Ex Parte Frankenberg

Patent Trial and Appeal Board

Jun 3, 2016

13290601 (P.T.A.B. Jun. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/290,601 11/07/2011 Jason Frankenberg
66228 7590 06/07/2016
NIXON PEABODY LLP
INTELLECTUAL PROPERTY GROUP- PATENTS
70 WEST MADISON STREET
SUITE 3500
CHICAGO, IL 60602-4224
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
292580-007428 7848
EXAMINER
CHEN,JOSEV
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
06/07/2016 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):
IPDOCKET@NIXONPEABODY.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON FRANKENBERG
Appeal2014-004570
Application 13/290,601 1
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason Frankenberg (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-8 and 10-21. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
According to Appellant, the real party in interest is Orbis Corporation.
Appeal Br. 2 (filed Sept. 25, 2013).
2 Claim 9 has been cancelled. Id.
Appeal2014-004570
Application 13/290,601
fNVENTION
Appellant's invention relates to a top frame used with a plastic pallet
to secure goods during transportation. Spec. i-f 4.
Claims 1 and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A top frame comprising:
a pair of substantially parallel side members;
a pair of substantially parallel end members connected to the
side members to form a generally rectangular frame structure with a
central opening, and having an inner layer and an outer surface, the
frame structure having a thickness;
and wherein the top frame is made from a thermoset foam
material, the thermoset foam material varying in density along the
frame structure thickness such that the density of the thermoset foam
material is greatest nearest the outer surface to form a hard outer
shell.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4--8, and 10-21under35 U.S.C.
§ 103(a) as unpatentable over Ruma (US 5,687,652, iss. Nov. 18,
1997) with or without Preisler (US 6,748,876 B2, iss. June 15, 2004).
II. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Ruma with or without Preisler, and Breezer (US
5,329,862, iss. July 19, 1994).
ANALYSIS
Rejection I
Each of independent claims 1 and 16 requires, inter alia, a "generally
rectangular frame structure with a central opening." Appeal Br. 9--10.
2
Appeal2014-004570
Application 13/290,601
The Examiner finds that Ruma discloses "a structure ( 10) comprising
a pair of substantially parallel sides, a pair of substantially parallel ends
connected to the sides to form a generally rectangular frame structure."
Final Act. 2 (transmitted Apr. 29, 2013). The Examiner additionally finds
that Ruma' s structure 10 includes several perforated apertures 12 that act as
a central opening, as shown below in the Examiner's annotated Figure 1 of
Ruma. Id. at 3 .
Ruma's Figure 1, as annotated by the Examiner, is reproduced below:
FIG 1
The Examiner's annotated Figure 1 of Ruma depicts openings 12 as the
claimed central opening. Id.
In response, Appellant argues that the Examiner "incorrectly equates
the multiple narrow apertures 12 ... with a central opening of the frame
structure in the claimed invention." Appeal Br. 5. According to Appellant,
"merely because the apertures disclosed in Ruma are openings, it does not
make them a central opening." Reply Br. 5 (filed Dec. 17, 2013). Thus,
Appellant concludes that the side and end members of Ruma do not form a
frame structure with a central opening. Id.
3
Appeal2014-004570
Application 13/290,601
Although we appreciate the Examiner's position that Ruma's
apertures 12 constitute openings, nonetheless, we do not agree that they
constitute a "central opening," as required by each of independent claims 1
and 16. It is well settled that claims are construed with an eye toward giving
effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006). Here, the Examiner's interpretation of the phrase
"central opening" as covering any opening 12 in Ruma's structure 10, in
effect renders meaningless the term "central." An ordinary and customary
meaning of the term "central" is "situated at, in, or near the center" of a
thing or place. Merriam Webster's Collegiate Dictionary (10th ed. 1997).
Such an interpretation is consistent with Appellant's Specification which
describes opening 107 as "central" to frame structure 106 formed by sides
102 and ends 104. See Spec. i-f 59 and Fig. 5. As such, because Ruma's
apertures 12 are located on the sides of structure 10, the apertures are not
"situated at, in, or near the center" of structure 10, and hence, are not central
to structure 10. Accordingly, we agree with Appellant that Ruma fails to
disclose a "frame structure with a central opening." The Examiner's
modification of Ruma or use of Preisler' s disclosure does not remedy the
deficiencies of Ruma, as discussed supra.
In conclusion, we do not sustain the rejection of claims 1, 2, 4--8, and
10-21under35 U.S.C. § 103(a) as unpatentable over Ruma with or without
Preisler.
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Appeal2014-004570
Application 13/290,601
Rejection II
The Examiner's use of Breezer' s disclosure does not remedy the
deficiencies of Ruma with or without Preisler as discussed above. See Final
Act. 4.
Accordingly, we also do not sustain the rejection under 35 U.S.C.
§ 103(a) of claim 3 as being unpatentable over Ruma with or without
Preisler, and in view of Breezer.
SUMMARY
The Examiner's decision to reject claims 1-8 and 10-21 is reversed.
REVERSED
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