Ex Parte Kanthasamy

Patent Trial and Appeal BoardSep 9, 2014

12428667 (P.T.A.B. Sep. 9, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/428,667 04/23/2009 Abedan Kanthasamy 40285-P015US 9401 61060 7590 09/09/2014 WINSTEAD PC P.O. BOX 131851 DALLAS, TX 75313 EXAMINER KELLEHER, WILLIAM J ART UNIT PAPER NUMBER 3673 MAIL DATE DELIVERY MODE 09/09/2014 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 ABEDAN KANTHASAMY ____________________ Appeal 2012-000525 Application 12/428,6671 Technology Center 3600 ____________________ Before EDWARD A. BROWN, JAMES P. CALVE, and PATRICK R. SCANLON, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Lifestyle Solutions, Inc. Appeal Br. 1. Appeal 2012-000525 Application 12/428,667 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1–18 under 35 U.S.C. § 103(a) as being unpatentable over Lieberknecht (DE 3243200 A1, published May 24, 1984) and Fox (US 2,907,053, issued Oct. 6, 1959). We REVERSE. THE INVENTION Appellant’s invention relates to sofa beds. Spec. 1, l. 3. Claims 1, 3, and 12 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method for converting a sofa into a bed, the method comprising: lifting up a seat deck of said sofa off the ground from its resting horizontal position; pulling and rolling out said seat deck until roll out wheels underneath said seat dock lock into place; placing said seat deck back into its resting horizontal position; and pushing down an approximately vertical back rest of said sofa towards said pulled out seat deck until said back rest is level with said pulled- out seat deck thereby forming a bed. Claims 3 and 12 are both directed to a “sofa that converts into a bed” comprising, inter alia, roll out wheels that roll out along a track mechanism “until said roll out wheels are locked into place at a location on said track mechanism furthest away from [a] back rest.” Appeal 2012-000525 Application 12/428,667 3 ANALYSIS Regarding claim 1, the Examiner finds that “Lieberknecht discloses (See Figures 5 and 6) a method for converting a sofa into a bed, the method comprising: pulling and rolling out said seat deck until roll out wheels underneath said seat [deck] lock into place.” Answer 4. More specifically, the Examiner contends that “[r]egarding the limitation [of] the roll out wheels locking into place . . . there must be some structure in Lieberknecht that prevent[s] the seat section from being slid off of base 1.0.” Id. at 5. The Examiner alternatively finds that “Fox shows two methods of locking a seat section into place. Fox accomplishes this using a stop at 19 and a wheel that gets caught on dimples 33a and 33b.” Id.; see also id. at 10 (“Fox discloses ‘a pair of closely spaced rivets 33a and 33b which flank the rollers 21 in bed position to prevent accidental movement of the seat [section] in either direction from that position.’ This prevention of accidental movement is considered to be a lock.”). The Examiner applies similar reasoning in rejecting independent claims 3 and 12. Id. at 6–8. Appellant argues that “Lieberknecht and Fox, taken singly or in combination, do not teach ‘pulling and rolling out said seat deck until roll out wheels underneath said seat [deck] lock into place’ as recited in claim 1.” Appeal Br. 5; see also id. at 8 (making equivalent arguments with respect to claims 3 and 12). Appellant’s arguments on this point are persuasive. The Examiner’s contention that there “must be” some structure in Lieberknecht to prevent the seat section from sliding off the base is not supported by a preponderance of the evidence. If the Examiner’s position is that Lieberknecht inherently discloses locking structure, this position is not Appeal 2012-000525 Application 12/428,667 4 established adequately. See Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Furthermore, even assuming arguendo that Lieberknecht discloses structure for preventing the seat section from sliding off the base, there is no suggestion that such structure comprises roll out wheels underneath the seat section that lock into place. The Examiner’s alternate reliance on Fox as disclosing the locking roll out wheel limitations of claims 1, 3, and 12 is also in error. First, although the claims recite that the roll out wheels are locked into place, the Examiner merely contends that Fox discloses two methods of locking a seat section into place. Answer 5. As such, the Examiner does not contend explicitly that Fox discloses locking roll out wheels into place. Moreover, neither one of Fox’s two “locking methods” noted by the Examiner actually involves locking roll out wheels in place upon pulling and rolling out a seat deck, as required in claims 1, 3, and 12. Fox’s stop pins 19 engage rear supports 28 depending from seat frame 22 when seat frame 22 is in its rearward-most position (i.e., the sofa position). Fox, col. 2, ll. 21–25; Fig. 3. Accordingly, stop pins 19 prevent seat frame 22 from further rearward movement relative to base frame 10. Stops pins 19 do not lock seat frame 22—or any roll out wheels—while seat frame 22 is being pulled out. Regarding the second locking method identified by the Examiner, Fox discloses that each end rail 23 of seat frame 22 has two closely-spaced rivets 33a, 33b that flank rollers 21 when seat frame 22 is in its bed position and prevent accidental movement of seat frame 22 in either direction. Id. at Appeal 2012-000525 Application 12/428,667 5 col. 2, ll. 40–44; Fig. 1. Fox’s rollers 21 are mounted to base frame 10 via brackets 20, rather than to the seat deck as claimed. Id. at col. 2, ll. 2–4; Figs. 1, 3. As such, rollers 21 are fixed in position and only rotate about their axes. Fox further discloses rollers 29 mounted to the rear portion of seat frame 22 via support brackets 28. Id. at col. 2, ll. 17–20; Figs. 1, 3. However, rollers 29 do not engage rivets 33a, 33b, or any other detents, when seat frame 22 is pulled out. The arrangement of rivets 33a, 33b and rollers 21 of the base frame 10 can be viewed broadly as “locking” seat frame 22 in place with respect to base frame 10. However, the Examiner does not explain adequately how this arrangement locks any roll out wheels in place where the roll out wheels are positioned “underneath said seat [deck]” (claim 1) or “attached to and engaged with said seat deck” (claims 3 and 12). In fact, the Examiner does not identify whether rollers 21, rollers 29, or both are considered to correspond to the claimed roll out wheels.2 For the above reasons, we determine that the Examiner has not established by a preponderance of the evidence that either Lieberknecht or Fox, or a combination of these two references, discloses the locking roll out wheel limitations of claims 1, 3, and 12. In addition, the Examiner does not articulate a clear explanation of how he proposes to modify Lieberknecht with Fox or why one of ordinary skill in the art would be led to such a modification. Merely asserting that “[o]ne of ordinary skill in the art would have recognized that a locking mechanism of Fox could be incorporated into Lieberknecht to provide 2 The Examiner appears to indicate that rollers 29 are roll out wheels in discussing claims 4 and 5. Answer 6. Appeal 2012-000525 Application 12/428,667 6 Lieberknecht with the predictable established function of a lock” (Answer 5) is not sufficient to demonstrate the requisite rational underpinning to support the conclusion as to why a skilled artisan would have considered it obvious to modify Lieberknecht in an unspecified manner. Accordingly, we do not sustain the rejection of independent claims 1, 3, and 12—and of claims 2, 4–11, and 13–18 depending therefrom—under 35 U.S.C. § 103(a) as unpatentable over Lieberknecht and Fox. DECISION We reverse the decision of the Examiner rejecting claims 1–18. REVERSED rvb