Ex Parte Huung

Board of Patent Appeals and Interferences

Apr 28, 2009

10975900 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUNNY EN LUING HUUNG
____________

Appeal 2009-0477
Application 10/975,900
Technology Center 3600
____________

Decided:1 April 28, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Sunny Huung (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 7-12. Claims 1-6 are cancelled.
App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is a collapsible shade for an automobile
windshield. Spec. 2, para. 2. Claim 7, reproduced below, is representative
of the subject matter on appeal.
7. A collapsible auto shade for use in operative
position against an automobile window and its
frame to provide for shade interiorly of the
automobile, comprising:
a first material portion having an outer edge
defining a perimeter boundary;
a second material portion, said second
material portion joined to the first material portion
along at least three edges of said second material
portion; said second material portion with the first
material portion defining a pocket intermediate
thereof; and
at least one spring like arcuate compressible
member extending beyond a portion of the
perimeter boundary of said first and second
material portions, said at least one spring like
arcuate compressible member having an open
configuration associated with an open state of said
automobile shade, and a collapsed configuration
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associated with a collapsed state of said
automobile shade; and
wherein said at least one spring like arcuate
compressible member in said open configuration is
adapted to expand said outer edge of both said
material portions, and to compress against an
automobile window frame to locate said
automobile shade against a window to provide
shading therethrough.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Naterman US 1,475,647 Nov. 27, 1923
Bruhl US 2,596,836 May 13, 1952
Appellant seeks our review of the following rejections:
1. The Examiner rejected claim 7 under 35 U.S.C. § 102(b) as
anticipated by Naterman.
2. The Examiner rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
unpatentable over Naterman.
3. The Examiner rejected claims 10-12 under 35 U.S.C. § 102(b) as
anticipated by Bruhl.

ISSUES
The Examiner found that claim 7 was anticipated by Naterman and
claims 8 and 9 were obvious in view of Naterman. Ans. 3. Appellant
contends Naterman does not disclose or suggest a spring-like arcuate
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compressible member that is capable of a collapsed configuration. App. Br.
10-11.
The first issue before us is:
Has Appellant demonstrated that the Examiner erred in the rejection
of claims 7-9 because Naterman does not disclose or suggest a spring-like
arcuate compressible member that is capable of a collapsed configuration?
The Examiner found claims 10-12 were anticipated by Bruhl. Ans. 3.
Appellant contends Bruhl does not disclose a spring-like arcuate
compressible member that is capable of a collapsed configuration. App. Br.
11-12.
The second issue before us is:
Has Appellant demonstrated that the Examiner erred in the rejection
of claims 10-12 because Bruhl does not disclose a spring-like arcuate
compressible member that is capable of a collapsed configuration?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification does not define the terms
“open” or “collapsed.” Spec. passim
2. An ordinary and customary meaning of the term
“open” is “not drawn together, folded, or
contracted.” Webster’s Third New International
Dictionary, Unabridged (1961).
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3. An ordinary and customary meaning of the term
“collapse” is “to fold down into a more compact
shape.” Webster’s Third New International
Dictionary, Unabridged (1961).
4. Naterman discloses an adjustable visor for a
vehicle windshield comprised of a screen member
(29) over a frame (14). Naterman, 1:2-8, 99-101.
5. Frame 14 is a single piece of spring rod or wire in
a general U-shape, comprised of the following:
upper arm 16, end portion 18, lower arm 17
(parallel to upper arm 16), end 15 (opposite end
portion 18), and securing end 20 (formed by
bending a portion of upper arm 16 at 180 degrees
into a position above and parallel to upper arm 16).
Naterman, 1:59-73; Figs. 1, 4.
6. Frame 14 may be “readily slipped” into pocket 31
of screen member 29, which is two pieces of fabric
sewn together with single row of stitching 30 to
form pocket 31. Naterman, 1:99-107; 1:108 to 2:3
Fig 4.
7. Frame 14 is sufficiently resilient to maintain
screen member 29 in a stretched condition at all
times. Naterman, 2:3-5.
8. While screen member 29 may be removed from
frame 14, and presumably folded into a more
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compact shape, Naterman does not disclose that
frame 14 may be folded into a more compact
shape. Naterman, passim.
9. Bend 19 and securing end 20 of frame 14 remain
in position despite not being held within screen
member 29. Naterman, Figs. 1, 4.
10. Frame 14 is depicted in only the U-shaped
configuration, even when outside pocket 31.
Naterman, passim; Figs. 1-4.
11. Frame 14 has a single rigid shape, and is not
designed to collapse and expand (Facts 5-10).
12. Bruhl discloses a glare shield (5) for an automobile
adapted to be positioned adjacent the upper surface
of the instrument panel comprised of a rectangular
strip of flexible material (6) provided with elastic
members along the side edges (elastic members 8),
secured to yokes (9) that are detachably engaged to
pivotable brackets (16). Bruhl, col. 1, ll. 1-29;
col. 2, ll. 3-14 and ll. 23-26; Fig. 2.
13. Yokes 9 are bent into eyes 11 to receive the elastic
members 8, and are preferably formed from
lengths of stiff wire. Bruhl, col. 2, ll. 12-17.
14. While Bruhl discloses that shield 5 is adapted to be
folded into a small package for storage while not
in use, Bruhl does not disclose that yokes 9 can be
folded into a more compact shape. Bruhl, col. 3,
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ll. 5-7; passim.
15. Shade 5 may be adjusted to various angular
positions once yokes 9 are positioned in pivotable
brackets 16, suggesting yokes 9 rigidly retain
shape. Bruhl, col. 2, l. 45 to col. 3, l. 2.
16. Yokes 9 of Bruhl are a single rigid shape, and are
not designed to collapse and expand (Facts 12-15).

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

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ANALYSIS
Rejection of claim 7 under 35 U.S.C. § 102(b) as anticipated by Naterman
Claim 7 includes the limitation of a “spring like arcuate compressible
member having an open configuration associated with an open state of said
automobile shade, and a collapsed configuration associated with a collapsed
state of said automobile shade.”
Appellant’s Specification does not provide a lexicographical
definition for “open” or “collapsed” (Fact 1). The ordinary and customary
meaning of the term “open” is “not drawn together, folded, or contracted,”
and the ordinary and customary meaning of the term “collapse” is “to fold
down into a more compact shape” (Facts 2, 3). The terms “open” and
“collapsed” are used contrastingly in the context of the claim. A person of
ordinary skill in the art, reading the claim in light of the Specification, would
understand that the spring-like arcuate compressible member must be
capable of an open position where the member is not drawn together, folded,
or contracted, and capable of a collapsed position where the member is
folded into a more compact shape.
The Examiner concluded that claim 7 is anticipated by Naterman,
based in part on the finding that frame 14 of Naterman is a spring-like
arcuate compressible member. Ans. 3. Appellant correctly points out
“[t]here is nothing in Naterman that describes that it is a collapsible type of
auto shade.” App. Br. 10. Naterman discloses an adjustable visor for a
vehicle windshield comprised of a screen member over a frame (Fact 4).
Naterman’s frame does not have a collapsed configuration associated with a
collapsed state of the shade (Fact 11). Because Naterman does not disclose
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each limitation of claim 7, Naterman does not anticipate claim 7. Verdegaal
Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).

Rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over
Naterman
Claims 8 and 9 depend from claim 7 and therefore include the
limitation related to the collapsibility of the spring-like arcuate compressible
member. The Examiner rejected claims 8 and 9 as unpatentable over
Naterman, and the rejection does not modify the frame of Naterman. Ans.
3-4. Again, Appellant correctly argues that Naterman does not teach a
collapsible auto shade. App. Br. 11. As we found in the analysis of claim 7,
supra, Naterman’s frame 14 (compressible member) does not have a
collapsed configuration associated with a collapsed state of the shade (Fact
11). Appellant has rebutted the Examiner’s prima facie case of obviousness.

Rejection of claims 10-12 under 35 U.S.C. § 102(b) as anticipated by Bruhl
Indepenent claim 10, like claim 7, includes the limitation of a “spring
like arcuate compressible member having an open configuration associated
with an open state of said automobile shade, and a collapsed configuration
associated with a collapsed state of said automobile shade.”
The Examiner concluded claim 10 was anticipated by Bruhl, based in
part on the finding that the yokes of Bruhl are spring-like arcuate
compressible members. Ans. 3, 5. Appellant correctly contends “[i]t does
not appear that Bruhl provides any type of collapsible auto shade.” App. Br.
11. Bruhl discloses a glare shield for a vehicle comprised of a flexible
material secured to yokes (Fact 12). Bruhl’s yokes (compressible members)
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do not have a collapsed configuration associated with a collapsed state of the
shield (Fact 16). Because Bruhl does not teach this aspect of the claim,
Bruhl does not anticipate claim 10. Likewise, because claims 11 and 12
depend from claim 10, their rejection was also improper.
CONCLUSION
Appellant has demonstrated that the Examiner erred in the rejection of
claims 7-9 because Naterman does not disclose or suggest a spring-like
arcuate compressible member that is capable of a collapsed configuration.
Appellant has demonstrated that the Examiner erred in the rejection of
claims 10-12 because Bruhl does not disclose a spring-like arcuate
compressible member that is capable of a collapsed configuration.

DECISION
We reverse the Examiner's decision to reject claims 7-12.

REVERSED

vsh

PAUL M. DENK
STE. 170
763 S. NEW BALLAS ROAD
ST. LOUIS MO 63141