Gatto-Weising, Gina M.

Patent Trials and Appeals Board

Mar 9, 2020

14701016 - (D) (P.T.A.B. Mar. 9, 2020)

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.
14/701,016 04/30/2015 Gina M Gatto-Weising 460-0002 4510
102662 7590 03/09/2020
Cesari & Reed, L.L.P.
1114 Lost Creek Boulevard
Suite 430
Austin, TX 78746
EXAMINER
MCNURLEN, SCOTT THOMAS
ART UNIT PAPER NUMBER
3734
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
eofficeaction@appcoll.com
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GINA M. GATTO-WEISING
__________

Appeal 2019-004431
Application 14/701,016
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–17 and 20–24. Final Act. 1 (Office
Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons explained below, we do not find error in the Examiner’s rejections
of these claims. Accordingly, we AFFIRM the Examiner’s rejections.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Gina M.
Gatto-Weising.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “an adjustable umbrella
holder.” Spec. ¶ 25. Apparatus claims 1 and 21 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. An umbrella holder comprising:
a receptacle in a form of a cup adapted to receive a handle
of an umbrella, the receptacle including a first ball
joint as a unitary element of the receptacle;
a first clamp mechanism configured to receive the first ball
joint at a proximate end of the first clamp
mechanism and to receive a second ball joint at a
distal end of the first clamp mechanism; and
the second ball joint connected to an attachment
mechanism.

REFERENCES RELIED ON BY THE EXAMINER
Howson US 180,881 Aug. 8, 1876
Giller US 2,710,609 June 14, 1955
Gainey US 4,927,117 May 22, 1990
Wu US 5,310,155 May 10, 1994
Carnevali US 6,581,892 B2 June 24, 2003
Hood US 7,229,059 B1 June 12, 2007
Stallings, Jr. et al. US 7,967,274 B1 June 28, 2011
Dunlop US 8,487,169 B2 July 16, 2013
Woller US 2008/0224017 A1 Sept. 18, 2008
Gatto-Weising2 US 2013/0256355 A1 Oct. 3, 2013

THE REJECTIONS ON APPEAL
Claims 1–4, 7, and 21–23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Stallings, and Giller. Final Act. 2.

2 Because both the Examiner and Appellant refer to this reference as
“Gatto,” we do the same. See Final Act. 2–7; Appeal Br. 9–18.
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Claims 5, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Stallings, Giller, and Hood. Final Act. 4.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gatto, Stallings, Giller, and Wu. Final Act. 4.
Claims 8–10 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Stallings, Giller, and Howson. Final Act. 5.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Stallings, Giller, and Dunlop. Final Act. 6.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gatto, Stallings, Giller, and Carnevali. Final Act. 6.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gatto, Stallings, Giller, and Woller. Final Act. 6.
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gatto, Stallings, Giller, and Gainey. Final Act. 7.
ANALYSIS
The rejection of claims 1–4, 7, and 21–23
as unpatentable over Gatto, Stallings, and Giller
Appellant focuses solely on the limitations of claim 1. See Appeal Br.
5–14. Accordingly, we select claim 1 for review.3 The remaining claims

3 Appellant states, “claims 2–4 and 7 are allowable at least by virtue of
depending from allowable claim 1” and, with respect to these claims,
reiterates arguments made for claim 1. See Appeal Br. 13. Appellant also
states, “[s]imilar to claim 1, the combination of Gatto, Stallings, and Giller
fails to teach or suggest all of the elements of Appellant’s independent claim
21;” “[d]ependent claims 22–24 are allowable at least by virtue of depending
from an allowable claim;” and, with respect to these claims, reiterates
arguments made for claim 1. See Appeal Br. 13.
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(i.e., claims 2–4, 7, and 21–23) stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1 recites an umbrella holder having “a receptacle in a form of a
cup adapted to receive a handle of an umbrella, the receptacle including a
first ball joint as a unitary element of the receptacle.” Appeal Br. 20 (Claims
App.). The Examiner primarily relies on Gatto for disclosing an umbrella
holder having a receptacle (holder 130) and an articulable joint (armature
120), but acknowledges that Gatto does not disclose the joint as a ball joint.4
See Final Act. 2; see also Gatto Fig. 2. The Examiner relies on Giller for
teaching an articulable ball joint. See Final Act. 2; see also Giller Fig. 3.
The Examiner concludes that it would have been obvious to modify the
umbrella holder of Gatto to have a ball joint, as taught by Giller “because
doing so only involves a simple substitution of one known, equivalent
articulating joint for another to obtain predictable results” and also notes that
“the ball joint connection would provide greater freedom of movement for
the joint.”5 Final Act. 2.
Regarding the recitation that the ball joint be “a unitary element of the
receptacle,” the Examiner states,
In addition to Giller’s disclosure of a unitary ball joint formation,
it is also noted that it would have been obvious to have made a
unitary formation, since 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. MPEP [§]
2144.04(V)(B).

4 The Examiner relies on Stallings for teaching a receptacle having a bottom,
which Appellant does not dispute. See Final Act. 2; Appeal Br. 5–14.
5 Appellant acknowledges that Gatto’s device has “limited articulation.”
Appeal Br. 9.
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Final Act. 2–3. Appellant disagrees stating that the combined references do
not disclose “a first ball joint as a unitary element of the receptacle.”
Appeal Br. 9.
To be clear, the Examiner references Giller’s “first ball joint (30) as a
unitary element of the supported object (mirror 32).” Final Act. 2; see also
Giller Fig. 3. Giller is not explicit that ball 30 and mirror 32 are “unitary”
stating only that “[t]he stem 31 of the latter [i.e., ball 30] supports a mirror
32 or other desired device.” Giller 2:48–49. We decline to understand
MPEP § 2144.04(V)(B) as a per se rule 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” because our reviewing court has stated that
neither their precedent, nor that of their predecessor court, should be
construed as formulating any per se rules of obviousness. See In re Ochiai,
71 F.3d 1565, 1571–72 (Fed. Cir. 1995).
However, in an obviousness analysis, we have been instructed to “not
ignore the modifications that one skilled in the art would make to a device
borrowed from the prior art.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007). This follows from the prospect that “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
In the matter before us, we believe the Examiner has the stronger
position. This is because, as stated above, Giller clearly teaches ball 30
having a “stem 31” (Giller 2:48), and the opposite (e.g., distal) end of that
stem 31 is clearly illustrated as being unitary with mirror 32 (see Giller Fig.
3). Further, even presuming the ball 30/stem 31 interface comprise separate
units, Appellant does not explain how it would not have been obvious to
render them unitary so as to render moot any separation force that may be
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encountered (such as by adjusting mirror 32). As such, making ball 30
unitary with stem 31 would provide a predictable result (better stability),
which is well within the creative abilities of a person of ordinary skill in the
art. Further, nothing in the record suggests that the Examiner’s proposed
modification would involve anything more than common sense and/or
routine engineering effort. We thus are not persuaded that Giller fails to
teach or suggest a unitary assembly to one skilled in the art. Likewise, we
are not persuaded by Appellant’s contentions that the combination of
references fails to render obvious the substitution of the recited ball joint for
Gatto’s limited articulating joint. See Final Act. 2.
Appellant next contends that the Examiner applies “impermissible
hindsight in selecting and combining the references” because Giller’s
“[h]ead bands are not an analogous art field to umbrella holders.” Appeal
Br. 10; see also id. at 11. Appellant further argues that the Examiner fails to
establish sufficient motivation to combine the teachings of the references
but, instead, bases the rejection on conclusory statements. See Appeal Br.
11–12.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Clay, 966 F.2d 656, 658–659 (Fed. Cir. 1992). See also In re ICON
Health and Fitness, Inc., 496 F.3d at 1379–80. As to the second criteria, the
Specification discloses “[t]he apparatus 200 may have one or more elements
that are articulable via a ball and socket joint or other means.” Spec. ¶ 25.
Giller addresses a similar topic of articulation stating, “[t]he general object
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of the invention is to provide an instrument supporting head band having
improved characteristics of ease and certainty of adjustment.” Giller 1:17–
19. The Examiner thus responds that Giller’s disclosure is “reasonably
pertinent to the problem of increasing articulation . . . because [Giller]
disclose[s] holding brackets with articulating mounts.” Ans. 11. In view of
the above, we are not persuaded by Appellant’s non-analogous art argument.
Additionally, and as noted above, the Examiner provided a sound
basis for modifying Gatto’s umbrella holder by substituting its joint with
that of Giller. See Final Act. 2. This is because, as expressed by the
Examiner, Giller’s “ball joint connection would provide greater freedom of
movement for the joint” than Gatto’s attachment mechanism. Final Act. 2.
Appellant does not dispute that Giller’s ball joint is a known equivalent of
another joint, such as Gatto’s mechanism, nor does Appellant dispute that
there is a reasonable expectation of success in such a substitution.
Accordingly, we do not agree with Appellant that the Examiner’s
rejection is based on impermissible hindsight or conclusory statements. Nor
are we persuaded that the Examiner failed to provide sufficient motivation to
combine the references. In summation, and based on the record presented,
Appellant does not apprise us of Examiner error. We sustain the Examiner’s
rejection of claims 1–4, 7, and 21–23 as being obvious over Gatto, Stallings,
and Giller.
The rejection of claims 5, 11, and 12
as obvious over Gatto, Stallings, Giller, and Hood
The rejection of claim 6
as obvious over Gatto, Stallings, Giller, and Wu
The rejection of claims 8–10 and 13
as obvious over Gatto, Stallings, Giller, and Howson
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The rejection of claims 14 and 15
as obvious over Gatto, Stallings, Giller, and Dunlop
The rejection of claims 16 and 17
as obvious over Gatto, Stallings, Giller, and Carnevali
The rejection of claim 20
as obvious over Gatto, Stallings, Giller, and Woller
The rejection of claim 24
as obvious over Gatto, Stallings, Giller, and Gainey
Appellant does not provide substantive arguments concerning the
above rejections of claims 5, 6, 8–20, and 24 and, instead, relies on
arguments provided for claim 1. See Appeal Br. 14–18. Because we find no
deficiencies in the Examiner’s rejection of independent claim 1 in view of
Gatto, Stallings, and Giller, we likewise sustain the Examiner’s rejections of
claims 5, 6, 8–20, and 24 as being obvious over these three references in
addition to the cited art listed above.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 7, 21–23 103(a) Gatto, Stallings,
Giller
1–4, 7, 21–23
5, 11, 12 103(a) Gatto, Stallings,
Giller, Hood
5, 11, 12
6 103(a) Gatto, Stallings,
Giller, Wu
6
8–10, 13 103(a) Gatto, Stallings,
Giller, Howson
8–10, 13
14, 15 103(a) Gatto, Stallings,
Giller, Dunlop
14, 15
16, 17 103(a) Gatto, Stallings,
Giller, Carnevali
16, 17
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
20 103(a) Gatto, Stallings,
Giller, Woller
20
24 103(a) Gatto, Stallings,
Giller, Gainey
24
Overall
Outcome
1–17, 20–24
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED