Jenny ChengDownload PDFPatent Trials and Appeals BoardDec 8, 20202020001699 (P.T.A.B. Dec. 8, 2020) Copy Citation 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. 15/054,349 02/26/2016 Jenny Cheng 139650.228 5804 27162 7590 12/08/2020 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER MORRIS, TAYLOR L ART UNIT PAPER NUMBER 3631 MAIL DATE DELIVERY MODE 12/08/2020 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 JENNY CHENG Appeal 2020-001699 Application 15/054,349 Technology Center 3600 Before JOHN C. KERINS, KEVIN F. TURNER, and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Component Hardware Group, Inc. Appeal Br. 1. Appeal 2020-001699 Application 15/054,349 2 CLAIMED SUBJECT MATTER The claims are directed to a telescoping adjustable leg and a method of assembly. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An adjustable leg comprising a tubular housing having an internal thread; a tubular toe having a collar at one end thereof threadably mounted in said tubular housing for movement of said tubular toe between a retracted position within said tubular housing and an extended position projecting from said tubular housing, said tubular toe having an internal thread; a cylindrical toe having a collar at one end thereof threadably mounted in said tubular toe for movement between a retracted position within said tubular toe and an extended position projecting from said tubular toe; a base secured to a bottom end of said cylindrical toe and being of larger diameter than said cylindrical toe and having a flat bottom for resting on a flat support surface; and an externally threaded rod mounted in and projecting from said tubular housing. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hogan, Jr. US 2,738,246 Mar. 13, 1956 Raftery US 4,456,212 June 26, 1984 Middleton US 4,470,527 Sept. 11, 1984 Rozier, Jr. US 5,881,979 Mar. 16, 1999 Ozawa US 5,890,696 Apr. 6, 1999 REJECTIONS 1. Claims 1–5 and 7–11 are rejected under 35 U.S.C. § 103 as unpatentable over Rozier in view of Middleton and Hogan. Final Act. 7. Appeal 2020-001699 Application 15/054,349 3 2. Claims 1–4, 6–15, 19, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Rozier in view of Middleton and Raftery. Final Act. 12. 3. Claims 16–18 are rejected under 35 U.S.C. § 103 as unpatentable over Rozier in view of Middleton, Raftery, and Ozawa. Final Act. 18. OPINION Rejection 1: Rozier in view of Middleton and Hogan The Examiner rejects claims 1–5 and 7–11 as unpatentable over Rozier in view of Middleton and Hogan, claims 2–5 and 7–11 ultimately depending from independent claim 1. Final Act. 7. As to claim 1, the Examiner finds that Rozier discloses the invention substantially as claimed except for the recited collars, the externally threaded rod mounted in and projecting from a tubular housing, and the base having a flat bottom. Final Act. 7–8. The Examiner finds that Middleton discloses the recited collars and Rozier discloses a base having a flat bottom in its third embodiment. Final Act. 7–8, citing Middleton, Fig. 7; Rozier, Fig. 6. The Examiner further relies on Hogan for disclosing an “externally threaded rod mounted in and projecting from a tubular housing.” Final Act. 8, citing Hogan, Figs. 1–2. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to have: modif[ied] the housing in Rozier with the threaded rod and washer from Hogan . . . in order to provide an alternate known means of mounting a leg housing to the base of a support that is carried within the sidewalls of the leg and enables the leg to be readily mounted without the need for tools, thereby simplifying the set-up time of the legs. Appeal 2020-001699 Application 15/054,349 4 Final Act. 8, citing Rozier, col. 3, ll. 8–12; Hogan, col. 1, ll. 19–54. We agree with the Examiner and address the Appellant’s arguments in support of patentability infra. The Appellant initially argues that “Hogan does not disclose a washer.” Appeal Br. 5. Although that may be true, independent claim 1 does not recite a washer. As the Examiner explains, of the claims dependent on claim 1, only claim 6 recites a washer, and claim 6 has been excluded from this rejection. See Ans. 3. Thus, this argument is unpersuasive because this erroneous finding with respect to Hogan is inconsequential. The Appellant also argues that substituting the retaining clip means 30 of Rozier that secures its telescoping leveler with the sub-assembly of Hogan would “result in the modified housing member 18 of Rozier being secured to the underside of the support column 12 rather than being mounted within the support column 12.” Appeal Br. 6. According to the Appellant, the suggested combination “would be contrary to the teachings of Rozier,” and would change the operation of Rozier. Appeal Br. 6. However, as the Examiner points out, “Rozier clearly states that connections known to those having ordinary skill are obvious changes to make to its internal connection,” and thus, the suggested modification to Rozier to incorporate a threaded rod in view of Hogan would have been obvious to one of ordinary skill in the art. Ans. 4, citing Rozier, col. 3, ll. 8– 12 (“A telescoping leveler 16 . . . can include a housing member 18 which can be secured in the front ends 14 of the bases 13 using a retaining clip means 30 or by any other means known to those skilled in the art.”). In addition, we further agree with the Examiner that implementing a threaded rod connection disclosed in Hogan “does not prevent a structure from being mounted within a structure, for it only requires a corresponding threaded Appeal 2020-001699 Application 15/054,349 5 hole within the structure to interface with.” Ans. 4. The Appellant’s argument appears to be premised on bodily incorporating the illustrated embodiment disclosed in Hogan rather than taking into account what the collective teachings of the prior art would have suggested to one of ordinary skill. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”). The Appellant further responds that “[w]hile it may be obvious to thread the inside of the front ends 14 of Rozier, this would not result in the claimed structure, i.e. an adjustable leg” comprising an externally threaded rod mounted in and projecting from said tubular housing. Reply Br. 3–4. However, the basis of this argument is not entirely clear because the suggested modification provides the tubular housing of Rozier (i.e., housing member 18) with an externally threaded rod mounted in and projecting therefrom in the manner disclosed in Hogan, which would be usable to adjust the height of Rozier’s desk 10. As explained by the Examiner, “the proposed modification would not require the connection between the leveler and column to be external.” Ans. 6. The Appellant also argues that the suggested modification would “require shortening of intermediate member 20 as well as the shaft portion 22 and thus the excursions of the intermediate member 20 and the shaft portion 22. The end result would be shortening of the adjusting range of the leveler 16 contrary to the teachings of Rozier.” Appeal Br. 7. Although this assertion of the Appellant may be correct, it is unpersuasive to establish non- Appeal 2020-001699 Application 15/054,349 6 obviousness because it is largely premised on bodily incorporating the mounting structure of Hogan to the leveler of Rozier, and mere sizing of components. See In re Keller, 642 F.2d at 425; In re Rose, 220 F.2d 459, 463 (CCPA 1955) (“size of the article under consideration [] is not ordinarily a matter of invention”). As the Examiner explains, to any extent reduction in range of extension was undesirable, “one having ordinary skill in the art would have also found it to be obvious to increase the length of the housing, which would not lower the overall range of extension,” and “Rozier teaches a means of increasing the extension range of the structure via additional members, which would easily account for any small changes made to avoid interference with a different connection structure.” Ans. 5–6. The Appellant further argues that the suggested modification would “change the connection of the leveler 16 in the support column 12 from one wherein the housing 18 of the leveler 16 is completely circumferentially surrounded within the support column 12 to one wherein the housing 18 of the leveler 16 is completely outside the support column 12,” which would result in a reduced diameter of material available to resist bending forces on the leveler. Appeal Br. 7. However, as already discussed supra, “the proposed modification would not require the connection between the leveler and column to be external.” Ans. 6 Therefore, in view of the above, we affirm the Examiner’s rejection of independent claim 1. The Appellant relies on dependency on claim 1 for patentability of claims 2–5 and 9–11. Appeal Br. 7. Accordingly, dependent claims 2–5 and 9–11 fall with claim 1. Appeal 2020-001699 Application 15/054,349 7 Claim 7 Claim 7 depends from claim 1, and recites that the tubular toe has “at least a pair of oppositely disposed flats on an outer surface thereof.” Appeal Br. 2, Claims App. 2. The Examiner finds that the upper and lower surfaces of the intermediate member 20 of Rozier are be oppositely disposed, and thus, disclose this limitation. Final Act. 11 (“The upper and lower surfaces of the toes, housing, and base in Rozier and Middleton are opposed flat surfaces.”); see also Ans. 7–8 (Figure 3 of Rozier with annotations “F1” and “F2”). The Appellant disagrees and argues that because the upper and lower surfaces of the intermediate member 20 of Rozier are spaced apart, “the two surfaces cannot be on the same ‘outer surface’ of the intermediate member 20.” Appeal Br. 8. The Appellant further argues that the Examiner’s interpretation of the claim to encompass the upper and lower surfaces of the intermediate member 20 of Rozier is unreasonably broad in view of the Appellant’s Specification. Appeal Br. 10, citing Spec. Fig. 2, pg. 5 (“a pair of oppositely disposed flats 27 is provided on the outer surface 26 to facilitate wrenching of the tubular toe 12.”); see also Reply Br. 4. We agree with the Appellant for the reasons argued. In response, the Examiner explains that the Appellant’s argument “that spaced apart flat surfaces [of Rozier] cannot be on the same outer surface is flawed, because such a statement also applies to the flat surfaces 21, 27 of the pending application which are flat surfaces spaced apart from each other.” Ans. 7. However, the Examiner misunderstands Appellant’s argument, which is that the flat surfaces of Rozier relied upon by the Examiner are not spaced apart on “an outer surface” of the tubular toe. In other words, the claim language requires flat surfaces that are spaced apart Appeal 2020-001699 Application 15/054,349 8 and to also be on the same outer surface, such reading being consistent with the broadest reasonable interpretation of the claim in view of the Specification. See Spec. Fig. 2, pg. 5. In contrast, the Examiner’s finding with respect to Rozier relies on flats that are provided on two separate outer surfaces of the intermediate member 20. The Examiner asserts that the Appellant “appears to be reading a limitation into the claims” by interpreting the claim to require a cylindrical outer surface, which is not recited in the claim. Ans. 7. According to the Examiner, “one having ordinary skill in the art would find the interpretation of the general outer surface of the intermediate member in Rozier as having upper and lower flats formed in it as being a reasonable reading of the claims.” Ans. 7. We disagree with the Examiner. The claim recites “an outer surface” thereby referring to a single surface, not a plurality of surfaces. Whereas the cylindrical outer surface of the intermediate member clearly is a single surface, the upper and lower surfaces of the intermediate member 20 of Rozier cannot reasonably be said to constitute a single surface. Moreover, whereas claim 7 recites that the flats are disposed on an outer surface, thereby implying that the flats are merely portions of the same outer surface, the upper and lower surfaces of the intermediate member 20 define the entirety of the outer end surfaces. Accordingly, because the Examiner relies on an unreasonably broad interpretation of claim 7 in finding that the upper and lower surfaces of the intermediate member 20 of Rozier are “oppositely disposed flats on an outer surface,” we reverse this rejection as to claim 7. Appeal 2020-001699 Application 15/054,349 9 Claim 8 Claim 8 depends from claim 1 and recites that the tubular housing “has at least a pair of oppositely disposed flats on an outer surface thereof.” Appeal Br. 2, Claims App. 2. The issue and arguments presented with respect to claim 8 are substantively the same as those of claim 7. Appeal Br. 10. Thus, we reverse this rejection of claim 8 as well. Rejection 2: Rozier in view of Middleton and Raftery The Examiner rejects claims 1–4, 6–15, 19, and 20 as unpatentable over Rozier in view of Middleton and Raftery. Final Act. 12. The Examiner’s rejection is substantially the same as Rejection 1, except that instead of Hogan, the Examiner relies on Raftery for disclosing “an externally threaded rod (Raftery: Fig. 3-4; 28) mounted in and projecting from a housing (Raftery: Fig. 3-4; 13).” Final Act. 13.2 As to independent claim 1, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to have “modif[ied] the housing in Rozier with the threaded rod and washer from Raftery . . . in order to provide a threaded means of mounting a leg housing to the base of a support, thereby allowing the leg to be secured via conventional threaded fasteners.” Final Act. 13 (citing Rozier, col. 2, ll. 45–55; col. 3, ll. 8–12). In that regard, the Examiner further elaborates that the combination results in 2 The Appellant states “[t]he Examiner does not identify the ‘threaded rod’ and ‘washer’ of Raftery with which the Examiner proposes to modify the housing 18 of Rozier. However, [i]t is understood that the Examiner is referencing the bolt 28 and nut 26 of Raftery as the ‘threaded rod’ and ‘washer’, respectively.” Appeal Br. 11. The Examiner does not dispute this understanding. Accordingly, we consider this rejection as relying on the bolt 28 and the nut 26 of Raftery. Appeal 2020-001699 Application 15/054,349 10 an obvious implementation with “a threaded washer in the upper end of the housing 18 in Rozier and a threaded rod passing through element 14 to engage with said washer so that it extends from it.” Ans. 10. The Appellant argues that: Raftery does not teach the use of the bolt 28 and nut 25 [sic, 26] to secure the vertical column 13 to the support plate 30. Thus, there is no motivation for one of ordinary skill in the art to employ the bolt 28 and nut 26 of Raftery in the housing 18 of the leveler 16 of Rozier to secure a reversible collar to the housing 18 in order to permit a choice of two heights for the support 12. Appeal Br. 12; see also Appeal Br. 13 (“the threaded rod (i.e. bolt 28) and washer (i.e. nut 26) of Raftery do not provide a threaded means of mounting a leg housing (column 13) to the base of a support (i.e. support plate 30). … Instead, the threaded rod (i.e. bolt 28) and washer (i.e. nut 26) of Raftery provide a means to secure a reversible collar 15 to the column 13.”). Thus, according to the Appellant, “[s]ince the housing 18 of the leveler 16 of Rozier is mounted directly within a support 12, there is no need to secure a reversible collar 15 on the leveler 16,” and “since the leveler 16 of Rozier is itself adjustable, adding a reversible collar to the leveler 16 would be redundant.” Appeal Br. 13. We find this line of argument unpersuasive. Although Raftery does disclose a reversible collar for adjusting the height of the table 10, it also would be regarded by a person of ordinary skill in the art as teaching structure, i.e., bolt 28 and nut 26, for securing column 13 to another article. In that regard, the rejection is not premised on mounting a reversible collar from Raftery specifically, but instead, relies on its general teachings as to mounting of cylindrical structures, that is, the bolt 28 and the nut 26 that mount the column of Raftery, which can also be applied to the cylindrical Appeal 2020-001699 Application 15/054,349 11 housing member 18 of Rozier, as a means for mounting leveler 16 to base 13. As the Examiner explains, the Appellant “is arguing a combination which has not been made.” Ans. 10. In addition, as the Examiner further notes, “[t]he connection taught by Raftery does not need to teach a leg directly connected to a support base as the structure of the claim[] is limited to the leg structure only.” Ans. 10. The Appellant also argues that the Examiner “do[es] not provide a reason that would motivate one skilled in the art to provide a threaded washer in the upper end of the housing 18 in Rozier and a threaded bolt passing through the front end 14 of the support column 13 and engaged in the washer.” Reply Br. 5; see also Reply Br. 6. However, the Supreme Court has rejected the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to establish obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (“the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim” and “obviousness analysis cannot be confined … by overemphasis on the importance of published articles and the explicit content of issued patents.”). As the Examiner finds and concludes, “threaded connections are well known in the art and the modification of the internal connection in Rozier with the threaded rod [bolt 28] and washer [nut 26] connection from Raftery would be obvious to one having ordinary skill in the art.” Ans. 10. We agree with the Examiner that it would have been obvious to one of ordinary skill in the art to use known structure and techniques such as that disclosed on Raftery for mounting tubular structures such as the telescoping lever disclosed in Rozier. KSR, 550 U.S. at 406 (“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve Appeal 2020-001699 Application 15/054,349 12 similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); id. at 416 (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). The Appellant further argues that “modifying Rozier to have a bolt 28 extending upwardly from the housing 18 would not allow the bolt to be threaded into the support 12 since the bolt head is not threaded.” Appeal Br. 13. However, as noted above, the rejection is based on providing “a threaded washer in the upper end of the housing 18 in Rozier and a threaded rod passing through element 14 to engage with said washer so that it extends from it.” Ans. 10. Moreover, as the Examiner notes, “the claims [are] limited to the leg structure only,” and do not explicitly require the externally threaded rod to extend upwardly, but rather, merely requires it to be mounted in and project from the tubular housing. Ans. 10. The Appellant further argues that there is “no evidence to support [the] allegation that one of ordinary skill in the art would find the interpretation of the threaded shank of a bolt fastener to be a reasonable reading on the claims,” and that claim 1 “does not require a head.” Reply Br. 6. Accordingly, the Appellant asserts that the Examiner’s interpretation of the limitation “externally threaded rod” to encompass a bolt is unreasonable. Reply Br. 6. We do not find this argument persuasive because it cannot be reasonably disputed that the threaded bolt of Raftery includes “an externally threaded rod.” The fact that the bolt also includes a head does not detract from this fact, and thus, the Examiner has met the initial burden of establishing a prima facie case. The burden resides with the Appellant to Appeal 2020-001699 Application 15/054,349 13 establish otherwise. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Appellant also argues that “[t]he proposed modification of having a threaded bolt pass downwardly through a front end 14 of a support column 13 and thread into a washer in the housing 18 of Rozier . . . would not result in the claimed structure,” which requires an externally threaded rod mounted in and projecting from said tubular housing. Reply Br. 5. According to the Appellant, in the suggested modification, “the threaded rod would not be part of the leveler,” presumably because the bolt of Raftery would pass through front ends 14 of Rozier to engage with the nut of Raftery. Reply Br. 5. However, there is no dispute that, in the suggested combination, the bolt of Raftery would engage, and extend beyond the nut and the tubular housing member of Rozier, when the telescoping leveler of Rozier is installed. Accordingly, when installed, the adjustable leg would comprise “an externally threaded rod mounted in and projecting from said tubular housing” as recited by claim 1. Therefore, in view of the above considerations, we affirm this rejection as to independent claim 1. The Appellant merely relies on dependency on claim 1 for patentability of claims 2–4, 6, and 9–11. Appeal Br. 13. Accordingly, these claims fall with claim 1. As to dependent claims 7 and 8 that recite “oppositely disposed flats on an outer surface,” the Examiner found that the end surfaces of the tubular toe and tubular housing of Rozier satisfy the limitations of these claims. Final Act. 15; see also Appeal Br. 13 (the Appellant relying on the same arguments set forth relative to Rejection 1). Thus, we reverse the rejection of claims 7 and 8 for the reasons discussed in Rejection 1. Appeal 2020-001699 Application 15/054,349 14 Claims 12–15, 19, and 20 The Appellant relies on substantively the same arguments as those addressed above regarding Raftery for patentability of independent claim 12. Appeal Br. 14. Thus, we affirm this rejection of independent claim 12. The Appellant correctly points out that claims 13 and 14 are substantively the same as claims 7 and 8 in that they recite “oppositely disposed flats on an outer surface.” Appeal Br. 15; Claims App. 3. Accordingly, we reverse this rejection as to claims 13 and 14. As to the remaining claims 15, 19, and 20, the Appellant merely relies on their dependency on independent claim 12 for patentability. Appeal Br. 15. Thus, these claims fall with claim 12. Rejection 3: Rozier in view of Middleton, Raftery, and Ozawa The Examiner rejects method claims 16–18 as unpatentable over Rozier in view of Middleton, Raftery, and Ozawa. Final Act. 18. The Appellant argues that “Raftery does not disclose a method of assembling an adjustable leg. As such, Raftery is non-analogous to Rozier.” Appeal Br. 15. This argument is unpersuasive, and we agree with the Examiner that “[b]oth Raftery and Rozier are in the field of adjustable leg connections for furniture and appliances,” and that “these references are analogous to both each other and the pending invention.” Ans. 11. We do not find that the art pertaining to height adjusting devices is separate and distinct from the art of assembling such devices. The Appellant also argues that “[t]here is no teaching, suggestion or incentive in Raftery to support the combination of Rozier and Raftery as posited by the Examiner.” Appeal Br. 15. The Appellant also argues that “Raftery discloses a bolt 28 not a ‘rod’,” and further relies on same Appeal 2020-001699 Application 15/054,349 15 arguments regarding Raftery. Appeal Br. 16. However, these arguments are unpersuasive for the reasons already addressed above relative to Rejection 2. Thus, we affirm this rejection as to claim 16. The Appellant merely relies on dependency from claim 16 for patentability of claims 17 and 18. Appeal Br. 15. Thus, claims 17 and 18 fall with claim 16. CONCLUSION The Examiner’s rejections are affirmed in part. More specifically: 1. The rejection of claims 1–5 and 9–11 as unpatentable over Rozier in view of Middleton and Hogan is affirmed, but the rejection of 7 and 8 is reversed; 2. The rejection of claims 1–4, 6, 9–12, 15, 19, and 20 as unpatentable over Rozier in view of Middleton and Raftery is affirmed, but the rejection of claims 7, 8, 13, and 14 is reversed; and 3. The rejection of claims 16–18 as unpatentable over Rozier in view of Middleton, Raftery, and Ozawa is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–11 103 Rozier, Middleton, Hogan 1–5, 9–11 7, 8 1–4, 6–15, 19, 20 103 Rozier, Middleton, Raftery 1–4, 6, 9– 12, 15, 19, 20 7, 8, 13, 14 16–18 103 Rozier, Middleton, Raftery, Ozawa 16–18 Overall Outcome 1–6, 9–12, 15, 19, 20 7, 8, 13, 14 Appeal 2020-001699 Application 15/054,349 16 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Copy with citationCopy as parenthetical citation