Ex Parte Langenwalter

Board of Patent Appeals and Interferences

Oct 27, 2009

10797410 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUANE LANGENWALTER
____________

Appeal 2009-004466
Application 10/797,410
Technology Center 3600
____________

Decided: October 28, 2009
____________

Before: JENNIFER D. BAHR, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004466
Application 10/797,410

2
STATEMENT OF THE CASE
Duane Langenwalter (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-16, which are the
only claims pending in the application. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002). Appellant’s representative presented
oral argument on October 20, 2009.

The Invention
Appellant’s claimed invention is directed to a decorative fencing
system that includes multiple components that may be assembled in different
arrangements. Spec. 1:5-11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A fencing system comprising:
a plurality of stakes configured to be driven
into the ground, each said stake including a hollow
stake sleeve having an internal diameter;
a plurality of posts, each said post having a
first diameter being smaller than the internal
diameter of each said hollow stake sleeve, any one
of said posts slidably, interchangeably inserting
into and being frictionally and removably retained
by any one of said stake sleeves; and
a plurality of structural fencing components,
each said fencing component including at least one
post attachment collar disposed on an edge thereof,
said post attachment collar having an annular
opening therethrough, said annular opening having
a second diameter larger than said first diameter of
each post, any one of said fencing components
slidably, pivotally, removably, and
Appeal 2009-004466
Application 10/797,410

3
interchangeably attaching to any one of said posts,
to thereby connect adjacent structural fencing
components to each other while allowing said
fencing components to be rotationally adjusted
relative to said posts.

The Rejections
Appellant seeks review of the Examiner’s rejections of claims 1, 2,
and 10 under 35 U.S.C. § 102(b) as being anticipated by Carlson (US
803,741, issued Nov. 7, 1905); claims 11-15 under 35 U.S.C. § 103(a) as
being unpatentable over Carlson and Gibbs (US 6,811,145 B2, issued Nov.
2, 2004); claims 1-10 and 16 under 35 U.S.C. § 103(a) as being unpatentable
over Ravert (US 1,426,215, issued Aug. 15, 1922) and Carlson; and claims
11-15 under 35 U.S.C. § 103(a) as being unpatentable over Ravert, Carlson,
and Gibbs.1

SUMMARY OF DECISION
We REVERSE.

OPINION
Both of Appellant’s independent claims 1 and 16 require (1) at least
one stake configured to be driven into the ground and including a stake

1 Although Appellant does not include this rejection among the grounds of
rejection to be reviewed on appeal (see App. Br. 5) or present any separate
arguments contesting this rejection in the Appeal Brief, Appellant has
unambiguously included claims 11-15 in the claims on appeal. Therefore,
all pending rejections of these claims are before us for review. Moreover,
Appellant does explicitly contest this rejection on page 13 of the Reply
Brief.
Appeal 2009-004466
Application 10/797,410

4
sleeve, and (2) at least one post slidably inserting into and being frictionally
and removably retained by the stake sleeve. In making each of the rejections
before us in this appeal, in order to account for these two limitations, the
Examiner relies on the anchoring member 5 and post 1 of Carlson. Ans. 3-4
and 7. Appellant argues that Carlson does not disclose, either expressly, or
under principles of inherency, that the posts 1 are removably retained by any
one of the stake sleeves (anchoring member 5). App. Br. 10-11. The
Examiner’s position, as articulated, for example, on page 4 of the Answer,
is:
Examiner notes that ornament 3 is removably,
frictionally received in post 1 as shown [in] cross-
sectional view in Figure 5; page 1[,] lines 31-54. In
that the cross-sectional view of the engagement
between ornament 3 and post 1 is identical to the
cross-sectional view of the engagement between
post 1 and stake 5, as shown in Figure 2, it is
readily apparent that posts 1 are also removably,
frictionally received within stakes 5. Clearly, each
of posts 1 and each of stakes 5 are identical and
post 1 may be interchangeably inserted into any
one of stakes 5; Figures 1 and 2.
The Examiner’s position is untenable. Carlson discloses that “[e]ach
of the posts 1 and 2 is provided with an anchoring member of any desired
character, as the parts designated 5 and 6 in Figs. 2 and 3.” Carlson 1:42-45.
Carlson further discloses that “either form of anchoring members 5 or 6 is
attached to the lower end [of the corner-post 7] as may be deemed most
efficient and desirable.” Carlson 1:51-54. Carlson provides no specific
description as to how the anchoring member 5 is attached to the post 1 or
corner-post 7. Carlson’s Figure 2 merely illustrates the post 1 disposed in a
hollow sleeve of the anchoring member 5. Accordingly, we find that
Appeal 2009-004466
Application 10/797,410

5
Carlson provides no express description of a post being frictionally and
removably retained in the anchoring member 5.
The Examiner’s attempt to analogize the cross-sectional view of
Carlson’s Figure 2 with that of Carlson’s Figure 5, which depicts removable
ornamental sections 3 (Carlson 1:39) disposed in the upper end of post 1,
and to deduce from any similarities between those two figures that posts 1
must likewise be removably and frictionally received within anchoring
members 5, amounts to mere speculation and unfounded assumptions. “It is
well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in
it. Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted). As correctly pointed out by Appellant, a
removable attachment of the post 1 or corner-post 7 is merely one possibility
out of a myriad of other possible attachments. See App. Br. 10.
Accordingly, we find that a post being frictionally and removably retained in
an anchoring member, or stake, is not an inherent feature of Carlson.
For the above reasons, Appellant has demonstrated that the Examiner
erred in finding that Carlson discloses a post frictionally and removably
retained in a stake. Therefore, we do not sustain the Examiner’s rejection of
claims 1, 2, and 10 as being anticipated by Carlson.
Appeal 2009-004466
Application 10/797,410

6
In rejecting claims 1-16 under 35 U.S.C. § 103(a), the Examiner does
not rely on either Gibbs or Ravert for a teaching of a post frictionally and
removably retained in a stake. Rather, the Examiner relies on the same
unfounded assumption that Carlson teaches this feature. Rejections based on
35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the
examiner has the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions, or hindsight reconstruction to supply deficiencies in
the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The
Examiner also does not articulate any reason why it would have been
obvious to modify either Carlson or Ravert to provide such a feature.
Accordingly, the Examiner has not established a prima facie case of
obviousness of any of claims 1-16. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (rejections on obviousness grounds must be supported
by “some articulated reasoning with some rational underpinning” to combine
the known elements in the manner required in the claim at issue). Therefore,
we do not sustain the rejections of claims 11-15 as being unpatentable over
Carlson and Gibbs; claims 1-10 and 16 as being unpatentable over Ravert
and Carlson; and claims 11-15 under 35 U.S.C. § 103(a) as being
unpatentable over Ravert, Carlson, and Gibbs.

DECISION
The Examiner’s decision is reversed.
REVERSED

Appeal 2009-004466
Application 10/797,410

7

hh

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413