Ex Parte Wyman

Board of Patent Appeals and Interferences

Jun 4, 2009

10917126 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LOUIS A. WYMAN
__________

Appeal 2009-003342
Application 10/917,126
Technology Center 3600
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Decided:1 June 4, 2009
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Before LORA M. GREEN, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-3, 6-9, and 12-15. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003342
Application 10/917,126

STATEMENT OF THE CASE
The claims are directed to a wheel lock. Claim 1 is representative of
the claims on appeal, and reads as follows:
1. A wheel lock with no moving parts for a caster, which caster
comprises a caster holder provided with a curved fender having a
length L, a wheel having a width W positioned below the curved
fender of a caster holder, and defining a space having a height H
between the curved fender and the wheel, wherein the wheel lock
comprises a piece of semi-rigid material having an outer edge and
an inner edge, a width w that is equal to or less than W, a length l
that is equal to or less than L, and a thickness that permits the
wheel lock to fit snugly into a space of height H between the
curved fender and the wheel of the caster, thereby inhibiting the
wheel from turning.

The Examiner relies on the following evidence:
Kastelic US 2,562,668 July 31, 1951
We affirm.

ISSUE(S)
The Examiner finds that the claims on appeal are either anticipated, or
rendered obvious, by Kastelic.
Appellant argues that the claimed wheel lock is not anticipated or
rendered obvious by Kastelic because Kastelic does not teach a limitation on
shim dimensions based on a caster.
Thus, the issue on Appeal is: Has Appellant demonstrated that the
Examiner erred in finding that the shim of Kastelic anticipated the claimed
device based on its intended use as a wheel lock for a caster?

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Application 10/917,126

FINDINGS OF FACT
FF1 The Examiner rejects claims 1-3, 9, and 12 under 35 U.S.C. § 102(b)
as being anticipated by Kastelic (Ans. 4). As Appellant does not argue the
claims separately, we focus our analysis on claim 1, and claims 2, 3, 9, and
12 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
FF2 The Examiner finds that Kastelic teaches a curved pad of a uniform,
semi-rigid material having a length, width, and thickness (Ans. 4). The shim
of Kastelic is sized to snugly fit a bushing (Kastlic, col. 3, ll. 1-5).
FF3 The Examiner finds further that “since Kastelic discloses all of the
structural features of [the] claims, it is inherently capable of being used in
the same manner as [the claimed] device.” (Ans. 4.)
FF4 The Examiner rejects claims 6-8 and 13-15 under 35 U.S.C. § 103(a)
as being rendered obvious by Kastelic (id. at 5).
FF5 As to claims 6-8, the Examiner concludes that it would have been
obvious to use a plastic, such as a clear plastic, or cork or cardboard, to form
the device of Kastelic, since it is well within the level of skill in the art to
select a known material, and such materials are known to be semi-rigid, and
have resilient properties (id.).
FF6 As to claims 13-15, the Examiner concludes that it would have been
within the level of skill of the ordinary artisan to use the claimed ranges of
width and length (id. at 5-6).

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Application 10/917,126

PRINCIPLES OF LAW
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage.” American Academy, 367 F.3d at
1364.
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
In KSR Int’l v. Teleflex Inc., 550 U.S. 398, 415 (2007), the Supreme
Court rejected a rigid application of a teaching-suggestion-motivation test in
the obviousness determination. The Court emphasized that “the
[obviousness] analysis need not seek out precise teachings directed to the
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Application 10/917,126

specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. In addition, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. Further,

[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill would recognize that it would
improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

Id. at 417.

ANALYSIS
Appellant argues that Kastelic “is not in the art of furniture or
furniture . . . wheel locks,” and that the dimensions of the shim of Kastelic
“are not limited by the dimensions of a caster wheel, as required by claim
1.” (App. Br. 3.) According to Appellant, the preamble of independent
claim 1 positively recites the dimensions of the castor of H, L, and W, “and
put anyone reading the claim on notice of the meaning of limitations H, L,
and W as dimensions of a caster.” (Id. at 4.)
Appellant asserts that “[b]ecause Kastelic does not mention a caster at
all, even a hypothetical one, . . . Kastelic does not expressly teach a
limitation on shim dimensions based on a caster.” (Id. at 5.) Appellant
asserts further that “Kastelic does not teach or suggest, under the principles
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of inherency, limitations on dimensions of the shim that depend on the
dimensions of a caster wheel, as required by Claim 1.” (Id.)
Appellant argues further that the shim of Katelic does not reduce
rotational motion, “but instead is used to reduce translational motion of a
bushing body . . . in a direction opposite a direction of a cut being made in a
wall of a circular borehole in a workpiece by a blade.” (Id. at 3.)
Claim 1 recites: A wheel lock with no moving parts for a caster,
which caster comprises a caster holder provided with a curved fender having
a length L, a wheel having a width W positioned below the curved fender of
a caster holder, and defining a space having a height H between the curved
fender and the wheel, wherein the wheel lock comprises a piece of semi-
rigid material having an outer edge and an inner edge, a width w that is
equal to or less than W, a length l that is equal to or less than L, and a
thickness that permits the wheel lock to fit snugly into a space of height H
between the curved fender and the wheel of the caster, thereby inhibiting the
wheel from turning.
Claim 1 is thus drawn to a product or device. The recitation of a
wheel lock for a caster is a statement of intended use, and does not limit the
claimed device. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(“[T]he absence of a disclosure relating to function does not defeat the
Board’s finding of anticipation. It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.”) In addition, the recitation of the dimensions of the curved
fender of L, W, and H of the caster is also intended use, as that is only
referring to the size of the caster. Thus, all that is required by claim 1 is “a
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piece of semi-rigid material having an outer edge and an inner edge” that has
a width, length, and thickness.
As found by the Examiner, Kastelic teaches a shim that meets those
limitations. While Appellant’s arguments have been carefully considered,
they are drawn to the intended use of the device, and not how the device
itself differs from the device taught by Kastelic. Since the Examiner has
established a prima facie case of anticipation, the burden shifts to Appellant
to “show that the prior art structure did not inherently possess the
functionally defined limitations of his claimed apparatus.” Schreiber at
1478. Appellant has failed to show, by evidence, that the shim of Kastelic
does not satisfy the claim limitations.
Appellant argues as to the obviousness rejection, that Kastelic does
not render obvious modifying “the dimensions and function of a shim to be
limited by the dimensions of a caster and have the wheel lock ‘fit snugly into
a space of height H between the curved fender and the wheel of the caster.’”
(App. Br. 6.) Appellant assets that “the intended purpose to inhibit turning
motion of a caster wheel is found only in Applicant’s description.” (Id.)
Appellant’s arguments are again not convincing as we have already
found that Kastelic anticipates claim 1.
As to claim 7, Appellant asserts that the only reason to use a clear
plastic material is the intended purpose of claim 1, that is use as a caster lock
that “is unnoticeable and blends aesthetically with the furniture on which it
is engaged.” (App. Br. 11.)
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We agree with the Examiner that it would have well been within the
levl of skill of ordinary artisan to use a known material to form the shim of
Kastelic, such as a plastic, including clear plastic.
As to claim 15, Appellant argues that the only reason to use a
thickness of 0.2 cm is the intended purpose of claim 1, and “[n]o reason is
given why the shim of Kastelic should be made this thickness for any
purpose in the bushing and broach art.” (App. Br. 12.) According to
Appellant, Kastelic “teaches to make all shims thin and the same size and to
fill an arbitrary gap by stacking a number of shims,” thus Appellant asserts,
“arguably teach[ing] away from a shim of the thickness recited in claim 15.”
(Id.)
Kastelic teaches that the shim is sized to snugly fit a bushing, thus it
would have been well within the level of skill of the ordinary artisan to size
the shim, including to the dimensions recited by claim 15.

CONCLUSION(S) OF LAW
We find that Appellant has not demonstrated that the Examiner erred
in finding that the shim of Kastelic anticipated the claimed device based on
its intended use as a wheel lock for a caster.
We thus affirm the rejections of:
Claims 1-3, 9, and 12 under 35 U.S.C. § 102(b) as being anticipated
by Kastelic; and
Claims 6-8 and 13-15 under 35 U.S.C. § 103(a) as being rendered
obvious by Kastelic.

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Appeal 2009-003342
Application 10/917,126

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:
DITTHAVONG MORI & STEINER, P.C.
918 PRINCE STREET
ALEXANDRIA, VA 22314
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