D B Industries, LLC

Patent Trials and Appeals Board

Jun 1, 2020

2019006521 (P.T.A.B. Jun. 1, 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.
15/866,684 01/10/2018 Scott C. Casebolt 77872US019 7338
32692 7590 06/01/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
CHIN-SHUE, ALVIN CONSTANTINE
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT C. CASEBOLT

Appeal 2019-006521
Application 15/866,684
Technology Center 3600
____________

Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 4–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 “DB
Industries, LLC. D B Industries is a subsidiary of 3M Company.” Appeal
Br. 2.
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Application 15/866,684

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CLAIMED SUBJECT MATTER
The disclosed subject matter relates to fall protection safety
equipment, and particularly, self-retracting lifelines. Spec. ¶ 2. Apparatus
claims 4, 15, and 21 are independent. Claim 4 is illustrative of the claims on
appeal and is reproduced below.
4. A self-retracting lifeline for fall protection, comprising:
a pawl;
a rotor including a receiving portion configured and
arranged to receive a portion of the pawl, the pawl being
pivotable relative to the rotor between an engaged position and a
disengaged position;
one of the pawl and the rotor having a curved slotted
portion, another of the pawl and the rotor having an elongated
curved protrusion, the elongated curved protrusion at least
partially extending within the curved slotted portion and moving
generally along the curved slotted portion when the pawl moves
between the engaged position and the disengaged position; and
a spring that places a biasing force on the pawl toward the
disengaged position.

Appeal Br. 7 (Claims Appendix).
EVIDENCE
Name Reference Date
Asagiri et al. (“Asagiri”)2 US 6,305,633 B1 Oct. 23, 2001
Wolner et al. (“Wolner”) US 7,281,620 B2 Oct. 16, 2007
Ukita et al. (“Ukita”) US 8,439,291 B2 May 14, 2013

2 The Title page of this reference lists “Katsuki Asagiri” as the first-named
inventor. The Examiner refers to this reference as “Katsuki.” Appellant
refers to this reference as “Asagiri.” We will employ “Asagiri” when
referring to this reference.
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REJECTION3
Claims 4–26 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Wolner in view of either Asagiri or Ukita.
ANALYSIS
Appellant argues independent claims 4, 15, and 21 together. See
Appeal Br. 4–5. We select claim 4 for review, with independent claims 15
and 21 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 4 recites, “one of the pawl and the rotor having a curved slotted
portion, another of the pawl and the rotor having an elongated curved
protrusion.” The Examiner relies on the primary reference to Wolner for
teaching a “slotted portion” and an “elongated protrusion” stating, “[t]he
claimed difference being the slotted portion and the elongated protrusion
being curved.” Final Act. 3 (emphasis added). For this “curved” feature of
both the slotted portion and the elongated protrusion, the Examiner relies on
either Asagiri (“40 and 42A”) or on Ukita (“48 and 50”). Final Act. 3.
Thereafter, the Examiner reasons that one skilled in the art “could have
combined the elements . . . or substituted one known element for another,
using known methods with no change in their respective functions.” Final
Act. 3. The Examiner also finds that it would have been obvious to combine
Wolner with “either [Asagiri] or Ukita, since it would have provided the
predictable results of allowing movement of the protrusion along a defined
curved path.” Final Act. 4.

3 “Examiner notes the Terminal Disclaimers over US Patents 9889322 and
9121462 have been approved, so the [double-patenting rejections are]
moot.” Ans. 10.
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Appellant addresses the reference to Ukita first and seeks to
differentiate the Examiner’s reliance on Ukita because Ukita “fails to
disclose,” (a) “a self-retracting lifeline;” (b) “that a pawl pivots;” (c) “a
spring that exerts a biasing force on a pawl;” and, (d) “the biasing force is
toward the disengaged position of the pawl.” Appeal Br. 4. However, as the
Examiner correctly points out, “Ukita was not used to teach” such
features/limitations. Ans. 5. Instead, as indicated above, “Ukita was used to
teach a centrifugal brake with a pawl and rotor having the claimed elongated
curved protrusion and curved slotted portion, respectively.” Ans. 5
(emphasis added); see also id. at 6. Hence, Appellant’s arguments seeking
to distinguish Ukita based on teachings not relied on by the Examiner are not
a proper response to the Examiner’s rejection, and thus, are not persuasive of
Examiner error.
Appellant also contends, “there is no motivation to combine” and,
further, the fact that “the claimed elements were known” or “could have
been combined,” “does not prove or even suggest that the combination
would be obvious.” Appeal Br. 5. As noted above, the Examiner relied on a
theory of substitution of one known element for another and also a
reasonable expectation of success in undertaking the substitution. See Final
Act. 3; see also Ans. 6. The Supreme Court has held that “a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead,
there must be “an apparent reason to combine the known elements in the
fashion claimed by the patent [or application] at issue.” KSR, 550 U.S. at
418. However, the Supreme Court noted that such a reason exists if the
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claimed invention “‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement.” KSR, 550 U.S. at 417 (quoting
Sakraida v. Ag-Pro, Inc., 425 U.S. 273, 282 (1976)). In this type of
situation, “the combination is obvious.” KSR, 550 U.S. at 417. To be
abundantly clear, the Supreme Court provides guidance that “when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR, 550 U.S. at 416.
In the present situation, and as expressed above, the Examiner relied
on a substitution of “one known element for another, using known methods
with no change in their respective functions.” Final Act. 3. Appellant does
not explain how the substituted curved slot/protrusion arrangement would
have failed to provide “the predictable results of allowing movement of the
protrusion along a defined curved path” as expressed by the Examiner. Final
Act. 4. Accordingly, and based on the above, Appellant’s contention
regarding a lack of “a motivation to combine” (Appeal Br. 5) is not
persuasive of Examiner error.
When addressing the alternate rejection employing the combination of
Wolner and Asagiri, Appellant repeats many of the arguments addressed
above. See Appeal Br. 5. For reasons similar to those already expressed, we
are not persuaded the Examiner erred when relying on that combination. See
Ans. 7–8. Appellant additionally contends that this combination of Wolner
and Asagiri would “yield a device that would not even function” (Appeal Br.
5), but does not further elaborate as to how or why the Examiner’s
substitution discussed above “would not even function.”
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Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of independent claims 4, 15, and 21 as being obvious
over Wolner in view of either Asagiri or Ukita.
Regarding the Examiner’s rejection of the dependent claims,
Appellant states that the Examiner copied their respective additional
limitation “without any indication of where any of the claimed structures are
present in any of the applied prior art.” Appeal Br. 5. In other words, as per
Appellant, “the Final Office Action includes no arguments for non-
patentability of any of the dependent claims.” Appeal Br. 5.
There is merit to these assertions by Appellant. It is not clear from the
Final Office Action as to what the basis might be for the rejection of these
dependent claims, and the Examiner’s Answer is likewise silent on this
point. See Final Act. 4–7; Answer generally. For example, claim 7 recites,
“wherein the portion of the pawl received within the receiving portion is a
circular portion about which the pawl pivots relative to the rotor.” The
Examiner simply references “[t]he pawl and the rotor of claim 4,” without
any mention of any particular teaching in any particular reference (i.e.,
Wolner, Asagiri or Ukita) as teaching this limitation. Final Act. 4. It may
be the Examiner was of the opinion that such teaching is self-evident, but
regardless, it is incumbent upon the Examiner to satisfy the initial procedural
burden of establishing a prima facie rejection by adequately explaining the
shortcomings it perceives in the scope of the claimed subject matter so that
Appellant is properly notified and able to respond. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). In other words, “[t]he examiner cannot sit
mum, leaving the applicant to shoot arrows into the dark hoping to somehow
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hit a secret objection harbored by the examiner.” In re Oetiker, 977 F.2d
1443, 1449 (Fed. Cir. 1992).
Accordingly, we do not sustain the Examiner’s rejection of dependent
claims 5–14, 16–20, and 22–26.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4–26 103(a) Wolner, Asagiri,
Ukita
4, 15, 21 5–14, 16–
20, 22–26
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART