Ex Parte Engebretson

Patent Trial and Appeal Board

Oct 31, 2012

11036161 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID ENGEBRETSON
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Appeal 2010-009874
Application 11/036,161
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, HYUN J. JUNG, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/036,161

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-16 and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE CLAIMED SUBJECT MATTER
The claims are directed to a window conversion unit. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A window conversion unit for replacing an existing
window panel in an existing window panel frame or sash,
comprising:
a) a first panel;
b) a replacement frame configured to support said first
panel within the existing window panel frame; and
c) said replacement frame having a conversion portion
configured to engage the inside dimensions of the existing
window panel frame.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Davlantes
Koike
US 4,047,331
US 5,758,459
Sep. 13, 1977
Jun. 2, 1998

REJECTIONS
Appellant seeks our review of the following rejections:
Claims 1-7, 9, 11, and 13-15 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Koike. Ans. 3.
Claims 8, 10, and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koike and Davlantes. Ans. 8.
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Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Koike and Davlantes. Ans. 8.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Koike. Ans. 10.

ANALYSIS
1. Anticipation Rejection over Koike
a. Claims 1, 5-7, 9, 11, and 13-15
In response to the Examiner’s finding that Koike discloses all
limitations of claim 1 (Ans. 3-4), Appellant argues that (a) “[t]he sash frame
structure of Koike is not disclosed as useful as a replacement window
panel”; (b) a sash frame defined by Koike’s elements 1, 2, 3 “is not
disclosed as useful for engaging the inside dimensions of an existing
window panel frame”; (c) Koike does not disclose or suggest “a replacement
frame within an existing window panel frame”; (d) the Examiner has failed
to give “any meaningful weight to the recited existing window panel frame”;
and (e) Koike’s element 8 does not meet the recited “existing window panel
frame.” Br. 14-19.
The Examiner notes in response that Koike discloses all structural
limitations that are positively recited in the claims rejected for anticipation,
and that all of Appellant’s arguments are directed to functional limitations or
structures that are not positively recited in the claims. Ans. 10-13.
We are not persuaded by Appellant’s arguments, for the reasons given
in the Examiner’s Answer at pages 10-13, which we adopt as our own. As
to Appellant’s arguments (a) and (b), we agree with the Examiner that
Koike’s device is capable of functioning (a) to replace a broken or unsound
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window and (b) to engage the inside dimensions of an existing window
panel frame; whether Koike discloses such uses is irrelevant in the context
of an anticipation rejection. See Ans. 10-11. Appellant’s arguments (c), (d),
and (e) are all premised on Appellant’s position that claim 1 positively
recites “an existing window panel frame.” We agree with the Examiner that
claim 1 does not positively recite “an existing window panel frame” as a
structural limitation itself. Rather, claim 1 is directed to “[a] window
conversion unit” that includes a panel and a replacement frame having a
conversion portion; the “existing window panel frame” is recited only as a
point of reference to specify properties that the replacement frame and
conversion portion are “configured” to possess. The “existing window panel
frame” therefore does not itself form part of the claimed “window
conversion unit.” See Ans. 11-13.
For these reasons, Appellant has not apprised us of error in the
rejection of claim 1. We sustain the rejection of claim 1. Because Appellant
presents no arguments for separate patentability of any of claims 5-7, 9, 11,
and 13-15 (Br. 14-19) we also sustain the rejection of these claims.
b. Claim 2
Appellant argues that Koike “fails to disclose a window frame
configurable to engage any pre-existing window panel frame, much less one
configurable to adjust to frames of various dimensions.” Br. 19-20. The
Examiner responds that claim 2 adds merely another functional limitation
that Koike’s device is capable of performing. Ans. 13.
Appellant has not apprised us of error, for reasons analogous to those
given above with respect to claim 1. We agree with the Examiner that Koike
is capable of being configured “to engage different existing window panel
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frames having various dimensions” and therefore anticipates the subject
matter of claim 2.
c. Claim 3
Appellant argues that the Examiner does not explain how Koike’s
portion (e)1 “corresponds to a conversion portion, and how portion (e)
confers the ability to engage an existing space of various sizes in an existing
window panel frame.” Br. 20. In response, the Examiner observes that the
claimed conversion portion, like Koike’s body frame member 20 and bead
member 21, is “all one member with the frame and is capable of engaging an
existing space in an existing window panel frame.” Ans. 14. The Examiner
further notes that claim 3 specifies no structure that enables the recited
“conversion portion” to achieve engagement of a space of various
dimensions. Id.
Appellant has not apprised us of error, for reasons analogous to those
given above with respect for claim 1. We agree with the Examiner that
Koike’s body frame member 20 and beam member 21 are capable of being
configured “to engage a space of various sizes in the existing window panel
frame from the evacuation of the existing window panel” and therefore
Koike anticipates the subject matter of claim 3.
d. Claim 4
Appellant argues that the Examiner does not explain how Koike’s
portion (e) is “capable of matching the peripheral height, width, and
thickness of the existing window panel” as required by claim 4, for the

1 The Examiner defined “portion (e)” as being formed by Koike’s body
frame member 20 and bead member 21. See Ans. 4, 7.
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reasons given with respect to claim 3. Br. 21. The Examiner refers to the
response given with respect to claim 3. Ans. 14-15.
Appellant has not apprised us of error, for reasons analogous to those
given above with respect to claim 3.
2. Obviousness Rejections
a. Claims 8, 10, and 12
The Examiner found that Koike discloses all limitations of claim 8
except the requirement that the second panel further comprise a pet door.
Ans. 8. The Examiner further found that Davlantes discloses a window
panel having a panel that includes a pet door. Id. The Examiner concluded
that it would have been obvious to modify Koike to have a panel with a pet
door to provide easy indoor/outdoor access to a pet. Id.
Appellant argues that Davlantes “does not replace the window panel
of an existing door, but functions in cooperation with the existing window
panels of a sliding glass door” and shows schematic interpretations of
Davlantes. Br. 23-26. Appellant further argues that Davlantes “does not
disclose or suggest the use of the panel … as a replacement for an existing
window panel in an existing window panel frame or sash.” Br. 26.
Appellant also argues that “modification of the Davlantes door panel would
substantially change the principle of operation of the door panel itself,
specifically by destroying the utility of the Davlantes panel for fitting into
the existing door opening.” Br. 27.
In response, the Examiner notes that Davlantes was cited merely to
teach a window unit having a pet door, and that Koike was cited for all other
limitations. Ans. 15. The Examiner further observes that Appellant’s
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arguments are premised on bodily incorporation of Davlantes into Koike,
which is not the test for obviousness. Ans. 15-16.
Appellant’s arguments are non-responsive to the rejection and
therefore do not apprise us of error. We agree with the Examiner that
Davlantes was cited for the limited teaching of including a pet door in a
window panel; whether Davlantes suggests replacing an existing window
panel, or whether Davlantes’s sliding door may be incorporated into Koike’s
window structure, are irrelevant to the combination proposed by the
Examiner in finding the claimed subject matter obvious. We sustain the
rejection of claim 8.
Appellant presents no arguments for separate patentability of claims
10 or 12, and therefore we sustain the rejection of these claims.
b. Claim 16
Appellant refers to arguments made with respect to claims 1, 8, 10,
and 12 and does not make any arguments specific to claim 16. Br. 28-29.
Appellant’s arguments do not apprise us of error in the rejection of claim 16
for reasons similar to those given above with respect to claims 1, 8, 10, and
12. We sustain this rejection.
c. Claim 20
Appellant refers to arguments made with respect to claim 1 and does
not make any arguments specific to claim 20. Br. 29-30. Appellant’s
argument does not apprise us of error in the rejection of claim 20 for reasons
similar to those given above with respect to claim 1. We sustain this
rejection.

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DECISION
For the above reasons, the Examiner’s rejections of claims 1-16 and
20 are AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

mls