Arthur KHALIQDownload PDFPatent Trials and Appeals BoardSep 16, 20212021001741 (P.T.A.B. Sep. 16, 2021) 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. 15/847,888 12/19/2017 Arthur KHALIQ IAK-001US 9025 26349 7590 09/16/2021 Dana Legal Services - General 13500 SW Pacific Hwy Suite 117 Tigard, OR 97223 EXAMINER WOOD, KIMBERLY T ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 09/16/2021 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): docket.pat@danalegalservices.com docket@danalegalservices.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR KHALIQ Appeal 2021-001741 Application 15/847,888 Technology Center 3600 Before JENNIFER D. BAHR, BARRY L. GROSSMAN, and CARL M. DEFRANCO, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Examiner’s decision to reject claims 1, 2, and 6–14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. CLAIMED SUBJECT MATTER The claimed subject matter relates to an adjustable support assembly for a planar surface, such as a shelf. Spec. ¶¶ 2–3, 8. Of the pending claims, 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the inventor, Arthur Khaliq, as the real party in interest. Appeal Br. 2. Appeal 2021-001741 Application 15/847,888 2 claims 1 and 12 are independent. See Ans. 16–19.2 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An adjustable support assembly for securing to two vertical supports, one at each end, and for supporting a planar surface, the adjustable support assembly comprising: a first u-channel section having a first end and a second end and including: a first L-shaped bracket secured to the first end of the first u-channel section for securing the adjustable support assembly to one of the two vertical supports; and a pin-hole defined by the first u-channel section at the second end of the first u-channel section; a second u-channel section having a first end and a second end and including: a second L-shaped bracket secured to the second end of the second u-channel section for securing the adjustable support assembly to another one of the two vertical supports; and a pin-hole defined by the second u-channel section at the first end of the second u-channel section: and a center square tubular section, wherein the second end of the first u-channel section is inserted in to one end of the center square tubular section and the first end of the second u-channel section is inserted into an opposite end of the center square tubular section thereby allowing the adjustable support assembly to be adjusted to the planar surface’s length and for 2 The Appeal Brief, filed August 3, 2020, as well as the Claims Appendix submitted September 14, 2020 (hereinafter “Revised Claims App.), in response to the Notice of Non-Compliant Appeal Brief, issued August 8, 2020, includes claims from an unentered After-Final Amendment dated Nov. 18, 2019. See Ans. 13; see also Advisory Action dated Dec. 12, 2019 (rejecting entry of proposed amendment because it introduces new matter). Thus, like the Examiner, we consider the Appeal Brief in the context of the claims in the properly-entered Amendment dated June 13, 2019. Appeal 2021-001741 Application 15/847,888 3 securing the adjustable support assembly to the two vertical supports using the first L-shaped bracket of the first u-channel section and the second L-shaped bracket of the second u-channel section. Ans. 17 (emphases added). REJECTIONS 1) Claims 6, 7, 13, and 14 stand rejected under 35 U.S.C. § 112(a) as lacking adequate written description support. Final Act. 4–6. 2) Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hubbard (US 4,717,099, issued Jan. 5, 1988) and Humphrey (US 6,591,574 B2, issued July 15, 2003). Final Act. 6–8. 3) Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hubbard, Humphrey, and Wronski (US 7,673,841 B2, issued Mar. 9, 2010). Final Act. 8–9. 4) Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hubbard, Humphrey, Wronski, and Kaden (US 5,150,868, issued Sept. 29, 1992). Final Act. 9. 5) Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hubbard, Humphrey, and Kaden. Final Act. 9–10. 6) Claims 9–11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hubbard, Humphrey, and Jamison (US 6,461,016 B1, issued Oct. 8, 2002). Final Act. 10–11. 7) Claims 12–14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Weston (US 1,381,607, issued June 14, 1921) and Hubbard. Final Act. 11–13. Appeal 2021-001741 Application 15/847,888 4 ANALYSIS A. Written Description Appellant does not respond to the pending rejection of claims 6, 7, 13, and 14 for failing to comply with the written description requirement of 35 U.S.C. § 112(a). Compare Final Act. 4–6 with Appeal Br. 6–8. Thus, we summarily sustain the Examiner’s § 112(a) rejection. B. Obviousness 1. Claims 1, 2, and 6–11 We begin with claim 1. The Examiner finds that Hubbard discloses an adjustable support assembly substantially as claimed, “except for [] a pin- hole defined by the second channel section at the first end of the second channel section and a pin-hole defined by the first channel section at the first end of the first channel section.” Final Act. 6–7. For that limitation, the Examiner finds that Humphrey teaches providing pin holes in the ends of two telescoping channel sections and concludes that one skilled in the art would have thought it obvious to modify Hubbard’s channel sections to include pin holes as taught by Humphrey “for the purpose of providing a means of preventing the ends of the channel sections from disengaging from the tubular section.” Id. at 8. Notably, in arriving at the above conclusion, the Examiner contends that “the planar surface and the vertical supports are not positively claimed therefore the prior art needs to be capable of only performing the functions associated with the planar surface and vertical supports.” Final Act. 6–7 (emphasis added). Appellant responds that Hubbard is directed to an alignment bracket for a plumbing fixture, not a structure “for supporting a planar surface” and configured “to be adjusted to the planar surfaces length,” as recited in Appeal 2021-001741 Application 15/847,888 5 claim 1. See Appeal Br. 6–7. According to Appellant, the Examiner errs by disregarding those positively-recited features of the claim in finding that the proposed combination of Hubbard and Humphrey is merely capable of performing the recited function of supporting a planar surface. See id. In our view, Appellant has the better position. As recited in the preamble, the claimed invention is an adjustable support assembly “for supporting a planar surface,” and as recited in the body of the claim, the arrangement of the support assembly’s components allows it “to be adjusted to the planar surface’s length.” See Ans. 17 (reproducing claim 1 as submitted by Appellant and entered by the Examiner). “Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[ ] … patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’” Catalina Mktg. Intl., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)) (emphasis added). “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Id. (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Indeed, functional language may add a structural limitation to an apparatus claim where the body of the claim describes something about the structural requirements of the apparatus rather than merely reciting its intended use. See K–2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363–64 (Fed. Cir. 1999) (noting that all limitations of a claim must be given weight and that functional language may inform as to structural requirements of the claim). Appeal 2021-001741 Application 15/847,888 6 Here, the claim body’s recitation of structure that permits adjustment of the support assembly to planar surfaces of different lengths gives life and meaning to the functional language of the preamble. The Specification confirms as much. See Spec. ¶ 2 (disclosing that the invention relates to “an improved support system for planar surfaces, such as shelves or counters, that are load bearing.”). Thus, contrary to the Examiner’s position in this case, the functional claim language is entitled to patentable weight. And because Hubbard indisputably fails to disclose a support assembly for a planar surface, let alone a support assembly that can be adjusted to accommodate planar surfaces of different lengths, we do not sustain the Examiner’s obviousness rejection of claim 1. See Hubbard, 1:36–40 (disclosing a “bracket assembly for locating and aligning a fixture such as a fire sprinkler pipe or other plumbing pipe.” Nor do we sustain the Examiner’s obviousness rejections of claims 2 and 6–11, as they are based primarily on Hubbard and are similarly deficient. See Final Act. 8–11. 2. Claim 12–14 The Examiner rejects independent claim 12, as well as its dependent claims 13 and 14, as unpatentable over the combined teachings of Weston and Hubbard. See Final Act. 11–13. Claim 12 recites a support assembly for “repairing bowing of a shelf” such that “the assembly will adjust to the shelf’s length” and “secure to the shelf in a way that the bowing of the shelf is away from the assembly.” See Revised Claims App. 4. Notably, the Examiner relies on Weston, not Hubbard, for teaching the claimed “shelf” as well as the underlying support assembly (Weston’s “brace rods 12”) for preventing the shelf from bowing. Final Act. 11–12; see also Weston, 1:52– 103. And, insofar as the assembly being adjustable to the shelf’s length, Appeal 2021-001741 Application 15/847,888 7 Weston discloses that the length of rods 12 can be adjusted to fit the dimensions of the shelf so that “the shelves take the strain.” Weston, 1:72– 79. The Examiner relies on Hubbard simply to teach that one skilled in the art would have known to construct Weston’s adjustable support assembly of slidable channel/tubular sections in the manner taught by Hubbard and that it would have been obvious to do so. See Final Act. 12. Although Appellant “traverses” the rejection of claim 12, nowhere does Appellant ever meaningfully dispute the Examiner’s findings and conclusions with respect to the Examiner’s proposed combination of Weston and Hubbard, which is the ground on which the Examiner rejects claim 12. See Appeal Br. 8. Instead, Appellant’s arguments focus exclusively on the above-discussed rejection of claim 1 based on the combination of Hubbard and Humphrey, as opposed to the rejection of claim 12 based on the combination of Weston and Hubbard. See id. at 6–8. Thus, because Appellant fails to apprise us of error in the Examiner’s proposed combination of Weston and Hubbard, we sustain the Examiner’s obviousness rejection of claims 12–14. Appeal 2021-001741 Application 15/847,888 8 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6, 7, 13, 14 112(a) Written Description 6, 7, 13, 14 1 103 Hubbard, Humphrey 1 2 103 Hubbard, Humphrey, Wronski 2 6, 7 103 Hubbard, Humphrey, Wronski, Kaden 6, 7 8 103 Hubbard, Humphrey, Kaden 8 9–11 103 Hubbard, Humphrey, Jamison 9–11 12–14 103 Weston, Hubbard 12–14 Overall Outcome 6, 7, 12–14 1, 2, 8–11 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 IN PART Copy with citationCopy as parenthetical citation