Ex Parte Salerno

Patent Trial and Appeal Board

Sep 23, 2013

12359805 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS M. SALERNO
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Appeal 2011-004947
Application 12/359,805
Technology Center 3600
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Before: JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004947
Application 12/359,805
2
STATEMENT OF THE CASE
Thomas M. Salerno (Appellant) appeals under 35 U.S.C. § 134 from
an Examiner’s decision to reject claims 1, 7-16, and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Apel (US 85,050; iss. Dec. 22, 1868) and
Albanese (US 5,749,325; iss. May 12, 1998)1. App. Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
The claims are related to “a safety-strap set that provides for securing
chairs under tables to prevent infants and toddlers from using the chair seats
to climb on to reduce the risk of injuries to the child.” Spec. 1, para. [0001].
Claims 1, 19, and 20 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An attachment device (10), comprising:
an attachment device arranged so as to detachably attach
a self-standing legged chair (12) to a self-standing table (11)
such that the seat of the chair (12) is unable to be used for
climbing upon,
said attachment device comprising:
a pair of attachment sets, each set comprising:
a table attachment part (2) structured to
attach to an underside of the self-standing table

1 The Examiner also rejects claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Apel and Albanese. Ans. 4 and 7. The Appellant’s
Notice of Appeal is silent as to the claims appealed. In the Appeal Brief, the
Appellant elects to appeal the rejection of only claims 1, 7-16, and 18-20.
App. Br. 3 (stating that “Claims 1, 7-20 stand finally rejected” and that
“rejection of Claims 1, 7-16, and 18-20 is appealed”). Claim 17 should have
been cancelled before the appeal. See Ex parte Ghuman, 88 USPQ2d 1478,
1480 (BPAI 2008) (precedential) (rejected claims that are not appealed are
considered withdrawn and subject to cancellation by the Examiner).
Appeal 2011-004947
Application 12/359,805
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(11) using a bolt, a screw, a tape, or an adhesive
and so prevents marking the table’s top surface,
and
a length adjustable chair attachment strap (4)
of cloth or plastic designed to be detachably
looped about a leg, a brace, a rail, a spindle, or an
arm of the chair (12) and detachably attachable to
said table attachment part (2), so that when for said
first set said table attachment part (2) is attached to
the underside of the table (11) and said chair
attachment strap (4) is detachably looped about a
leg, a brace, a rail, a spindle, or an arm of the chair
(12) and said chair attachment strap and said table
attachment part (2) are attached to each other and
for said second set said table attachment part (2) is
attached to the underside of the table (11) and said
chair attachment strap (4) is detachably looped
about a leg, a brace, or an arm of another side of
the chair (12) and said chair attachment strap (4)
and said table attachment part (2) are attached to
each other. the chair (12) is held secure to the table
and, thus, cannot be used for climbing.

ANALYSIS
The Examiner finds that Apel discloses, inter alia, “a table attachment
part ([chain] C) . . . , and a length adjustable chair attachment ([screw or pin]
a),” as required by claim 1. Ans. 4. The Examiner states that “Apel does
not disclose said . . . chair attachment is a strap of cloth or plastic designed
to be detachably looped about a leg, a brace, a rail, a spindle, or an arm of
the chair,” but the Examiner finds that “Albanese discloses a multi-plastic
strap to loop about an object to prevent it from moving.” Id. at 5. The
Examiner concludes that “it would have been obvious . . . to modify the
chain of Apel to be the multi-purpose strap as taught by Albanese in order to
adjust the strap to loop around any part of the chair for providing an
Appeal 2011-004947
Application 12/359,805
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enhanced and flexible attachment.” Id.; see also id. at 8 for independent
claim 19.
The Appellant presents arguments for claims 1, 7-16, and 18-20
together. App. Br. 12-17. The Appellant argues that the “Examiner [relies]
on information gleaned solely from [the] Appellant’s specification to support
his contention.” Id. at 15. In particular, the Appellant contends that the
“Examiner relies on one of ordinary skill to modify the strap taught by
Albanese to provide for ‘. . . an enhanced and flexible attachment . . . for
support for the combination of Apel and Albanese” and that “there is no
reasoning that can be gleaned from the cited art to support Examiner’s
contention.” Id.
The Appellant’s arguments are persuasive. We find the Examiner’s
rejection insufficient to explain what in the prior art would have prompted a
person having ordinary skill in the art to use Albanese’s multi-purpose strap
for pets in place of the chain of Apel’s nursery chair so as “to loop around
any part of the chair for providing an enhanced and flexible attachment”
(Ans. 5), when Apel’s nursery chair already has the screw or pin a that
fastens the chain c to the chair, thereby fastening the chair to a table. The
reason proffered by the Examiner to modify the teachings of Apel to include
the strap of Albanese—for attachment of the strap to the chair so as to fasten
the chair to a table—is already performed by the screw or pin a of Apel.
The Examiner has not provided any findings that either Apel or Albanese
recognized a problem with the screw or pin a used in Apel such that the
chain c of Apel has to be modified to loop around a part of the chair of Apel.
Without an articulated reason based on a rational underpinning for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Appeal 2011-004947
Application 12/359,805
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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”).
Therefore, absent hindsight, we fail to see why one having ordinary
skill in the art would have been led to modify the teachings of Apel and
Albanese in the manner proposed by the Examiner.
Accordingly, we do not sustain the rejection of independent claims 1,
19, and 20 or claims 7-16 and 18, which depend directly or indirectly from
claim 1, under 35 U.S.C. § 103(a) as unpatentable over Apel and Albanese.

DECISION
The Examiner’s decision to reject claims 1, 7-16, and 18-20 is
reversed.

REVERSED

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