Ex Parte Uken et al

Patent Trial and Appeal Board

Nov 25, 2014

11654120 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STUART J. UKEN, GARY R. NEWMAN, and
LAWRENCE J. VERSTEEG
____________________

Appeal 2012-008986
Application 11/654,120
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and
SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stuart J. Uken, Gary R. Newman, and Lawrence J. Versteeg
(“Appellants”) appeal under 35 U.S.C. § 134 from a rejection of claims 10,
23–30, 33–40, 42–53, 55–58, and 61–73. Claims 10, 40, 51, 57, and 61 are
independent. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
The claims are directed to a snap lock balance shoe and system for a
pivotable window. Claim 10, reproduced below, is illustrative of the
claimed subject matter on appeal:
10. A window balance system adapted to be received in a
window jamb track, the window balance system comprising:
a U-shaped channel defining a plurality of openings;
a spring connected to a system of pulleys located within the
U-shaped channel;
a cord with a first cord end and a second cord end, the first
cord end connected and threaded through the system of pulleys,
the second cord end connected to a jamb mounting attachment;
and
a balance shoe, wherein the balance shoe comprises:
a frame comprising an elongate portion and an enlarged
portion, wherein the elongate portion comprises two frame edge
surfaces defining an elongate portion width, and wherein the
elongate portion is received at least partially within the U-
shaped channel, and wherein the enlarged portion comprises at
least two opposing sides defining an enlarged portion width
therebetween, and wherein the at least two opposing sides of
the enlarged portion are adapted to slide within the window
jamb track;
a cam at least partially disposed within the enlarged
portion, wherein the cam is adapted for rotation between a first
position and a second position;
a locking member in contact with the cam and at least
partially disposed within the enlarged portion, the locking
member comprising opposed locking surfaces, wherein the
locking surfaces are adapted to extend beyond the two opposing
sides of the enlarged portion when the cam is in the first
position; and
a connecting device for attaching the balance shoe within
the U-shaped channel.

(Emphasis Added).
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Application 11/654,120
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schmidt
Thompson
US 5,301,467
US 6,840,011B2
Apr. 12, 1994
Jan. 11, 2005

REJECTIONS
Appellants appeal the following rejections (App. Br. 8–13):
Claims 10, 23–30, 33–40, and 42–50 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over admitted prior art Figures 2A and 7A–B,
and Schmidt.1 Ans. 410.
Claims 51, 52, 57, 61–63, 68, and 70–73 stand rejected under
35 U.S.C § 103(a) as being unpatentable over admitted prior art Figures 2A
and 7A–B, and Thompson. Ans. 1012, 1214.
Claims 53, 55, 56, 58, 64–67, and 69 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over admitted prior art Figures 2A and 7A–B,
Thompson, and Schmidt. Ans. 12, 1415.

ANALYSIS
Claims 10, 23–30, 33–40, and 42–50 as unpatentable over
admitted prior art Figures 2A and 7A–B, and Schmidt.

Appellants contend that the Examiner erred by equating “hanging
connector 112,” (disclosed in Appellants’ Figures 2A and 7A–B labeled,
“Prior Art,” which connects balance shoe 110 to inverted window balance

1 In this Decision we use the terms “admitted prior art” and “admitted prior
art Figures 2A and 7A–B,” interchangeably to refer to Figures 2A and 7A–B
of Appellants replacement drawings, labeled “Prior Art,” filed during
prosecution, Jan. 17, 2007, (Fig. 2A), and April 18, 2008, (Figs 7A–B).
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122), with the claimed “elongate portion [of the frame] received at least
partially within the U-shaped channel,” as recited in both claims 10 and 40.
App. Br. 9–11, Reply Br. 4.2 Appellants argue that rather than the novel
single-piece, rigid frame, the admitted prior art “figures clearly depict a
distinct balance shoe 110 and a separate loosely hanging connector 112.”
App. Br. 10 (emphasis added). Appellants specifically assert that the
difference between the presently claimed invention and the admitted prior
art is that the “elongate portion” of the frame permits the balance shoe to be
“rigidly connected” to the U-shaped channel. Id.
As further evidence that the prior art balance shoe 110 and hanging
connector are separate, and loosely connected, Appellants cite to their
Specification, which explains that “hanging connector 112 connects the prior
art balance shoe 110 to the inverted window balance 122.” Id. at 10 citing
Spec. ¶ 12. However, the Specification passage does not state that the
hanging connector 112 is either “separate” or “loose.” It is impossible to tell
from this description, or from Figures 2A and 7A–B, that a loose, or
separate type of connection exists between hanging connector 112 and
balance shoe 110. From the evidence of record, it is just as likely that that
the prior art connection is “rigid,” as it is that the connection is “loose,” and
“separate”. We also point out that neither claim 10, nor claim 40, recites
that the balance shoe is “rigidly connected” to the U-shaped channel as
Appellants argue.
Schmidt is cited by the Examiner for disclosure of a cam mechanism
32 (see independent claims 10 and 40) in a rigid plastic frame construction

2 For purposes of clarity, the claimed “frame” is not a window frame, but an
element of balance shoe 210. See Fig. 3A, Spec. ¶ 13, (“The snap lock
balance shoe 210 has a frame 211.”)
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(claims 49–50). Ans. 7. Appellants argue only that Schmidt does not
remedy the deficiency of a lack of a rigid connection between the balance
shoe and the U-shaped channel in the admitted prior art; however, as
discussed supra, there is no deficiency to remedy in the admitted prior art .
App. Br. 10.
Appellants have failed to demonstrate a patentably distinguishable
structural difference between their claimed invention and the admitted prior
art , in view of Schmidt. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“when the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not”)(citations omitted). Accordingly, we sustain the
Examiner’s rejection of claims 10 and 40 as obvious in view of the admitted
prior art and Schmidt. Claims 23–30, 33–39, and 42–50 depend either
directly or indirectly from claims 10 and 40 and are not argued separately.
See App. Br. 11. These claims fall with claims 10 and 40 respectively.

Claims 51, 52, 57, 61–63, 68, and 70–73 as unpatentable over
admitted prior art and Thompson.

Appellants argue, similar to claims 10 and 40, that the “hook end
feature” (no reference number) of hanging connector 112 disclosed in the
admitted prior art Figure 2A is a “distinct and separate element[] from the
claimed balance shoe [and] frame.” App. Br. 12. Appellants assert that
because the hook end feature is “distinct and separate” from balance shoe
110, the admitted prior art hanging connector 112 is not “means defined by
the frame for receiving the fastener,” as called for in each of claim 51, 57,
and 61. Id. at 11. For the same reasons set forth above with respect to
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claims 10 and 40, we are also not persuaded that hanging connector 112, and
hence the hook end feature, cannot be considered a part, or portion, of the
balance shoe frame.
To the extent Appellants argue that Thompson does not remedy this
deficiency, there is no deficiency to. See id. at 12.
We therefore sustain the Examiner’s rejection of claims 51, 57, and 61
as obvious in view of figures 2A and 7A–B and Thompson. Claims 52, 62,
63, 68, and 70–73 depend either directly or indirectly from claims 51 and 61
and are not argued separately. See id. at 12. These claims fall with claims
51 and 61 respectively.

Claims 53, 55, 56, 58, 64–67, and 69 as unpatentable over admitted prior
art, Thompson, and Schmidt.

Claims 53, 55, 56, 58, 64–67, and 69 depend either directly or
indirectly from independent claims 51, 57, and 61 and are not argued
separately. See App. Br. 12. These claims also fall with claims 51, 57, and
61, respectively.

DECISION
For the above reasons, the Examiner’s rejections of claims 10, 23–30,
33–40, 42–53, 55–58, and 61–73 are 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) (2009).

AFFIRMED
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