Ex Parte Brooks

Board of Patent Appeals and Interferences

Aug 21, 2012

11187517 (B.P.A.I. Aug. 21, 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.
11/187,517 07/22/2005 Edward J. Brooks III 102.0020001 8381
7590 08/21/2012
Brooks & Cameron, PLLC
Suite 500
1221 Nicollet Avenue
Minneapolis, MN 55403
EXAMINER
HAWK, NOAH CHANDLER
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
08/21/2012 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 EDWARD J. BROOKS III
____________

Appeal 2010-001057
Application 11/187,517
Technology Center 3600
____________

Before GAY ANN SPAHN, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Edward J. Brooks III (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 31-33, 35-47, 49, and 50
under 35 U.S.C. § 103(a) as unpatentable over Hall (US 5,293,889, issued
Mar. 15, 1994), Samuel (US 5,749,386, issued May 12, 1998), and Morgulis
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(US 4,832,304, issued May 23, 1989). Appellant cancelled claims 1-30, 34,
and 48. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to an outdoor umbrella including “a
post having a lower end for insertion into the ground, and an upper end for
supporting an umbrella top” and “one or more retractable levers integrally
attached along the post which can lock and unlock to aid in inserting the
umbrella into the ground.” Spec. 5, ll. 26-27 and Spec. 6, ll. 2-4. Claims 31,
38, and 44 are independent and claim 31, reproduced below, with emphasis
added, is illustrative of the subject matter on appeal.
31. An umbrella post, comprising:
a single post having a lower region, an
upper region, and an opening suitable to receive an
upper portion of an umbrella top;
a handle attached to the single post at the
upper region, wherein the handle can be locked
with a locking means to fixedly secure the handle
in a first position perpendicular to a length of the
single post; and
a foot pedal attached to the single post at the
lower region, wherein the foot pedal can be locked
with a locking means to fixedly secure the foot
pedal in a first position perpendicular to a length
of the single post, and wherein the handle is spaced
apart from the foot pedal by a predetermined
distance along a length of the single post.

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OPINION
Appellant argues claims 31-33, 35-47, 49, and 50 as a group and we
select independent claim 31 as the representative claim. See App. Br. 22-37;
see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 32, 33, 35-47, 49, and
50 stand or fall with claim 31.
The Examiner finds that Hall substantially discloses the subject matter
of independent claim 31, including a single post 12; however, Hall fails to
disclose “a foot pedal” and “locking means for the handle or foot pedal.”
Ans. 3-4. To cure the deficiencies of Hall, the Examiner turns to Samuel to
teach an umbrella post 14 having a foot pedal 28 attached to the post at a
lower region thereof, and to Morgulis to teach a post 12 having a handle/foot
pedal 20 with locking means 24 for fixedly securing the handle/foot pedal in
a position perpendicular to the post. Id. The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify the
device of Hall “by adding a foot pedal as taught by Samuel in order to allow
the user to apply an inserting force with a foot,” and “to modify the device
of Hall, as modified [by the teachings of Samuel], by adding a locking
means to the handle and foot pedal, as taught by Morgulis, in order to
provide a more secure position and prevent unwanted folding of the handle
or foot pedal during use.” Ans. 4.
Appellant sets forth three arguments, namely, that the cited references
of Hall, Samuel, and Morgulis do not teach, suggest, or render obvious (i) a
single post, (ii) a foot pedal attached to the single post, and (iii) a locking
means to fixedly secure the foot pedal. App. Br. 23, 29, and 35. With
respect to Appellant’s first argument that Hall “does not teach ‘a single
post,’” Appellant characterizes Hall’s umbrella 10 as having a shaft made of
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three separate subparts, i.e., a lower shaft 12, an intermediate shaft 17, and
an upper shaft 20. App. Br. 23-24 (citing to Hall, col. 3, ll. 19-29 and 38-
50). Appellant alleges that Hall desires a composite umbrella shaft of three
subparts for the purpose of separability to be disassembled and arranged
within a container bag for ease of transport and storage and thus, Hall
teaches away from using a single post for the shaft of the umbrella, because
“using a single post for the shaft of umbrella 10 would destroy the
functionality achieved by using a composite shaft that is separable into
separate subparts.” App. Br. 24-25.
We are not persuaded by Appellant’s first argument. Appellant’s
Figure 1 depicts an umbrella 100 including a single post 106 having an
upper end 107 with an opening (not shown) that is capable of receiving a
portion 104 of an umbrella top 102, 104. See Spec. 7, l. 27 to Spec. 8, l. 22
and Fig. 1. The configuration of Appellant’s umbrella is similar to Hall’s
umbrella 10 which includes a single post 12 having an upper end with an
opening (lower shaft socket 13) that is capable of receiving a portion 17 of
an umbrella top 21, 20, 17. As the configuration of Hall’s umbrella
corresponds to the configuration of Appellant’s umbrella, we are not
persuaded by Appellant’s argument that Hall does not teach a single post.
Appellant also argues that neither Samuel nor Morgulis teach a single post
(App. Br. 25-28); however, we note that the Examiner did not rely upon
either Samuel or Morgulis to teach this, but rather relied upon Hall to teach a
single post (Ans. 3-4). Appellant also argues that Hall teaches away from
the use of a single post, but in order to “teach away” a reference must
“criticize, discredit, or otherwise discourage the solution claimed….” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Since Hall does not criticize,
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discredit, or otherwise discourage the use a single post and for the other
reasons discussed supra, we are not persuaded by Appellant’s first argument
of error in the Examiner’s rejection.
Turning to Appellant’s second argument that Samuel “does not teach
‘a foot pedal attached to the single post’” (App. Br. 29), we note that a
determination of obviousness involves two steps, namely, a first step of
construing the claim, a question of law, and a second step of comparing the
construed claim to the prior art. See Key Pharmaceuticals v. Hercon Labs.
Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted). The Patent
and Trademark Office applies the broadest reasonable meaning of the claim
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in applicant’s specification. See In re Morris, 127 F.3d 1048,
1054-55 (Fed. Cir. 1997). Since Appellant’s Specification does not assign
or suggest a particular definition to the claim term “attached,” it is
appropriate to consult and general purpose dictionary for guidance in
determining the ordinary and customary meaning of “attached” as viewed by
a person of ordinary skill in the art. See Comaper Corp. v. Antec, Inc., 596
F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary and customary meaning of
the verb “attach” is “to fasten or affix; join; connect.”1 A person of ordinary
skill in the art would understand that the claim terminology of “attached” or
“connected” does not require a direct attachment or connection. See

1 Dictionary.com Unabridged, Based on the Random House Dictionary,
© Random House, Inc. 2012, accessed at http://dictionary.reference.com/
browse/attach?s=t (last viewed August 8, 2012).
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Ullstrand v. Coons, 147 F.2d 698, 700 (CCPA 1945) (The accepted
definition of the term “connected” is restricted to neither a direct nor an
indirect connection, and it is therefore applicable to an indirect connection.).
In addition, based on the ordinary and customary meaning of the term
“attached”, we understand that objects which are “attached” can also be
“removably secured.” Contra App. Br. 32. In other words, the terms
“removably secured” and “attached” are not mutually exclusive.
In applying the properly construed claim term “attached,” we note that
Samuel discloses an umbrella having a single post 14 and a spike assembly
26 attached thereto via a snap in mounting portion 29 which is received in
the lower free end portion of the post 14. Samuel, col. 2, ll. 30-33 and Figs.
1, 9, and 10. The spike assembly 26 includes a ground spike 27 with a
pivotally attached foot pedal 28. Samuel, col. 2, ll. 31-33 and Figs. 1, 4, and
5. The indirect attachment or connection of Samuel’s foot pedal 28 to the
post 14 by way of the snap-in mounting portion 29 of the ground spike 27
being attached or connected to the post satisfies the claim language of “a
foot pedal attached to a single post.” Appellant also argues that Morgulis
does not teach a foot pedal (App. Br. 32-34); however, we note that the
Examiner did not rely upon Morgulis to teach this, but rather relied upon
Samuel to teach a foot pedal (Ans. 3-4). Thus, we are not persuaded by
Appellant’s second argument of error in the Examiner’s rejection.
Finally, we are not persuaded by Appellant’s third argument that
Morgulis “does not teach ‘a locking means to fixedly secure the foot pedal in
a first position perpendicular to a length of the single post.’” App. Br. 36.
Morgulis teaches a post 12 having arms 20, 22, which can be locked in a
position perpendicular to the length of the post by bracing members 24, 26,
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respectively. See Morgulis, col. 2, l. 55 through col. 3, l. 34 and Figs. 2 and
3. Although Morgulis discloses that the arms 20, 22 may be used to rotate
the post 12 into the ground (see Morgulis, col. 3, ll. 1-4 and col. 4, ll. 12-23),
the arms 20, 22 may also be stepped on by the user’s foot to drive the post
12 into the ground. Therefore, Appellant’s third argument that Morgulis’s
arms 20, 22 are not foot pedals is not persuasive because the word “foot” in
the claim phrase foot pedal is a recitation of intended use and “a statement of
intended use… does not qualify or distinguish the structural apparatus
claimed over the reference.” In re Sinex, 309 F.2d 488, 492 (CCPA 1962).
Appellant also argues that Samuel does not teach a locking means fixedly
securing the foot pedal in a first position perpendicular to a length of the
single post (App. Br. 36); however, we note that the Examiner did not rely
upon Samuel to teach this, but rather relied upon Morgulis to teach a locking
means for a foot pedal and handles (Ans. 4). Accordingly, we are not
persuaded by Appellant’s third argument of error in the Examiner’s
rejection.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 31, and claims 32, 33, 35-47, 49, and 50 which stand or
fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Hall, Samuel,
and Morgulis.

DECISION
We affirm the Examiner’s decision to reject claims 31-33, 35-47, 49,
and 50.
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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

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