12690538 (B.P.A.I. Aug. 31, 2012)

Ex Parte Morris

Board of Patent Appeals and InterferencesAug 31, 2012

12690538 (B.P.A.I. Aug. 31, 2012)

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. 12/690,538 01/20/2010 Milton A. Morris FABRIC-52740 7995 26252 7590 08/31/2012 KELLY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367 EXAMINER PUROL, DAVID M ART UNIT PAPER NUMBER 3634 MAIL DATE DELIVERY MODE 08/31/2012 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 MILTON A. MORRIS ____________ Appeal 2012-009984 Application 12/690,538 Technology Center 3600 ____________ Before JENNIFER D. BAHR, EDWARD A. BROWN, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-009984 Application 12/690,538 2 STATEMENT OF THE CASE Milton A. Morris (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-27. We have jurisdiction over this appeal under 35 U.S.C. § 6. We REVERSE. THE INVENTION Appellant’s invention relates to a track assembly for supporting fabric on a wall surface. Spec. 1, [Para. 1] and figs. 3-6. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A track assembly supporting a fabric on a wall or ceiling surface under tension, comprising: a base track including a first half of a hinge defined by a curved member having an outer surface and an inner surface defining a cavity, a first half of a snapping clamp spaced apart from the first half of the hinge and a base plate extending between the first half of the hinge and the first half of the snapping clamp for contact with the surface; an upper track including a second half of the hinge defined by a curved member at least partially insertable into the cavity and rotatable within the cavity of the first half of the hinge member so as to cooperatively form a hinge, and a second half of the snapping clamp releasably lockable with the first half of the snapping clamp to cooperatively form a snapping clamp for releasably locking the fabric therebetween, and an upper plate extending between the second half of the hinge and the second half of the snapping clamp; an elongated strut disposed intermediate the second half of the hinge and the second half of the snapping clamp and extending at one end thereof from the upper plate at a non- perpendicular angle with respect to the upper plate away from the snapping clamp and towards the outer surface of the first half of the hinge facing the snapping clamp; wherein after securement of the base track to the surface, the upper track is hinged to the base track with the coupling of the first and second halves of the hinge, the upper track then Appeal 2012-009984 Application 12/690,538 3 swingable about the hinge away from the surface to facilitate placement of the fabric over the second half of the snapping clamp and subsequent swinging of the upper track towards the base track causing the first and second halves of the snapping clamp to secure and releasably lock the fabric therebetween; and wherein in the presence of forces applied to the track assembly by the fabric, the strut extends between the upper track and the outer surface of the first hinge member of the base track to resist opening of the snapping clamp and distortion of the track assembly due to the fabric tension forces. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Assael US 3,848,380 Nov. 19, 1974 Hamilton US 4,114,233 Sep. 19, 1978 Knezevich US 6,122,868 Sep. 26, 2000 Morris US 6,164,364 Dec. 26, 2000 Appellant relies on the Declaration under 37 C.F.R. § 1.132 of Milton A. Morris., filed Jun. 21, 2011 (hereafter the “Morris Declaration”) as evidence of non-obviousness.1 The following rejections are before us for review: 1. The Examiner rejected claims 1-3, 6, 8, 9, 12-15, 19, 21, 23 and 26 under 35 U.S.C. § 103(a) as unpatentable over Morris and Hamilton. 2. The Examiner rejected claims 4, 5, 10, 11, 16-18, 22, 24 and 25 under 35 U.S.C. § 103(a) as unpatentable over Morris, Hamilton, and Assael. 1 The Declarant, Milton A. Morris, is also the inventor in the instant application Appeal 2012-009984 Application 12/690,538 4 3. The Examiner rejected claims 7 and 27 under 35 U.S.C. § 103(a) as unpatentable over Morris, Hamilton, and Knezevich. 4. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as unpatentable over Morris, Hamilton, Assael and Knezevich. OPINION Rejection 1 Each of independent claims 1, 8, 13 and 21 requires that the elongated strut “disposed intermediate the second half of the hinge and the second half of the snapping clamp,” “resist[s] opening of the snapping clamp and distortion of the track assembly due to the fabric tension forces.” App. Br., Claims Appendix. Appellant argues that (1) “Hamilton merely discloses to one skilled in the art of the use of a[n] elongated strut member which is merely used to support a horizontal head trim member extending away from a vertical track member at a 90° angle;” and (2) Hamilton fails to disclose “the use of [an] elongated strut member within a track assembly such that the snapping clamp of the track assembly does not become forced open or the track assembly become deformed due to the presence of high tension fabric forces applied to the track assembly,” as required by independent claims 1, 8, 13 and 21. App. Br. 18. In response, the Examiner takes the position: Appellant’s arguments have been fully considered but they are not persuasive inasmuch as all the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable Appeal 2012-009984 Application 12/690,538 5 results to one of ordinary skill in the art at the time of the invention. Ans. 13. In this case, although we note the Examiner’s position that “the specific orientation or placement of the elongated strut cannot be relied upon for patentability for such a choice is to have been made and to have done so yields nothing more than a predictable result” (Ans. 5), we also note that the Examiner has not provided an analysis as to how the known elements of Morris and Hamilton would be combined in the manner called for in independent claims 1, 8, 13 and 21. Specifically, the Examiner has not made any findings regarding how the modified track assembly 14-16 of Morris including the elongated strut 112, 114 of Hamilton would “resist opening of the snapping clamp and distortion of the track assembly due to [] fabric tension forces,” as required by independent claims 1, 8, 13 and 21. As such, the Examiner has not articulated an adequate rationale as to why, absent hindsight gleaned from Appellant’s disclosure, a person of ordinary skill in the art would have been prompted to combine the teachings of Morris and Hamilton. See In re Kahn, 441, F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) ("rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") In conclusion, for the foregoing reasons, the rejection of claims 1-3, 6, 8, 9, 12-15, 19, 21, 23 and 26 under 35 U.S.C. § 103(a) as unpatentable over Appeal 2012-009984 Application 12/690,538 6 Morris and Hamilton (i.e., Rejection 1) cannot be sustained.2 See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) Rejections 2-4 The Examiner’s application of Assael and Knezevich as separate additional references in conjunction with Morris and Hamilton do not remedy the deficiencies of Morris and Hamilton as described above. Accordingly, Rejections 2-4 likewise cannot be sustained. SUMMARY The decision of the Examiner to reject claims 1-27 is reversed. REVERSED mls 2 Since we have determined that the Examiner has failed to articulate an adequate reasoning with some rational underpinning to support the conclusion of obviousness of the subject matter of claims 1-27, we do not discuss the Morris Declaration.