12354323 (P.T.A.B. Sep. 2, 2014)

Ex Parte Bacik

Patent Trial and Appeal BoardSep 2, 2014

12354323 (P.T.A.B. Sep. 2, 2014)

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. 12/354,323 01/15/2009 John Andrew Bacik P08988 4593 12154 7590 09/03/2014 Whitley Legal Group, P.C. 17550 N. Perimeter Dr. Suite 130 Scottsdale, AZ 85255 EXAMINER YIP, WINNIE S ART UNIT PAPER NUMBER 3636 MAIL DATE DELIVERY MODE 09/03/2014 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 JOHN ANDREW BACIK ____________________ Appeal 2012-005658 Application 12/354,323 Technology Center 3600 ____________________ Before: JOHN C. KERINS, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the final rejection of claims 1–10, 12, and 14–20. App. Br. 5. Claims 11 and 13 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-005658 Application 12/354,323 2 CLAIMED SUBJECT MATTER Claims 1, 14, and 20 are independent. Claim 1 is reproduced below. 1. An umbrella system related to reducing wind damage in outdoor umbrellas subjected to at least one wind load during use, said system comprising: a) at least one umbrella structured and arranged to provide a shade protection; b) wherein said at least one umbrella comprises i) at least one umbrella shade structured and arranged to provide said shade protection, ii) at least one shaft support being coupled with said at least one umbrella shade wherein said at least one shaft support is structured and arranged to support said at least one umbrella shade in at least one operable position, and iii) at least one umbrella stand being coupled with said at least one shaft support wherein said at least one umbrella stand is structured and arranged to support said at least one shaft support in at least one operable position; c) wherein said at least one shaft support comprises at least one omni-directional flexor structured and arranged to provide omni-directional flexing of said at least one shaft support when said at least one umbrella shade is subjected to the at least one wind load; and d) wherein such omni-directional flexing assists in reducing deflection-related failure within said at least one shaft support when said at least one shaft support is subjected to force loading. Appeal 2012-005658 Application 12/354,323 3 REJECTIONS1 Claims 1–7, 9, 10, and 12 are rejected under 35 U.S.C. § 102(b) as anticipated by Lin (US 6,810,890 B2; iss. Nov. 2, 2004). Claims 14, 15, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lin and Dubinsky (US 4,567,907; iss. Feb. 4, 1986). Claims 1–7, 9, 10, and 12 are rejected under 35 U.S.C. § 102(e) as anticipated by You (US 7,537,016 B1; iss. May 26, 2009). Claims 14, 15, 19, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over You and Dubinsky. Claims 1–10 and 14–20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amalric (FR 2,846,525; pub. May 7, 2004) and Dubinsky. ANALYSIS Claims 1–7, 9, 10, and 12 as anticipated by Lin The Examiner found that Lin discloses an umbrella system including an umbrella with at least one umbrella shade and at least one shaft support that is coupled to the at least one umbrella shade and to at least one umbrella stand. Ans. 5. The Examiner found that Figure 2 of Lin discloses an umbrella with a support shaft 1 coupled and supported on a golf bag (B) and considered the golf bag to be an “umbrella stand” as claimed because it acts as an umbrella stand and supports the umbrella in a stand position. Ans. 17. Appellant argues that Lin discloses an umbrella adapted to sit in a golf bag and protect the golf clubs therein but does not disclose a coupling of the golf bag (B) and the umbrella support shaft as claimed. App. Br. 15–16. 1 The Examiner withdrew a rejection of claims 14, 15, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by Lin and a rejection of claims 14, 15, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by You. See Ans. 4. Appeal 2012-005658 Application 12/354,323 4 Appellant asserts that interpreting an unmodified golf bag as an umbrella stand, as the Examiner has done, is an unreasonably broad interpretation of the claimed umbrella stand. Reply Br. 3. We agree. The Examiner has not established by a preponderance of evidence that Lin discloses at least one umbrella stand that is coupled with the at least one shaft support of the umbrella as claimed. An ordinary, customary meaning of “coupled” includes “to connect for consideration together,” “to join for combined effect,” “to fasten together.” (see Merriam-Webster.com, http://www.merriam-webster.com/dictionary/couple (last viewed Aug. 27, 2014)). This meaning is consistent with Appellant’s disclosure that the base 114 of the flexible umbrella 102 is preferably connected to a weighted umbrella stand 108. Spec. 13; Fig. 1A. We do not sustain the rejection of claims 1–7, 9, 10, and 12. Claims 14, 15, and 19 as unpatentable over Lin and Dubinsky Independent claim 14 recites an umbrella system wherein at least one furniture element is coupled with at least one umbrella shaft support to support the at least one shaft support. The Examiner relied on Dubinsky to disclose this feature and reasoned that it would have been obvious to a skilled artisan to modify the umbrella system of Lin to have the umbrella shaft support mounted to a ground support stand such as the furniture element of Dubinsky instead of being coupled to a golf stand as in Lin “to provide a shade protection to accommodate various applications.” Ans. 9. The Examiner also reasoned that Lin discloses an umbrella shaft being removably placed and held in a golf bag for support, and Dubinsky teaches an umbrella shaft 20 being removably mounted to a ground stand 24 and a furniture element (table 22) for supporting the umbrella in an upright Appeal 2012-005658 Application 12/354,323 5 condition to cover an area thereunder and prevent the umbrella from being flipped over by heavy wind in outdoor use, and therefore the proposed modification would have been obvious as both references are in the same field of endeavor. Ans. 20–21. Appellant argues that a skilled artisan would not have been motivated to modify Lin’s umbrella system that protects golf clubs in a golf bag from the elements with Dubinsky’s umbrella system that uses both an umbrella stand and furniture to support a patio umbrella because the umbrella stand and furniture element of Dubinsky would not work with Lin’s golf bag. App. Br. 23–24. Appellant also argues that Lin discloses a mobile system (a golf bag carried around a golf course) and Dubinsky discloses a stationary system (patio umbrella that stays in one general place) so that a skilled artisan would not have been motivated to combine Lin and Dubinsky in the manner proposed by the Examiner. Reply Br. 6–7. We agree. The Examiner has not established, by evidence or technical reasoning, a sufficient factual basis to reasonably support the conclusion that a skilled artisan would have had a reason to modify the golf bag umbrella system of Lin with the patio furniture umbrella system of Dubinsky. The Examiner’s stated reason “for supporting an umbrella shade on the ground surface to provide a shade protection to accommodate various applications” is not supported by a rational underpinning because Lin is directed at an umbrella system to protect golf clubs and the Examiner has not explained adequately why such a mobile system would need to be modified for other various applications, especially with Dubinsky’s stationary umbrella system that supports an umbrella shaft with a furniture element. We do not sustain the rejection of claims 14, 15, and 19. Appeal 2012-005658 Application 12/354,323 6 Claims 1–7, 9, 10, and 12 as anticipated by You The Examiner found that You discloses an umbrella system, as claimed, including at least one umbrella stand (golf bag 40) that is coupled with a lower portion (handle 12) of the umbrella support shaft. Ans. 10. The Examiner reasoned that claim 1 only recites an “umbrella stand” “coupled with at least one shaft support” and does not recite any structural details that define the umbrella stand so that the claimed umbrella stand does not have to have a structure as shown in Appellant’s drawings. Ans. 18. Appellant argues that You discloses an umbrella that is adapted to sit in a golf bag and protect the golf clubs held therein and therefore does not disclose an umbrella stand. App. Br. 18–19. Appellant also argues that You merely discloses a golf bag umbrella, not a golf bag that becomes an umbrella stand and interpreting an unmodified golf bag as an umbrella stand is unreasonable. Reply Br. 5–6. We agree. The Examiner’s interpretation of the term “umbrella stand” in claim 1 to encompass an unmodified golf bag that can support an umbrella that is placed in the golf bag along with golf clubs is unreasonably broad and not consistent with Appellant’s Specification. Appellant discloses that base 114 of the flexible umbrella 102 “is preferably connected to weighted umbrella stand 108” so that “at least one portion of [umbrella] shaft support 106 is restrained against movement . . . .” Spec. 13; Fig. 1A. The Examiner has not established that a skilled artisan would consider an unmodified golf bag of Lin to be an umbrella stand in light of Appellant’s disclosure. Although features from the specification are not read into claims, claim terms are Appeal 2012-005658 Application 12/354,323 7 interpreted as they would be understood by a skilled artisan in light of the specification. We do not sustain the rejection of claims 1–7, 9, 10, and 12. Claims 14, 15, 19, and 20 as unpatentable over You and Dubinsky Claims 14, 15, and 19 The Examiner relied on Dubinsky to teach a furniture element that supports at least one umbrella shaft, as recited in claim 14, and determined that it would have been obvious to modify the golf bag of You with the furniture element of Dubinsky for the same reasons as provided for Lin as discussed supra. Ans. 12–14. We agree with Appellant that a skilled artisan would not have been motivated to modify You in this manner for the reasons discussed supra for the rejection of claims 14, 15, and 19 based on Lin and Dubinsky. See App. Br. 18–20; Reply Br. 7. We do not sustain the rejection of claims 14, 15, and 19. Claim 20 Independent claim 20 recites “umbrella stand means for supporting said shaft support means.” We interpret the limitation “umbrella stand means” as a means-plus-function limitation in which the weighted umbrella stand 108 performs the function of supporting the umbrella shaft support means. See Spec. 13, Fig. 1A. The Examiner has not made any findings that You or Dubinsky discloses this structure. See Ans. 12–13, 21–22. We do not sustain the rejection of claim 20. Claims 1–10 and 14–20 unpatentable over Amalric and Dubinsky The Examiner found that Amalric discloses an umbrella system as recited in claims 1–10 and 14–20 except for an umbrella stand, which Dubinsky discloses. Ans. 14–16. In particular, the Examiner found that Amalric discloses “an omni-directional flexor” as claimed because “Amalric Appeal 2012-005658 Application 12/354,323 8 discloses the upper support shaft portion (2) of the umbrella band by the coiled spring (1) to form an oblique angle to the lower support shaft portion (3) when a force is applied on the umbrella . . . the force is able [to be] caused by wind” and “the coiled spring [is] capable of storing a spring return force that is sufficient to cause the upper shaft portion [to] flex in the omni- direction[] to return to the co-axial position (see Fig. 2) when the clasp (14) is released such that the coiled spring is flexed to prevent deflection related failure” so that “the coiled spring of Amalric’s umbrella is considered to be ‘structured and arranged’ to form a flexor that ‘provides an omni-directional flexing when the umbrella shade is subjected to at least one force loading such as a wind loading’ to prevent ‘deflection related failure’” as claimed. Ans. 23. Appellant argues that Amalric is directed to inclining an upper portion of a shaft at a given angle with respect to a lower portion of the shaft in an umbrella system and uses a rigid sleeve (5) to set the upper portion of the shaft in an upright position or a fastening clasp 14 to select the angle of inclination. App. Br. 32. As a result, Appellant argues that the automatic flexing of Amalric is evident and such a flexor is not appropriate to address the structural requirements of dealing with wind loading and the Examiner has mischaracterized Amalric in this regard. Reply Br. 8–9. We agree. The Examiner has not established by a preponderance of evidence that Amalric discloses “at least one omni-directional flexor structured and arranged to provide omni-directional flexing of said at least one shaft support when said at least one umbrella shade is subjected to the at least one wind load” as recited in claim 1 or at least one coil spring structured and arranged to maintain a first and second longitudinal axis of the umbrella Appeal 2012-005658 Application 12/354,323 9 shaft portions in a substantially coaxial orientation when a force is less than a predetermined amount, as recited in claim 14. We agree with Appellant that Amalric discloses an umbrella with a flexor that is preformed to incline an upper umbrella shaft portion at an angle with a lower umbrella shaft portion. To maintain the upper and lower shafts in alignment or coaxial configuration, a collar must be placed over the flexor to overcome the pre- formed inclination. See Translation, pp. 2–3 (discussing Figures 1–6; Figs. 1–6). The Examiner has not acknowledged or explained adequately how Amalric’s flexor, which is preformed at a predetermined angle, provides an omni-directional flexor as claimed.2 We do not sustain the rejection of claims 1–10 and 14–20. DECISION We REVERSE the rejections of claims 1–10, 12, and 14–20. REVERSED mls/pgc 2 The Examiner did not make any findings regarding Amalric’s disclosure of an “omni-directional flexor means” as recited in claim 20 and which we construe as a means-plus-function term, the structure of which is disclosed, for example, at pages 16–17 of Appellant’s Specification and Figure 2. See Ans. 14–16.