Charles Larsen

Patent Trials and Appeals BoardMar 18, 2021

2021002396 (P.T.A.B. Mar. 18, 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. 14/348,561 03/28/2014 Charles Larsen LARSE-P3846.3 8091 21259 7590 03/18/2021 J. MARK HOLLAND AND ASSOCIATES J. Mark Holland 19800 MACARTHUR BLVD SUITE 300 IRVINE, CA 92612 EXAMINER REDMAN, JERRY E ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): OFFICE@JMHLAW.COM mholland@jmhlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES LARSEN Appeal 2021-002396 Application 14/348,561 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and LEE L. STEPINA, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1–7, which are the sole claims pending in this application.1 See Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART the Examiner’s rejection of these claims. 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 named inventor, Charles Larsen.” Appeal Br. iii. Appeal 2021-002396 Application 14/348,561 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to gate suspension systems and components, such as gate rollers, and related methods.” Spec. 1.2 Apparatus claims 1–3 and 5–7 are independent. Claim 1 is illustrative of the claims on appeal, and is reproduced below. 1. A gate assembly, comprising: a barrier element configured to be moved between a first position blocking passage and a second position permitting passage, said barrier element having an elongated flat surface at one or both of an upper edge and a lower edge of the barrier element; a plurality of rollers spaced from each other and supporting said barrier element and facilitating movement of said barrier element between said first position and said second position, each roller having a unitary body configured to rotate in coordination with lateral movement of said barrier element, a channel formed at a periphery of said roller unitary body, said channel having a substantially horizontal center portion when viewed in cross-section, said one or more flat surfaces of said barrier element being supported on said substantially horizontal center portion of the channel, said roller center portion incorporating sidewalls of said roller extending radially from an axis of rotation of said roller, said sidewalls formed to be spaced from contact with said confronting surfaces of said barrier. EVIDENCE Name Reference Date Riphagen US 3,886,685 June 3, 1975 2 Appellant’s Specification lacks line or paragraph numbering. We thus reference Appellant’s Specification via page number only. Appeal 2021-002396 Application 14/348,561 3 REJECTION Claims 1–7 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Applicant’s Admitted Prior Art (“AAPA”) of Figure 6 and Riphagen. ANALYSIS Claims 1 and 7 Claim 1 recites roller channel “sidewalls formed to be spaced from contact with said confronting surfaces of said barrier.” Claim 7 similarly recites “said two side sections of said channel being spaced from a corresponding one of said two side sections of said barrier.” Neither claim recites how the roller channels are to actually be configured to achieve this result, only that there is a space between the channel sidewalls and the barrier (i.e., gate). We thus agree with the Examiner that “claim 1 fails to limit the side walls to be sloped, tapered, chamfered, etc.” Ans. 6; see also id. at 7 (“[t]his limitation merely implies that the sidewalls have to be spaced therefrom and are not defined or limited to be tapered in shape”). The above clarification is important because Appellant’s arguments are premised on the invention pertaining to a roller whose sidewalls are tapered. See Appeal and Reply Briefs generally. Appellant also submits a “declaration of Tim Miller” (hereinafter “Declaration”) which addresses this taper. Appeal Br. 14; Reply Br. 7. For example, the Declaration states that Appellant’s “idea was to taper the sidewalls of the roller channel so that those sidewalls were out of contact with the square gate frame, or ‘spaced’ from the sidewalls of the gate’s tubing.” Declaration ¶ 8. As per Mr. Miller, “[b]ecause of that tapering on the roller sidewalls, there is spacing between Appeal 2021-002396 Application 14/348,561 4 the gate frame sides and the sidewalls of the roller channels.” Declaration ¶ 9. Hence, Appellant’s device achieves the requisite spacing by tapering the roller sidewalls. However, as Mr. Miller acknowledges, absent sufficient spacing, the roller and the gate will bind. See Declaration ¶ 6 (“[i]f that friction was too great, the motor would overload and stop, and the gate would be inoperable”). On the other hand, Appellant acknowledges that should the spacing be too great, “there is a tendency for the gate to drift side- to-side, laterally to the gate’s intended travel path.” Appeal Br. 25. Consequently, based on these statements, it can be concluded (as well as being self-evident) that it was known in the art to provide spacing between the roller and the gate. Thus, because claims 1 and 7 merely recite limitations directed to spacing between the roller and the gate, and not how that spacing is achieved (i.e., tapered sidewalls), we are not persuaded by Appellant’s “taper” arguments that these “space only” claims are non-obvious in view of the art cited, as well as that which is already known in the industry.3 We sustain their rejection. Claims 2–6 Each of claims 2–6 recite a roller having, in effect, tapering sidewalls that are not in contact with the barrier gate. However, we cannot say that Appellant’s contentions are persuasive of Examiner error in rejecting these claims; it is more a matter of the Examiner failing to initially present a prima 3 Appellant’s further arguments regarding the Canadian Patent Office, and the age of Riphagen, are not persuasive. Appeal 2021-002396 Application 14/348,561 5 facie case of obviousness, to which Appellant would then have a need to rebut.4 The Examiner, in rejecting claims 2–6, identifies Riphagen’s tapered idler pulley 15, 16. See Final Act. 3; see also Riphagen Fig. 1. The Examiner thereafter applies Riphagen’s teachings “to provide the idler pulley of Applicant’s prior art Figure 6 with a sloped groove as taught [by] Riphagen.” Final Act. 3. The Examiner reasons that it would have been obvious “to design the unitary pulley and channel with any desired dimensions since this would be a matter of design choice” in order “to enable the smoothest possible movement as the panel is moved between open and closed positions.” Final Act. 3. However, what is troubling about this combination is that both Riphagen and AAPA of Fig. 6 employ matching or mating sets, i.e., a roller whose sidewalls are designed to mate with the sides of its respective rail.5 Thus, in effect, the Examiner is extracting part of Riphagen’s tapered matching set and incorporating it with a component of AAPA’s square matching set, thereby eliminating any semblance of any mating between the now combined roller and rail. It is not 4 “If that burden is met [i.e., “a prima facie case of unpatentability”], the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 5 Appellant’s Specification describes AAPA of Fig. 6 as “illustrating how the roller is shaped and is cooperating with a rectangular gate frame member.” Spec. 3 (emphasis added). Riphagen describes wheels 15 and 16 as “equipped with grooves which run on mating surfaces of rails 5 and 6.” Riphagen 3:1–3 (emphasis added); see also Riphagen Fig. 1. Even Mr. Martin’s Declaration states, with respect to a “square-tubing frame gate,” “[t]he rollers had a ‘channel’ in which the square tubing was positioned, and that channel was shaped to correspond to the shape of the tubing.” Declaration ¶ 6 (emphasis added). Appeal 2021-002396 Application 14/348,561 6 clear why a skilled person would be inclined to separate these mating sets and inter-mix them to form a non-mating set as now proposed by the Examiner. See Final Act. 3. Instead, it appears the Examiner’s combination arose more from the improper application of hindsight than as a result of design choice. This understanding is buttressed due to the fact that the Examiner’s reason to employ Riphagen’s tapered roller is to “decrease[] wear.” Final Act. 3. However, as stated in Mr. Miller’s Declaration, decreasing wear has already been achieved some time ago simply by using a different material (i.e., “nylon”). See Declaration ¶ 7. Of importance is that Riphagen also states that its rollers 15, 16 are made of “[n]ylon.” Riphagen 3:1. Thus, in view of the record and that which is known in the art, a skilled person seeking to “decrease[] wear” is more likely to focus on Riphagen’s nylon material, and not its tapered shape, to achieve a reduction in wear. In other words, it appears that the actual shape of Riphagen’s roller is unrelated to this stated purpose, and the Examiner provides no support otherwise.6 “An examiner’s belief, however, must be tethered to or grounded in some rationale so as to establish a prima facie case of anticipation.” In re Chudik, 674 F. App’x. 1011, 1015 (Fed. Cir. 2017). The same can also be said for the matter of obviousness, which we are presently addressing. 6 The Examiner also references “providing good guidance quality” and an increase in “the life of the idler pulley” as further reasons to employ Riphagen’s tapered design. However, it is not made clear why a tapered design over any other design (i.e., circular, elliptical, straight-sided) would have been selected since these other designs are equally well suited to provide “good guidance quality” with life expectancy more a result of the material used. Appeal 2021-002396 Application 14/348,561 7 Consequently, this “grounded in some rationale” requirement does not appear to have been achieved in view of the Examiner’s expressed reason for relying upon Riphagen’s tapered shape. Accordingly, and based on the record presented, we do not sustain the Examiner’s rejection of claims 2–6. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7 103(a) AAPA, Riphagen 1, 7 2–6 Overall Outcome 1, 7 2–6 AFFIRMED IN PART