Bertrand Dumont

Patent Trials and Appeals BoardJan 29, 2021

2020002532 (P.T.A.B. Jan. 29, 2021)

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. 14/716,484 05/19/2015 Bertrand F. Dumont 2030-2 3258 81178 7590 01/29/2021 Daniel P. Burke, Esq. Daniel P. Burke & Associates, PLLC 201 Townsend Square Oyster Bay, NY 11771 EXAMINER ING, MATTHEW W ART UNIT PAPER NUMBER 3637 MAIL DATE DELIVERY MODE 01/29/2021 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 BERTRAND F. DUMONT Appeal 2020-002532 Application 14/716,484 Technology Center 3600 Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 18–21, 24–27, and 29–39.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Bertrand F. Dumont. Appeal Br. 4. 2 Claims 1–39 are pending, of which claims 1–17, 22, 23, and 28 are withdrawn from consideration. Final Act. 1. Appeal 2020-002532 Application 14/716,484 2 BACKGROUND Independent claims 18 and 39 are pending and rejected. Claim 18, reproduced below, illustrates the claimed subject matter: 18. A storage, step support comprising storage spaces for storing articles other than portions of the step support, comprising: a first step comprising a first tread, a first base and a plurality of first supports supporting said first tread above and in spaced relation to said first base; said first tread, said first base and said first supports defining at least one first level storage space, said at least one first level storage space comprising an open, forwardly facing access; a second step comprising a second tread, a second base and a plurality of second supports supporting said second tread above and in spaced relation to said second base; said second tread, said second base and said second supports defining at least one second level storage space, said at least one second level storage space comprising an open, forwardly facing access; and said first step is movably connected to said second step for movement from a storage position where at least a substantial portion of said first tread is positioned below said second base so that said first tread is not accessible to use as a step to a step position where a portion of said first tread is positioned forwardly of said second base and is accessible for use as a step. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nicholson US 927,671 July 13, 1909 Hall US 4,934,113 June 19, 1990 Marshall US 6,948,777 B2 Sept. 27, 2005 Brewer US 2010/0068026 A1 Mar. 18, 2010 Havens US 2012/0234630 A1 Sept. 20, 2012 Appeal 2020-002532 Application 14/716,484 3 REJECTIONS3 I. Claims 18, 25–27, 29, 30, and 36–38 stand rejected under 35 U.S.C. § 103 as unpatentable over Havens and Marshall. Final Act. 2. II. Claims 19–21 stand rejected under 35 U.S.C. § 103 as unpatentable over Havens, Marshall, and Nicholson. Final Act. 5. III. Claims 31–34 and 39 stand rejected under 35 U.S.C. § 103 as unpatentable over Havens, Marshall, and Hall. Final Act. 6. IV. Claim 24 stands rejected under 35 U.S.C. § 103 as unpatentable over Havens, Marshall, and Brewer. Final Act. 8. V. Claim 35 stands rejected under 35 U.S.C. § 103 as unpatentable over Havens, Marshall, Hall, and Brewer. Final Act. 8. ANALYSIS Rejection I – Claims 18, 25–27, 29, 30, and 36–38 Claim 18 - Front Surface of Steps Regarding independent claim 18, the Examiner finds that Havens discloses (1) a first step 12 having a first tread 22, 25 and “a first base (A in Fig. 3 Annotated)” and (2) a second step 11 having a second tread 21, 25 and a second base B. Final Act. 2. The Examiner finds that Havens’ first step is movably connected to its second step “for movement from a storage position . . . to a step position . . ., but [that Havens] fails to teach first & second supports or first & second storage spaces.” Id. The Examiner finds, however, that Marshall discloses a step 14 having a storage space 68 defined by a tread 59, 67, a base 58, and plural supports 60 “supporting said tread 3 Rejections of claim 24 over Havens and Marshall, and claim 35 over Havens, Marshall, and Hall were withdrawn from consideration. See Ans. 3–4. Appeal 2020-002532 Application 14/716,484 4 above and in spaced relation to” the base and tread. Id. at 2–3. Marshall’s storage space 68 has “an open, forwardly facing access (at 64).” Id. at 3. The Examiner concludes that it would have been obvious to “modify each of the steps of Havens by providing a tread, base, supports, storage space, and open, forwardly facing access configuration as taught by Marshall” to allow storage of articles. Id. (citing Marshall 4:35–40). Appellant argues, inter alia, that Havens’ steps each have a front surface, and Havens’ retractable step stool would not function as intended without the front surface of its step 12. Appeal Br. 12. According to Appellant, if Havens’ steps were modified to be open-fronted, “children would not have a front surface to push with their feet and they could not actuate the latching spring mechanism of Havens with their small feet,” rendering “Havens totally unsatisfactory for its intended purpose.” Id. at 13–14 (citations omitted); Reply Br. 5. Appellant contends that “the front surface of Havens provides a critical function during the extension and retraction of [its] steps,” which “precludes the elimination of those front surfaces in an obviousness analysis.” Appeal Br. 16, 17 (“the front surface of Havens step 12 is . . . necessary for the intended operation of his latching spring mechanism.”). Regarding Appellant’s argument that “the front surface of Havens provides a critical function during the extension and retraction of [its] steps,” which “precludes the elimination of those front surfaces in an obviousness analysis” (Appeal Br. 16, 17), the Examiner responds that “this argument incorrectly assumes that adding storage spaces to each of Haven’s first & second steps. . . would completely eliminate the front surfaces of these steps.” Ans. 5. According to the Examiner, Marshall’s step 14 retains “a Appeal 2020-002532 Application 14/716,484 5 front surface formed by the front edges of the base (58), supports (60) and a portion (59) of the tread (59, 67), which would “yield a structure” with both a front surface “(formed by the front edges of tread, base, & sidewalls of the step) and a storage space.” Id. The Examiner appears to consider this limited front surface suitable for extension and retraction of Havens’ step(s). Appellant replies that the Examiner improperly equates the front edges of Marshall’s horizontal and vertical walls with the front surfaces of Havens’ steps 11 and 12. Reply Br. 5. Appellant contends that the edges of Marshall’s horizontal and vertical walls are not a “face” or “front surface” as those terms are used in Havens, and will not function thereas. Appellant further contends that Havens distinguishes between the front faces of his steps and an edge thereof. Id. (citing Havens ¶ 13 (“Step stool 1 includes an enclosure 10 which houses steps 11 and 12 when in the closed position, so that the front faces of steps 11 and 12 are flush with each other and with the front edge 13 of the enclosure.”). Appellant maintains that having no “front surface” would render Havens’ step stool “totally unsatisfactory for its intended purpose.” Id. Appellant has the better argument. It seems to us that a skilled artisan considering the prior art disclosures, would not understand that Havens’ device would be suitably operable if Havens’ front surface were eliminated, leaving only the edges of the top, bottom, and side walls (“housed inside” or “flush with” enclosure 10) available to press against to operate. See Havens ¶¶ 7, 13, 17 (describing, specifically, “pressing on the front surface of step 12” to release and re-engage a latch to open and close the step 12, respectively). For this reason, we agree with the Appellant that the Examiner’s proposed combination of Havens and Appeal 2020-002532 Application 14/716,484 6 Marshall would likely cause Havens to be inoperable, or at least severely limited as to be unsatisfactory for its intended purpose. For this reason, we do not sustain the rejection of independent claim 18. Claims 25–27, 29, 30, and 36–38 depend directly or indirectly from claim 18, and are allowable for the same reason. Rejection II – Claims 19–21 Claims 19–21 depend directly or indirectly from claim 18. The Examiner makes no finding that Nicholson cures the above-identified deficiency in the rejection of independent claim 18. Thus, for the reason set forth above, we do not sustain Rejection II. Rejection III - Claims 31–34 and 39 Claims 31–34 depend directly or indirectly from claim 18. The Examiner makes no finding that Hall cures the above-identified deficiency in the rejection of independent claim 18. The Examiner’s rejection of independent claim 39 relies on the same findings and conclusion that we determined contained error as the rejection of independent claim 18. Thus, for the reason set forth above regarding Rejection I, we do not sustain Rejection III. Rejections IV and V – Alternate Rejections of Claims 24 and 35 Claims 24 and 35 depend directly or indirectly from claim 18. The Examiner makes no finding that Hall or Brewer cure the above-identified deficiency in the rejection of independent claim 18. Thus, for the reason set forth above regarding Rejection I, we do not sustain Rejections IV and V. Appeal 2020-002532 Application 14/716,484 7 CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 18, 25–27, 29, 30, 36–38 103 Havens, Marshall 18, 25–27, 29, 30, 36– 38 19–21 103 Havens, Marshall, Nicholson 19–21 31–34, 39 103 Havens, Marshall, Hall 31–34, 39 24 103 Havens, Marshall, Brewer 24 35 103 Havens, Marshall, Hall, Brewer 35 Overall Outcome: 18–21, 24– 27, 29–39 REVERSED