Ex Parte Burke et al

Patent Trial and Appeal Board

Oct 31, 2012

11156344 (P.T.A.B. Oct. 31, 2012)

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.
11/156,344 06/17/2005 David J. Burke 139650.48 6576
27162 7590 10/31/2012
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
10/31/2012 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 DAVID J. BURKE and MARTIN P. BURNS
____________

Appeal 2010-010541
Application 11/156,344
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL C. ASTORINO, and JEREMY M.
PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010541
Application 11/156,344

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 3, 5-11, and 13-23. Claims 2, 4, and 12 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a mounting arrangement for a
glass panel. Claims 1, 9, 15, 21, and 22 are independent. Claim 1,
reproduced below, is illustrative:
1. A mounting clamp for a glass panel, said clamp including
a pair of plates defining a gap for receiving a glass panel
therebetween, at least one of said plates having a ledge
extending only along a minor fraction of the horizontal length
of said one plate for receiving a bottom edge of the glass panel
thereon; and
means for securing said plates together to sandwich the
glass panel therebetween.

REJECTIONS
Appellants seek review of the following rejections:
1. Claims 3, 11, and 15-20 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. Claims 1, 3, and 15-17 are rejected under 35 U.S.C. § 102(e) as being
anticipated by McGregor (US 2006/0097237 A1; pub. May 11, 2006).
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3. Claims 1, 7, 9, 11, and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Loggen (DE 3531674 A1; pub. March 27, 1986).
4. Claims 5, 6, 13, and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loggen.
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Loggen and Dolan (US 5,879,789; iss. March 9, 1999).
6. Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over McGregor and Loggen.
7. Claims 15, 18-20, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Loggen and McGregor.

OPINION
Indefiniteness – Claims 3, 11, and 15-20
The Examiner determined that the “plane” recited in claims 3, 11, and
15-20 is “ambiguous and unclear” because multiple planes exist for the
claimed plate and “no single plane [has] been described” in the claims. Ans.
5. Appellants have failed to provide convincing arguments regarding why a
single plane is defined by the claimed plate. Instead, Appellants simply state
“[s]ee Fig. 3 in this respect illustrating the ledge 21 on the plate 14 along the
bottom edge of the plate 14 and below the plane of the other plate” without
further explanation. Br. 8.
“[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
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Application 11/156,344

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metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). The claimed plate could include planes defined at upper and
lower ends of the plate and at side faces of the plate. Since two or more
planes on the plate could plausibly meet the claimed “plane”, it is unclear
which plane is referred to in the claims. Therefore, we agree with the
Examiner that the claims are indefinite. Accordingly, we sustain the
rejection of claims 3, 11, and 15-20 under 35 U.S.C. § 112, second
paragraph.

Anticipation – Claims 1, 3, and 15-17 – McGregor
Claim 1
Claim 1 recites a mounting clamp for a glass panel and includes “a
pair of plates defining a gap for receiving a glass panel” with “one of said
plates having a ledge extending only along a minor fraction of the horizontal
length of said one plate.” The Examiner cites the lip (135) from McGregor
as anticipating the claimed ledge. Ans. 6. Appellants’ sole contention
regarding the rejection of claim 1 is that the interpretation of “minor
fraction” applied by the Examiner is in error. Br. 11. Specifically,
Appellants argue that “[b]y definition, a minor fraction is one that is less
than ½ and a major fraction is one that is greater than ½.” Id. The Examiner
asserts that the broadest reasonable interpretation of a “minor fraction” of a
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length is simply a portion less than the entire length. Ans. 15. Based on our
review of the record, we agree with the Examiner.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellants have failed to
provide any evidence that the term “minor fraction” has any special meaning
and instead simply assert that “a minor fraction is one that is less than ½.”
Br. 11. Appellants’ Specification also fails to define “minor fraction.”
Instead, the term is simply referred to in the Specification without further
discussion. Appellants’ drawing figures also do not provide any support for
Appellants’ proposed definition of “minor fraction.” For example, in
reviewing Appellants’ Figure 1, it is unclear that the ledge (21) only extends
less than one-half of the horizontal length of the plate (15) as would be
required according to Appellants’ proposed definition of “minor fraction.”
For these reasons, we decline to adopt Appellants’ proffered definition of
“minor fraction” as being less than one-half.
Accordingly, we agree with the Examiner’s interpretation of a “minor
fraction” of a length simply being less than the entire length. Ans. 15.
Applying this definition, the ledge (lip 135) in McGregor extends only along
a minor fraction of the length of the plate (133) because the extent of the
ledge (lip 135) is less than the entire extent of the plate (133). Therefore, we
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Application 11/156,344

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sustain the rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated
by McGregor.
Claims 3 and 15-17
Because we found that claims 3 and 15-17 and the terms used therein
are indefinite, a determination of the scope of the claims would require us to
resort to considerable speculation as to the meaning of the terms employed
and assumptions as to the scope of the claims. Therefore, any determination
on the merits of the Examiner’s anticipation rejection of claims 3 and 15-17
is imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). As such,
we are constrained to reverse, pro forma, the Examiner’s rejection of claims
3 and 15-17 under 35 U.S.C. § 102(e) as being anticipated by McGregor.
We hasten to add that this is a procedural reversal rather than one based
upon the merits of the anticipation rejection.

Anticipation – Claims 1, 7, 9, 11, and 21 – Loggen
Claims 1 and 7
Claim 1 requires “one of said plates having a ledge extending only
along a minor fraction of the horizontal length of said one plate.” The
Examiner determined that Loggen discloses each of the features from claim
1 including the claimed ledge “shown as the portion of clamp 3 abutting
glass 1 edge extending only along a minor fraction of a horizontal length.”
Ans. 7. Figures 1 and 2 from Loggen were annotated and rotated ninety
degrees on page 12 of the Final Office Action to illustrate the Examiner’s
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Application 11/156,344

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of the teachings of Loggen is not in accord with requirements of 35 USC
§102 (e).” Id.
As noted by the Examiner, claim 1 is directed to a mounting clamp.
Ans. 16. The mounting clamp in Loggen can be oriented in a variety of
ways. When oriented as shown in the figures above, the ledge extends
horizontally. Appellants have failed to provide any convincing arguments as
to why the mounting clamp of Loggen could not be oriented as suggested by
the Examiner to provide a horizontal ledge.
The Examiner further notes that “the limitations concerning the clamp
with respect to the panel are considered functional.” Ans. 16. Claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997). In order to satisfy the functional limitations in an
apparatus claim, the prior art apparatus must be capable of performing the
claimed function. Id. at 1478.
Claim 1 requires the ledge to extend along “the horizontal length of
said one plate for receiving a bottom edge of the glass panel thereon.” When
oriented as shown in the figures above, the ledge in Loggen extends
horizontally and is capable of receiving a bottom edge of a glass panel
thereon. Appellants have not persuasively argued why the ledge in Loggen
is not capable of receiving a bottom edge of a glass panel thereon.
Therefore, we are not persuaded that the Examiner’s characterization of the
mounting clamp in Loggen is improper for an anticipation rejection.
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However, applying the Examiner’s characterization of Loggen and the
definition of “minor fraction” discussed above, we find that Loggen does not
have “a ledge extending only along a minor fraction of the horizontal length
of said one plate,” as required by claim 1. The Examiner does not provide
any indication of how the ledge in Loggen meets the “minor fraction”
limitation of claim 1. Instead, the ledge in Loggen appears to extend along
the entire horizontal length of the plate. For this reason, we do not sustain
the rejection of claim 1 under 35 U.S.C. § 102(b), and of claim 7 depending
therefrom, as being anticipated by Loggen.
Claim 9
Claim 9 includes features similar to claim 1 with the exception of the
“minor fraction” limitation found in claim 1 and the addition of “a pair of
resilient members disposed between said plates for resiliently engaging a
glass panel therebetween.” Appellants’ sole argument is directed to the
claimed ledge. Br. 14-15. We find that Loggen discloses the claimed ledge
for the reasons set forth above regarding claim 1. For this reason, we sustain
the rejection of claim 9 under 35 U.S.C. § 102(b) as being anticipated by
Loggen.
Claim 11
Because we found that claim 11 and the terms used therein are
indefinite, a determination of the scope of the claim would require us to
resort to considerable speculation as to the meaning of the terms employed
and assumptions as to the scope of the claim. Therefore, any determination
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Application 11/156,344

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on the merits of the Examiner’s anticipation rejection is imprudent. See In
re Steele, 305 F.2d at 862. As such, we are constrained to reverse, pro
forma, the Examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) as
being anticipated by Loggen. We hasten to add that this is a procedural
reversal rather than one based upon the merits of the anticipation rejection.
Claim 21
Claim 21 includes features similar to those found in claim 9 and
additionally recites “at least one of said gaskets having a removable central
section.” The gaskets appear to correspond to the “resilient members”
referenced earlier in the claim. The Examiner cites Loggen as anticipating
this feature, noting that “each of the gaskets have a central portion that may
be removed (e.g., cut out).” Ans. 8. For the reasons set forth above
regarding claim 1, we find that Loggen has the claimed ledge.
However, we do not find that Loggen discloses the “gaskets having a
removable central section,” as recited in claim 21. The Examiner does not
point to any particular portion of Loggen as supporting this position.
Instead, the Examiner relies on the ability to cut out the central portion of the
gasket in Loggen. Ans. 8. The Examiner appears to take the position that
any object able to be cut has a portion that is “removable.” In their
Specification, Appellants describe the “removable” nature of the central
portion of the gasket, noting that “central section 18′ . . . can be popped out
from the periphery of the gasket where not required” or, “[i]f additional
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compression is required to hold, for example, a thinner glass panel in place,
the central section 18′ of the gasket 18 remains in place.” Spec. 4.
Thus, the term “removable” is employed by Appellants to connote
removability in a non-destructive manner. Cutting the gasket in Loggen
would necessarily result in a destructive removal of the central portion. The
broader interpretation of “removable” employed by the Examiner is
incorrect because it would effectively expunge the word “removable” from
the claim language. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in
claims superfluous).
Accordingly, we do not find that Loggen discloses “at least one of
said gaskets having a removable central section,” as recited in claim 21. For
this reason, we do not sustain the rejection of claim 21 under 35 U.S.C. §
102(b) as being anticipated by Loggen.

Obviousness – Claims 5, 6, 13, and 14 – Loggen
Claims 5 and 6
Claims 5 and 6 depend from claim 1. The stated basis for the
rejection of claims 5 and 6 does not remedy the deficiencies set forth above
regarding the rejection of claim 1. Therefore, we do not sustain the rejection
of claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable over
Loggen for similar reasons.
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Claims 13 and 14
Claim 13 depends from claim 9 and further defines each plate having
“a flange with a rounded backside to abut a cylindrical surface of a vertical
support.” Claim 14 depends from claim 13 and further defines an adapter
having a “cylindrical surface abutting each said flange” and “a flat
peripheral surface . . . to abut a flat surface of a vertical support.” In the
rejection of claims 13 and 14, the Examiner acknowledges that Loggen does
not disclose the claimed features and instead discloses “the plates having a
flat surface and an adapter having a flat surface abutting each flange and a
cylindrical surface on a back side.” Ans. 9. The Examiner concludes that:
it would have been obvious to one of ordinary skill in the art, at
the time of the invention, to provide the plates with a
cylindrical surface and the adapter with a corresponding plate
mating surface while having a flat surface on an opposite side,
since mere reversal of the essential working parts involves only
routine skill in the art and performs substantially the same
function in substantially the same way as the inverse without
any new or unexpected results.
Id.
In response, Appellants point to the arguments presented regarding
claims 5 and 6. Br. 17-18. As related to claim 13, Appellants argue that the
modification would not be obvious “since the vertical support 2 of Loggen
would remain cylindrical and an adapter 11 with a flat back could not be
mounted thereon.” Br. 17. The same argument is provided in response to
the rejection of claim 14. Id.
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However, the Examiner explains that “the parts were rearranged so
that the shape of the plate would correspond to the shape of a column.” Ans.
19 (emphasis added). Appellants’ arguments directed to the inability of the
flat back of the modified plate or adapter to mount to a cylindrical support
are unpersuasive because the Examiner has not suggested mounting the
modified plate to a cylindrical support. Instead, the Examiner has modified
the shape of the plate to correspond to the shape of a column (e.g., a square
column). Appellants have failed to persuasively argue why one skilled in
the art would not modify the shape of the plate to correspond to the shape of
a column. For these reasons, we sustain the rejection of claims 13 and 14
under 35 U.S.C. § 103(a) as being unpatentable over Loggen.

Obviousness – Claim 8 – Loggen/Dolan
Claim 8 depends from claim 1. The stated basis for the rejection of
claim 8 does not remedy the deficiencies set forth above regarding the
rejection of claim 1. Therefore, we do not sustain the rejection of claim 8 in
view of the reasons set forth above regarding claim 1.

Obviousness – Claim 10 – McGregor/Loggen
Claim 10 depends from claim 9 and further defines the “ledge
extend[ing] along a minor fraction of a horizontal length of said one plate.”
The Examiner relies on McGregor as disclosing each of the features from
claim 10 with the exception of the resilient members (found in claim 9).
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Ans. 10. Instead, the Examiner cites Loggen as disclosing the resilient
members and concludes that it would have been obvious to include the
resilient members in the McGregor device “so that when compressed, the
members maintain the glass panel in a friction relation while providing at
least some shock absorbency.” Ans. 11.
Appellants argue that “placing resilient members on the plates 131, 133
would be contrary to the teachings of McGregor and not obvious to one of
ordinary skill in the art.” Br. 20. In support of this statement, Appellants
cite to paragraph [0041] of McGregor. Appellants provide no further
explanation as to the relevance of this paragraph to their stated position.
Paragraph [0041] of McGregor states that “lips 135 support the weight
of panel 140” and “there is no need for a great deal of pressure on panel
140.” We see no reason why one skilled in the art would not incorporate the
resilient members in McGregor to provide shock absorbency as suggested by
the Examiner. More importantly, we do not see how the addition of resilient
members would be contrary to this disclosure in McGregor. For these
reasons, we sustain the rejection of claim 10.

Obviousness – Claims 15, 18-20, 22, and 23 – Loggen/McGregor
Claims 15 and 18-20
Because we found that claims 15 and 18-20 and the terms used therein
are indefinite and a determination of the scope of the claims would require
us to resort to considerable speculation as to the meaning of the terms
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employed and assumptions as to the scope of the claims, any determination
on the merits of the Examiner’s obviousness rejection is imprudent. See In
re Steele, 305 F.2d at 862. As such, we are constrained to reverse, pro
forma, the Examiner’s rejection of claims 15 and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over Loggen and McGregor. We hasten to add that
this is a procedural reversal rather than one based upon the merits of the
obviousness rejection.
Claims 22 and 23
Claim 22 essentially includes a combination of the features found in
claims 9, 13, and 14. Although the combination of Loggen and McGregor is
cited in the rejection of claim 22, it appears that the rejection is based solely
on Loggen, similar to the rejection of claims 9, 13, and 14. Appellants assert
the same arguments for claim 22 as were set forth regarding claims 9, 13,
and 14. Br. 23. We sustain the rejection of claim 22 for the reasons set forth
above regarding the rejection of claims 9, 13, and 14. Claim 23 depends
from claim 22 and is not argued separately. Therefore, claim 23 falls with
claim 22 and we sustain the rejection of claim 23 under 35 U.S.C. § 103(a)
as unpatentable over Loggen and McGregor.

DECISION
We AFFIRM the rejection of claims 3, 11, and 15-20 under 35 U.S.C.
§ 112, second paragraph.
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We AFFIRM the rejection of claim 1 under 35 U.S.C. § 102(e) as
being anticipated by McGregor.
We REVERSE the rejection of claims 3 and 15-17 under 35 U.S.C.
§ 102(e) as being anticipated by McGregor.
We REVERSE the rejection of claims 1, 7, 11, and 21 under 35
U.S.C. § 102(b) as being anticipated by Loggen.
We AFFIRM the rejection of claim 9 under 35 U.S.C. § 102(b) as
being anticipated by Loggen.
We REVERSE the rejection of claims 5 and 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Loggen.
We AFFIRM the rejection of claims 13 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Loggen.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Loggen and Dolan.
We AFFIRM the rejection of claim 10 under 35 U.S.C. § 103(a) as
being unpatentable over McGregor and Loggen.
We REVERSE the rejection of claims 15 and 18-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Loggen and McGregor.
We AFFIRM the rejection of claims 22 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Loggen and McGregor.
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).
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AFFIRMED-IN-PART

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