Ex Parte Schuetz et al

Patent Trial and Appeal BoardApr 20, 2016

13601443 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/601,443 08/31/2012 130000 7590 04/22/2016 WashamPLLC PO BOX 601526 DALLAS, TX 75360-1526 FIRST NAMED INVENTOR Robert J. Schuetz 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 ATTORNEY DOCKET NO. CONFIRMATION NO. WFLOA. l 000.02.C 4826 EXAMINER BARNETT, DEVIN K ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 04/22/2016 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): patents@washam.com steven.washam@washam.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. SCHUETZ and RICHARD C. YOUNG 1 Appeal2014-003608 Application 13/601,443 Technology Center 3600 Before STEFAN STAICOVICI, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert J. Schuetz and Richard C. Young ("Appellants") appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-11. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is RJ Schuetz Associates, LP. Appeal Br. 3. Appeal2014-003608 Application 13/601,443 CLAIMED SUBJECT MATTER The invention concerns storage systems for flotation devices. Spec. i-f 2. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A float rack for storing floats, each float having a headrest, the float rack comprising: a vertical support post having a top end and a bottom end; an upper support extending horizontally from the top end of the vertical support post, the upper support having a length; a lower support extending horizontally from the bottom end of the vertical support post, the lower support having a length that is longer than the length of the upper support; a plurality of slip-T joints connected to the vertical support post to provide a joint that rotates about the vertical support post; a plurality of float support arms, each float support arm being attached to one of the plurality of slip-T joints, each float support arm comprising ribbed material to allow easy sliding of a headrest over the float support arm; an upper surface mount secured to the upper support; a lo\'l/er surface mount secured to the lo\'l/er support; wherein the upper surface mount and the lower surface mount fixedly secure the float rack to a supporting wall; wherein the vertical support post is disposed at an angle with respect to the supporting wall when the float rack is secured to the supporting wall; and wherein the float support arms align the floats substantially parallel to the supporting wall when stored. Appeal Br. 34, Claims App. (emphases added). Independent claims 4 and 7 also recite that a "vertical support post" is "disposed at an angle with respect to the supporting wall," similar to the language emphasized above in claim 1. Id. at 35-36, Claims App. 2 Appeal2014-003608 Application 13/601,443 REJECTIONS The claims stand rejected as follows: I. Claims 1 and 3 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka (US 5,236,095, iss. Aug. 17, 1993), Baker (US D509,905 S, iss. Sept. 20, 2005), and Erickson (US 6,386,407 B 1, iss. May 14, 2002). II. Claim 2 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka, Baker, Erickson, and Strunck (US 6,216,882 B 1, iss. Apr. 17, 2001). III. Claims 4--11 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka and Baker. ANALYSIS Obviousness over Krizka, Baker, and Erickson - Claims 1 and 3 Claim 1 Regarding claim 1, the Examiner finds that Krizka discloses a rack that is capable of storing floats. Final Act. 2 (citing Krizka, Fig. 1 ). The Examiner finds that the rack includes, inter alia, a vertical support post ( 4b) with a plurality of float support arms (52). Id. at 2-3. The Examiner also finds that the rack includes a horizontal upper support (12b) and a horizontal lower support (unnumbered, see Krizka 2:43--49), which secure the rack to a supporting wall (9). Id. at 2-3. The Examiner finds that Krizka does not teach that the lower support is longer than the upper support, such that the vertical support post is disposed at an angle with respect to the wall. Id. at 3. The Examiner finds that Baker discloses a vertical support post hand rail, shown in Figure 1, having a lower support that is longer than an upper 3 Appeal2014-003608 Application 13/601,443 support, such that the vertical support post is disposed at an angle with respect to a supporting wall. Id. at 3--4 (showing Examiner annotations to Baker, Fig. 1 ). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art have modified Krizka's lower support to be longer than Krizka's upper support, as taught by Baker, because such a modification would entail "a mere change in the size of the lower support and orientation of the vertical support ... [which is] generally recognized as being within the level of ordinary skill in the art." Id. at 4--5. The Examiner concludes that "the longer lower support will result in an angled vertical post [of Krizka] which will allow users to more easily access items stored on the arms." Id. First, Appellants contend that "Krizka is not intended for use in storing floats substantially parallel to a supporting wall." Appeal Br. 6. We are unpersuaded by this argument because, as the Examiner notes, if a prior art structure is capable of performing a claimed intended use, then it meets the claim. Ans. 8; see, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The Examiner finds that Krizka's rack is structurally capable of storing floats parallel to the wall, and that finding is supported by a preponderance of the evidence. Ans. 8, 13-14; Final Act. 8; Krizka, Fig. 1. Appellants do not explain persuasively how Krizka's rack is incapable of storing floats in such a manner, and Appellants' suggestion that Krizka's support arms must be extended outward from the wall (Appeal Br. 6) is not supported by Krizka's disclosure. Ans. 13-14; see, e.g., Krizka, Fig. 1; see also id. at 1:35-38 (disclosing that arms can be utilized at "any angular 4 Appeal2014-003608 Application 13/601,443 orientation"), 2: 63-3: 8 (disclosing that a set key locks the arm at any desired orientation). Second, Appellants contend that Krizka fails to disclose "a lower support extending horizontally ... "and "a lower surface mount secured to the lower support .... " Appeal Br. 7. We are unpersuaded by this argument because, as the Examiner notes, Krizka discloses an alternative to the floor mount shown in Figure 1, in which "a support fixture assembly (not shown) and as exemplified by plates 8a, 8b can further be affixed to the sidewall 9 as an alternative manner of retaining and anchoring the lower end of the vertical support tubes 4a, 4b with its end elevated above the floor 7." Krizka 2:43--48; Final Act. 2-3; Ans. 9-10. Appellants do not explain persuasively how this alternative structure fails to satisfy the claim language. Third, Appellants contend that the combination of Krizka and Baker render each unsatisfactory for their intended purposes. Appeal Br. 7-10. Specifically, Appellants contend that if Krizka is modified as the Examiner proposes, "[t]he weight of the body part [stored on Krizka's arms] would then cause the horizontal support tubes to unintentionally rotate toward the wall, possibly dropping the body part to the floor." Id. at 8-10 (emphasis added). We are unpersuaded by this argument because, as the Examiner notes, this alleged unsuitability is speculative and is not supported by Krizka's disclosure. Ans. 13-14. As the Examiner discusses, Krizka discloses set key 32, which locks the support arms in place and prevents the unintentional rotation Appellants discuss. Id. (citing Krizka 2:63). 5 Appeal2014-003608 Application 13/601,443 Fourth, Appellants contend that Baker is non-analogous art and that a person of ordinary skill in the art "would never consider the 'camping trailer telescopic stairway handrail' of [Baker] when trying to address [the applicant's problem of 'hang[ing] pool floats and other items in a compact fashion against a wall']." Appeal Br. 10-11. "In order to rely on a reference as a basis for rejection of the applicant's invention, the reference must either be in the field of the applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned." In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Further, "[t]he Supreme Court's decision in [KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)] directs us to construe the scope of analogous art broadly, stating that 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle."' Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). We are unpersuaded by Appellants' argument because it relies on an overly narrow characterization of the problem faced by Appellants. Specifically, Appellants argue that "[t]he inventor faced the problem of efficiently and compactly storing multiple floats and other items against a vertical surface." Reply Br. 4; see also Appeal Br. 10 ("[Appellants'] needs/problems ... involved the ability to hang pool floats and other items in a compact fashion against a wall"). However, Appellants' Specification shows that the problem faced by Appellants is broader than argued. The Specification shows that Appellants broadly sought to solve the problem of 6 Appeal2014-003608 Application 13/601,443 securing a vertical structure, to be used for storage, to a vertical surface. See Spec. i-f 17 ("Float rack 10 is mounted to an outside wall of building 14 ... but may be mounted inside, as in a garage or storage area."); i-fi-1 19, 22, 23; Fig. 1. We are not persuaded that a person of ordinary skill in the art, faced with this problem, would not consider art in which other vertical structures are secured to other vertical surfaces, even if used for different purposes, e.g., as a handrail. Therefore, whether Baker lacks an "explicit or implicit reference to [a] hanging rack" (Reply Br. 4) is not dispositive because the preponderance of the evidence of record shows that Baker is reasonably pertinent to the problem of securing a vertical structure to a vertical surface. Final Act. 3--4; Ans. 10, 16. We are also unpersuaded by Appellants' argument that Baker's USPTO classification in a different class from that in which Krizka is classified, and the Examiner's failure to include Baker's class in the Examiner's search strategy, shows that Baker is non-analogous art. Reply Br. 3-5. The fact that a reference is classified differently from another is of limited value in determining whether it is analogous art because the considerations undertaken in forming a classification system differ from those relating to what would be considered by a person of ordinary skill in the art, when seeking a solution for a particular problem. In re Mlot- Fijalkowski, 676 F.2d 666, 669 n.5 (CCPA 1982). As discussed above, Appellants were concerned with securing a vertical structure, usable for storage, to a vertical wall, and, despite the differences in USPTO classification, we are not persuaded that a wall-mounted vertical handrail as disclosed by Baker is not reasonably pertinent to this problem. 7 Appeal2014-003608 Application 13/601,443 Fifth, Appellants contend that the Examiner's rejection is "rife with improper hindsight reconstruction" and "contains no Graham findings whatsoever." Appeal Br. 11-12 (emphasis added). 2 We are unpersuaded by this argument because, as the Examiner notes, an obviousness analysis can take into account the inferences and creative steps taken by a person of ordinary skill in the art. Ans. 17-18. In rejecting claim 1, the Examiner performed a Graham analysis and concluded that claim 1 would have been obvious to a person of ordinary skill in the art. See Final Act. 2-5. Specifically, the Examiner first determined the scope and content of the prior art. See id. at 2--4 (finding that Krizka discloses a vertical support post, an upper support, and a lower support, and finding that Baker discloses a vertical support post, and a lower support longer than an upper support). Next, the Examiner ascertained the differences between the claimed invention and the prior art. See id. (finding that Krizka does not disclose that the lower support is longer than the upper support such that the vertical support is angled, as claimed). Finally, the Examiner resolved the level of ordinary skill in the art. See id. at 4--5 (concluding that it would have been obvious to a person of ordinary skill in the art to modify Krizka as 2 Appellants' contention that the Examiner engaged in improper hindsight because Baker is non-analogous art and because Krizka is mischaracterized is unpersuasive, because these arguments have been discussed individually. See Appeal Br. 12; see supra 4--7. Further, although we appreciate Appellants' argument that the Examiner engaged in improper hindsight in pages 4--5 of the Answer (discussing that an angled vertical post "will create more spacing between the adjacent support arms of [Krizka]"), we do not rely on that portion of the Examiner's Answer in affirming the rejection. See Reply Br. 5, 7-9. 8 Appeal2014-003608 Application 13/601,443 taught by Baker because changing the size of a component "is generally recognized as being within the level of ordinary skill in the art" and such a modification would "allow users to more easily access items stored on the arms"). Although the Examiner did not specifically identify the level of skill in the art, such an identification is not necessary. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record); Okajima v. Bourdeau, 261F.3d1350, 1355 (Fed. Cir. 2001) ("[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error 'where the prior art itself reflects an appropriate level and a need for testimony is not shown."'). In light of the Examiner's treatment of the art, Appellants do not explain persuasively their assertion that the examination "contains no Graham findings." Appeal Br. 12. Appellants' mere disagreement with the Examiner's conclusion does not render the analysis incomplete. To the contrary, the Examiner provided articulated reasoning supported by rational underpinning to support the conclusion of obviousness, which Appellants have not rebutted. In conclusion, for the foregoing reasons, we sustain the rejection of claim 1 as unpatentable over the combined teachings of Krizka, Baker, and Erickson. Claim 3 Appellants do not provide substantive argument regarding claim 3. See Appeal Br. 13. Therefore, we sustain the Examiner's rejection of claim 3. 9 Appeal2014-003608 Application 13/601,443 Obviousness over Krizka, Baker, Erickson, and Strunck- Claim 2 Appellants do not provide substantive argument regarding the rejection of claim 2 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka, Baker, Erickson, and Strunck. See Appeal Br. 13. Therefore, we sustain the Examiner's rejection of claim 2. Obviousness over Krizka and Baker - Claims 4-11 Claims 4 and 7 The Examiner states that "the limitations of the claims [ 4--11] have been addressed above in the rejection of claim 1." Final Act. 6-7. With respect to independent claims 4 and 7, Appellants argue that the Examiner's statement of rejection "is so vague and ambiguous that ... the Examination fails to make a prima facie case for rejection." Appeal Br. 14, 23. Appellants also reiterate the arguments presented with respect to claim 1. See id. at 15-21 (claim 4), 23-29 (claim 7). We are unpersuaded by this argument. Each limitation recited in claim 4 and claim 7 also appears substantially identically in claim 1. Compare Appeal Br. 34, with id. at 35-36. By incorporating the rejection of claim 1, the Examiner put Appellants on notice as to how the Examiner applies the prior art to each limitation of claims 4 and 7, e.g., the art applies in the same manner it applies to the substantially identical limitations in claim 1. See In re Jung, 637 F.3d 1356, 1363 ("[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in 10 Appeal2014-003608 Application 13/601,443 a sufficiently articulate and informative manner as to meet the notice requirement of [35 U.S.C.] Â§ 132."). Appellants' substantive arguments, Appeal Br. 15-21, 23-29, remain unpersuasive for the reasons discussed above. Claims 5, 6, and 8-11 Appellants do not provide substantive argument regarding claims 5, 6, or 8-11. See Appeal Br. 21-22, 29-32. Therefore, we sustain the Examiner's rejection of claims 5, 6, and 8-11. DECISION The Examiner's rejection of claims 1 and 3 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka, Baker, and Erickson is AFFIRMED; the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka, Baker, Erickson, and Strunck is AFFIRMED; and the Examiner's rejection of claims 4--11 under 35 U.S.C. Â§ 103(a) as unpatentable over Krizka and Baker is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 11