Ex Parte Turner

Patent Trial and Appeal Board

Nov 29, 2016

13739464 (P.T.A.B. Nov. 29, 2016)

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.
13/739,464 01/11/2013 Thomas M. Turner TURN-50425 5304
116 7590 12/01/2016
PFARNF fr GORDON T T P
EXAMINER
1801 EAST 9TH STREET GUAN, GUANG H
SUITE 1200
CLEVELAND, OH 44114-3108 ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS M. TURNER
Appeal 2015-003356
Application 13/739,464
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas M. Turner (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—7.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative, and reads:
1. An adjustable pipe support comprising:
a) a base having a bottom surface configured to rest on a
building roof,
1 Claim 8 is withdrawn from consideration. Final Act. 1 (Office Action
Summary).
Appeal 2015-003356
Application 13/739,464
b) parallel rods extending from and secured to said base,
c) a pipe supporting strut mounted for movement on said
rods to a selected height position above said base, and,
d) quick release clips carried on said strut, said clips
having a locking position securing said strut to said rods and a
release position permitting movement of said strut on said rods.
Appeal Br. 10 (Claims App.).
REJECTION
Claims 1—7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Neider (US 6,364,256 Bl, issued Apr. 2, 2002) and Galassi (US
6,286,661 Bl, issued Sept. 11, 2001).
ANALYSIS
Claim 1
The Examiner finds that Neider discloses an adjustable pipe support
comprising base 15, parallel rods 19, 20, and pipe supporting strut 38, but
does not disclose “quick release clips” as claimed. Final Act. 5—6 (citing
Neider, col. 3,11. 3—5, 47—52, Figs. 11, 12). The Examiner finds that Galassi
discloses a support system comprising quick release clips 15', 15" fastened
to a block 12 and which have a “locking position” and a “release position”
as claimed. Id. at 6—7 (citing Galassi, col. 5,1. 58—col. 6,1. 21, Figs. 1, 3);
see also Ans. 3.
The Examiner determines that it would have been obvious to
implement Galassi’s quick release clips 15', 15" on Neider’s rods 19, 20 by
fixing block 12 to strut 38 to facilitate convenient height adjustment of the
strut on the rods. Final Act. 7.
Appellant contends that Galassi’s squeeze arms could not be
incorporated in place of Neider’s nuts and washers. Appeal Br. 8.
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Application 13/739,464
Appellant also contends that using quick release spring clips in Neider’s pipe
support is not reasonably suggested by Galassi. Id.
These contentions are not persuasive. Neider discloses a pipe support
including lower nuts 28 and upper nuts 30 threaded onto studs 19, 20.
Neider, col. 3,11. 1—7. As shown in Figure 11, lower nuts 28 are rotatable on
studs 19, 20 to adjust the position of strut 38. Galassi discloses support
member 12 provided on guide bar 14. Galassi, Fig. 3. Plate arms 15', 15"
including extensions 22', 22" are fixed to support member 12. Id. at col. 5,
11. 29-32, col. 6,11. 7—9, Fig. 3. Extensions 22', 22" are squeezed to allow
support member 12 to be moved along guide bar 14 in direction 27' or 27".
Id. at col. 6,11. 7—15, Fig. 3. Accordingly, Neider and Galassi disclose
alternative adjustment mechanisms that allow a user to adjust the position of
a member mounted to a rod. “[Wjhen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” KSRIntl. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). Appellant does
not provide any persuasive reason why the Examiner’s substitution would
not yield a predictable result.
Appellant’s contention that the Examiner has not provided “reasoning
as to how one of ordinary skill in the art, starting with a pipe support known
in the art, such as that found in Neider, would modify such a pipe support
with the squeezable arms in Galassi” is also not persuasive. See Reply Br. 6.
To the extent Appellant is contending that the structure of Neider must be
physically combinable with the structure of Galassi, we disagree. “It is well-
established that a determination of obviousness based on teachings from
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Application 13/739,464
multiple references does not require an actual, physical substitution of
elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations
omitted); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.”); In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . .”). Accordingly, Appellant’s contention is not
persuasive of Examiner error.
The Examiner also finds that “the mere replacement of a position
adjustment mechanism on a rod with another known mechanism is within
the level of ordinary skill in the art.” Ans. 3—A. Appellant fails to provide a
persuasive reason, or evidence, to show why the Examiner’s proposed
modification of Neider in view of Galassi would not have been within the
level of skill of one of ordinary skill in the art. Accordingly, we sustain the
rejection of claim 1 as unpatentable over Neider and Galassi.
Claims 2 and 3
Claim 2 depends from claim 1 and recites that
each clip comprises a first leg fixed to said strut and a second
leg having a hole through which a rod extends, said legs
forming an included angle greater than 90 degrees, and said
second leg being flexible so that it is configured to be pressed
from said locking position to said release position.
Appeal Br. 10 (Claims App.).
The Examiner finds that Galassi discloses these limitations. Final
Act. 7—8. The Examiner provides an annotated copy of Figure 3 of Galassi
identifying the “first leg,” “second leg,” and “included angle.” Id. at 8.
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Application 13/739,464
Appellant contends that the claimed structure is not disclosed by
Galassi. Appeal Br. 8. The Examiner responds that Figure 3 of Galassi
shows two quick release clips 15', 15", each including all the limitations of
claim 2. Ans. 5. In support, the Examiner provides a second annotated copy
of Figure 3 of Galassi showing the locations of the “first leg,” “second leg,”
and “included angle” for each of clip 15' and clip 15". Id. at 6.
Appellant also contends that Galassi uses two clips in combination on
the same rod to allow locking, whereas,
[rjather than using two clips on one rod where the clips are
elastically preloaded by reducing the natural bend of the clips,
claim 2 requires each clip to be fixed to the strut at one end and
have a hole for a rod to extend at the other end. Claim 2 also
requires a clip for each rod.
Reply Br. 7 (emphasis added).
These contentions are not persuasive. The Examiner’s second
annotated Galassi Figure 3 shows how each of the first and second clips is
fixed to a support at one end and also has a hole (bores 20', 20" of plate arms
15', 15", respectively). Claim 2 does not exclude the structure of Galassi’s
plate arms 15', 15". Claim 2 also does not recite any limitation that
“requires a clip for each rod.” Thus, we sustain the rejection of claim 2, and
claim 3 depending therefrom, as unpatentable over Neider and Galassi.
Claim 4
Claim 4 depends from claim 1 and recites that “said strut is a channel,
and further comprising blocks in ends of the channel, said clips being
fastened to said blocks, and said clips and blocks having holes through
which said rods extend.” Appeal Br. 10 (Claims App.). The Examiner
determines that the combination of Neider and Galassi discloses these
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Application 13/739,464
limitations. Final Act. 8. Particularly, the Examiner explains that, in the
proposed combination, Neider’s strut 38 is a channel, Galassi’s blocks 12 are
provided in the ends of the channel, clips 15', 15" are fastened to blocks 12,
and blocks 12 and clips 15', 15" have holes through 19, 20 of Neider. Id.
Appellant contends that the Examiner ignored “recited structure of
blocks in the ends of pipe support channel, both the recited clips being
fastened to the blocks and the clips and blocks having holes through which
the recited rods extend.” Appeal Br. 8. Appellant also contends that Galassi
does not suggest modifying Neider to meet the recited construction. Id.
The Examiner responds that, in the combination, one block 12 of
Galassi is positioned in a respective end of channel 38 of Neider, two clips
15', 15" of Galassi are fastened to each block 12, and clips 15', 15" and
blocks 12 of Galassi have holes 19, 20', 20" through which Neider’s rods 19,
20 extend. Ans. 7. Appellant replies that one of ordinary skill in the art
“would not arrive at blocks that fit within the strut of a pipe support such as
Neider by the teaching of the support member of Galassi.” Reply Br. 7—8.
In Neider’s pipe support, nuts 30 of the adjustment mechanism are
disposed in a channel of strut 38. Providing Galassi’s support members 12
in the ends of the channel of Neider’s strut 38 would support clips 15', 15"
and allow a user to access and squeeze extensions 22', 22" to adjust the
position of strut 38 on rods 19, 20. Appellant’s contentions do not apprise
us of any error in the Examiner’s findings or reasoning. Thus, we sustain
the rejection of claim 4 as unpatentable over Neider and Galassi.
Claims 5—7
Claim 5 depends from claim 4 and recites that “said clips have first
legs fastened to said blocks and second legs, said legs forming an included
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Application 13/739,464
angle greater than 90 degrees, and said second legs being flexible between
said locking position engaging said rods and said release position permitting
movement of said strut on said rods.” Appeal Br. 10 (Claims App.). The
Examiner determines that the combination of Neider and Galassi teaches
these limitations. Final Act. 9.
Appellant contends that Galassi does not suggest a construction
having “first spring clips” fastened to ends of its blocks. Appeal Br. 9. The
Examiner explains that the combination of Neider and Galassi would include
two quick release clips 15', 15" fastened to a block 12 positioned at each end
of channel 38 of Neider. Ans. 7 (citing Neider Fig. 11; Galassi Fig. 3).
Consequently, the clips at each end of channel 3 8 would be fastened to an
end of their respective block. Id. Appellant responds that claim 5 requires a
leg of each clip to be fastened to each block, and one block is at each end of
the strut. Reply Br. 8. Appellant states that “the Examiner’s contention that
Galassi shows two clips fastened to an end of the block is incorrect.” Id.
Appellant does not explain persuasively why the Examiner’s position
that Galassi discloses two clips 15', 15" fastened to an end of block 12 is
incorrect, or why the combination otherwise lacks any limitation of claim 5.
Thus, we sustain the rejection of claim 5, and claims 6 and 7 depending
therefrom, as unpatentable over Neider and Galassi.
DECISION
We affirm the Examiner’s decision to reject claims 1—7.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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