Ex Parte Durante

Patent Trial and Appeal Board

Sep 11, 2017

13953802 (P.T.A.B. Sep. 11, 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.
MRD.P.l 1007
EXAMINER
DUCKWORTH, BRADLEY
ART UNIT PAPER NUMBER
3632
MAIL DATE DELIVERY MODE
13/953,802 07/30/2013 Marc R. Durante
26360 7590 09/11/2017
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
First National Tower, Suite 400
106 South Main Street
Akron, OH 44308-1412
09/11/2017 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 MARC R. DURANTE
Appeal 2016-005834
Application 13/953,802
Technology Center 3600
Before JUSTIN BUSCH, JAMES W. DEJMEK, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-005834
Application 13/953,802
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent claims. The claims relate generally
to mounting a rear surface of an item to a wall. Spec. 11, Figs. 7, 10, 15.
Claim 1 is reproduced below:
1. A method for mounting an item to a wall, the item having a rear
surface to be mounted facing a wall, the rear surface having a mounting
structure including: (a) a rest surface that, in use, rests on a support
structure affixed to the wall, and (b) a feed opening that serves as a
guide for the placing of the rest surface on the support structure, the
method comprising the steps of:
providing a mounting dowel having a body extending from a
mounting end to a marking end, the body being formed of a
conformable material proximate said mounting end;
providing a marking substance at said marking end of said body;
securing the mounting dowel to the item by securing the
mounting dowel at the mounting structure by engaging the conformable
material proximate the mounting end with the mounting structure, as
guided by the feed opening, thereby compromising said conformable
material by the contours of the mounting structure proximate the rest
surface such that the conformable material is conformed to the contours
proximate the rest surface and is held thereby; and
after said step of securing the mounting dowel to the item,
pressing the marking substance against the wall to which the item is to
be mounted to thereby leave a mark at a location for affixing a support
structure.
REJECTIONS1
Claims 1—6, 10-16, and 20 stand rejected under 35 U.S.C. § 102(a)(2)
as being anticipated by Watts (US 4,837,942; June 13, 1989). Final Act. 4—
5.
1 Claims 1—20 were rejected as indefinite under 35 U.S.C. § 112(b). Final
Act. 3^4. The Examiner withdrew that rejection. Ans. 5—6.
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Appeal 2016-005834
Application 13/953,802
Claims 7—9 and 17—19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of Watts. Final Act. 6—7.
OPINION
The Examiner finds Watts discloses each limitation of independent
claims 1 and 11. Final Act. 4—5. Appellant argues Watts does not disclose
the body of the dowel “being formed of a conformable material.” App.
Br. 5—8. In particular, Appellant argues Watts’s O-ring does not disclose the
recited “conformable material” because it is a “separate and distinct element
from any mounting dowel taught therein.” Id. at 6.
Appellant acknowledges that Watts’s centering punches “might be
considered dowel-like,” but argues the centering punches are not formed of a
conformable material and Watts’s “O-ring does not—and logically cannot—
form a part of the centering punch.” Id. Appellant further argues
“[pjrosecution history estoppel requires an interpretation such that the O-
ring member of Watts—as a separate and distinct member—cannot satisfy
the claimed mounting dowel having a body formed of a conformable
material proximate its mounting end.” Id.
Appellant further contends no part of Watts’s centering punch “is
compromised by the contours of any mounting structure,” asserting that
Watts, therefore, does not disclose the recited limitation of “compromising
said conformable material by the contours of the mounting structure
proximate the rest surface.” Id. at 7—8. Appellant contends that Watts’s O-
ring is compressed against the side wall of the mounting structure such that
“Watts fails to teach a conformable material that forms a portion of a
mounting dowel and is compromised by the contours of the mounting
structure, as claimed.” Id. This argument, however, is essentially a
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Appeal 2016-005834
Application 13/953,802
restatement of Appellant’s argument that Watts’s O-ring is not a part of the
recited mounting dowel.
Therefore, the issue before us is whether Watts’s discloses a
“mounting dowel having a body . . . formed of a conformable material
proximate said mounting end.” The Examiner finds Watts’s O-ring
discloses a mounting dowel body formed of a conformable material because
the claim requires only that “the portion of the body proximate the mounting
end must be formed of a conformable material.” Ans. 7. The Examiner
finds the recited language does not require the mounting body to be a “single
unitary, or one-piece element.” Id. at 6—7.
We agree with Appellant that “[f]or a body to be formed of a
conformable material it must, quite simply, be formed of that conformable
material.” Reply Br. 2. This statement, however, provides no clarity
regarding the disputed issue. Appellant then states that although “the
mounting dowel may not have to be formed of a single unitary piece, its
body must be formed of a conformable material proximate its mounting
end.” Id. This is also an accurate statement of what the claims recite.
We disagree, however, with Appellant’s assertion that the claim does
not encompass “a separate and distinct O-ring placed on a mounting dowel.”
Reply Br. 2. As Appellant points out, the claim merely requires that the
mounting dowel’s body be “formed of a conformable material proximate
said mounting end.'” The claim does not recite that the body is formed only
of a conformable material, but simply that proximate the mounting end, the
body is formed of a conformable material. To the extent Appellant is
arguing that the mounting dowel’s body cannot be formed of more than one
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Appeal 2016-005834
Application 13/953,802
material, Appellant has not provided persuasive argument or evidence.2 On
the contrary, we find Appellant’s Specification indicates that the
conformable material may form all or only a part of the mounting dowel’s
body. Spec. 147 (“In some embodiments, the entirety of the body 32 may
be formed of the conformable material, but... it is sufficient that only an
area proximate the mounting end 36 be made of a conformable material”).
Accordingly, we agree with the Examiner that, when Watts’s O-ring is
attached to the centering tack, Watts discloses a body comprised of both the
centering tack and the O-ring.
Appellant provides no separate substantive argument for claims 2—20.
Accordingly, for the reasons discussed above, we sustain the Examiner’s
rejections of claims 1—20 as anticipated by or obvious in view of Watts.
DECISION
For the reasons discussed above, we affirm the Examiner’s decision to
reject claims 1—6, 10-16, and 20 under 35 U.S.C. § 102(a)(2) and claims 7—9
and 17—19 under 35 U.S.C. § 103(a).
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.
§ 41.50(f).
AFFIRMED
2 Appellant argues “[pjrosecution history estoppel requires an interpretation”
that Watts’s O-ring “cannot satisfy the claimed mounting dowel having a
body being formed of a conformable material proximate its mounting end.”
App. Br. 6. We note that prosecution history estoppel is a doctrine that
applies to issued patents, which is inapplicable to the interpretation of claim
terms during prosecution and unrelated to findings regarding what prior art
references teach.
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