Ex Parte Warnke et al

Patent Trial and Appeal Board

Dec 9, 2016

13555289 (P.T.A.B. Dec. 9, 2016)

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.
13/555,289 07/23/2012 Robert S. Warnke 003026 P0004 5306
12/13/201677093 7590
Bishop Diehl & Lee, Ltd.
1475 East Woodfield Road, Suite 800
Schaumburg, IL 60173
EXAMINER
GALLEGO, ANDRES F
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
12/13/2016 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):
cmarcello@bishoppatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT S. WARNKE and STEVE VAN BERGEN
Appeal 2015-001491
Application 13/555,289
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert S. Wamke and Steve Van Bergen (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—3, 5, 6, 8—
14, 16—18, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-001491
Application 13/555,289
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A furniture assembly comprising:
a substrate having two opposing surfaces and a passage
there through which joins openings defined in each of the two
opposing surfaces;
a base connected to the substrate and comprising:
a support for anchoring the base;
a substrate interface for contacting the substrate,
wherein a connecting rod extends upward from a portion
of the substrate interface; and
a stem connecting the substrate interface to the
support;
at least one rubber support fixed to an upward facing
surface of the substrate interface for frictionally engaging a
downward facing surface of the substrate; and
a connector configured to threadably attach to the
connecting rod extended from the substrate interface through the
passage of the substrate after the substrate is positioned onto the
substrate interface;
wherein when the substrate is positioned on the base, the at least
one rubber support prevents rotation of the substrate about the
connecting rod, and an upper surface of the connector is
substantially flush with an exposed upper surface of the
substrate.
REJECTIONS
I. Claims 1—3, 5, 6, 8—14, 16—18, and 20 stand rejected under
35U.S.C. § 112, second paragraph, as indefinite.1
1 Although the Examiner’s statement of the rejection does not include claim
6, the Examiner explicitly addresses claim 6 in the detailed explanation of
the rejection. Final Act. 4.
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Application 13/555,289
II. Claims 1—3, 5, 8—12, 16—18, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Doty (US 2,602,012,
iss. July 1, 1952), Kelley (US 4,779,543, iss. Oct. 25, 1988),
and Cox (US 5,354,027, iss. Oct. 11, 1994).2
III. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Doty, Kelley, Cox, and Park (US 6,516,731
Bl, iss. Feb. 11,2003).
IV. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Doty, Kelley, Cox, Park, and Anderson
(US 4,807,838, iss. Feb. 28, 1989).
DISCUSSION
Rejection I
Appellants do not contest the indefmiteness rejections of claims 1—3,
5, 6, 8—14, 16—18, and 20. See Br. 4 ( Appellants stating that they have “not
presented any issues with these rejections to be resolved by the Board”
because “these relatively new 112 rejections can be more easily addressed
by Examiner amendment”). Consequently, Appellants have waived any
argument of error, and we summarily sustain the rejection of claims 1—3, 5,
6, 8—14, 16—18, and 20 under 35 U.S.C. § 112, second paragraph, as being
indefinite. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
2 Although the Examiner does not include Cox in the statement of the
rejection, the Examiner relies on Cox in the detailed explanation of the
rejection. Final Act. 5, 6.
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§ 112, second paragraph, when the applicant failed to contest the rejection
on appeal).
Rejection II
Appellants rely on the same arguments for patentability of
independent claim 1 in contesting the rejection of independent claim 18.
Br. 4—8. Appellants do not assert any separate arguments for patentability of
dependent claims 2, 3, 5, 8—12, 16, 17, and 20. Id. We select claim 1 as
representative, with claims 2, 3, 5, 8—12, 16—18, and 20 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Doty discloses a furniture assembly,
substantially as claimed, including, in pertinent part, “a connector (plate 24
with socket 28) configured to threadably attach to the connecting rod . . . ;
wherein[,] when the surface is connected to the base, an upper surface (top
surface of plate 24) of the connector is substantially flush with an exposed
upper surface of the substrate.” Final Act. 5. The Examiner acknowledges
that Doty
does not disclose at least one rubber support fixed to an upward
facing surface of the substrate interface for ffictionally engaging
a downward facing surface of the substrate; and wherein when
the substrate is positioned on the base, the at least one rubber
support prevents rotation of the substrate about the connecting
rod.
Id. at 6. However, the Examiner finds that “Kelley teaches a rubber support
(rubber brake pad 74) fixed to a downward facing surface of a substrate
(board 14) for frictionally engaging an upward facing surface of a substrate
interface (board 12), such that the rubber support prevents rotation of the
substrate about a rod (shaft 70).” Id. (citing Kelley, Figs. 1—5). The
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Application 13/555,289
Examiner determines that it would have been obvious to one of ordinary
skill in the art to modify the table assembly of Doty by fixing a rubber
support, as taught by Kelley, to the upward facing surface of the substrate
interface “since such a modification would reduce vibration between the two
surfaces as taught by Cox.” Id. (citing Cox, col. 3,11. 51—62). The
Examiner also determines that it would have been obvious to one of ordinary
skill in the art “to have the rubber support fixed to the upward facing surface
of the substrate interface for ffictionally engaging the downward facing
surface of the substrate, since it has been held that a mere reversal of the
essential working parts of a device involves only routine skill in the art.” Id.
Appellants argue that “neither Doty [n]or Kelley teaches or suggests
the combination.” Br. 5. Appellants assert that, in “Doty, it is the leg 18 (or
supporting member 44 with respect to FIG. 11) which is rotated relative to
the table under surface to connect the screw end 32 into the socket 28 during
assembly.” Id. According to Appellants, “Doty never suggests, teaches or
even implies that the leg/support should be prevented from rotating,” and
“there is no problem to be solved by the addition of rubber supports as
allegedly taught by Kelley.” Id. at 6 (underlining omitted).
Appellants’ argument does not identify error in the Examiner’s
rejection because it appears to insist upon an explicit teaching, suggestion, or
motivation in the cited references to establish obviousness. The Supreme
Court has stated that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
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account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. Instead, the relevant inquiry is whether
the Examiner has set forth “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, 550 U.S. at
418).
Here, the Examiner articulates adequate reasoning based on rational
underpinnings as to why it would have been obvious to one of ordinary skill
in the art to modify the table assembly of Doty such that the upward facing
surface of the support interface includes at least one rubber support, as
taught by Kelley. See Final Act. 6 (the Examiner explaining that “such a
modification would reduce vibration between the two surfaces”) (citing Cox,
col. 3,11. 51—62). The Examiner also explains that Doty’s “screw 30 of
member 44 has a spacer 34 used to prevent the top of the leg from marring
the undersurface of the table top when the member is tightly secured against
the table top.” Ans. 3 (citing Doty, Fig. 11); see also Doty, col. 2,11. 46-48.
According to the Examiner:
The prior art of Kelley in combination with Doty reinforces the
concept of preventing the marring of a table structure by
providing a rubber support on the upward facing surface of the
leg that will prevent rotation of the leg by frictionally engaging
the downward facing surface of the tabletop when the leg has
been rotatably secured tightly to the tabletop in a similar manner
to how the spacer 34 of Doty engages the tabletop when the
member is tightly secured against the table top.
Ans. 3. Appellants do not offer any factual evidence or persuasive technical
reasoning to refute the Examiner’s position or explain why the Examiner’s
articulated reasoning is in error.
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Appellants argue that “the addition of rubber supports as suggested by
the Examiner would not be expected to be successful” because this
modification “would prevent the leg in Doty from rotating, which is the
primary purpose of the disclosed invention.” Br. 5 (underlining omitted). In
particular, Appellants assert that “the table of Doty would not be capable of
assembly if the leg/support were prevented from turning, as the recessed
plate 24 is intentionally incapable of being turned.” Id. at 6; see also id. at 7
(Appellants asserting that Doty’s “plate 24 is recessed in all figures and
would be incapable of turning, as it is square in all cases”).
Appellants do not persuade us that a person having ordinary skill in
the art of table assemblies would not expect success in combining Kelley’s
rubber brake pad with the table assembly of Doty. Namely, we see no
reason why adding Kelley’s rubber support to the table assembly of Doty
would necessarily prevent Doty’s leg from rotating relative to the table top
for assembly. Appellants’ reliance on Doty’s figures as providing evidence
that plate 24 is incapable of turning because it is square is unavailing
because Doty discloses that, although “the plates illustrated are substantially
square, they may be rectangular, circular or any desired shape.” Doty, col.
2,11. 24—26 (emphasis added).
Further, Doty’s and Kelley’s teachings both are directed to table
assemblies, and Kelley specifically teaches using a rubber brake pad to
prevent rotational movement of a table top with respect to a base. In
particular, Doty discloses that “plates 24 are provided with threaded sockets
28” and that “[t]he tops of legs 18 are provided with concentrically
positioned screws 30 which are threaded for engagement with sockets 28.”
Id., col. 2,11. 31—35. Doty also discloses that “[t]he relatively broad contact
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surfaces of plates 24 enable the legs to be tightly screwed into sockets 28
and the tops of the legs to be held rigidly against the under surface of the
table top.” Id., col. 2,11. 40-43. Kelley discloses that rubber brake pad 74 is
secured to knurled disc 72, which is threaded onto shaft 70. See Kelley, col.
4,11. 49—53; Figs. 13—15. Kelley also discloses that, “as each knurled disc
72 is rotated downwardly, it forces the respective brake pad 74 into contact
with the upper surface of base board 12 and tightens the same thereon to
prevent movement of drafting board 14 with respect to base board 12.” Id.,
col. 4,11. 54—58.
Given these teachings, the Examiner’s proposed modification of Doty
to add a rubber pad would only prevent Doty’s leg from rotating once leg
screw 30 advances upward in socket 28 enough to sufficiently force the
rubber pad at the top of leg 18 against the underside of the table top such
that friction prevents further rotation. Consequently, a person having
ordinary skill in the art of table assemblies would have had a reasonable
expectation that Kelley’s rubber brake pad could successfully be combined
with the table assembly of Doty to prevent rotation between the table top and
leg once the threaded rod of the leg and the threaded connector are tightened
together. Appellants have not set forth sufficiently persuasive technical
reasoning or evidence to show that one of ordinary skill in the art would
have doubted that Doty’s table assembly, as modified to include a rubber
support, as taught by Kelley, would be capable of assembly.
Appellants add that claim 1 requires “a connector configured to
threadably attach to the connecting rod extended from the substrate interface
through the passage of the substrate after the substrate is positioned onto the
substrate interface” and assert that “the plate 24 of Doty must be placed
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within the recess before the legs are attached.” Br. 8. To the extent that
Appellants’ argument suggests that claim 1 requires threading (i.e., rotation)
of the connector after the substrate contacts the substrate interface, such an
argument is not commensurate with the scope of claim 1. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability). Claim 1 only requires a threaded
attachment between the connector and the connecting rod after placing the
substrate on the substrate interface. The claim does not require that the
connector be threaded (i.e., rotated) after placing the substrate on the
substrate interface. Moreover, as noted above, although Doty illustrates
square plates 24, Doty also discloses, as an alternative, circular plates, which
would not be prevented from rotating after the table top is placed onto the
legs. Doty, col. 2,11. 24—26.
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s determination that the subject matter of claim 1
would have been obvious. Accordingly, we sustain the rejection of claim 1,
and of claims 2, 3, 5, 8—12, 16—18, and 20 falling therewith, under 35 U.S.C.
§ 103(a) as unpatentable over Doty, Kelley, and Cox.
Rejections III and IV
In contesting the rejections of claims 6, 13, and 14 under 35 U.S.C.
§ 103(a), Appellants rely on the arguments, discussed supra, presented for
patentability of independent claim 1, from which these claims depend.
Br. 8. For the reasons discussed above, these arguments fail to apprise us of
error in the rejection of claim 1 and, likewise, fail to apprise us of error in
the rejections of claims 6, 13, and 14. Accordingly, we sustain the rejection
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of claim 6 as unpatentable over Doty, Kelley, Cox, and Park, and the
rejection of claims 13 and 14 as unpatentable over Doty, Kelley, Cox, Park,
and Anderson.
DECISION
The Examiner’s decision rejecting claims 1—3, 5, 6, 8—14, 16—18, and
20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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