Ex Parte Judkins

Patent Trial and Appeal Board

Oct 31, 2016

13348824 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/348,824 01112/2012
23464 7590 11/02/2016
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Ren Judkins
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.
0029616-000358 2810
EXAMINER
PUROL, DAVID M
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REN JUDKINS
Appeal2014-006196
Application 13/348,824
Technology Center 3600
Before JOHN C. KERINS, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ren Judkins (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's rejections of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b). We conducted an oral hearing on this appeal on October
4, 2016, and a transcript of that hearing has been placed into the record
("Tr.").
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to roller shades and a method for making
roller shades. See Appeal Br. 9-11, Claims App. Claims 1 and 10,
Appeal2014-006196
Application 13/348,824
reproduced below, are independent and illustrative of the claimed subject
matter:
1. A method of making a roller shade having a selected
width comprising:
providing a stack of pleated material having a selected
length and a plurality of pleats;
cutting the stack of pleated material to create a smaller
stack of pleated material having a length corresponding to the
selected width of the roller shade; and
attaching without use of a non-pleated backing layer the
smaller stack of pleated material to a roller having a
longitudinal axis so that the plurality of pleats are parallel to the
longitudinal axis of the roller.
10. A roller shade comprising
a roller and
a panel of window covering material attached to the
roller, the window covering material having a series of spaced
apart micro tabs, each having a width less than one-half inch
and a series of pleats one pleat located between each adjacent
pair of micro tabs; such that the window covering material can
be folded along the pleats to form a stack and
wherein the panel of window covering material is not
attached to a non-pleated backing layer.
Appeal Br. 9, 10-11, Claims App.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Luboshez
Colson
Levy
us 3,443,860
us 5,043,038
us 5,566,734
2
May 13, 1969
Aug. 27, 1991
Oct. 22, 1996
Appeal2014-006196
Application 13/348,824
REJECTIONS
I. Claims 1-14 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
II. Claims 1---6 and 8-14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Colson and Levy.
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Colson, Levy, and Luboshez.
ANALYSIS
Rejection I
The Examiner rejects claims 1-14 for failing to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, as the
Examiner finds that the Specification fails to convey to a person having
ordinary skill in the art that the inventor was in possession of the subject
matter of the claims. Final Act. 2. Specifically, the Examiner finds that the
Specification provides no basis for the negative limitation of "without use of
a non-pleated backing layer" in claim 1 and the negative limitation "wherein
the panel of window covering material is not attached to a non-pleated
backing layer" in claim 10. Id.
In response to this rejection, Appellant argues that the Specification
describes the invention recited in the claims with reference to the drawings
and that Figures 1---6 of the Specification "clearly show that there is no non-
pleated or other backing layer with the pleated material from which the
window covering is formed." Appeal Br. 5; see also Reply Br. 1-2
("Because the drawings in the present application show that there is no
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Application 13/348,824
backing layer the negative limitations in the claims are supported by the
original disclosure.").
Appellant's argument does not inform us of Examiner error. "[T]he
test for sufficiency [of the written description] is whether the disclosure of
the application relied upon reasonably conveys to those skilled in the art that
the inventor had possession of the claimed subject matter as of the filing
date." Ariad Pharmas., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). "Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation."
Santarus, Inc. v. Par Pharma., Inc., 694 F.3d 1344, 1351(2012). We find
that the Specification provides no express reason for excluding a non-pleated
backing layer from the pleated window covering material. Similarly, we
find no other evidence in the record that persuades us that an artisan of
ordinary skill would have understood from the Specification that the
inventor was in possession of the claimed windows shades, with the pleated
window covering material not having a non-pleated backing layer. 1
At oral hearing, Appellant's counsel argued that the window covering
material would not stack, as required in the claims, if the material included a
non-pleated backing layer. See Tr. 5-7. Counsel, however, does not
identify any evidence in the record, such as language in the Specification,
supporting affidavits, or teachings in the prior art, 2 to support this argument.
1 As we will discuss infra, in connection with our analysis of Rejection II,
Appellant relies on these negative limitations to distinguish the claimed
invention from the prior art of record.
2 Indeed, Levy's Figure 4 appears to show window covering material with
pleats and a backing layer folded as in a stack. See Levy, Fig. 4 (showing
covering 47 with accordion-style folds 54); id. at 4:4--9 (describing covering
47 as including backing layer 53).
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Appeal2014-006196
Application 13/348,824
Without such evidence, we cannot determine from the record whether the
"stacking" limitations of claims 1 and 10, and the associated disclosure in
the Specification, would convey to an artisan of ordinary skill that the
recited pleating material of claim 1 or the recited window covering material
of claim 10 could not form stacks if these materials included a non-pleated
backing layer. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(providing that attorney argument "cannot take the place of evidence").
For the reasons above, we sustain the Examiner's rejection of claims
1-14 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
Rejection II
Independent claim 1 recites, in relevant part, the step of "attaching
without use of a non-pleated backing layer the smaller stack of pleated
material to a roller having a longitudinal axis so that the plurality of pleats
are parallel to the longitudinal axis of the roller." Appeal Br. 9, Claims App.
Similarly, independent claim 10 recites, in relevant part, "a roller and a panel
of window covering material attached to the roller ... wherein the panel of
window covering material is not attached to a non-pleated backing layer."
Id. at 10-11, Claims App. The Examiner finds that Colson discloses much
of the subject matter of claims 1 and 10, but "Colson does not disclose that
the pleated material is attached to a roller, as claimed, but rather that the
pleated material is attached to a top slat." Final Act. 3. The Examiner
further finds that Levy discloses a shade with pleated material that is
attached to a top slat or, alternatively, to a roller. Id. at 3--4. The Examiner
concludes that "[t]o one having ordinary skill in the art it would have been
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Appeal2014-006196
Application 13/348,824
obvious to have provided the shade of Colson with a roller, as taught by
[Levy], as a desired methodology of attaching the pleated material." Id. at 4.
Appellant argues that Levy teaches that a non-pleated backing layer is
associated with the window covering material attached to Levy's roller,
contrary to the requirements of claims 1 and 10. Appeal Br. 6. Appellant
further argues that the Examiner's proposed modification of the teaching of
Levy to remove the backing layer is contrary to Levy's teachings. Id. at 7.
As Appellant explains, Levy discloses that the backing layer must be used to
permanently retain the pleats and, based on this teaching, the Examiner fails
to explain adequately why an artisan of ordinary skill would have had reason
to modify Levy as proposed by the Examiner. Reply Br. 3. We agree.
We recognize that "[ 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." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). Here,
the Examiner fails to articulate a persuasive reason, supported by a rational
underpinning, why a person having ordinary skill in the art would remove
the backing layer of Levy's window covering material, given the teaching
that the backing is needed to ensure that the pleats are permanently retained
in the material.
For the reason above, we do not sustain the Examiner's rejection of
claims 1-6 and 8-14 under 35 U.S.C. § 103(a) as being unpatentable over
Colson and Levy.
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Application 13/348,824
Re} ection III
Claim 7 depends from claim 1. Appeal Br. 10, Claims App. In
rejecting claim 7, the Examiner relies on the same reasoning for combining
Colson and Levy as provided for claim 1. See Final Act. 4 (rejecting claim 7
over Colson and Levy "as applied to claim[] 1 "). As we discussed above in
connection with our analysis of Rejection II, we determine that the
Examiner's reasoning is insufficient to support the obviousness rejection.
Accordingly, we do not sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Colson, Levy, and Luboshez.
DECISION
We affirm the Examiner's rejection of claims 1-14 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
We reverse the Examiner's rejection of claims 1---6 and 8-14 under
35 U.S.C. § 103(a) as being unpatentable over Colson and Levy.
We reverse the Examiner's rejection of claim 7 under 35 U.S.C.
§ 103(a) as being unpatentable over Colson, Levy, and Luboshez.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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