Pella Corporation

Patent Trials and Appeals Board

Mar 8, 2022

2021005032 (P.T.A.B. Mar. 8, 2022)

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. 15/874,589 01/18/2018 Jesse Van Essen 426998.000488 7340 25764 7590 03/08/2022 FAEGRE DRINKER BIDDLE & REATH LLP PATENT DOCKETING - INTELLECTUAL PROPERTY 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER MILLS, CHRISTINE M ART UNIT PAPER NUMBER 3675 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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): PatentDocketing@FaegreDrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JESSE VAN ESSEN Appeal 2021-005032 Application 15/874,589 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and ROBERT J. SILVERMAN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “PELLA CORPORATION.” Appeal Br. 2. Appeal 2021-005032 Application 15/874,589 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 13, and 15 are the independent claims on appeal. Claim 13, reproduced below, is illustrative of the claimed subject matter. 13. A toggle assembly including: a toggle housing; a toggle coupled to the toggle housing and configured to rotate and translate relative to the toggle housing such that the toggle is transitionable between an engaged state and disengaged state; and a biasing member coupled to the toggle and to the toggle housing, the biasing member exerting a force on the toggle and the toggle housing, wherein when configured in the engaged state the toggle engages a portion of the toggle housing which operates to retain the toggle in the engaged state, where the toggle is operable to be linearly translated when the toggle is transitioned to the engaged state, and wherein when transitioning from the engaged state to the disengaged state the biasing member induces the toggle to rotate and translate relative to the toggle housing. Appeal Br. 13 (Claims App.). Rejections Claims 13 and 14 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Sopkowiak et al. (US 8,776,440 B2, issued July 15, 2014) (“Sopkowiak”). Final Act. 2-3. Claims 1-12 and 15-20 are rejected under 35 U.S.C. § 103 as unpatentable over Sopkowiak. Final Act. 4-7. Appeal 2021-005032 Application 15/874,589 3 ANALYSIS The rejection of claims 13 and 14 as anticipated by Sopkowiak The Appellant argues that the Examiner’s finding that Sopkowiak’s rocker 320 corresponds to “the toggle is operable to be linearly translated when the toggle is transitioned to the engaged state,” as recited in independent claim 13, is in error. See Appeal Br. 4; Reply Br. 2-42. The Appellant contends that Sopkowiak’s rocker “is arcuately translated, rather than linearly translated, when the [rocker] is transitioned to the engaged state.” See Reply Br. 3-4. The Appellant’s argument is persuasive. The Examiner’s position is that the movement of the Sopkowiak’s rocker includes at least a component that is linear. Ans. 8; see Final Act. 3. By example, the Examiner explains that the movement of Sopkowiak’s rocker 120, as shown in Figures 5B and 6B, includes a linear component. See Ans. 8. While the Examiner’s position appears valid, the claim does not call for a translation that includes a linear component. The disputed limitation calls for the toggle to be able “to be linearly translated,” meaning that the movement of the toggle is in a straight or nearly straight line; specifically, when the toggle is transitioned to the engaged state. This recitation of “linearly translated” stands in contrast to the further recitation that “when transitioning from the engaged state to the disengaged state the biasing member induces the toggle to rotate and translate relative to the toggle housing.” (Emphasis added). Unlike the transition from the engaged 2 The Reply Brief lacks page numbers. We designate page 1 as the page that includes the heading “APPELLANT'S REPLY BRIEF TO THE EXAMINER'S ANSWER (37 C.F.R. § 41.41)” and number the remaining pages in the Reply Brief consecutively therefrom. Appeal 2021-005032 Application 15/874,589 4 state to the disengaged state (wherein the toggle “rotate[s] and translate[s]”), claim 13 explicitly omits any rotation of the toggle, during its transition “to the engaged state” (stating only that the toggle is “linearly translated”). We do not find adequate support for a finding that Sopkowiak’s rocker 320, which moves similarly to rocker 120, is operable to move in a straight or nearly straight line when it transitions to an engaged state. Therefore, we determine that the Examiner’s finding that Sopkowiak’s rocker 320 corresponds to “the toggle is operable to be linearly translated when the toggle is transitioned to the engaged state,” as recited in independent claim 13, is inadequately supported. Thus, we do not sustain the Examiner’s rejection of independent claim 13 and claim 14, which depends therefrom. The rejection of claims 1-12 and 15-20 as unpatentable over Sopkowiak The Examiner finds that Sopkowiak substantially discloses the subject matter of independent claims 1 and 15. See Final Act. 4, 7. The Examiner’s finding relies on Sopkowiak’s teaching of sash limiter 300 as shown in Figures 15-17D. See id. at 4; see also Sopkowiak col. 16, ll. 44-45. The Examiner finds that sash limiter 300 includes rocker 320 (toggle) having pivot hole 330 for pin 360 which is fixed in base 340 (toggle housing). See Final Act. 4. Also, the Examiner finds sash limiter 300 includes spring 370 (biasing member), which is situated between toggle 320 and base 340. See id. Sash limiter 300 is shown in a first position in Figures 16A-D and a second position in Figures 17A-D. Sopkowiak col. 17, ll. 13-16. Appeal 2021-005032 Application 15/874,589 5 The Examiner does not find that Sopkowiak discloses “the pin being operable to translate relative to the toggle housing,” as recited in claims 1 and 15. Final Act. 4. To remedy this deficiency, the Examiner determines: Although Sopkowiak discloses the toggle be operable to translate relative to the toggle housing, such translation occurs due to the pin being fixed to the toggle housing and movable within a slot (330) in the toggle itself. Therefore, Sopkowiak does not disclose the pin being operable to translate relative to the toggle housing. However, the pin and slot would produce the same operational result if the pin were fixed to the toggle and movable within a slot in the toggle housing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have located the slot in the toggle housing rather than the toggle in order to produce the known and expected result of configuring the toggle to be operable to translate relative to the toggle housing, since it has been held that rearranging parts of an invention involves only routine skill in the art. See MPEP 2144.04. Please note that given the modification above, it follows that the pin would be operable to translate relative to the toggle housing. Id. at 4-5. The Examiner’s determination is based on the proposition that rearranging parts of an apparatus is a matter of obviousness for one of ordinary skill in the art. The Examiner cites to Manual of Patent Examining Procedure (MPEP) § 2144.04 for support for this proposition. This section includes a sub-section for the “Rearrangement of Parts” rationale. MPEP § 2144.04(VI)(C) (9th ed., rev. 10.2019, last rev. June 2020)). This sub- section, in-part, recites: In re Japikse, 181 F.2d 1019 . . . (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.) Appeal 2021-005032 Application 15/874,589 6 MPEP § 2144.04(VI)(C)3. The court in Japiske held: In the brief of the Solicitor for the Patent Office it is pointed out that the claim reads on Cannon except as to the final limitation reading ‘means disposed in alignment with said opening for contact by said depending means to start the pressing operation of said hydraulic press.’ As to that limitation is was held that there would be no invention in shifting the starting switch disclosed by Cannon to a different position since the operation of the device would not thereby be modified. Japikse at 181 F.2d at 1023. The question of whether the operation of a device is modified is the crux of the legal proposition in which the Examiner’s determination relies. The Appellant argues that “if the parts of the device of Sopkowiak were merely rearranged as proposed in the office action, the device of Sopkowiak would be rendered inoperable for its intended purpose.” Appeal Br. 7. The Appellant points out that prior to the modification spring 370 is “securely anchored at two static positions” and after the modification “spring 370 would not have any static anchoring points as the pin would moveable within a slot defined by the base.” Id. at 8. The Appellant submits that the operation of Sopkowiak’s sash limiter relies heavily on the specific geometries and positions of rocker 320, slot 330, base 340, and spring 370 along with gravity to provide its operational features of locking and resetting. See id. at 9. 3 The remainder of MPEP § 2144.04(VI)(C) recites “In re Kuhle, 526 F.2d 553 . . . (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).” Appeal 2021-005032 Application 15/874,589 7 In light of the Appellant’s argument, the Examiner appears to acknowledge that the operation of Sopkowiak’s sash limiter 300 would change. See Ans. 9. For example, the Examiner explains: The proposed modification (i.e., the slot being located in the housing and the pin being fixed to the toggle) would not change the points of contact of the spring legs; the only difference would be that leg 370B would translate slightly along the flat, vertical wall of the housing and leg 370A would remain fixed relative to the flat wall of the toggle. Id. Further, the Appellant contends, “[t]he Examiner’s position neglects to account for the change in operation of the toggle of Sopkowiak as it relates to the housing which is necessitated by the proposed modification.” Reply Br. 4. The Appellant submits that the translation of spring 370 between its various positions may cause second leg 370B of spring 370 to interfere with ledge 344. Id. at 5 (annotating Sopkowiak, Fig. 16B). After a careful review of Sopkowiak’s disclosure and the proposed modification, we cannot discount the possibility of interference of spring leg 370B with ledge 344. Accordingly, it is possible that the proposed modification results in a device that operates in a diminished capacity. In view of the foregoing, we determine that the Examiner’s proffered rationale lacks sufficient rational underpinning to adequately support a conclusion of obviousness. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and 15, and claims 2-12 and 16-20, which depend therefrom. CONCLUSION The Examiner’s decision to reject claims 1-20 is reversed. Appeal 2021-005032 Application 15/874,589 8 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13, 14 102 Sopkowiak 13, 14 1-12, 15-20 103 Sopkowiak 1-12, 15-20 Overall Outcome 1-20 REVERSED