Ex Parte Finkelstein

Patent Trials and Appeals Board

Mar 27, 2019

14566318 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/566,318 12/10/2014
49840 7590 03/29/2019
Atlanta Baker Donelson
Intellectual Property Department
Monarch Plaza, Suite 1600
3414 Peachtree Rd.
A1LANTA, GA 30326
FIRST NAMED INVENTOR
Burl M Finkelstein
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.
2170415-000168 6621
EXAMINER
0 BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
tdavis@bdbc.com
ipdocketing@bakerdonelson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURL M FINKELSTEIN
Appeal2017-009719
Application 14/566,318
Technology Center 3600
Before: DANIELS. SONG, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-9 under 35 U.S.C. § 103 as being unpatentable over Loikitz (US
4,030,161, iss. June 21, 1977) and Foltz (US 3,475,784, iss. Nov. 4, 1969).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-009719
Application 14/566,318
CLAIMED SUBJECT MATTER
The claims are directed to a hinge. Claims 1, 4, and 7 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A hinge for pivotally coupling a door to a door jamb, the hinge
compnsmg,
a mounting flange assembly having a mounting plate
adapted to be mounted to the door jamb and a flange extending
outwardly from said mounting plate, said mounting plate having
at least one mounting hole,
a cam assembly coupled to said mounting flange, said cam
assembly including a tension rod, a cam coupled to said tension
rod and a cam follower coupled to said tension rod and
configured to mate with said cam, and
a strap assembly pivotally coupled to said mounting flange
assembly through said cam assembly, said strap assembly
including a strap having at least one strap mounting hole and a
coupling end having a tension rod channel therein configured to
receive a portion of said tension rod, said strap having a door
mounting surface, said coupling end having a front side facing
away from said mounting plate and a rear side facing towards
said mounting plate when the hinge is in a door closed position,
said coupling end having a set screw channel extending from said
rear side to said tension rod channel and a set screw moveably
mounted within said set screw channel for movement into
locking engagement with said tension rod portion positioned
within said coupling end, said set screw channel and said set
screw being oriented generally normal to said strap door
mounting surface,
whereby when the door and hinge are in a closed position
the set screw is inaccessible to prevent tampering, yet when the
door and hinge are in an open position the set screw is accessible.
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Application 14/566,318
OPINION
The Examiner finds Loikitz's self-closing spring hinge teaches all of
the claimed features of the hinge, except for a set screw and the related
limitations. Final Act. 3. The Examiner finds that Foltz teaches a hinge
with a set screw "inaccessible to prevent tampering" when closed. Id. The
Examiner determines that "[i]t would have been obvious ... to apply
[Foltz's] set screw and corresponding set screw channel in the position and
manner as taught ... to engage the tension rod portion and the hinge
assembly of [Loikitz] in order to prevent unauthorized disassembly of the
hinge." Id. at 3--4.
Appellant first argues that the rejection is improper because Foltz
teaches a pin and not a tension rod. Appeal Br. 6. However, the Examiner
relies on Loikitz's tension rod not Foltz's pin for the claimed tension rod.
Id. at 3. (The Examiner relies on Loikitz for all basic features of the hinge.)
Id. Thus, Appellant's argument does not address the rejection as set forth by
the Examiner. See also Ans. 8-9.
Similarly, Appellant argues that because in Foltz the set screw
engages the finial and not the pin, Foltz's hinge design is different from that
claimed, and thus the set screw channel is not in the claimed position and the
set screw would not be in the correct position when the hinge is closed.
Appeal Br. 6-7. The rejection relies on Loikitz's hinge and not Foltz's.
Thus, Appellant's argument does not address the rejection as set forth by the
Examiner. Further, Appellant's arguments are against Foltz individually,
where the rejection is based on the combination of Loikitz and Foltz. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
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Appeal2017-009719
Application 14/566,318
F.2d 413,425 (CCPA 1981) (citations omitted) (explaining that obviousness
must be considered in light of "what the combined teachings of the
references would have suggested to those of ordinary skill in the art"). For
this reason, we are not informed of error in the Examiner's rejection.
Appellant does state that "[a]s the primary reference of Loikitz does
not include a set screw hole or set screw, and the Foltz reference is brought
in to show a set screw, the combination of these two references can only
show the configuration of the set screw hole and set screw shown by Foltz."
Appeal Br. 8. However, there is no requirement that Foltz's set screw and
screw hole configuration must be bodily incorporated into Loikitz as implied
by Appellant. See In re Keller, 642 F.2d at 425.
Appellant also argues that "the obviousness of an invention cannot be
established by combining the teaching of the prior art absent some teaching,
suggestion or incentive supporting the combination." Appeal Br. 8. This is
not required. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,407
(reversing the requirement for a motivation or suggestion to combine the
prior art to be found in the prior art). As per the Supreme Court's test in
KSR, the Examiner has provided a reason for the combination with a
"rational underpinning to support the legal conclusion of obviousness." Id.
at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see Final Act.
3--4. Appellant does not address the Examiner's stated reason to combine
the teachings of Loikitz and Foltz.
Appellant also discusses hindsight and argues "that it is only through
such hindsight that the Applicant's invention of a two fastener type or
strength capabilities can be [gleaned] from the cited references." Appeal Br.
9. As the claimed invention does not relate to either "a two fastener type or
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Appeal2017-009719
Application 14/566,318
strength capabilities" it is unclear what was gleaned from Appellant's
invention and not the prior art. Thus, we are not informed of error in the
Examiner's rejection of claim 1.
Appellant argues the patentability of independent claims 4 and 7 by
repeating the same arguments addressed above. We are not informed of
Examiner error for the same reasons previously discussed. Appellant does
not separately argue the rejection of any of the dependent claims.
DECISION
The Examiner's rejection of claims 1-9 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
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