Ex Parte Zhadanov et alDownload PDFPatent Trial and Appeal BoardMay 31, 201713374305 (P.T.A.B. May. 31, 2017) Copy Citation 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. 13/374,305 12/21/2011 Sam Zhadanov ZHADANOV-4 6691 20151 7590 06/02/2017 HENRY M FEIEREISEN, LLC HENRY M FEIEREISEN 708 THIRD AVENUE SUITE 1501 NEW YORK, NY 10017 EXAMINER IJAZ, MUHAMMAD ART UNIT PAPER NUMBER 3631 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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 following e-mail address(es): INFO @ FEIEREISENLLC.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAM ZHADANOV and ELI ZHADANOV Appeal 2017-007136 Application 13/374,305 Technology Center 3600 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision1 rejecting claims 13-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 13 is the sole independent claim on appeal. Claim 13, reproduced below, is illustrative of the claims on appeal. 1 Appeal is taken from the Final Office Action dated June 24, 2015 (“Final Act.”). Appeal 2017-007136 Application 13/374,305 13. A system for supporting a bathroom object, comprising: a main element for supporting the object on a supporting surface and having a first end attachable to the bathroom objet and a second end provided with a throughgoing opening through which a first fastener is passable to engage in the supporting surface and to attach the main element to the supporting surface by the first fastener; and an additional element having a first end facing away from the main element and provided with an adhesive layer attachable to the supporting surface to attach the additional element by the adhesive layer to the supporting surface and a second opposite end which faces toward the main element and into which a second fastener, which passes through the throughgoing opening of the main element, is screwable into said additional element to extend only over a part of thickness of the additional element and to connect the additional element to the main element, so that without the additional element the second end of the main element is attached to the supporting surface by the first fastener and the main element alone supports the object on the supporting surface, while with the additional element interposed between the main element and the supporting surface and the additional element attached to the supporting surface by the adhesive layer and attached other main element by the second fastener, the main element jointly with the additional element support the object on the supporting surface. REJECTIONS I. Claims 13—16 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. 2 The Examiner has withdrawn the rejection of claim 14 under 35 U.S.C. §112, first paragraph, for failing to comply with the written description 2 Appeal 2017-007136 Application 13/374,305 II. Claims 13—16 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. III. Claims 13 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jodwischat (US 5,368,268; issued Nov. 29, 1994). IV. Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jodwischat and Gelb (US 7,908,708 B2; issued Mar. 22, 2011). ANALYSIS Rejection I Regarding claim 13, the Examiner determines that [t]he recitation . . . wherein “.. .a throughgoing opening through which a first fastener is passed to engage in the supporting surface and to attach the main element the supporting surface of the fastener.. ..a second fastener, which passes through the same throughgoing opening of the main element...” is not supported by the original disclosure because the invention as currently claimed requires two fasteners that pass[] through the through opening. However, in light of the original disclosure only one mode of operation at a time is permissible. Final Act. 3^4 (citing Spec. p. 5—6). Appellants argue that “[t]he Examiner’s statement is contradictory since it is true that the passage of two different fasteners separately from each other is clearly disclosed in the specification as providing two different modes of operation.” Br. 4. requirement, involving the “an expandable tubular projection” limitation. Ans. 2. 3 Appeal 2017-007136 Application 13/374,305 To satisfy the written description requirement, the specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Id. at 1562—63; AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Although Appellants may have intended to claim two exclusive modes of operation of the system, or perhaps a kit, as described in the Specification, claim 13, as written, also reads on a system having both first and second fasteners passing through the throughgoing opening of the second end of the main element at the same time. In other words, claim 13 does not exclude the use of the first fastener when the additional element is present. Because the Specification does not describe such an embodiment, one skilled in the art cannot reasonably conclude that the inventor had possession of it. We will not import limitations from the Specification to limit the claim to what Appellants may have intended to claim. In re Morris, 111 F. 3d 1048, 1056 (Fed. Cir. 1997) (“It is the applicants’ burden to precisely define the invention, not the PTO’s”). Therefore, we sustain the Examiner’s rejection of claim 13, and claims 14—16 depending therefrom, as failing to comply with the written description requirement of 35 U.S.C. §112, first paragraph. 4 Appeal 2017-007136 Application 13/374,305 Rejection II Regarding claim 13 the Examiner determines that because claim 13 reads on a system having first and second fasteners passing through the throughgoing opening of the second end of the main element at the same time, claim 13 “creates ambiguity.” Final Act. 4. We agree. In re Cohn. 438 F.2d 989, 993 (CCPA 1971) (sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, because claims inherently inconsistent with the description, definitions, and examples appearing in applicant’s specification generated indefiniteness). Accordingly, we sustain the Examiner’s rejection of claim 13, and claims 14—16, as indefinite under 35 U.S.C. § 112, second paragraph. Rejection III Independent claim 13 Regarding independent claim 13, the Examiner finds, inter alia, that Jodwischat teaches a main element (device 60) directly attachable to a supporting surface by a fastener (Ans. 4 (citing Jodwischat 3:66, Figs. 6—7)), and also a main element (body portion 12") attachable to the supporting surface by an additional element (sleeve portion 22) {id. (citing Jodwischat, Fig. 3)). The Examiner also determines that Jodwischat’s main element (body portion 12") is “capable of being used without the additional element [(sleeve portion 22)] simply by utilizing the conventional fastener of appropriate size.” Ans. 6. The Examiner determines that “attachment of the elements via the adhesive layer, fasteners or the combination of both is old 5 Appeal 2017-007136 Application 13/374,305 and well known in the art as evidenced by Jodwischat.” Id. at 4 (citing Jodwischat 1:27—30). The Examiner reasons that it would have been obvious to connect main element [(Fig. 3: body portion 12")] directly on the surface simply by utilizing the screw having an appropriate length as suggested in Figs. 6-7 of Jodwischat, or, alternatively attach the main element [(Fig. 3: body portion 12")] to the additional element [(Fig. 3: sleeve portion 22)] ... to the supporting surface via the adhesive layer as suggested in Column 1, lines 27—30 [of Jodwischat], The motivation would have been to provide the option to attach the device either permanently or removeably to the supporting surface. Ans. 4—5; see also Final Act. 6—7. The Examiner further finds that Jodwischat “suggests a second fastener” and reasons that it would have been obvious, with respect to the modified system of Jodswichat, to attach the additional element to the main element “by the second fastener e.g. of a smaller length.” Final Act. 6 (emphasis added). The Examiner also reasons that although Jodwischat does not teach a single system with the different attachment modes as claimed, “there are a finite number of choices available to one of ordinary skill in the art for mounting the supporting objects as evidenced by the various embodiments of Jodwischat.” Id. First, Appellants argue that Jodwischat teaches “a one-piece soap holder,” not a “two component system,” as claimed. Br. 5. Jodwischat’s Figure 3 is reproduced below. 6 Appeal 2017-007136 Application 13/374,305 Figure 3 depicts “a broken apart perspective view of a soap holding device.” Jodwischat 1:67—68. Jodwischat’s Figure 6 is reproduced below. Figure 6 depicts “another embodiment of a soap holding device.” Id. at 2:11—12. Jodwischat discloses that “[t]he simplest constructions of a soap holder ... are one piece and directly connected to a support surface such as by fastener and/or adhesive” {id. at 1:27—31), while recognizing that soap holders may also be two piece constructions, such as “compris[ing] a body portion and a mounting portion . . . attached to a support surface . . . followed by the body portion being connect to the mounting portion” {id. at 1:43 47). Thus, contrary to Appellants’ argument, Jodwischat discloses one and two-piece constructions. 7 Appeal 2017-007136 Application 13/374,305 Appellants contend that “[n]one of the embodiments disclosed in [Jodwischat] disclose the use of two fasteners of different sizes to be used altematingly ... for attachment of one component straight to the wall or altematingly for attachment [of] the one component to another component of the device.”3 Br. 5. However, the Examiner has not relied on Jodwischat for expressly teaching the use of two fasteners or two fasteners of different sizes. Rather, the Examiner determines that “attachment of the elements via the adhesive layer, fasteners or the combination of both is old and well known in the art as evidenced by Jodwischat.” Ans. 4. Indeed, Jodwischat discloses several types of fasteners that may be used, within the same system, to attach the components to each other and to a support surface, including a pair of screws, self-tapping screw 38, and threaded bolt 42 (see, e.g., Jodwischat 3:27, 29, 34, Fig. 3), and that “[t]he body of the soap holder can be secured to the mount in many different manners” (id. at 1:56—57). Thus, Appellants’ argument that Jodwischat fails to expressly disclose two fasteners of different sizes does not apprise us of error in the Examiner’s determination that Jodwischat suggests the use of different fasteners or reasoning that the selection of different fastener sizes is within the knowledge of a person of ordinary skill in the art of fixtures, with respect to claims 13 and 15. 3 Notably, although claim 13 recites first and second fasteners, claim 13 does not require the first and second fasteners to be of different sizes. Cf. Br. 2 (Claims App.) (claim 15: “The system as defined in claim 13, wherein the second fastener is shorter than the first fastener.”). 8 Appeal 2017-007136 Application 13/374,305 Appellants also argue that although Jodwischat’s ‘“main element 12’ is connected to the additional element 22 by a fastener [as claimed],. . . additional element 22 is attached to the supporting surface also by fasteners as clearly seen in Fig. 3 and not by an adhesive layer [as claimed].” Br. 5. However, Appellants’ argument does not address the Examiner’s rejection, which proposes to modify sleeve portion 22 (as the additional element) to be attached to the support surface with adhesive rather than fastened, for example, by the pair of screws depicted in Figure 3, in view of Jodwischat’s teaching that such attachments may be made using adhesive or fasteners. See Jodwischat 1:27—30. Appellants further argue that Jodwischat’s disclosure regarding the use of adhesive is only disclosed with respect to Jodwischat’s single-piece construction, which “contradicts [the claimed invention], in which the device has two components, of which one component can be attached singly to the wall exclusively by the fastener, or two components assembled with each other can be attached to the wall by the adhesive.” Br. 5—6. However, a reference is good for all that it teaches to a person of ordinary skill in the art, and not only for what it sets forth as preferred. See, e.g., Merck & Co., Inc. v. Bio craft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Here, we are not apprised of error in the Examiner’s finding that Jodwischat teaches or suggests to one skilled in the art that adhesive may be used to connect the device (either a one or two-piece construction) to a support surface. Appellants also argue that “[t]he Examiner’s blank statement that there are many connection choices in [Jodwischat] does not support [the 9 Appeal 2017-007136 Application 13/374,305 Examiner’s determination] that [the claimed subject matter is obvious].” Br. 6. We disagree. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, the Examiner has provided sufficient support from the disclosure of Jodwischat that there are a finite number of identified, predictable solutions for one and two-piece constructions of soap holding devices involving fastening and/or adhering such pieces together and also to a support surface. Accordingly, we sustain the Examiner’s rejection of independent claim 13 under 35 U.S.C. § 103(a) as unpatentable over Jodwischat. Dependent claim 15 Claim 15 depends from independent claim 13 and recites, “wherein the second fastener is shorter than the first fastener.” Br. 9 (Claims App.). The Examiner finds that Jodwischat teaches fastener 38 is a smaller size. Final Act. 7. Appellants argue that the Examiner’s finding is “inaccurate” because “[n]one of the embodiments [in Jodwischat] disclose the use of two fasteners of different sizes to be used altematingly.” Appeal Br. 5. The Examiner responds that it would have been obvious “to utilize the main element. . . directly on the surface by a fastener having the appropriate 10 Appeal 2017-007136 Application 13/374,305 length.” Ans. 5. Although we agree with Appellants’ argument that Jodwsichat does not expressly disclose that a second fastener is shorter than a first fastener, as recited in claim 13, Appellants’ argument does not address the rejection as stated by the Examiner and as set forth supra, that Jodwischat suggests the use of more than one fastener within a system and that the selection of appropriately sized fasteners, including a second fastener shorter than a first fastener, is within the knowledge of one of ordinary skill in the art in view of the teachings of Jodwischat. Accordingly, we sustain the Examiner’s rejection of independent claim 15 and dependent claim 13 under 35 U.S.C. § 103(a) as unpatentable over Jodwischat. Rejection IV Appellants chose not to present separate arguments for the patentability of claims 14 and 16 apart from the arguments presented supra for independent claim 13 from which claim 14 and 16 depend. For the reasons stated supra, we also sustain the Examiner’s rejection of claims 14 and 16. DECISION The Examiner’s decision rejecting claims 13—16 under 35 U.S.C. §112, first paragraph, is affirmed. The Examiner’s decision rejecting claims 13—16 under 35 U.S.C. §112, second paragraph, is affirmed. The Examiner’s decision rejecting claims 13—16 under 35 U.S.C. § 103(a) as unpatentable is affirmed. 11 Appeal 2017-007136 Application 13/374,305 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 12 Copy with citationCopy as parenthetical citation