12591662 (P.T.A.B. Nov. 26, 2013)

Ex Parte Benveniste et al

Patent Trial and Appeal BoardNov 26, 2013

12591662 (P.T.A.B. Nov. 26, 2013)

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. 12/591,662 11/25/2009 Richard Joseph Benveniste 7745 6544 39196 7590 11/27/2013 SHLESINGER, ARKWRIGHT & GARVEY LLP 5845 Richmond Highway, Suite 415 ALEXANDRIA, VA 22303 EXAMINER WIEST, ANTHONY D ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 11/27/2013 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 RICHARD JOSEPH BENVENISTE, HENRY GOLDMAN, and JOSEPH FITZGERALD ____________________ Appeal 2013-004424 Application 12/591,662 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-004424 Application 12/591,662 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 6 and 8-14. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an emergency repair plug to slow down water inflow through an opening. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An emergency repair plug for sealing an opening in a boat hull, comprising: a) a conical body made of a solid foam, spongy cellular material that is compressible by hand and able to return to its original shape, said body having an increasing cross-sectional area from a top portion to a bottom portion of said conical body along its length to accommodate different sizes of the opening; b) said conical body being compressible by hand to a smaller dimension so that a portion of said conical body larger than an opening to be plugged can be inserted into the opening; and c) said conical body being able to return to its larger size after compression, thereby to be wedged in the opening to slow down water inflow through the opening. REJECTIONS Claims 1, 2 and 4 are rejected under 35 U.S.C. § 102(b) as being anticipated by http://www.motivators.com/Promotional-Custom- SafetyConeStressball-6143.html#Tab12 (hereinafter “Motivators”)1. Final Rej. 2. 1 The Examiner relies on this undated web page from www.motivators.com. The page cited to by the Examiner in the Final Office action currently redirects to: http://www.motivators.com/Promotional-Custom- ConstructionConeStressReliever-6143.html. The Examiner cites Appeal 2013-004424 Application 12/591,662 3 Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by Leight (US 4,774,938, iss. Oct. 4, 1988). Final Rej. 3. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Motivators. Final Rej. 4. Claims 5, 6 and 8-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Motivators and applicants’ acknowledged prior art (hereinafter “AAPA”). Final Rej. 5. Claims 5, 6 and 8-10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Leight and AAPA. Final Rej. 6. Claims 11-14 are rejected are rejected under 35 U.S.C. § 103(a) as being unpatentable over either Leight or Motivators, 7 News WHDH Boston news article, Sponge Bob football fills the gap in a sinking fishing vessel September 19, 2007 (http://www4.whdh.com/news/articles/localiB062527) (hereinafter “Sponge Bob”), and AAPA. Final Rej. 7. OPINION While apparatus claims, such as claim 1, must be distinguished over the prior art in terms of structure rather than function (see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997)) the Examiner has not established that Motivators discloses each and every recited element of the claimed plug. Evidence obtained through the Wayback Machine is not necessarily inadmissible in the patent application process.2 “[A]dministrative agencies http://web.archive.org/web/20050430223104/http://www.motivators.com/61 43-promotional-item.html as evidence of the effective date of the www.motivators.com page entered into the file wrapper Mar. 23, 2012. 2 See, e.g., section V(B) of Prior Art in the Field of Business Method Patents – When is an Electronic Document a Printed Publication for Prior Art Appeal 2013-004424 Application 12/591,662 4 like the PTO are not bound by the rules of evidence that govern judicial proceedings.” In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994). Further, patent examination is not governed by the rules related to proceedings before the Trademark Trial and Appeal Board. Contra App. Br. 13. However, the page indexed by the Wayback Machine contains no discussion of the composition of the depicted cone.3 There is nothing corroborating the page copied by the Examiner with the date of the page provided by the Wayback Machine. Thus, there does not appear to be any evidence of record that the art available prior to the critical date expressly or inherently discloses a structure made of a solid foam. App. Br. 7-8. As such, the Examiner has failed to establish that Motivators discloses each and every element of, to thereby anticipate, the claimed invention. In rejecting claim 1 based on Leight, the Examiner found the conical portion of Leight (presumably the frustoconical flanged rear end 14) sufficient to meet the limitation calling for “a conical body.” In Leight, however, it is Leight’s “main body portion [that] is designed to be compressed.” Col. 1, ll. 67-68. The Examiner admits that the main body portion is shaped like a bullet as opposed to a cone. Ans. 4. Leight’s “earplug has a flared rear end that tends not to be compressed by persons, and which therefore helps avoid too deep insertion into the ear canal.” Col. 4, ll. 20-22; col. 3, ll. 27-32 (emphasis added). While the Examiner may shift the burden to an applicant to prove that a prior art structure that appears to be the same as that of the claims does not inherently possess a recited purposes?, found at: http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp; MPEP § 2128. See also http://archive.org/legal/faq.php and http://archive.org/legal/affidavit.php regarding authentication. 3 See note 1. Appeal 2013-004424 Application 12/591,662 5 property, the examiner must first provide sufficient evidence or scientific reasoning to establish there is a sound basis for the examiner’s belief that the functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Claim 1 requires the conical body to be compressible and have a structure that can be wedged into an opening. The Examiner has not provided any evidence in support of the assertion that Leight’s flared rear end can be used in exactly the opposite manner that it is designed to be used. Thus, the Examiner has failed to establish that the structure interpreted as the recited “conical body” is “compressible” “to be wedged in the opening” and function in the manner recited in claim 1. Thus, the Examiner has failed to establish that Leight anticipates claim 1. The Examiner’s rejections under 35 U.S.C. § 103 do not account for the deficiencies discussed with reference to the Examiner’s rejections under 35 U.S.C. § 102. Thus, the Examiner’s obviousness rejections of those claims depending from claim 1 must also be reversed. The Examiner’s position concerning claim 11 is not clear. The Examiner admits that neither Motivators nor Leight discloses steps a through d. Ans. 7. Since there are no other steps in the claim it is unclear what these references are relied upon for in the Examiner’s rejection. The Examiner also states that the rejection is premised in part on AAPA. Again, the Examiner does not explain why the Examiner relies on AAPA in rejecting claim 11. The Examiner appears to believe that Sponge Bob discloses each of the recited steps. Ans. 7-8 (“The examiner contends that the action of the rescue crew precisely followed steps (a) - (d)”). There is simply no evidence or indication of this in Sponge Bob. The Examiner’s rejection therefore appears to be premised on conjecture instead of fact. We cannot sustain a Appeal 2013-004424 Application 12/591,662 6 rejection that is not supported by facts. In re Zurko, 258 F. 3d 1379 (Fed. Cir. 2001). DECISION The Examiner’s rejections are reversed. REVERSED mls