Ex Parte Nostrant

Patent Trial and Appeal Board

Mar 20, 2018

14941894 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/941,894
59520 7590
Ruttler Mills PLLC
PO Box 1029
Seabeck, WA 98380
FILING DATE FIRST NAMED INVENTOR
11/16/2015 Thomas E. Nostrant
03/22/2018
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.
NOST-1-1001-2 1002
EXAMINER
MILLNER, MONICA E
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
patents@ruttlermills.com
docket@ruttlermills.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. NOSTRANT
Appeal2017-007455 1
Application 14/941,8942
Technology Center 3600
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1, 3, and 17-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Br.," filed Nov. 3, 2016) and
the Examiner's Answer ("Ans.," mailed Feb. 14, 2017) and Final Office
Action ("Final Act.," mailed Oct. 12, 2016).
2 According to Appellant, the real party in interest is Thomas E. N ostrant.
Br. 4.
Appeal2017-007455
Application 14/941,894
BACKGROUND
According to Appellant, "[the] invention relates generally to
mechanics and more specifically to an improved portable bicycle stand."
Spec. i12.
CLAIMS
Claims 1, 18, and 19 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A stand system for supporting a pedal bicycle in an
upright position without fastening a structure to a bicycle
frame, the stand system comprising:
a collapsible member composed of a plurality of
separable interlocking segments including at least a first end
segment and a second end segment;
a concave cradle positioned at one end of the first end
segment of the collapsible member, the concave cradle having
an open face that is fixed in line with a longitudinal axis of the
first end segment, the concave cradle operable to restably
receive a tube of a bicycle frame;
a post positioned at one end of the second end segment of
the collapsible member, the post having a single tip that is fixed
in line with a longitudinal axis of the second end segment, the
post operable to interface with a ground surface;
an elastic member that extends from the concave cradle
to the post internally via the plurality of separable interlocking
segments to link [] the plurality of separable interlocking
segments and tensionally bias the collapsible member in an
extended configuration; and
a parking brake tension band independent from the
collapsible member that is operable to secure a bicycle hand
brake in an engaged position.
Br. 22.
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Application 14/941,894
REJECTIONS
1. The Examiner rejects claim 19 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. The Examiner rejects claims 1, 3, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Langlais3 in view of Covert4 and Griffith. 5
DISCUSSION
Written Description
The Examiner rejects claim 19 as failing to comply with the written
description requirements based on the limitation
a collapsible member having a uniform external diameter along
its entire length when in an extended configuration, the
collapsible member composed of two or more a plurality of
separable segments, wherein at least one of the segments
includes a recessed tip portion that limits insertion depth
relative to an adjacent segment.
Final Act. 2-3. Specifically, the Examiner finds that neither the
Specification nor the figures "show/describe the recessed tip portion with the
uniform external diameter along a length of the segments." Id. at 3 (citing
Spec. i138; Figs. 18, 19).
We are persuaded of error in this rejection because we agree with
Appellant that Figures 1, 18, and 19 reasonably convey to a person of skill in
the art that the inventor was in possession of a device as claimed in claim 19
at the time of filing. In particular, Figure 1 shows a device that is collapsed
and depicts recessed portions of segments 104 that are inserted into adjacent
segments when in an extended position to form a device that includes a
3 Langlais, US 2,705,015, iss. Mar. 29, 1955.
4 Covert, US 563,570, iss. July 7, 1896.
5 Griffith, US 5,291,972, iss. Mar. 8, 1994.
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Application 14/941,894
uniform external diameter in the extended position. Similarly, Figures 18
and 19 depict a device in an extended position having a uniform external
diameter and Figure 18 appears to show recessed portions of segments
inserted into corresponding slots on adjacent segments. One of ordinary
skill in the art would reasonably conclude that these recessed portions are
limited to the extent they may be inserted into adjacent segments because
they include a stepped portion where the segments increase in diameter, as
shown in Figure 1, and in order to achieve a uniform external diameter for
the device in the extended configuration of Figure 19. Accordingly, we are
persuaded of reversible error, and we do not sustain the rejection of claim 19
here.
Obviousness
With respect to claim 1, the Examiner finds that Langlais teaches a
collapsible member composed of a plurality of separable interlocking
segments; a top fixed in line with a longitudinal axis of the first end
segment; a post with a single tip at the second end segment; and an elastic
member disposed within the segments that tensionally biases the device in
an extend configuration. Final Act. 3--4. The Examiner also finds that
Langlais teaches that the device may be used as a post or strut, but the
Examiner acknowledges that the top member of Langlais' s device is not
shaped as a concave cradle. Id. at 4. With respect to this claim requirement,
the Examiner relies on Covert. Specifically, the Examiner finds that Covert
teaches a stand system for a bicycle with a collapsible member having a
concave cradle at a first end segment. Id. The Examiner concludes:
Since the collapsible support of Langlais 'O 15 is usable as
a strut or post, then it would be [] obvious to one of ordinary
skill in the art at the time the invention was made to modify the
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Application 14/941,894
top portion of Langlais 'O 15 with the cradle of Covert '570 to
support other types of object[s], such as a vehicle, thus
functioning as a post, strut or rod for a bicycle.
Id. Finally, the Examiner acknowledges that Langlais does not teach a
parking brake band, but the Examiner relies on Griffith to conclude that it
would have been obvious to modify Langlais to include a bike brake band. 6
Id. at 5.
As discussed below, we are not persuaded of reversible error in the
rejection of claim 1 by Appellant's arguments.
Appellant first argues that Covert does not teach or suggest a concave
cradle with an open face that is fixed in line with a longitudinal axis of the
first end segment. Br. 11. Appellant asserts that Covert's cradle is attached
to the collapsible member via a universal joint. Id. at 12-14. Appellant
argues that "omitting [this] joint in Covert would have changed the principle
operation of Covert and rendered the reference completely unsuitable for its
intended purpose" because the joint is integral to Covert' s device and is
needed to attach the device to the bike frame when not in use. Id. at 14. We
are not persuaded of error and agree with the Examiner's response. See
Ans. 4--8. As noted by the Examiner, the rejection does not contemplate
modifying Covert's device and instead seeks only to modify Langlais's
device with a concave cradle as taught by Covert. We disagree with
Appellant to the extent it is argued that Covert's joint portion cannot be
separated from the cradle portion or that such separation would change the
principle of operation of the cradle, i.e., we find that it would remain suitable
for cradling a tube of a bicycle frame.
6 Appellant does not contest the Examiner's findings and conclusion with
respect to Griffith. See Br. 10-18.
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Application 14/941,894
Next, Appellant argues that "eliminating the point of the Langlais
reference would change the principle operation of Langlais as a pointer or
wand and make it less attractive." Br. 15. We disagree for the reasons
provided by the Examiner. See Ans. 8-9. Specifically, Langlais identifies
other uses for the device beyond use simply as a pointer stick. See Langlais
col. 1, 11. 15-25. Further, we disagree that changing the aesthetic of
Langlais' s device would affect its intended purpose or principle of operation.
Further, Appellant argues that Covert's cradle "could not without
further modification attach to the domed post of Langlais." Br. 15.
However, "[ t ]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference ... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d413, 425 (CCPA 1981). The Examiner makes clear that the
rejection is not based on the incorporation of Covert's specific cradle into
Langlais's device. Rather, the rejection "is simply using the teaching of
Covert's cradle shaped top to modify the dome shaped top of Langlais."
Ans. 9.
Finally, Appellant argues that the rejection "fails to satisfy the prima
facie case requirements with respect to Section 103" because the Examiner
has not made any findings with respect to the level of skill in the art and
because "the reason for the combination is not tied to what is actually
claimed." Br. 1 7-18. We are not persuaded of error. Regarding
Appellant's argument that the Examiner erred in not putting forward a
finding of fact as to the level of ordinary skill in the art, we are not
persuaded of error because "[a] specific finding on the level of skill in the art
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is not ... required where the prior art itself reflects an appropriate level ... "
Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163-64
(Fed. Cir. 1985). The Board has previously re-affirmed that "[t]he skill-
level determination is an important guarantee of objectivity in an
obviousness analysis." Ex parte Jud, 85 USPQ2d 1280, 1282 (BP AI 2007)
(informative). "Neither the statute nor the Graham [Graham v. John Deere
Co., 383 U.S. 1 (1966)] factors, however, prescribe a specific format for the
skill-level determination." Id. "While the examiner did not have an
expressly denominated finding regarding the level of skill in the art,
[Appellant is] on notice about what the examiner thought one of skill in the
art would have known and why." Id. at 1284. "By outlining what one
would know from references, the examiner met [her] burden to establish the
skill level in the way it is typically met during examination." Id.
Further, we agree with the Examiner that the rejection provides an
adequate rationale to support the conclusion of obviousness. See Ans. 10-
11. Specifically, Langlais teaches a collapsible rod that may have many uses
and the rejection seeks to provide further functionality for Langlais's rod by
adding a top cradle portion as taught by Covert "in order to support a portion
of a bicycle or other similar vehicle when the vehicle is not in use." Ans. 10.
We agree with the Examiner that a person of ordinary skill in the art would
have recognized that changing the shape of Langlais' s top to include a cradle
would provide functionality for better supporting a bicycle. See Id. at 10-
1 1.
Based on the foregoing, we are not persuaded of reversible error with
respect to claim 1. Accordingly, we sustain the rejection of claim 1. For the
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same reasons we also sustain the rejection of claims 3 and 17-19, for which
Appellant does not provide separate arguments. See Br. 18-20.
CONCLUSION
We REVERSE the rejection of claim 19 under 35 U.S.C. § 112, first
paragraph. We AFFIRM the rejection of claims 1, 3, and 17-19 under
35 U.S.C. § 103(a).
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).
AFFIRMED
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