Ex Parte Crain

Board of Patent Appeals and Interferences

Oct 28, 2009

10852977 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN B. CRAIN
____________

Appeal 2008-002890
Application 10/852,977
Technology Center 3600
____________

Decided: October 28, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephen B. Crain (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 2-4, 6, 9, 12, and 14-17. Appellant canceled
claims 1 and 8. The Examiner withdrew claim 13 from consideration, see
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Final Office Action, page 2, and objected to claims 5, 7, 10, and 11 as being
dependent upon a rejected base claim, see Final Office Action, page 5. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Invention
The claimed invention is directed to a foot assembly for supports that
hold geomatic equipment and accessories such as bipods and tripods. A
common difficulty arises for conventional supports in that their foot
assemblies are not adapted to engage a variety of terrain surfaces, e.g.
concrete, asphalt, frozen ground, ice, loose soil, mud, and sand. Appellant’s
foot assembly provides penetration and sufficient bearing on all these
surfaces.
Claims 9 and 14, reproduced below, are illustrative of the subject
matter on appeal.
9. A foot assembly for a portable support comprising a
foot having a foot tread rigidly connected to the foot for
conjoint movement therewith for use in pressing the foot
downwardly to stabilize the portable support, and a ground
contact extending downwardly from the foot tread for
penetrating an underlying surface, the ground contact being
extensible and retractable along an axis relative to the foot tread
to change the length of extension of the ground contact from the
foot tread.

14. A foot assembly for a portable support comprising a
foot having a foot tread for use in pressing the foot downwardly
into ground on which the portable support rests to stabilize the
portable support, and flat webs extending downwardly from the
foot tread arranged to enter the ground generally edge on and
intersecting each other at an angle for use in guiding the foot
upon insertion.
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The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:1
Thalhammer US 1,650,747 Nov. 29, 1927
Wells US 2,600,713 Jun. 17, 1952
Matson US 3,519,234 Jul. 7, 1970

The Rejections
The following Examiner’s rejections are before us for review:
Claims 2, 9, and 12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Thalhammer.
Claims 2, 3, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wells in view of Thalhammer.
Claims 4, 6, and 14-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wells in view of Thalhammer, as applied to claims 2, 3,
and 9, and further in view of Matson.

Appellant’s Contentions
Appellant contends that Thalhammer and Wells do not disclose, teach,
or suggest a ground contact that is extensible and retractable, as called for in
claim 9. App. Br. 5-8. Appellant further contends that the Examiner erred
in finding that the spike 6 in Wells is threaded, as called for in claim 3. App.
Br. 9. Appellant further contends that the Examiner failed to set forth a
prima facie case of obviousness with respect to the rejection of claims 4, 6,
and 14-17. App. Br. 10-15.

1 An Information Disclosure Statement filed after the Examiner’s Answer
has not been considered.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Issues
In light of Appellant’s contentions, the issues before us are as follows:
Has Appellant shown the Examiner erred in finding that Thalhammer
discloses, teaches, or suggests a ground contact that is extensible and
retractable?
Has Appellant shown the Examiner erred in finding that the spike 6 in
Wells is threaded?
Has Appellant shown the Examiner erred in rejecting claims 4, 6, and
14-17 because the Examiner failed to set forth a prima facie case of
obviousness?

Pertinent Facts
1. The Appellant’s Specification describes that one embodiment of the
claimed ground contact is screw 357. The Specification discloses that
counterbore 362 threadably engages the foot assembly 356 so that
rotation of the screw produces extension from or retraction of the
screw 357 into the counterbore 362. Spec. 42, para. 0137. The
Specification discloses that depending on the terrain surface, the
screw 357 can be selectively extended to increase the depth of
penetration; the greater the extension of the screw 357, a greater depth
of terrain surface penetration occurs, as shown in figures 59 and 60.
Spec. 42-43, para. 0138.
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2. Thalhammer discloses a tripod having a claw point 10 that passes
through bore 9 in point seat 8 and is removably held in place by set
screw 11 in seat 8. Thalhammer, page 1, 79-81; fig. 4.
3. Claw point 10 is not threaded. Thalhammer, passim.
4. Spike 6 of Wells is not threaded. The threads shown in figure 2 are on
the end of support 2. The purpose of these threads is for socket 13 to
engage support 2. Wells, col. 2, ll. 31-32.
5. Matson discloses a pair of downwardly pointed blades 18 that provide
a ground-penetrating spade which serves “as means for preventing
rotation or angular movement of the part as well as means for
increasing the stability of the part.” Matson, col. 2, ll. 39-43.
6. An ordinary and customary meaning of “intersect” is “to pierce or
divide by passing through or across: cross ~ 1: to meet and cross at a
point 2: to share a common area: overlap.” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1999)
7. An ordinary and customary meaning of “coplanar” is “lying or acting
in the same plane.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY
(10th Ed. 1999).

Principles of Law
Claims define the subject matter Appellant regards as the invention.
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). In addition, claims are
given the broadest reasonable construction consistent with the specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appellant has the
burden to precisely define the invention, not the PTO. Id. at 1056.
Appellant always has the opportunity to amend the claims during
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prosecution; a broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
For anticipation, it is not necessary that the reference teach what the
subject application teaches, but only that the claim read on something
disclosed in the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. See Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) noted that the analysis supporting a rejection under 35
U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained with mere
conclusory statements; instead, there must be 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). See also
KSR, 550 U.S. at 418.

Analysis
Anticipation based on Thalhammer
Appellant does not separately argue the rejection of claims 2, 9, and
12 under § 102(b) as anticipated by Thalhammer. As such, we select claim
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9 as the representative claim and claims 2 and 12 will stand or fall with
claim 9.
Appellant argues that Thalhammer’s claw points cannot anticipate the
claimed ground contact because the points are removably held in place by a
set screw. As such, this prohibits the points from satisfying “the ground
contact being extensible and retractable.” Appellant bolsters this position by
further arguing that Thalhammer “teaches that the length of the point can be
changed by replacing the point with another point having a different length.”
App. Br. 6.
Appellant’s argument focuses on a time that the claimed ground
contact is set in position and disregards the actual structure of the ground
contact when comparing the claimed ground contact to Thalhammer’s claw
point. “It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Our
reviewing court’s predecessor stated that “[t]he manner or method in which
[a] machine is to be utilized is not germane to the issue of patentability of
the machine itself.” In re Casey, 370 F.2d 576, 580 (CCPA 1967). 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). While we don’t read the Specification into the claims, we do
read the claims consistent with the Specification, and the Specification
discloses that when the ground contact is a threaded screw, the ground
contact is capable of being extended and retracted. Fact 1 and see Spec.
pages 40-44: ¶¶ 0135-0139. Once in position, the screw 357, in effect, is set
because the threads of the screw 357 interlock with the threads of the
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counterbore 362 that extend through the foot pad 361. Thus, screw 357
(ground contact) is no longer being extended or retracted. Accordingly, “the
ground contact being extensible and retractable” calls for a capability of the
ground contact to be extended or retracted.
Claw point 10 of Thalhammer passes through bore 9 and is removably
held in place by set screw 11 in seat 8. Fact 2. Point 10 (the ground contact)
extends through seat 8 (the foot tread) and once in position is set by set
screw 11. Once in position, like Appellant’s screw 357, point 10 is no
longer being extended or retracted. For anticipation, Thalhammer does not
have to teach what the Appellant teaches with respect to the claimed ground
contact. What is required is only the claimed ground contact limitation read
on something disclosed in Thalhammer. In this case, the claimed ground
contact reads on the point 10 because the point 10 is capable of being
extended, set, and retracted in a manner similar to what Appellant has
disclosed in the Specification as an embodiment of the claimed ground
contact, and the point 10 is readily capable of being extended or retracted in
order to be set into position by set screw.
Accordingly, Appellant has not shown the Examiner erred in finding
that Thalhammer discloses a ground contact that is extensible and
retractable.
Obviousness based on Wells and Thalhammer
The Examiner concludes that Wells and Thalhammer render obvious
claims 2, 3, and 9. Appellant does not separately argue the ground of
rejection of claims 2 and 9 based on Wells and Thalhammer. We select
claim 9 as the representative claim, and claim 2 stands or falls with claim 9.

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Claims 9 and 2
Appellant essentially repeats the argument made against the
anticipation rejection of claim 9 based on Thalhammer and contends that
Wells fails to disclose or suggest a ground contact member that is extensible
and retractable.
Inasmuch as we find Thalhammer alone discloses a ground contact
that is extensible and retractable, it is not necessary for us to further inquire
whether such a limitation reads on something in Wells and further, whether
the combination of Wells and Thalhammer renders obvious the subject
matter of claim 9. A disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103, for anticipation is the
epitome of obviousness. See In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982) and In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974).
Claim 3
Appellant contends that claim 3 requires the ground contact to be a
screw and neither Wells nor Thalhammer teaches or suggests this feature.
Thalhammer’s point 10 is not threaded. Fact 3. Likewise, contrary to the
Examiner’s understanding of Wells, Wells’s spike 6 is not threaded. Fact 4.
Therefore, neither the scope nor the content of Wells or Thalhammer shows
the claimed features within claim 3. Accordingly, we are constrained not to
sustain the Examiner’s rejection of claim 3.
Obviousness based on Wells, Thalhammer, and Matson
Claim 4
Appellant contends that because claim 4 depends from claim 3 and the
Examiner has failed to show where in Wells and Thalhammer a threaded
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ground contact is shown, then the Examiner has erred in concluding claim 4
is obvious. Neither structure in Wells and Thalhammer that the Examiner
has used to satisfy the claimed ground contact is threaded as required by
claim 3. The Examiner does not use Matson to cure this deficiency in Wells
and Thalhammer. Accordingly, the scope and content of Wells,
Thalhammer, and Matson fail to show a threaded ground contact.
Accordingly, we are constrained not to sustain the Examiner’s rejection of
claim 4.
Claim 6
Claim 6 depends from claim 3. We are constrained not to sustain the
Examiner’s rejection of claim 6 for the same reasons given with respect to
claim 3.
Claim 14
Appellant argues claims 14 and 15 as a group. We select claim 14 as
the representative claim.
Appellant contends the Examiner erred in finding that the claimed flat
webs that intersect each other at an angle for use in guiding the foot upon
insertion read on Matson’s blades 18, and the Examiner erred in concluding
that the combination of Wells, Thalhammer, and Matson renders obvious
claim 14. Appellant argues that blades 18 do not intersect each other
because they are coplanar. As a result, to Appellant, the Examiner’s
proposed combination would yield a foot that would laterally move a
substantial amount.
The question is whether the claimed flat webs that intersect each other
at an angle for use in guiding the foot are rendered obvious by Matson’s
blades 18 in combination with the teachings of Thalhammer and Wells.
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Matson discloses a pair of downwardly pointed blades 18. Fact 5. As
Appellant argues, the blades are coplanar. An ordinary and customary
meaning of “coplanar” is “lying or acting in the same plane.” Fact 7. If the
blades 18 lie in the same plane, then they are 180 degrees apart. As such,
Matson’s blades are at an angle. As the Examiner explained, blades 18 meet
at a locus, viz. lower pointed portion 14. The Examiner’s explanation
comports with an ordinary and customary meaning of “intersect.” See Fact
6. As such, Matson’s blades “intersect” as it would be understood by
persons having ordinary skill in the art. Matson teaches that the blades
prevent rotation or angular movement and increase stability. Fact 5.
Because Matson’s blades are spaded (have an increasing width), as the
blades and any associated structure enters the ground, the combination
would not wobble or pivot in a direction that is perpendicular to the surface
of blades 18. As such, Matson’s blades guide the structure they are attached
to upon insertion. As such, Matson’s blades intersect each other at an angle
and guide any structure attached to them upon insertion. Accordingly, the
claimed limitation of the flat webs that intersect each other at an angle and
guide the foot upon insertion reads on Matson’s blades 18.
Accordingly, the combination of Matson with Thalhammer and Wells
renders obvious claim 14. Claim 15 falls with claim 14.
Claim 16
Appellant contends that the combination of Thalhammer, Wells, and
Matson fails to render obvious the flat webs being formed in a cross shape.
The Examiner has not cogently explained how the combination of
Thalhammer, Wells, and Matson renders obvious claim 16. The Examiner
bears the initial burden of factually supporting any prima facie conclusion of
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obviousness. In this case, the Examiner has not provided a factual basis. As
such, we are constrained to reverse the Examiner’s rejection of claim 16.
Claim 17
Appellant contends that the combination of Thalhammer, Wells, and
Matson fails to render obvious a foot assembly having the width of the foot
tread being greater than the height from a top of the foot tread to a distal
surface of the webs. The Examiner has not cogently explained how the
combination of Thalhammer, Wells, and Matson renders obvious this
limitation within claim 17. The Examiner bears the initial burden of
factually supporting any prima facie conclusion of obviousness. In this case,
the Examiner has not provided a factual basis. As such, we are constrained
to reverse the Examiner’s rejection of claim 17.

CONCLUSIONS
Appellant has not shown the Examiner erred in finding that
Thalhammer discloses, teaches, or suggests a ground contact that is
extensible and retractable.
Appellant has shown the Examiner erred in finding that the spike 6 in
Wells is threaded.
Appellant has shown the Examiner erred in rejecting claims 3, 4, 6,
16, and 17, because the Examiner failed to set forth a prima facie case of
obviousness.
Appellant has not shown the Examiner erred in rejecting claims 14
and 15 because the Examiner failed to set forth a prima facie case of
obviousness.

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DECISION
The Examiner’s decision to reject:
claims 2, 9, and 12 under § 102(b) based on Thalhammer is affirmed.
claims 2 and 9 under § 103(a) based on Wells and Thalhammer is
affirmed.
claim 3 under § 103(a) based on Wells and Thalhammer is reversed.
claims 4, 6, 16, and 17 under § 103(a) based on Wells, Thalhammer,
and Matson is reversed.
claims 14 and 15 under § 103(a) based on Wells, Thalhammer, and
Matson 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)(1)(iv) (2007).

AFFIRMED-IN-PART

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