Ex Parte Lowe et al

Patent Trial and Appeal Board

Jun 29, 2018

14493102 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/493,102 09/22/2014
101839 7590 06/29/2018
SCHULTZ & ASSOCIATES, P.C.
5400 LBJ FREEWAY
SUITE 1200
DALLAS, TX 75240
FIRST NAMED INVENTOR
Mark Jeffrey Lowe
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.
41061.0438 9356
EXAMINER
0 BRIEN, JEFFREY D
ART UNIT PAPER NUMBER
3677
MAILDATE DELIVERY MODE
06/29/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARK JEFFREY LOWE and UDHA YA BHASKAR
NALLAMOTTU
Appeal2017-006709
Application 14/493,102
Technology Center 3600
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
ERIC C. JESCHKE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 2, 6, and 9-19. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE and enter NEW GROUNDS OF REJECTION.
Appeal2017-006709
Application 14/493,102
THE INVENTION
Appellants' claims are directed to "adjustable hinges having a hinge
arm capable of a vertical adjustment and an overlay adjustment." Spec. i-f 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An adjustable hinge fixture for mounting a door member
on a cabinet frame member comprising:
a hinge cup fitted for insertion into a bore of the door
member;
a hinge arm pivotally connected to the hinge cup and
integrally formed with an attachment section;
a deformable hinge member comprised of a semi-
cylindrical plate integrally formed with the attachment section
and an abutment section;
a first set of alignment tabs, extending from the abutment
section for contact with the cabinet frame and for alignment of
the abutment section with the cabinet frame;
a second set of alignment tabs, opposing the first set of
alignment tabs, extending from the abutment section for contact
with the cabinet frame and for alignment of the abutment section
with the cabinet frame;
a raised seat extending from the abutment section towards
the attachment section;
an overlay adjustment screw, detached from the abutment
section, for threaded insertion through the attachment section and
abutting the seat; and,
wherein the overlay adjustment screw moves the
attachment section with respect to the abutment section by
bending the deformable hinge member in order to effect an
overlay adjustment.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Domenig
Rucker
Blum
us 6,125,510
US 2004/0163211 Al
GB 1506252
2
Oct. 3, 2000
Aug.26,2004
Apr. 5, 1978
Appeal2017-006709
Application 14/493,102
REJECTIONS
The Examiner made the following rejections:
Claims 1, 2, 6, 9, and 10 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 2.
Claims 1, 2, 6, and 9--19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Domenig, Blum, and Rucker. Final Act. 3.
ANALYSIS
Written Description
In relation to the claimed adjustment screw being "detached from the
abutment section," the Examiner's rejection of claim 1 asserts that "[t]here is
no support for this limitation in the original disclosure because the overlay
adjustment screw is shown as being attached to the abutment section." Final
Act. 2. The Examiner takes a similar stance with regard to claim 6 due to
similar language regarding the adjustment screw being "detached from the
second plate." Id. These rejections are also pertinent to the Examiner's
construction of "detached" and its application to the prior art at issue as
discussed infra.
As noted by Appellants, the Examiner utilizes the dictionary
definition of 'join" (a term not found in the claims) to conclude "that since
the overlay adjustment screw contacts a seat on the abutment plate, then by
definition, the overlay screw must be attached." Reply Br. 6; see also Ans.
2-3. We agree with Appellants that "[o]ne thing may indeed 'contact'
another thing and yet not be 'attached' or 'joined' to it." Reply Br. 7.
Essentially, the issues in this case boil down to the proper construction of the
term "detached" in relation to the term "attached."
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Application 14/493,102
The Examiner asserts that "attached" requires contact, so, in contrast,
"detached" infers no contact. Ans. 2. Appellants use the term "detached" in
the claims to refer to components that, although they may be in contact, can
be freely separated because they are not joined or connected. See Reply Br.
8. Appellants utilize the term "attached" to refer to something that is fixedly
or rigidly attached. Spec. i-f 27. Finally, according to Appellants, the term
"detached" as used in the claims essentially amounts to a more
encompassing version of "attached" to refer to items that are reversibly
attached or detachable, but still are utilized to join other items together, such
as a screw that may be removed. Once these concepts, as used in
Appellants' Specification and claims, are understood in relation to one
another, it is clear that "detached" as used in the claims is not intended to
mean physically detached from other elements, but refers to an element such
as a fastener that may attach other elements together in a reversible manner.
While the Specification and the drawings do not discuss or show an
embodiment where the screw is actually detached, we are persuaded that the
screw is disclosed as being detachable, as opposed to rigidly attached, such
that there is written description support for a detached screw.
Although we disagree with the Examiner's rejection of the claims,
there still remains an issue in that Appellants' usage of the term "detached"
is contrary to its common meaning, which, as noted above, the Examiner
correctly finds infers a lack of contact. In other words, Appellants' claims
would cover only a hinge where the detachable screw is actually detached.
The term "detached" is found nowhere in the Specification and was only
added via amendment during prosecution to clarify the relationship and to
overcome prior art showing a riveted screw that cannot be detached.
Because Appellants have not defined the term "detached" to refer to
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Application 14/493,102
something that is "detachable" and its common meaning is contrary to the
usage in the claims, we conclude that this term is indefinite and enter a new
grounds of rejection of claims 1, 2, 6, 9, and 10 under 35 U.S.C. § 112,
second paragraph.
Obviousness
Although we conclude that the term "detached" as used in the claims
is indefinite, it is clear to us from the prosecution history and Appellants'
arguments in this Appeal that however the term "detached" is construed, the
Examiner's prior-art rejection fails as well. The rejection of all of the claims
relies on the use of "detached" to refer to the adjustment screw in Blum,
which is riveted in place such that it can be neither detached nor detachable,
thus rendering the rejection improper. As the Examiner has even admitted,
"the threaded adjustment means further comprises a threaded screw rotatably
attached to the platform" and "the platform is rigidly attached to the
threaded adjustment means [by way of the rivet])." Final Act. 11.
Accordingly, we do not sustain the Examiner's rejection over Blum. The
remaining references do not cure this deficiency and so we do not sustain the
prior art rejections based upon Blum.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1, 2, 6, and 9--19 and enter a new grounds of rejection;
37 C.F.R. § 41.50(b) (2011).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides "[a] new ground
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Application 14/493,102
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection 1, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome. If Appellant elects
prosecution before the Examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should be returned to
the Patent Trial and Appeal Board for final action on the affirmed rejection,
including any timely request for rehearing thereof.
1 37 C.F.R. § 41.52(a)(l) provides "Appellant may file a single request for
rehearing within two months from the date of the original decision of the
Board."
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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)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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