Ryan KlackingDownload PDFPatent Trials and Appeals BoardSep 2, 20212020005674 (P.T.A.B. Sep. 2, 2021) 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. 15/215,135 07/20/2016 Ryan Joseph Klacking 67745-001 PUS1 8331 26096 7590 09/02/2021 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER FIGG, TRAVIS M ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 09/02/2021 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN JOSEPH KLACKING Appeal 2020-005674 Application 15/215,135 Technology Center 1700 Before DONNA M. PRAISS, JENNIFER R. GUPTA, and MERRELL C. CASHION, JR., Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 11, 14–16, 19, 20, and 26–30.3 We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed July 20, 2016 (“Spec.”); the Final Office Action dated July 9, 2019 (“Final Act.”); the Appeal Brief filed May 4, 2020 (“Appeal Br.”); the Examiner’s Answer dated May 29, 2020 (“Ans.”), and the Reply Brief filed July 29, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ryan Joseph Klacking. Appeal Br. 1. 3 The Examiner withdrew the rejection of claims 12 and 13 under 35 U.S.C. § 112(b). Ans. 6. These claims were not subject to any prior art rejection. See generally Final Act. Further, the Examiner objected to claims 17 and 18 as dependent upon a rejected base claim, but otherwise allowable. Final Appeal 2020-005674 Application 15/215,135 2 We AFFIRM and designate our affirmance as a new ground of rejection. CLAIMED SUBJECT MATTER The invention is directed to a protective device for fixtures. Spec. ¶ 4. Independent claim 11, reproduced below, illustrates the claimed subject matter: 11. A method of protecting a shelving unit, comprising: attaching a first end of a protective strip to a base of a shelving unit using a first magnet, wherein the base of the shelving unit rests on a floor; unrolling the protective strip, and attaching additional magnets to the base of the shelving unit. Appeal Br. 9 (App. of Claims). REJECTION The Examiner maintains the rejection of claims 11, 14–16, 19, 20, and 26–30 under 35 U.S.C. § 103 as unpatentable over Bruton,4 Brown,5 Cohoon,6 and Cassar.7 Final Act. 3–6; Ans. 3. Act. 6. Therefore, claims 12, 13, 17, and 18 are not before us for review on appeal. 4 Bruton et al., US 5,415,301, issued May 16, 1995. 5 Brown, US 3,672,424, issued June 27, 1972. 6 Cohoon, US 2008/0217505 A1, published Sept. 11, 2008. 7 Cassar, US 2006/0006969 A1, published Jan. 12, 2006. Appeal 2020-005674 Application 15/215,135 3 DISCUSSION We focus our discussion on representative claim 11. The dispositive issue in this appeal is whether the Examiner articulates a sufficient reason with some rational underpinning that would support a conclusion that a person having ordinary skill in the art would have been prompted to combine Bruton, Brown, Cassar, and Cohoon to arrive at the claimed invention—i.e., attaching a protective strip to a base of a shelving unit using magnets. The Examiner finds that Bruton teaches a shelving unit with a base unit having a kick plate (31), but fails to teach a protective strip attached to the kick plate. Final Act. 4 (citing Bruton 3:61–4:22, Fig. 1). To account for this difference, the Examiner relies on Brown. The Examiner finds that Brown teaches a movable partition wall consisting of a plurality of panels where each panel includes a kick plate with a flexible vinyl strip attached “to hide any fastenings and . . . to reduce noise caused by strikes to the kick plate.” Final Act. 4 (citing Brown, code (57), 1:7–17). The Examiner determines that it would have been obvious to one of ordinary skill in the art to fasten a flexible vinyl protective strip to Bruton’s kick plate “to provide improved aesthetics by hiding any fastenings and to serve as an acoustic buffer to reduce noise caused by strikes to the kick plate as taught by Brown.” Final Act. 4. The Examiner further finds that the combined teachings of Bruton and Brown do not suggest the use of magnets to attach the protective strip to the kick plate. Final Act. 4–5. The Examiner relies on the teachings of Cassar and Cohoon to establish the use of magnets as a known technique for Appeal 2020-005674 Application 15/215,135 4 attaching coverings to a surface and determines it would have been obvious to one skilled in the art to use this technique to attach a protective strip to Bruton’s kick plate. Id. at 5–6. The Examiner finds that Cassar teaches a magnetic tape (corresponding to a protective strip) that includes a series of magnets and a flexible strip material at least partially enclosing each surface of each magnet. Final Act. 5; Cassar, code (57). The Examiner finds that Cassar teaches that its magnetic tape prevents damage to, or scratching of, an article attached to the magnet or the metallic surface to which the magnet is attached. Final Act. 5; Cassar ¶¶ 2, 13. The Examiner finds that Cohoon teaches a magnetic device for securing trim, such as baseboards, crown moldings, door jams, which are structurally similar to Bruton’s kick plate, to permanent structures, such as walls and ceilings. Final Act. 5; Cohoon, code (57), ¶ 2. The Examiner finds that Cohoon teaches that its magnetic device keeps the trim securely in place while providing for easy removal and replacement of the trim. Final Act. 5; Cohoon ¶ 21. The Examiner determines that it would have been obvious to one of ordinary skill in the art to use Cassar’s magnetic tape to attach a protective vinyl strip, as disclosed in Brown, to Bruton’s kick plate “to serve as a buffer and improve durability and weatherproofing characteristics without scratching or damaging the shelf or the kick plate.” Final Act. 6 (emphasis added); see also Ans. 10 (explaining that Cohoon was not used to modify the protective strip, but was used as a gap reference to teach that it is known to use magnetically secured strips to protect structures similar to Bruton’s kick plate). Appeal 2020-005674 Application 15/215,135 5 Appellant argues that the Examiner has not provided a sufficient rationale for modifying Bruton’s kick plate to have a vinyl strip based on Brown because Bruton and Brown are non-analogous art. Appeal Br. 6. Appellant argues that Bruton and Brown are not in the same field of endeavor because Bruton is in the field of stationary shelving units and Brown is in the field of movable partition walls. Id. Appellant further argues that Bruton and Brown are also not reasonably pertinent to the problem the inventor was trying to solve, i.e. protecting shelving from floor cleaning equipment. Id. Appellant’s argument that Bruton and Brown are non-analogous art are unpersuasive. “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, 658–59 (Fed. Cir. 1992). With respect to criteria (1), both Bruton and Brown, like the claimed invention, are directed to structures comprising a kick plate. The fact that the structures are different does not take away that they all comprise a kick plate that contacts the floor. Regarding criteria (2), Brown addresses the same problem as Appellant discloses in the Specification: to provide a desirable aesthetic effect on the kick plate. Compare Brown 1:7–17 (disclosing that the buffers as well as the fastenings for the kick plates are untidy in appearance and that an object of the present invention to improve the appearance the partition wall by providing an improved kick plate and buffer construction), with Spec. ¶ 2 (“When these machines bump into fixtures, Appeal 2020-005674 Application 15/215,135 6 such as gondola shelving units, they can leave dents and scratches, which may diminish the aesthetic appeal of the shelving display or other fixture.”). Therefore, the Examiner concludes correctly that Bruton and Brown are analogous and reasonably pertinent to the particular problem the inventor is trying to solve. Given that Bruton and Brown are analogous and reasonably pertinent to the particular problem the inventor is trying to solve, the Examiner has provided a reasonable basis for one skilled in the art to modify Bruton’s kick plate by incorporating a vinyl strip on the kick plate for aesthetic reasons. Ans. 9; see In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Appellant fails to explain adequately why one skilled in the art, using no more than ordinary creativity, would not have been able to arrive at the claimed invention from the teachings of the cited art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). Appellant argues that the Examiner has not provided a sufficient rationale for further modifying Bruton and Brown by using magnets, as taught by Cassar and Cohoon, to secure Brown’s vinyl buffer strip to Bruton’s kick plate. Appeal Br. 7. The Examiner finds Cassar and Cohoon teach the use of magnets as a known technique to attach films/objects to a surface. Final Act. 5. Specifically, Cohoon teaches magnets as an alternative to fasteners. Cohoon ¶ 3. Appellant acknowledges that it is known to attach protective strips to Appeal 2020-005674 Application 15/215,135 7 kick plates using clips (fasteners). Spec. ¶ 3. Further, Brown teaches the use of a pair of ribs 47 which define a channel and are shaped to define a pair of keyways into which a soft vinyl buffer strip 48 is keyed. Brown 3:2–8. Thus, given Cohoon’s disclosure, the Examiner provides a reasonable basis for one skilled in the art to use magnets in place of the prior art fasteners to place a protective strip or covering over a kick plate. Appellant fails to explain adequately why one skilled in the art, using no more than ordinary creativity, would not have been able to use magnets to place a film or covering over a surface and arrive at the claimed invention from the teachings of the cited art. See KSR, 550 U.S. at 421 (2007); Sovish, 769 F.2d at 743. For the reasons above, we sustain the obviousness rejection of claims 11, 14–16, 19, 20, and 26–30, but because our fact finding and reasoning for combining the prior art deviates somewhat from that of the Examiner, we designate such as a new ground of rejection. In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”). CONCLUSION The Examiner’s decision to reject claims 11, 14–16, 19, 20, and 26– 30 is affirmed. Appeal 2020-005674 Application 15/215,135 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed8 Reversed New Ground 11, 14– 16, 19, 20, 26– 30 103 Bruton, Brown Cohoon, Cassar 11, 14–16, 19, 20, 26–30 11, 14– 16, 19, 20, 26– 30 RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the 8 As explained above, our affirmance is designated as a new ground of rejection. Appeal 2020-005674 Application 15/215,135 9 claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation