Ex Parte Frost

Patent Trial and Appeal Board

Feb 28, 2019

15095731 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/095,731 04/11/2016
1059 7590 03/04/2019
BERESKIN & PARR LLP/S.E.N.C.R.L., s.r.l.
40 KING STREET WEST
40th Floor
TORONTO, ON MSH 3Y2
CANADA
FIRST NAMED INVENTOR
Hubert Samuel Frost
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.
20778-P34685US02 3211
EXAMINER
HAWK, NOAH CHANDLER
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
ipprocessingcentre@bereskinparr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUBERT SAMUEL FROST
Appeal2018-006996
Application 15/095,731
Technology Center 3600
Before ANNETTE R. REIMERS, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Hubert Samuel Frost ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a): (1) claims
8-10 as unpatentable over Wilk (US 5,305,771, issued Apr. 26, 1994) and
Yakubisin (US 5,842,493, issued Dec. 1, 1998); and (2) claims 11-17 as
unpatentable over Walker (US 6,053,188, issued Apr. 25, 2000) and
Yakubisin. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Examiner indicates that "[c]laims 1-7, 18 and 19 are allowed." See Final
Office Action 7 ("Final Act."), dated June 29, 2017.
Appeal2018-006996
Application 15/095,731
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to an umbrella, an umbrella frame
and a rib for an umbrella, and is applicable to all types of umbrellas, parasols
and the like, including collapsible and non-collapsible variants." Spec. ,r 1,
Figs. 12A-12E.
Claims 8 and 11, 2 the independent claims on appeal, are
representative of the claimed subject matter and recite:
8. A frame for an umbrella, the frame comprising a main
shaft, a plurality of ribs pivotally connected to the main shaft
each rib being of adjustable length, and each rib including a pair
of outer rib elements, that are flexible, whereby in use, the outer
rib elements in a closed configuration, extend generally straight
and aligned with the main shaft, and in an open configuration,
are flexed so that outer ends thereof extend generally
circumferentially, wherein the length of each rib is adjustable by
an amount to compensate for an apparent change in radius caused
by flexing of the outer rib elements, wherein each rib has at least
two components pivotally connected, so as to be movable
between open and closed configurations that accommodate the
flexing of the outer rib elements, wherein one of the components
is pivotally connected adjacent to the top of the main shaft, and
the other component is pivotally connected to said one
component and is connected to the outer rib elements of the
respective rib, whereby pivotal movement between the two
components changes the effective length of the respective rib, the
two components extending outwardly in the open configuration
and being adjacent one another in the closed configuration.
11. A foldable umbrella comprising: a canopy; a main shaft; a
plurality of ribs pivotally attached to the main shaft, each rib
comprising at least two rib elements pivotally attached to one
another, to enable the umbrella to fold to a compact closed
configuration, and each rib further including a pair of outer rib
2 See Appeal Brief, Claims Appendix 22, 23 ("Appeal Br., Claims App."),
filed Apr. 13, 2018.
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Application 15/095,731
elements, that extend generally straight and aligned with the
main shaft in the closed configuration, and in an open
configuration have outer ends extending generally
circumferentially with respect to the canopy, wherein inner ends
of pairs of outer rib elements are connected a middle rib element
and each middle rib element is pivotally connected to an inner
rib element and pivotally connected to one connecting rib, with
each inner rib element pivotally connected to main shaft, the
inner rib element and the one connecting rib being arranged to
effect pivotal movement between the inner and middle rib
elements that changes the effective length of the respective rib,
the inner and middle rib elements extending outwardly in the
open configuration and being adjacent one another in the
compact closed configuration, and wherein an outer end of each
outer rib element is connected to the outer end of the outer rib
elements of an adjacent rib[.]
ANALYSIS
Obviousness over Wilk and Yakubisin
Claims 8-10
Appellant does not offer arguments in favor of dependent claims 9
and 10 separate from those presented for independent claim 8. See Appeal
Br. 15-17. 3 We select claim 8 as the representative claim, and claims 9 and
10 stand or fall with claim 8. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant contends "Wilk discloses a structure that will not function
or that lacks real utility. There is no evidence that Wilk has ever been put
into practice." Appeal Br. 16; see also Reply Br. 24 ("[T]he Wilk device
fundamentally is inoperative and lacks utility.").
3 Appeal Brief ("Appeal Br."), filed Feb. 27, 2018.
4 Reply Brief ("Reply Br."), filed June 27, 2018.
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Application 15/095,731
Appellant's argument is unpersuasive as prior art references are
presumed enabled. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed.
Cir. 2012). In addition, Appellant offers only attorney argument regarding
the Wilk reference. Appeal Br. 16; see also Reply Br. 2; In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.") ( citation omitted).
Appellant contends Wilk "'teach[ es] away' from the structure of the
present invention." Appeal Br. 17. In the Answer, the Examiner correctly
points out that Appellant "has presented no evidence to support this
allegation or that the Wilk disclosure provides any reason not to modify the
ribs of the device." Ans. 3. 5 Prior art does not teach away from claimed
subject matter merely by disclosing a different solution unless the prior art
also criticizes, discredits, or otherwise discourages the solution claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not
point to any disclosure in Wilk that criticizes, discredits, or otherwise
discourages the use of multi-part ribs. 6 In addition, in response to
Appellant's argument, the Examiner "asserts that merely providing Wilk
with collapsible ribs as taught by Yak[ u ]bisin would provide the features of
Wilk as well as a smaller folded size for the umbrella." Ans. 3. Appellant
does not apprise us of Examiner error. See Reply Br. 2--4.
Appellant contends that "to import into the Wilk structure the multi[ -
]part ribs of Y akubisin would destroy or modify the purported function of
Wilk." Appeal Br. 17; see also Reply Br. 3 ("[T]he function of Wilk would
5 Examiner's Answer ("Ans."), dated Apr. 27, 2018.
6 Appellant does not direct us to any discussion in Wilk that requires ribs 18
to be "unitary and of constant length." See Appeal Br. 17.
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be destroyed, by the proposed combination of Wilk and Yakubisin."). 7 In
the Answer, the Examiner correctly points out that "[ A ]ppellant has failed to
present any evidence of how the Wilk device would be destroyed or non-
functional with a rib structure such as that taught by Yakubisin." Ans. 3.
Appellant contends "Wilk provides no way to accommodate the
effective change in length of the ribs, as they flex [and] Yakubisin on the
other hand has no reason to consider or even identify this problem, as it is
concerned with entirely different umbrella structure." Appeal Br. 17. Thus,
according to Appellant, "it is not seen how it is in any sense obvious to
combine the two prior art references, where neither of them has even
identified the problem identified by the present invention." Appeal Br. 1 7;
see also Reply Br. 3 ("Neither disclosure identifies the problem the present
inventor has identified, and as such necessarily fails to provide, teach or
suggest any solution to the problem."); id. (The Examiner "fails to identify
correctly the problem addressed by the present invention and the solution
provided by the present invention.").
Appellant's arguments are not directed to the rejection as set forth by
the Examiner and are against Wilk and Yakubisin individually, where the
rejection is based on the combined teachings of Wilk and Yakubisin. See
Final Act. 2--4. Moreover, it is well established that the reason to modify the
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggests the combination to
7 Appellant does not apprise us as to how "Wilk would be transformed from
an inoperative mechanism to an operative and functional mechanism" upon
being combined with Y akubisin. See Reply Br. 3.
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achieve the same advantage or result discovered by an applicant. In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006).
In the Answer, the Examiner clarifies that "the Wilk device includes
flexible rib elements that function exactly as [Appellant's] device and
Yakubisin teaches a rib which folds in exactly the same manner as the
[A]ppellant's device." Ans. 3. The Examiner reasons "[w]hen combined,
the Wilk device, as modified by Y akubisin, will open and collapse in the
same manner as [Appellant's] device and will therefore accomplish the same
functionality of effectively changing the length of the rib as it flexes." Ans.
3--4. Appellant does not apprise us of Examiner error. See Reply Br. 2--4.
Additionally, the Examiner provides an "objective reason" to combine
the teachings of Wilk and Yakubisin, namely, "to provide an umbrella that
folds into a more compact size when not in use." Ans. 4; see also Final Act.
4; Appeal Br. 17. The Examiner's findings are reasonable and supported by
a preponderance of the evidence, and the Examiner's conclusions therefrom
are based on rational underpinnings. Appellant does not provide persuasive
evidence or argument apprising us of Examiner error.
To the extent Appellant is arguing the references must be capable of
bodily incorporation in order to combine their teachings, 8 the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413,425 (CCPA 1981). "Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." Keller, 642 F.2d at 425. That Wilk and Yakubisin may teach
8 See, e.g., Reply Brief 3 ("There is no teaching or suggestion in Y akubisin
that the ends of the ribs should somehow be curved or connected.").
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additional structure not pertinent to the claimed subject matter at issue does
not prevent the Examiner from relying on each reference for specific
teachings. Appellant does not provide persuasive evidence or argument
apprising us of error in the Examiner's proposed reasoning for the combined
teachings of Wilk and Y akubisin.
Furthermore, Appellant does not provide any evidence or argument
sufficient to show that the proposed modifications would have been beyond
the level of ordinary skill in the art. Neither does Appellant provide any
persuasive evidence or argument sufficient to show that the proposed
modifications would have been more than a predictable use of the prior art
elements according to their established functions. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). "If a person of ordinary skill can implement
a predictable variation, § 103 likely bars its patentability." Id. at 417.
We also are not persuaded that the Examiner engages in
impermissible hindsight in combining Wilk and Y akubisin. See Appeal Br.
17. The Examiner cites specific teachings in the references themselves, not
Appellant's disclosure, in support of the Examiner's articulated reasoning
for combining the references as proposed in the rejection. See Final Act. 2-
4; see also Ans. 3-5; In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir.
2016) ( viewing an argument regarding "impermissible hindsight" as
"essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references" and holding that this
argument was addressed by showing that a proper motivation to combine
the references in fact existed) ..
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In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 8 as unpatentable over
Wilk and Yakubisin. Accordingly, we sustain the Examiner's rejection of
claim 8. We further sustain the rejection of claims 9 and 10, which fall with
claim 8.
Obviousness over Walker and Yakubisin
Claims 11, 12, 16, and 17
Appellant does not offer arguments in favor of dependent claims 12,
16, and 17 separate from those presented for independent claim 11. See
Appeal Br. 18-19. We select claim 11 as the representative claim, and
claims 12, 16, and 17 stand or fall with claim 11. 37 C.F.R.
§ 4I.37(c)(l)(iv). We address claims 13-15 separately below.
Appellant contends that "Walker provides a different rib structure,
where a sliding motion is provided .... One cannot introduce the rib
mechanism of Y akubisin into the umbrella frame of Walker without
destroying the function and characteristics of the Walker frame." Appeal Br.
19; see also Reply Br. 4 ("Walker provides a wholly different rib structure,
and there is no reason to combine the different mechanism from Y akubisin
and no simple way to do this."). In the Answer, the Examiner correctly
points out that "[ A ]ppellant has presented no evidence or argument to
support the allegation that the combined device would be non-functional or
that the combination would destroy the Walker device." Ans. 5.
Similar to the discussion above regarding Wilk and Y akubisin,
Appellant is arguing against Walker and Yakubisin individually, where the
rejection is based on the combined teachings of Walker and Yakubisin. See
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Final Act. 4---6. Moreover, the Examiner provides a reason with rational
underpinnings to combine the teachings of Walker and Yakubisin, namely,
"to provide an umbrella that folds into a more compact size when not in
use." Ans. 5; see also Final Act. 6. The Examiner's findings are sound and
supported by a preponderance of the evidence, and the Examiner's
conclusions therefrom are based on rational underpinnings. Appellant does
not provide persuasive evidence or argument apprising us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 11 as unpatentable over
Walker and Yakubisin. Accordingly, we sustain the Examiner's rejection of
claim 11. We further sustain the rejection of claims 12, 16, and 17, which
fall with claim 11.
Claim 13
Appellant contends that "[t]he Examiner cites Walker for teaching
connecting tip elements in a hinged manner." Reply Br. 4.
Appellant's statement does not specifically address the Examiner's
findings with respect to the disclosure of Walker, or point out why the
Examiner's findings are in error. Thus, Appellant's statement does not
constitute a separate argument for patentability of claim 13 under 3 7 C.F .R.
§ 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 37 C.F.R. § 41.37 as
requiring "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"). Accordingly, we sustain the
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Examiner's rejection of claim 13 as unpatentable over Walker and
Yakubisin.
Claim 14
Appellant contends "[i]t is submitted that Walker is silent at least with
respect to the possibility of attachment by a thread." Appeal Br. 19. In the
Answer, the Examiner correctly points out that claim 14 recites "the outer
ends of the outer rib elements are attached to the periphery of the canopy by
thread, or are received in pockets in the canopy." Ans. 5; see also Appeal
Br., Claims App. 23 ( emphasis added). The Examiner also clarifies that
"[t]he Walker device teaches that the outer ends of the rib elements (42A
and 42B) are received in a pocket (49) of the canopy (50)." Ans. 5 (citing
Walker 4:65---67). Thus, the Examiner concludes that "[a]s the claim recites
the connection between the ribs and the canopy as either a threaded
connection or a pocket connection, Walker has sufficient structure to
anticipate the claim." Id. Appellant does not apprise us of Examiner error.
See Reply Br. 4.
For these reasons, we sustain the Examiner's rejection of claim 14 as
unpatentable over Walker and Y akubisin.
Claim 15
Appellant contends that the Examiner "relies upon Figure 3 of
Walker" for the features of claim 15, that elements 90b of Figure 5 of the
subject invention "can be omitted entirely ... to give 'a multi-lobed
appearance resembling a flower,"' and that "[ s ]uch a configuration is
nowhere disclosed in Walker." Appeal Br. 19.
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Application 15/095,731
In the Answer, the Examiner correctly points out that claim 15
"recites only 'that peripheral portions of the canopy are attached to the outer
rib elements, so as to follow at least part of the profile of the outer rib
elements, and to present a multi-lobed appearance'" and that claim 15 "does
not mention an 'appearance resembling a flower' and no significant structure
is imparted to the claim by this limitation." Ans. 5---6; Appeal Br., Claims
App. 23; In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not
appearing in the claims cannot be relied upon for patentability). The
Examiner also clarifies that "Walker teaches that the canopy is attached (in
pockets 49) to the outer rib elements (42A and 42B) [and that] Walker
shows in Figure 3 that the peripheral portions of the canopy ( 50) follow at
least part of the outer rib elements and present a multi-lobed appearance."
Ans. 6. Appellant does not apprise us of Examiner error. See Reply Br. 4.
For these reasons, we sustain the Examiner's rejection of claim 15 as
unpatentable over Walker and Y akubisin.
DECISION
We AFFIRM the decision of the Examiner to reject claims 8-10 as
unpatentable over Wilk and Y akubisin.
We AFFIRM the decision of the Examiner to reject claims 11-17 as
unpatentable over Walker and Y akubisin.
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
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