Ex Parte Hoernig et al

Patent Trial and Appeal Board

May 31, 2016

12773342 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121773,342 05/04/2010
82074 7590 06/02/2016
Carlson, Gaskey & Olds/Masco Corporation
400 West Maple Road
Suite 350
Birmingham, MI 48009
FIRST NAMED INVENTOR
Victor Hoernig
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.
136-3176-U;
60137-659PUS1
CONFIRMATION NO.
5749
EXAMINER
DEERY, ERIN LEAH
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR HOERNIG, GERAINT KRUMPE, and
MAN KI YOO
Appeal2014-003481
Application 12/773,342
Technology Center 3700
Before: STEFAN STAICOVICI, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Victor Hoemig et al. ("Appellants") appeal under 35 U.S.C. § 134
from a rejection of claims 1-34. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
The claims are directed to an enclosure with storage. Spec. 1 (Title).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
Appeal2014-003481
Application 12/773,342
1. A unit for filling an area having a floor, a first side wall, a
second side wall and a back wall, said unit comprising:
a pan disposed on or above said floor,
a shower area having a first panel, a second panel and a
third panel and an opening through which a user may enter, said
opening being defined by said first, second and third panels,
said first panel is adapted to be disposed against said first side
wall and said pan, and said second panel is adapted to be
disposed against said back wall and said pan,
a zero threshold drain disposed across said opening and
abutting said pan,
a frame, said frame being adapted to support said third
panel and create a space between said second side wall and said
frame, and
a storage unit disposed in said space.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bement
Magnuson
Briggs
Smith
Betts
McAllister
Welsch
Hatrick-Smith
us 231,984
us 2,894,644
us 4,669,790
us 4,987,619
us 5,134,813
us 6,381,773
US 6,443,318 Bl
US 7 ,624,542 B2
REJECTIONS
Sept. 7, 1880
July 14, 1959
June 2, 1987
Jan.29, 1991
Aug. 4, 1992
May 7, 2002
Sept. 3, 2002
Dec. 1, 2009
(I) Claims 1, 17, 18, and 21 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith in view of McAllister.
(II) Claims 2, 3, 19, and 20 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith, McAllister, and Welsch.
(III) Claims 5-8 and 12 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith, McAllister, and Briggs.
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Appeal2014-003481
Application 12/773,342
(IV) Claims 9--11 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith and McAllister, and Bement.
(V) Claim 4 is rejected under 35 U.S.C. 103(a) as unpatentable over
Smith, McAllister, and Hatrick-Smith.
(VI) Claim 16 is rejected under 35 U.S.C. 103(a) as unpatentable
over Smith, McAllister, and Betts.
(VII) Claims 13-15 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith, McAllister, Welsch, and Betts.
(VIII) Claims 1, 18, 21-23, 25-27, 30, 31, and 34 are rejected under
35 U.S.C. 103(a) as unpatentable over Smith in further view of McAllister.
(IX) Claims 24, 28, and 32 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith, McAllister, Welsch, and Betts.
(X) Claims 29 and 33 are rejected under 35 U.S.C. 103(a) as
unpatentable over Smith, McAllister, Welsch, Betts, and Magnuson.
OPINION
Rejection (I)
Claims 1, 17, 18, and 21
The Examiner finds that Smith discloses a frame that supports a third
panel as recited in claim 1. Final Act. 2 (referring to reinforcing strap 28
depicted in Fig. 19 of Smith).
Appellants contend that reinforcing strap 28 "cannot reasonably be
considered to correspond to the claimed frame." Appeal Br. 7. In this
regard, Appellants state, "Smith clearly describes elements [28] as straps
(see col. 3, lines 61---62) and does not suggest that these straps form any type
of frame that would support a third panel and create a space between the
frame and a wall as claimed." Appeal Br. 8.
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Appeal2014-003481
Application 12/773,342
In response, the Examiner states, "[a] frame is defined as a rigid
structure that surrounds and encloses something." Ans. 2. In this regard, the
Examiner finds that, "[t]he frame of Smith surrounds and encloses the first,
second, and third panels in the shower enclosure and when installed creates
a space between the third panel/frame and a second sidewall (see figure 18,
showing the enclosure installed in a bathroom)" and "the structure of Smith
is a frame, since it functions as one, irrespective of word choice." Ans. 2
(emphasis added).
In reply, Appellants assert that straps 28 of Smith do not create a
space. Reply Br. 2. Specifically, Appellants state,
[a]s shown in Figure 3, the straps 28 extend along the wall 18
and do not protrude outwardly of front facing edges of the wall
18 (see just to the left of reference number 12 in Figure 3). As
such, these straps are not capable of creating a space between
the second side wall and the frame as claimed.
Reply Br. 2 (emphasis added); see also Appeal Br. 8 ("The straps 28 in
Smith clearly do not create a space between the second side wall and
themselves [because] Smith clearly states that the straps 28 are attached to
the wall studs (see col. 4, lines 1 7-21 ), which the examiner has argued
corresponds to the claimed wall.").
"[T]he phrase 'adapted to' generally means 'made to,' 'designed to,'
or 'configured to,' though it can also be used more broadly to mean 'capable
of or 'suitable for.' Man Machine Interface Tech., No. 2015-1562, 2016
WL 1567181 (Fed. Cir. April 19, 2016) (citing Jn re Giannelli, 739 F.3d
1375, 1379 (Fed. Cir. 2014). Appellants' Specification states, "[t]he frame
90 has a pair of side portions 95 that are connected by welding or the like by
a plurality of stiles 100. Each side portion has a vertical portion 105, an
upper portion 110 that cants slightly from horizontal and a shorter
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Appeal2014-003481
Application 12/773,342
downwardly extending portion 115." Spec. i-f 23 (emphasis added).
Appellants' Figure 2 depicts upper portion 110 extending away from a
vertical portions 105 toward second side wall 35. The phrase "adapted to
... create a space between said second side wall and said frame" in claim 1
modifies the generic noun "frame." Accordingly, this phrase requires more
than a generic frame whose function is solely to support the panels recited in
claim 1. In light of Appellants' Specification, we construe the phrase to
further require structure that is part of the frame and that extends from a
portion of the frame adjacent to the third panel toward the second side wall.
As for whether straps 28 are adapted to create a space between a
second side wall and themselves, as required by claim 1, the Examiner does
not identify any particular feature of straps 2 8 that corresponds to the above-
noted structure. Although the Examiner finds that Smith discloses a storage
area in Figure 18, the Examiner does not explain how straps 28 are adapted
to create this storage area. See Final Act. 2; see also Ans. 2. In other words,
the existence of the storage space disclosed in Figure 18 of Smith is not
enough, by itself, to find that straps 28 are "adapted to ... create a space
between said second side wall and said frame" as required by claim 1.
Accordingly, we agree with Appellants' statement that Smith "does not
suggest that these straps form any type of frame that would support a third
panel and create a space between the frame and a wall as claimed" (Appeal
Br. 8), and we thus do not sustain the Examiner's rejection of claim 1, and
claim 17 depending therefrom, as unpatentable over Smith and McAllister.
Independent claims 18 and 21 recite a feature substantially similar to the one
discussed above regarding claim 1, and we therefore do not sustain the
Examiner's rejection of claims 18 and 21 as unpatentable over Smith and
McAllister.
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Appeal2014-003481
Application 12/773,342
Rejections (II-VII)
The Examiner's use of Welsch, Briggs, Bement, Hatrick-Smith, and
Betts does not remedy the deficiency in Rejection (I). See Final Act. 3-7.
Accordingly, we do not sustain Rejections (II-VII).
Re} ection (VIII)
Claims 1, 18, 21-23, 25-27, 30, 31, and 34
The Examiner relies on either rods 32 (see Final Act. 7) or L-shaped
brackets 34 (see Ans. 6) of Smith for the frame recited in claim 1.
Appellants assert that "there is absolutely no teaching found in Smith, under
any of the examiner's interpretations, of having a space be created by a
frame between the second side wall and a shower panel wall as claimed."
Reply Br. 12.
For the same reasons discussed above with respect to the Examiner's
findings regarding straps 28 in Rejection (I), we agree with Appellants that
neither rods 32 nor L-shaped brackets 34 satisfy the requirement in claim 1
that the frame be "adapted to support said third panel and create a space
between said second side wall and said frame." Accordingly, we do not
sustain the Examiner's alternative rejection of independent claims 1, 18, and
21 as unpatentable over Smith and McAllister. We likewise do not sustain
the Examiner's rejection of dependent claims 22, 23, 25-27, 30, 31, and 34
as unpatentable over Smith and McAllister.
Rejections (IX-X)
The Examiner's use of Welsch, Betts, and Magnuson does not remedy
the deficiency in Rejection (VIII). See Final Act. 8-10. Accordingly, we do
not sustain Rejections (IX and X).
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Application 12/773,342
DECISION
The Examiner's decision to reject claims 1-34 is reversed.
REVERSED
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