11037785 (P.T.A.B. Oct. 29, 2012)

Ex Parte Ruiz

Patent Trial and Appeal BoardOct 29, 2012

11037785 (P.T.A.B. Oct. 29, 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. 11/037,785 01/18/2005 Chris Ruiz RIZ1-I23 6930 7590 10/29/2012 Karl M. Steins Steins & Associates Suite 120 2333 Camino del Rio South San Diego, CA 92108 EXAMINER MULLER, BRYAN R ART UNIT PAPER NUMBER 3727 MAIL DATE DELIVERY MODE 10/29/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRIS RUIZ Appeal 2010-007224 Application 11/037,785 Technology Center 3700 ____________ Before JOHN C. KERINS, ANNETTE R. REIMERS, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007224 Application 11/037,785 - 2 - STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3, 5-7, 10-13, and 16-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention is a wrench and fitting stand. Spec. 4. Claim 7, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 7. A stand assembly, comprising: a base defining a substantially flat top surface, with said top surface being devoid of depressions formed therein, said top surface defining a central flat portion bounded at its perimeter by an edge; a stand extending upwardly from said base top surface, in spaced relation to said edge, said stand comprising: a pair of opposing upright arms in generally parallel spaced relation, said arms being fixed and immovable in relation to said base; and a cradle located between said arms and further defined by a cradle base surface, said cradle base surface being spaced above said base top surface by a distance greater than zero; and a clamp slidingly attached to a top surface of one said upright arm, said clamp defining an L-shape having a vertical tab extending downwardly into said cradle from a horizontal tab. Appeal 2010-007224 Application 11/037,785 - 3 - THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Wilkes Eastman Gaither Cole Young Weissenborn US 439,918 US 667,933 US 3,626,600 US 4,077,292 US 5,791,213 US 5,848,783 Nov. 4, 1890 Feb. 12, 1901 Dec. 14, 1971 Mar. 7, 1978 Aug. 11,1998 Dec. 15, 1998 The following rejections are before us for review: 1. Claims 7, 13, and 21-23 are rejected under 35 U.S.C. § 102(b) as being anticipated by Cole. 2. Claims 1 and 3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cole. 3. Claims 5, 6, 10-12 and 16-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cole and Gaither. 4. Claims 1, 3, 5-7, 10-13 and 16-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilkes, Young and Weissenborn. 5. Claims 1, 3, 5-7, 10-13 and 16-23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wilkes, Eastman and Weissenborn. ANALYSIS Rejection 1 – Anticipation Based on Cole The Examiner finds that Cole discloses a stand assembly comprising a base, a stand, and a clamp, within the meaning of the claims. Ans. 4. More particularly, the Examiner finds that the workpiece 4 intended to be cut by the circular saw 1 in Figure 1 of Cole satisfies the “base” limitation in claims 7 and 13. Id. The Examiner finds that the I-beam member (e.g., a Appeal 2010-007224 Application 11/037,785 - 4 - carpenter’s level) shown in Figure 3 of Cole satisfies the “stand” limitations in claims 7 and 13. Ans. 4, 13. Finally, the Examiner finds that annotated feature 14 in Figure 2 of Cole satisfies the limitation in claims 7 and 13 directed to an L-shaped clamp with a downward extending vertical tab. Ans. 4-5. Appellant argues that the workpiece of Cole is not a “base.” App. Br. 10, n. 2, 3. The Appellant argues that that the carpenter’s level shown in the Cole figures fails to satisfy the upright arms limitation of the invention. App. Br. 10, n. 4, 5. The Appellant further argues that Cole does not possess a “clamp” within the meaning of the claims. Determining whether claims are anticipated involves a two-step analysis. In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). The first step involves construction of the claims of the patent at issue. Id. “During examination, ‘claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Id. (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The second step of an anticipation analysis involves comparing the claims to prior art. Id. A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation. Id. Furthermore, because the hallmark of anticipation is prior invention, the prior art reference, in order to anticipate under 35 U.S.C. § 102, must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements “arranged as in the claim.” Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Appeal 2010-007224 Application 11/037,785 - 5 - The requirement that the limitations be “arranged as in the claim” refers to the need for an anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. Id. In other words, it means “arranged or combined in the same way as in the claim.” Id. In the instant case, the L-shaped clamping member of Cole is not arranged in the same way as in the claim of the instant invention. In the context of the Appellant’s disclosure, the term “clamp” would be understood by a person of ordinary skill in the art as a device that engages a wrench, pipe fitting, or similar object and holds it in a relatively fixed and stable position. The clamping member of Cole (feature 14 in Figure 2) is used to connect the longitudinal channel 10 to a carpenter’s level (feature 24 in Figure 3). To the extent it applies a clamping force, it does so in the opposite direction of where force would need to be applied to hold a wrench or pipe fitting in place. Thus, it is not capable of engaging a wrench or pipe fitting. Thus, we agree with the Appellant that Cole does not anticipate claims 7, 13, and 21-23. Accordingly, we do not sustain the Examiner’s rejection of such claims under 35 U.S.C. § 102(b). Rejection 2 – Unpatentability over Cole The Examiner’s obviousness rejection of claims 1 and 3 over Cole as a stand-alone reference suffers from the same deficiency relating to the clamping member limitation discussed in relation to the anticipation rejection of claim 7 supra. Accordingly, for the same reasons discussed immediately above, we do not sustain the Examiner’s rejection of claims 1 and 3. Appeal 2010-007224 Application 11/037,785 - 6 - Rejection 4 Unpatentability Over Wilkes, Young and Weissenborn Appellant argues the unpatentability rejections of claims 1, 3, 5-7, 10- 13 and 16-23 over the combination of Wilkes, Young and Weissenborn as a group. See Reply Br. 10-15. We select independent claim 7 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). All of the pending claims under this ground of rejection stand or fall with claim 7. The Examiner finds that Wilkes discloses a device for wrenches or plumbing fittings that possesses essentially all of the elements of the claimed invention except for a flat base and an L-shaped clamp member with a downward extending vertical tab disposed atop the upright arm of a stand. Ans. 10-11. The Examiner finds that Young discloses a pipe wrench stand with two upright arms, one of which is L-shaped with a vertical tab extending upward from a horizontal tab and that the L-shaped upright arm is adjustable to accommodate several different sized wrenches. Ans. 11. The Examiner also finds that Young discloses a stand disposed in spaced relation to the peripheral edge of the base. Ans. 12-13. In addition, the Examiner relies on Weissenborn as teaching that a work support apparatus can have a flat base that rests upon the flat surface of a table as an alternative to being clamped to the edge of a table. Ans. 12. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to replace the lower (table) clamp of Wilkes with the flat (table top) base of Young and/or Weissenborn. Ans. 12. The Examiner also concludes that it would have been obvious to substitute the upper (wrench /pipe fitting) clamping mechanism of Wilkes with an L-shaped clamping member as in Young and to invert the L-shaped member so that Appeal 2010-007224 Application 11/037,785 - 7 - the vertical tab extends downward from an upright arm instead of upward from the base. Ans. 12. The Examiner denoted the rejection over Wilkes, Young and Weissenborn as a new ground of rejection. Ans. 3. Appellant argues that the Examiner’s new ground of rejection over combinations including Weissenborn is procedurally improper. Reply Br. 11. However, the Examiner noted that Weissenborn had been discussed in the body of the rejection appealed from, but that the Examiner had inadvertently omitted Weissenborn from the caption of the statement of rejection. Id. The Examiner gave Appellant the option to either: (1) reopen prosecution to respond to the rejection and withdraw the appeal; or (2) maintain the appeal by filing a reply brief. Ans. 25. The Appellant filed a reply brief, thereby electing to maintain the appeal. Under the circumstances, we conclude that Appellant waived his right to reopen prosecution. Regarding the substantive merits of the rejection, Appellant argues that Wilkes is non-analogous art. Id. Appellant also argues that Wilkes teaches away from Appellant’s invention because it clamps to a table instead of resting on a flat table surface. Id. We reject Appellant’s argument that Wilkes is non-analogous art. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which Appeal 2010-007224 Application 11/037,785 - 8 - the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art because of similarity to the structure and function of the claimed invention as disclosed in the application.” Id. at 1325-26. “A reference is reasonably pertinent . . . if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Id. Whether a prior art reference is “analogous” is a question of fact. Id. at 658. Wilkes is from the same field of endeavor as Appellant’s invention and, therefore, qualifies as analogous art. The Appellant’s invention and Wilkes are both devices for clamping a wrench. The fact that Wilkes’ device clamps to the edge of a table instead of sitting atop a flat table surface does not remove it from Appellant’s field of endeavor. In this regard, Appellant’s attempt to define the field of endeavor as pertaining to the operating environment of field plumbing work is overly narrowing, considering that Appellant states in the Specification that “[t]his invention relates generally to tools and fixtures and, more specifically to a Wrench and Fitting Stand.” Spec., p. 1, ll. 3-4.1 1 Appellant’s reply also states that “the Examiner relied upon Weissenborn without any indication as to why Weissenborn is analogous to Applicant’s claimed invention and/or any combination with Young/Eastman/Young might be suggested.” Reply 11. We believe the Examiner’s reliance on Weissenborn as analogous art was proper and, Appeal 2010-007224 Application 11/037,785 - 9 - We also reject Appellant’s “teaching away” argument. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). Applying the foregoing standard, Appellant has not shown that Wilkes teaches away from the instant invention. The remainder of Appellant’s arguments fail to persuade us that this invention is not obvious. The Supreme Court has admonished lower courts that a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Mounting an L- shaped clamping member atop an upright arm is a simple mechanical technique that requires no more than the exercise of common sense by a person of ordinary skill in the art. See Wyers v. Master Lock Co., 616 F.3d 1231, 1241-42 (Fed. Cir. 2010) quoting KSR, supra at 421. Accordingly, we sustain the Examiner’s rejection of claims 1, 3, 5-7, 10-13 and 16-23.2 furthermore, the Examiner made a proper showing that Weissenborn suggests substituting a table edge clamp with a flat base. Ans. 22. 2 With respect to Rejections 3 and 5, inasmuch as we have sustained the Examiner’s rejection that all of the pending claims are unpatentable under 35 U.S.C. § 103(a) over the combination of Wilkes, Young and Weissenborn, we do not reach the Examiner’s rejections of unpatentability over the combination of Cole and Gaither and/or the combination of Wilkes, Eastman and Weissenborn. Appeal 2010-007224 Application 11/037,785 - 10 - DECISION The decision of the Examiner to reject claims 1, 3, 5-7, 10-13 and 16- 23 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED JRG