Ex Parte Dane

Patent Trial and Appeal Board

Sep 25, 2012

11963202 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY T. DANE
____________________

Appeal 2010-009433
Application 11/963,202
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009433
Application 11/963,202

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-8 and 15-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claims are directed to medical instrument bracket assemblies.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A bracket assembly for supporting medical instruments,
said bracket assembly comprising:
a tray;
a lower portion made of a high durometer resilient
material adapted to removably attach to the tray; and
an upper portion made of a low durometer flexible
material adapted to receive a medical instrument, the upper
portion attached to the lower portion.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Galbraith
Berry
Wu
Frieze
Riley
US 4,766,709
US 5,441,709
US 6,193,932 B1
US 6,244,447 B1
US 6,969,498 B1
Aug. 30, 1988
Aug. 15, 1995
Feb. 27, 2001
Jun. 12, 2001
Nov. 29, 2005

REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1-7, 15, and 19 under 35 U.S.C. § 103(a) as encompassing
subject matter unpatentable over Wu in view of Galbraith. Ans. 3-7.
Appeal 2010-009433
Application 11/963,202

3
Claim 8 under 35 U.S.C. § 103(a) as encompassing subject matter
unpatentable over Wu and Galbraith, and further in view of Frieze. Ans.
7-8.
Claim 16 under 35 U.S.C. § 103(a) as encompassing subject matter
unpatentable over Wu and Galbraith, and further in view of Berry. Ans. 8.
Claims 17 and 18 under 35 U.S.C. § 103(a) as encompassing subject
matter unpatentable over Wu and Galbraith, and further in view of Riley.
Ans. 8.
ANALYSIS
1. Rejection of claims 1-7, 15, and 19 over Wu in view of Galbraith
The Examiner found that Wu discloses all elements of the bracket
assembly recited in claim 1 (including an upper portion being made of
flexible silicone and a lower portion being made of resilient silicone rubber,
Ans. 4) except the requirement that the upper portion be made of a low
durometer material and the lower portion be made of a high durometer
material. Ans. 3-5. The Examiner further found that Galbraith discloses a
bracket mount which has a first portion that is integrally molded with a
higher-durometer resilient second portion. Ans. 5. The Examiner concluded
that it would have been obvious to make Wu’s bracket such that its lower
portion has a high durometer resilient material and its upper portion has a
low durometer flexible material to have the benefit, recognized by Galbraith,
of a bracket that can accept a delicate unit in the upper portion and
simultaneously be resiliently attachable to a tray at the lower portion. Id.
Appellant does not challenge the Examiner’s findings listed above or
the Examiner’s rationale for combining Wu and Galbraith. Instead,
Appellant argues that (a) Wu lacks a number of recited limitations, most
Appeal 2010-009433
Application 11/963,202

4
notably, that the upper and lower portions must be of different durometer;
and (b) Galbraith is non-analogous art. We consider these arguments in
turn.
a. Recited limitations absent from Wu
Appellant argues that Wu fails to disclose a number of claimed
features (App. Br. 15-16; Reply Br. 4-5). These arguments are non-
responsive to the rejection, and consequently unconvincing, because they
address Wu by itself, rather than the combination of Wu and Galbraith. In
particular, the Examiner relies upon Galbraith for disclosure of upper and
lower portions having different durometers. Appellant’s arguments
concerning Wu’s failure to disclose durometer and regarding the Examiner’s
comments on rigidity and flexibility in Wu (Reply Br. 4-5) are not relevant
to the questions of what Galbraith discloses and what the combination of Wu
and Galbraith would have conveyed to one having ordinary skill in the art.
b. Whether Galbraith is nonanalogous art
Appellant argues that Galbraith is non-analogous art to that of
Appellant’s application. App. Br. 16-19. In particular, Appellant argues
that (1) Galbraith addresses window mounting technology, which is not
concerned with supporting medical instruments and is not used in a medical
setting; (2) the structure and function of Galbraith is “vastly different” from
that of Appellant; and (3) the classification of Galbraith does not overlap at
all with that of Wu or of the present application. Id.
In response, the Examiner (1) asserts that the claimed bracket
assembly “would be manufactured by the same manufacturer” as Galbraith’s
device; (2) points out that the structural relationships between the parts in
Galbraith are the same as in the claim, though the parts themselves may have
Appeal 2010-009433
Application 11/963,202

5
different intended uses; and (3) the broad spectrum of prior art which must
be explored for a simple mechanical invention permits inquiry into other
areas where one of ordinary skill would be aware that similar problems exist.
Ans. 11-12.
In reply, Appellant argues that (1) the Examiner’s assertion regarding
similar manufacturing is without basis; (2) receiving a medical instrument is
not at all similar to receiving a glass unit because medical instruments are
significantly different from window panes in size, weight, and shape; and (3)
“[t]here is no logical connection between the Applicant’s claim as a whole
and Galbraith” (emphasis in original) such that “[n]o artisan within the
medical instrument bracket field would look to window assemblies during
the inventing process.” Reply Br. 5.
We find Appellant’s argument unconvincing. While we find the
Examiner’s assertion concerning a common manufacturer for both Galbraith
and the present subject matter unconvincing as it is unsupported by
evidence, we agree with the Examiner, for the reasons that follow, that the
simple mechanical nature of the claimed subject matter justifies searching a
broad spectrum of art which includes areas of technology in which one of
ordinary skill would be aware that similar problems exist.
Appellant frames the problem faced at the time of invention in the
“Background” section of the Specification as follows:
However, one problem with current brackets is that the medical
instruments need to be rigidly attached to a tray to keep the
instrument and/or bracket from falling loose during sterilization
or transport. The brackets also need to be flexible enough to
receive hard instruments of various sizes.
Appeal 2010-009433
Application 11/963,202

6
Specification, page 1, ll. 16-19. Appellant’s problem thus concerned
making a mechanical interface that was simultaneously rigid for secure
mounting and flexible for receiving other objects. Similarly, Galbraith
discloses a sturdy, reliable mount that uses a flexible connector as part of the
mount. Galbraith, col. 1, l. 66-col. 2, l. 3.
Just as an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” so a person of ordinary skill in the
art considering how to create an interface with simultaneously rigid and
flexible interactions would consider a reference describing an interface with
these same interactions, such as Galbraith. See In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). We agree with the
Examiner that one having ordinary skill in the art of the presently claimed
subject matter, confronting the problem Appellant has described, would have
been aware that similar problems existed in the window mounting arts.
Appellant’s arguments therefore do not convince us of error in the
Examiner’s finding that Galbraith is analogous.
For these reasons, Appellant has not convinced us of error in the
rejection of claim 1.
Appellant argues claims 2-7 solely on the basis of their dependence
from claim 1 (App. Br. 19-20) and argues claims 15 and 19 “based on the
reasons set forth with respect to claim 1” (App. Br. 20-21, quotation from
page 20). Appellant has not convinced us of error in the rejection of these
claims for reasons analogous to those given above with respect to claim 1.

Appeal 2010-009433
Application 11/963,202

7
2. Rejection of claim 8 over Wu, Galbraith, and Frieze
Appellant argues claim 8 solely on the basis of its dependence from
claim 1. App. Br. 21-22. We affirm this rejection for the reasons given
above.
3. Rejection of claim 16 over Wu, Galbraith, and Berry
The Examiner found that while Wu in view of Galbraith does not
teach that the upper portion and the lower portion are co-extruded, Berry
discloses such co-extrusion of a bracket, and it would have been obvious to
employ co-extrusion to obtain the benefits of “cheap and easy []
manufacture.” Ans. 8. Appellant argues that Berry discloses a bracket
“made of a single material” and that “[t]he upper and lower portion of Berry
fails to meet the requirements of the upper and lower portions of claim 16, as
defined in claim 15.” App. Br. 22-23. Appellant specifically highlights the
absence of disclosure in Berry concerning durometer. The Examiner notes
in response that Berry discloses extrusion of silicone, the same material
Appellant discloses. Ans. 13-14. Appellant makes no further reply.
We find Appellant’s arguments unconvincing. First, the argument
that Berry discloses a single material is not commensurate in scope with
claim 16, which is broad enough to encompass an assembly in which the
upper portion and the lower portion are made of a single material (e.g.,
silicone), provided that those portions have the recited durometers. Second,
the Examiner relied on Galbraith, not Berry, for the teaching that the upper
and lower portions may be made of materials having different durometers.
That Berry is silent about durometer is therefore non-responsive to the
rejection. Appellant’s arguments for claim 16 based on its dependence from
claim 15 are ultimately “based on the reasons set forth with respect to claim
Appeal 2010-009433
Application 11/963,202

8
1” (see supra at 6) and are unconvincing for reasons analogous to those
given above with respect to claim 1.
4. Rejection of claims 17 and 18 over Wu, Galbraith, and Riley.
Appellant argues claims 17 and 18 solely on the basis of their
dependence from claim 15. App. Br. 23-24. We affirm this rejection for the
reasons given above.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-8 and
15-19 is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Klh