Ex Parte Biagi et al

Patent Trial and Appeal Board

Nov 7, 2017

11876799 (P.T.A.B. Nov. 7, 2017)

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.
11/876,799 10/23/2007 Angela Rose Biagi 60137-519PUS1;
136-3085-U
6865
82074 7590 11/09/2017
Carlson, Gaskey & Olds/Masco Corporation
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
LEE, CHEE-CHONG
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGELA ROSE BIAGI and VICTOR HOERNIG
Appeal 2016-003956
Application 11/876,799
Technology Center 3700
Before THOMAS F. SMEGAL, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 11—13 and 17-40. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as MASCO CORPORATION
OF INDIANA. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated March 18, 2015
(“Final Act.”), as supplemented by the Advisory Action mailed June 2,
2015.
Appeal 2016-003956
Application 11/876,799
CLAIMED SUBJECT MATTER
Claims 11 and 23 are the independent claims on appeal. Claim 11,
reproduced below, is illustrative of the subject matter on appeal.
11. A shower surround wall comprising:
a molded planar wall member for attaching directly to a
structure wall and in parallel thereto;
an opposing wall facing opposite said molded planar side
wall;
at least one shelf extending away from said molded planar
wall member and toward said opposing wall, said shelf having a
shelf end most distal from said molded planar wall member, and
wherein said at least one shelf is open to a direction facing into
the shower surround wall, and wherein said at least one shelf
extends only partially across a width of said molded planar wall
member; and
a forward wall extending away from said molded planar
wall member, said forward wall having a top, said top having a
first inner end, and a bottom having a second inner end, said first
and second inner ends facing into said shower surround wall, and
an inner edge extending linearly along a length between said first
inner end and said second inner end, said inner edge extending
from said molded planar wall member for a distance that is at
least as far as said shelf end and positioned on a sided of said at
least one shelf wherein the forward wall faces toward a location
outside of said shower surround wall when said molded planar
wall member is mounted to the structure wall, such that said
forward wall at least partially blocks a sight line to said at least
one shelf.
REJECTIONS
I. Claims 11—13 and 17-40 stand rejected under 35U.S.C. § 112,
second paragraph, as being indefinite.
II. Claims 11—13, 17—19, 21—28, and 30-38 stand rejected under
35 U.S.C. § 102(b) as anticipated by Lanius (US D522,636 S; June 6, 2006).
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Application 11/876,799
III. Claims 11—13, 18—25, 27—37, 39, and 40 stand rejected under
35 U.S.C. § 102(b) as anticipated by Seymour (US Des. 243,849; issued
March 29, 1977).
IV. Claims 39 and 40 stand unpatentable over 35 U.S.C. § 103(a) as
unpatentable over Lanius and Belanger (US 2009/0038070 Al; February 12,
2009).
ANALYSIS
Rejection I
Regarding independent claims 11 and 23, the Examiner correctly finds
that the claim term “said molded planar side wall” lacks antecedent basis.
Final Act. 2. The Examiner refused entry of Appellants’ amendment
deleting the term “side” (see Amendment dated May 18, 2015), because the
Examiner correctly determined that the remaining term “said molded planar
wall” also lacks antecedent basis. See Adv. Act. 1; Ans. Appellants intend
“said molded planar side wall” to refer back to “said molded planar wall
member” (see Reply Br. 4 (proposing to amend claim 11 as follows: “an
opposing wall facing opposite said molded planar side wall member”)), and
Appellants are amenable to amending the claims to correct this lack of
antecedent basis. Appeal Br. 3^4; Reply Br. 1—2. However, until
Appellants’ amendment is entered, it is unclear whether “said molded planar
side wall” refers to the claimed “molded planar wall member” or to a side
wall that is not the same wall as the claimed molded planar wall member.
For example, the Specification discloses that each of the two end walls 22
and rear wall 24 may separately meet the claim language of “a molded
planar wall member for attaching directly to a structure wall and in parallel
thereto,” and the end and rear walls 22, 24 are also separately disclosed from
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Appeal 2016-003956
Application 11/876,799
forward wall 28 and shelves 30. See Spec. Ill (“end walls 22 may be
molded of plastic into a planar shape to be secured to an underlying
structure. The rear wall 24 is similarly formed. ... In some applications,
part of the rear wall can be formed with the end walls . . . .”); see also id. 1
12. In view of the Specification, the claimed “molded planar side wall” may
correspond to rear wall 24, either end wall 22, or a rear wall 24 having end
wall 22 formed as a part.
Accordingly, we sustain the Examiner’s rejection of independent
claims 11 and 23, and claims 12, 13, 17—22, and 24-40 under 35 U.S.C. §
112, second paragraph, as being indefinite. Ex Parte Miyazaki, 89 USPQ2d
1207, 5 (BPAI 2008) (precedential) (“if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable ... as indefinite”).
Rejection II
We decline to reach the merits of the anticipation rejection, because to
do so requires a speculative assumption concerning whether the claim term
“molded planar side wall” refers back to, and thus, is the same structure as,
“a molded planar wall member,” or whether the claim term “molded planar
side wall” is itself a structure having the characteristic of being a side wall
different from the molded planar wall member. See In re Steele, 305 F.2d
859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.); In re
Morris, 111 F.3d 1048, 1056 (Fed. Cir. 1997) (“[i]t is the applicants’ burden
to precisely define the invention, not the PTO's.”); see also, e.g., Ans. 4—5
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Appeal 2016-003956
Application 11/876,799
(referencing annotated Figures 1 and 3 of Lanius and identifying a molded
planar wall member as a different structure from a molded planar side wall);
See, e.g., Reply Br. 5 (arguing that “there is no ‘opposing wall’ found in
Lanius that [] faces opposite of the [EJxaminer’s molded planar wall
member,” based on Appellants’ interpretation that the molded planar wall
member identified by the Examiner must be the same structure as the
claimed molded planar side wall identified by the Examiner).
Rejection III
Regarding independent claim 11, The Examiner finds, inter alia, that
Seymour discloses the claimed molded planar wall member and opposing
wall facing opposite said molding planar side wall, and also a forward wall,
as claimed. Final Act. 11—12. The Examiner’s annotated Figure 4 of
Seymour is reproduced below. Id. at 19.
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Appeal 2016-003956
Application 11/876,799
Figure 4 of Seymour depicts a cross-sectional view of the combination
bathtub and shower stall as depicted in the front elevation view of
Seymour’s Figure 2 (see Seymour 1, (Description)), wherein the Examiner
has identified a “shower end wall of molded planar wall member” and also a
“forward wall.” Id. at 19. The Examiner clarifies that it is the portion of the
stall that is within the Examiner’s “rectangle with rounded comers” the
Examiner finds corresponds to the claimed forward wall. Ans. 14. The
Examiner further identifies the claimed inner edge of the forward wall in the
Examiner’s annotated Figure 4 of Seymour as set forth in the Examiner’s
Answer, which is reproduced below.
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As described supra, Figure 4 of Seymour depicts a cross-sectional view of
the combination bathtub and shower stall as depicted in the front elevation
view of Seymour’s Figure 2 (see Seymour 1, (Description)), wherein the
Examiner has identified an “inner edge extending from said molded planar
wall member.” Id. at 14. Notably, the Examiner does not identify a molded
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Appeal 2016-003956
Application 11/876,799
planar side wall, however, Appellants present no arguments which require
an interpretation of claim term “molded planar side wall.”
Appellants argue that “it is unclear what specifically the [Ejxaminer is
arguing corresponds to the claimed ‘forward wall.’” Reply Br. 11.
However, we determine that the wall structure as “circled” by the Examiner
in the annotated Figure 4 of Seymour supra, is sufficient to establish a prima
facie case of anticipation.
Appellants also argue that
[t]he structure identified by the [EJxaminer as corresponding to
the claimed “forward wall” does not extend away from the
molded planar wall member as defined in the claim. Further, the
inner edge of the [Ejxaminer’s “forward wall” certainly does not
extend from said molded planar wall member as the portion
identified by the [EJxaminer is behind the [Ejxaminer’s molded
planar wall member.
Appeal Br. 9; see also Reply Br. 10
Claim 11 requires “a forward wall extending away from said molded
planar wall member” and having “an inner edge extending linearly along a
length between [a first inner end of a top of said forward wall and a second
inner end of a bottom of said forward wall], said inner edge extending from
said molded planar wall member . . . .” Although it appears that there is a
vertical inner edge of the forward wall, as identified by the Examiner, which
extends linearly along a length from a first inner end of the top of the
forward wall to a second inner end of the bottom of the forward wall, at a
junction with the molded planar wall member, as identified by the Examiner,
we are persuaded by Appellants’ argument that the inner edge identified by
the Examiner in the annotated Figure 4 of Seymour supra is not at such a
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Application 11/876,799
junction and therefore, does not extend from the molded planar wall
member, as claimed.
The Examiner relies on the same findings with respect to independent
claim 23. Final Act. 13—14.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claims 11 and 23, and dependent claims 12, 13, 17—22, and 24—
40.
Rejection IV
Claims 39 and 40 depend from independent claims 11 and 23. The
Examiner appears to rely on Lanius for the limitations of claims 11 and 23
as set forth in Rejection II. Final Act. 21—23. Therefore, for the reasons set
forth supra with respect to Rejection II, we decline to reach a decision
regarding the Examiner’s rejection of claims 39 and 40.
DECISION
The Examiner’s rejection of claims 11—13 and 17-40 under 35 U.S.C.
§112, second paragraph, is affirmed.
We do not reach a decision regarding the Examiner’s rejection of
claims 11—13, 17—19, 21—28, and 30—38 under 35 U.S.C. § 102(b) as
anticipated by Lanius.
The Examiner’s rejection of claims 11—13, 18—25, 27—37, 39, and 40
under 35 U.S.C. § 102(b) as anticipated by Seymour is reversed.
We do not reach a decision regarding the Examiner’s rejection of
claims 39 and 40 under 35 U.S.C. § 103(a) as unpatentable over Lanius and
Belanger.
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Appeal 2016-003956
Application 11/876,799
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)(l)(iv).
AFFIRMED
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