11501967 (B.P.A.I. Jun. 12, 2012)

Ex Parte Atkins

Board of Patent Appeals and InterferencesJun 12, 2012

11501967 (B.P.A.I. Jun. 12, 2012)

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. 11/501,967 08/10/2006 Norman E. Atkins NEA 06133 8134 7590 06/12/2012 JAMES RAY & ASSOCIATES 2640 PITCAIRN ROAD MONROEVILLE, PA 15146 EXAMINER WILKENS, JANET MARIE ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 06/12/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte NORMAN E. ATKINS __________ Appeal 2010-007206 Application 11/501,967 Technology Center 3600 ___________ Before JAMESON LEE, SALLY GARDNER LANE, and SALLY C. MEDLEY, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The Applied Prior Art Miller ‘058 U.S. 5,429,058 Jul. 4, 1995 Miller ‘022 U.S. 1,072,022 Sep. 2, 1913 O’Brien U.S. 4,033,652 Jul. 5, 1977 Sinclair U.S. 4,892,334 Jan. 9, 1990 Rekow U.S. 4,884,702 Dec. 5, 1989 Appeal No. 2010-007206 Application 11/501,967 2 The Rejections on Appeal 1. Claims 1, 3-9, and 11-15 were finally rejected under 35 U.S.C. § 103 as obvious over Miller ‘058, Miller ‘022, and O’Brien. 2. Claim 2 was finally rejected under 35 U.S.C. § 103 as obvious over Miller ‘058, Miller ‘022, O’Brien, and Sinclair. 3. Claims10 was finally rejected under 35 U.S.C. § 103 as obvious over Miller ‘058, Miller ‘022, O’Brien, and Rekow. The Invention Claims 1 and 11 are the only independent claims. According to claim 1, the invention is directed to a work desk for use on lifting equipment, including at least one hanger means disposed on the backwall of the desk to enable the desk to be hung on an upright member having a substantially horizontal surface engageable by the hanger means, so that the desk is to be hung on and supported by the lifting equipment. The lifting equipment, however, is not itself a part of the subject matter of claim 1. Claim 11 recites the combination of a work desk and lifting equipment. The work desk has the same features as that of claim 1, but claim 11 does not recite the upright member having a substantially horizontal surface engageable by the hanger means. Instead, it is recited that the hanger means is for enabling the work desk to be hung on and supported by the lifting equipment. Figures 1 and 2 of Appellant’s specification are reproduced below. Figure 1 illustrates a front perspective view of an embodiment of the claimed work desk, and Figure 2 shows a rear perspective view of the work desk embodiment illustrated in Figure 1. App App of pa work (Spe desk equip equip on w eal No. 20 lication 11 Referenc per 12 pla desk 10 i c. 6:5-10). 10 to enab ment 100 Accordin ment such hich to pla 10-007206 /501,967 e numeral ced on the s intended Two han le the wo . (Spec. 7 g to the A as a lift t ce paper a 100 ident flat hard w to be mou gers 30 are rk desk to :13-19). ppellant, p ruck did n nd to writ 3 ifies liftin riting sur nted on ac located o be hung on rior to the ot have an e while th g equipme face 14. ( tual lifting n the back an uprigh present in y convenie e operator nt drawn o Spec. 6:13 equipme wall 24 of t member vention, l nt platfor of the veh n a sheet -15). The nt 100. the work of lifting ifting m surface icle is still App App on th to th infor was equip and t A. O’Br O’Br the i inner 2:68 eal No. 20 lication 11 e vehicle. e operator mation ab costly bec ment to w Thus, Ap he specifi The Obv and 11-1 The con ien disclo ien is repr nner surfac O’Brien surface o ). O’Brien 10-007206 /501,967 (Spec. 1: who must out the art ause of a l rite and re pellant pr c configur iousness R 5 over Mi cept of a d ses such a oduced be e of a cor specifical f the corri also desc 17-24). Th stop and g icles being oss in prod cord infor oposes to ation of su DIS ejection o ller ‘058, M esk attach desk and i low, whic ridor door ly refers to dor door 2 ribes that i 4 e lack of o to anoth moved by uction tim mation. ( hang a wo ch a work CUSSION f Claims iller ‘022 able to a v ts title is “ h illustrate for a cabin the article 1of the cab ts desk is a writing s er place to the liftin e when th Spec. 2:1- rk desk to desk is rec 1, 3-9, , and O’B ertical surf BOOK DE s a “book et (O’Bri 10 attach inet as a “ especially urface wa record re g equipme e operator 5). lifting equ ited in the rien ace is not SK.” Fig desk” susp en 2:67 to ed to the v book desk adapted fo s irritating quired nt, and leaves the ipment, claims. novel. ure 3 of ended on 3:2): ertical .”(O’Brie r use in n App App hosp 5:22 wall durin whic any h 33). with eal No. 20 lication 11 itals wher -30). O’B s, benches Miller ‘0 g surgery h illustrate ardware o The base Beneath t an incline 10-007206 /501,967 e it can be rien descri , and other 58 disclos . (Miller 3 s an explo f the hear 10 includ he lower s d upper su mounted o bes that de upright su es a suppo :28-30). F ded, persp t-lung mac es a lower helf are wh rface 48 is 5 n doors o vices of th pport surf rt base for igure 1 of ective vie hine supp shelf and eels 40. ( provided f service s is type ar aces. (O’B a heart-lu Miller is w of the su orted there an upper s Miller 3:6 for placem tations. (O e also mou rien 1:6- ng machin reproduce pport bas on: helf. (Mi 6). A plat ent on the ’Brien ntable on 8). e usable d below, e without ller 3:32- form 44 lower Appeal No. 2010-007206 Application 11/501,967 6 shelf to support the pumps of a heart-lung machine. (Miller 4:12-13; 9:11- 12). The inclined surface is for tilting the pumps to provide better access to and visibility of the pumps. (Miller 9:12-14; Abstract:12-15). The Examiner determined that the raised platform 44 in Miller is or constitutes a work desk. (Answer 3:13). The Appellant has not challenged that determination. Thus, for purposes of this appeal, it is a desk. Furthermore, the wedge-shaped configuration of Miller’s desk, with an inclined upper surface, is similar to that of O’Brien’s desk. It is not disputed that platform 44 of Miller ‘058 meets all requirements of the work desk of claim 1 except that it does not have a hanger means on the backwall to enable it to be hung on an upright member of a lifting equipment, which upright member includes at least one substantially horizontally disposed surface engageable by the hanger means. We reiterate here for emphasis that the subject matter of claim 1 is only the work desk and does not include the lifting equipment or components thereof. To support a motivation for combining teachings, there must be an articulated reasoning with rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this case, we conclude that there is. As discussed above, O’Brien suggests attaching a desk to an upright support surface such as a door or a wall, and one with ordinary skill in the art would have recognized the similarity in the wedge-shaped configuration of the desks of Miller ‘058 and O’Brien. The Examiner correctly determined that it would have been obvious to one with ordinary skill in the art to take work desk 44 of Miller ‘058 out of its role as a component in the base supporting a heart-lung machine, and attach it to a vertical surface. App App hook to a v struc hook fenc whic teach unde App conc expl reaso App with autom eal No. 20 lication 11 The Exa s attached ertical su ture. In th s on its re e. (Miller h illustrate For the f ings of O rpinnings ellant’s ow lusion of o ained abov ning with ellant’s ow ordinary s aton. KS 10-007206 /501,967 miner also to the bac pport struc at connec ar surface ‘022 1:49- s a trash c oregoing r ’Brien, Mi and articu n disclosu bviousnes e, the obv rational u n disclosu kill in the R Int’l Co reasonabl kside of an ture, if on tion, Mille to the upp 52). Figu an 1 attach easons, th ller ‘058, a lated reaso re. We al s is merely iousness c nderpinnin re. In tha art posses . v. Telefle 7 y cited Mi article m e desires t r ‘022 disc er edge of re 1 of Mi ed by hoo e rejection nd Miller ning, and so reject A concluso onclusion gs withou t connectio ses ordinar x Inc., 550 ller ‘022 f ay be used o mount th loses a tra a vertical ller ‘022 is ks 2 to a f of claim ‘022 is ba not on hin ppellant’s ry withou is based o t hindsigh n, we note y creativi U.S. 398 or its teach to mount e article to sh can atta surface su reproduc ence: 1 over the sed on rat dsight in l argument t a rational n articulate t gleaned s further th ty and is n , 421 (200 ing that the article a vertica chable by ch as a ed below, combined ional ight of that the basis. As d olely from at one ot an 7). l Appeal No. 2010-007206 Application 11/501,967 8 Appellant asserts (Brief 6:4-13) that both Miller ‘058 and Miller ‘022 constitute nonanalogous art to Appellant’s invention and therefore cannot be applied in a proper rejection. Two separate tests define the scope of analogous prior art: (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 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). If the reference satisfies either test, it is not nonanalogous. Id.; see also In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986). The entirety of Appellant’s argument is reproduced below (Brief 6:4- 13): D. Non-Analogous Art The instant application is for an operator work desk to be suspended from a machine for moving storage articles and is not analogous to the garbage can and heart lung machine cited. KSR International v. Teleflex, 550 U.S. 398; 127 S.Ct. 1727; 167 L.Ed 2d 705 (2007). The cited art is not in the inventors field of invention or reasonably pertinent to cause to commend itself to the inventor. Accordingly the prior art references Miller ‘022 and Miller ‘058 are not analogous art. The argument is mere conclusory and contains no meaningful explanation. It reflects only a conclusion and fails to persuade. Also, it incorrectly characterizes Miller ‘058 as being directed to a heart-lung machine, when Miller ‘058 is actually directed to the support base for a heart-lung machine, which support base further includes a desk 44. The Appeal No. 2010-007206 Application 11/501,967 9 argument is also misplaced with regard to Miller ‘022, which is relied on by the Examiner only to show that it was known to use hooks to attach an article to a vertical surface. Appellant fails to explain why Miller ‘022 would not have been reasonably pertinent to Appellant’s problem of attaching a desk to a lifting machine. Moreover, argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Langer, 503 F.2d 1380, 1395 (CCPA 1974); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For the foregoing reasons, we are unpersuaded by Appellant’s argument that Miller ‘058 and Miller ‘022 constitute nonanalogous art. Appellant argues that Miller ‘022 teaches away from Appellant’s invention because the trash can of Miller ‘022 requires a split upper surface designed to open for depositing trash. The argument is misplaced and rejected. The Examiner relied on Miller ‘022 only for the suggestion to one with ordinary skill that if an article is to be attached to a vertical surface, hooks may be employed on the rear side of the article for attaching the article to the vertical surface. (Answer 6:13-14). That the article in Miller ‘022 is a trash can is inconsequential. Miller ‘022 does not indicate that its hooks are only usable for hanging a trash can and nothing else. Appellant argues that Miller ‘058 teaches away from Appellant’s invention because it is described in Miller ‘058 that desk 44 is fixed to the lower shelf 12 by detents 46 and mating holes 42. The argument is misplaced and rejected. Miller ‘058 does not describe or indicate that desk 44 is not useable for any purpose other than the application disclosed therein, i.e., as a support platform for pumps in a heart-lung machine. One with ordinary skill in the art possesses ordinary creativity and is not an Appeal No. 2010-007206 Application 11/501,967 10 automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421. It would have been recognized by one with ordinary skill in the art that if desk 44 were hung on a vertical surface, then detents 46 would not be necessary. In any event, the presence of detents 46 would not preclude hanging of the element. Appellant argues that combining the heart-lung machine cart of Miller ‘058 with the split top trash can of Miller ‘022 would render the devices of those references inoperable and therefore there is no reason to combine them. (Brief 4:15-22). According to the Appellant, the trash can of Miller ‘022 requires an openable top and would be inoperative if the top surface cannot be opened like in the case of the desk of Miller ‘058. Also according to the Appellant, the desk 44 of Miller ‘058 requires detents to fix it to a support base and would be inoperative in the disclosed support base if it is not affixed at its bottom to a support base. The argument is misplaced and without merit. In the underlying rationale supporting the rejection, desk 44 of Miller ‘058 is removed and separated from its role in the environment of a cart carrying a heart-lung machine and the Examiner is not attempting to form a different cart for a heart-lung machine. Similarly, in the underlying rationale supporting the rejection, the Examiner is not proposing to form a different trash can but merely relying on the suggestion that hooks may be used to attach an article to a vertical surface. The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned, as they are a part of the literature and are relevant for all they contain. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983). A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect. Appeal No. 2010-007206 Application 11/501,967 11 EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). Appellant’s argument mistakenly assumes that any combination including Miller ‘058 must end up with a cart for a heart-lung machine, and that any combination including Miller ‘022 must still end up with a trash can. Claims 3-9 depend directly or indirectly from independent claim 1. Appellant has not argued them separately from the merits of claim 1. Claim 11 is independent, recites the desk in combination with a lifting equipment, and requires the desk to be hung on and supported by the lifting equipment. Claim 12 depends on claim 11 and further requires the lifting equipment to be a stock picker. With regard to independent claim 11 and claim 12, Appellant does not make any separate argument from that presented for claim 1 and already discussed above except to allege that the Examiner relied on improper official notice. (Brief 5:20 to 6:3). According to Appellant (Brief 5:20 to 6:3), the Examiner took official notice (1) that lifting equipment such as stock pickers are well known, and (2) that the trash can of Miller ‘022 and the book desk of O’Brien are suspendable by hooks on such lifting equipment. With regard to (1), we see nothing wrong with the Examiner’s taking of official notice. Appellant does not assert that lifting equipment such as a stock picker is not well known and has not explained why the taking of such official notice is improper. With regard to (2), Appellant’s argument is misplaced because the Examiner has not officially noticed that the trash can of Miller ‘022 and the book desk of O’Brien are suspendable by hooks on such lifting equipment. The Examiner has not officially noticed those facts. Moreover, in actuality, the Examiner has not found those facts, either by way of official notice or otherwise. What the Examiner determined is that desk 44 of Miller ‘058, if Appeal No. 2010-007206 Application 11/501,967 12 made to include hooks on its back surface, would be suspendable on a vertical surface of lifting equipment such as a stock picker. (Answer 4:6-8). That determination is reasonable, as the Patent and Trademark Office is not equipped to prove any assertion by way of conducting experiments. In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 139 (Fed. Cir. 1986). It is incumbent upon Appellant to come forward with evidence to show that desk 44 of Miller ‘058 could not be suspended by hooks on a vertical surface of lifting equipment such as a stock picker. The Appellant has not only not come forward with such evidence but also not even made the assertion that desk 44 of Miller ‘058 is not suspendable by hooks on a vertical surface of lifting equipment such as a stock picker. Claims 13-15 depend directly or indirectly from claim 11. Appellant has not separately argued the merits of claims 13-15 apart from claim 11. For the foregoing reasons, we are not persuaded of error in the obviousness rejection of claims 1, 3-9, and 11-15, over Miller ‘058, Miller ‘022, and O’Brien. B. The Obviousness Rejection of Claim 2 over Miller ‘058, Miller ‘022, O’Brien, and Sinclair Claim 2 depends on claim 1. Appellant has not argued the merits of claim 2 separate from that of claim 1. We are not persuaded of error in the obviousness rejection of claim 2. Appeal No. 2010-007206 Application 11/501,967 13 C. The Obviousness Rejection of Claim 10 over Miller ‘058, Miller ‘022, O’Brien, and Rekow Claim 10 depends indirectly on claim 1 through claims 8 and 7. Appellant has not argued the merits of claim 10 separate from that of claim 1. We are not persuaded of error in the obviousness rejection of claim 10. CONCLUSION The rejection of claims 1, 3-9, and 11-15 under 35 U.S.C. § 103 as obvious over Miller ‘058, Miller ‘022, and O’Brien is affirmed. The rejection of claim 2 under 35 U.S.C. § 103 as obvious over Miller ‘058, Miller ‘022, O’Brien, and Sinclair is affirmed. The rejection of claim 10 under 35 U.S.C. § 103 as obvious over Miller ‘058, is affirmed. 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