Ex Parte Ekins

Patent Trial and Appeal Board

Sep 7, 2017

13497772 (P.T.A.B. Sep. 7, 2017)

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.
13/497,772 03/22/2012 William James Ekins 66226-834467 (000700US) 9443
20350 7590 09/11/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
ISLAM, SYED A
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
09/11/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM JAMES EKINS
Appeal 2017-002694
Application 13/497,772
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—30, all pending claims of the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2017-002694
Application 13/497,772
STATEMENT OF THE CASE
According to Appellant, the application relates to an electrical
receptacle having a region for retaining an indicia-bearing body that
identifies a circuit associated with the electrical receptacle. Spec. 2:15—18
and 3:18—21.1 Claims 1 and 15 are independent. Claims 1,5, 7, 8, 16, 18,
and 19 are exemplary and are reproduced below:
1. An electrical system device having an electrical
connector for connecting the electrical system device to one or
more electrical wires of an electrical system, the electrical
system device comprising:
a mountable electrical system device body having first
and second opposite sides and a front side between the first and
second opposite sides, the electrical system device body having
at least one electrical device on the front side and defining:
a first retaining surface on the front side;
a second retaining surface on the front side and
opposite at least a first portion of the first retaining
surface; and
a retaining region between the first and second
retaining surfaces for retaining an indicia-bearing body,
the retaining region being open to at least one of the first
and second opposite sides of the electrical system device
body to receive the indicia-bearing body from the at least
one of the first and second opposite sides of the electrical
system device body;
wherein the first and second retaining surfaces are
integrally formed on respective portions of the electrical system
1 This Decision refers to: (1) Appellant’s Specification filed March 22,
2012 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed May 12,
2015; (3) the Appeal Brief and Supplemental Appeal Brief (“Appeal Br.”)
filed February 16, 2016 and July 5, 2016, respectively; (4) the Examiner’s
Answer (“Ans.”) mailed October 7, 2016 and (5) the Reply Brief (“Reply
Br.”) filed December 7, 2016.
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device body that are inseparable from the electrical system
device body.
5. The electrical system device of claim 1 wherein
the electrical system device body comprises a translucent wall
having the second retaining surface to permit visible indicia on
the indicia-bearing body to be visible on the front side of the
electrical system device body when the indicia-bearing body is
in the retaining region.
7. The electrical system device of claim 5 wherein
the electrical system device body includes a movable portion on
the front side, the movable portion having the first retaining
surface and holding the translucent wall.
8. The electrical system device of claim 1 wherein
the electrical system device body further defines a third
retaining surface on the front side and opposite a second portion
of the first retaining surface for retaining the indicia-bearing
body in the retaining region, wherein the third retaining surface
is integrally formed on a portion of the electrical system device
body that is inseparable from the electrical system device body,
and wherein the third retaining surface is spaced apart from the
second retaining surface to expose indicia on the indicia­
bearing body between the second and third retaining surfaces
when the indicia-bearing body is in the retaining region.
16. The kit of claim 15 wherein the fourth and fifth
retaining surfaces are positioned to cause the first, second, and
third retaining surfaces to retain the indicia-bearing body in the
retaining region in a friction fit.
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18. The kit of claim 17 wherein the indicia-bearing
body further has:
sixth and seventh retaining surfaces opposite the fourth
and fifth retaining surfaces respectively and complementary to
the second and third retaining surfaces respectively to retain the
indicia-bearing body in the retaining region of the electrical
system device body; and
a second indicia-bearing surface between the sixth and
seventh retaining surfaces and opposite the first indicia-bearing
surface.
19. The kit of claim 18 wherein the indicia-bearing
body further defines eighth and ninth retaining surfaces
complementary to the second and third retaining surfaces
respectively, wherein the eighth and ninth retaining surfaces
extend perpendicularly to the third and fourth retaining
surfaces, and wherein the fourth, fifth, eighth, and ninth
retaining surfaces have a common length and surround the first
indicia-bearing surface.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Prior US 3,895,225 July 15, 1975
Noggle US 5,109,619 May 5, 1992
Siemon US 5,620,335 Apr. 15, 1997
Osterbrock et al.
(“Osterbrock”)
US 5,769,653 June 23, 1998
Caveney et al.
(“Caveney”)
US 6,718,674 B2 Apr. 13, 2004
Huang US 6,908,334 B2 June 21, 2005
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REJECTIONS
(1) Claims 1,3, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock and Siemon. Final Act. 3—
5.
(2) Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock, Siemon and Huang. Final
Act. 5—6.
(3) Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock, Siemon and Prior. Final
Act. 6.
(4) Claims 8—13 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock, Siemon and Noggle.
Final Act. 7—8.
(5) Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock, Siemon and Caveney.
Final Act. 8—9.
(6) Claims 14 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Osterbrock, Siemon, Noggle, and
Caveney. Final Act. 9—10.
(7) Claims 15—25, 27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Osterbrock, Siemon and
Caveney. Final Act. 10-15.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1).
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ISSUES
1. Does the Examiner err: (1) in finding the combination of
Osterbrock and Siemon teaches or suggests “wherein the first and second
retaining surfaces are integrally formed on respective portions of the
electrical system device body that are inseparable from the electrical system
device body,” as recited in claim 1; and (2) in combining the teachings of
Osterbrock and Siemon?
2. Does the Examiner err in finding the combination of Osterbrock,
Siemon, and Huang teaches or suggests “a translucent wall,” as recited in
claim 5?
3. Does the Examiner err in finding the combination of Osterbrock,
Siemon and Caveney teaches or suggests “a movable portion on the front
side, the movable portion having the first retaining surface and holding the
translucent wall,” as recited in claim 7?
4. Does the Examiner err in finding the combination of Osterbrock,
Siemon and Caveney teaches or suggests “the fourth and fifth retaining
surfaces,” as recited in claim 16?
5. Does the Examiner err in finding the combination of Osterbrock,
Siemon and Caveney teaches or suggests “the sixth and seventh retaining
surfaces,” as recited in claim 18?
6. Does the Examiner err in finding the combination of Osterbrock,
Siemon and Caveney teaches or suggests “the eighth and ninth retaining
surfaces,” as recited in claim 19?
7. Does the Examiner err in combining the teachings of Osterbrock,
Siemon, Noggle, and Caveney, in the rejection of claim 8, because Noggle
is non-analogous art?
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CONTENTIONS AND DISCUSSION
Issue 1 — claim 1
We disagree with Appellant’s contentions with respect to the § 103
rejection of independent claim 1, and adopt as our own: (1) the Examiner’s
findings and reasoning set forth in the Office Action from which this appeal
is taken (Final Act. 3—5); and (2) the Examiner’s reasoning set forth in the
Examiner’s Answer (Ans. 8—12). We highlight the following points for
emphasis.
The Examiner finds Siemon teaches “wherein the first and second
retaining surfaces are integrally formed on respective portions of the
electrical system device body that are inseparable from the electrical system
device body,” as recited in claim 1. Final Act. 4 (citing Siemon Fig. 2).
Specifically, the Examiner relies on strain relief boot 12 (Final Act. 4),
having “two lips 14 and 16 into which is received a plastic (or other
material) window 18 on which identification of the connector may be
marked.” Siemon 2:59-64.
Appellant argues strain relief boot 12 is not an electrical system
device body, as recited in claim 1. Appeal Br. 16. Appellant, in essence,
argues the Examiner’s interpretation of the term “electrical system device
body,” as recited in claim 1, is unreasonably broad. Appellant, however,
fails to establish the Examiner’s interpretation is not within the broadest
reasonable interpretation consistent with Appellant’s Specification. See In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
broadest reasonable interpretation, the words of the claim must be given
their plain meaning unless the plain meaning is inconsistent with the
Specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The plain
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meaning of a term means the ordinary and customary meaning given by
those of ordinary skill in the art at the time of the invention. In re Suitco
Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). The presumption
that a term is given its ordinary and customary meaning may be rebutted by
Appellant clearly setting forth a different definition of the term in the
Specification. In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Here,
Appellant fails to demonstrate that the term “electrical system device body”
has been clearly defined in Appellant’s Specification in a way that is
inconsistent with the Examiner’s interpretation. Accordingly, we determine
the Examiner’s interpretation to be reasonable and consistent with
Appellant’s Specification.
Next, Appellant argues strain relief boot 12 “is not itself an electrical
system device body as defined in Appellant’s claim 1” (Appeal Br. 16) —
evidently because Figure 2 of Siemon does not teach all of the limitations of
the electrical system device body recited in claim 1. We find Appellant’s
argument unpersuasive because Appellant attacks the references singly for
lacking teachings that the Examiner relies on a combination of references to
show. That is, the Examiner relies on the combination of Osterbrock and
Siemon, rather than Siemon alone, to teach the limitations of the electrical
system device body recited in claim 1. It is well established that one cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). This form of argument is inherently unpersuasive to show
Examiner error. Each reference must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole. Merck, 800 F.2d
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at 1097. Accordingly, we find unpersuasive Appellant’s argument that
strain relief boot 12 does not teach or suggest an electrical system device
body, as recited in claim 1.
Appellant further argues lips 14 and 16 are neither inseparable nor
integrally formed on strain relief boot 12. Appeal Br. 16; see also Ans. 5.
Appellant, however: (i) fails to provide sufficient evidence in support of this
argument and,2 contrary to Appellant’s argument; (ii) Figure 2 of “Siemon
clearly discloses the electrical system device body 12 and the retaining
surface 16 are made integrally and inseparable. One can see the side surface
of body 12 is continuous with the retaining surfaces 14 and 16.” Ans. 5.
Accordingly, we find unpersuasive Appellant’s argument that the cited
combination fails to teach or suggest all of the limitations of claim 1.
Appellant argues Siemon’s detailed description teaches away from
Siemon’s description of prior art strain relief boot 12 of Figure 2. Appeal
Br. 10. Specifically, Appellant argues Siemon’s detailed description teaches
using, for an ID panel, a recessed area in a wall of the strain relief boot
instead of prior art strain relief boot 12 with lips 14 and 16, so the ID panel
does not fall out from either of the two open sides due to vibration,
disconnect motion or other forces to which the connector, upon which boot
12 is mounted, is subjected. Appeal Br. 10-11 (citing Siemon 1:33—40).
Appellant further argues,
[E]ven if a person ordinarily skilled in the art would have
combined Osterbrock with Siemon, the person ordinarily
skilled in the art still would combine Osterbrock with a recess
that is closed on all sides and in “recessed area IN a wall of the
boot” (underlining added, capitalization of “IN” in original) as
2 “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
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shown in Figs. 3, 4, 7, and 9-11 — which is the overall
emphasis of Siemon as a whole — instead of with the strain
relief boot 12 in Fig. 2 that Siemon teaches away from.
Appeal Br. 14.
We find Appellant’s argument unpersuasive of error because
Appellant does not proffer sufficient evidence or argument that Siemon
criticizes, discredits, or otherwise discourages the claimed solution. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Where the teachings of two
or more prior art references conflict, the Examiner must weigh the power of
each reference to suggest solutions to one of ordinary skill in the art,
considering the degree to which one reference might accurately discredit
another. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The teaching
away argument is unpersuasive because there is insufficient evidence that
“the other forces to which the connector is subjected upon which boot 12 is
mounted” (Simeon 1:33—40) would be significant enough in Osterbrock’s
wall mounted receptacle 10 to discourage modifying Osterbrock to include
retaining surfaces 14 and 16. That is, Appellant fails to establish that the
other forces to which Siemon’s connector is subjected, due to movement
from plugging and unplugging the connector, would even apply to
Osterbrock’s stationary wall receptacle 10. “[A] given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, one of ordinary skill in the
art may be motivated to pursue the desirable properties taught by one
reference, even if that means foregoing the benefit taught by another
reference. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also
Winner International Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed.
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Cir. 2000) (“The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullity its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
We determine that benefits taught by Simeon, such as ease of use and
capability to securely attach the indicia bearing body (Final Act. 5),
outweigh the risk of indicia bearing body falling out due to hypothetical
forces or vibrations. Particularly because such forces or vibrations appear
inconsequential in the context of Osterbrock’s wall receptacle 10. We,
therefore, disagree Simeon teaches away from the cited combination.
Appellant further argues the Examiner has reached the legal
conclusion of obviousness through impermissible hindsight reconstruction
because “Osterbrock expresses no desire to replace the sheet 26” (i.e.,
indicia bearing body). Appeal Br. 13.
We are not persuaded by Appellant’s argument because the Examiner
has provided reasoning with rational underpinnings as a reason to combine
Osterbrock with the teachings of Siemon, namely, “so that the indicia
bearing body will be securely attached thus preventing it from falling off the
retaining region.” Final Act. 5; see In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int 7 Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). Appellant fails to show why this reasoning is deficient.
Appellant also fails to provide any evidence demonstrating the Examiner’s
proffered combination would have been “uniquely challenging or difficult
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for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Still further, Osterbrock itself need not express a desire to replace
sheet 26 because the reason to combine need not be explicitly found in any
reference. The Federal Circuit has “[held] that while an analysis of
obviousness always depends on evidence that supports the required Graham
factual findings, it also may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion.” Perfect
Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009); see also Natl Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d
1319, 1337 (Fed. Cir. 2004) (“It has long been the law that the motivation to
combine need not be found in prior art references, but equally can be found
‘in the knowledge generally available to one of ordinary skill in the art.’”
(quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992))). Accordingly,
because the Examiner has provided a reason to combine the cited references
and because that reason need not be explicitly found in any reference, we
find Appellant’s hindsight argument unpersuasive of error.
We, thus, sustain the Examiner’s obviousness rejection of claim 1.
We also sustain the Examiner’s obviousness rejection of independent claim
15, which recites similar limitations and is not argued separately, for similar
reasons. Appeal Br. 8. Dependent claims 2-4, 17, 20-27, and 30, are not
argued separately, and thus, fall with their respective independent claims.
Appeal Br. 17—20.
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Issue 2 — claim 5
The Examiner finds Huang’s transparent plate 3A teaches “a
translucent wall having the second retaining surface,” as recited in claim 5.
Final Act. 5; see also Ans. 6.
Appellant argues “the transparent plate 3 A of Huang is not integrally
formed on a portion of an electrical system device body that is inseparable
from the electrical system device body. Rather, the transparent plate 3 A of
Huang appears to be removable as shown in Fig. 3.” Appeal Br. 17.
We find this argument unpersuasive. Huang discloses “[t]wo sides of
a transparent plate 3 A are similarly formed with a wedge portion 31A for
corresponding with the wedge grooves 131A, respectively.” Huang 3: 52—
55. “The wedge portions 31A of the transparent plate 3A are slid and
wedged at the corresponding wedge grooves 131 A.” Huang 3: 56—58.
Appellant’s Specification has not defined the term “integrally” and therefore
integrally need not mean formed of single piece construction but may also
encompass integrating separate parts. See Scientific Specialties Inc. v.
Thermo Fisher Scientific Inc., 684 F.Supp.2d 1187 (N.D. Cal., Jan. 13,
2010) (“‘[IJntegrally’ [—] refer to pieces joined in such a way as to form a
single unit.”). Thus, Huang’s transparent plate 3A is integrally formed with
housing 1A using wedge portions 31A and wedge grooves 131 A. Moreover,
wedge grooves 131A are inseparable from housing 1A. See Huang Fig. 3.
Accordingly, we disagree with Appellant’s argument because transparent
plate 3 A of Huang is integrally formed on a portion of an electrical system
device body (wedge grooves 131 A) that is inseparable from the electrical
system device body (housing 1 A).
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We, thus, sustain the Examiner’s obviousness rejection of claim 5,
and of claim 6, which is argued with claim 5. See Appeal Br. 17.
Issue 3 — claim 7
The Examiner finds Caveney teaches “the electrical system device
body includes a movable portion on the front side, the movable portion
having the first retaining surface and holding the translucent wall,” as recited
in claim 7. Final Act. 9.
Appellant argues the Examiner’s finding is erroneous because “label
cover 10 and the recess 70 of Caveney are not inseparable and movable” and
so “Caveney fails to disclose or suggest, at least, a movable portion having
retaining surfaces that are integrally formed on respective portions of an
electrical system device body that are inseparable from the electrical system
device body.” Appeal Br. 20 (citing Caveney 6:39-42).
We find Appellant’s arguments persuasive because the Examiner fails
to indicate which portions of Caveney are relied upon to teach the disputed
features. See Final Act. 9; see also Ans. 3—9. Therefore, on this record, we
do not sustain the Examiner’s rejection of claim 7. We also do not sustain
the Examiner’s rejection of claims 14 and 29, which include similar
limitations.
Issue 4 —claim 16
The Examiner finds Caveney teaches “the fourth and fifth retaining
surfaces are positioned to cause the first, second, and third retaining surfaces
to retain the indicia-bearing body in the retaining region in a friction fit,” as
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recited in claim 16. Final Act. 12—13 (citing Caveney (“side edges of the
label body 10”)).
Appellant argues “[t]he side edges of the label cover 10 of Caveney
do not appear to cause a friction fit” and “a person skilled in the art would
not modify the label cover 10 of Caveney to include a frictional fit because a
frictional fit for the label cover 10 of Caveney would be impractical in the
recess 70 of Caveney.” Appeal Br. 22.
We find Appellant’s arguments unpersuasive of error and we adopt as
our own the Examiner’s findings and reasoning with respect to claim 16.
We, thus, sustain the rejection of claim 16.
Issue 5 — claim 18
The Examiner finds Caveney teaches “sixth and seventh retaining
surfaces opposite the fourth and fifth retaining surfaces respectively and
complementary to the second and third retaining surfaces respectively to
retain the indicia-bearing body in the retaining region of the electrical
system device body,” as recited in claim 18. Final Act. 13 (citing Caveney -
the side edges of label body 10).
Appellant argues “[t]he label cover 10 of Caveney does not appear to
include sixth and seventh retaining surfaces as recited in claim 18,” Appeal
Br. 23.
Such a conclusory statement, however, amounting to little more than a
paraphrasing of the claim language and a general denial, is unpersuasive to
rebut the prima facie case produced by the Examiner. Cf. 37 C.F.R.
§ 41.37(c)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
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see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”).
We agree with and adopt the Examiner’s finding that Caveney teaches
sixth and seventh retaining surfaces as recited in claim 18. Final Act. 13.
We, thus, sustain the Examiner’s obviousness rejection of claim 18.
Issue 6-claim 19
The Examiner finds Caveney teaches “the indicia-bearing body
further defines eighth and ninth retaining surfaces complementary to the
second and third retaining surfaces respectively,” as recited in claim 19.
Final Act. 14 (citing Caveney).
Appellant argues “[t]he label cover 10 of Caveney does not appear to
include eighth and ninth retaining surfaces as recited in claim 19,” Appeal
Br. 24.
We find such a conclusory statement, amounting to little more than a
paraphrasing of the claim language and a general denial, unpersuasive to
rebut the prima facie case produced by the Examiner. Cf. 37 C.F.R.
§ 41.37(c)(iv); In re Lovin, 652 F.3d at 1357. We, thus, agree with and
adopt the Examiner’s finding that Caveney teaches eighth and ninth
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retaining surfaces as recited in claim 19 (Final Act. 14) and sustain the
Examiner’s obviousness rejection.
Issue 7-claim 8
The Examiner finds the combination of Osterbrock, Siemon, and
Noggle teaches all of the limitations of claim 8. Final Act. 7—8.
Appellant argues the Examiner’s combination of references is
erroneous because Noggle is non-analogous art. Specifically, Appellant
argues Noggle “is not from the same field of endeavor as the claimed
invention, and is not reasonably pertinent to the problem faced by the
inventor because a person skilled in the art would not refer to a picture frame
when considering any problem faced by the inventor.” Appeal Br. 24—25.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). In re Icon Health & Fitness,
Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d
656, 658 (Fed. Cir. 1992)); In re Klein, 647 F.3d 1343 (Fed. Cir. 2011); In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); Manual of Patent Examining
Procedures (“MPEP”) § 2141.01(a).
Appellant fails to persuasively establish that Noggle is not reasonably
pertinent to the problem faced by the inventor. Although Appellant argues
Noggle “is not reasonably pertinent to the problem faced by the inventor
because a person skilled in the art would not refer to a picture frame when
considering any problem faced by the inventor,” Appellant does not discuss
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the problem addressed by Noggle or faced by the inventor. Appeal Br. 24—
25.
In fact, we agree the problem faced by the inventor and Noggle are
similar; i.e., retaining an indicia-bearing body. Specifically, Noggle
discusses using inside edges 10 of tabs 8 to retain retainer 2, which holds an
indicia-bearing body (i.e., the picture placed in frame 1). See Noggle 3:12 —
4:2 and Fig. 2. Accordingly, we find Noggle is reasonably pertinent to the
problem faced by the inventor. Appellant’s argument is, thus, unpersuasive
of error and so we sustain the rejection of claim 8. We further sustain the
rejection of claims 9—13 and 28, which are argued with claim 8. Appeal
Br. 23.
DECISION
We affirm the Examiner’s decision rejecting claims 1—6, 8—13, and
14-30 under 35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 7, 14, and 29
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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