Linda M. Walther et al.

Patent Trials and Appeals Board

Nov 7, 2019

13339788 - (D) (P.T.A.B. Nov. 7, 2019)

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.
13/339,788 12/29/2011 Linda M. Walther 9262-101014-US 3495
19407 7590 11/07/2019
Fitch, Even, Tabin & Flannery, LLP
120 South La Salle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
MORRIS, TAYLOR L
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
11/07/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA M. WALTHER,
ISHWOR P. ADHIKARI, and ETHAN S. ABERNATHEY

Appeal 2019-002517
Application 13/339,788
Technology Center 3600
____________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL1

1 “The Patent Trial and Appeal Board issued a previous Decision on Appeal
[Appeal No. 2015-003220] dated January 25, 2017 in the present application
[Application No. 13/339,788] in which all of the Examiner’s rejections were
reversed.” Appeal Br. 3. The present appeal (Appeal No. 2019-002517) is
another appeal of the above Application No. 13/339,788. A grandchild
application (Application No. 15/674,744) of the above present application
was the subject of Appeal No. 2019-001754 (“’754 Appeal”). A Decision in
the ’754 Appeal was issued on October 8, 2019 affirming the Examiner’s
rejections.

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Application 13/339,788

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Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–5, 8, 9, and 11–14. Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to vertical support
poles and more particularly to intravenous poles.” Spec. ¶ 1. Apparatus
claims 1 and 9 are independent. Claims 1 and 9 are illustrative of the claims
on appeal and are reproduced below.
1. An apparatus comprising a jigsaw-puzzle piece configured
as a vertical support intravenous pole base having a plurality of
rolling members disposed on an underside thereof that is
configured to interlock with at least one other jigsaw-puzzle
piece base that is associated with another vertical support
intravenous pole such that movement of the apparatus in any
horizontal direction will cause a commensurate movement of the
at least one other jigsaw-puzzle piece base.

9. An apparatus comprising:
a base configured to receive a bottom portion of a vertical
support intravenous pole;
at least one blank formed on a side of the base;
at least one tab formed on another side of the base, wherein
the at least one tab has a size and shape that is the same as the at
least one blank;
a plurality of rolling members disposed on an underside of
the base; such that the apparatus can be selectively interlocked to
at least one other such apparatus by interlocking a respective tab
and blank to thereby permit a plurality of vertical support

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Medline
Industries, Inc.” Appeal Br. 3.
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intravenous poles as correspond to the apparatuses to be moved
in any horizontal direction as a group.
EVIDENCE
Name Reference Date
Hamlin US 6,722,673 B1 Apr. 20, 2004
Hobson US 6,929,588 B2 Aug. 16, 2005
MacLeod US 2006/0278770 A1 Dec. 14, 2006
Elzerman US 2008/0234116 A1 Sept. 25, 2008
Livengood et al. US 2009/0085317 A1 Apr. 2, 2009
REJECTIONS
Claims 1 and 5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over MacLeod, Livengood, and Hamlin.
Claims 3, 4, and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over MacLeod, Livengood, Hamlin, and Elzerman.
Claims 9 and 11–14 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elzerman and Hobson.
ANALYSIS
The rejection of claims 1 and 5
as unpatentable over MacLeod, Livengood, and Hamlin
Appellant argues claims 1 and 5 together. See Appeal Br. 8–15, 21.
We select claim 1 for review, with dependent claim 5 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites “a jigsaw-puzzle piece” that is “configured as a
vertical support intravenous pole base” and which has “a plurality of rolling
members disposed on an underside thereof.” The Examiner relies on
MacLeod for disclosing a “jigsaw-puzzle piece (MacLeod: [0021])” that is
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“configured as a pole base (MacLeod: Fig. 1; 1).” Final Act. 4. Livengood
is relied upon for teaching “an apparatus comprising a vertical support
intravenous pole base (Livengood: Fig. 1–2; 100).” Final Act. 4. “Hamlin
teaches a base (Hamlin; Fig. 1; 54) having a plurality of rolling members
(Hamlin: Fig. 1; 26) disposed on an underside thereof.” Final Act. 4. The
Examiner provides reasons for the combination of MacLeod with Livengood
and then with Hamlin. See Final Act. 4.
Appellant discusses each of MacLeod, Livengood and Hamlin. See
Appeal Br. 8–12. Appellant initially contends, “[t]he Examiner’s
characterization of MacLeod goes too far” because “MacLeod only and
consistently teaches that such [a jigsaw] embodiment is appropriate to use
when the user is constructing an ‘immovable’ ‘semi-permanent’ structure.”
Appeal Br. 13; see also Reply Br. 2. Appellant’s argument stating that
MacLeod teaches an “immovable” and/or a “semi-permanent” structure is
correct. See MacLeod ¶¶ 21, 58. However, MacLeod is also directed to a
device that is “portable” and which can be moved into such a position (i.e.,
“immovable,” “semi-permanent”) as desired. See, e.g., MacLeod ¶¶ 12, 15,
22, 25. In fact, Paragraph 39 of MacLeod specifically states, “[o]ptionally
the base sheet may be cut with a handle (15) for added portability.”
Emphasis added. See also MacLeod Fig. 2. Thus, Appellant’s focus on the
device possibly becoming immovable is not persuasive when MacLeod also
teaches the device being portable. See also Ans. 4–6. Consequently,
Appellant’s contentions are not persuasive the Examiner erred when
modifying MacLeod’s device to insure portability via Hamlin’s rolling
members, i.e., to “roll[] the apparatus to various positions as desired by a
user.” Final Act. 4.
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Appellant further contends the Examiner erred by “ignor[ing] the fact
that MacLeod does not teach using an interlocking base in a context where
medical equipment might be in use.” Appeal Br. 13; see also Reply Br. 2. It
is Appellant that seems to ignore MacLeod’s explicit teaching of a device
whose “unique trip-free base may also be used for such applications as
supporting medical equipment.” MacLeod Abstract; see also MacLeod ¶¶ 2,
6, 7; see also Ans. 4. As such, Appellant is not persuasive that MacLeod’s
teaching of “adding a puzzle or dovetail like interlocking cut” to the base for
interlocking purposes precludes such use in a medical environment.
MacLeod ¶ 21; see also Appeal Br. 13, 14. Accordingly, Appellant is not
persuasive of Examiner error on this point.
Appellant also contends, “the Examiner errs when relying upon
Hamlin.” Appeal Br. 14. This is because “[t]he Examiner offers no
evidence to show how Hamlin’s legs-and-casters assembly might be
employed in MacLeod’s context without destroying” the purpose of
MacLeod. Appeal Br. 14; see also Reply Br. 4, 5. More specifically,
Appellant contends that Hamlin’s legs “will greatly increase the height of
the base and thereby destroy the low profile that MacLeod seeks so
assiduously to achieve.” Appeal Br. 15; see also Reply Br. 3. In response,
the Examiner explains that in the stated rejection, “the base of MacLeod was
not modified with non-removable legs and removable casters.” Ans. 5.
Instead, as the Examiner explains, the rejection involved “only the teaching
of the removable casters from Hamlin” and that “[t]he legs in Hamlin are not
necessary for the casters to function.” Ans. 5. In other words, “the addition
of only the removable casters to the base of MacLeod [will] not destroy the
low-profile design of its base” because “[t]he removability of the casters
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allows the structure to be placed in its original less-mobile form when
desired.” Ans. 5–6. Accordingly, and in view of Hamlin’s teaching that
“the cart has four selectively removable casters, thereby allowing a user to
immobilize the cart at a particular location” (Hamlin 1:60–63; see also
Hamlin 3:36–44), we are not persuaded by Appellant’s contention that “the
proposed modification [would] render the prior art unsatisfactory for its
intended purpose.” Appeal Br. 15 (referencing MPEP § 2143.01). This is
because MacLeod’s low-profile design can be re-established upon removal
of Hamlin’s removable casters. See supra. Consequently, we sustain the
Examiner’s rejection of claims 1 and 5 as being obvious over MacLeod,
Livengood, and Hamlin.
The rejection of claims 3, 4, and 8
as unpatentable over MacLeod, Livengood, Hamlin, and Elzerman
Each of claims 3, 4, and 8 depend, ultimately, from claim 1.
Appellant presents no separate argument with respect to these claims other
than to state that they each depend from an independent claim “shown above
to be allowable.” Appeal Br. 21. We are not persuaded by Appellant’s
contention that claim 1 has been shown to be allowable. Accordingly, we
sustain the Examiner’s rejection of claims 3, 4, and 8 as being unpatentable
over MacLeod, Livengood, Hamlin, and Elzerman.
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The rejection of claims 9 and 11–14
as unpatentable over Elzerman and Hobson3
Appellant argues claims 9 and 11–14 together. See Appeal Br. 15–21.
We select independent claim 9 for review, with dependent claims 11–14
standing or falling with claim 9.
Claim 9 is directed to an apparatus comprising “a base configured to
receive a bottom portion” of an IV pole. The Examiner relies on a
combination of the first and second embodiments of Elzerman (see Figs. 1
and 3) as teaching this receiving structure. See Final Act. 7 (it would have
been obvious “to modify the pole in the second embodiment of Elzerman
with the pole receiving structure from its first embodiment”). Claim 9
further recites “a plurality of rolling members disposed on an underside of
the base.” The Examiner relies on “the removable rolling members from
Hobson” for this teaching concluding that it would have been obvious to
combine Elzerman and Hobson “in order to provide a means of adapting a
base structure to have mobility.” Final Act. 8 (referencing Hobson 2:26–28,
Abstract).
Regarding the recited “configured to receive” claim language, the
Examiner states, “any base structure able to receive a cylindrical pole is
configured to be the base for an IV pole.” Final Act. 7–8; see also Elzerman
¶ 20. Here, the Examiner explains that “the first embodiment of Elzerman
discloses a base (12, 14, 22) which has the ability to telescopically receive a
pole structure.” Final Act. 7. Thus, “because intravenous poles aren’t a
specific size,” “the [E]xaminer takes Official Notice of the equivalence of

3 This rejection employs the same art (Elzerman and Hobson) that was also
addressed in the earlier ’754 Appeal mentioned above. See fn. 1. The
following analysis tracks our earlier analysis.
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telescopic pole connections, tubular pole connections, and IV pole
connections.” Final Act. 7, 8. “Therefore[,] Elzerman, as modified, teaches
a structure which is configured to support an IV pole and interlock with
another IV pole base.” Final Act. 8.
Appellant initially addresses the earlier 2015-003220 appeal and our
analysis therein. See Appeal Br. 18. However, that appeal addressed
different art (i.e., Simmons) and thus our discussion therein regarding
Simmons is of limited consequence in the present matter. Appellant also
asserts, “the Examiner here simply and essentially tries to conflate one pole
with another.” Appeal Br. 18. Focusing on an ability to receive a pole
(rather than the pole itself), the Examiner took Official Notice of equivalent
connections. See Final Act. 8. This is consistent with Appellant’s
Specification, which states that a base “configured to receive” an IV pole
can, for example, be “a hole,” that the hole “can have internal threads,” and
also that “[t]here are other ways to couple a vertical support pole to” a base.
Spec. ¶ 20; see also Reply Br. 5 (where Appellant contends, “[t]he fact that
Elzerman describes a base that has a hole, however, is insufficient”).
Appellant’s Specification further states, “[a]s the present teachings are not
particularly sensitive in these regards, further discussion on this point will
not be presented here for the sake of brevity.” Spec. ¶ 20. Thus, as per
Appellant’s Specification, the type or configuration of the pole connection is
“not particularly sensitive.”
In view of Elzerman’s clear discussion of receiving pole members
(see Elzerman ¶ 20), we do not fault the Examiner for taking Official Notice
of the equivalence between different types of receiving systems. This is
because Appellant does not indicate that IV poles require a unique
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connection. See also Reply Br. 6; Ans. 7, 8. In short, Appellant does not
explain why Elzerman’s base is unable to be “configured to receive” an IV
pole as recited. See Appeal Br. 18–19.
Appellant also argues, “there is nothing in these two references to
suggest the possibility and value of pushing and pulling IV poles together as
a group.” Appeal Br. 19. Focusing on the “value of pushing and pulling”
different assemblies together, Paragraph 23 of Elzerman clearly states, “[i]n
some instances, it may be desirable to couple the two pivot assemblies
together.” See also Elzerman Fig. 3. More specifically, Elzerman states:
In the FIG. 3 embodiment, the base plates 32a, 32b are
configured so as to be mechanically interlockable, and in [t]his
regard may include coupling features which include
corresponding dovetail tabs and recesses which enable the base
plates to be locked together.
Elzerman ¶ 23. Appellant does not explain how assemblies that are locked
together would fail to likewise be moved together when pushing or pulling
forces are applied. Hence, Appellant’s contentions on this point are not
persuasive the Examiner erred by relying on Elzerman for such teaching.
See Final Act. 7 (“by interlocking a respective tab and blank [the respective
assemblies may] be moved in any horizontal direction as a group”).
Likewise, Appellant’s contention that the Examiner relied upon
“impermissible hindsight” (Appeal Br. 19) is not persuasive.
Appellant further contends, “Elzerman’s base is designed to ‘rest on a
floor during use of the system.’” Appeal Br. 19 (referencing Elzerman ¶ 6).
It is not disputed that during use, Elzerman’s base is to “rest on a floor” as
asserted. However, during non-use, Elzerman clearly teaches that
Elzerman’s base is “portable.” Elzerman ¶ 17. Hence, Appellant’s
contention “that Elzerman considers it a principle of operation that the base
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not move” (Appeal Br. 20) is correct, but only during the time it is in use.
Such immovability is not applicable during set-up or take-down periods,
where Elzerman’s teaching of portability will be instrumental. See also
Reply Br. 6; Ans. 9 (discussing placement “at any number of desired
locations” so that users may “use them for balance when at said location”),
11 (“[t]he casters of Hobson allow a user the option of translating the
platform along the floor and their removability lets a user revert the base to
an untranslatable state”).
Appellant also argues, “[p]lacing wheels on Elzerman’s base would
likely, in fact, create a dangerous circumstance for anyone attempting to rely
upon Elzerman’s apparatus for support and stability.” Appeal Br. 20; see
also Reply Br. 7. However, when wheels are placed on Elzerman’s base,
Elzerman’s device is undoubtedly made portable. Appellant does not
explain how, during such periods of portability, Elzerman’s base is also
being relied upon to provide support and stability. Appellant contends,
“[t]here is nothing in Hobson to counter the foregoing” (Appeal Br. 20), but
it is Hobson that teaches the installation of removable casters so as to insure
Elzerman’s portability. See also Final Act. 8 (“in order to provide a means
of adapting a base structure to have mobility [referencing Hobson] thereby
allowing the structure to be easily repositioned by a user”); Ans. 11.
Appellant further alleges “[t]here is no suggestion or hint in Elzerman
that the described bases are somehow difficult to move from one place to
another.” Appeal Br. 20. Indeed, Elzerman discloses that the device is
“portable” (see Elzerman ¶ 17; see also Ans. 11), but Hobson explains that
often, “exercise equipment is not serviceable to extremely overweight
people nor is it accommodating to individuals who are not agile.” Hobson
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1:19–21; see also Ans. 11. Hence, Hobson’s disclosure of removable casters
to address such situations. See, e.g., Hobson Fig. 4.
Appellant also addresses how “the user must turn Elzerman’s
relatively thin and uncomplicated base of modest size upside down in order
to attach four casters,” and that this “seems highly unsatisfying” as well as
“overly-complex and time consuming.” Appeal Br. 21; see also Reply Br. 7,
8. The importance of such assertions depend on the health and/or ability of
the user. In other words, the detriment perceived by Appellant may not be
applicable to an overweight or non-agile person. In such cases, we have
been informed, “[t]he fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000). Here, it is Hobson that addresses a certain group of users that may
need additional assistance in the form of removable casters.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 9 and 11–14 as unpatentable over Elzerman
and Hobson.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5 103(a) MacLeod,
Livengood, Hamlin
1, 5
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 4, 8 103(a) MacLeod,
Livengood,
Hamlin, Elzerman
3, 4, 8
9, 11–14 103(a) Elzerman, Hobson 9, 11–14
Overall
Outcome
1, 3–5, 8, 9,
11–14

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED