Ex Parte Gerard

Board of Patent Appeals and Interferences

Sep 28, 2004

10042738 (B.P.A.I. Sep. 28, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PHILIP O. GERARD
__________
Appeal No. 2004-2256
Application 10/042,738
__________
ON BRIEF
__________
Before GARRIS, PAK, and OWENS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final
rejection of claims 1, 3-7 and 9-17. The only other claims
remaining in the application, which are rejected claims 18
and 19, have not been made part of the subject appeal; see
page 2 of the Brief.
The subject matter on appeal relates to a window frame
comprising a first frame half and a second frame half having a
Appeal No. 2004-2256
Application 10/042,738
2
ship orientation and an install orientation with respect to the
first frame half, the second frame half being moved between the
ship and install orientations by rotating the second frame half
within its own plane. According to independent claims 1 and 7,
the window frame further comprises a first connector means (see
elements 20 and 22 of the appellant’s drawing) for releasably
interconnecting the first and second frame halves when the second
frame half is in the ship orientation and second connector means
(see elements 30 and 32 of the appellant’s drawing) for securely
interconnecting first and second frame halves only when the
second frame half is in the install orientation. According to
independent claim 13, the window frame further comprises a
plurality of barbs (see element 30 of the appellant’s drawing)
monolithically formed with a first frame half and a plurality
of receivers (see element 32 of the appellant’s drawing)
monolithically formed with the second frame half, each of the
receivers receiving one of the barbs only when the second frame
half is in the install orientation to securely interconnect the
first and second frame halves. This appealed subject matter is
adequately represented by independent claims 1 and 13, which read
as follows:
Appeal No. 2004-2256
Application 10/042,738
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1. A window frame comprising:
a first frame half;
a second frame half having a ship orientation and an
install orientation with respect to said first frame half, said
second frame half being moved between the ship and install
orientations by rotating said second frame half within its own
plane;
first connector means for releasably interconnecting
said first and second frame halves when said second frame half is
in the ship orientation, said first connector means being
integral with said first and second frame halves; and
second connector means for securely interconnecting
said first and second frame halves only when said second frame
half is in the install orientation, said second connector means
also being integral with said first and second frame halves.
13. A window frame comprising:
a first frame half including a plurality of barbs
monolithically formed with said first frame half; and
a second frame half including a plurality of receivers
monolithically formed with said second frame half, said second
frame half having both a ship orientation and an install
orientation with respect to said first frame half, said second
frame half being moved between the ship and install orientations
by rotating said second frame half within its own plane, each of
said receivers receiving one of said barbs only when said second
frame half is in the install orientation to securely interconnect
said first and second frame halves.
The references set forth below are relied upon by the
examiner in the § 102 and § 103 rejections before us:
Hopper 5,570,548 Nov. 5, 1996
Suh 6,272,801 Aug. 15, 2001
Appeal No. 2004-2256
Application 10/042,738
1 On page 5 of the Answer, after setting forth the § 103
rejection based on Suh in view of Hopper, the examiner states:
It should be noted that the order in which the
references are used [i.e., in the § 103 rejection as
set forth in the Answer] is not a new ground of
rejection because the rejection above relies on the
same teachings of the references as the rejection
applied in the [final] Office action of September 23,
2003.
On the record before us including the Reply Brief filed in
response to the Examiner’s Answer, the appellant has expressed no
disagreement with the examiner’s determination that the § 103
rejection set forth in the Answer does not constitute a new
ground relative to the rejection set forth in the final Office
action. Under these circumstances, we will accept, as the
appellant implicitly has done, the examiner’s aforenoted
determination. It follows that, in assessing the merits of the
examiner’s obviousness position, we will consider both the
rationale expressed in the final Office action (i.e., Hopper in
view of Suh) and the rationale expressed in the Answer (i.e., Suh
(continued...)
4
Claims 1, 3-7 and 9-12 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hopper according to both
the final Office action (i.e., Paper No. 7 mailed September 23,
2003) as well as the Examiner’s Answer (i.e., Paper No. 11 mailed
June 16, 2004).
Claims 13-17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable or Hopper in view of Suh according to the
final Office action and as being unpatentable over Suh in view
of Hopper according to the Examiner’s Answer.1
Appeal No. 2004-2256
Application 10/042,738
1(...continued)
in view of Hopper) as being merely different modes of expressing
the same rejection, namely, a § 103 rejection based on the
combined teachings of the two applied references.
5
We refer to the Brief and Reply Brief as well as to the
final Office action and Answer for a complete discussion of the
opposing viewpoints expressed by the appellant and by the
examiner respectively concerning these rejections.
OPINION
For the reasons which follow, we cannot sustain the
examiner’s rejections of the appealed claims.
Concerning the § 102 rejection, it is well settled that
anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of the claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984).
Here, it is the examiner’s finding that the distal barb
of Hopper’s barbed flanges (i.e., see elements 35, 36, 38 and 39
of patentee’s drawing) corresponds to the first connector means
Appeal No. 2004-2256
Application 10/042,738
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defined by appealed claims 1 and 7 (e.g., see the paragraph
bridging pages 5 and 6, and especially the first full sentence on
page 6, of the Answer). However, we agree with the appellant
(e.g., see the last paragraph on page 6 of the Brief) that the
examiner has not provided an adequate basis for his finding that
Hopper discloses, either expressly or under principles of
inherency, the claim 1 requirement “first connector means for
releasably interconnecting said first and second frame halves
when said second frame half is in the ship orientation” or the
claim 7 requirement “first connector means unitary with said
first and second frame halves for releasably interconnecting said
first and second frame halves.”
The aforequoted claim limitations are in means-plus-
function format. Thus, in accordance with the sixth paragraph of
35 U.S.C. § 112, the examiner must look to the specification and
construe the “means” language as limited to the corresponding
structure disclosed in the specification and equivalents thereof.
In re Donaldson, 16 F.3d 1189, 1194-95, 29 USPQ2d 1845, 1850
(Fed. Cir. 1994). The first step in construing such a limita-
tion is to identify the function of the means-plus-function
Appeal No. 2004-2256
Application 10/042,738
7
limitation. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d
1193, 1208, 64 USPQ2d 1812, 1823 (Fed. Cir. 2002), cert. denied,
538 U.S. 1058 (2003). The next step is to identify the
corresponding structure in the written description necessary to
perform that function. Id. Two structures may be “equivalent”
for purposes of § 112, sixth paragraph, if they perform the
identical function in substantially the same way with
substantially the same result. Kemco Sales, Inc. v. Control
Papers Co., Inc., 208 F.3d 1352, 1364, 54 USPQ2d 1308, 1315-16
(Fed. Cir. 2000).
Instead of performing the above described analysis
required by the sixth paragraph of § 112, the examiner has simply
made the unembellished and implicit determination that the distal
barbs of Hopper are equivalent to the pins 20 and sockets 22
disclosed in the appellant’s specification and drawing and
therefore correspond to the structure embraced by the here
claimed first connector means. Similarly, the examiner has
implicitly assumed without apparent analysis and certainly
without explanation that patentee’s barbs perform (or are capable
of performing) the claims 1 and 7 function of “releasably
interconnecting said first and second frame halves.”
Appeal No. 2004-2256
Application 10/042,738
8
It is of course the examiner’s initial burden to
establish a prima facie case of unpatentability on any grounds
including anticipation. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In light of his
previously mentioned analytical deficiencies, the examiner has
failed to carry this burden in the § 102 rejection before us.
Stated differently, the record of this appeal provides no basis
for finding that Hopper’s barb structure and the function
performed thereby are the same as or equivalent to the structure
and function defined by independent claims 1 and 7. This
deficiency is particularly evident with respect to the require-
ment in these claims that the first connector means perform the
function of “releasably interconnecting said first and second
frame halves” (emphasis added). This is because a study of
Hopper’s disclosure, particularly figures 8 and 10, reveals that
patentee’s distal barb (which the examiner equates to the here
claimed first connector means) would not be capable of performing
the “releasably” interconnecting function required by these
claims. That is, Hopper’s frame construction is such that there
appears to be no way to release or disengage his distal barbs
Appeal No. 2004-2256
Application 10/042,738
9
once they have become interconnectingly engaged (even at the
initial stage) with the corresponding barbs of connection
member 80.
In light of the foregoing, we cannot sustain the
examiner’s § 102 rejection of claims 1, 3-7 and 9-12 as being
anticipated by Hopper.
We also cannot sustain the examiner’s § 103 rejection
of claims 13-17 as being unpatentable over the combined teachings
of the here applied references. Regardless of whether the
examiner proposes to modify Hopper in view of Suh as in the final
Office action or Suh in view of Hopper as in the Answer, the
combined reference teachings simply would not have suggested the
modifications which the examiner has proposed to thereby result
in the window frame defined by appealed independent claim 13.
More specifically, on page 3 of the final Office
action, the examiner concludes that “[i]t would have been
obvious to one of ordinary skill in the art to provide Hopper
with a barbs [sic], as taught by Suh, to provide a more secure
attachment of the first and second frame halves.” It is
indisputable, however, that the window frame of Hopper already
Appeal No. 2004-2256
Application 10/042,738
10
has barbs. As a consequence, this proposed modification, by
itself, clearly would not have remedied the deficiency (e.g.,
the here claimed receivers and barbs relationship), which the
examiner has implicitly acknowledged exists, vis-à-vis the window
frame disclosed by Hopper versus the window frame defined by
claim 13.
In contast, it is the examiner’s conclusion on page 5
of the Answer that “[i]t would have been obvious to one of
ordinary skill in the art to provide Suh with a plurality of
barbs and receivers with their attendant install and ship
orientations, as taught by Hopper, to more securely connect the
frame halves together.” The modification here proposed by the
examiner is not well taken. As correctly observed by the
appellant, the Hopper patent simply does not contain any teaching
or suggestion concerning the here claimed ship orientation and
install orientation features. It follows that no basis exists
for concluding that it would have been obvious to modify the
window frame of Suh and thereby yield “install and ship
orientations, as taught by Hopper” (id.) pursuant to the
examiner’s aforequoted obvious conclusion.
Appeal No. 2004-2256
Application 10/042,738
2 It is appropriate to here emphasize that the examiner’s
expositions in the final Office action and in the Answer
concerning his § 103 rejection do not include a discussion of
Suh’s figure 8 disclosure (indeed, the exposition in the Answer
refers only to figures 9 and 10 of Suh; e.g., see the last full
paragraph on page 4) and do not address the issue of whether
claim 13 is anticipated by any of Suh’s window frame embodiments.
11
For these reasons, we cannot sustain the § 103
rejection of claims 13-17 for being obvious over Hopper in view
of Suh as expressed by the examiner in the final Office action or
for being obvious over Suh in view of Hopper as expressed by the
examiner in the Answer.
REMAND FOR CONSIDERATION OF OTHER ISSUES
Upon return of this application to the jurisdiction of
the Examining Corps, the examiner and the appellant should
consider and address the issue of whether the window frame of
claim 13 is distinguishable from the window frame of Suh’s figure
8 embodiment.2
Specifically, the window frame embodiment shown in
figure 8 comprises a first frame half 130 including a plurality
of posts 162 with ridges 163 and a second frame half 140
including a plurality of bores 165 with ridges 169. These frame
Appeal No. 2004-2256
Application 10/042,738
12
halves with their posts and bores are indistinguishable from the
structure and function of the claim 13 barbs and receivers.
Moreover, these frame halves of Suh are shown in figure 8 in the
install orientation defined by claim 13. Finally, it appears to
be not just reasonable (see Ex parte Levy, 17 USPQ 1461, 1463-64
(Bd. Pat. App. & Int. 1990)) but indisputable that patentee’s
frame halves are inherently capable of achieving the here claimed
ship orientation. For example, in a pre-connected condition,
frame half 140 plainly would be capable of being rotated in its
own plane to an orientation of 90/ relative to that shown in
figure 8. In such an orientation, the frame halves 130 and 140
would be perpendicular to one another and thus in a disposition
capable of being regarded as a “ship orientation.” Further, the
posts/bores (i.e., the here claimed barbs/receivers) would be
engageable with each other only when, as required by claim 13,
the frame half 140 is rotated back to the install orientation
shown in figure 8.
In light of the foregoing, an exploration of the
anticipation issue raised herein is deserving of attention by the
examiner and the appellant. For this purpose, therefore, we
hereby remand this application to the examiner.
Appeal No. 2004-2256
Application 10/042,738
13
CONCLUSION
In summary, we reverse each of the examiner’s § 102 and
§ 103 rejections, and we remand the application under review to
the examiner.
This remand to the examiner pursuant to 37 CFR
§ 41.50(a)(1) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)) is made for further consideration of a rejection.
Accordingly, 37 CFR § 41.50(a)(2) applies if a supplemental
examiner's answer is written in response to this remand by the
Board.
REVERSED AND REMANDED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
BRG:psb
Appeal No. 2004-2256
Application 10/042,738
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