Ex Parte Barkdoll et al

Patent Trial and Appeal Board

Aug 31, 2016

13042685 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/042,685 03/08/2011
53609 7590 09/02/2016
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Patrick J. Barkdoll
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
507683 7416
EXAMINER
KING,ANITAM
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK J. BARKDOLL and THOMAS E. V ALIULIS
Appeal2014-008415
Application 13/042,685
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Patrick J. Barkdoll and Thomas E. Valiulis ("Appellants")1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims
1-22, which are all the pending claims. Appeal Br. 2. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, the real party in interest is Southern
Imperial, Inc. Appeal Br. 2.
Appeal2014-008415
Application 13/042,685
CLAIMED SUBJECT MATTER
Appellants' disclosed invention relates to "retail gondola systems."
Spec. i-f 1. Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A mounting bracket assembly for a gondola upright
comprising[:]
a mounting bracket having a mounting detail and a
substantially flat portion;
a wire hook configured to be attached to the mounting
bracket;
wherein the mounting detail is configured to fit into an
opening in the gondola upright, the mounting detail configured
to secure the mounting bracket to the gondola upright, and
wherein the substantially flat portion is configured to position
the mounting bracket and wire hanger in a desired orientation.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Barnes
Merl
us 4,452,360
us 5,472,103
REJECTIONS
The following rejections are before us for review:
June 5, 1984
Dec. 5, 1995
I. Claims 1-7 and 9-11 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Barnes.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnes.
III. Claims 12-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barnes and Merl.
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Application 13/042,685
ANALYSIS
Rejection I- Claims 1-7 and 9-11 as anticipated by Barnes
Appellants argue against the rejection of claims 1-7 and 9-11 as a
group. See Appeal Br. 5---6. We select claim 1 as representative of the
issues that Appellants present in the appeal of this rejection, with claims 2-7
and 9-11 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that that Barnes discloses all of the limitations as
recited in independent claim 1. Final Act. 2-3; see Ans. 2-3. Specifically,
the Examiner found that Barnes discloses "a mounting bracket (26, or 60)
having a mounting detail and a substantially flat portion (61)[,] a wire hook
(21) configured to be attached to the mounting bracket[, and] wherein the
mounting detail is configured to fit into an opening (15)." Final Act. 2.
Appellants argue that Barnes fails to disclose "wherein the mounting
detail is configured to fit into an opening in the gondola upright." Appeal
Br. 5; see Reply Br. 6. In particular, Appellants assert that "the hanger
assembly disclosed by Barnes is configured to be mounted in a pegboard,"
and "would not mount onto a single gondola upright." Appeal Br. 5; see
Reply Br. 5 (asserting that "gondola uprights do not have the same structural
features as a pegboard"). According to Appellants, "[ u ]nlike the hanger
assembly of Barnes, the mounting bracket assembly of the present invention
is capable of being mounted in a single gondola upright, and is
distinguished, in the Background Section, from conventional hanger
assemblies, such as that disclosed by Barnes." Appeal Br. 5-6. We are not
persuaded by Appellants' argument.
As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well
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Application 13/042,685
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
claim 1 only recites, in relevant part, that "the mounting detail is configured
to fit into an opening in the gondola upright." Appeal Br., Claims. App.
(emphasis added). The claim does not recite any specific shape or
dimensions for the structure of the mounting detail. For that matter, neither
does the claim require any particular structure for "an opening" into which
the mounting detail is configured to fit.
To the extent that Appellants' Specification describes that "gondola
uprights ... typically have a series of rectangular piercings or stamped out
areas" (Spec. i-f 2 (emphasis added)), such disclosure in the Specification
does not impart any structural limitations to either the opening or the
mounting detail. See In re Van Geuns, 988 F.2d 1191, 1184 (Fed. Cir. 1993)
(Although the claims are interpreted in light of the Specification, limitations
from the Specification are not read into the claims.). Moreover, Appellants
do not offer any factual evidence or persuasive technical reasoning to
establish that "an opening in the gondola upright" has any standard shape or
dimensions, into which the recited mounting detail is configured to fit, that
would be recognized in the art.
For these reasons, Appellants' arguments do not apprise us of error in
the Examiner's finding that Barnes anticipates the subject matter of claim 1,
which is supported by a preponderance of the evidence. Accordingly, we
sustain the rejection of independent claim 1, and of claims 2-7 and 9-11
falling therewith, under 35 U.S.C. § 102(b) as anticipated by Barnes.
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Appeal2014-008415
Application 13/042,685
Rejection II- Claim 8 as unpatentable over Barnes
With respect to the rejection of claim 8, which depends from claim 1,
Appellants do not set forth any additional substantive arguments separate
from the arguments discussed supra; instead relying on dependency from
claim 1. See Appeal Br. 6-7. Accordingly, for the same reasons that
Appellants' arguments do not apprise us of error in Rejection I, Appellants
also do not apprise us of error in Rejection II. Thus, we likewise sustain the
rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Barnes.
Rejection III - Claims 12-22 as unpatentable over Barnes and Merl
With respect to the rejection of claims 12-22, Appellants rely on the
same arguments set forth with respect to claims 1-11 in Rejections I and II,
adding only that Merl does not cure the asserted deficiency of Barnes. See
Appeal Br. 7-8. For the same reasons that Appellants' arguments do not
apprise us of error in Rejections I and II, Appellants' arguments also do not
apprise us of error in Rejection III.
We note that Appellants present new arguments for the first time in
the Reply Brief that address the reasoning articulated by the Examiner in the
rejection. See Reply Br. 7 (asserting that "Merl discloses a shelf support
system and there is no reason to think that it could be reasonably combined
with the mounting bracket of Barnes," and that "the Examiner's rationale for
the proposed combination of Barnes and Merl is unreasonable"). Appellants
do not, however, present any showing of good cause for why these new
arguments were not presented in the Appeal Brief. We further note that the
Response to Arguments in the Examiner's Answer merely clarifies the
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Appeal2014-008415
Application 13/042,685
Examiner's findings made with respect to Merl (see Ans. 6), such that
Appellants' new arguments are not responsive to an argument raised or a
position taken in the Examiner's Answer.
We need not consider these new arguments, which are deemed
waived, and we decline to do so here. See 37 C.F.R. § 41.41(b)(2). The new
arguments, which relate to the reasoning articulated by the Examiner in
support of the proposed combination of Barnes and Merl, could have been
presented in the Appeal Brief to address the outstanding rejection of record,
but were not. Here, the absence of any opportunity for the Examiner to
respond to these untimely arguments precludes meaningful appellate review.
Accordingly, we sustain the rejection of claims 12-22 under
35 U.S.C. § 103(a) as being unpatentable over Barnes and Merl.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-7 and 9-11
under 35 U.S.C. § 102(b) as anticipated by Barnes.
We AFFIRM the Examiner's decision rejecting claim 8 under
35 U.S.C. § 103(a) as being unpatentable over Barnes.
We AFFIRM the Examiner's decision rejecting claims 12-22 under
35 U.S.C. § 103(a) as being unpatentable over Barnes and Merl.
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)(l )(iv).
AFFIRMED
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