Ex Parte Carnevali

Patent Trial and Appeal Board

Apr 24, 2017

12589737 (P.T.A.B. Apr. 24, 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.
12/589,737 10/28/2009 Jeffrey D. Carnevali NPI-105 2616
24692 7590
Charles J. Rupnick
4742 - 42nd Ave. SW
Suite 494
Seatlle, WA 98116-4553
04/26/2017 EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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):
rupnick@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. CARNEYALI
Appeal 2015-004292
Application 12/589,737
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and BRENT M. DOUGAL,
Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from a final rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-004292
Application 12/589,737
CLAIMED SUBJECT MATTER
The claims are directed to a magnetically enhanced clipboard and a
method of forming such a clipboard. Claims 1, 7, and 12 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A magnetically enhanced clipboard, comprising:
a clipboard casing defining an outer wall and an inner wall,
the outer wall comprising means for retaining a pad of pages of
writing paper proximate to a writing surface thereof;
an interior cavity defined by the inner wall and
substantially enclosed thereby; and
a magnet retained within the interior cavity in a position
substantially against the inner wall proximate to the outer wall
adjacent to the writing surface.
REJECTIONS
Claims 1—6 are rejected under 35 U.S.C. § 102 (a) as being anticipated
by Summerhayes (US 2009/0206592 Al, pub. Aug. 20, 2009).
Claims 7—20 are rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Summerhayes and Weinhaus (US 4,287,676, iss. Sept. 8,
1981).
OPINION
Appellant argues that the rejections are improper because
Summerhayes does not quality as prior art. See Appeal Br. 9-13. The
Examiner rejects claims 1—6 over Summerhayes under 35 U.S.C. § 102 (a).
Final Act. 3. The relevant portion of 35 U.S.C. § 102 states “A person shall
be entitled to a patent unless — (a) the invention was . . . described in a
printed publication in this . . . country, before the invention thereof by the
applicant for patent.”
2
Appeal 2015-004292
Application 12/589,737
Summerhayes was published as a printed publication on August 20,
2009. Summerhayes, Title Page. The present Application was filed on
October 28, 2009. Spec., Statement of Deposit. Thus, if Appellant’s
invention occurred before August 20, 2009 Summerhayes does not qualify
as prior art under 35 U.S.C. § 102 (a).
In the context of 35 U.S.C. § 102 (b), the section after § 102 (a), but
also defining when “[a] person shah be entitled to a patent,” the Supreme
Court has provided guidance concerning how to determine when “invention”
occurs. Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998). That case dealt with
an offer of sale for a device for mounting and removing semiconductor chip
carriers. Id. at 58. The inventor “provided the manufacturer with a
description and drawings that had ‘sufficient clearness and precision to
enable those skilled in the matter’ to produce the device,” before reducing
the invention to practice, such as by making and testing a prototype. Id. at
63 (