Ryan Klacking

Patent Trials and Appeals Board

Sep 2, 2021

2020005674 (P.T.A.B. Sep. 2, 2021)

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
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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.
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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
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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).
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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,
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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
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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.
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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.
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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)