Ex Parte LAM

Patent Trial and Appeal Board

Sep 14, 2017

12909433 (P.T.A.B. Sep. 14, 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.
12/909,433 10/21/2010 Wing Yiu LAM 1007198-000789 5865
21839 7590 09/18/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WING YIU LAM
Appeal 2016-000887
Application 12/909,433
Technology Center 3600
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wing Yiu Lam (Appellant) appeals under 35 U.S.C. § 134(a) from a
final rejection of claims 1 and 3—13. Claim 2 is canceled and claims 14—20
are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000887
Application 12/909,433
THE INVENTION
Appellant’s invention is directed to a composite furniture article.
Claim 1, reproduced below, is illustrative:
1. A composite furniture article comprising:
a load bearing structural frame including a plurality of load
bearing members, wherein the load bearing members are formed
from a metal or metallic material;
a non-load bearing timber cortex comprised of a plurality of
timber cladding portions, said non-load bearing timber cortex
being affixed to the periphery of at least a portion of a load
bearing member of said structural frame;
wherein the timber cladding portions of the timber cortex have a
shape such that said plurality of timber cladding portions
together define the requisite shape of the cortex and the exterior
shape of the cortex is independent of the exterior shape of the
load bearing structural frame and load bearing members thereof
and
wherein the timber cortex is located such that said structural
frame bears substantially all load applied to the furniture article
and the timber cortex bears substantially no load.
REJECTIONS
The Examiner has rejected:
(i) claims 1,3, 6—8, and 11—13 under 35 U.S.C. § 103(a) as being
unpatentable over Petersen (US 3,240,460, issued Mar. 15, 1966) in view of
Burst (US 3,738,726, issued June 12, 1973) and Cattaneo (US 4,685,645,
issued Aug. 11, 1987);
(ii) claims 4 and 5 under 35 U.S.C. § 103(a) as being unpatentable
over Petersen in view of Burst, Cattaneo, and Unruh (US 5,448,869, issued
Sept. 12, 1995);
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Application 12/909,433
(iii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Petersen in view of Burst, Cattaneo, and Prince (US 4,942,084, issued July
17, 1990); and
(iv) claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Petersen in view of Burst, Cattaneo, Prince, and Hunter (US 1,946,694,
issued Feb. 13, 1934).
ANALYSIS
Claims 1, 3, 6—8, and ll—13—§ 103(a)—Petersen/Burst/Cattaneo
Appellant argues these claims as a group, presenting no separate
arguments for the patentability of any individual claims. Appeal Br. 2—14.
We take claim 1 as representative of the group, and claims 3, 6—8, and 11—13
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Petersen discloses a composite furniture
article meeting several of the limitations of claim 1, including that the sheath
installed over the load bearing frame has an exterior shape independent of
the exterior shape of the frame, but does not teach the ornamental sheath
being made of wood. Final Act. 3—A. The Examiner finds that Burst
discloses a sheath in the form of a turned wooden leg having a central hole
therein to receive a metal leg therethrough, and concludes that it would have
been obvious to use a wooden sheath in Peterson, so as to provide the
furniture leg with a desired aesthetic appeal. Id. at 4.
The Examiner notes that the combination of Petersen and Burst still
lacks a teaching that the timber (wood) should comprise a plurality of timber
cladding portions which together define the shape of the timber cortex.
Final Act. 4. Citing to the teaching in Cattaneo of a load bearing leg having
a sheath therearound comprising a plurality of portions that together define
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Application 12/909,433
the requisite shape, the Examiner concludes that it would have been obvious
to employ this teaching to the sheath arising from the combination of
Petersen and Burst, in that Cattaneo teaches that such sheaths are useful for
providing aesthetically pleasing appearance to load bearing structures. Id.
Appellant traverses the rejection on several fronts.
First, Appellant maintains that there is no motivation or reason to
combine Burst with Petersen, in that Petersen employs a resilient plastic
hollow sheath that is force-fitted over the leg that it is to be secured to, and
that replacing the resilient plastic sheath with a wooden one would preclude
the ability to force fit the sheath over the leg. Appeal Br. 5—9; Reply Br. 2—
5.1 According to Appellant, it is essential that the material used is a resilient
plastic material. Appeal Br. 7. Appellant urges that such a substitution or
replacement would involve unspecified technical difficulties, would not
provide a reasonable expectation of success, and involves moving in an
entirely different direction than the teachings of Petersen. Id. at 8.
The Examiner responds that, since Burst teaches how to attach
wooden sheaths to metal cores, a person of ordinary skill in the art would
understand how to attach a wooden sheath to the furniture leg in Petersen,
and that the combination of teachings does not require the sheath of Burst to
be shaped and attached in an identical manner to the resilient sheath of
Petersen. Ans. 8. The Examiner also highlights that Appellant has
identified no specific technical difficulties that might be involved with the
proposed modification. Id. at 9. The Examiner further notes that the
1 We note that the arguments presented in the Reply Brief are essentially
identical to those presented in the Appeal Brief, and will refer only to the
Appeal Brief going forward.
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Application 12/909,433
proposed modification does not affect the basic principle behind Petersen,
which is the provision of a sheath that has the aesthetic appearance of a
turned wood section, and which carries through in the proposed
modification. Id.
We find that the Examiner has the better position here, and thus are
not apprised of error in the rejection in view of the above arguments.
Appellant additionally argues that motivation is lacking in combining
the teachings of Cattaneo with those of Petersen. Appeal Br. 9—10.
Appellant again maintains that the sheath would be non-resilient and would
not be capable of being force-fitted onto a furniture leg in the manner
described in Petersen. Id. at 9. Appellant further posits that Cattaneo does
not disclose a cortex that has a shape independent of the shape of the
underlying frame. Id. at 10.
The Examiner replies, as discussed above, that the proposed
combination does not contemplate attempting to force fit the sheath onto the
furniture leg, and that Burst, as well as Cattaneo, provide teachings by which
a wooden sheath can be fitted to a metal core. Ans. 10. The Examiner
additionally highlights that Cattaneo is not relied on as teaching a sheath
having a cortex shape that is independent of the shape of the underlying
frame, and therefore Appellant’s latter argument is not commensurate with
the rejection as presented. Id. at 11.
Again, the Examiner’s position is the better one here. We are thus not
apprised of error in the rejection on the alleged basis that motivation is
lacking in attempting to combine the teaching of Petersen and Cattaneo.
Appellant argues, under a heading asserting that the claimed invention
yields unexpected results, that none of Petersen, Burst, or Cattaneo discloses
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Application 12/909,433
the claimed “timber cortex” having an exterior shape that is independent of
the exterior shape of the load bearing structural member. Appeal Br. 10—11.
This amounts to nothing more than an attack on the teachings of the
references individually, in that the combination replaces the resilient plastic
sheath of Petersen, which undisputedly has an exterior shape independent of
the shape of the load bearing furniture leg to which it is attached, with a
wooden sheath having the same exterior shape as has the resilient plastic
sheath. Thus, the combined teachings yield a “timber cortex” as claimed.
Similarly, Appellant’s argument that the Petersen plastic sheath only
looks similar to a wood piece, and would be regarded as budget-type or
outdoor furniture (Appeal Br. 11), fails to address the Examiner’s proposed
modification to Petersen to have the sheath made of wood. Assuming that
Appellant’s observation as to how the Petersen furniture would be regarded
is accurate, this would be an additional motivating factor in modifying
Petersen as proposed by the Examiner.
Appellant’s final arguments come in the form of asserting that
Petersen is nonanalogous art, in that Petersen allegedly is not in the same
field of endeavor as Appellant’s claimed invention, nor is Petersen pertinent
to the problem faced by Appellant. Appeal Br. 11—12. Appellant maintains
that Petersen does not pertain to the field of timber-type furniture, but
instead is directed to molded plastic furniture. Id. at 12. Appellant similarly
states that Peterson “belongs to the technical field of molded plastic
furniture.” Id. According to Appellant, Petersen does not address problems
associated with the high cost of using solid timber, or the difficulty of
providing timber-type furniture with complex designs and intricate shapes in
a less expensive and more environmentally-friendly manner. Id.
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These arguments focus too closely on the fact that Petersen discloses
making the sheath from a molded resilient plastic. Petersen, on the whole,
expressly teaches that the furniture legs with which the sheaths may be used
are either steel tubing or wood, and, in either case, the leg and sheath are
painted to produce the appearance of wood. Petersen, col. 2,1. 24,11. 46—53.
As to the latter assertion, the introductory portion of Petersen highlights that
Petersen is specifically addressing exactly those problems and difficulties.
Petersen, col. 1,11. 13—29. We further adopt the refutations presented by the
Examiner as well. See Ans. 12—13. As such, Appellant’s arguments are not
supported by the evidence.
We are not apprised of error in the rejection on the basis that Petersen
constitutes nonanalogous art.
We note that Appellant includes a “Conclusion” section that extends
over several pages. Appeal Br. 12—14. We have considered the statements
and assertions made therein, which essentially repeat points previously made
by Appellant that are addressed above, and find that they do not apprise us
of error in the Examiner’s rejection.
In view of the foregoing, we are not apprised of error in the rejection
of claim 1 over Petersen, Burst, and Cattaneo. The rejection of claim 1 is
sustained. Claims 3, 6—8, and 11—13 fall with claim 1.
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Application 12/909,433
Claims 4 and 5—§ 103(a)—Petersen/Burst/Cattaneo/Unruh
Appellant presents no arguments specific to this ground of rejection.
We therefore assume that the arguments directed to the rejection of claim 1
are intended to apply to this rejection as well.
For the reasons discussed above, we are not apprised of error in the
rejection, and the rejection of claims 4 and 5 is sustained.
Claim 9—§ 103(a)—Petersen/Burst/Cattaneo/Prince
Appellant presents no arguments specific to this ground of rejection.
We therefore assume that the arguments directed to the rejection of claim 1
are intended to apply to this rejection as well.
For the reasons discussed above, we are not apprised of error in the
rejection, and the rejection of claim 9 is sustained.
Claim 10—§ 103(a)—Petersen/Burst/Cattaneo/Prince/Hunter
Appellant presents no arguments specific to this ground of rejection.
We therefore assume that the arguments directed to the rejection of claim 1
are intended to apply to this rejection as well.
For the reasons discussed above, we are not apprised of error in the
rejection, and the rejection of claim 10 is sustained.
DECISION
The rejections of claims 1 and 3—13 under 35 U.S.C. § 103(a) are
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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