Ex Parte Whittaker et al

Patent Trial and Appeal Board

Aug 22, 2016

13303409 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/303,409 11/23/2011
21839 7590 08/24/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Charles Jeffrey WHITTAKER
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.
0078129-000001.001 5244
EXAMINER
MARSH, STEVEN M
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES JEFFREY WHITT AKER and
RICHARD CORWIN GONG
Appeal2014-007095
Application 13/303,409
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, JILL D.
HILL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles Jeffrey Whittaker and Richard Corwin Gong ("Appellants")
appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject
claims 1-11, 13-18, and 21-23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal2014-007095
Application 13/303,409
CLAIMED SUBJECT MATTER
Independent claims 1, 21, and 23 are pending. Claim 1, reproduced
below, illustrates the subject matter on appeal.
1. A stand comprising:
a body portion comprising a relatively flat panel;
a pair of angled support legs attachable vertically to a back
side of the body portion;
a slider arm mountable to the back side of the body portion
of the stand, the slider arm having a means for connecting a
medium to an upper portion of the slider arm, and wherein the
means for connecting the medium to the upper portion of the
slider is centered on a front side of the slider arm; and
a lip on a lower portion of a front side of the body portion,
which holds at least one page of the medium in place.
REJECTIONS
I. Claims 1-11, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Banner (US 6,237,887 Bl; iss. May 29, 2001),
Chang (US 7,188,818 B2; iss. iviar. 13, 2007), and Lang (7,611,117 Bl, iss.
Nov. 3, 2009, hereinafter "Lang"). Final Act. 2.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Banner, Chang, Lang, and Wagner (US 7,818,904 B2; iss.
Oct. 26, 2010). Final Act. 4--5.
III. Claims 13, 14, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Banner, Chang, Lang, and Sankey (US
3,762,675; iss. Oct. 2, 1973). Final Act. 5.
IV. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Banner, Chang, Lang, and Official Notice. Final Act. 7.
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Appeal2014-007095
Application 13/303,409
ANALYSIS
Rejection I - Claims 1-11, 15, 17, and 18
Appellants argue claims 1-11, 15, 17, and 18 as a group. Appeal Br.
8. We select claim 1 as representative. Claims 2-11, 15, 17, and 18 stand or
fall with claim 1.
The Examiner finds that Banner discloses a paper stand with a body
portion having flat panels 1, 2, a pair of angled support legs attached to a
back of the body portion, and a lower lip 20 to support a paper bottom.
Final Act. 2. The Examiner then finds that Chang discloses a slider arm 27
with a means 28 for connecting a medium to the slider arm 27, and
concludes that it would have been obvious to add Chang's slider arm to
Banner to secure an object to Chang's body 1, 2. Id. at 2, 3. The Examiner
finds that Lang discloses a centered connecting means 48, concluding that it
would have been obvious to use the centered connecting means 48 in the
combination of Banner and Chang. Final Act. 3.
Appellants argue that Chang teaches away from the Examiner's
proposed modification, because Chang's rotatable hooks 30 "are configured
to accommodate a wide range of canvas sizes," and states that spring-
tensioned hooks are limiting and "become overly fatigued." Appeal Br. 6.
According to Appellant, one skilled in the art therefore would not have a
reason to replace Chang's rotatable hooks 30 with Lang's clipping member
48. Id.
The Examiner responds that Appellants' teaching away argument
addresses spring-tensioned hooks that grip the side of canvas, which the
Examiner does not propose to employ in the combination of Banner, Chang,
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Appeal2014-007095
Application 13/303,409
and Lang. Ans. 9. Rather, the Examiner proposes to employ a single means
centered on a front of Chang's slider arm 27.
We are not persuaded that Chang's discussion of fatigued spring-
tensioned hooks gripping the sides of a canvas necessarily apply to the
centrally-located gripper 48 of Lang, or otherwise teach away from
employing Lang's gripper 48.
Appellants also appear to argue that Lang does not disclose a lip as
claimed. Appeal Br. 6. The Examiner, however, finds this disclosure in
Banner's lip 20. Final Act. 2. This argument does not apprise us of error in
the rejection.
To the extent that Appellants additionally argue that Rejection I is
based on "impermissible hindsight using the claims as a template" and that
the modifications proposed therein "would render the prior art invention
being modified unsatisfactory for its intended purpose" (Reply Br. 1-2),
these conclusory arguments were not raised in the Appeal Brief. Absent a
showing of good cause, we decline to consider these arguments. See 37
C.F.R. § 41.41(b)(2).
For the reasons set forth above, we sustain Rejection I.
Rejection II- Claim 8
Appellants make no argument that claim 8 would be patentable over
Banner, Chang, Lang, and Wagner, if claim 1 is not patentable over Banner,
Chang, and Lang. Appeal Br. 7-8. We therefore sustain the rejection of
claim 8 for the reasons set for above regarding Rejection I.
Rejection IV- Claim 16
Appellants make no argument that claim 16 would be patentable if
claim 15, from which it depends, is not patentable. Appeal Br. 10. We
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Appeal2014-007095
Application 13/303,409
therefore sustain Rejection III for the reasons set forth above regarding
Rejection I.
Rejection III- Claims 13, 14, and 21-23
Claims 13 and 14
Claim 13 depends from claim 1 and recites that "the means for
connecting the medium to the top portion of the arm is a screw." The
Examiner finds this disclosure in Sankey's fastener (understood to be a hook
or nail that extends through hole 29), concluding that the fastener can be a
screw as a matter of design choice. Final Act. 5.
Appellants argue that Sankey fails to disclose a screw, but rather
discloses a hook/hole arrangement for hanging the stand itself. Appeal Br.
9. Indeed, Sankey' s hook/hole 29 arrangement is intended to hang the stand
itself, with the medium being held by brackets 3, 4. Sankey 3: 1-3 and 4:9-
19.
The Examiner responds that utilizing a screw with a k_nob as the
fastener for Sankey is a matter of design choice (rather than the disclose
hook or nail) for positioning the stand on a wall. Ans. 9.
We agree with Appellants. Even if the Examiner is correct that a
screw and knob arrangement are an obvious fastener design choice, Sankey
discloses such a fastener being employed to connect the stand to the wall,
not to connect the medium to the stand. Sankey 4:9-19. It is Sankey's
brackets 3, 4 that retain the medium. Id. The Examiner has not explained
how or why Sankey's fastener (i.e., the hook or nail that would hold the
stand 1 to a wall) would modify Banner, Chang, and Lang to teach a fastener
connecting a medium to a top portion of Chang's arm 27. We do not sustain
the rejection of claims 13 and 14.
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Appeal2014-007095
Application 13/303,409
Claims 21and22
Claim 21 recites "the slider arm having a threaded screw with a knob
for connecting the calendar to an upper portion of the slider arm." Claim 22
depends from claim 21.
Appellants again argue that Chang teaches away from the Examiner's
proposed modification and that Sankey fails to teach or suggest a screw with
a knob for connecting the calendar to the slider arm. Appeal Br. 13. For the
reasons set forth above regarding claim 13, we agree with Appellants that
the Examiner fails to establish Sankey teaching or suggesting a screw with a
knob for connecting the calendar to the slider arm, and we therefore do not
sustain the rejection of claims 21 and 22.
Claim 23
Claim 23 does not recite the means comprising a screw (and knob),
but recites a calendar with a hole at top center, and means for connecting the
calendar hole to the slider arm. The Examiner finds that Sankey discloses a
stand 1 that has a hole 29 at top center, and that can retain and support a
calendar. Sankey 4:9--19.
The Examiner's rejection, however, fails to include a finding
reasoning that the proposed combination teaches or suggest the claimed
calendar "having a hole in a top center portion," or means for connecting
that hole to an upper arm portion of the proposed combination. We
therefore do not sustain the rejection of claim 23.
DECISION
We AFFIRM the rejection of claims 1-11, 15, 1 7, and 18 under 3 5
U.S.C. § 103(a) as unpatentable over Banner, Chang, and Lang.
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Application 13/303,409
We AFFIRM the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Banner, Chang, Lang, and Wagner.
We REVERSE the rejection of claims 13, 14, and 21-23 under 35
U.S.C. § 103(a) as unpatentable over Banner, Chang, Lang, and Sankey.
We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Banner, Chang, Lang, and Official Notice.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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