Ex Parte Bergdoll

Board of Patent Appeals and Interferences

Mar 23, 2011

10835715 (B.P.A.I. Mar. 23, 2011)

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.
10/835,715 04/30/2004 James Bergdoll 174-5 9455
24336 7590 03/23/2011
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
KENNEDY, JOSHUA T
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/23/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES BERGDOLL
____________________

Appeal 2009-011825
Application 10/835,715
Technology Center 3600
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011825
Application 10/835,715
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
5, 7-9, 12 and 322. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a fence covering system. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A fence covering system, comprising:
a frame configured and dimensioned for covering a
portion of an existing fence, wherein the frame is adapted to
receive a fence pole, and adapted to receive a panel;
the panel having edges supported by the frame such that
the frame encloses at least a top edge of the panel, the panel
providing a visual effect; and
a connector for being disposed on the frame or on a
portion of the fence, the connector providing an attachment
point for the frame, wherein the connector includes split half
portions adapted to connect over a fence pole.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Larsen
Vollink
Simioni
US 4,773,175
US 5,457,911
US 6,152,428
Sep. 27, 1988
Oct. 17, 1995
Nov. 28, 2000

REJECTIONS
Claims 1-5, 7-9 and 32 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Simioni. Ans. 5.

2 Claim 6 has been cancelled.
Appeal 2009-011825
Application 10/835,715
3
Claims 1-5, 7 and 9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Larsen. Ans. 7.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Simioni and Vollink. Ans. 10.

OPINION
Appellant separately argues only the rejections of independent claims
1, 32 and dependent claim 12. Since we agree with the Examiner that
Simioni discloses each and every limitation of claim 1, we affirm the
Examiner’s rejection of claim 1, along with dependent claims 2-5 and 7-9, as
being anticipated by Simioni.
Appellant contends that the Examiner erred in rejecting claim 1 as
being anticipated by Simioni because Simioni is not related to a “fence
covering system.” Br. 6. Appellant contends that the structure that the
Examiner cites as the claimed “existing fence,” Simioni’s ends 26 and
intermediate rails 27-29, form part of Simioni’s fence system itself. Br. 6;
see also Ans. 5; Simioni, fig. 2. Appellant’s argument is not persuasive.
First, it has long been held that an intermediate product or article can
anticipate a claimed article even if the intermediate product is merely a stage
in the final production of a non-anticipatory article. See In re Mullin, 481
F.2d 1333, 1335-36, (CCPA 1973) (an article that is intended and
appreciated is no less anticipatory be it an intermediate structure rather than
an end use item (citing In re Herbert, 461 F.2d 1390, 1394 (CCPA 1972)).
We also agree with the Examiner’s claim interpretation in that the “existing
fence” is merely the object of intended use and not part of the claimed
covering system. Ans. 12.
Appeal 2009-011825
Application 10/835,715
4
Appellant additionally argues that Simioni fails to disclose the
claimed “connector” because they are part of Simioni’s panel 3. Br. 7. Again
we agree with the Examiner that the claim does not recite any limitations
precluding such an arrangement. Ans. 14-16. Simioni’s hook and strip 32,
35, are “for being disposed on” the rails, the structure read as the claimed
“fence.” They provide an attachment point for the J-strip 38, part of the
structure read as the claimed “frame.” And, since they can mate, they
include “split half portions” that overlay, and thus “connect over” rails or
“poles” 27-29. Simioni, fig. 2; col. 3, ll. 5-35.
Since Appellant’s argument concerning claim 12 is premised solely
on those arguments presented concerning claim 1 (Br. 8), we also affirm the
rejection of claim 12 as being unpatentable over Simioni and Vollink.
Regarding the rejection of claim 32, Appellant argues that the
Examiner erred by failing to establish that Simioni discloses “an adjustable
portion, which extends longitudinally along the existing fence to provide a
connection position for a plurality of frames.” Br. 7-8; see, e.g., Spec. fig.
4B. The Examiner cites Simioni’s holes or perforations 36 as the claimed
“adjustable portion.” Ans. 7. The Examiner does not explain, and the
reference does not make apparent, how these holes or perforations “extend[]
longitudinally along the existing fence to provide a connection position for a
plurality of frames.” Simioni’s holes or perforations do not extend
“longitudinally”, nor are they capable of connecting to more than one J-strip.
Thus, we cannot sustain the Examiner’s rejection of claim 32 as being
anticipated by Simioni.
Regarding the rejection of claim 1 as being anticipated by Larsen,
Appellant’s sole argument is based upon Larsen’s lack of a “fence” or
“fence covering system.” Br. 8. This argument is not persuasive. The
Appeal 2009-011825
Application 10/835,715
5
Examiner correctly identified these limitations as intended use limitations
and reasonably found that Larsen’s display apparatus would be capable of
performing the claimed function. Ans. 17-18. Appellant has not provided
sufficient evidence or arguments to establish this finding is in error. See,
e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function); see also In re Swinehart, 439 F.2d 210, 213
(CCPA 1971) (“[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.”). Furthermore, “if the claim preamble, when read in the context
of the entire claim, recites limitations of the claim, or, if the claim preamble
is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim
preamble should be construed as if in the balance of the claim.” Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
If the body of a claim fully and intrinsically sets forth all of the limitations of
the claimed invention, and the preamble merely states, for example, the
purpose or intended use of the invention, rather than any distinct definition
of any of the claimed invention’s limitations, then the preamble is not
considered a limitation and is of no significance to claim construction. Id.
Larsen’s display apparatus becomes a “fence covering system” by
being applied to a fence. The Examiner correctly found that there is no
structural distinction between the subject matter described by claim 1 and
Larsen’s device. Thus the Examiner’s rejection of claim 1, along with
dependent claims 2-5, 7 and 9, as being anticipated by Larsen is affirmed.
Appeal 2009-011825
Application 10/835,715
6

DECISION
The Examiner’s rejection of claims 1-5, and 7-9 as being anticipated
by Simioni is affirmed.
The rejection of claim 12 as being unpatentable over Simioni and
Vollink is affirmed.
The Examiner’s rejection of claim 32 as being anticipated by Simioni
is reversed.
The Examiner’s rejection of claims 1-5, 7 and 9 as being anticipated
by Larsen is affirmed.

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

nlk

TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville NY 11747