12925444 (P.T.A.B. Mar. 14, 2017)

Ex Parte Burns et al

Patent Trial and Appeal BoardMar 14, 2017

12925444 (P.T.A.B. Mar. 14, 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. 12/925,444 10/21/2010 Martin P. Burns I860 7590 03/15/2017 Francis C. Hand, Esq. c/o Carella, Byrne, Cecchi, Olstein, Brody & Agnello 5 Becker Farm Road Roseland, NJ 07068 EXAMINER MARSH, STEVEN M ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 03/15/2017 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 MARTIN P. BURNS and STANLEY SZPRENGIEL Appeal 2014-0063621 Application 12/925,444 Technology Center 3600 Before MURRIEL E. CRAWFORD, SHEILA F. MCSHANE, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL2 The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We note related Appeal No. 2014-008193 for the child application, number 13/066,579. 2 Throughout this opinion, we refer to the Appellants’ Appeal Brief (“Appeal Br.,” filed Dec. 13, 2013), Reply Brief (“Reply Br.,” filed Apr. 11, 2014), and Specification (“Spec.,” filed Oct. 21, 2010), and to the Examiner’s Answer (“Ans.,” mailed Apr. 8, 2014) and Final Office Action (“Final Act.,” mailed July 31, 2013). 3 According to the Appellants, the real party in interest is Component Hardware Group, Inc. Appeal Br. 2. Appeal 2014-006362 Application 12/925,444 STATEMENT OF THE CASE The Appellants’ invention “relates to a resilient foot for a support leg.” Spec. 1. Claims 1,5, 10, and 15 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A resilient foot comprising a tubular member of elastomeric material having a support surface at a terminal end thereof and a bore extending into said terminal end; and an insert of solid material disposed within said bore of said tubular member, said insert having a terminal end inwardly spaced from said support surface of said tubular member. Claims App. REJECTIONS I. Claims 1—184 stand provisionally rejected under 35 U.S.C. §101, double patenting, as claiming the same invention as that of claims 1—5, 8—15, 15—19, 22, and 23 of co-pending Application 13/066,579.5 4 In the Final Action, the Examiner rejected claims 15—18 on the ground of nonstatutory double patenting over claims 1—5, 8—13, and 15—19 of co pending application 13/066,579 in view of Balistreri (US 7,287,732 B2, iss. Oct. 30, 2007). Final Act. 2. The claims in co-pending application 13/066,579 were amended on January 31, 2013, before the Final Action, adding claims 22 and 23 that recite that the flange is circular. The Appellants pointed this out in the Appeal Brief at page 16. The Examiner, in the Answer, then entered a rejection of claims 15—18 on the ground of statutory-type double patenting. Ans. 10. Thus, we consider claims 15—18 to also be provisionally rejected on the ground of statutory-type double patenting. 5 As noted above, co-pending Application 13/066,579 has also been appealed and has been assigned Appeal No. 2011-008193. 2 Appeal 2014-006362 Application 12/925,444 II. Claims 1—3 and 5—11 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Munz (US 4,632,356, iss. Dec. 30, 1986). Final Act. 3. III. Claims 4 and 12—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Munz. Id. at 5. IV. Claims 15—18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Munz and Balistreri. Id. at 6. FINDINGS OF FACT The findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.6 ANALYSIS Rejection I - Double patenting Claims 1—14 The Appellants do not present arguments on the rejection of claims 1—14 under 35 U.S.C. § 101 as provisionally rejected under “same invention,” i.e. statutory-type double patenting. See Appeal Br. 15. We note that claims 1—14 are identical to claims 1—4, 8—12, and 15—19 of co-pending application 13/066,579. Thus, we affirm the Examiner’s provisional rejection of claims 1—14 under § 101. 6 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2014-006362 Application 12/925,444 Claims 15—18 The Appellants argue the Examiner’s rejection of claims 15—18 under §101 only on the ground of non-statutory obvious-type double patenting in the Final Action, asserting that the Examiner’s position regarding Munz and Balistreri “is not related to the claims of the ‘579 application.” Appeal Br. 16. As noted, supra footnote 4, in the Final Action, the Examiner initially rejected claims 15—18 on the ground of non-statutory obvious-type double patenting because the co-pending application did not recite the flange being circular. Final Act. 2. In the Answer, the Examiner rejects claims 15—18 on the ground of statutory-type double patenting. Ans. 10. The Appellants do not present arguments on this rejection in their Reply Brief. Thus, we affirm the Examiner’s provisional rejection of claims 15—18 under § 101. Rejections II-IV - Anticipation and Obviousness Each of the independent claims 1,5, 10, and 15 requires a resilient foot having a tubular member of elastomeric material that has a surface at a terminal end and a bore extending into the terminal end. The Appellants contend that the Examiner’s rejection of claim 1 is in error because Munz does not disclose a tubular member as claimed. Appeal Br. 6. The Examiner finds that Munz’s item 5 of Figure 11 discloses the claimed tubular member. Final Act. 3—5. The Examiner finds that Munz’s base 5 is “tubular” because, “[t]he component 5 of Munz is a hollow component of frusto-conical shape and therefore tubular as defined by the art.” Id. at 8. The Examiner further finds that Munz’s base is tubular 4 Appeal 2014-006362 Application 12/925,444 because, as defined by a dictionary, it is a hollow body made of elastic material that can be a guide cone. Ans. 8. Even assuming arguendo the Examiner’s interpretation of the term “tubular” (see Ans. 8), we do not see, and the Examiner does not direct attention to, where Munz discloses that base 5 is frusto-conical in shape or is hollow. Munz describes base 5 as “[a] solid base 5 with a cover plate 4 and made of more or less firm resilient material (such as rubber or other suitable elastomers)” (Munz, col. 2,11. 51—53), and as a “solid base 5 consisting] or more or less firmly resilient shock-absorbing materials, by way of example, rubber, and therefore is itself skid-resistant” {id. at col, 3,11. 7—10). Munz further discloses that threaded spindle 3 is screwed into “interiorly threaded sleeve 5’ locked into position into that base in an appropriate manner.” Id. at col. 2,11. 57—63. Thus, we agree with the Appellants that Munz does not disclose that base 5 is hollow, is of frusto-conical shape, or is a guide cone, and, therefore, does not disclose the base being “tubular.” See Appeal Br. 6, 8. Based on the foregoing, we are persuaded that the Examiner erred in the rejections of independent claims 1,5,10, and 15 and do not sustain the rejections of independent claims 1, 5, 10, and 15, and also dependent claims 2-4, 6—9, 11-14, and 16-18. DECISION The Examiner’s rejection of claims 1—18 under 35 U.S.C. § 101 is AFFIRMED. The Examiner’s rejection of claims 1—3 and 5—11 under 35 U.S.C. § 102(b) is REVERSED. 5 Appeal 2014-006362 Application 12/925,444 The Examiner’s rejection of claims 4 and 12—18 under 35 U.S.C. § 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6