Ex Parte Thomas

Patent Trial and Appeal Board

Aug 28, 2017

14157517 (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.
14/157,517 01/16/2014 Vicky Renee Thomas VT0830112 5355
92269 7590 08/30/2017
Global Intellectual Property Agency, LLC
P.O. Box 382
Swedesboro, NJ 08085
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICKY RENEE THOMAS
Appeal 2017-001078
Application M/157,5171
Technology Center 3600
Before JUSTIN BUSCH, CATHERINE SHIANG, 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 1—18, which are the only claims pending. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Vicky Renee Thomas. App. Br. 3.
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Application 14/157,517
STATEMENT OF THE CASE
The invention relates to a storage device mounted within a door
frame. Abstract; Spec. Tflf 2—5. Claim 1, reproduced below, is exemplary of
the subject matter on appeal:
1. A hollow door storage system device for hanging or storing
articles, comprising:
an outer door that is hingeably attached to an outer door
frame;
said outer door having a handle that is disposed on said outer
door to facilitate opening of the same;
a single-panel interior door that is mounted to an interior
door frame that is set into said outer door;
said interior door having an outer side, an interior side, an
outer edge, and an inner edge;
said interior door enclosing a hollow door interior, said
hollow door interior having an interior volume bounded by a
floor, a ceiling, and a pair of side walls;
said interior door being securable in a closed position by a
connector;
at least one interior panel hingedly attached within said
interior volume of said hollow door interior, whereby said at
least one interior panel pivots open from a closed position and
conceals an interior cavity within said interior volume, said at
least one interior panel extending between said floor, said
ceiling, and said pair of side walls;
said at least one interior panel comprising a lock that is
hidden from view and adapted to limit access to said interior
cavity.
App. Br. 15 (Claims Appendix).
THE REJECTIONS
Claims 1, 3—5, 10, and 12 stand rejected under pre-AIA 35 U.S.C.
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Application 14/157,517
§ 103(a) as being unpatentable over Solomon (WO 94/13175 Al; published
June 23, 1994) in view of Reid (US 2,575,530; issued Nov. 20, 1951) and
Hoffmann (US 5,485,733; issued Jan. 23, 1996). Final Act. 2—6.
Claims 2 and 14—17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Solomon, Reid, Hoffmann, and Ciesla (US
5,141,300; issued Aug. 25, 1992). Final Act 6—7.
Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Solomon, Reid, Hoffmann, and Pappas (US
4,309,065; issued Jan. 5, 1982). Final Act 7—8.
Claims 8 and 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable Solomon, Reid, Hoffmann, and Whitall (US
2005/0264141 Al; published Dec. 1, 2005). Final Act. 8.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Solomon, Reid, Hoffmann, and Simonek (US 5,468,063;
issued Nov. 21, 1995). Final Act. 9.
Claims 13 and 18 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Solomon, Reid, Hoffmann, and Osroff (US
3,822,925; issued July 9, 1974). Final Act. 9-10.
ANALYSIS
Appellant argues the Examiner errs in finding claims 1—3, 5, 10, and
12 unpatentable under 35 U.S.C. § 103 over Solomon, Reid, and Hoffman.
App. Br. 10-14. In particular, Appellant argues the Examiner presents
insufficient articulated reasoning and rational underpinnings why one of
ordinary skill in the art would modify Solomon with Reid to result in the
claimed invention. Id.
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Application 14/157,517
According to Appellant, the Examiner’s assertion that it would have
been obvious to modify Solomon with the interior panel of Reid that has a
mirror thereon ‘“with the motivation of additionally allowing a person to see
himself’” fails to articulate a particularized explanation for why it would be
obvious to modify Solomon to include an interior panel. App. Br. 10 (citing
Final Act. 5; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In particular,
Appellant argues the Examiner’s assertion is “merely a generalized
observation” of an advantage of having a mirror in combination with the
Solomon device. Id. at 10. According to Appellant, Solomon could be
modified in different ways and, without an explanation that is specific to the
Examiner’s suggested modification, the Examiner fails to provide the
required “articulated reasoning” because there is no “rational
underpinning.” Id.
Appellant additionally argues the Examiner errs in this rejection
because, when Solomon and Reid are considered in entirety, it would not be
obvious to modify Solomon with Reid as suggested by the Examiner. Id. at
11—13. According to Appellant, when read in its entirety, Solomon is
designed to provide “‘substantial additional storage space without sacrificing
additional living space in a dwelling’” and teaches away from adding a panel
having a mirror disposed thereon to the interior of the cabinet. Id. at 12
(citing Solomon 3:18—24; 1:17 to 2:1). In particular, Appellant argues
Solomon teaches that the preferred way to maximize storage space is to put
the mirror on the exterior surface of the cabinet door. Id.
Appellant argues Reid teaches an inner door carrying a mirror for a
medicine cabinet and does not teach an inner door carrying a mirror that is
used in conjunction with cabinets or doors utilized in the non-bathroom
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Application 14/157,517
contexts cited by the Examiner and, therefore, one of ordinary skill in the art
would analyze Solomon within bathroom type environments and Solomon
teaches that the location for placing a mirror consistent with Solomon is to
place the mirror in the exterior face of the cabinet. App. Br. 12—13 (citing
Solomon 3:18—24; Reid 1:15—16).
The Examiner finds being able to see oneself with a mirror mounted
within Solomon’s cabinet is an articulated reason with logical underpinning
for adding an inner door and mirror to the Solomon cabinet. Ans. 2 (citing
Final Act. 5 describing a person seeing himself using the mirror 64 mounted
on Reid’s door 56). The Examiner finds it is not a “generalized observation”
as Reid discloses having a mirror in a cabinet for use by a person. Id.
(citing Reid 1:15—22; 3:73—4:32 describing use of door 56 and a mirror).
The Examiner finds that Solomon’s cabinet does not require a mirror,
however, adding a mirror to a cabinet that lacks a mirror is an obvious
improvement to someone who desires to see himself. Id. (citing Solomon 3—
10).
The Examiner finds adding Reid’s door 56 and mirror inside
Solomon’s cabinet would not have impacted on space because the
exemplary dimensions described include a two inch gap which would
accommodate Reid’s door 56 and mirror without sacrificing storage space
on the shelves. Ans. 4 (citing Solomon 9:30-36; Figs. 2, 4).
The Examiner finds, assuming arguendo, adding Reid’s door 56
inside Solomon’s’ cabinet 11 does impact storage space, the benefits of the
inner door and mirror may outweigh this because, when used in a bathroom,
bedroom, or dressing room, having the mirror is desirable and decreased
storage space may be less of a drawback than having no mirror at all. Ans.
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4. The Examiner additionally finds placing the mirror inside the cabinet
protects the mirror and allows the door to maintain a more consistent
aesthetic because the exterior doors and outer door may be finished with a
consistent look, with the mirror hidden from view. Id. at 4—5.
We are not persuaded by Appellant’s argument that Solomon teaches
away from the claimed invention because Solomon is designed for
conserving storage space and agree, instead, with the Examiner’s findings,
discussed supra. In particular, Appellant’s teaching away argument is
unpersuasive because Appellant fails to provide adequate analysis under the
case law: Appellant fails to show one skilled in the art “would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In
re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (internal quotation and
citation omitted).
We are not persuaded by Appellant’s arguments regarding reasoning
and underpinnings required for obviousness and we agree the Examiner
presents sufficient articulated reasoning with rational underpinning as
required for obviousness. We agree with the Examiner’s findings and
conclusions regarding obviousness. 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” .... [Hjowever,
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.
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Application 14/157,517
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
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420—21.
On this record, Appellant does 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 has Appellant 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 foregoing, we sustain the rejection of 1, 3—5, 10, and 12
as these claims are argued together as a group. We also sustain the rejection
of dependent claims 2, 6—9, 11, and 13—18 as these claims are not argued
separately. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—18.
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)(l)(iv).
AFFIRMED
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