Ex Parte Carvalho et al

Patent Trial and Appeal Board

Jul 29, 2013

11551889 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PEGGY J. CARVALHO and ARTHUR CARVALHO
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Appeal 2011-007308
Application 11/551,889
Technology Center 3600
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Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN,
and BARRY L. GROSSMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 7-
14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

The Invention
Appellants’ claimed invention “generally relates to window covering
mounting hardware.” Spec., para. [0001]. Claim 7 is the sole independent
claim on appeal, and is reproduced below:
7. A hardware assembly for mounting window
coverings, the hardware assembly comprising:
a spring tension rod having a pair of
opposite rod ends and a longitudinal rod axis; and
a pair of mounting brackets, one each
coupled to one of the opposite ends of the spring
tension rod, each of the mounting brackets
including,
a rod interface connected to a
respective one of the opposite ends of the
spring tension rod; and
a bearing surface coupled to the rod
interface and extending radially outward
relative to the rod axis,
wherein the mounting brackets are
rotationally aligned with one another about the rod
axis, and
wherein the bearing surfaces of the
respective mounting brackets face generally
inwardly opposite one another to bear against
opposed surfaces of a window frame; and
wherein the bearing surfaces are biased
inwardly toward each other from the force of the
spring tension rod; and

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wherein each of the bearing surfaces
comprises generally flat portions generally
perpendicular to each other and form compression
bearing surfaces configured to bear against a side
and front surface of the window frame.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 7 and 8 under 35 U.S.C. § 102(b) as anticipated by Speranza
(US 2,225,281; iss. Dec. 17, 1940).
II. Claims 9-14 under 35 U.S.C. § 103(a) as unpatentable over Speranza
and Bell (US 7,424,993 B2; iss. Sep. 16, 2008).

OPINION
I. Anticipation by Speranza
Appellants present a single argument that claims 7 and 81 are not
anticipated by Speranza. Br. 5-8. Specifically, Appellants contend that
Speranza requires the use of a fastener, such as teeth 2 or 24, in biting
engagement with the outer face of the window frame, and does not disclose2
compression surfaces for holding the curtain rod brackets on the outside of a
window frame as claimed.3 Br. 5- 8. Though not explicit, the premise of
Appellants’ argument is that claim 7 prohibits the bearing surfaces from
including fasteners such as teeth. To evaluate this argument, we construe

1 Claim 8 depends from independent claim 7.
2 Appellants also argue that Speranza does not “suggest” bearing surfaces as
claimed (see e.g., Br. 6); however, such a contention is inapplicable to this
anticipation rejection.
3 Presumably, “compression surfaces” and “outside of a window frame” as
recited by Appellants, refers to the claimed “bearing surfaces,” and
“opposed surfaces of a window frame,” respectively.
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claim 7 and then look to the prior art. See Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (the first step in an anticipation analysis
is a proper construction of the claims, and the second step is to compare the
properly-construed claim to the prior art).
Claim 7 is directed to a hardware assembly for mounting window
coverings that includes a spring tension rod having a mounting bracket
coupled to each end. Each mounting bracket includes a bearing surface that
both faces generally inwardly opposite the other bearing surface, and is
configured to bear against a side and front surface of a window frame.
Claim 7 does not explicitly recite that the bearing surfaces must not
include teeth or other forms of fasteners.
The preamble of claim 7 recites a “hardware assembly comprising,”
and the body of claim 7 recites that “each of the bearing surfaces comprises
generally flat portions.” “Comprising” and “comprises” are open-ended
terms that indicate that the presence of additional unnamed elements are
permitted. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.
Cir. 1997) (“Comprising” is a term of art used in claim language which
means that the named elements are essential, but other elements may be
added and still form a construct within the scope of the claim).
Therefore, the text of claim 7 suggests that claim 7 does not call for
the bearing surfaces to be free from fasteners such as teeth. Claim 7 must be
evaluated in light of the Specification as would be interpreted by a person of
ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
The Specification states that the claimed invention relates to a “system
for hanging window coverings without the need for nails, screws or other
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fasteners to be embedded into a wall or window frame.” Spec., para. [0001].
However, “the name of the game is the claim,” and claim 7 does not recite
that the hardware assembly does not include fasteners. See Arlington
Industries, Inc. v. Bridgeport Fittings, Inc., 632 F.3d 1246, 1256 (Fed. Cir.
2011) (quoting Giles S. Rich, The Extent of the Protection and
Interpretation of Claims–American Perspectives, 21 Int'l Rev. Indus. Prop.
& Copyright L. 497, 499, 501 (1990)); see also E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (limitations not explicit or
inherent in the language of a claim cannot be imported from the
specification).
Nor does the Specification provide a lexicographical definition of
bearing surfaces.
An ordinary meaning of the term “bearing” is “that supports.”4
Therefore, an ordinary meaning of a “bearing surface” is a surface that
supports. We discern nothing inconsistent in the Specification with this
common meaning. Consistent with this common meaning, and in parity
with the claim language, the Specification states that bearing surfaces 23B
and 24A “have generally flat portions perpendicular to each other and form
bearing surfaces.” Spec., para. 23; see also Spec., para. [0021] (stating that
the bearing surfaces are “generally configured to attach or bear against” a
side surface of a window opening). A surface may have teeth or other
fasteners and yet still be generally flat and configured to attach or bear
against a side surface of a window opening.

4 “Bearing: that bears, carries, supports, endures, drives, presses, pierces,
stands out, etc.,” adj., def. 1, Oxford English Dictionary (1989) available at
www.OED.com.
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Consequently, we agree with the Examiner that in light of the
Specification, a person of ordinary skill in the art would interpret that the
bearing surfaces of claim 7 may include fasteners, such as teeth. See Ans. 5.
Therefore, Appellants’ contention is unpersuasive because it is not
commensurate in scope with claim 7. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”); see also Ans. 5.
As such, we sustain the rejection of claims 7 and 8.

II. Obviousness over Speranza and Bell5
Claim 9 depends from claim 7, and by virtue of that dependence, calls
for the bearing surfaces of the mounting brackets at each end of the
tensioning rod to face generally inward opposite one another to bear against
opposed surfaces of the window frame.
Appellants present two lines of argument against this rejection. First,
Appellants contend that the Supreme Court has held that “an invention
should not be held obvious over a combination of prior art references unless
there is a suggestion, motivation, or teaching the references can or should be
combined.” Br. 10 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007)). Further, according to Appellants, Speranza and Bell contain no
such teaching, suggestion, or motivation. Id.
Appellants’ contention is a rigid application of the teaching
suggestion or motivation test. This approach was discredited by the
Supreme Court in the very case Appellants cite. See KSR, 550 U.S. at 418

5 Appellants argue claims 9-14 as a group, and we select claim 9 as
representative. Br. 8-11; see 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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(Rejecting the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness). What is required is
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Id. (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
The Examiner concluded that it would have been obvious to modify
Speranza by adding an elbow having a rod interface, as disclosed by Bell, to
prevent flexing or bending, and by adding a fastener opening, also as
disclosed by Bell, in order to stabilize the assembly. Ans. 5. Bell discloses
that elbow 34 includes one or more strengthening ribs or the like to stiffen
the part and prevent flexing or bending beyond a permissible range. Bell,
col. 3, ll. 46-52; fig. 4. Bell also discloses that fastener openings 70, when
utilized with a fastener, further stabilize the installed combination 20. Bell,
col. 6, ll. 5-11; fig. 4. In light of this, the Examiner has articulated reasoning
with a rational underpinning to support the legal conclusion of obviousness.
Appellants’ argument does not cogently address the reasonable rationale
provided by the Examiner.
Second, Appellants contend that Bell’s window covering hardware
applies force outwards, while Sparanza’s adjustable hangers for window
coverings apply force inward, so that if combined, Bell’s force would cancel
out Speranza’s force. Br. 8-11. Based upon this characterization,
Appellants contend that the references teach away from such a combination,
and that such a modification would change the principle of operation of the
invention being modified (Speranza) so that the combination is not prima
facie obvious. Br. 10- 11 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)).
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Appellants mischaracterize the rejection. As detailed supra, the
Examiner proposed to modify Speranza by adding an elbow having a rod
interface, as disclosed by Bell, to prevent flexing or bending, and by adding
a fastener opening, also as disclosed by Bell, in order to stabilize the
assembly. Ans. 5. The proposed combination does not utilize Bell’s
outward force, and therefore, we fail to see how the forces of the proposed
combination would cancel each other out as Appellants contend.
Further, even accepting Appellants’ contention that Speranza attaches
to the window frame through inward force and Bell attaches through
outward force, such alternative approaches do not amount to a teaching
away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior
art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the
'198 application.”). Appellants have not convincingly explained how the
disclosures of Speranza and Bell would have led a person of ordinary skill
away from the approach of the claimed subject matter. See In re Haruna,
249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said to teach
away when a person of ordinary skill, upon reading the reference would be
led in a direction divergent from the path that was taken by the applicant.”).
Regarding a change of the principle of operation of the primary
reference, we cannot agree with Appellants’ application of Ratti to the facts
of the case at hand. In Ratti, the court held that where the proposed
combination would require (1) substantial reconstruction and redesign of the
primary references, and (2) a change in the basic principles under which the
primary reference was designed to operate, that modification was not
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obvious. In re Ratti, 270 F.2d at 811-813. Here, Appellants have not even
alleged that the proposed modification would necessitate a substantial
reconstruction and redesign. Further, the modification proposed by the
Examiner (i.e., adding an elbow and rod interface and a fastener opening)
does not change the basic principle under which Speranza operates. As
such, we sustain the rejection of claims 9-14.

DECISION
We affirm the Examiner’s decision to reject claims 7-14.
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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