Ex Parte Wilkinson et alDownload PDFPatent Trial and Appeal BoardMay 25, 201713606808 (P.T.A.B. May. 25, 2017) 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. 13/606,808 09/07/2012 Michael Wilkinson BEINT-88663 8294 24201 7590 05/30/2017 FULWIDER PATTON LLP HOWARD HUGHES CENTER 6100 CENTER DRIVE, SUITE 1200 LOS ANGELES, CA 90045 EXAMINER TRAN, HANH VAN ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 05/30/2017 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): docketla @ fulpat. com eOfficeAction @ fulpat. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL WILKINSON and HAYLEY MORTIMER Appeal 2016-004985 Application 13/606,808 Technology Center 3600 Before ROBERT E. NAPPI, ERIC S. FRAHM, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) from a final rejection of claims 1—7, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as B/E Aerospace, Inc. App. Br. 1. Appeal 2016-004985 Application 13/606,808 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns “a bay for an aircraft galley that includes an extractor that retrieves objects from a compartment by slowly bringing the object forward using a free end,” where the “extractor is preferably a flexible sheet that is secured to the compartment and extends generally rearward to the rear wall.” Abstract.2 Exemplary Claim Independent claim 1 exemplifies the subject matter of the claims under consideration and reads as follows: 1. A storage bay comprising: a compartment with an interior volume defined by a floor, a rear wall, a ceiling, and a pair of side walls; a flexible extractor affixed to the floor of the compartment, the extractor comprising a flexible sheet extending rearward from a fixed position between an opening of the compartment and the rear wall, to the rear wall and thereupon to the ceiling, the flexible extractor having a free end extendible out of the compartment; whereupon an object placed on the extractor is carried out of the compartment by extending the free end out of the compartment; and 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed September 7, 2012; “Final Act.” for the Final Office Action, mailed February 26, 2014; “Adv. Act.” for the Advisory Action, mailed May 5, 2014; “App. Br.” for the Appeal Brief, filed July 24, 2014; “Ans.” for the Examiner’s Answer, mailed October 10, 2014; and “Reply Br.” for the Reply Brief, filed December 9, 2014. 2 Appeal 2016-004985 Application 13/606,808 wherein the extractor returns to an original position through shape memory. App. Br. Ex. 1 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability, the Examiner relies on the following prior art: Roussel Bradley Heyderman et al. (“Heyderman”) Guering et al. (“Guering”) Chua et al. (“Chua”) US 1,885,481 US 2,615,772 US 5,088,602 Nov. 1, 1932 Oct. 28, 1952 Feb. 18, 1992 US 2010/0181425 Al July 22, 2010 US 2011/0210203 Al Sept. 1, 2011 The Rejections on Appeal Claims 1^4 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Guering, Roussel, Bradley, and Heyderman. Final Act. 2— 4; Ans. 2-4. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Guering, Roussel, Bradley, Heyderman, and Chua. Final Act. 4—5; Ans. 4. ANAFYSIS We have reviewed the rejections of claims 1—7 in light of Appellants’ arguments that the Examiner erred. For the reasons explained below, we disagree with Appellants’ assertions regarding error by the Examiner. We adopt the Examiner’s findings in the Final Office Action (Final Act. 2—8), 3 Appeal 2016-004985 Application 13/606,808 Advisory Action (Adv. Act. 2—3), and Answer (Ans. 2—7). We add the following to address and emphasize specific findings and arguments. The Rejection of Claims 1—4 and 7 Under 35 U.S.C. § 103(a) The Propriety of Combining Guering with Roussel, Bradley, and Heyderman Appellants argue that the Examiner erred in rejecting claim 1 because (1) Guering concerns “a security system to protect pilots, has little to no actual bearing on the present invention,” and “has nothing in the way of compartment retrieval systems”; (2) Roussel’s purpose “is not to assist with the retrieval of hard to reach items as much as keeping phonographs free from oils and fingerprints”; (3) “[tjhere is simply no overlap in the two references that would suggest to one of ordinary skill in the art that combining these references would have been obvious”; and (4) “[t]he Examiner has not articulated or pointed out any reasoning based on rational underpinnings to support” the conclusion of obviousness. App. Br. 5—7; see Reply Br. 2—5. Appellants’ arguments do not persuade us of Examiner error. The Examiner determines that claim 1 is drawn to a “storage bay comprising a compartment” and that each reference “is also drawn to a ‘storage bay comprising a compartment’.” Final Act. 5. “What matters [in an obviousness analysis] is the objective reach of the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Moreover, the scope of analogous art includes references “from the same field of endeavor” as the invention and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). Here, the field of 4 Appeal 2016-004985 Application 13/606,808 endeavor concerns the arrangement of aircraft galleys, including compartments for storing objects. See, e.g., Spec. Tflf 2, 9—13, Figs. 1—4; see also Reply Br. 2. For instance, the Specification explains that “[t]he galley of an aircraft provides the flight attendants with an area to store, cook, and prepare food and beverages for the crew, as well as other services of comfort and convenience for the passengers” and that “[g] alleys include all of the equipment and utensils to conduct the passenger service, which are arranged in as efficient a manner as possible.” Spec. 12. Guering concerns the arrangement of aircraft galley furniture and constitutes analogous art. See, e.g., Guering || 1, 40-63, Figs. 1—4, Abstract, Title. Further, the Examiner finds that Roussel is reasonably pertinent to a problem confronting Appellants because it concerns “a storage compartment with a retrieval system in order to facilitate removal of an object placed in the compartment.” Ans. 6. Appellants do not discuss the disclosures in Bradley or Heyderman. App. Br. 4—9; Reply Br. 2—6. Like Roussel, however, Bradley and Heyderman are reasonably pertinent to a problem confronting Appellants because they too concern “a storage compartment with a retrieval system in order to facilitate removal of an object placed in the compartment.” See Final Act. 3—4, 6; Ans. 6; see also Bradley Figs. 1—2 (showing retractor belt 11); Heyderman 4:1—12, Figs. 1, 3, 5, 15 (showing pull-tape 76). The Examiner also finds that a person of ordinary skill in the art would have combined Roussel, Bradley, and Heyderman with Guering “in order to facilitate removal of object(s) placed in the compartment.” Ans. 6; see Final Act. 3—4, 6. The Examiner reasons that (1) “obviousness may be established by combining or modifying the teachings of the prior art 5 Appeal 2016-004985 Application 13/606,808 to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art” and (2) “Roussel, Bradley and Heyderman all show that it is well known in the art to provide a storage compartment with a flexible extractor in order to facilitate removal of the object placed in the compartment.” Final Act. 6. Accordingly, the Examiner has articulated reasoning with a rational underpinning for why a person of ordinary skill in the art would have combined the teaching in the other references with Guering. Appellants’ assertion that “[t]he Examiner . . . fails to articulate any reason why one of ordinary skill in the art, to [sic] modify Guering with a flexible extractor of Roussel” overlooks the Examiner’s reasoning. See Reply Br. 5. Appellants contend that combining Roussel with Guering “would severely curtail the amount of useful space available in Guering’s storage compartment” because “the dividers and supports [in Roussel] would add a significant amount of weight that is antithetical to aircraft design.” Reply Br. 5. But the Examiner does not propose combining the multiple dividers, supports, and flexible strips forming Roussel’s entire filing device with Guering. See Final Act. 3, 6; Ans. 3, 6. Rather, the Examiner relies on one of Roussel’s flexible strips. See, e.g., Final Act. 3; Ans. 3. Additionally, “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Appellants assert that “[a] solution such as the one proposed by the Examiner that either significantly reduces the storage capability or adds even a modest amount of weight would be rejected out of hand as impractical and 6 Appeal 2016-004985 Application 13/606,808 too costly to implement.” Reply Br. 2. That assertion does not assist in distinguishing claim 1 from the references because claim 1 does not include limitations concerning “storage capability” or “weight.” See App. Br. Ex. 1 (Claims App.). Based on the Examiner’s citation to In re McLaughlin, 443 F.2d 1392 (CCPA 1971), Appellants argue that “the Examiner appears to concede that it is purely hindsight” to “incorporate Roussel’s phonograph storage system into Guering’s pilot security system.” Reply Br. 3. The Examiner explains, however, that the analysis “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made.” Final Act. 6; Ans. 5. The Examiner finds that “Roussel, Bradley and Heyderman all show that it is well known in the art to provide a storage compartment with a flexible extractor in order to facilitate removal of the object placed in the compartment.” Final Act. 6; Ans. 6. We are persuaded that the claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” See KSR, 550 U.S. at 416. “Wherein the Extractor Returns to an Original Position Through Shape Memory” Appellants argue that the Examiner erred in rejecting claim 1 because “the Roussel disclosure does not expressly state that the phonograph retriever exhibits shape memory” and “the application of inherency is inappropriate here.” App. Br. 8; see Reply Br. 6. In particular, Appellants contend that (1) “[t]he claimed invention recites a ‘flexible sheet’ that exhibits shape memory”; (2) “[t]he Roussel disclosure recites a ‘wire which 7 Appeal 2016-004985 Application 13/606,808 is bent double and soldered or welded together at intervals’”; and (3) nothing “suggests that [the] two structures are ‘substantially identical.’” App. Br. 8. Appellants’ contentions do not persuade us of Examiner error. “[D] tiring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). The Examiner points out that the Specification “states the extractor ‘may be any suitable material that is flexible and that maintains its shape with some resiliency’.” Ans. 6 (quoting Spec. 110). The Examiner determines that under the broadest reasonable interpretation, “Roussel meets the claimed limitation of ‘wherein the extractor returns to an original position through shape memory’, as Roussel discloses” flexible metallic strips in Figures 4 and 5. Ans. 6—7. Appellants note the Examiner’s interpretation of the claim language but do not dispute that interpretation. Reply Br. 6. Further, Roussel explicitly describes the metallic strips in Figures 4 and 5 as “flexible.” Roussel 1:11—13, 1:25—27, 1:44^48; see Ans. 7 (citing Roussel Figs. 4—5). The Examiner finds that a “flexible metallic strip having one end fastened of Roussel is substantially identical to that of the claimed flexible sheet extractor.” Adv. Act. 2—3. Appellants do not address whether the flexible metallic strips in Figures 4 and 5 are “substantially identical” to the claimed flexible sheet extractor. See App. Br. 8—9 (discussing the double-wire embodiment in Roussel Figure 3); Reply Br. 6. Where “the claimed and prior art products are identical or substantially identical, ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product” to overcome an anticipation or obviousness rejection. In re Best, 562 F.2d 8 Appeal 2016-004985 Application 13/606,808 1252, 1255 (CCPA 1977); see In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). Appellants contend that “nothing in the record . . . establishes Roussel’s flat metallic strip exhibits shape memory.” Reply Br. 6. Appellants’ contention does not constitute evidence that the flexible metallic strips in Figures 4 and 5 lack the claimed characteristic. See App. Br. 7—9; Reply Br. 6. Attorney argument “cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Hence, Appellants have not shouldered their burden under Best. Moreover, Appellants admit that “shape memory” materials were “well known in the engineering sciences . . . .” App. Br. 7. Further, in response to Appellants’ request, the Examiner provided prior art teaching “shape memory” flexible bands, i.e., US Patent Application Publication 2001/0037627 A1 to Hausslein (published November 8, 2001) and US Patent Application Publication 2004/0218778 A1 to Weisman (published November 4, 2004). See Adv. Act. 3; Hausslein 112; Weisman 127. In addition, Roussel contemplates repeated use of the flexible metallic strips because “[v]arious plates 11 carry[] serial numbers” allowing a user to assign particular disks to particular compartments. Roussel 1:73—75. To remove a selected disk from its assigned compartment, a user pulls on ring c attached to one end of the flexible metallic strip to lift the selected disk from the filing device. Id. 1:8—16, 1:76—78. To permit a user to more than once remove the selected disk from its assigned compartment, the flexible metallic strip would return to its unextended (original) position in the compartment after being pulled. According to the Specification, that corresponds to exhibiting shape memory. See Spec. 110. Therefore, 9 Appeal 2016-004985 Application 13/606,808 Roussel teaches or suggests the limitation “wherein the extractor returns to an original position through shape memory.” Summary for Independent Claim 1 For the reasons discussed above, Appellants’ arguments have not persuaded us that the Examiner erred in rejecting claim 1 for obviousness based on Guering, Roussel, Bradley, and Heyderman. Hence, we sustain the rejection of claim 1. Dependent Claims 2-4 and 7 In the Appeal Brief, Appellants did not make any separate patentability arguments for dependent claims 2-4 and 7. App. Br. 4—9. In the Reply Brief, however, Appellants address the “transparent” and “translucent” extractors covered by claims 3 and 4, respectively. Reply Br. 5. We decline to consider arguments advanced for the first time in the Reply Brief that do not respond to a shift in the Examiner’s position in the Answer. See 37 C.F.R. § 41.41(b)(2). “The failure to raise all issues and arguments diligently, in a timely fashion, has consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision). “Considering an argument advanced for the first time in a reply brief... is not only unfair to an appellee, but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered.” McBride v. Merrell Dow & Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (citations omitted). The Rejection of Claims 5 and 6 Under 35 U.S.C. § 103(a) In the Appeal Brief, Appellants did not make any separate patentability arguments for dependent claims 5 and 6. App. Br. 4—9. In the Reply Brief, however, Appellants address the “mirror” covered by claims 5 and 6. Reply Br. 6. We again decline to consider arguments advanced for 10 Appeal 2016-004985 Application 13/606,808 the first time in the Reply Brief that do not respond to a shift in the Examiner’s position in the Answer. See 37 C.F.R. § 41.41(b)(2). DECISION We affirm the Examiner’s decision to reject claims 1—7. 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 11 Copy with citationCopy as parenthetical citation