Ex Parte Buchner

Patent Trial and Appeal Board

Aug 22, 2017

12642425 (P.T.A.B. Aug. 22, 2017)

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.
12/642,425 12/18/2009 David J. Buchner 83719.00004 2516
24382 7590 08/
JOSEPH S. HEINO, ESQ.
DAVIS & KUELTHAU, S.C.
111 E. KILBOURN
SUITE 1400
MILWAUKEE, WI 53202-6613
EXAMINER
GATES, ERIC ANDREW
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
j heino @ dkattorney s. com
jlowe@dkattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. BUCHNER
Appeal 2016-005895
Application 12/642,4251
Technology Center 3700
Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 8—17 and 20—23, which constitute all of the claims pending in this
application. Claim 1—7 have been withdrawn and claims 18 and 19 have
been cancelled. App. Br. 19-20, 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 Appellant identifies the applicant, David. J. Buchner, as the real party in
interest. App. Br. 1.
Appeal 2016-005895
Application 12/642,425
THE INVENTION
According to Appellant, the disclosed and claimed invention “relates
to the field of tool attachments and more specifically to a drill bit extension.”
Spec. 12. More specifically, it is for an “installation system for ceiling
mounted items that is comprised of a tubular hollow extension. The first end
of the tubular hollow extension is adapted to receive a suspension member
and the second end is adapted to be attached to a drill bit or operated
manually.” Abstract.
Claim 21, reproduced below, is illustrative of the claimed subject
matter:
21. A system for manually inserting a combined anchor and
suspension member into a ceiling, the system comprising:
an anchor and suspension member combination;
a tubular hollow extension, said tubular hollow extension
comprising at least two telescoping members, a first telescoping
member having a first end that is configured for receiving the
anchor and suspension member combination and a second
telescoping member having a second end for manual grasping of
the tubular hollow extension by a user; and
a spring release pole and at least one compression spring
linearly disposed between the members of the tubular hollow
extension such that the at least two telescoping members are
urged away from each other to exert upward pressure on the
anchor and suspension combination during use of the apparatus;
wherein the system is used to manually hammer or torque
the installation of the anchor and suspension member
combination into the ceiling.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
US 3,005,292
claims on appeal is:
Reiland
2
Oct. 24, 1961
Appeal 2016-005895
Application 12/642,425
Giannuzzi
Hodges
US 4,890,779 Jan. 2, 1990
US 2004/0134312 A1 July 15, 2004
REJECTIONS
Claim 21 stands rejected under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by Giannuzzi. Final Act. 2-4.
Claims 8, 10—17, 20, 22, and 23 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Giannuzzi in view of Hodges.
Final Act. 4—9.
Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Giannuzzi in view of Hodges and Reiland. Final Act. 10.
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
disagree with Appellant’s arguments with respect to claims 8—17, 20, 22,
and 23. However, we agree with Appellant’s argument that, on this record,
the Examiner erred in rejecting claim 21 as anticipated.
Appellant argues the Examiner erred in finding Giannuzzi discloses
“an anchor and suspension member combination,” as recited in claim 21.
App. Br. 9. More specifically, Appellant asserts “[tjhere simply is no
‘suspension’ component to the Giannuzzi structure and certainly no ‘anchor
and suspension member combination.’” Id.
ANALYSIS
Claim 21
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The Examiner finds “Giannuzzi discloses a system, the system
comprising: an anchor and suspension member combination 13/15 (13
being the anchor portion, 15 being the suspension member when the anchor
is used in a ceiling).” Final Act. 2. The Examiner concludes “[a]s there is
no further structure provided in the claim to describe these members, the
structure of Giannuzzi is seen to meet these limitations.” Ans. 10.
During prosecution, claims must be given their broadest reasonable
interpretation while reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad, of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). An applicant may, however, act as his or her own
lexicographer and specifically define a claim term in the Specification. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
In this case, Appellant acted as his own lexicographer and provided a
specific definition of the term “suspension member” in a glossary:
As used herein, the term “suspension member” refers to
a component which is used to suspend a component from a
ceiling. For example, a suspension member may be a wire, pin,
string, chain, cord, rope or another attachment component which
may be threaded through an aperture in an eyelet member.
Spec. 110.
Giannuzzi Figure 1 is shown below:
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Application 12/642,425
Figure 1 “is an elevational view of a single-piece, pre-shaped single bend
anchor to be driven into a hole drilled into masonry.” Giannuzzi 4:59—61.
Although the Examiner finds enlarged head 15 corresponds to the
suspension member limitation, the Examiner has not shown sufficiently how
the enlarged head 15 is used to suspend a component from a ceiling as
required by the definition of the term “suspension member.” Accordingly,
because the Examiner’s finding that Gainnuzzi teaches a suspension member
is not supported by a preponderance of the evidence, we agree with
Appellant that the Examiner erred. See In re Caveney, 761 F.2d 671, 674
(Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a
preponderance of the evidence); see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.”).2
Accordingly, on the current record, we do not sustain the Examiner’s
rejection of claim 21 as anticipated.
2 Because we agree with Appellant’s argument regarding the suspension
member limitation, we need not address Appellant’s other arguments
directed to claim 21.
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Claims 8, 10—17, 22, and 23s
Appellant argues the Examiner erred in combining the teachings of
Giannuzzi and Hodges. App. Br. 12. Specifically, Appellant argues
“Gianuzzi does not suggest any usage of his ‘setting tool’ without a drill”
and that “Hodges does not suggest any usage of his ‘installation tool’ with a
drill.” Id. Therefore, Appellant argues, “the resultant combination of
Giannuzzi with Hodges is not obvious” because “[t]he mere fact that
references can be combined or modified does not render the resultant
combination obvious unless the prior art also suggests the desirability of
the combination.” Id. (citing In re Mills, 916 F.2d 680 (Fed. Cir. 1990))
(emphasis added).
Appellant appears to rely on an incorrect statement of law. In KSR,
the Supreme Court rejected the rigid application of the teaching, suggestion,
or motivation (TSM) test in favor of a more expansive and flexible approach
to the determination of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 415 (2007). Specifically, the Court stated that “the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418.
Thus, to the extent Appellant’s argument is premised on strictly applying the
TSM test, it is not persuasive of Examiner error.
Instead, the conclusion of obviousness can be based on the
interrelated teachings of multiple patents, the effects of demands known to
3 Appellant presents several arguments that are applicable to all the claims
rejected as unpatentable over Gianuzzi and Hodges, which we address in this
section. To the extent Appellant presents separate arguments directed to
individual claims in the group, we address them below.
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the design community or present in the marketplace, and the background
knowledge possessed by a person having ordinary skill in the art. Id.', see
also id. at 416 (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”). Furthermore, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418. In other words, “if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” Id. at 417. We agree with the Examiner the prior
art contains known solutions that have been used to improve one device and
that a person of ordinary skill in the art would have recognized that it could
have been used to improve other prior art devices in a predictable way.
Appellant has not argued that it would have been “uniquely challenging or
difficult for one of ordinary skill in the art” to make the modifications
suggested by the Examiner. See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Therefore, we are not persuaded by Appellant’s arguments that the Examiner
erred in combining the prior art references.
Appellant further argues that “it is known that, if the proposed
modification or combination of the prior art would change the principle of
operation of the prior art invention being modified, then the teachings of the
references are not sufficient to render the claims prima facie obvious.” App.
Br. 13 (citing In re Ratti, 270 F.2d 810 (CCPA 1959)).
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If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900, 902 (Fed. Cir.1984). For example, our reviewing Court held that an
invention was not obvious where the prior art taught the device required
rigidity for operation whereas the claimed invention required resiliency. In
re Ratti, 270 F.2d 810, 813 (CCPA 1959). However, Ratti is inapplicable
where the modified apparatus will operate “on the same principles as
before.” See In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In
re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969)).
We do not find Appellant’s argument persuasive. Although Appellant
describes the holding of Ratti, Appellant provides no evidence in support of
their argument. App. Br. 13. Specifically, Appellant does not show how the
specific teachings taken from Hodges would so change Giannuzzi so that it
will no longer work for its intended purpose. Moreover, to the extent
Appellant makes an argument, Appellant relies solely on attorney argument.
However, it is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see
also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is
not evidence).
Finally, Appellant argues that “the references instead teach away from
one another - one is intended for rotational installation and one is not.” App
Br. 16. Because of the teaching away, Appellant argues “[t]he only way to
adopt that reading of these two references in view of the present invention is
to use hindsight to reconstruct Giannuzzi.” Id.
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Application 12/642,425
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006)). The specific method for using the device in Giannuzzi and Hodges,
which discusses a preferred embodiment, “does not teach away. . . [as] it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Appellant does not identify any passages in
Giannuzzi or Hodges that explicitly discredit or discourage using a different
type of installation method and the general disclosure cited by Appellant
does no more than articulate a preference for how the anchor is installed.
That stated preference is insufficient to teach away from the claimed
invention. See id.; Fulton, 391 F.3d at 1201.
Claim 8
Appellant argues the Examiner erred in combining Giannuzzi and
Hodges because “the system of the present invention does not need a drill to
install an anchor.” App. Br. 14; see also id. (“Claim 8 of the present
invention is devoid of any reference to a drill, a drilling tool or a hammer
drill.”).
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We are not persuaded by Appellant’s argument that the Examiner
erred. Appellant does not tie its argument regarding a drill to any specific
claim limitation. Because Appellant’s argument is not commensurate with
the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Appellant further argues that although “Hodges references a type of
anchor that seems to have a ‘flattened panel,’ Hodges does not disclose the
flattened panel of such an anchor being anchored with a suspension member
attached to it.” App. Br. 14. More specifically, Appellant argues Hodges
merely teaches “a type of anchor without a suspension member attached to
it. The socket 44 of Hodges does not allow the suspension member to be
installed without twisting it onto the flattened panel prior to insertion into a
pre-drilled hole.” Id.
The Examiner finds that Hodges Figure 16 teaches “a system for
mounting items on a ceiling comprised of an eyelet member . . . having a
boring end neck connected to a flattened panel, said flattened panel having
an aperture.” Final Act. 5—6. The Examiner further finds that the “aperture
[is] adapted to receive a suspension member (wire seen in figure 20).” Id. at
6; see also Ans. 13.
We agree with and adopt the Examiner’s findings. Hodges Figure 16
shows a flattened panel that is adapted to receive a suspension member, as
shown in Figure 20. Appellant does not address either of these figures and
does not attempt to show how the Examiner’s findings based on them are
erroneous. Moreover, to the extent Appellant points out that the suspension
member in Hodges is twisted, Appellant has not identified any claim
language that prohibits such a configuration. Accordingly, because
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Appellant’s argument is not commensurate with the scope of the claims, it is
unpersuasive. See Self, 671 F.2d at 1348.
Finally, in the Reply Brief, Appellant argues that “the insertion of
such [a claimed] eyelet member into the device of Giannuzzi would result in
the suspension member (a wire-like structure) to be hopelessly wrapped
around the sleeve 31, thereby negating the functionality of that eyelet with
the Giannuzzi device.” Reply Br. 6—7.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the
relevant issue is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”).
Accordingly, Appellant’s arguments based on bodily incorporation do not
persuade us that the Examiner erred.
Moreover, Appellant has not asserted that the proposed modification
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” See Leapfrog Enters., 485 F.3d at 1162 (citing KSR, 550 U.S. at
418). Absent such an assertion, we “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ,” and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR, 550 U.S. at 418; see also id. at 421 (“A
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person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
Accordingly, we sustain the Examiner’s rejection of claim 8, along
with the rejection of dependent claims 10-16, which are not separately
argued. See App. Br. 15.
Claim 17
Appellant argues the Examiner erred in rejecting claim 17 because
“Giannuzzi requires the use of a hammer drill H-D” while the claimed
invention “does not need a drill to install an anchor.” Id.
The only reference in claim 17 that could possibly exclude the use of
a drill is the preamble which states as follows: “An apparatus for manually
inserting items in a ceiling.” Id. at 21 (Claims App’x).
Whether to treat a preamble as a limitation is “determined on the facts
of each case in light of the overall form of the claim, and the invention as
described in the specification and illuminated in the prosecution history.”
Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98
F.3d 1563, 1572—73 (Fed. Cir. 1996). Most preambles are merely a
statement of intended use and “not a separate claim limitation . . . that must
be disclosed in [the prior art]” to conclude that the claim is unpatentable.
Outdry Techs. Corp. v. Geox S.p.A., No. 2016-1769, — F.3d --, 2017 WL
2603139, at *3 (Fed. Cir. June 16, 2017). In particular, “when the claim
body describes a structurally complete invention such that deletion of the
preamble phrase does not affect the structure or steps of the claimed
invention,” the preamble is not considered a limitation. Catalina Mktg. Int'l,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (citing
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IMS Tech., Inc. v. Haas Automation, Inc., 206, F.3d 1422, 1434 (Fed. Cir.
2000)). However, a preamble is limiting if it is ‘“necessary to give life,
meaning, and vitality’ to the claim.” Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187
F.2d 150, 152 (1951)).
Because the body of the claim “describes a structurally complete
invention such that deletion of the preamble phrase does not affect the
structure ... of the claimed invention” and manually does not provide an
antecedent basis for any of the claim limitations, we conclude that the
preamble of claim 17 is not limiting. According, we are not persuaded by
Appellant’s argument that the Examiner erred because the argument is not
commensurate with the scope of the claim. See Self, 671 F.2d at 1348.
Appellant further argues that although Hodges teaches “a type of
anchor that seems to have a ‘flattened panel,’ the socket 44 of Hodges does
not allow the suspension member to be installed without twisting it onto the
flattened panel prior to insertion into a pre-drilled hole. The system of the
present invention is not so limited.” App. Br. 16. However, for the same
reasons discussed above for claim 8, because this argument is not
commensurate with the scope of the claims, we are not persuaded that the
Examiner erred. See Self, 671 F.2d at 1348.
Accordingly, we sustain the Examiner’s rejection of claim 17.
Claims 22 and 23
Appellant argues claims 22 and 23 are “allowable insofar as each
claim depends from claim 21 which is believed to be allowable for the
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reasons stated above and in response to the anticipation rejection cited in the
Office Action.” App Br. 16.
Although we reverse the Examiner’s anticipation rejection of claim
21, we are not persuaded that the arguments presented regarding that
rejection are sufficient to show the Examiner erred in rejecting dependent
claims 22 and 23 as obvious over the combination of Giannuzzi and Hodges.
Although the Examiner relied on a combination of the teachings of
Giannuzzi and Hodges to reject claims 22 and 23, Appellant’s arguments are
directed to Giannuzzi alone. Compare Final Act. 9, with App. Br. 9-12. We
further note that the Examiner finds Hodges teaches the elements argued
missing in anticipation rejection of claim 21, based upon Giannuzzi (i.e. the
anchor and suspension member combination, manual insertion, and
telescoping members). See Final Act. 4—9. Thus, Appellant’s arguments
directed to claim 21 do not apply to the obviousness rejection of claims 22
and 23.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. Keller, 642 F.2d at 425
(CCPA 1981). Therefore, we are not persuaded by Appellant’s arguments
directed to Giannuzzi alone that the Examiner erred in rejecting claims 22
and 23 as obvious in light of the combined teachings of Giannuzzi and
Hodges.
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Accordingly, we sustain the Examiner’s rejection of claims 22 and 23.
We recognize that this is a rare situation in which we are reversing the
rejection of an independent claim while affirming the rejection of the
dependent claims. However, our determinations are based on different
grounds of rejection based on different prior art.4
Claim 9
With respect to dependent claim 9, Appellant merely contends that
because the additional reference used in the rejections of that claim
(Reiland) do not cure the shortcomings of the other references applied
against claim 8, the Examiner failed to make a prima facie case of
obviousness for these claims. App. Br. 17. Because we determine that the
rejection of claim 8 is not erroneous for the reasons discussed above, we
sustain the rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 8—17, 20, 22, and 23.
For the above reasons, we reverse the Examiner’s decision rejecting
claim 21.
4 The Patent Trial and Appeal Board is a review body, rather than a place of
initial examination. Although we have reversed the anticipation rejection of
claim 21, we leave it to the Examiner to ascertain the appropriateness of any
further rejections based on any other grounds or references. Although the
Board is authorized to enter a new ground of rejection to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See MPEP § 1213.02.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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