Ex Parte BigelowDownload PDFPatent Trial and Appeal BoardSep 25, 201310904729 (P.T.A.B. Sep. 25, 2013) Copy Citation 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. 10/904,729 11/24/2004 Herbert Mark Bigelow A4-1806 1729 22186 7590 09/25/2013 MENDELSOHN, DRUCKER, & DUNLEAVY, P.C. 1500 JOHN F. KENNEDY BLVD., SUITE 312 PHILADELPHIA, PA 19102 EXAMINER BAXTER, GWENDOLYN WRENN ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 09/25/2013 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 HERBERT MARK BIGELOW ____________ Appeal 2011-011908 Application 10/904,729 Technology Center 3600 ____________ Before GAY ANN SPAHN, ADAM V. FLOYD, and GEORGE R. HOSKINS, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011908 Application 10/904,729 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 13, 15, 17-20, 27-39, and 41-50.1 Claims 1-12, 14, 16, and 21-26 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Claimed Subject Matter The claimed subject matter relates to “devices for hanging objects such as framed pictures and paintings on a surface, such as a wall or other support structure,” and “[m]ore particularly, . . . to a hanging device formed to have a plurality of openings that provide adjustability in essentially any direction in the plane of the surface on which the device is to hang the object.” Spec. 1, para. [0004]. Claim 13, reproduced below, is illustrative of the appealed subject matter. 13. A device comprising a hanger and a fastener, the hanger being secured to a picture frame for hanging the frame from a generally vertical surface, the hanger comprising: a unitary body having a planar portion and at least one flange extending from the planar portion, the planar portion lying in a plane substantially parallel to a plane of the frame, the plane of the planar portion defining a first direction and a second direction transverse to the first direction, the planar portion being formed of a material, the at least one flange being secured to the frame; and 1 Appellant and the Examiner dispute whether claim 40 has been properly withdrawn from consideration as being drawn to a non-elected invention pursuant to a restriction requirement. See App. Br. 2 and Reply Br. 2; Ans. 2-3. However, the withdrawal of claim 40 from consideration relates to a petitionable, not an appealable, matter. See Manual of Patent Examining Procedure (MPEP) §§ 1002.02(c)(2) and 1201. As such, claim 40 is not part of this appeal. Appeal 2011-011908 Application 10/904,729 3 a plurality of closely-packed openings disposed in and uniformly distributed throughout the planar portion, the closely- packed openings being arranged in a two-dimensional pattern, each opening having an area, wherein the sum of the areas of all of the closely-packed openings exceeds the total surface area of material of the planar portion in which the closely-packed openings are disposed; wherein the fastener is elongated and has only first and second ends, the first end of the fastener is configured for insertion into the vertical surface, and the second end of the fastener is sized to be individually received in any one of the closely-packed openings without deforming the opening; and wherein the two-dimensional pattern comprises a plurality of alternating first and second rows of the closely- packed openings, the first and second rows are parallel to each other and extend in the first direction of the planar portion, are offset from each other in the first direction of the planar portion, and are uniformly spaced apart in the second direction of the planar portion, and spacing between each adjacent pair of the closely-packed openings within each of the first and second rows is substantially equal to spacing between the closely- packed openings of each adjacent pair of the first and second rows. Rejections and Objection The Examiner rejected claims 13, 15, 17-20, 27-38, and 41-50 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.2 2 We have consolidated that Examiner’s grounds of rejection on pages 4 and 5 of the Answer because both rejections are under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. In addition, we have removed claims 26 and 40 from our claim listing because claim 26 was cancelled by Appellant (App. Br. 2) and claim 40 was withdrawn from consideration by the Examiner (Ans. 2-3). Appeal 2011-011908 Application 10/904,729 4 The Examiner rejected claims 13, 15, 18-20, 27-29, 32-38, and 41-50 under 35 U.S.C. § 103(a) as unpatentable over Odems (NL 1006440 C2, published Jan. 5, 1999) and Rodseth (US 4,461,593, issued Jul. 24, 1984).3 The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as unpatentable over Odems, Rodseth, and Haugaard (US 2,688,901, issued Sep. 14, 1954). The Examiner also objected under 37 C.F.R § 175(d)(1) and MPEP § 608.01(o) to the Specification filed November 24, 2004 on the ground that the Specification failed to provide proper antecedent basis for the claim term “nested rows,” which is present in claims 31, 47, 48, and 50. The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for failure to comply with the written description requirement is related to the objection made by the Examiner to Appellant’s November 24, 2004 Specification. See Final Rej. 2 and 3. In particular, the Examiner objected under 37 C.F.R § 175(d)(1) and MPEP § 608.01(o) and rejected under 35 U.S.C. § 112, first paragraph, the same subject matter in the Specification and in the claims, respectively, on the ground that this subject matter is not supported in the original disclosure and the subject matter lacks antecedent basis in the Specification. 3 We have consolidated the Examiner’s grounds of rejection on pages 6 and 8 of the Answer because both rejections are based on the combination of Odems and Rodseth. In addition, we have removed claims 26 and 40 from our claim listing because claim 26 was cancelled by Appellant (App. Br. 2) and claim 40 was withdrawn from consideration by the Examiner (Ans. 2-3). Appeal 2011-011908 Application 10/904,729 5 OPINION Written Description Rejection Appellant argues claims 13, 15, 17-20, 27-30, 32-38, 41-47, and 49 as a group and we select independent claim 13 as the representative claim. See App. Br. 9-11 and Reply Br. 3-4; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 15, 17-20, 27-30, 32-38, 41-47, and 49 fall with claim 13. The Examiner finds that the claims contain subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. Ans. 4-5. More particularly, the Examiner determines that Appellant’s Specification lacks written descriptive support for claim 13’s recitation of “the sum of the areas of all of the closely-packed openings exceeds the total surface area of material of the planar portion in which the closely-packed openings are disposed.” Ans. 5; see also App. Br., Clms. App’x. Appellant argues that original drawing Figure 4 “clearly illustrates an example of this arrangement.” App. Br. 9. More particularly, Appellant argues that Figure 4 “shows that, with respect to surface area, the entire face of the planar portion consists mostly of the area of the openings, while not much of the planar portion consists of surface area of the material in which the openings are disposed.” Id. As further evidence, Appellant enlarges a copy of Figure 4 on page 10 of the Appeal Brief, measures the length and width of the generally planar base 44 as well as the “maximal diameter of one of the regular hexagonal openings” in order to calculate the area of the planar base and the total area of all of the hexagonal openings, and then subtracts the total area of the hexagonal openings from the area of Appeal 2011-011908 Application 10/904,729 6 the planar base to show that the area remaining of the planar base after subtraction is less than the total area of the hexagonal openings. App. Br. 10-11. Thus, Appellant concludes that Figure 4 is sufficient to provide support for claim 13’s disputed claim language. App. Br. 11. The Examiner responds that length and width dimensions measured by Appellant on page 10 of the Appeal Brief are not consistent with the Specification’s disclosure that “the base is stated to be about 25x25 mm up to about 40x40 mm.” Ans. 11 (citing Spec. 6, [Para 26]). In addition, the Examiner notes that “the [S]pecification fails to disclose the drawings are drawn to scale.” Id. Appellant replies that the Examiner has misconstrued the case law regarding drawing scale, because the Examiner’s determination that “the drawings cannot be used to show the relationship of hole area relative to the area of the surface in which the holes are formed” only applies “where scale is specifically being claimed.” Reply Br. 3 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l., 222 F.3d 951, 956 (Fed. Cir. 2000) (When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value.)). More particularly, Appellant argues that the rejected claims “recite total hole area relative to the total surrounding surface area, and so the scale of the drawings does not matter, because the relationship between hole area and surface area does not change with size.” Reply Br. 3-4. We are not persuaded by Appellant’s arguments. The Examiner correctly found that Appellant’s Specification does not disclose that its drawing figures are to scale. Without any indication that the drawing figures are to scale, there is no guarantee that the proportion between hole area and Appeal 2011-011908 Application 10/904,729 7 surface area does not change with size as argued by the Appellant. In other words, without an indication in the Specification that the drawing figures are to scale, it is possible that the drawings just provide a representation of the invention, but the hole area and surface area ratio cannot be relied upon as accurate, for example, as if scaled figures were provided. Accordingly, we sustain the Examiner’s rejection of independent claim 13, and claims 15, 17-20, 27-30, 32-38, 41-47, and 49 which fall therewith, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Written Description Rejection and Lack of Antecedent Basis Objection The Examiner determines that the Specification does not provide written descriptive support for the claim terminology of “nested” rows of the openings. Ans. 5. The Examiner relies on an ordinary and customary meaning of the verb “nested” to be “a series or set of similar things, each fitting within the one next larger.” Id. (citing Webster’s New World Dictionary, Second College Edition). Appellant argues the Figures 4 and 5 “clearly show nested rows of hexagonal openings, where the term ‘nested rows’ refers to the fact that a portion of a hexagonal opening in one row is disposed between two hexagonal openings in an adjacent row,” and it “is well-established that the drawings can also be used to satisfy the disclosure requirements.” App. Br. 12 (citing In re Berkman, 642 F.2d 427 (CCPA 1981) (citations omitted); In re Reynolds, 443 F.2d 384 (CCPA 1971); and In re Wolfensperger, 302 F.2d 950 (CCPA 1962). Appellant also argues that the Examiner’s proposed dictionary definition “is clearly contrary to . . . Appeal 2011-011908 Application 10/904,729 8 [Appellant’s S]pecification and drawings, which show hexagons of adjacent rows being disposed within one another in nested form.” Id. We are persuaded by Appellant’s arguments. The dictionary definition cited by the Examiner is to the verb form of nested. However, the adjective form of the word “nested” has an ordinary and customary meaning of “forming a sequence or hierarchy with each member contained in or containing the next.” Webster’s Third New International Dictionary, Unabridged, Merriam-Webster, Incorporated, © 1993, accessed at http://lionreference.chadwyck.com (last visited: September 15, 2013). Figures 4 and 5 of Appellant’s application depict hexagonal openings 48 in rows 50, 52, wherein the hexagonal openings 48 in one row 50 are nested with the hexagonal openings 48 in the adjacent row 52 in the sense of being formed in a sequence or hierarchy with each member (i.e., row 50 of nested hexagonal openings 48) contained in or containing the next (i.e., row 52 of nested hexagonal openings 48). Accordingly, we do not sustain the Examiner’s rejection of claims 31, 47, 48, and 50 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. With respect to the Examiner’s objection to the Specification under 37 C.F.R § 175(d)(1) and MPEP § 608.01(o) on the ground that the Specification failed to provide proper antecedent basis for the claim term “nested rows,” we note that ordinarily an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. However, to the extent that the objection to the Specification in the Final Rejection turns on the same issue as the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, for failure to comply with the written Appeal 2011-011908 Application 10/904,729 9 description requirement, our decision with respect to the rejection is dispositive as to the corresponding objection. Obviousness based on Odems and Rodseth Claims 13, 15, 18-20, 27-29, 32-38, and 41-47 Independent claims 13 and 32 both call for the sum of the areas of all of the closely-packed openings to exceed the total surface area of the remainder of the material of the planar portion in which the closely-packed openings are disposed or formed. App. Br., Clms. App’x. The Examiner did not make any findings with respect to whether the combination of Odems and Rodseth discloses that the sum of the areas of the openings exceeds the total surface area of the remaining planar portion. See Ans. 6-8. Appellant argues that neither of the cited references, i.e., Odems and Rodseth, disclose, teach or suggest the claim limitation with respect to the sum of the areas of the openings exceeding the remaining total surface area of the planar portion. App. Br. 14-15. Accordingly, we are constrained to not sustain the Examiner’s rejection of independent claims 13 and 32, and claims 15, 18-20, 27-29, 33- 38, and 41-47 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Odems and Rodseth. Claims 48-50 Independent 48 is directed to a hanger including, inter alia, “a body having a planar portion having a plurality of closely-packed openings formed therein, the openings arranged in a pattern defined as comprising nested rows of the openings.” App. Br., Clms. App’x. Appeal 2011-011908 Application 10/904,729 10 The Examiner did not make any findings with respect to whether the combination of Odems and Rodseth discloses that “the openings arranged in a pattern defined as comprising nested rows of the openings.” Ans. 6-8. Emphasis by italics added. Appellant argues that neither Rodseth nor Odems discloses nested rows of openings. App. Br. 20-22. Accordingly, we are constrained to not sustain the Examiner’s rejection of independent claim 48, and claims 49 and 50 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Odems and Rodseth. Obviousness based on Odems, Rodseth, and Haugaard The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as being unpatentable over Odems, Rodseth, and Haugaard. Ans. 9. Appellant did not list the rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Odems, Rodseth, and Haugaard in the “Grounds of Rejection to be Reviewed on Appeal” section of the Appeal Brief. App. Br. 8. As Appellant presents no arguments of error regarding this rejection, we summarily sustain this rejection. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). DECISION We REVERSE the Examiner’s rejections of: claims 31, 47, 48, and 50 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and claims 13, 15, 18-20, 27-29, 32-38, and 41-50 under 35 U.S.C. § 103(a) as unpatentable over Odems and Rodseth. Appeal 2011-011908 Application 10/904,729 11 We AFFIRM the Examiner’s rejection of claims 13, 15, 17-20, 27-30, 32-38, 41-47, and 49 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We SUMMARILY AFFIRM the Examiner’s rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over Odems, Rodseth, and Haugaard. 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 Klh Copy with citationCopy as parenthetical citation