Alvin L. Jefferson et al.

Patent Trials and Appeals Board

Aug 20, 2019

13965304 - (D) (P.T.A.B. Aug. 20, 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.
13/965,304 08/13/2013 Alvin L. Jefferson 079145-000030 1009
9961 7590 08/20/2019
Vorys, Sater, Seymour and Pease LLP
500 Grant Street
Suite 4900
PITTSBURGH, PA 15219-2502
EXAMINER
BOCHNA, DAVID
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
USPTO_BT@vorys.com
docket@beckthomas.com
vorys_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALVIN L. JEFFERSON, BRANDEN BUTELLA, and
DAVID AGEE1
____________________

Appeal 2018-008051
Application 13/965,304
Technology Center 3600
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

BAHR, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Ductmate Industries, Inc. (Appellant) is the applicant as provided in 37
C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
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Application 13/965,304

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A flexible register boot for conducting air from a furnace or
air conditioning unit to a register location within a structure or
from a register location within a structure to an air conditioning
unit or furnace comprising:
(a) a duct opening at one end of the flexible register
boot that may be attached to a duct;
(b) a register opening at the other end of the flexible
register boot that protrudes through a hole in a structure;
(c) a body of the flexible register boot between the duct
opening and the register opening having a smooth curvature to
reduce turbulence and improve airflow; and
(d) the flexible register boot being deformable to pass
either the register opening or the duct opening through a hole in
the structure and the flexible register boot is thereafter restored
to its natural shape to seal the boot to the structure.

THE REJECTION2
Claims 1–20 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Donnelly (US 6,652,375 B2, issued Nov. 25, 2003).

DISCUSSION
Claims 1–5
The Examiner’s findings explaining how claim 1 reads on the
structure of Donnelly are set forth on page 3 of the Final Action. In
addressing limitation (d) of claim 1, the Examiner finds that Donnelly’s
“barbs 79 are meant to deform and snap back into shape upon assembly[] to

2 The Examiner withdrew a rejection of claim 18 under 35 U.S.C. § 112,
second paragraph. Ans. 3; see Final Act. 2.
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pass either the register opening or the duct opening through a hole (bottom
of 21) in the structure 21 and the flexible register boot is thereafter restored
to its natural shape to seal the boot to the structure.” Final Act. 3.
Appellant argues that “Donnelly is not enabling for flexible resilient
material that can be deformed to fit within the hole.” Appeal Br. 7.
According to Appellant, “Donnelly teaches a rigid plastic boot with the use
of clips” and “does not teach deformation and resilient material as claimed
by [Appellant].” Id. at 8.
In response, the Examiner explains that Donnelly’s barbed protrusions
(clips 79) “must flex inward upon insertion into the bottom rectangular hole
of 21 upon assembly (see fig. 3)” and, once the barbs pass through the hole,
they “would spring [back] into their original shape.” Ans. 3; see Donnelly
5:13–16 (disclosing a series of restraining flexible clips 79 molded to the
leading edge of mouth portion 12 of boot 10 for attaching boot 10 to register
mounting member 20).
Appellant acknowledges that clips 79 are flexible, but argues that this
constitutes only a part of the boot, and not the entire boot, being flexible.
Reply Br. 4. This argument does not apprise us of error because claim 1
does not require that the entire boot be flexible or resilient. It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellant also contends that the size of the hole in the structure is
slightly larger than the area of the bottom of register mounting member 20
because the bottom of register mounting member 20 is within the hole in the
structure, and flexible clips 79 are narrower than the area of register
mounting member 20 because the flange underneath clips 79 (which extends
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Application 13/965,304

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outwardly of clips 79) is the size of register mounting member 20. Reply
Br. 5. Thus, Appellant argues that the barbed protrusions (flexible clips 79)
do not have to flex inward upon insertion into the rectangular hole in the
structure. Id. This argument appears to be predicated on an understanding
that the “hole” through which the boot register opening is to be passed is a
hole into which Donnelly’s register mounting member 20 is inserted.
However, in reading the structure of claim 1 on Donnelly, the Examiner
considers register mounting member 203 to be the “structure” and the hole in
the bottom of register mounting member 20 defined by the lower ends of
side walls 21 and end walls 22 of register mounting member 20 to be “ a
hole in a structure.” Final Act. 3; Ans. 3. Appellant does not specifically
contest the Examiner’s position, nor do we discern error in the Examiner’s
interpretation of Donnelly.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as
well as dependent claims 2–5, for which Appellant does not present any
separate arguments and which, thus, fall with claim 1. See Appeal Br. 7–8;
See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim
to decide the appeal as to a single ground of rejection of a group of claims
argued together).4

3 The Examiner refers to reference numeral “21” (which Donnelly uses to
denote the side walls of register mounting member 20) to identify the
“structure,” but we understand the Examiner to be referring to the register
mounting member itself as the “structure” and the bottom hole defined by
the lower ends of side walls 21 and end walls 22 as the “hole in a structure”
of claim 1. See Final Act. 3; Ans. 3; Donnelly, Figs. 2, 3.
4 Appellant recites additional claim elements of dependent claim 5. Appeal
Br. 7. Such statements do not constitute separate arguments for patentability
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Claim 6
The Examiner’s findings explaining how claim 6 reads on Donnelly
are set forth on page 4 of the Final Action. Appellant recites elements of
claim 6, but does not present any substantive argument directed to claim 6.
Appeal Br. 7–8; see In re Lovin, 652 F.3d at 1357 (stating that “a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art” is insufficient to constitute a
separate argument for patentability). In response to Appellant’s argument,
discussed above, that Donnelly “does not teach deformation and resilient
material as claimed by [Appellant]” (Appeal Br. 8), the Examiner states:
[T]he barbs 79 of the register boot 11 are distorted as they are
flexed inward upon passing through the hole in the bottom of
structure 21 and then spring back or are restored to their
original shape once the barbs pass through the hole allowing the
barbs to catch on interior rim of the hole of structure 21.
Ans. 4. For the reasons discussed above, Appellant’s argument on page 5 of
the Reply Brief that that the barbed protrusions (flexible clips 79) do not
have to flex inward upon insertion into the rectangular hole in the structure
is not responsive to the Examiner’s rejection, which considers the “hole in
the structure” to be the hole defined by the bottom ends of side walls 21 and
end walls 22 of Donnelly’s register mounting member 20.

of the dependent claim pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) (the predecessor to
§ 41.37(c)(1)(iv)) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). Appellant has
waived any argument for separate patentability of claim 5. See id.
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For the reasons set forth in the discussion of claim 1 above, which is
equally applicable to claim 6, Appellant fails to apprise us of error in the
rejection of claim 6, which we, thus, sustain.
Claims 7–16, 19, and 20
Claim 7 recites, in pertinent part, that the end, the second end, and the
body between the two ends “form the boot and are made of a flexible
resilient material.” Appeal Br. 11 (Claims App.). Appellant’s Specification
states that “[t]he flexible material can be any type of elastomeric polymer”
and that “[t]he elastomeric polymer should be flexible enough so that it can
be deformed to fit through a hole and then be able to restore itself to its
original shape.” Spec. ¶ 18.
In addressing this limitation, and responding to Appellant’s
aforementioned arguments that Donnelly does not disclose a boot of such a
material, the Examiner states that “Donnelly discloses that the boot[] is
made from injection molded plastic material (see col. 3, line 41), which
would inherently have some amount of flexibility.” Ans. 3. The Examiner
does not point to any disclosure in Donnelly that the injection molded plastic
material of the boot is inherently flexible, nor does the Examiner provide
any evidence showing that all injection molded material is necessarily, or
inherently, flexible and resilient as one of ordinary skill in the art would
understand that terminology in light of the description of the flexible
material in Appellant’s Specification.
The Examiner also emphasizes that Donnelly discloses barbed
protrusions (clips 79) that must flex inward upon insertion into the bottom
hole in register mounting member 20, and spring back into their original
shape once clips 79 pass through the hole, as discussed above. Ans. 3.
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However, Appellant persuasively argues that clips 79 do not constitute the
entire boot (two ends and body between the ends), as called for in claim 7.
See Reply Br. 4. Although Donnelly’s clips 79 may be formed with a
geometry that permits them to flex relative to the remainder of boot member
10 and then return to their original shape, thereby constituting a flexible
resilient component of the boot member, this does not satisfy the limitation
in claim 7 that the ends and body form the boot and are made of a flexible
resilient material.
Thus, Appellant apprises us of error in the Examiner’s finding that
Donnelly anticipates the subject matter of independent claim 7.
Accordingly, we do not sustain the rejection of claim 7, or claims 8–16, 19,
and 20, which depend from claim 7.
Claims 17 and 18
Appellant does not present any separate arguments for claims 17 and
18 in the Appeal Brief. See Appeal Br. 7–8. Appellant recites elements of
claim 17. Id. at 8. However, as mentioned above, such statements do not
constitute separate arguments for patentability pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). See In re Lovin, 652 F.3d at 1357.5 Thus, claims 17 and
18 stand or fall with claim 1. Accordingly, for the reasons set forth above,
we sustain the rejection of claims 17 and 18.

5 In the Reply Brief, Appellant recites elements of claims 17 and 18 and
states that Donnelly’s “flexible clips 70” do “not meet [these] limitations.”
Reply Br. 3. These statements, likewise, do not constitute separate
arguments for patentability and do not apprise us of error in the rejection.
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DECISION
The Examiner’s decision rejecting claims 1–6, 17, and 18 is
AFFIRMED.
The Examiner’s decision rejecting claims 7–16, 19, and 20 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART