 21, 22, 29, 51, 52 and 53 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Griswold, Brabson, Benton and Born.
Ans. 10.
The rejection of claims 29, 45, 48, 50, and 52 under 35 U.S.C. § 112,
first paragraph, has been withdrawn by the Examiner. Ans. 3, 12.
The Examiner purports to enter a new ground of rejection for
dependent claims 29, 45, 48, 50 and 52. Ans. 2-3. In the Final Rejection of
July 8, 2008 the Examiner indicated these claims were rejected, albeit
without further explanation. In the Answer, although the Examiner includes
additional discussion and rationale in support of the rejection of these
claims, the Examiner relies upon the same evidence and statutory basis as
previously set forth in the Final Rejection. Although Appellant has chosen
not to specifically address these claims, Appellant’s arguments remain
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pertinent and persuasively demonstrate error in the Examiner’s position
based on the independent claims involved in this appeal. Thus, for purposes
of this appeal we will not consider the Examiner’s rejections of dependent
claims 29, 45, 48, 50 and 52 to be “New Grounds” within the meaning of 37
C.F.R. § 41.39(a)(2). See e.g., MPEP § 1207.03(III). Thus, we will not
dismiss this appeal under 37 C.F.R. § 41.39(b) as to claims 29, 45, 48, 50
and 52.1

OPINION
Each of the Examiner’s rejections is premised on the notion that it
would have been obvious to modify Brabson’s furniture support with the
adhesive of Born. Brabson discloses a furniture support having nodules 23 to
fix the support against lateral movement on a linoleum floor. Brabson p. 1,
ll. 95-100. This enables the furniture to be removed while the furniture
support remains affixed to the floor, and then the furniture may be replaced
in exactly its former position. Brabson p. 1, l. 100 – p. 2, l. 4. The Examiner
contends Brabson’s device would benefit from the application of Born’s
adhesive surface 21A “for the purpose of improving the grip between the
mount and the adapted body, i.e., the furnace,” to level irregularities, or to
dampen vibrations. Ans. 5. Flanges 21 of Brabson’s device already prevent
the furniture from moving laterally (Brabson p.1, ll. 75-81; p. 2, ll. 12-23;
figs. 1, 4) and Brabson considers the ability to separate the support from the
furniture desirable (Brabson p. 3, ll. 29-30). The Examiner’s proposed
modification would seemingly either not provide any benefit by improving

1 We note that when the Answer contains a new ground of rejection that
Appellant has not responded to, the Examiner may cancel the claims subject
to that rejection according to MPEP § 1207.03(V)(C). However, the
Examiner has elected not to do so.
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the grip between the furniture and support because the nodules would
continue to affix the support to the floor when the furniture is removed, or
destroy the ability to remove the furniture without removing the support. We
are mindful that one of ordinary skill in the art may consider desirable that
which Brabson does not, however the Examiner has not articulated any
reason, and it is not apparent, why it would have been desirable to improve
the grip between Brabson’s support and the furniture held thereon. Our
reviewing court has stated that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be 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’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The fact that neither Brabson nor Born mentions the use of a furnace
and the Examiner’s reasoning supporting the proposed combination involves
the ability to support a furnace is evidence that the Examiner has improperly
relied upon hindsight and used the invention as a template for its own
reconstruction—an illogical and inappropriate process by which to
determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570 (Fed. Cir. 1996). Thus, Appellant has persuasively demonstrated that
the Examiner has failed to articulate reasoning with a rational underpinning
for combining the teachings of Brabson and Born as proposed by the
Examiner. App. Br. 15-16. We are therefore constrained to reverse the
Examiner’s rejections.

DECISION
The Examiner’s rejection of claims 5-12, 15, 17-22, 26, 28-31, 34, 35,
40, 43, 45-53 and 56-58 are reversed.
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Application 10/669,829
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REVERSED

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