Ex Parte Graham

Patent Trial and Appeal Board

Aug 28, 2017

14121164 (P.T.A.B. Aug. 28, 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.
14/121,164 08/07/2014 Charles D. Graham 8222 5194
77083 7590 08/28/2017
Paul M. Denk
763 South New Ballas
Ste. 305
St. Louis, MO 63141
EXAMINER
WEINHOLD, INGRID M
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
08/28/2017 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 CHARLES D. GRAHAM
____________

Appeal 2017-001361
Application 14/121,1641
Technology Center 3600
____________

Before KRISTEN L. DROESCH, JOHN A. EVANS, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 2, 3, 5, and 6, which constitute all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is identified as Charles D. Graham and Hubbs
Machine & Manufacturing, Inc. Br. 4.

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Application 14/121,164

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STATEMENT OF THE CASE
Appellant’s invention relates to a tethering assembly for a spherically
mounted retroreflector. Abstract. Claim 5 is exemplary of the subject
matter on appeal (emphasis added):
5. A tethering assembly for connecting with a sphere mount
retroreflector comprising:
a sphere mount retroreflector, said retroreflector including a
sphere shaped reflector, and said retroreflector having an integral
collar extending from said sphere shaped retroreflector, and a sphere
mount upon which the retroreflector rests during usage, said sphere
mount having a connecting device provided thereon;
a wire having a central portion including a first end forming a
first loop, and with said first end is secured to the central portion of
said wire, and a second end forming a second loop with said second
end is secured to said central portion;
a spring clip attached to the first loop, and said spring clip
capable of pressed expansion to provide for connection of said spring
clip onto the collar of the retroreflector;
a clip device attached to the second loop, said clip device
capable of securement to said connecting device of the sphere mount;
and
whereby said retroreflector being tethered to said sphere mount
to link said retroreflector and sphere mount together in the event the
retroreflector inadvertently unmounts from the sphere mount during
usage.

Br. 17 (Claims Appendix).

REJECTIONS
Claims 2, 3, 5, and 6 stand rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
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inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention. Final Act. 4–5.
Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over SMR Target Holders & Accessories Catalog to Brunson
Instrument Company (“Brunson”), Carr (US 6,631,538 B1; iss. Oct. 14,
2003) (“Carr”), and Bucciero (US 5,083,347; iss. Jan. 28, 1992)
(“Bucciero”). Final Act. 5–10.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brunson, Carr, Bucciero, and Watkins (US 629,224; iss.
July 18, 1899) (“Watkins”). Final Act. 10–11

ANALYSIS
The § 112 Rejections
Regarding claim 5, the Examiner finds the recitation, the retroreflector
“rests during usage” upon the sphere mount, is not clear how since the upper
surface of the sphere mount is depicted as planar and since there appears to
only be a point contact between the retroreflector and the sphere mount.
Final Act. 4 (citing Fig. 4). The Examiner additionally finds the connecting
device is only depicted as a tiny circle and its structure and connection are
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not clear. Id. (citing Fig. 4). The Examiner makes similar findings in the
rejection of independent claim 6. Id. at 5.
Appellant does not address the § 112 rejections and, therefore, we pro
forma sustain the Examiner’s rejections of claims 5 and 6, and dependent
claims 2 and 3.
The § 103(a) Rejections
Appellant argues the “essence” of the invention “is to provide a quick
release tethering assembly for use for a spherically mounted retroreflector.
A sphere mount and its retroreflector are very delicate items, they are
expensive in cost, and should they be mishandled, such as inadvertently
dropped or pushed off of its mount, can be an expensive mishap.” App. Br.
10. Appellant then argues why the cited references disclose different
structures and functions and do not teach the invention. Id. at 10–14.
The Examiner finds the combination of Brunson, Carr, and Bucciero
teaches the independent claim 5 limitations. Final Act. 5–7. In particular,
the Examiner finds Brunson teaches a tethering assembly which teaches
most of the claim 5 limitations, and teaches quick release fittings for
configuration flexibility, but Brunson does not specifically teach that the clip
attached to the first loop is a spring clip capable of pressed expansion. Id. at
6–7 (citing Brunson tethering assembly 1.5LK-P Basic Lanyard kit and
1.5LK-F Deluxe Lanyard kit, pages 9, 29, 61, 62). The Examiner relies on
the combination of Carr and Bucciero for this limitation. Id. at 7. In
particular, the Examiner finds Carr teaches using a tether with attachment
clips on either end and further teaches that the clips can vary depending
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upon the needs of the user. Id. (stating “see Figures showing a variety of
different clips, including pressed expansion clips as shown in Figure 1”).
The Examiner finds Bucciero is drawn to a spring clip capable of pressed
expansion for connection onto the collar of a retroreflector (can mount to
tubular object). Id. (citing Brunson 3:4–20, Fig. 1). The Examiner
concludes
it would have been obvious to one of skill in the art that a
spring clip as shown by Bucciero could replace the clip of
Brunson as a matter of design choice as taught by Carr, in order
to provide a quicker release for configuration flexibility and
ease of manufacturing and use since the clip of Bucciero is a
single piece of wire, thereby minimizing the parts needed in the
kit of Brunson.
Id.
Appellant argues Brunson does not show the use of a spring clip but
instead uses a collar as a connecting device. App. Br. 11. Appellant argues
Carr’s interlocking teeth clamp is intended for a shoulder-bag strap (and
similar applications) and would not work for the delicate application
claimed. Id. Appellant argues Bucciero’s spring clip for a hose is totally
different from the claimed invention. Id. at 12. Appellant argues it would
not be obvious to combine the references as suggested by the Examiner. Id.
The Examiner finds Appellant argues the references individually
while the rejections are based on obviousness. Ans. 3. In particular,
Brunson is used to show that tethering a retroreflector via clamps to a mount
that the retroreflector is resting upon is known in the art wherein the
structure of the clips themselves is not relied upon, only the function of the
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clips attaching the tether to both the retroreflector and to the mount. Id. at
3–4. Carr is relied upon because it teaches a tether with a clip on either end,
for the purposes of tethering one object to a structure. Id. Carr shows
different variations of clips and teaches that the tethered clips can vary
depending on the needs of the user. Id. at 4 (citing Carr 5:1–13, 6:56–63,
9:1–3, 14:4–34). Bucciero teaches the specific structure of the spring clip as
claimed. The Examiner notes that although the Appellant has not claimed
how many hands are required to operate the clips, Carr teaches the use of
just one hand when operating some of the spring clips. Id. at 4 (citing Carr
5:1–5).
Independent claim 6 is similar in scope to claim 5 and additionally
recites “said clip device capable of securement to other supporting
structure.” Appellant presents similar arguments as for claim 5, supra, and
additionally argues “[t]he tethering assembly of applicant, as designed, can
be secured to other supporting structure, even to a wrist band, in order to
prevent the retroreflector from inadvertently dropping during usage, and
being damaged through such dropping.” App. Br. 14. The Examiner finds,
and we agree, Brunson teaches its tethering assembly can be secured to a
wrist. Ans. 10 (citing Brunson 61, 62); see also Final Act. 8–10 (attached to
connecting device of sphere mount as shown on page 29).
Appellant argues the references individually. In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
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combinations of references.” (Citations omitted)); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are not persuaded by Appellant’s arguments and agree, instead,
with the Examiner’s findings and conclusions that the combination of the
teachings of Brunson, Carr, and Bucciero teaches the claim 5 and 6
limitations. Appellant interprets the teachings of the cited references
unreasonably narrowly and argue the references individually.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” . . . . [H]owever,
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.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
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a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420–21.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–21).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of independent claims 5
and 6.
Regarding dependent claim 2, Appellant argues “Applicant's central
loop is to provide a means for engagement of its wire 12, through its loop
18, to that central loop portion 30 of his spring clip 20” and “[t]hat is not
suggested in any manner, in the Bucciero reference.” App. Br. 13. The
Examiner finds, and we agree, claim 2 does not recite this limitation, which
is recited in dependent claim 3. Ans. 9.

Regarding claim 3, Appellant argues:
Watkins simply shows another snap hook or clamp, not to[o] unlike in
usage for what is shown in the Carr reference, and while it does state
that it could be used for reception of a strap or a rope, the type of snap
hook as shown in Watkins just could not provide the secure application
to the components of a retroreflector, to hold them together for safety
reasons, in the first instance. It is not believed that Watkins, for what it
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shows and describes, would suggest to anyone skilled in the art that,
that type of snap hook could be applied to a tethering assembly, for a
retroreflector, in the first instance.

App. Br. 13–14.

The Examiner finds, and we agree, the structure of the spring clip of
Watkins is not relied upon as “[i]t is clear from the rejection that the
Watkins reference was merely used as a teaching to show that a spring clip
with a looped end (as already taught by Bucciero) could have a tether
attached directly to the looped end.” Ans. 10. In re Keller, 642 F.2d 413,
426.
In view of the above, we sustain the rejection of dependent claims 2
and 3.
DECISION
We affirm the Examiner’s decision rejecting claims 2, 3, 5, and 6
under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph.
We affirm the Examiner’s decision rejecting claims 2, 3, 5, and 6
under 35 U.S.C. § 103(a).
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)(1)(iv).

AFFIRMED