Ex Parte Belokin

Patent Trial and Appeal BoardSep 26, 2012

11544675 (P.T.A.B. Sep. 26, 2012)

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. 11/544,675 10/10/2006 Paul Belokin 7390.136/P 8927 41254 7590 09/26/2012 JACK A. KANZ 502 SOUTH COTTONWOOD DRIVE RICHARDSON, TX 75080 EXAMINER STERLING, AMY JO ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 09/26/2012 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 PAUL BELOKIN ____________ Appeal 2011-005901 Application 11/544,675 Technology Center 3600 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and STEFAN STAICOVICI, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Paul Belokin (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-005901 Application 11/544,675 2 THE INVENTION Appellant's claimed invention relates to a suction cup with a non- circular peripheral edge which uniformly adheres to a mounting surface. Spec. 4, para. [006]. In order to insure uniform edge sealing in suction cups having non-circular geometries, the edge thickness of the suction cup is relatively constant around the periphery of the cup regardless of the radial distance of the edge from the center of the cup. Spec. 6, para. [015]. Claims 1 and 7 are independent. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A suction cup having a substantially disc-shaped body defined by relatively convex outer surfaces and relatively concave inner surfaces joined at the lateral periphery of the body to define a non-circular peripheral edge wherein the thickness of said body at said non-circular edge is substantially constant along the entire periphery of said body. Independent claim 7 is also directed to a suction cup having “a peripheral edge of non-circular geometry wherein the thickness of said peripheral edge is relatively constant regardless of the radial distance of said peripheral edge from said central portion.” THE REJECTIONS Appellant seeks review of the following rejections: 1. Claims 1-3, 5, and 7-9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Henderson (US 2003/0161991 A1; pub. Aug. 28, 2003). 2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Henderson. Appeal 2011-005901 Application 11/544,675 3 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kalb (US 2003/0230694 A1; pub. Dec. 18, 2003) and Romei (US 2,974,820; pub. Mar. 14, 1961). ISSUES The issues presented by this appeal are: Does Henderson disclose a suction cup wherein the thickness of the body of the cup at the peripheral edge is substantially constant along the entire periphery of the body, as called for in independent claim 1, or is relatively constant regardless of the radial distance of the peripheral edge from the central portion, as called for in independent claim 7? Did the Examiner articulate adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to combine the teachings of Kalb and Romei in a manner to result in a suction cup having a rectangular peripheral edge wherein the thickness of the body of the cup at the peripheral edge is substantially constant along the entire periphery of the body, as called for in claim 6? ANALYSIS Anticipation of claims 1-3, 5, and 7-9 by Henderson The Examiner relies on the depiction of the suction cups in the Figures of Henderson for the disclosure of a peripheral edge having a constant thickness1, as called for in the claims. Ans. 7 (stating that “[t]he 1 We use “peripheral edge having a constant thickness” to refer by way of shorthand to the requirements in claim 1 of a peripheral edge having a thickness that is “substantially constant along the entire periphery of said Appeal 2011-005901 Application 11/544,675 4 specification of the Henderson reference does not discuss the thickness of the other periphery of the suction cup and therefore the relevant argument pertains to the drawings.”). Henderson discloses six embodiments of wall-mountable molded products, each including an oval suction cup(s). Henderson, paras. [0013]- [0036]; figs. 1-5 (depicting a bathroom hook 10 including a suction cup 16); figs. 6-10 (depicting a toothpaste/toothbrush holder 20 including a suction cup 26); figs. 11-14 (depicting a soap dish 30 including a suction cup 36); figs. 15-18 (depicting a larger soap dish 40 including two suction cups 46 and 46a); figs. 19-21 (depicting a corner tray 50 including four mounting structures 60, each having a suction cup 66); and figs. 22-24 (depicting a mirror assembly 70 including a mounting structure 80 having two suction cups 86). In the Grounds of Rejection section of the Answer, the Examiner relies on the first embodiment disclosed in Henderson as the basis for the anticipation rejection. Ans. 3 (pointing to “suction cup (10)” and Figure 4). In the Response to Arguments section of the Answer, however, the Examiner relies on Figures 1, 3, 4, 6, 8, 11, and 18 “taken as a collection.” Ans. 7. Figures 1, 3, 4, 6, 8, 11, and 18 show suction cups from four different embodiments of Henderson. body” and in claim 7 of a peripheral edge having a thickness that is “relatively constant regardless of the radial distance of said peripheral edge from said central portion.” Appeal 2011-005901 Application 11/544,675 5 In the context of anticipation, a prior art reference anticipates the claimed invention under 35 U.S.C. § 102(b) only if every element of a claimed invention is identically shown in that single reference, arranged as they are in the claims. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). In this case, the suction cups in each of the six embodiments of Henderson are referred to by different element numbers, i.e., 16, 26, 36, 46 and 46a, 66, and 86. As such, we cannot assume that the suction cups of each embodiment are the same. To the extent the Examiner relied on multiple distinct embodiments in Henderson taken as a collection, the elements of the claimed invention are not identically shown in the reference, arranged as they are in the claims. To the extent the Examiner relied on the first embodiment of Henderson, as shown in Figures 1-5, we do not find by a preponderance of the evidence that these Figures show a constant thickness of the peripheral edge as claimed. Figure 1 is a perspective view of a bathroom hook 10 having a suction cup 16. We see only a portion of the peripheral edge of the suction cup 16 along the right side of the cup in Figure 1 of Henderson. Even assuming that the Examiner is correct that in the perspective view of Figure 1, “the converging lines depict[] that one portion of the edge is visually closer than the other” (Ans. 7), we nonetheless cannot discern from the perspective view of Figure 1 the thickness of the peripheral edge on the top and bottom of the suction cup 16 as compared to the remainder of the peripheral edge of the cup. Figure 2 is a front elevation view of the hook of Figure 1. Figure 3 is a top plan view of the hook of Figure 1. Again, we see Appeal 2011-005901 Application 11/544,675 6 in Figure 3 only a portion of the top peripheral edge of the suction cup 16. We cannot discern from the views depicted in Figures 2 and 3 the thickness of the peripheral edge on the sides, bottom, and top of the edge of the suction cup. Figure 4 is a view in vertical section taken generally along the line 4-4 in Figure 2. In Figure 4, we see the inner surface of the right side of the suction cup 16. We cannot discern any meaningful information about the thickness of the peripheral edge of the suction cup in this view. Figure 5 is a view in vertical section taken generally along the line 5-5 in Figure 3. Figure 5 does not depict any part of the suction cup 16. When considering Figures 1-5 in total for all that they show, we do not find by a preponderance of the evidence that Henderson discloses in this first embodiment a suction cup with a peripheral edge having a constant thickness as called for in claims 1 and 7. Accordingly, we do not sustain the rejection of independent claims 1 and 7 and their respective dependent claims 2, 3, 5, 8, and 9 under 35 U.S.C. § 102(b) as anticipated by Henderson. Unpatentability of claim 4 over Henderson The Examiner’s conclusion of obviousness of claim 4 over Henderson is based on the same erroneous finding that Henderson discloses a suction cup having a substantially constant thickness along the entire peripheral edge of the body. As such, we do not sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Henderson. Appeal 2011-005901 Application 11/544,675 7 Unpatentability of claim 6 over Kalb and Romei Claim 6 depends from independent claim 1 and further recites “wherein said non-circular peripheral edge is rectangular.” Kalb discloses a suction cup 22 that appears to have a conical body with a circular peripheral edge. Kalb, paras. [0003], [0023]; figs. 1, 2. The Examiner found, and Appellant does not appear to specifically contest, that the thickness of the body edge of Kalb’s suction cup is substantially constant along the entire periphery of the body. Ans. 5; App. Br. 21. Romei discloses a partition for dividing a dinner plate into a plurality of sectors, in which the partition is removably secured to the plate by a suction cup. Romei, col. 1, ll. 16-24. Romei discloses, with reference to Figure 6, an embodiment which employs a suction cup 11′ having a square top plan form instead of the circular form of a conventional suction cup. Romei, col. 2, ll. 15-19; fig. 6. Romei provides no disclosure as to the thickness of the peripheral edge of Romei’s square suction cup 11′. Even assuming that it would have been obvious to replace the circular suction cup of Kalb with the square suction cup as disclosed in Romei, the Examiner has failed to provide an adequate explanation as to what would have led one of ordinary skill in the art to modify the suction cup of Kalb to have a substantially constant thickness along the entire periphery of the body. For this reason, we do not sustain the rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Kalb and Romei. Appeal 2011-005901 Application 11/544,675 8 CONCLUSIONS Henderson does not disclose a suction cup wherein the thickness of the body of the cup at the peripheral edge is substantially constant along the entire periphery of the body. The Examiner did not articulate adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to combine the teachings of Kalb and Romei in a manner to result in a suction cup having a rectangular peripheral edge wherein the thickness of the body of the cup at the peripheral edge is substantially constant along the entire periphery of the body. DECISION We REVERSE the decision of the Examiner to reject claims 1-9. REVERSED hh