Ex Parte Jones

Patent Trial and Appeal Board

Jun 14, 2016

12708851 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121708,851
41863 7590
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
A villa, IN 46710
FILING DATE FIRST NAMED INVENTOR
02/19/2010 Thaddeus M. Jones
06/14/2016
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.
ETI0125.US 5349
EXAMINER
DAWKINS, COLLIN
ART UNIT PAPER NUMBER
2845
MAILDATE DELIVERY MODE
06/14/2016 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 THADDEUS M. JONES
Appeal2015-000091
Application 12/708,851
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
BRIAND. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
Claims 1 and 12 are illustrative of the claimed subject matter
(emphasis added):
1. An antenna system, comprising:
a dish having a concave shape on one side and a
generally convex shape on an opposite side;
a heating element; and
1 The real party in interest is stated to be MSX, Inc. App. Br. 3.
Appeal2015-000091
Application 12/708,851
a shaped plate having said heating element applied to a
first side of said shaped plate, said shaped plate having a second
side opposite said first side, said shaped plate being coupled to
said opposite side of said dish, said shaped plate being formed
from a flat plate having at least one slot cut therein, each said
slot having edges that are overlapped to thereby form said flat
plate into said shaped plate.
12. An antenna dish heating method, comprising the
steps of:
cutting a plurality of slots in a flat plate, said plate
having two sides;
overlapping adjacent edges of said slots thereby forming
a shaped plate;
securing at least one of said edges to one of said two
sides of said shaped plate;
applying a heating element to a first side of said shaped
plate, said shaped plate having an opposite second side; and
coupling said shaped plate to a dish having a concave
shape on one side and a generally convex shape on an opposite
side, said shaped plate being on said opposite side of said dish.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) Claims 1, 4, 5, 12 and 15 as unpatentable over Greenleaf (US
2006/0250313 Al, pub. Nov. 9, 2006) in view of Shen (US 7,324,067 B2,
issued Jan. 29, 2008); and
(b) Claims 2, 3, 13, and 14 as unpatentable over the combined prior
art of Greenleaf, Shen and Jones '055 (US 6,195,055 Bl, issued Feb. 27,
2001);
( c) Claims 6-11 and 16-20 as unpatentable over the combined prior
art of Greenleaf, Shen and Jones' 171 (US 5,963, 171, issued Oct. 5, 1999).
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Appeal2015-000091
Application 12/708,851
Appellant argues the claims as a group, and focus on limitations
common to the two independent claims 1 and 12 on appeal (App. Br.
generally).
ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
After review of the respective positions provided by the Appellant and
the Examiner, we conclude that the preponderance of the evidence supports
the Appellant's position that the Examiner has not met the burden in this
case for substantially the reasons set forth by Appellant in the Briefs.
Accordingly, we reverse the Examiner's rejections of all the claims on
appeal.
We add the following primarily for emphasis.
Independent Claims 1 and 12
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
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Appeal2015-000091
Application 12/708,851
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
("[T]he specification 'is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.'" (Internal citation omitted)).
The Examiner relies upon Greenleaf s flexible cover with tabs folded
onto themselves to form loops for an attachment strap to be threaded through
(Greenleafi-f 50; Ans. 14, 15 (stating that the claims do not require that the
"edges are overlapped with each other")). Appellant points out their claims
require that the edges of each slot are overlapped to thereby form a flat plate
into a curved plate, and this indeed means that the edges are overlapped with
each other (Reply Br. 3--4; App. Br. 12, 13). Appellant's Specification
explicitly details that the edges of each slot are overlapped to form the
complementary shape of the satellite dish 12, e.g., using "[f]asteners 38 ...
to secure the shaped overlaps" (Spec. i120). Accordingly, we agree with
Appellant that the broadest reasonable interpretation consistent with the
Specification of the "slot having edges that are overlapped to thereby form
said flat plate into said shaped plate" as recited in claim 1 does not
encompass the flexible cover of Greenleaf which merely has flexible tabs
that are folded onto themselves to form loops for an attachment strap to be
threaded through (Greenleafi-f 50; generally App. Br.; Reply Br.). Likewise,
the language of claim 12 that requires "overlapping adjacent edges of said
slots thereby forming a shaped plate" from a flat plate does not encompass
Greenleaf s flexible cover (see, e.g., Reply Br. 3, 4).
The Examiner does not rely upon any of the other references to cure
these deficiencies of Greenleaf (e.g., App. Br. 10, 11; Reply Br. 6).
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Appeal2015-000091
Application 12/708,851
Accordingly, we reverse the rejections of claims 1-20 which all rely
upon the Examiner's flawed interpretation of the claim language.
A preponderance of the evidence on this record supports the
Appellant's position that the Examiner has not established that the applied
prior art teaches or suggests the arrangement of a shaped plate with at least
one slot having overlapped edges to thereby form said shaped plate from a
flat plate (that is, to from a flat plate into a shaped plate) as required by all
the claims on appeal.
CONCLUSION
The Examiner's§ 103 rejections of all the claims on appeal are
reversed.
REVERSED
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