Ex Parte Jenkins

Patent Trial and Appeal Board

Sep 21, 2017

14481316 (P.T.A.B. Sep. 21, 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.
14/481,316 09/09/2014 Katherine Messervy Jenkins 86151.0004 1033
29693 7590
WILEY REIN LLP
1776 K STREET N.W.
WASHINGTON, DC 20006
09/25/2017 EXAMINER
HANSEN, JAMES ORVILLE
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
ptodocket @ wileyrein. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHERINE MESSERVY JENKINS
Appeal 2017-003697
Application 14/481,316
Technology Center 3600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and LARRY J. HUME,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003697
Application 14/481,316
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4—6, all of the claims currently pending in the application.
Claim 3 has been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Disclosed Invention
Appellant discloses children’s furniture (Figs. 1A, IB; Spec., Title;
Abstract) “for storing and organizing shirts, dresses, shorts, pants, skirts,
shoes, accessories, and other items” (Spec. 12). More specifically,
Appellant discloses children’s furniture “shaped in the form of a young boy
or young girl” including “notched bars, clips, drawers, and cabinets” for
holding/storing clothing and accessories (Abstract; see generally Figs. 1A,
IB, 3A, 5).
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows, with
emphases added:
1. Children’s furniture, comprising:
a front, wherein the front is configured to look like a
young boy or young girl, the front further comprising a plurality
of notched bars and a plurality of clips, wherein the notched
bars and clips are configured to hold articles of clothing;
two sides, wherein the first side comprises a plurality of
drawers and the second side comprises a plurality of notched
bars, wherein the notched bars are configured to hold articles of
clothing, wherein the width of the drawers is from about 3
inches to about 8 inches;
a back, wherein the back comprises a plurality of notched
bars; and
a base.
2
Appeal 2017-003697
Application 14/481,316
The Examiner’s Rejections
(1) The Examiner rejected claim 1 as being unpatentable under 35
U.S.C. § 103(a) over Kirk (US 3,126,237; issued Mar. 24, 1964), Shaw (US
D513,563 S; issued Jan. 17, 2006), Tabb (US 2,937,758; issued May 24,
1960), and Hyman (US D218,326; issued Aug. 11, 1970). Final Act. 2—5;
Ans. 2-5, 7-9.
(2) The Examiner rejected dependent claims 2 and 4—6 as being
unpatentable under 35 U.S.C. § 103(a) over Kirk, Shaw, Tabb, Hyman, and
Jackson (US 2007/0278365 Al; published Dec. 6, 2007). Final Act. 5—7;
Ans. 5—6.
Appellant’s Contentions
Appellant contends (Br. 8—11) that the Examiner erred in rejecting
claims 1, 2, and 4—6 under 35 U.S.C. § 103(a) over the base combination of
Kirk, Shaw, Tabb, and Hyman for numerous reasons, including:
(i) there is no motivation for making the combination of Kirk,
Shaw, Tabb, and Hyman, and impermissible hindsight has been
employed (Br. 8—11);
(ii) “Shaw does not teach or suggest ‘notched’ bars” (Br. 10);
(iii) “Hyman does not disclose drawers having a width of about
3 inches to about 8 inches” or any other specific width of its drawers
(Br. 10);
(iv) “the simple, compact design of Kirk . . . teaches away from
[the] larger, more complicated structure of Hyman” (Br. 11); and
(v) the Examiner employed impermissible hindsight in
modifying the base combination with Jackson to teach or suggest
removable notched bars as claimed (Br. 11).
3
Appeal 2017-003697
Application 14/481,316
Reply Brief
No Reply Brief has been presented. Therefore, Appellant has not
rebutted the Examiner’s additional articulated reasoning and findings found
at pages 7—9 of the Answer.
Principal Issue on Appeal
Based on Appellant’s arguments in the Appeal Brief (Br. 8—12), the
following principal issues are presented on appeal:
Did the Examiner err in rejecting claims 1, 2, and 4—6 as being
obvious because:
(1) Shaw does not teach or suggest notched bars;
(2) Hyman, taken with the knowledge and skill of one of ordinary
skill in the art of furniture, does not teach or suggest drawers having a width
of about 3 inches to about 8 inches or any other specific width, as recited in
sole independent claim 1, and as similarly recited in remaining dependent
claims 2 and 4—6; and/or
(3) Kirk, Shaw, Tabb, and Hyman or Kirk, Shaw, Tabb, and Hyman,
and Jackson, are not properly combinable due to (a) the Examiner’s use of
impermissible hindsight and (b) the lack of any motivation in making the
combination?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Appeal Brief (Br. 8—12) that the Examiner erred. We
disagree with Appellant’s arguments. With regard to claim 1, we adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 2—7; Ans. 2—6), and (2) the
4
Appeal 2017-003697
Application 14/481,316
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 7—9). We concur with the conclusions
reached by the Examiner as to both obviousness rejections.
Although, there must be “a reason to combine prior art references”
(.Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed.
Cir. 2012) (internal citations omitted)), and an obviousness determination
cannot rest upon impermissible hindsight reasoning, the our reviewing court
“flexibly seeks evidence from before the time of the invention in the form of
some teaching, suggestion, or even mere motivation (conceivably found
within the knowledge of an ordinarily skilled artisan) to make the variation
or combination” to guard against impermissible hindsight reasoning. Rolls-
Royce, PLC v. United Technologies Corp., 603 F.3d 1325, 1338 (Fed. Cir.
2010) (internal citations omitted). In the instant case before us, we agree
with the Examiner’s findings as to the individual references applied (Final
Act. 2—7; Ans. 2—6), as well as the Examiner’s reasoning articulated set forth
in the Answer in response to Appellant’s arguments in the Appeal Brief
(Ans. 7—9).
Appellant’s contentions (App. Br. 8—11) that the Examiner’s
obviousness determinations are hinged upon impermissible hindsight are
unpersuasive. To support their conclusions of reliance upon hindsight,
Appellant presents conclusory statements that such combinations of
references would require more than ordinary skill in the art (Br. 9—11).
Appellant’s conclusory statements are unsupported by factual evidence. In
addition, arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also,
5
Appeal 2017-003697
Application 14/481,316
while not required to, Appellant has not submitted evidence of secondary
considerations. Evidence of secondary considerations “may also serve to
guard against slipping into use of hindsight.” In re Kahn, 441 F.3d 977, 986
(Fed. Cir. 2006) (quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)).
Therefore, we accord very little probative value to Appellant’s conclusory
statements that combining the teachings of Kirk, Shaw, Tabb, Hyman,
and/or Jackson required more than ordinary skill in the art. In view of the
clear teachings of the art, the importance of common sense and ordinary
creativity, design choice and optimization of relative size, we agree with the
Examiner that it would have been obvious to combine the applied references
in the manner set forth by the Examiner.
Moreover, we are not persuaded that modifying Kirk with Shaw,
Tabb, Hyman, and/or Jackson would not merely produce predictable results
or was “uniquely challenging or difficult for one of ordinary skill in the art”
at the time of Appellant’s invention (see Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSRInti Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007))). Routine optimization of scientific
variables by ordinarily skilled artisans that produce predictable variations are
likely (i) the product not of innovation but of ordinary skill and common
sense, and (ii) barred by 35 U.S.C. § 103. See KSR, 550 U.S. at 420; Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007). An obviousness
“analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418. The discovery of an optimum value of a results-
6
Appeal 2017-003697
Application 14/481,316
effective variable in a known process is normally obvious. In re Aller, 220
F.2d 454, 456 (CCPA 1955).
With regard to independent claim 1, the Examiner relies on Shaw
(Figs. 1, 4, 5) as teaching notched bars. Final Act. 3; Ans. 2—3. The
Examiner finds (Final Act. 3; Ans. 3, 7), and we agree, that Shaw’s Figures
4 and 5 show bars having a concaved section behind a bulbous distal end
thereby forming a notch or groove when the contour is compared with the
contour between the shaft and back of the bulbous distal end.
As to the size and width of the drawers, we agree with the Examiner
(Final Act. 4; Ans. 4—5, 8) that this would have been obvious as a matter of
personal preference, change of degree, or change in relative dimensions such
that the claimed “Children’s furniture” would not perform differently than
the device taught or suggested by the prior art. We also note that a design
choice may be an acceptable rationale for an obviousness rejection when a
claimed product merely arranges known elements in a configuration that
provides no novel or unexpected results. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (“. . . the particular placement of the contact provides no novel
or unexpected result[s]. The manner in which electrical contact is made for
Smith's battery would be an obvious matter of design choice within the skill
of the art.”). Furthermore, routine optimization of variables (like size or
width of drawers) by ordinarily skilled artisans that produce predictable
variations are likely (i) the product not of innovation but of ordinary skill
and common sense, and (ii) barred by 35 U.S.C. § 103. See KSR, 550 U.S.
at 417, 420; Pfizer, 480 F.3d at 1371.
In the instant case before us, we agree with the Examiner (Final
Act. 4—5; Ans. 8) that discovery of the optimum size and/or width for the
7
Appeal 2017-003697
Application 14/481,316
drawers, when considering Hyman’s drawers (see Figs. 1, 3), would have
been obvious variant to a person of ordinary skill in the art. We are not
persuaded that choosing drawer sizes to be from about 3 inches to 8 inches
for a piece of children’s furniture, such as a children’s valet, was “uniquely
challenging or difficult for one of ordinary skill in the art” at the time of
Appellant’s invention (see Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S.
at 418)). Appellant’s arguments to the contrary (App. Br. 10) do not
convince us otherwise.
Appellant’s argument (Br. 11) that the simple, compact design of Kirk
teaches away from the larger, more complicated structure of Hyman is also
unpersuasive. Our agreement with the Examiner’s findings and reasoning
for combining Hyman (Ans. 3, 8—9), taken with our determination that it
would have been obvious as a matter of personal preference, change of
degree, or change in relative dimensions to modify the size of Hyman’s
drawers, also leads us to the conclusion that limiting the overall size of the
children’s furniture/valet would have been obvious to accommodate use by
children who are short and/or have small hands and reaches.
In addition, it has been held by our reviewing court that it is obvious
to one of ordinary skill in the art to omit elements, or reduce the
size/complication of elements in a device. Kuhle, 526 F.2d at 555 (omission
of an element and its function is an obvious expedient where the function is
not desired). To delete elements or reduce the size or complexity of Hyman
and the resultant combination would be an obvious expedient reducing the
cost and complexity of the piece of furniture, and would only involve
common sense. Only inferences and creative steps normally expected from
the ordinarily skilled artisan would be required to remove the integrator and
8
Appeal 2017-003697
Application 14/481,316
its function. KSR, 550 U.S. at 418. In addition, Appellant’s argument as to
teaching away is not commensurate with the claims, which do not specify
any specific degree of the compactness of the design.
In view of the foregoing, we sustain the rejections of (i) sole
independent claim 1; and (ii) remaining dependent claims 2 and 4—6 reciting
similar limitations to children’s furniture, as being obvious over the base
combination of Kirk, Shaw, Tabb, and Hyman.
CONCLUSIONS
The Examiner did not err in rejecting claims 1,2, and 4—6 as being
unpatentable under 35 U.S.C. § 103(a) over the base combination of Kirk,
Shaw, Tabb, and Hyman.
DECISION
We affirm the Examiner’s rejections of claims 1, 2, and 4—6.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
9