11837196 (P.T.A.B. Jul. 29, 2013)

Ex Parte Hoggan

Patent Trial and Appeal BoardJul 29, 2013

11837196 (P.T.A.B. Jul. 29, 2013)

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. 11/837,196 08/10/2007 Patrick R. Hoggan PHOGWS 4533 7590 07/29/2013 Thompson E. Fehr Goldenwest Corporate Center Suite 300 5025 Adams Avenue Ogden, UT 84403 EXAMINER FERGUSON, MICHAEL P ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 07/29/2013 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 PATRICK R. HOGGAN ____________________ Appeal 2011-007251 Application 11/837,196 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, JOHN W. MORRISON, and HYUN J. JUNG, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007251 Application 11/837,196 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are related to slats which are inserted into chain link fences in order to increase privacy. Spec. 2, para. [0002]. Claim 1, the sole independent claim, is illustrative of the claimed subject matter: 1. A winged slat, which comprises: an elongate body having a front, a back, a first side, and a second1 side; a first wing extending along and, in a substantially straight line, outward from the first side of said elongate body; and a second wing extending along and, in a substantially straight line, outward from the second side of said elongate body. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Finkelstein Hoggan US 5,687,957 US 6,164,628 Nov. 18, 1997 Dec. 26, 2000 1 The Claims Appendix of the Appeal Brief indicates that claim 1 recites a “winged slat, which comprises: . . . an elongate body having . . . a first side and a right side.” However, an Amendment dated July 28, 2009 amended claim 1 to recite “a second side” instead of “a right side.” Appeal 2011-007251 Application 11/837,196 3 REJECTIONS The Examiner made the following rejections: Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as being anticipated by Finkelstein. Claims 1 and 2 are rejected under 35 U .S.C. § 102(b) as being anticipated by Hoggan. ANALYSIS Anticipation by Finkelstein Addressing claim 1, the Examiner finds that Finkelstein discloses a winged slat 20' (column 3 lines 24-27), which comprises: an elongate body 21 having a front, a back, a first side, and a second side; a first wing 23a' extending along and, in a substantially straight line, outward from the first side of the elongate body; and a second wing 23b' extending along and, in a substantially straight line, outward from the second side of the elongate body (Examiner notes that Finkelstein explicitly describes element 20' as a "winged fence slat" within the written disclosure of the reference; column 4 lines 14-23, Figures 2- 3). Ans. 3-4. Appellant argues [i]n Finkelstein the wings are described as “flexible and resilient” (lines 28 through 29 of column 2 and lines 47 through 49 of column 5). Applicant respectfully submits that one of ordinary skill in the art would not understand a portion of a slat to be “resilient” unless these Appeal 2011-007251 Application 11/837,196 4 adjectives are used explicitly, which they are not in either claim 1 or claim 2 of the present application. App. Br. 5. Appellant further argues that “Appellant's Amendment on July 28, 2009, which Amendment provided a clear disavowal that the scope of the term ‘wing’ in claim 1 extends to a wing that is resilient, it was certainly established by that Amendment through the prosecution history of claim 1.” App. Br. 5; see also Reply Br. 5. The Examiner counters by stating “[i]f Appellant desired that certain subject matter not be included by the claim, then the claim should have been amended to preclude such subject matter.” Ans. 6. First, reviewing the prosecution history, the record indicates that Appellant has filed a single Amendment on July 28, 2009. As shown on page 3 of the Amendment made on July 28, 2009, Appellant’s amendment does not limit the “wing” to exclude flexible and resilient members, but rather changes the term “right side” to “second side.” On page 5 of the Amendment, Appellant asserts that, in Finkelstein, the wings are described as “flexible and resilient,” and that “one of ordinary skill in the art would not understand a portion of a slat to be ‘flexible and resilient’ unless theses adjectives are used explicitly, which they are not in either claim 1 or claim 2 of the present application.” However, the absence of “flexible and resilient” does not limit the scope of either the recited “first wing” or “second wing” in the manner asserted by Appellant. Instead, the absence of “flexible and resilient” broadens the scope of the recited “first wing” and “second wing” to flexible and resilient wings because of their absence. Also, the record indicates that the recitations of the “first wing” and “second wing” have not been amended and thus, their scope cannot have been affected in the manner argued by Appellant. Thus, the record does not indicate “a clear disavowal Appeal 2011-007251 Application 11/837,196 5 that the scope of the term ‘wing’ in claim 1 extends to a wing that is resilient,” as asserted by Appellant. Therefore, we do not agree with the Appellant that the Amendment limits the claimed language to slats with wings that are not resilient. Second, Appellant’s only argument appears to be that the claim requires “non-resilient” wings and the Finkelstein discloses “resilient” wings. App. Br. 4-7. This argument is not commensurate with the scope of claim 1 as there is no limitation related to the resiliency of the wing material. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). For the above reasons, we sustain the rejection of independent claim 1 and dependent claim 2 as anticipated by Finkelstein. Anticipation by Hoggan Addressing claim 1, the Examiner finds that Hoggan discloses “a first wing 20a, 30a, 120a extending along and, in a substantially straight line, outward from the first side of the elongate body; and a second wing 20b, 30b, 120b extending along and, in a substantially straight line, outward from the second side of the elongate body.” Ans. 4. Appellant argues “Hoggan, however, explains, in rather abstruse language, that the fins extend from the corners of the slat-either in line with a face or at an angle thereto. And this is verified by the figures of Hoggan.” App. Br. 7. As shown in Figure 6, the wings or fins 130a and 130b extend from a respective first and second side. The fact that these wings extend in line with the face is irrelevant. Therefore, Appellant has not shown that the Examiner has erred in finding a first wing extending from a first side and a second wing extending from a second side. Appeal 2011-007251 Application 11/837,196 6 Again, Appellant argues that the “[a]mendment provided this same clear disavowal of the scope of the term ‘wing’ in claim 1 including a wing extending from the corners of the slat-either in line with a face or at an angle thereto” and that disavowal “was certainly established by that Amendment through the prosecution history of claim 1.” App. Br. 8. Once again, an Amendment that changes the term “right side” to “second side” does not preclude wings that extend from the corners or are in line with the face of the elongate body. Therefore, we do not agree with Appellant that the Amendment limits the claims to slats with wings which are not “extending from the corners of the slat-either in line with a face or at an angle thereto.” For the above reasons, we sustain the rejection of independent claim 1 and dependent claim 2 as anticipated by Hoggan. DECISION For the above reasons, the Examiner’s rejection of claims 1 and 2 is 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