Ex Parte Jarrell

Board of Patent Appeals and Interferences

Nov 22, 2010

11117610 (B.P.A.I. Nov. 22, 2010)

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.
11/117,610 04/29/2005 Raymond Jarrell 25778.00 5464
37833 7590 11/22/2010
LITMAN LAW OFFICES, LTD.
PATENT LAW BUILDING
8955 CENTER STREET
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EXAMINER
CHIN SHUE, ALVIN C
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
11/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAYMOND JARRELL
____________

Appeal 2009-009297
Application 11/117,610
Technology Center 3600
____________

Before WILLIAM F. PATE III, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009297
Application 11/117,610

2
STATEMENT OF THE CASE
Raymond Jarrell (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-10 and 20. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE INVENTION
Appellant’s claimed invention is a collapsible hanging scaffold
bracket for engagement with the top horizontal stud of a wall structure.
Spec. 1:5-6. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A collapsible hanging scaffold bracket for engagement
with the top horizontal stud of a wall structure, comprising:
a first elongated bracket member, the first elongated bracket
member having a hook portion for engaging the top horizontal
stud of a wall structure, the first elongated bracket member being
disposed in a substantially vertical position when the collapsible
hanging scaffold bracket is engaged with the top horizontal stud
of a wall structure;
a second elongated bracket member having a first end and a
second end, the second elongated bracket member being designed
to telescopically receive the first elongated bracket member
through the first end, the second elongated bracket member being
disposed in a substantially vertical position when the collapsible
hanging scaffold bracket is engaged with the top horizontal stud
of a wall structure, an open-ended sleeve being hollow
therethrough and attached to said elongated bracket member at
said second end;
first locking means for locking the first and second
elongated bracket members at a selected length;
a third elongated bracket member, the third elongated
bracket member being pivotally engaged with the second
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Application 11/117,610

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elongated bracket member, the third elongated bracket member
being disposed in a substantially horizontal position when the
collapsible hanging scaffold bracket is engaged with the top
horizontal stud of a wall structure;
a fourth elongated bracket member, the fourth elongated
bracket member being pivotally engaged with the third elongated
bracket member, at a non-adjustable fixed location;
a fifth elongated bracket member, the fifth elongated bracket
member being pivotally engaged with the second elongated
bracket member at a non-adjustable fixed point substantially near
the second end of the second elongated bracket member, the fifth
elongated bracket member for telescopically receiving the fourth
elongated bracket member;
a second locking means for locking the fourth and fifth
elongated bracket members at a selected length;
a tee-bar member, the leg of the tee-bar member being
telescopically disposed within said sleeve at said second end of
the second elongated bracket member, the tee-bar member being
disposed in a substantially horizontal position when the
collapsible hanging scaffold bracket is engaged with the top
horizontal stud of a wall structure, the arm of the tee-bar member
supporting the collapsible hanging scaffold bracket against the
wall structure; and
a third locking means for locking the tee-bar member to said
sleeve into place at a selected length.
THE EVIDENCE
The Examiner relies upon the following evidence:
Brown US 3,158,223 Nov. 24, 1964
Newlan US 3,767,010 Oct. 23, 1973
Bierman US 4,453,619 Jun. 12, 1984
Miller US 4,907,674 Mar. 13, 1990
Thomas US 2002/0084141 A1 Jul. 4, 2002
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Application 11/117,610

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THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1 and 7-10 under 35 U.S.C. § 103(a) as
being unpatentable over Bierman, Thomas, and Newlan.
2. The Examiner rejected claims 2-4 under 35 U.S.C. § 103(a) as being
unpatentable over Bierman, Thomas, Newlan, and Miller.
3. The Examiner rejected claims 5, 6, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Bierman, Thomas, Newlan, Miller, and
Brown.
CONTENTIONS AND ISSUES
The Examiner found that Bierman discloses the claimed scaffold
bracket except for the pivotally engaged third, fourth, and fifth elongated
members and the open ended sleeve. Ans. 4. The Examiner found that it
would have been obvious to modify Bierman to pivotally attach its third,
fourth, and fifth elongated members, as taught by Thomas, “to facilitate
storage of his device” and to include an open ended sleeve with locking
means attached to his second elongated bracket member, as taught by
Newlan, “to enable extended reception of his tee-bar member.” Ans. 4. The
Examiner further found that to attach the fourth and fifth elongated members
at non-adjustable fixed points is deemed to be an obvious matter of design
choice and would have been an obvious mechanical expediency to one of
ordinary skill in the art. Ans. 4-5.
Appellant argues that “[s]ince Bierman’s scaffold has fixed brackets
to render the scaffold rigid, it would not have been obvious to modify these
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Application 11/117,610

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fixed brackets to pivotal members in view of Thomas.” Br. 13. Appellant
further argues that Bierman teaches away from the Examiner’s modification
of having pivotally attached bracket members because to make such a
modification “would destroy the rigidity of Bierman.” Br. 14. Appellant
also argues that the Examiner erred in finding that securing the fourth and
fifth bracket members at non-adjustable fixed locations would be an obvious
matter of design choice. Br. 15. Appellant further argues that “there is no
motivation to bodily incorporate the sleeve 26 of Newlan et al. to the
Bierman/Thomas combination.” Id.
The issues presented by this appeal are:
1. Would it have been obvious to one having ordinary skill in the art at the
time of Appellant’s invention to modify the structure of Bierman, in light
of the teachings of Thomas and Newlan, as proposed by the Examiner?
2. Would the combined teachings of the prior art have rendered obvious the
fourth and fifth elongated bracket members being pivotally engaged with
the third and second elongated bracket members, respectively, “at a non-
adjustable fixed” location/point as called for in claim 1?
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Bierman discloses a pair of telescoping wall scaffolds 10 each having a
C-shaped suspension means 30 and telescoping means comprised of a
first telescoping member 100 and a second telescoping member 102.
Bierman, col. 2, ll. 60-64; id. at col. 4, ll. 33-35; fig. 1. “A second spacer
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member 156 is adapted to the second telescoping member 102” and “is
adjustably secured” by way of extension 158, a second extension 160,
and third extension 162. Bierman, col. 6, ll. 23-27; fig. 3. Bierman
discloses that “[t]he first extension 158 is secured to the outside surface
of the second telescoping member 102 and extends away therefrom
substantially normal to the axis 136 towards the wall surface 14.”
Bierman, col. 6, ll. 27-30. A locking device comprised of a handle bolt
164 and a nut 166 is secured through an aperture in first extension 158 to
exert a force against the outside surface of the second extension 160 to
lock it in place at the desired distance. Bierman, col. 6, ll. 31-38. The
second spacer member 156 provides stability to the platform and the
scaffold. Bierman, col. 6, ll. 55-57. Bierman discloses that “[t]hose
skilled in the art will recognize that various devices may be employed to
provide an adjustable extension member.” Bierman, col. 6, ll. 44-46.
Bierman discloses that “[p]latform support means, here shown to be
comprised of a platform base member 190 and a platform angle support
192, are affixed to the second telescoping member 102.” Bierman, col.
6, ll. 58-61; fig. 3. Bierman further discloses that “[t]o use the scaffold
10 of the instant invention, it is transported to a work site either
assembled or disassembled. If it is disassembled, it must obviously be
put together before use.” Bierman, col. 7, ll. 20-23.
2. Thomas discloses “a height adjustable scaffolding unit which is readily
stowable.” Thomas 1, para. [0004]. In particular, Thomas discloses a
connecting means that allows pivoting movement of the frame assembly
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beyond the adjustment position to a stowed position in which an elongate
plank support means is substantially parallel to and immediately adjacent
a first elongate support member. Thomas 1, para. [0008]; id. at 4, para.
[0060]. Thomas further discloses “an angle brace 279 extending
between the frame assembly 213 and the main member 212 for
additional support.” Thomas 5, para. [0063]; fig. 5. Thomas depicts the
angle brace 279 as comprised to two telescoping members, wherein a
first member has a series of apertures therethrough for locking together
the first and second members of the angle brace 279 as a desired
position. Thomas, fig. 5. The bottom member of angle brace 279
appears to be pivotally engaged with main member 212, and the top
member of angle brace 279 is secured to frame assembly 213. Thomas,
fig. 5.
3. Newlan discloses a scaffold having a bumper mounted on the lower
portion to engage the side of a structure to further provide safe mounting.
Newlan, col. 1, ll. 35-37; fig. 1. In particular, Newlan discloses a tubular
member 26 which is perpendicular to a vertical member 20 of the
scaffold. Newlan, col. 2, ll. 40-42. A padded bumper 28 is mounted on
a rod 30, which is slidably mounted in tubular member 26. Newlan, col.
2, ll. 42-44. A threaded hole is placed in the bottom of tubular member
26, and a threaded bolt, having a handle 36, is received in the hole.
Newlan, col. 2, ll. 46-49. The handle is turned until the rod 30 is free to
slide in tubular member 26, and when the bumper 28 is properly located,
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the handle 36 is turned until the threaded bolt 34 engages the rod 30 and
fixes it with respect to the tubular member 26. Newlan, col. 2, ll. 53-57.
ANALYSIS
Rejection of claims 1 and 7-10 under 35 U.S.C. § 103(a) as unpatentable
over Bierman, Thomas, and Newlan
Appellant argues claims 1 and 7-10 as a group. Br. 11-15. We select
claim 1 as representative, and claims 7-10 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii).
We find that the Examiner has provided adequate reasoning with
rational underpinnings as to why the subject matter of claim 1 would have
been obvious to one having ordinary skill in the art in view of the prior art
teachings. In particular, as to the combination of Bierman and Thomas,
Thomas explicitly provides a suggestion to make a frame assembly (plank
support means) and one end of an angle brace of scaffolding pivotally
attached to a main member and the other end of the angle brace pivotally
attached to the frame assembly so that the scaffolding is “readily stowable”
(Fact 2). Further, Bierman acknowledges that it was common practice in the
art to transport its scaffolding to a work site in a disassembled fashion,
which requires reassembly on the job site (Fact 1). By making the frame
assembly and angle brace pivotally attached, Thomas shows an
improvement to a welded scaffold that would provide ease of assembly and
disassembly and transport of Bierman’s scaffold between job sites. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been
used to improve one device, and a person of ordinary skill in the art would
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recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”)
As such, we find that the Examiner’s articulated reasoning to modify
Bierman’s scaffold to have pivotally attached third, fourth and fifth members
to facilitate storage of his device is based on a rational underpinning.
We do not find convincing Appellant’s arguments regarding the fixed
nature of Bierman’s brackets. Appellant does not allege that modifying
Bierman’s third, fourth, and fifth elongated members to be pivotally attached
would have been beyond the skill of a person having ordinary skill in the art.
While Figure 3 of Bierman appears to show the members welded, Bierman
discloses only that “[t]he first extension 158 is secured to the outside surface
of the second telescoping member 102” and that the platform base member
190 and a platform angle support 192 “are affixed to the second telescoping
member 102” (Fact 1). Bierman neither attributes any importance to the use
of fixed brackets to render the scaffold sufficiently rigid nor discourages one
skilled in the art from using pivotal attachments or anything other than a
weld to attach the members of the scaffold, as argued by Appellant. Br. 13-
14. Further, Appellant has provided no evidence that replacing Bierman’s
welds with pivotal connections would render Bierman’s structure
insufficiently rigid. An attorney’s arguments in a brief cannot take the place
of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
We also find that the Examiner has articulated adequate reasoning
with rational underpinning to explain why one having ordinary skill in the
art would have modified Bierman’s scaffold to have an open ended sleeve as
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taught in Newlan. Ans. 4. Bierman discloses one technique for providing
an adjustable second spacer member 156 at the lower end of the second
telescoping member 102 and discloses that “[t]hose skilled in the art will
recognize that various devices may be employed to provide an adjustable
extension member” (Fact 1). Newlan discloses an alternate technique for
providing an adjustable bumper at the lower end of the vertical member 20
of a scaffold, using a tubular member 26 and a padded bumper 28 mounted
on a rod 30, which is slidable and lockable in position within the tubular
member 26 (Fact 3). Both Bierman’s spacer member 156 and Newlan’s
padded bumper 28 perform the same function, viz, to engage the side of a
structure to further provide safe mounting and better stability of the scaffold
(Facts 1, 3). As such, we agree with the Examiner that the claimed open
ended sleeve technique would have been obvious in light Newlan. The
claimed subject matter is the mere substitution of one bumper assembly for
another known in the field to yield a predictable result of bumper having an
adjustable length. See KSR, 550 U.S. at 416 (“when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)).
We further find that the Examiner articulated adequate reasoning with
a rational underpinning to explain why it would have been obvious to secure
the fourth and fifth bracket members of Bierman at non-adjustable fixed
locations. While we agree with Appellant that Thomas appears to show
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fourth and fifth bracket members (the two halves of angle brace 279)
adjustably secured to main member 212 and frame assembly 213, such an
adjustable connection is required in Thomas due to the way Thomas’s device
raises and lowers the frame assembly 213 along main member 212 in order
to raise and lower the platform. In Bierman however, as in Appellant’s
invention, the platform is raised or lowered by moving the second elongated
member relative to the first elongated member in a telescoping arrangement.
Unlike in Thomas, in Bierman and in Appellant’s invention, the location of
the third elongated member along the second elongated member remains
fixed at a non-adjustable position. As such, the adjustability of the location
of the ends of the angle brace in Thomas is not necessary in Bierman when
modified to make the third, forth, and fifth elongated members of Bierman
pivotally attached. As such, we agree with the Examiner that to modify
Bierman with the teaching of Thomas such that the Bierman’s fourth and
fifth elongated members are each pivotally engaged at a non-adjustable fixed
location is the result of obvious mechanical expediency and is not an non-
obviousness distinction over the prior art.
For these reasons, we will sustain the rejection of claim 1 under
35 U.S.C. § 103(a) as being unpatentable over Bierman, Thomas, and
Newlan. Claims 7-10 fall with claim 1.
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Rejection of claims 2-4 under 35 U.S.C. § 103(a) as unpatentable over
Bierman, Thomas, Newlan, and Miller and of claims 5, 6, and 20 under
35 U.S.C. § 103(a) as unpatentable over Bierman, Thomas, Newlan, Miller,
and Brown
Appellant argues claims 2-4 as a first group and claims 5, 6, and 20 as
a second group. Br. 16-17. For each group, Appellant relies, in part, on the
same arguments addressed above for claim 1. Id. We find these arguments
unpersuasive for the reasons provided above. For each group, Appellant
also argues that “the only reason for combining Miller with the
Bierman/Thomas/Newlan combination is to meet the instant claims.” Id.
The Examiner has provided, for each ground of rejection, a reason
explaining why one having ordinary skill in the art would have been led to
modify the Bierman/Thomas/Newlan combination with the first and second
bracket members and locking pin of Miller, viz, “to enable positive
adjustable locking positions using well-known and proven pin/aperture
structures.” Ans. 5. We find this reasoning to be based on a rational
underpinning, and Appellant has failed to specifically address this reasoning
or explain why it is in error. As such, we will sustain the Examiner’s
rejections of claims 2-6 and 20.
CONCLUSIONS
It would have been obvious to one having ordinary skill in the art at
the time of Appellant’s invention to modify the structure of Bierman, in light
of the teachings of Thomas and Newlan, as proposed by the Examiner.
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The combined teachings of the prior art would have rendered obvious
the fourth and fifth elongated bracket members being pivotally engaged with
the third and second elongated bracket members, respectively, “at a non-
adjustable fixed” location/point as called for in claim 1.
DECISION
The decision of the Examiner to reject claims 1-10 and 20 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).

AFFIRMED

nlk

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