Ex Parte Cattaneo

Patent Trial and Appeal Board

Jan 24, 2017

12735291 (P.T.A.B. Jan. 24, 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.
12/735,291 06/29/2010 Carlo Cattaneo 1586-023 1273
47888 7590 01/26/2017
HEDMAN & COSTIGAN, P.C.
ONE ROCKEFELLER PLAZA, 11TH FLOOR
NEW YORK, NY 10020
EXAMINER
TEFERA, HIWOT E
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
PTOmail@hgcpatent.com
ipdocket @hgcpatent. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLO CATTANEO
Appeal 2015-001598
Application 12/735,291
Technology Center 3600
Before: CHARLES N. GREENHUT, LYNNE H. BROWNE, and
GORDON D. KINDER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 3,
5, 6, and 9-15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm, designating our affirmance a new grounds of rejection
under 37 C.F.R. § 41.50(b).
Appeal 2015-001598
Application 12/735,291
CLAIMED SUBJECT MATTER
The claims are directed to an adjustable wall cupboard holder group
for anchoring a cupboard to the wall. Claim 14, reproduced below, is
illustrative of the claimed subject matter:
14. An adjustable wall cupboard holder group (10) for anchoring
a wall cupboard (11) to a wall, said wall cupboard holder group
(10) comprising a hooking element (14), adapted to engage a
supporting element fixed to a wall having a first end and a second
end, a central portion (16) affixed to the first end of said hooking
element (14), said central portion (16) having regulation means
(17, 17') positioned therein for adjusting the depth and
inclination of said hooking element (14), a hook (15) coupled to
said first end of said hooking element (14) where said wall
cupboard holder group (10) is adapted to be fixed on a side of
wall cupboard (11), said central portion(16) having two side
flanges (18, 18) which extend above and below said hooking
element (14), respectively, both of said side flanges (18, 18')
being adapted to be attached to a side of said wall cupboard (11)
wherein each of said side flanges (18, 18') has at least one plug
element (20, 20') which is resistant to shear forces and protrudes
from each of said side flanges (18,18'), said plug elements (20,
20') being hollow cylindrical plugs with a circular section, said
wall cupboard having holes (41) in an internal side wall (12) for
coupling with said plug elements (20, 20')_wherein each of said
side flanges (18,18’) comprise at least one fixing means (19,19’)
for fixing said flanges (18,18’) to said side (12) of said wall
cupboard (11).
REJECTIONS
Claims 3, 5—6, 10, 12, 13 and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over EP1228720 (Rioja), in view of U.S. 5,607,271
(Salice) in further view of U.S. 4,432,680 (Molina).
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rioja, Salice, Molina and U.S. 5,611,637 (Brustle).
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Appeal 2015-001598
Application 12/735,291
Claims 9 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rioja, Salice, Molina and WO 2004/032681 A1
(Cattaneo).
OPINION
Appellant correctly argues that the Examiner’s characterization of the
embossed elements 25 of Rioja as “plug elements,” according to claims 14
and 15, is unreasonably broad. Br. 4. The embossed elements 25 are not fit
into anything nor do they appear to be capable of being fit into anything
without either significant modification to Rioja’s bracket or cooperation with
some oddly shaped hole designed specifically for their accommodation (see
Ans. 3). The mere fact that it is conceivable to construct a hole that could
receive elements 25 of Rioja does not, without more, demonstrate they are
reasonably regarded as “plug elements” according to claim 14.
Rioja does, however, have “plug elements.” The barbed structures
directly above embossed elements 25, as viewed in Figure 5, though not
labeled or discussed, would be understood by one skilled in the art to be
snugly received in, and thus “plug,” a conventional hole in a cabinet. This
understanding is further supported by the illustration of the heads of screws,
which are also not labeled or discussed, but can be seen in Figures 1 and 5,
and would be understood to attach Rioja’s bracket to the cabinet. Rioja’s
figures are relevant for all they fairly suggest. In re Aslanian, 590 F. 2d 911
(CCPA 1979)(citing/w re Seid 161 F. 2d 229, 231 (CCPA 1947)); See also
In reMraz, 455 F.2d 1069, 1072 (CCPA 1972).
With this modification to the Examiner’s position, as discussed above,
we turn to the issues raised regarding the remainder of the Examiner’s
rejection. The Examiner’s finding that making parts integral (Final Act. 6
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Appeal 2015-001598
Application 12/735,291
(citing MPEP 2144.04)), like the plugs of Salice (see Final Act. 5 (citing
Salice elements 106, Figs. 20, 24; col. 10,11. 14—19) was well-known in the
art stands uncontroverted. Reducing parts, facilitating alignment and
assembly are predictable results of such modification. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l. v. Teleflex, 550
U.S. 398,416 (2007).
Regarding the recited plug attribute of being “resistant to shear
forces,” (Br. 5) the Examiner frames the rejection both with and without
Molina. We agree with the Examiner that Molina is relevant or analogous.
See Br. 5—6; Ans. 4 (“all three references [] show a way to mount a fixing
device on a wall of a panel.”); see also KSR Int'l Co. v. Teleflex, Inc., 127
S.Ct. 1727, 1742, 167 L.Ed.2d 705 (2007)(“[F]amiliar items may have
obvious uses beyond their primary purposes.”). The Examiner styles the
portion of the rejection citing Molina as teaching the use of a plug to absorb
shear forces, concluding doing so would be an obvious modification to the
Rioja and Salice brackets. Final Act. 6. Molina may be better characterized
as express evidence that bushings or plugs of the type disclosed in Salice
would resist shear forces to at least some extent. The Examiner correctly
points out that the claim recites neither a particular magnitude resisted, nor a
particular direction or origin of, the recited shear forces. Ans. 3^4. Shear
forces on bushings 106 could arise from the left, right, into, or out of, the
page, as viewed in Figure 20 of Salice. If threads 123 are to cut into the bore
holes in which they are received there must be an opposing force resisting
movement. See Salice col. 10,1. 9-col. 11,1. 31. Bushings 106 in the
stationary plate 104 appear to be the only structure depicted in Salice that
would provide this function. See Figs. 20, 21. As such, while the fastening
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Appeal 2015-001598
Application 12/735,291
plate 103 may be adjusted, the bushings 106 in the under-plate 104 must
resist movement and thus resist shear forces in at least the direction
indicated by arrow A (left and right in Figure 21). Furthermore, Salice’s
mounting plate 103 is designed to support a hinge arm. Although depicted
on a horizontal panel 101, which would induce at least some shear forces
when a hinge and/or a door is attached, if mounted vertically, as cabinet
hinges commonly are, the bushings would necessarily need to resist
significant sheer forces into and out of the page as viewed in Figure 20. The
Examiner correctly found that Molina expressly describes that it is known to
use bushings or sleeves 66 of this type for resisting sheer forces. Final Act.
6 (citing Molina col. 7,11. 12—17; Figs. 5—7). The Examiner correctly found
that Salice’s bushings are inherently “resistant to shear forces” and also
correctly concluded, in the alterative, that it would have been obvious to
make them resistant to shear forces because that would be beneficial, if not
necessary, for them to function properly when used as intended. Id.
Appellant’s final comment, that Brustle does not disclose resistance to shear
forces (Br. 6) is not germane to the rejections before us for review in which
Salice and Molina were relied upon by the Examiner regarding this aspect of
the claimed subject matter.
Although we have relied upon the same statutory basis and prior art,
as we have modified the Examiner’s rejections we designate our affirmance
thereof as including new grounds of rejection pursuant to 37 C.F.R. §
41.50(b) in order to ensure Appellant has a fair opportunity to respond.
DECISION
The Examiner’s rejections are affirmed. We designate our affirmance
as including a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
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Application 12/735,291
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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