Ex Parte Williams

Patent Trial and Appeal Board

Jun 22, 2016

11952718 (P.T.A.B. Jun. 22, 2016)

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.
11/952,718 12/07/2007 Matthew G. Williams F6029-02901 1775
11753 7590 06/23/2016
DUANE MORRIS LLP (prev. Boca Raton)
IP DEPARTMENT
30 SOUTH 17TH STREET
PHILADELPHIA, PA 19103-4196
EXAMINER
WAGGENSPACK, ADAM J
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
06/23/2016 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 MATTHEW G. WILLIAMS
________________

Appeal 2014-005912
Application 11/952,718
Technology Center 3700
________________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–34. Appeal Br. 1, 2.
Claims 2–4, 6–9, 11, 12, 17, 18, and 21–25 have been canceled. Appeal Br.
2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed generally to tool belts, and
more particularly to tool support devices attached to tool belts.” Spec. ¶ 2.
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Claims 1, 16, and 20 are independent. Independent claim 1 is illustrative of
the claims on appeal and is reproduced below:
1. A hammer holder, comprising:
a hammer support system configured to be attached to a
person; and
a hammer support device attached to a surface of the
hammer support system, said hammer support device
comprising:
an upper support arm forming a first opening sized to
enable a handle of a hammer to be inserted into the first opening
yet prevent a head of a hammer from passing through the first
opening;
a lower support arm disposed downwardly at a distance
from the upper support arm, the lower support arm forming a
second opening sized to receive a handle of a hammer, wherein
said surface and said lower support arm completely surround a
handle of a hammer to limit the movement of a handle of a
hammer while a head of a hammer is supported by the upper
support arm; and
a first support leg extending from a first side of the upper
support arm to a first side of the lower support arm and a second
support leg at a distance from the first support leg extending from
a second side of the upper support arm to a second side of the
lower support arm, the first support leg and the second support
leg connecting the upper support arm and the lower support arm,
wherein said upper support arm and said lower support
arm are formed from a bar having a generally circular cross-
section, said first support leg includes a first attachment region
having a first orifice for enabling a connector to be inserted
therethrough to attach the first support leg to the surface, and said
second support leg includes a second attachment region having a
second orifice for enabling another connector to be inserted
therethrough to attach the second support leg to the surface.

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REFERENCES RELIED ON BY THE EXAMINER
Huff US D 324,309 Mar. 3, 1992
Dancyger US 6,119,909 Sept. 19, 2000
Panosian US 6,702,168 B2 Mar. 9, 2004
Lee US 6,932,223 B1 Aug. 23, 2005
Reynolds US 6,997,421 B2 Feb. 14, 2006

THE REJECTIONS ON APPEAL
Claim 15 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claim 20 is rejected under 35 U.S.C. § 102(b) as anticipated by, or in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over Lee.
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Panosian, Dancyger, and Lee.
Claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 are rejected under 35
U.S.C. § 103(a) as unpatentable over Huff, Dancyger, and Lee.
Claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 are rejected under 35
U.S.C. § 103(a) as unpatentable over Huff, Dancyger, and Reynolds.1
Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Huff, Dancyger, Lee or Reynolds, and Panosian.

ANALYSIS
The rejection of claim 15 as indefinite
Claim 15 depends from canceled claim 14 and it is therefore unclear
from which claim it does in fact depend. Accordingly, we summarily

1 Claims 23 and 24 were inadvertently included in this statement of
rejection. However, those claims have been cancelled and are not before us
on appeal.
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sustain the Examiner’s rejection of this claim as being indefinite.2 Final Act.
2; Ans. 2.
The rejection of claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 as
unpatentable over Huff, Dancyger, and Lee
Appellant does not present separate arguments distinguishing claims
1, 5, 10, 13, 15, 16, 19, 20, and 26–33. Appeal Br. 12–14; Reply Br. 9–11.
We select independent claim 1 for review with claims 5, 10, 13, 15, 16, 19,
20, and 26–33 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
The Examiner relies on Huff for disclosing a hammer support system,
including an upper support arm, support legs and a lower support arm
formed from a bar having a generally circular cross-section. Final Act. 7.
However, the Examiner acknowledges that Huff “does not disclose the
remaining structure of the lower support arm.” Final Act. 7. For this
remaining structure, the Examiner relies on Lee stating, “Lee discloses that it
is known to have a tool holder with upper and lower receiving portions that
each surround a portion of the tool.” Final Act. 7. The Examiner also relies
on Dancyger stating, “Dancyger discloses a hammer holder having a lower
support arm as claimed . . . and the use of rivets to attach a hammer holder to
a tool belt.”3 Final Act. 8. The Examiner concludes that it would have been
obvious “to replace the lower portion of the hammer holder of Huff with a

2 For purposes of examination of the patentability of claim 15 over the cited
art, the Examiner construed the dependency of claim 15 to be on claim 13
from which claim 14 previously depended. Final Act. 2. For purposes of
this Appeal, we do the same.
3 The Examiner also states, “the structure of the hammer holder of Dancyger
is shown as being identical to that of [Appellant’s] lower support arm.”
Final Act. 8.
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depending support arm like that of Dancyger” and that this would be done
“in order to surround the lower portion of the tool as taught by Lee.” Final
Act. 8. The Examiner’s motivation for doing so is “to more firmly secure
the hammer in place.” Final Act. 8.
Appellant asserts, “even if Huff and Dancyger were combined, a
person of ordinary skill in the art would understand that the combination
of Huff and Dancyger is the hammer holder of Huff.” Appeal Br. 13;
Reply Br. 9–10. Appellant explains, “all that can be drawn from Huff and
Dancyger is that an upper support loop can be used to support a hammer
by the head of the hammer.” Appeal Br. 12; Reply Br. 9. This contention
by Appellant ignores the Examiner’s reliance on Dancyger for teaching a
“depending support arm” and the “use of rivets to attach a hammer holder to
a tool belt.” Final Act. 8. In other words, more can be drawn from the
combination of Huff and Dancyger than simply a support loop supporting a
hammer head. Appellant further contends, “[n]either Huff nor Dancyger
disclose or suggest a lower support arm forming a second opening sized to
receive a handle of a hammer.” Appeal Br. 13; Reply Br. 9. However, the
Examiner relies on Lee for this disclosure, not Huff or Dancyger. Final Act.
7, 8. To be clear, the Examiner relies on Lee’s disclosure of “both upper and
lower support arms that surround a tool to securely hold the [tool] in place.”
Final Act. 8. Hence, Appellant’s contentions regarding Huff and Dancyger
are not persuasive of Examiner error.
As for Lee, Appellant asserts, “Lee’s structure is dictated by the fact it
is designed to hold a screwdriver (or similar tool)” (Appeal Br. 13) and “[a]s
such, the configuration of Lee is based on different principles than the
designs of Huff and Dancyger. Thus, a person of ordinary skill in the art
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would not understand Lee to suggest modifications to Huff that would result
in the claimed hammer support device.” Appeal Br. 13, see also Reply Br.
9.
According to the Examiner, “Lee provides the motivation to have both
an upper and lower support arm. As such, it is not material whether
Dancyger or Huff provide such a disclosure.” Ans. 4. Further, Lee and
Reynolds (discussed infra) disclose tool holders having “an upper support
arm that allows a lower portion of the tool to pass through but not the upper
portion so that the upper portion rests on top of the upper support arm, and a
lower support arm that holds a lower portion of the tool in place.” Ans. 4.
As for Appellant’s argument that Lee’s device is designed to hold a
screwdriver, the Examiner notes, “Lee discloses use with a variety of tools.”
Ans. 4 (citing Lee, Abstract and Background of the Invention). The
Examiner also “sees no disclosure in Lee that it is particularly adapted for
the unique shape and weight distribution of a screw driver, and Lee's
disclosure that the structure is usable with other tools clearly negates this
assertion.” Ans. 5.
Appellant also contends, “Lee provides a strong teaching away from a
tool holder configuration” as proposed by the Examiner. Appeal Br. 14;
Reply Br. 10. However, we are instructed by our reviewing court that a
teaching away requires a reference to actually criticize, discredit, or
otherwise discourage investigation into the claimed solution. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant does not indicate
where such criticism, discrediting, or discouragement can be found in Lee.
Appellant further argues that even if the cited references of Dancyger
and Lee suggested a modification to Huff “it is clear that the result would
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not be the claimed tool belt with the claimed hammer support device.
Rather, at most, all the cited references suggest is flipping the lower arm of
Huff as shown below:”

Appellant’s modified and annotated depiction of the Huff device. Appeal
Br. 14; see also Reply Br. 10–11.
Appellant’s argument (i.e., the “flipping” of Huff) is not persuasive of
Examiner error because such argument is not premised on the Examiners’
rationale of replacing “the lower portion of the hammer holder of Huff with
a depending support arm like that of Dancyger.” Final Act. 8. In other
words, Appellant has not shown how the Examiner failed to provide
articulated reasoning supported by rational underpinnings in connection with
the combination of Huff, Dancyger and Lee. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). As stated, the Examiner has determined that
it would have been obvious “to replace the lower portion of the hammer
holder of Huff with a depending support arm like that of Dancyger,” in order
to surround the lower portion of the tool as taught by Lee (Final Act. 8).
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Instead, Appellant offers a hypothetical image of what Appellant considers
to be the result of the combination of Huff, Dancyger, and Lee proposed by
the Examiner. Appeal Br. 14. Such hypothetical image does not take into
account the full scope of the Examiner’s proposed combination nor does it
apprise us of error in that combination.
Appellant also recites four additional limitations of unidentified
“pending claims” that Appellant contends are not suggested by the
Examiner’s proposed modifications of Huff with Dancyger and Lee. Appeal
Br. 14; see also Reply Br. 11. However, merely reciting the language of a
claim and asserting that the cited prior art references do not disclose that
limitation is insufficient. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”).
Accordingly, and in view of the record presented, we are not
persuaded by Appellant’s arguments and as such, we sustain the Examiner’s
rejection of claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 as unpatentable
over Huff, Dancyger, and Lee.
The rejection of claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 as
unpatentable over Huff, Dancyger, and Reynolds
Appellant does not present separate arguments distinguishing claims
1, 5, 10, 13, 15, 16, 19, 20, and 26–33. Appeal Br. 15–16; Reply Br. 11–13.
We select independent claim 1 for review with claims 5, 10, 13, 15, 16, 19,
20, and 26–33 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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The Examiner relies on Huff and Dancyger as discussed supra and
turns to Reynolds noting that Reynolds discloses an upper support arm (18)
and a lower support arm (20) to hold the head and handle of a tool. Final
Act. 13. The Examiner concludes that, “given Reynold’s disclosure of the
upper and lower support arms,” it would have been obvious “to use a
hammer holder having an upper support arm as taught by Huff and a lower
support arm as taught by Dancyger.” Final Act. 14. The Examiner also
relies on Huff’s support legs “to connect the two” (i.e., Huff’s and
Dancyger’s support arms). Final Act. 14.
Appellant relies on contentions previously presented and found
wanting concerning Huff and Dancyger. Appeal Br. 15–16; Reply Br. 11–
13. Regarding Reynolds, Appellant contends, “Reynolds is drawn to a
hands-free stylist stand for supporting a hand-held hair dryer. Reynolds,
Abstract” and that “a person of skill in the art would not go against the
disclosures of Huff and Dancyger based on Reynolds because such a person
would understand that the structural differences between Reynolds and the
combination of Huff & Dancyger are the result of a completely different
environment[].” Appeal Br. 15; see also Reply Br. 11–12.
The Examiner responds: “[i]n response to Appellant’s argument that
Reynolds is drawn to a stand, rather than to a tool holder, Appellant is
defining the field of art too narrowly. Reynolds, like Dancyger and Huff,
discloses a holder for a hand tool.” Ans. 6. And, further, “there is no
support provided for the conclusory statement that a person of ordinary skill
in the art would understand that the structural differences between Reynolds
and Huff and Dancyger are the result of completely different environments.”
Ans. 7. To the contrary, the Examiner notes that “[a]ll three references
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relate to holders for hand tools, Reynolds attached to a stand, and Huff and
Dancyger attached to a user, and the hand tool holding structures are
relevant to determine what kind of hand tool holding structures are known in
the art for supporting hand tools.” Ans. 7.
To the extent Appellant is arguing that Reynolds is non-analogous art,
a reference is analogous art if it “is either in the field of the applicant’s
endeavor or is reasonably pertinent to the [particular] problem with which
the inventor was concerned.” In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006). Here, the Reynolds reference is concerned with stably supporting a
tool using upper and lower support arms through which the handle of the
tool passes. As such, Reynolds is reasonably pertinent to the problem with
which Appellant was concerned and therefore constitutes analogous art.
In summary, Appellant’s arguments are not persuasive. The
Examiner has provided reasoning supported by rational underpinnings in
connection with the combination of Huff, Dancyger and Reynolds. See
KSR, 550 U.S. at 418. In particular, the Examiner determines that it would
have been obvious to (1) provide the lower portion of the hammer holder of
Huff with a depending support arm like that of Dancyger, in order to
surround the lower portion of the tool, and (2) provide Huff with upper and
lower support arms 18 and 20 sized to receive the handle of a tool as taught
by Reynolds. Final Act. 13; see also Ans. 6–8. Such reasoning is supported
by the teachings of Dancyger and Reynolds. Further, Appellant has
provided no technical reasoning or other evidence as to why the upper and
lower support arms of the Reynolds device would be incompatible with the
Huff structure.
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Accordingly, and in view of the record presented, we are not
persuaded by Appellant’s arguments and as such, we sustain the Examiner's
rejection of claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 as unpatentable
over Huff, Dancyger, and Reynolds.
The rejection of claim 34 as unpatentable over Huff, Dancyger, Lee or
Reynolds, and Panosian
According to Appellant, Panosian is used solely for the disclosure of
accessory pockets and does not overcome the deficiencies of the
combination of Huff and Dancyger with Lee or Reynolds vis-à-vis claim 1.
Appeal Br. 16, 17. However, Appellant has failed to persuade us of any
deficiencies in the combination of Huff and Dancyger with Lee or Reynolds
in relation to claim 1. See supra. Accordingly, we sustain the rejection of
claim 34 as unpatentable over Huff, Dancyger, Lee or Reynolds, and
Panosian.
Regarding the multiple rejections of claim 20 on other grounds (Final
Act. 3–6), although we may address these additional rejections, we note that
37 C.F.R. § 41.50(a)(1) (2015) specifies that an affirmance of a rejection of
a claim on any grounds “constitutes a general affirmance of the decision of
the examiner on that claim.” Hence, because we affirm the rejections of
claims 1, 5, 10, 13, 15, 16, 19, 20, and 26–33 on appeal as being obvious
over Huff, Dancyger, and Lee, and also Huff, Dancyger, and Reynolds, even
a different outcome in these other rejections directed solely to claim 20
would not alter the affirmances of the rejections of claim 20 as discussed
supra. We thus decline to address these additional rejections.

DECISION
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The Examiner’s rejections of 1, 5, 10, 13, 15, 16, 19, 20, and 26–34
are affirmed.
We also summarily sustain the Examiner’s rejection of claim 15 as
being indefinite.
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