Ex Parte Zhadanov et al

Patent Trial and Appeal Board

May 31, 2017

13374305 (P.T.A.B. May. 31, 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.
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
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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.
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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.
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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
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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.
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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.
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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.”).
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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
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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
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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.
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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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