Ex Parte Adams

Patent Trial and Appeal Board

Nov 6, 2018

12396971 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/396,971 03/03/2009
23464 7590 11/08/2018
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
William E. Adams
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
090055 7273
EXAMINER
LIU, JONATHAN
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM E. ADAMS 1
Appeal2017-001907
Application 12/396,971
Technology Center 3600
Before MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party in interest is Adams Mfg. Corp.
App. Br. 1.
Appeal2017-001907
Application 12/396,971
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-19. An oral hearing in accordance with 37 C.F.R. § 41.47 was held
on October 23, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to a door hook. Claims 1, 8, 14, and 16 are
independent. App. Br. 15-19 (Claims App.). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1 A door hook comprising:
a top member having a first end and a
second end;
a back member having a first end and a
second end, the first end of the back member attached
to the first end of the top member;
a front member having a first end and a
second end, the first end of the front member
attached to the second end of the top member such
that the front member extends below the top member;
the front member being resilient;
a hook having a first end and a second end,
the first end of the hook attached to the front member
adjacent the second end of the front member and the
second end of the hook being a free end;
a leg attached directly to the second end of
the front member, the leg extending below the hook;
a resilient foot attached to the leg such that
the resilient foot is below the hook; and
wherein the front member is made of a
material and shape that allows the front member to
flex into a generally convex shape when a downward
force acts on the hook.
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Appeal2017-001907
Application 12/396,971
Weekley
Heine
Peterson
REFERENCES
us 2,080,990
us 4,203,175
us 5,085,387
REJECTIONS
May 18, 1937
May 20, 1980
Feb.4, 1992
Claims 1-7, 10-15, 18, and 19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Heine and Weekley.
Claims 8, 9, 16, and 17 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Heine, Weekley, and Peterson.
ANALYSIS
Claims 1-7, 10-15, 18, and 19-Unpatentable over Heine and Weekley
Independent claims 1 and 14 recite a "front member" that is
"resilient" and "made of a material and shape that allows the front member
to flex into a generally convex shape when a downward force acts on the
hook." App. Br. 15, 18 (Claims App.). Claims 2-7 and 10-13 depend from
claim 1, and claims 15, 18, and 19 depend from claim 14. Id. at 15-2 0. The
Examiner finds that Heine discloses most of the limitations of claim 1,
including the claimed front member. Final Act. 3 ( citing Heine, Fig. 3). The
Examiner explains that Heine's hook is resilient and capable of flexing as
claimed "in view of Hooke's law (i.e., all materials have some degree of
elasticity), during when sufficient downward force acts on the [hook]." Id.
The Examiner relies on Weekley to teach the "resilient foot" of claim 1. Id.
( citing structure identified with reference number 15 in Figures 1 and 2 of
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Appeal2017-001907
Application 12/396,971
Weekley). The Examiner makes similar findings with respect to
independent claim 14. Id. at 8-9.
Appellant responds that the Examiner's conclusion that Heine
inherently discloses the convex flexing limitation "is directly contrary to the
test results presented in the declaration of Robert Schreiber," which is
appended to the Appeal Brief. App. Br. 11; see Declaration of Robert
Schreiber ("Schreiber Deel."). In his Declaration, Mr. Schreiber, a former
employee of the assignee, reports that he made a prototype of Heine's
slipper holder shown in Figures 1 through 3 of Heine from Lexan plastic,
which is the same material used to make a commercial embodiment that
practices the claims at issue. Schreiber Deel. 1-2. Mr. Schreiber then
"placed this hook on a test fixture that is similar to the bed rail shown in
[Heine]," and "applied a two pound load on the hook such that a downward
force was acting on the hook." Id. at 2-3, Exs. 1, 2. According to Mr.
Schreiber, the front member of Heine's slipper holder flexed into "generally
a concave shape," rather than a convex shape as claimed, "because of the
configuration of the slipper holder which causes the fulcrum to be below the
load." Id. at 3, Ex. 3.2
The Examiner responds that the Schreiber Declaration "is insufficient
to overcome the rejection." Ans. 17. The Examiner asserts that "[t]he
instant experiment fails [to] take into consideration that the bed rails of
Heine were not relied upon in making the instant rejection of the claims,"
2 Mr. Schreiber also tested a door hook as disclosed and claimed in the
pending application. Id. at 3, Exs. 4--5. However, we do not consider these
test results to be relevant to whether Heine inherently discloses the convex-
flexing limitation.
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Application 12/396,971
and that Appellant's "invention recited in the claims is not a combination
claim directed to a combination of the door hook and the door being
positively claimed together." Id. at 18. The Examiner concludes that the
experiment is "outside of the scope of the claimed invention." Id. The
Examiner asserts, alternatively, that
[C]onsidering the thinness of the front member of Heine across
its transverse cross-section along the x-axis, and the degree of
the elasticity of the front member as evidenced by Hooke's law,
the front member will flex into the generally convex shape during
when the sufficient downward force acts on the hook.
Id. at 20. In support of this assertion, the Examiner provides annotated
versions of Figure 3 of Heine illustrating how the Examiner contends the
hook would flex when mounted on Heine's bed rails (Figure 3' ', id. at 22) or
a door (Figure 3 '' ', id. at 23) upon the application of "sufficient force."
We first address the Examiner's response to Mr. Schreiber's test
results. The Examiner is correct that the claims do not recite a door, or
require that the front member be capable of flexing in a generally concave
shape only when the hook is mounted on a door. None of the claims
specifies the precise circumstances under which the front portion must be
able to flex into a generally convex shape when a downward force acts on
the hook. Indeed, the claims do not specify that the door hook be mounted
at all. But the Examiner is not correct that the conditions under which Mr.
Schreiber tested Heine's hook are "outside of the scope of the claimed
invention." On the contrary, because the claims do not limit the
circumstances under which the claimed convex flexing must occur, testing
Heine's hook using Heine's bed rails is within the scope of the claims.
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Application 12/396,971
Thus, we find that the Examiner erred in not considering Appellant's test
results.
We have also considered the Examiner's alternate position that
Heine's hook would flex in a generally convex shape, notwithstanding
Appellant's test results. We initially note that in the annotated versions of
Figure 3, the Examiner illustrates what appears to be a rotational force acting
at the point where the hook joins the front member. Ans. 22-23. The
Examiner has not explained how that force corresponds to the claimed
"downward force" specified in the claims. In any event, the Examiner's
annotations are not supported by a persuasive explanation for why the device
would curve in the manner shown.
In light of the Examiner's erroneous reason for not considering
Appellant's test results, and because we do not find the Examiner's analysis
otherwise persuasive, we do not sustain the rejection of claims 1-7, 10-15,
18, and 19 as unpatentable over Heine and Weekley.
Claims 8, 9, 16, and 17-Unpatentable over Heine, Weekley, and Peterson
Independent claims 8 and 16 contain the same front-member
limitation discussed above. App. Br. 17, 19 (Claims App.). As with the
previous rejection, the Examiner relies on Heine to teach this limitation
(Final Act. 11-13), and rejects Mr. Schreiber's test results for the same
reason that we found erroneous above (Ans. 17-19). Peterson is not relied
on to cure this deficiency. Accordingly, we do not sustain the Examiner's
rejection of claims 8, 9, 16, and 17 as unpatentable over Heine, Weekley,
and Peterson.
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Application 12/396,971
DECISION
For the above reasons, the Examiner's rejection of claims 1-19 is
reversed.
REVERSED
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