Ex Parte Lautenschlager

Board of Patent Appeals and Interferences

Aug 15, 2012

11737158 (B.P.A.I. Aug. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HORST LAUTENSCHLAGER
____________

Appeal 2010-003403
Application 11/737,158
Technology Center 3600
____________

Before GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Horst Lautenschlager (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 2, 4, 5, and 13-16 under 35
U.S.C. § 103(a) as unpatentable over Lowe (US 2005/0229360 A1,
published Oct. 20, 2005) and Salice (US 2006/0200944 A1, published Sep.
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14, 2006). Appellant cancelled claims 3, 7, and 10. We have jurisdiction
under 35 U.S.C. § 6(b).1
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to a furniture hinge “for the
pivotable attachment of a furniture door . . . to a piece of furniture.” Spec. 3,
para. [0012]. Claims 1 and 13 are independent, and claim 1, reproduced
below with emphasis added, is illustrative of the subject matter on appeal.
1. A furniture hinge, comprising:
a door fitting including a recessed cup;
a hinge pin;
a carrier arm;
a hinge knuckle adjacent said hinge pin and
pivotably attaching said carrier arm to an interior
portion of said recessed cup;
at least two first spring legs each extending
from at least two spring coils and pressing against
a cam on either side of said hinge knuckle, said at
least two first spring legs having a first portion
outside said recessed cup and a second portion
supported by said recessed cup;

1 The Examiner also rejected claims 6, 8, 9, 11, and 12 under 35 U.S.C.
§ 102(b) as anticipated by Lowe (see Final Rej. 3-5); however, Appellant is
not appealing the rejection of those claims (see App. Br. 2 and Reply Br. 1).
Thus, we do not have jurisdiction over those claims and the Examiner’s
rejection of claims 6, 8, 9, 11, and 12 under 35 U.S.C. § 102(b) as
anticipated by Lowe constitutes the final agency action as to those claims
since no further action on those claims is possible at this time. In
accordance with the Manuel of Patent Examining Procedure (MPEP)
§ 1215.03, the Examiner should cancel claims 6, 8, 9, 11, and 12 by
Examiner’s Amendment.
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at least two connecting legs extending from
said at least two spring coils; and
a spring bow joining said at least [two]
connecting legs and positioned outside said
recessed cup, wherein a retaining pin extending
from said recessed cup holds each of said
connecting legs, and a surface of said recessed cup
supports said at least two spring coils.

OPINION
Appellant argues claims 1, 2, 4, 5, and 13-16 as a group and we select
independent claim 1 as the representative claim. See App. Br. 4-7; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2, 4, 5, and 13-16 stand or fall
with claim 1.
The Examiner finds that Lowe substantially discloses the subject
matter of independent claim 1, except that “Lowe does not teach a retaining
pin extending from the recess[ed] cup holding the two first spring legs.”
Ans. 5. To cure the deficiency of Lowe, the Examiner turns to Salice to
teach “a retaining rod (38) in addition to the hinge pin (28) which holds part
of the spring (30).” Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art “to provide the hinge of Lowe with
the retaining rod of Salice extending through the recessed cup and
interfering with the appropriate spring leg of Lowe[] because the rod would
be a modular piece whereby the user could ‘tune’ the performance of the
hinge by inserting rods of different radii.” Ans. 5-6.
Appellant presents four arguments. Appellant’s first argument is that
“a modification of Lowe with the transverse pin 38 of Salice . . . fails to
teach the elements of the claimed invention.” App. Br. 5. More particularly,
Appellant argues that Salice’s “transverse pin 38 is disclosed only as within
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the interior of the hinge cup 22 and as held in the side walls,” and “therefore,
[Salice] does not teach a ‘retaining pin extending from said recess cup’ as
recited in independent claim 1. Id.
The Examiner responds to Appellant’s argument by asserting that
claim 1’s “limitation [of] ‘ . . . extending from said recessed cup . . .’ does
not limit the pin as extending from the recessed cup toward either the
interior or exterior of the recessed cup.” Ans. 6. Therefore, it is the
Examiner’s position that “[a]lthough Salice clearly teaches the retaining pin
extending from the recessed cup into the interior of the recessed cup, this
disclosure is more limiting than the claim language at issue and is therefore
deemed to read on the claim.” Id.
Appellant responds to the Examiner’s position by arguing that “even
if Salice were considered to teach a retaining pin ‘extending from said
recessed cup’ (which it does not), Salice fails to teach a retaining pin
extending from said recessed cup that holds connecting legs positioned
outside said recessed cup,” since “[t]he retaining pin in Salice, by the
Examiner’s own admission, is located entirely within the interior of the
recessed cup and thus could not hold connecting legs outside the recessed
cup.” Reply Br. 2.
We are not persuaded by Appellant’s first argument. Salice discloses
that “a transverse pin 38 is secured at the end of the hinge cup 22 (in its side
walls).” Salice, para. [0024]. Appellant has failed to explain why the claim
language of “a retaining pin extending from said recessed cup” is not met by
the Examiner’s interpretation of Salice. Appellant appears to be arguing that
the claim language requires that the retaining pin 16 extend outside of the
recessed cup 3 and although this may be shown in Appellant’s Figure 2, the
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claim language is not so limiting. Thus, since Salice’s transverse pin 38
appears to extend from one side wall of Salice to the opposing side wall as
shown in Figure 4, we are not persuaded that Salice does not meet the claim
language of claim 1 according to the Examiner’s interpretation. However,
regardless whether Salice’s transverse pin 38 is taught as extending from the
side walls of the hinge cup 22, we find that a person of ordinary skill in the
art would understand that to use the transverse pin 38 of Salice in the hinge
cup 12 of Lowe, the transverse pin 38 would have to extend from the hinge
cup 12 beyond either the holes 42 or the holes 40(a) similar to hinge pin 30
as it is shown extending from the hinge cup 12 in Figure 1. In KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 421 (2007), the Supreme Court held that “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Thus, since Lowe already teaches the use of hinge pin 30 in a
manner where it extends from the hinge cup 12, a person of ordinary skill in
the art, being a person of ordinary creativity, would undoubtedly know that
the transverse pin 38 of Salice could be used in the same manner as Lowe’s
hinge pin 30 and would extend Salice’s transverse pin 38 from a set of
Lowe’s holes 42 or 40(a) to extend from Lowe’s hinge cup 12. Thus, we are
not persuaded by Appellant’s first main argument that the Examiner erred.
Appellant’s second argument is that “there is no legally sufficient
reason for modifying Lowe with the transverse pin 38 of Salice” and the
Examiner’s rejection lacks “some articulated reasoning with some rational
underpinning.” App. Br. 5. More particularly, Appellant argues that the
Examiner’s reasoning of modifying Lowe with the retaining rod 38 of Salice
“so that the user could ‘tune’ the performance of the hinge by inserting rods
of different radii” is not legally sufficient reason for two reasons. Id. First,
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“because Lowe has already accounted for the benefit of such a modification”
by varying the tensioning of the coils in the springs (which Lowe prefers
over other forms of tensioning). Id. Second, because Lowe teaches away
from tuning using interference to bias a spring arm since it “may result in
undesirable fluctuations of ‘feel’ as the hinges progress through open and
closed positions.” App. Br. 6.
As stated in Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006):
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to
combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n. 8 (Fed. Cir. 2000)] ("The fact that the motivating
benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one
another."). Where the prior art contains "apparently
conflicting" teachings (i.e., where some references teach the
combination and others teach away from it) each reference must
be considered "for its power to suggest solutions to an artisan of
ordinary skill.... consider[ing] the degree to which one reference
might accurately discredit another." In re Young, 927 F.2d 588,
591 (Fed.Cir.1991).

We are not persuaded by Appellant’s second argument because although the
use of Salice’s transverse pin 38 in Lowe’s hinge may lead to some negative
consequences as suggested by Appellant, such as fluctuation in feel (see
App. Br. 6), there may be other benefits. A person of ordinary skill in the art
would readily recognize that compromises are often made in the design of
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parts. Even if some of Lowe’s touted advantages would be diminished or
lost by the Examiner’s proposed combination, other advantages would be
gained, such that it would have been obvious to a person having ordinary
skill in the art at the time of invention to choose which advantages to pursue
given the known tradeoffs stemming from those choices. Therefore, the
Examiner has provided a reason with rational underpinning for combining
Lowe and Salice because the Examiner’s proposed tuning would merely be
selecting among known designs resulting in known tradeoffs. In addition,
“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here,
Lowe does not criticize, discredit, or otherwise discourage the use of two
pins; rather, Lowe merely expresses a preference for using spring tensioning
over the use of two pins. Thus, we are not persuaded by Appellant’s second
argument that the Examiner erred.
Appellant’s third argument is that “Lowe teaches away from the
proposed modification” because “modifying Lowe to include the transverse
pin 38 would require significant tooling changes (new holes, for example)”
and “Lowe essentially says that interferences, if used, should be
accomplished easily and should not require new tooling.” App. Br. 6.
We are not persuaded by Appellant’s third argument because, as
discussed supra with respect to Appellant’s second argument, it would have
been obvious to a person having ordinary skill in the art at the time of the
invention to choose which advantages to pursue given the known tradeoffs
stemming from those choices. See Medichem at 1165. Additionally, we are
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not persuaded that Lowe teaches away from being modified to include
Salice’s transverse pin 38, because Lowe does not criticize, discredit, or
otherwise discourage the use of interferences. See Fulton at 1201. Rather,
Lowe merely states a preference for using spring tensioning over the use of a
pin, but Lowe acknowledges that using a pin is an option. See Lowe, para.
[0031] (“the usage of the second hinge pin, although redundant, could still
be considered in conjunction with the … spring coils”).
Finally, Appellant’s fourth argument is that “Lowe teaches away from
the proposed modification” because Lowe desires a hinge that “incorporates
‘surprisingly’ few components (paragraph [0019]” and Lowe discusses “that
eliminating a pin ‘simplifies the assembly process tremendously’ (see
paragraph [0027].” App. Br. 6-7. We are not persuaded by Appellant’s
fourth argument that the Examiner erred, because Lowe does not criticize,
discredit, or otherwise discourage the use of Salice’s transverse pin 38 (see
Fulton at 1201), but as discussed supra, merely states a preference for using
spring tensioning over the use of a pin, while acknowledging that using a pin
is an option. See Lowe, para. [0031].
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1, and claims 2, 4, 5, and 13-16 which stand or fall
therewith, under 35 U.S.C. § 103(a) as unpatentable over Lowe and Salice.

DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4, 5, and 13-
16.
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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). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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