Ex Parte Stewart

Patent Trial and Appeal BoardAug 26, 2013

11067743 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KENNETH G. STEWART, III ____________________ Appeal 2011-009414 Application 11/067,743 Technology Center 3600 ____________________ Before: JOHN C. KERINS, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009414 Application 11/067,743 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 4, 14, 15, 18, 20 and 25-28. Claims 1, 14, and 18 are independent. Claims 5-13, 16, 17 and 19 are canceled. Claims 21 and 24 are withdrawn, and claims 22 and 23 are objected to as being dependent upon a rejected base claim. Final Off. Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a device for implement storage, specifically “[a] support which includes the shape of a hook is disclosed which can function as a hanger or as a support.” Spec. 2, para. [0002]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A device for facilitating storage of an implement comprising, an implement, a member having two arms extending in a generally parallel direction with a first end of each arm joined by a spanning section and with each arm having a portion shaped to prevent removal from a holding portion, a base forming a monolithic portion of the implement, the base having a channel holding portion for retaining the joined arms on the base and the base and member being adapted for slidable movement of the member along the length of the arms, with respect to the base, between a storage position and a use position wherein the member is exposed for supporting the implement. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2011-009414 Application 11/067,743 3 Seng Duban-Hu US 828,519 US 6,923,325 B2 Aug. 14, 1906 Aug. 2, 2005 REJECTIONS The Examiner made the following rejections: Claims 1, 2, 18, 20, 25, 26, and 28 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Duban-Hu. Ans. 4. Claims 3, 4, 14, 15, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Duban-Hu and Seng. Ans. 5. ANALYSIS Claims 1, 2, 18, 25, 26, and 28 as anticipated by Duban-Hu Claims 1 and 18 The Examiner found that Duban-Hu discloses each of the elements of independent claims 1 and 18 including an implement, a base housing 24 with channel portions 126, and handle or hook members 32, 34, having two parallel arms connected by a spanning section where the free ends of the arms have a retaining portion 120 shaped to prevent removal of the arms from the channel portions 126. Ans. 4. The Examiner further found that Duban-Hu discloses that the base and channel portions 126 can be integrally formed as a one-piece configuration and are thus a “monolithic” element, retaining the handle or hook members 32, 34 for slidable movement between a storage position and a use position as called for in claims 1 and 18. Ans. 4-5. Appellant argues that Duban-Hu fails to disclose the base and channels 126 forming a “monolithic portion of the implement” as recited in both claims 1 and 18. App. Br. 3-4. Appellant asserts that Duban-Hu Appeal 2011-009414 Application 11/067,743 4 separately attaches the channel (or bracket) portions 126 to the base and argues that “welded or attached parts are not ‘monolithic’ because when they are joined they do not form a solid uniform mass.” App. Br. 4. Appellant contends that Duban-Hu’s disclosure of an “integrally molded” channel or bracket is still a separately attached element to the base, and therefore not monolithic. Id. Appellant’s Specification provides no definition of “monolithic” aside from stating that “[t]he connector 3 may be formed monolithically with the base bracket 4.”1 Spec. 4, para. [00021]. A common definition of “monolithic” is “constituting a single unit.” THE PENGUIN ENGLISH DICTIONARY (2003) (retrieved from http://www.credoreference.com/entry/penguineng/monolithic) (last accessed Aug. 14, 2013). The term “integral” does not exclude a unitary construction. See In re Van Ormer, 255 F.2d 947, 948 n.3 (CCPA 1958) (interpreting “monolithic” as synonymous with “integral” in connection with a recited monolithic rim structure). In the context of Duban-Hu’s disclosure explaining that all the components can be injection molded (Duban-Hu col. 4. ll. 34-36) and describing alternative constructions of the base housing 24 and brackets 126 as “welded or integrally molded thereon or otherwise attached” (Duban-Hu col. 3. ll. 30-31) (emphasis added), the preponderance of the evidence before us suggests that “integrally molded” is understood as a one-piece, unitary construction of the housing 24 and brackets 126. We 1 Appellant suggests that “‘monolithic’ means a solid uniform mass,” but no supporting reference is provided and nowhere does the Specification state or suggest that the material of the device should be uniform throughout its interior. App. Br. 4. The Specification explains only that “[t]he connector 3 may be formed monolithically with the base bracket 4[,] or formed separately.” Spec. 4, para. [00021]. Appeal 2011-009414 Application 11/067,743 5 are therefore not apprised of error in the Examiner’s interpretation that integrally molded parts result in a one-piece, monolithic configuration of Duban-Hu’s housing 24 and brackets 126. Accordingly, we sustain the Examiner’s rejection of independent claims 1 and 18 as anticipated by Duban-Hu. Claim 2 Appellant argues that claim 2 is not anticipated for the same reason as claim 1. App. Br. 5. Inasmuch as we sustain the Examiner’s rejection of claim 1 and Appellant has failed to identify any facts or articulate any technical reasoning that distinguish claim 2 from the cited prior art, we sustain the Examiner’s rejection of claim 2 for the same reasons as stated herein with respect to claim 1. Claims 25 and 26 Claim 25 depends directly from claim 1, and additionally recites that “the member includes a wider portion that forms an interference fit with the channel in the storage position.” The Examiner’s position is that the detents 120 disclosed by Duban-Hu form an interference fit with the channel (brackets 126) in the use position. Ans. 4-5. Appellant argues that the detents 120 are not a press fit or interference fit as understood in the art, but are actually “stops” which do not provide frictional holding force as required in an interference fit, and merely abut against the channel to “arrest upward movement of the handle.” App. Br. 5. We agree. A common dictionary definition of “interference fit” is “[a] match between the size and shape of two parts, such that force is required for assembly as one part is slightly larger than the other.” COLLINS ENGLISH DICTIONARY (2000) (retrieved from http://www.credoreference.com/entry/hcengdict/interference_fit) (last Appeal 2011-009414 Application 11/067,743 6 accessed Aug. 14, 2013). The Examiner’s finding that the definition of an interference fit broadly encompasses the abutment of Duban-Hu’s detent 120 on the edge of the bracket 126 is not supported by any evidence or technical rationale. Ans. 6. The finding does not explain how the detent, or stop on the handle, which merely abuts against an edge of the bracket 126 to prevent further relative movement, provides a matching shape between the two components with one component being slightly larger than the other, or that they are forced together to achieve the use (or the storage) position. The Examiner has not established by a preponderance of the evidence that Duban-Hu discloses an interference fit between the handle 32, 34, the detent 120 and bracket 126 and therefore we do not sustain the Examiner’s rejection of claim 25. Claim 26 is dependent directly upon claim 25 and we also do not sustain the rejection of claim 26. Claim 28 Claim 28 depends from claim 18 and recites “wherein the member and base form an interference fit in one of the storage position and the use position.” As discussed above with respect to claim 25, Duban-Hu does not disclose an interference fit between the detent and bracket components and for the same reasons as set forth above, we do not sustain the anticipation rejection of claim 28. Claims 3, 4, 14, 15, and 27 as unpatentable over Duban-Hu and Seng and claim 20 as anticipated by Duban-Hu Claims 3 and 4 Claims 3 and 4 both depend from claim 2, which in turn depends from claim 1. Appellant relies on the unpersuasive arguments discussed above regarding claim 1 for the patentability of claims 3 and 4. We are not Appeal 2011-009414 Application 11/067,743 7 apprised of Examiner error by this argument and accordingly sustain the Examiner’s rejection of claims 3 and 4 as unpatentable over Duban-Hu and Seng. Claims 14, 15, and 27 Independent claim 14 includes the limitation “a second enlarged retaining portion on the elongated member located to hold the member in an interference fit in one of the following a) the use position… b) the storage position.” As discussed above with respect to claims 25 and 28, Duban-Hu does not disclose an interference fit between any components, either in a use position or a storage position. Seng does not cure this deficiency, and we do not sustain the rejection of claim 14 as unpatentable in view of Duban-Hu and Seng. Claims 15 and 27 both depend directly from claim 14 and we also do not sustain the rejections of these dependent claims for the same reasons. Claim 20 Claim 20 depends from claim 14 and the stated basis for the rejection of claim 20 does not cure the deficiencies in the rejection of claim 14.2 We do not sustain the rejection of claim 20. 2 Claim 20, indicated in the Answer as anticipated by Duban-Hu is dependent directly upon claim 14 which is rejected under 35 U.S.C. § 103(a) as being unpatentable over Duban-Hu and Seng. Clms. Appx. Appellant correctly points out that claim 20 is improperly rejected as anticipated by Duban-Hu where its base claim, claim 14, is rejected as unpatentable over Duban-Hu and Seng. App. Br. 7. We therefore address claim 20 in our Analysis in conjunction with the appropriate base claim 14. Appeal 2011-009414 Application 11/067,743 8 DECISION For the above reasons, the Examiner’s rejection of claims 1-4 and 18 is AFFIRMED. The Examiner’s rejection of claims 14, 15, 20, 25, 26, 27, and 28 is REVERSED. 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) (2011). AFFIRMED-IN-PART hh