Ex Parte Bunce

Patent Trial and Appeal Board

Dec 20, 2018

15346862 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/346,862 11/09/2016
34082 7590 12/25/2018
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
FIRST NAMED INVENTOR
Terry Bunce
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.
P07747US2 7327
EXAMINER
FORD, GISELE D
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
kconrad@zarleylaw.com
crasmussen@zarleylaw.com
emarty@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRY BUNCE
Appeal2018-004372
Application 15/346,862
Technology Center 3600
Before JAMES P. CAL VE, MICHELLE R. OSINSKI, and
FREDERICK C. LANEY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Terry Bunce ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-12, 14, 15, 17, 19, and 20. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claims 13 and 18 have been cancelled. Amendment After Final Under
37 C.F.R. § 1.116, 3--4 (June 28, 2017). Claim 16 is objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims. Non-Final Act. 11.
Appeal2018-004372
Application 15/346,862
THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 20 are independent and are reproduced below.
1. A portable dwelling assembly comprising:
a base ring, a top ring, and a plurality of wall segments
there between;
a plurality top sleeves that extend outwardly and
downwardly from the top ring that receive the plurality of wall
segments; and
a covering connected to the wall segments; and
the top ring having a pair of top door connectors that angle
outwardly and downwardly from the top ring at an angle that is
different from an angle of the plurality of top sleeves.
12. A portable dwelling assembly comprising:
a top ring having a plurality of top sleeves;
a base ring have a plurality of upwardly extending
connection members, wherein the connection members are
monolithic components of the base ring;
a plurality of wall segments directly connected to and
between the connection members and the plurality of top sleeves;
and
a covering connected to the plurality of wall segments.
20. A portable dwelling assembly comprising:
a top ring;
a base ring;
a plurality of wall segments with top male ends and female
bottom ends connected to the top ring and bottom ring by friction
fit engagement, wherein the top male ends of the plurality of wall
segments is received in a plurality of female ends of the top ring
and the bottom female ends of the plurality of wall segments is
received over a plurality of male ends of the bottom ring such
that when assembled rainwater cannot enter the top ring, base
ring, and the plurality of wall segments; and
a covering connected to the plurality of wall segments.
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Application 15/346,862
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Holbitz
Mitsui
us 3,269,398
US 2006/0213546 Al
THE REJECTIONS
Aug. 30, 1996
Sept. 28, 2006
I. Claims 1-11, 14, 15, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Holbitz and Mitsui. Non-Final Act. 2-
10.
II. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable
over Holbitz. Id. at 10-11. 2
OPINION
Rejection I
Independent Claim 1 and its Dependent Claims
The Examiner finds that Holbitz discloses many of the limitations of
independent claim 1, including, inter alia, a base ring, a top ring, and a
plurality of wall segments therebetween. Final Act. 2-3. The Examiner
acknowledges that Holbitz fails to disclose "a plurality of top sleeves that
extend outwardly and downwardly from the top ring that receive the
plurality of wall segments." Id. at 3. The Examiner finds that Holbitz also
teaches sleeves 2 for connecting wall segments and concludes that it would
have been obvious to use such "sleeves on the top ring component and [have
2 The Examiner clarifies in the Answer that the reference to 35 U.S.C.
§ I02(a)(l) in the heading of the rejection was in error and clearly should
have referred to 35 U.S.C. § 103, considering the substance of the rejection,
which remains unchanged. Ans. 4--5.
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Application 15/346,862
them] extend[] outwardly and downwardly to attach each of the wall
segments for a more simplified means of assembling and disassembling the
temporary structure." Id. 3
Appellant argues that modifying Holbitz to use sleeves on the top ring
component would require "making substantial modifications to the plate
connector 3 that requires six apertures 12 that receive wall segments 1 that
are bent out of their planes" and "would alter the intended operation of the
invention, which is not permitted." Appeal Br. 3. Even assuming arguendo
that modifying Holbitz to use sleeves on the top ring component would
require "substantial modifications" (id.), Appellant does not offer persuasive
argument or factual evidence that such modifications would change the basic
principles under which Holbitz was designed to operate or somehow would
have been beyond the level of ordinary skill in the art. See In re Ratti, 270
F.2d 810,813 (CCPA 1959) (holding, under its particular facts, that the
"suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in [ the primary reference]
as well as a change in the basic principles under which the [primary
reference] construction was designed to operate" ( emphasis added), and that
such combination was therefore nonobvious); and KSR, 550 U.S. at 421 ("A
3 The Examiner also acknowledges that Holbitz fails to disclose "the top
ring having a pair of top door connectors that angle outwardly and
downwardly from the top ring at an angle that is different from an angle of
the plurality of top sleeves," as claimed. Final Act. 3. The Examiner finds
that Mitsui teaches "top door connectors angled downwardly from a top
segment" and concludes that it would have been obvious to modify Holbitz
in accordance with this teaching. Id. Appellant does not challenge this
particular finding or conclusion.
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person of ordinary skill is also a person of ordinary creativity, not an
automaton.").
More particularly, Appellant's argument is premised on an unduly
narrow definition of the principle of operation of Holbitz that includes the
use of the specific plate connector 3 described in column 2 of Holbitz.
Holbitz, 2:35---60. The "intended operation" referred to be Appellant,
however, relates to the "basic principles" under which the prior art device
was designed to operate. Ratti, 270 F.2d at 813. Under Ratti, "a change in
the basic principles" refers to change that is fundamental in scope so as to
relate to scientific or technical principles under which the invention is
designed to operate. We do not find that a "change in basic principles"
occurs by the Examiner's proposed modification. That is, whether the wall
segments are received in the specific plate connector 3 described in column
2 of Holbitz or in a modified top ring component (i.e., a top ring component
incorporating a sleeve connector similar to that shown elsewhere in Holbitz),
as proposed by the Examiner, does not affect the overall principle of
operation which is more broadly directed to "a convex tent ... which can be
easily and quickly erected and collapsed and which is easily transportable in
the collapsed state." Holbitz 1 :24--27; see also Ans. 3 ("The intended
operation of the invention would not be altered as the dome shaped structure
would still be produced, only with a different connection means in one
location that is previously taught at different other locations on the same
structure."). The fact that Holbitz expressly recognizes that "other
anchoring means than the plate connector shown in the drawing may be
considered, as for example, the ends could be tied together" (Holbitz 4: 19-
22) supports that the intended operation is broader than the use of the
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Application 15/346,862
particular plate connector described. Moreover, plate connector 3 includes
two dished plates 7, 8 that are clamped together by nut 10 and bolt 9 to fix
wall members 1 therebetween, essentially in the manner of a sleeve in which
wall members 1 are clamped in a friction fit between dished plates 7, 8, with
spacer ring 11 of a height slightly smaller than the diameter of wall members
1 fixed between plates 7, 8. See id. at 2:35-54, Figs. 4a, 4b.
Appellant also argues that "there is no factual basis in the prior art for
th[ e] [Examiner's] rationale or modification" of a more simplified means of
assembling and disassembling the temporary structure and the Examiner
relies on "improper hindsight." Appeal Br. 3. To the extent Appellant is
insisting on an explicit teaching, suggestion, or motivation in the cited
references for the modification proposed by the Examiner, such an insistence
has been foreclosed by the Supreme Court. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence on teaching,
suggestion, or motivation is incompatible with its precedent concerning
obviousness). Rather, the Court requires that we look to whether the
Examiner has provided "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at
418).
The Examiner reasons that
the sleeve connectors which are taught by Holbitz at other
locations on the structure would be an obvious modification to
the peak of the structure to simplify the assembly process by
replacing the more complicated tightening assembly which is
being utilized with sleeves on the ring which frictionally engage
the wall segments in the same manner as the other wall segment
to wall segment connections.
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Ans. 3. The Examiner also explains that it would be obvious "to utilize a
connector which accommodates six wall segments" "[a]s Holbitz teaches
sleeve connectors which accommodate varying numbers of wall segments
which are bent out of plan due to the structure having a dome shape." Id.
Appellant does not adequately explain why the Examiner's specific
reasoning articulated in support of the conclusion of obviousness lacks
rational underpinnings. Moreover, Appellant does not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392 (CCPA 1971) ("Any judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.").
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the combination of Holbitz and Mitsui
renders obvious the subject matter of independent claim 1. We sustain the
rejection of claim 1, and of claims 2-11, 14, 15, 17, and 19 depending
therefrom, for which Appellant relies on the same arguments and reasoning
as claim 1 (Appeal Br. 3), under 35 U.S.C. § 103 as unpatentable over
Holbitz and Mitsui.
Independent Claim 20
The Examiner finds that Holbitz discloses many of the limitations of
independent claim 20, including, inter alia, a top ring, a base ring, and a
plurality of wall segments. Final Act. 9. The Examiner acknowledges that
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Holbitz "does not disclose [i] the plurality of wall segments with top male
ends and female bottom ends"; "[ii] [ the plurality of wall segments]
connected to the top ring and bottom ring by friction fit engagement";
"[iii] wherein the top male ends of the plurality of wall segments is received
in a plurality of female ends of the top ring"; and "[iv] [wherein] the bottom
female ends of the plurality of wall segments is received over a plurality of
male ends of the bottom ring." Id.
The Examiner finds that Holbitz also teaches sleeves 2 for connecting
wall segments and concludes that it would have been obvious to use such
"sleeves on the top ring component to attach the wall segments for a more
simplified means of assembling and disassembling the temporary structure,
thereby creating a female component on the ring to which the male end of
the wall segment would connect." Id. The Examiner also concludes that
it would have been obvious "to produce the wall segment with a bottom
female end to which a male end of the connector could be connected since
the same friction type connection would be produced, since it has been held
that rearranging parts of an invention involves only routine skill in the art."
Id. (citing In re Japikse, 181 F.2d 1019 (CCPA 1954)). The Examiner
explains that "interchanging connection members' male ends and female
ends would be obvious in that the same friction connecting results would be
produced ... and male/female connecting ends of components are taught
throughout the structure." Ans. 4.
Appellant argues that the Examiner's reliance on Japikse is misplaced
in that the Examiner is "reworking how the elements of Holbitz are
constructed and interact." Reply Br. 4. Appellant argues that "there is no
factual basis why the auxiliary members (base ring) 4 would be modified to
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Application 15/346,862
no longer use cross-connector sleeves 2 that receive the wall segments
therethrough so that wall segments that terminate in a spike can be inserted
into the ground, but instead be changed to male ends that receive a non-
disclosed female end of the wall segment." Appeal Br. 4--5 ( citing Holbitz
2:16-19, 27-29, Figs. 1, 5).
We agree with Appellant that the reliance on Japikse is misplaced. In
Japikse, the claim at issue related to a hydraulic power press. Japikse, 181
F .2d at 1023. There, the prior art disclosed all the structural limitations of
the claimed press except for the claimed position of a starting switch. id.
The court atlirmed the Board's determination that the claimed position of
the starting switch did not patentably distinguish over the prior art press
because shifting the starting switch disclosed by the prior art to a different
position would not modify the operation of the device. Id.
In this case, changing the bottom end of the waH segment from a male
end that extends through a female connector for ultimate anchoring in the
ground to a female end to which a male end of a connector would be
connected (Final Act. 9) changes the operation and/or function of the wall
segment (i.e., by preventing it from anchoring directly into the ground)
( Appeal Br. 4-5) and goes beyond the mere rearrangement of pmis
considered a routine expedient. lv1oreover, the claim itself recites a
paiiicular reason for the claimed wall segments having top male ends and
bottom female ends (i.e., preventing rainwater from entering the top ring,
base ring, and plurality of wall segments when the wall segments are
assembled with the top and bottom rings). Appeal Br. 10 (Claims App.).
This claimed feature further undermines the Examiner's reliance on Japikse
and supports that the Examiner appears to be using improperly a per se rule
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of obviousness in place of a fact-specific analysis. See In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995) (the use ofper seniles is improper in applying
the test for obviousness under 35 U.S.C. § 103(a) since such rules are
inconsistent with the fact-specific analysis of claims and prior art mandated
by section 103).
For this reason, we do not sustain the Examiner's rejection of claim
20 as unpatentable over Holbhz and Mitsui.
Rejection fl
The Examiner finds that Holbitz discloses many of the limitations of
independent claim 12, including, inter alia, a top ring, a base ring having a
plurality of upwardly extending connection members, and a plurality of wall
segments connected to and between the base ring and the top ring. Final
Act. 10. The Examiner acknowledges that Holbitz "does not disclose [i] the
top ring as having a plurality of top sleeves which are directly connecting the
plurality of wall segments, [ii] nor that the connection members [are]
monolithic components of the base ring." Id. The Examiner relies on the
same modification to Holbitz described above in connection with Rejection I
to arrive at a top ring having a plurality of top sleeves. Id. The Examiner
also concludes that it would have been obvious "to produce the base ring and
connection members as a single component so that less components are
required for a more simplified assembly, and since it has been held that
forming in one piece an article which has formerly been formed in two
pieces and put together involves only routine skill in the art." Id. (citing
Howard v. Detroit Stove Works, 150 U.S. 164 (1983)). The Examiner
maintains in the Answer that "producing the ring and connecting component
as one piece rather than multiple pieces is an obvious modification which
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would simplify the assembly process by reducing the number of parts
required, and the same results would be produced." Ans. 5.
Appellant argues that "[ t ]he application of such a per se rule is
improper" and "a factual inquiry must be made and compared to the
invention as a whole." Appeal Br. 6. However, the Examiner does not rely
solely on legal precedent, reasoning that producing a single component
would simplify assembly. Appellant has not adequately explained why the
Examiner's articulated reasoning lacks rational underpinnings. Moreover,
although there are no per se rules of obviousness, the reasoning to support a
conclusion of obviousness may, in appropriate circumstances, properly come
from legal precedent established by prior case law (see, e.g., In re Lilly &
Co., 902 F.2d 943 (Fed. Cir. 1990) and the record in this case supports the
Examiner's conclusion of obviousness. In Detroit Stove Works, the Court
held that it would have been obvious to cast a one-piece grate for a circular
stove having the shape of a prior art grate that was cast in two pieces for use
in burning coal. Detroit Stove Works, 150 U.S. at 169--70. We find the facts
in the instant case, in which the Examiner is proposing to produce the base
ring and connection members as a single component in the same shape as the
described multiple components, to be sufficiently similar to the facts in the
prior legal decision to support the reliance on legal precedent in making a
conclusion of obviousness.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that Holbitz renders obvious the subject matter of
independent claim 12. We sustain the rejection of claim 12 under 35 U.S.C.
§ 103 as unpatentable over Holbitz.
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DECISION
The Examiner's decision to reject claims 1-11, 14, 15, 17, and 19, and
20 under 35 U.S.C. § 103 as unpatentable over Holbitz and Mitsui is
affirmed.
The Examiner's decision to reject claim 20 under 35 U.S.C. § 103 as
unpatentable over Holbitz and Mitsui is reversed.
The Examiner's decision to reject claim 12 under 35 U.S.C. § 103 as
unpatentable over Holbitz 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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