Ex Parte Raby

Patent Trial and Appeal Board

Dec 13, 2012

11963828 (P.T.A.B. Dec. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMUEL F. RABY
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Appeal 2010-005960
Application 11/963,828
Technology Center 3600
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Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005960
Application 11/963,828

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 5, 7-13, 15, and 17-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The Invention
Appellant’s claimed invention “relates to taxidermy type mounting
apparatuses and in particular, to taxidermy mounting apparatuses that
provide for movement or repositioning of the mounted game or fish or like
mounted object.” Spec. para. [0001]. Claims 1, 12, and 22 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A repositionable apparatus for displaying a
taxidermy mount object, said apparatus
comprising:
a base defining a substantially flat plate
having at least one collar connected to said plate;
a support arm having a first end and a
second end, said first end being connected to at
least one first shaft having a rod extending
therefrom, and said second end being connected to
a second shaft having a rod extending therefrom;
a swivel device defining a substantially flat
plate having a collar connected to said plate, and;
a taxidermy mount object;
wherein said rod of said at least one first
shaft is rotatably positioned in said at least one
base collar, and wherein said swivel device collar
is rotatably positioned on said rod of said second
shaft, and wherein said taxidermy mount object is
mounted to said swivel device such that said
support arm is rotatable about said support arm
first end and said swivel device is rotatable about
said support arm second end.
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Application 11/963,828

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Evidence Relied Upon
Jensen
Walrath
Smed
Goettl

US 4,561,339
US 6,209,835 B1
US 6,695,270 B1
US 6,828,035 B1

Dec. 31, 1985
Apr. 3, 2001
Feb. 24, 2004
Dec. 7, 2004

The Rejections
The following rejections are before us on appeal:
1. Claims 1, 2, 4, 9, 12, 13, 19, and 22-25 under 35 U.S.C. § 103(a) as
obvious over Goettl and Walrath. Ans. 3.
2. Claims 5, 7, 8, 15, 17, 18, and 26 under 35 U.S.C. § 103(a) as obvious
over Goettl, Walrath, and Smed. Ans. 5.
3. Claims 10, 11, 20, and 21 under 35 U.S.C. § 103(a) as obvious over
Goettl, Walrath, and Jensen. Ans. 5.

OPINION
Appellant presents a single argument against the first ground of
rejection, namely, that the commercial success of the claimed subject matter
demonstrates its non-obviousness. App. Br. 3-6, 11; Reply Br. 2-7.
Appellant repeats this argument against the second and third rejections.
App. Br. 6-11; Reply Br. 2-7.1 Given this, the resolution of all of the
rejections on appeal turn upon this single argument.

1 Because the argument against each rejection in the Appeal Brief is
essentially the same, we subsequently make reference to the first argument
only.
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Prima Facie Case
In the first rejection, over Goettl and Walrath, the Examiner found that
Goettl discloses a repositionable apparatus for displaying a taxidermy mount
object as claimed,
except for the limitations of the support arm having at least one
first shaft having a rod extending therefrom, a second end being
connected to a second shaft having a rod extending therefrom,
and wherein the rod of the at least one first shaft is rotatably
positioned in the at least one base collar, and wherein the
swivel device collar is rotatably positioned on the rod of the
second shaft.
Ans. 3. The Examiner concluded that it would have been obvious to modify
Goettl’s apparatus to include these features, as taught by Walrath, “for the
purpose of providing an alternative, mechanically equivalent means for
supporting and displaying an object wherein the arrangement would provide
for more degrees of adjustability for the apparatus to accommodate the
user.” Ans. 4-5
In the second rejection, over Goettl, Walrath, and Smed, the Examiner
concluded:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have modified the
base collar in Walrath to have included the base collar as taught
by Smed for the purpose of providing a means for supporting
more than one object in relation to the base of the repositioning
apparatus.
Ans. 5.
In the third rejection, over Goettl, Walrath, and Jensen, the Examiner
concluded:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have modified the
apparatus in Goettl in view of Walrath to have included a
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pedestal stand and a non-parallel swivel device plate as taught
by Jensen for the purpose of providing a means for alternatively
mounting the apparatus on a horizontal surface and for
providing an aesthetically different mount for displaying an
object.
Ans. 5-6.
Appellant does not challenge the Examiner’s findings regarding the
scope and content of the prior art, and we therefore accept these findings as
correct. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (the BPAI “reviews the obviousness rejection[s] for error based
upon the issues identified by appellant, and in light of the arguments and
evidence produced thereon,” and treats arguments not made as waived).
Further, Appellant does not identify a difference between the prior art and
the claimed subject matter, does not present arguments regarding the level of
skill in the art, nor directly challenge the rationale provided by the Examiner.
In light of this, the Examiner has made a prima facie case of obviousness.
In rebuttal, Appellant submits evidence alleged to demonstrate the
commercial success of the claimed subject matter. See App. Br. 3-6, 11;
Reply Br. 2-7. When such evidence is presented, it is our duty to consider
all evidence anew. See, e.g., In re Eli Lilly and Co., 902 F.2d 943 (Fed. Cir.
1990).

Secondary Considerations
Nexus
To be given substantial weight in the determination of obviousness or
nonobviousness, there must be a nexus between the merits of the claimed
invention and the evidence of secondary considerations. Ashland Oil, Inc. v.
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Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
In particular, an applicant who is asserting commercial success to support its
contention of nonobviousness bears the burden of proof of establishing a
nexus between the claimed invention and evidence of commercial success.
In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).
Here, Appellant presents evidence to show that 125 repositionable
taxidermy mounts were sold in 2007, and 186 mounts were sold in 2008.
Raby Decl. 1-2.2 Of these 311 units, two purchasers state that the mounts
were purchased because they are capable of a variety of poses so that it was
possible to avoid furniture and other objects proximate to the mount.
Christiansen Decl. 1-2; Hansen Decl. 1-2.3 Appellant also asserts that
purchasing decision feedback provided to the inventor includes “‘the ability
of the repositionable taxidermy mount apparatus to position a mount in a
corner of a room’ (see appendix F & F2) and ‘the ability of the
repositionable taxidermy mount apparatus to provide more repositionable
orientations that any other product available on the market.’” Raby Decl. 3.
Assuming, arguendo, that the units purchased possessed the claimed
features, at most, Appellant has provided evidence that less than one percent
(2 of 311, or 0.6 percent) of purchases of the claimed device were due to
claimed features. In other words, Appellant has provided no evidence with
regard to over 99 percent of sales of the mounts. Further, the inventor’s
opinion as to the purchaser’s reason for buying the mounts is insufficient to
demonstrate a nexus between the sales and claimed invention. See In re
Huang, 100 F.3d at 140. Thus, Appellant has not carried his burden of

2 Refers to the Declaration of Samuel F. Raby dated February 2, 2009.
3 Refers to the Declaration of Michael Q. Christiansen dated January 29,
2009, and that of Mark Hansen dated January 30, 2009.
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establishing a nexus between the claimed invention and the evidence of
commercial success. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,
1311-12 (Fed. Cir. 2006) (the lack of nexus between the claimed subject
matter and the commercial success renders the proferred objective evidence
uninformative).
Market Share
Appellant presents evidence that total sales in 2007 were
approximately $15,000 and in 2008, approximately $22,500. Raby Decl. 2.
As the Examiner correctly points out, such gross sales figures do not show
commercial success absent evidence as to market share. See Ans. 6; see also
Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27
(Fed. Cir. 1985).
According to Appellant, evidence of market share has been provided,
because the claimed device has a 100% market share. App. Br. 5; Reply Br.
2-5. Specifically, Appellant defines the relevant market as “complex motion
repositionable” taxidermy mounts. Reply Br. 2 (citing Raby Decl. at 2-3).
We fail to see why the market should be defined so narrowly. A
factor mentioned by purchasers of the claimed device is that the claimed
device was not limited to simple rotational motion, a feature provided by the
“Move-It” device. See Hansen Decl. 1-2; Christiansen Decl. 1-2; Raby
Decl. 2 (noting that the “Move-It” device provides rotational movement).
Given that purchasers considered the contrast to the “Move-It” device as
relevant to their purchasing decision, and that Appellant refers to the “Move-
It” bracket as a competing item (see Raby Decl. 2), the relevant market
should at least include other repositionable taxidermy mount apparatuses
(e.g., the “Move-It” apparatus). Therefore, we are unpersuaded by
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Appellant’s contention that the claimed apparatus has a 100% market share,
or that the gross sales represent a significant portion of the relevant market.
See In re Huang, 100 F.3d at 140 (without evidence that the sales are a
substantial quantity in the relevant market, “bare sales numbers” are a “weak
showing” of commercial success, if any); Kansas Jack, Inc. v. Kuhn, 719
F.2d 1144, 1150-51 (Fed. Cir. 1983) (“The evidence of commercial success
consisted solely of the number of units sold. There was no evidence of
market share, of growth in market share, of replacing earlier units sold by
others or of dollar amounts, and no evidence of a nexus between sales and
the merits of the invention. Under such circumstances, consideration of the
totality of the evidence, including that relating to commercial success, does
not require a holding that the invention would have been nonobvious at the
time it was made to one skilled in the art.”).

Obviousness Determination
Appellant’s evidence of commercial success is weak at best. Further,
Appellant does not otherwise contest or rebut the Examiner’s prima facie
case of obviousness of any of the claims on appeal. Having now considered
all the evidence presented by Appellant against obviousness and weighing
all the evidence anew, it is our conclusion that the evidence for obviousness
outweighs the evidence against obviousness. See In re Fenton, 451 F.2d
640, 643 (CCPA 1971) (the court balanced the Patent Office’s case against
the strength of appellant’s objective evidence of non-obviousness.); see also
Wyers v. Master Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010)
(citations omitted) (Our reviewing court has instructed us that “secondary
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considerations of nonobviousness . . . simply cannot overcome a strong
prima facie case of obviousness.”).

DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4, 5, 7-13,
and 17-26.
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

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