Ex Parte BallDownload PDFBoard of Patent Appeals and InterferencesMar 24, 201110290778 (B.P.A.I. Mar. 24, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM T. BALL ____________ Appeal 2009-011705 Application 10/290,778 Technology Center 3600 ____________ Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William T. Ball (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting: (1) claims 1-3, 7, and 14 under 35 U.S.C. § 102(b) as anticipated by Weis (U.S. Patent No. 6,186,522 B1, issued Feb. 13, 2001); Appeal 2009-011705 Application 10/290,778 2 (2) claims 1, 2, and 14 under 35 U.S.C. § 102(b) as anticipated by Samuels (U.S. Patent No. 4,842,289, issued Jan. 27, 1989); (3) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Weis and Lello (U.S. Patent No. 4,114,915, issued Sep. 19, 1978); (4) claim 5 under 35 U.S.C. § 103(a) as unpatentable over Weis and Schmaedeke (U.S. Patent No. 3,909,031, issued Sep. 30, 1975); (5) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Weis and Hickin (U.S. Patent No. 4,726,597, issued Feb. 23, 1988);1 (6) claims 8, 9, and 13 under 35 U.S.C. § 103(a) as unpatentable over Weis and Gillett (U.S. Design Patent No. Des. 272,285, issued Jan. 17, 1984);2 (7) claim 10 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Lello; (8) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Schmaedeke; and (9) claim 12 under 35 U.S.C. § 103(a) as unpatentable over of Weis, Gillett, and Hickin. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE 1 We removed the reference to Gillett (U.S. Design Patent No. Des. 272,285, issued Jan. 17, 1984) from the statement of this rejection. The reference to Gillett in the heading of the rejection on page 8 of the Examiner’s Answer appears to be an error because the body of the rejection does not mention Gillet and Gillet was not applied in the rejection of claim 1. 2 We removed claim 11 from the claim listing of this rejection because the body of the rejection does not discuss the subject matter of claim 11 and the Examiner’s Answer separately rejects claim 11 on pages 10-11 by applying Lello to the subject matter of claim 11. Appeal 2009-011705 Application 10/290,778 3 The Invention The claimed invention is to a device for transporting, either ski equipment alone or together with skis, to a ski slope with a ski rack. Claims 1, 8, and 14, reproduced below, with emphasis added, are representative of the subject matter on appeal. 1. A device for transporting ski equipment to a ski slope with a ski rack comprising: a housing for receiving skis and ski equipment having sidewalls; an open end, and an opposite closed end, and means for transporting the device mounted on the housing; and a swing door pivotally connected to the housing and positioned to cover the open end of the housing when the swing door is in a closed position. 8. A device for transporting skis and ski equipment to a ski slope with a ski rack comprising: a housing for receiving the skis and ski equipment having sidewalls, an open end, an opposite closed end, and means for transporting the device mounted on the housing; and a storage container connected to a sidewall of the housing. 14. A device for transporting ski equipment to a ski slope with a ski rack comprising: a housing for receiving skis within the housing and means for transporting the device mounted on the housing; and a securing element attached to the housing for retaining the skis within the housing. Appeal 2009-011705 Application 10/290,778 4 Issue The determinative issue in this appeal is: Whether Weis alone, Samuels alone, and Weis in view of Gillet disclose a housing capable of receiving skis. OPINION Analysis Anticipation based on Weis Appellant contends that Weis does not disclose claim 1’s recitation of “a housing for receiving skis and ski equipment”, that the Examiner has not given the recitation due weight, and that the Examiner reads the recitation out of the claim. App. Br. 6. Consequently, Appellant contends that Weis does not disclose each and every element of claim 1 to anticipate the claim. App. Br. 7. Appellant also contends that claim 14 contains a similar limitation to claim 1 and therefore, Weis does not anticipate claim 14. Id. The Examiner posits that Weis anticipates claims 1-3, 7, and 14. Ans. 4-5. The Examiner also posits that Weis discloses a housing 12 having holding means 132 therein and ski equipment, such as ski poles, would fit adequately into the holding means 132. Ans. 4-5. The Examiner also posits that “the intended use of the invention is irrelevant.” Ans. 5. We agree with Appellants that Weis does not anticipate claims 1-3, 7, and 14. The Examiner incorrectly states that the intended use of the invention is irrelevant. It is well settled that a reference used to reject a claim must be capable of performing the claim’s recited intended use. Here, the preambles of both claims 1 and 14 recite “[a] device for transporting ski equipment to a ski slope with a ski rack.” In giving “ski equipment” its broadest reasonable interpretation, we note that the recitation of “ski Appeal 2009-011705 Application 10/290,778 5 equipment” encompasses skis. Since the body of claim 1 recites “a housing for receiving skis and ski equipment” and the body of claim 14 recites of “a housing for receiving skis within the housing,” we construe the preamble of claims 1 and 14, respectively, as limiting since in each case the preamble gives life, meaning, and vitality to the body of the claim. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (The preamble may be construed as limiting “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”) The Examiner found Weis to be capable of receiving ski equipment, such as ski poles. However, the Examiner failed to address Weis’ capability of receiving skis. Based upon our construction supra that the claim preambles of claims 1 and 14 are limiting, we find that the Examiner erred because Weis’ housing 12 is not capable of receiving skis and patentable weight must be given to claim 1’s recitation of “a housing for receiving skis” and claim 14’s recitation of “a housing for receiving skis within the housing.” Weis’ housing 12 has a club holding interior body assembly 132, comprised of upper, middle, and lower bulkheads 134, 136, and 138 each having holes 142 for holding tubes 140. While we agree with the Examiner that the tubes 140 in the holes 142 in the upper, middle, and lower bulkheads 134, 136, and 138 of the club holding interior body assembly 132 of Weis would be capable of holding ski equipment, such as ski poles, the club holding interior body assembly 132 within Weis’ housing 12 would not allow the golf club carrier 10 to receive skis. Appeal 2009-011705 Application 10/290,778 6 In view of the foregoing, we do not sustain the Examiner’s rejection of claims 1-3, 7, and 14 under 35 U.S.C. § 102(b) as anticipated by Weis. Since the rejections of claims 4-6 are based upon the same erroneous finding that the housing of Weis is capable of performing the recited intended use of being for receiving skis and since none of Lello, Schmaedeke, and Hickin cure the defect of Weis, we also do not sustain the Examiner’s rejections of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Weis and Lello, claim 5 under 35 U.S.C. § 103(a) as unpatentable over Weis and Schmaedeke, and claim 6 under 35 U.S.C. § 103(a) as unpatentable over Weis and Hickin. Anticipation based on Samuels Appellant contends that Samuels’ housing “cannot receive skis as is required by claim 1.” App Br. 8. Appellant also contends that claim 14 is novel over Samuels for the same reasons as set forth with respect to Weis. App. Br. 8-9. The Examiner posits that Samuels anticipates claims 1, 2, and 14. Ans. 6. The Examiner also posits that Samuels discloses “a housing composed of panels (9, 11, 13, 15, 17) for receiving ski equipment, see Column 1, lines 36-41, having sidewalls (15, 17).” Id. We agree with Appellant that Samuels does not anticipate claims 1, 2, and 14. As noted supra, we are construing the preamble of claims 1 and 14 as limiting since in each case the preamble gives life, meaning, and vitality to the recitations in the body of the claims. The Examiner found Samuels’ housing to be capable of receiving ski equipment. However, the Examiner failed to address whether Samuels’ housing is capable of receiving skis. Based upon our construction of the claim language supra, we find that Samuels’ housing (9, 11, 13, 15, 17, and 25) does not meet claim 1’s Appeal 2009-011705 Application 10/290,778 7 language of being “for receiving skis” and claim 14’s language of being “for receiving skis within the housing” because patentable weight must be given to these claim recitations. As is clearly shown by Samuels’ Figure 2, the housing (9, 11, 13, 15, 17, and 25) of the portable ski locker 1 does not receive the skis 54 as the skis 54 are received outside of the housing by the ski enclosure 39 and the clamping device 41. Samuels’ housing (9, 11, 13, 15, 17, and 25) is not capable of receiving skis 54, moreover any normally sized skis, because of the height of the locker 1 and the compartment divider shelf 5. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 1, 2, and 14 under 35 U.S.C. § 102(b) as anticipated by Samuels. Obviousness based on Weis and Gillet Appellant contends that the Examiner’s proposed combination of Weis and Gillet fails to disclose “a housing for receiving skis and ski equipment.” App. Br. 16. More particularly, Appellant contends that neither Weis’ tubes 140 nor Gillet’s tubes, as shown in Figure 4, are capable of receiving skis. Id. Appellant contends that even if Weis were modified by Gillet, the proposed combination would still not result in the claimed invention because neither Weis nor Gillet teaches a housing capable of receiving skis. App. Br. 16. The Examiner posits that claim 8 is unpatentable over Weis and Gillet. Ans. 8. The Examiner also posits that Weis discloses a housing (12) having side panels (18, 20), wherein the housing has a means (132) for securing sports equipment received in the housing (12). Ans. 9. We agree with Appellant that neither Weis nor Gillet discloses a housing capable of receiving skis. The preamble of claim 8 recites “[a] Appeal 2009-011705 Application 10/290,778 8 device for transporting skis and ski equipment to a ski slope with a ski rack.” The body of claim 8 recites of “a housing for receiving the skis and ski equipment.” We construe the preamble of claim 8 as limiting since the preamble gives life, meaning, and vitality to the recitations in the body of the claim. In other words, patentable weight must be given to claim 8’s recitation of “a housing for receiving the skis and ski equipment.” As discussed supra, the club holding interior body assembly 132 within Weis’ housing 12 prevents the golf club carrier 10 from being capable of receiving skis. Gillet fails to cure the defect of Weis because Gillet’s Figure 4 clearly shows a substantially closed interior having a row of open tubes which would not be capable of receiving skis. Thus, based upon our construction of the claim language supra, even if Weis and Gillet were combined, the resulting device would not have a housing capable of receiving skis because neither Weis nor Gillet discloses a housing capable of receiving skis. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 8, 9, and 13 under 35 U.S.C. § 103(a) as anticipated by Weis and Gillet. Since the rejections of claims 10-12 are based upon the same erroneous finding that the housing of Weis is capable of performing the recited intended use of being for receiving skis and since none of Lello, Schmaedeke, and Hickin cure the deficiency of Weis and Gillet, we also do not sustain the Examiner’s rejections of claim 10 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Lello, claim 11 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Schmaedeke, and claim 12 under 35 U.S.C. § 103(a) as unpatentable over of Weis, Gillett, and Hickin. Appeal 2009-011705 Application 10/290,778 9 CONCLUSION Weis alone, Samuels alone, and Weis in view of Gillet do not disclose a housing capable of receiving skis. DECISION We reverse the Examiner’s rejections of: claims 1-3, 7, and 14 under 35 U.S.C. § 102(b) as anticipated by Weis; claims 1, 2, and 14 under 35 U.S.C. § 102(b) as anticipated by Samuels; claim 4 under 35 U.S.C. § 103(a) as unpatentable over Weis and Lello; claim 5 under 35 U.S.C. § 103(a) as unpatentable over Weis and Schmaedeke; claim 6 under 35 U.S.C. § 103(a) as unpatentable over Weis and Hickin; claims 8, 9, and 13 under 35 U.S.C. § 103(a) as unpatentable over Weis and Gillett; claim 10 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Lello; claim 11 under 35 U.S.C. § 103(a) as unpatentable over Weis, Gillett, and Schmaedeke; and claim 12 under 35 U.S.C. § 103(a) as unpatentable over of Weis, Gillett, and Hickin. REVERSED Klh Copy with citationCopy as parenthetical citation