Ex Parte Larsen

Patent Trial and Appeal Board

Dec 17, 2014

10920650 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHARLES LARSEN
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Appeal 2012-009552
Application 10/920,650
Technology Center 3600
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Before EDWARD A. BROWN, THOMAS F. SMEGAL
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Charles Larsen (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 42, 75, 76, 81–88. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a fence structure. Appellant
argues certain features recited in the claims, but argues all the claims
together (referring to Appellant’s “inventions”) as generally related to these
features. Br. 2, 16, 17, 20–22, 24– 26, 28, and 29. Accordingly, we address
the argued features as they relate to independent claims 42 and 85. Claims
42 and 85 are reproduced below:
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42. Apparatus comprising:
a generally planar mesh fence portion having a first series
of parallel wires in a first direction and a second series of parallel
wires in a second direction generally orthogonal to the first series,
the first series and the second series crossing one another at
a plurality of points, said wires joined to each other at
substantially all of the points at which the first series and the
second series cross one another, and
at least one generally linear bend formed from and
extending substantially across the generally planar mesh fence
portion, said bend having at a peak one of the wires of the first
series that is displaced from the generally planar mesh fence
portion and having two shoulders generally formed by two
adjacent parallel wires in the first series, those two shoulders
remaining in the general plane of the mesh fence portion,
said fence portion further including a second bend formed
from and extending substantially across the generally planar mesh
fence portion, said second bend having at a peak one of the wires
of the second series that is displaced from the general plane of the
mesh fence portion and having two shoulders generally formed by
two adjacent parallel wires in the second series, those two
shoulders remaining in the general plane of the mesh fence
portion; and
the first series peak wire and the second series peak wire
intersect and are fixedly joined to each other and form a
connection point that is transversely displaced from the general
plane of the mesh fence portion.

85. A barrier, comprising:
a plurality of wire mesh panels, each panel having two or
more vertical v-shaped edge deformations and two or more
horizontal v-shaped edge deformations wherein some of the
deformations are positioned near the edge and are in
communication about a perimeter of each said panel, wherein said
panels are stackable in conforming contact with each other such
that the deformations of each said panel are nestable in
conforming contact within the deformations of another of said
panels.

REFERENCES RELIED ON BY THE EXAMINER
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Skvorecz US 5,921,513 July 13, 1999
Cronin GB 2167786 A June 4, 1986

THE REJECTION ON APPEAL
Claims 42, 75, 76, and 81–88 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cronin and Skvorecz.

ANALYSIS
The rejection of claim 42 as unpatentable over Cronin and Skvorecz
(I)
Claim 42 recites, in part, “a generally planar mesh fence portion
having a first series of parallel wires in a first direction and a second series
of parallel wires in a second direction generally orthogonal to the first
series.” Claims Appendix 31–32. Claim 42 further recites, “the first series
peak wire and the second series peak wire intersect and are fixedly joined
to each other and form a connection point that is transversely displaced from
the general plane of the mesh fence portion.” Id (emphasis added).
Appellant refers to Figure 4 of the Application as depicting the peak wires
fixedly joined to each other. Br. 8. We reproduce Figure 4 of the
Application below.
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Figure 4 is a perspective view of a portion of a fence panel having a
generally planar surface and at least two generally non-parallel v-shaped
stiffening portions.
(II)
The Examiner rejects claim 42 as obvious over Cronin and
Skvorecz, stating:
As set forth in the previous Office action mailed 3/2/2010
it appears that the peak wires in figure 12 [of Cronin] intersect
and are fixedly joined. However, for the sake of argument, if
they are not, Skvorecz teaches this feature for the purpose of
increasing sturdiness/rigidity as was detailed in the previous
Office Action mailed 3/2/2010.
Final Act. 3; Ans. 5. Thus, the Examiner incorporates a portion of the
discussion set forth in an Office Action mailed on March 2, 2010, as
follows, “Applicant is reminded that one with common knowledge in
making products out of mesh wires would have joined every intersection of
wires so that every intersection forms a sturdy structure overall.” Office
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Action mailed March 2, 2010 at 10. The Examiner then states,
“[n]evertheless, assuming arguendo that Cronin does not show the peak
wires, at the point A3, being ‘fixedly joined’, Skvorecz is being relied upon
as evidence of this feature.” Id. “Skvorecz shows a product with an
intersection of peak wires that are fixedly joined thus forming a connecting
point B1 (see marked-up attachment) that is transversely displaced from a
general plane of a mesh portion so that every intersection of the wires is
joined to create a sturdy structure overall.” Id. We provide the Examiner’s
“marked-up attachment” (an annotated version of figure 1 of Skvorecz) from
the March 2, 2010, Office Action below:

Figure 1 of Skvorecz, as annotated by the Examiner, depicts two stacked
stands 10 made of wire rod 21, and the stands include recesses 24 where two
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pieces of the wire rod 21 intersect at a point “B1,” which is identified by the
Examiner as a point where the two pieces are fixedly joined. See also
Skvorecz, col. 2, ll. 19–21, 40–60, and col. 3, ll. 1–10.
The Examiner, referring to Figure 13 of Cronin (annotated by the
Examiner) concludes it would have been obvious “to fixedly join the peak
wires A1, A2 of the first bend and the second bend thus forming a
connection point transversely displaced from the general plane of the mesh
fence portion” of Cronin. Final Act. 10–11. As a rationale for making the
modification, the Examiner explains that it is “so that every intersection of
the wires is joined to create a sturdy structure overall.” Id. at 10. We
reproduce Figure 13 of Cronin, annotated by the Examiner to include
reference number A1–A3, below.
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Figure 13 depicts a wire mesh panel 30 with two v-shaped
strengthening ridges 31 extending in transverse directions. Cronin, p.
3, ll. 66–84.
(III)
Appellant traverses the Examiner’s conclusion regarding claim 42,
stating, “Cronin makes no mention of any welding or other ‘fixedly joined’
relationship between the two ‘peak wires’ and it is certainly NOT clear from
the drawings whether any ‘peak wires’ are fixedly joined.” Br. 23.
Appellant refers to a statement made by the Examiner during prosecution
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indicating it “is not clear from the drawings in Cronin whether a fixed
connection point 9 protrudes from the generally planar surface configuration
of the panel since the peak wires of the bends do [not] appear to be
connected in Figure 12 or Figure 13.” Br. 24 citing Office Action mailed
July 28, 2009 at 35.
Appellant further contends that Cronin is non-enabling prior art,
stating “Cronin's disclosure certainly does not ‘enable’ such a person to
practice Appellant's claimed inventions, including (for example)
embodiments such as covered by Claims 42, 75, 76, and 81-88 (requiring
specific configurations of ‘peak wires’ within the resulting bent mesh). Br.
24.
Regarding the Examiner’s combination of Cronin and Skvorecz,
Appellant contends that Skvorecz does not disclose a peak wire of each of a
first bend and second bend. Br. 27. Appellant further asserts Skvorecz
“does not disclose an intersection of ‘peak’ wires that are fixedly joined to
each other forming a connection point that is transversely displaced from the
general plane of the mesh fence portion.” Id. Rather, Appellant asserts,
“Skvorecz's wire rods 21… are an additional feature with preformed bends
that provide recessed spaces 23 and 24 for the placement of chafing fuel
heaters,” whereas “Appellant’s claimed “peak” wire forms the peak of a
bend formed from the existing wires of the fence panel. Id. Appellant
explains, “Skvorecz’s wire rods are NOT formed from existing wires of the
chafing stand (i.e., wires that are already affixed to the lower rim of the
stand)” and “since Skvorecz does not teach how to form a peak wire in the
wire grid network of his chafing stand, he certainly does not teach fixedly
joining peak wires of two intersecting bends.” Id. at 28.
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Appellant also refers to a declaration executed by the Appellant (the
sole named inventor) and submitted on January 13, 2010, (“Declaration”).
Br. 26.1 Appellant’s Brief, states:
“Appellant respectfully submits that this submission
provided clear evidence that persons ‘having ordinary skill in
the art’ were not (and still are not) able to form non-parallel
intersecting bends from the existing wires of a fence panel
wherein each bend comprises a ‘peak’ wire displaced from the
general plane of the panel that intersects and is fixedly joined to
the ‘peak’ wire of the other intersecting bend.”
Id. The Declaration states, in part, “On January 31, 2007, a wire
manufacturer from Company E in Italy requested to see the machinery used
to make the claimed invention. My understanding was that, due to the
unique structure of my inventive fence panels, that wire manufacturer could
not understand how the product could be manufactured.” Declaration 3.
Appellant also asserts that the Declaration supports, via a statement of sales
and other second-hand statements characterizing Appellant’s product as
“unique,” a conclusion of non-obviousness of “Appellant’s claimed
invention.” Br. 26.

(IV)
Regarding whether Cronin discloses that the peak wires in Figure 12
intersect and are fixedly joined, we agree with Appellant. Although figure
12 and figure 13 of Cronin appear to show peak wires crossing and near to
each other (or possibly touching), the Examiner has not pointed to any
specific portion of the Specification or elsewhere in Cronin indicating that
the peak crossing wires are necessarily fixedly joined to each other.

1 The Declaration is not included in the Evidence Appendix of the Appeal
Brief.
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As for whether it would have been obvious to modify Cronin to
include fixedly joined “peak” wires as recited in claim 42, Appellant has not
persuaded us of Examiner error. The Examiner’s stated rationale for making
the modification is “to create a sturdy structure overall.” Office Action
mailed March 2, 2010 at 10. Even assuming arguendo that Appellant’s
assertions that the cited connections from Skvorecz are not on “peaks” and
are formed from separate, pre-formed material are correct, the Examiner’s
rationale for modifying Cronin is still adequate and based on rational
underpinning. The Examiner’s rejection is primarily based on Cronin and
relies on the teaching of Skvorecz for the limitation that the peak wires,
which are already disclosed by Cronin, should be fixedly joined. Id. The
Examiner’s rationale does not bodily incorporate the entire fixedly joined
structure from Skvorecz, and the Examiner’s modification to Cronin does
not depend on the exact placement of the fixedly joined connection
described by Skvorecz or how this connection (via existing wires or via
added wires) was created in Skvorecz. Therefore, we see no error in the
Examiner’s combination of Cronin and Skvorecz.
Regarding whether Cronin does not enable the configuration of peak
wires, as asserted by Appellant (Br. 24), we note that the rejection of claim
42 (and every other rejected claim on appeal) is based on obviousness. Ans.
4 and Final Office Action 2. Our reviewing court has addressed the issue of
whether enablement is a requirement for a reference cited in an obviousness
rejection and determined the following:
While a reference must enable someone to practice the
invention in order to anticipate under § 102(b), a non-enabling
reference may qualify as prior art for the purpose of
determining obviousness under § 103. Reading & Bates
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Constr. Co. v. Baker Energy Resources Corp., 748 F.2d 645,
652, 223 USPQ 1168, 1173 (Fed.Cir. 1984) (reference that
lacks enabling disclosure is not anticipating, but “itself may
qualify as a prior art reference under § 103, but only for what is
disclosed in it” (emphasis in original)); see Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551,
13 USPQ2d 1301, 1304 (Fed.Cir.1989) (“[e]ven if a reference
discloses an inoperative device, it is prior art for all that it
teaches”).
Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.
1991). See also Amgen Inc. v. Hoechst Marion Roussel, Inc., stating:
Under § 103, however, a reference need not be enabled; it
qualifies as a prior art, regardless, for whatever is disclosed
therein. … the district court should reconsider obviousness with
respect to [cited reference], but should do so without reference to
whether [cited reference] is enabled, as enablement of the prior art
is not a requirement to prove invalidity under § 103.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir.
2003) (internal citations omitted).
Moreover, prior art references are presumed enabled.
Consistent with the statutory framework and our
precedent, we therefore hold that, during patent prosecution, an
examiner is entitled to reject claims as anticipated by a prior art
publication or patent without conducting an inquiry into
whether or not that prior art reference is enabling. As long as
an examiner makes a proper prima facie case of anticipation by
giving adequate notice under § 132, the burden shifts to the
applicant to submit rebuttal evidence of nonenablement.
In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).
Aside from attorney argument in the Appeal Brief relating to
enablement or lack of enablement of the cited prior art, Appellant provides a
Declaration, which lists Appellant’s characterization of statements of other
individuals identified, not by name, but by their association with companies
(also not identified by name) in communication with Appellant. Declaration
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2–3. Other than a general statement as to Appellant’s understanding that one
“wire manufacturer could not understand how the product could be
manufactured,” Declaration 3, the Declaration does not address the issue of
enablement. Further, the Declaration does not show that a person of
ordinary skill in the art reading Cronin would need to perform undue
experimentation to practice the disputed claim features. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). Indeed, the Declaration does not specifically
comment on the disclosure provided by Cronin or the disclosure provided by
Skvorecz. Rather, the majority of the Declaration focuses on Appellant’s
contentions that the unnamed sources listed in the Declaration indicated that
Appellant’s product is “unique.” Declaration 2–3.
We find that the lack of basic and critical information provided
regarding the sources of the information (such as their names, qualifications,
and their exact statements) listed by Appellant in the Declaration as well as
the second-hand nature of the statements in the Declaration severely restricts
the evidentiary weight we can accord the content of the majority of the
Declaration. Regarding the statement of sales of products including the
features recited in the claims, Appellant provides only sales numbers and
does not show a nexus between these sales and the features recited in the
claims at issue here. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir.
1988) (“Nor could the jury, from the bare evidence of units sold and gross
receipts, draw the inference that the popularity of the [sold units] was due to
the merits of the invention.”). In re Huang, 100 F.3d 135, 139-140 (Fed.
Cir. 1996) (without evidence that the sales are a substantial quantity in the
relevant market, “bare sales numbers” are a “weak showing” of commercial
success, if any).
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In light of the above-noted deficiencies in the Declaration, we
consequently accord little evidentiary weight to Appellant’s Declaration
insofar as it applies to whether the cited references are enabling or whether
the Examiner’s rejection of claim 42 as obvious is proper. Although
Appellant has provided extensive argument regarding whether the cited prior
art is non-enabling, Appellant does not provide a sufficient factual basis to
rebut the presumption that the cited references enable the features for which
they are cited. Thus, we are not persuaded the Examiner erred in relying on
Cronin and Skvorecz in rejecting claim 42.

The rejection of claim 85 as unpatentable over Cronin and Skvorecz
(I)
Claim 85 recites a plurality of wire mesh panels, each panel having
two or more vertical v-shaped edge deformations and two or more horizontal
v-shaped edge deformations.
(II)
In rejecting claim 85 over Cronin and Skvorecz, the Examiner finds
“[f]igure 12 teaches that it was well known for mesh fence portions to have
both horizontal bends and vertical bends for the purpose of increasing both
horizontal and vertical rigidity.” Final Act. 2; Ans. 4. The Examiner finds,
“one of ordinary skill in the art (one skilled and knowledgeable enough to
design, manufacture and use mesh panels) would be motivated and capable
of modifying the nestable embodiment (figs. 18-20) to have both vertical
and horizontal bends without giving up the nestable design (bends formed by
deforming out of mesh rather than attaching separate bends thereto).” Final
Act. 2; Ans. 5. The Examiner concludes, “it would have been obvious to
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one with ordinary skill in the art at the time the invention was made to
modify the nestable Cronin embodiment (figs 18-20) to add intersecting
vertical bends to the horizontal bends for the purpose of increasing rigidity;
and further to maintain the nestable design of figures 18-20 (bent out from
mesh rather than separately attached thereto) for the purpose of keeping
storage space at a minimum.” Final Act. 2–3; Ans. 5. We reproduce figure
20 of Cronin, cited by the Examiner, below.
Figure 20 of Cronin depicts multiple wire mesh panels 1, each with two
horizontal strengthening ridges 4. Cronin, p 2, ll. 76–92.
(III)
Appellant explains, “[b]ending a fence panel in one direction is not
new.” Br. 17. Appellant further states, “Apparently, despite the existence of
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such prior art fence panels for many years, no one has ever made (or apparently
figured out HOW to make) a fence panel with stiffening bends in TWO
directions.” Id. at 18. Regarding the disclosure in Cronin, Appellant states:
As explained further below, Cronin's ‘mentions’ of the
concept are minimal and conclusory (e.g., ‘The transverse
strengthening means may be of the same material as that of the
panel formed into ridges either by bending the panel or from
preformed sections.’ (emphasis added). In NO way can Cronin's
‘mentions’ be said to meet the enablement requirement by
‘plac[ing] the claimed invention in the possession of the
public’(Beckman, supra).
Id. Appellant refers to Cronin, page 3, ll. 63–66 and asserts, “simply bending
the wires of Cronin's panel in two directions does not result in Appellant's
claimed bends in two directions formed from the existing wires comprising the
fence panel mesh and having peak wires which intersect and are fixedly joined
to each other.” Br. 22. Appellant argues Cronin “fails to disclose any details as
to how this bending in two directions would actually be achieved, and certainly
does not enable Appellant's claimed inventions with such a non-enabling,
casual reference to bending in more than one direction.” Id. at 25. In support
of the above-noted arguments, Appellant also refers to the Declaration
discussed above with respect to fixedly joined peak wires in claim 42. Id. at
25–26.
(IV)
As pointed out by Appellant, Br. 18, Cronin states “[t]he transverse
strengthening means may be of the same material as that of the panel
formed into ridges either by bending the panel or from preformed sections.”
Cronin, p. 3, ll. 64–66 (emphasis added). As found by the Examiner, figure
21 of Cronin depicts a bent strengthening channel, and figures 12 and 13 of
Cronin depict strengthening channels extending transversely to each other.
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Our discussion above pointed out that prior art is presumed enabled. In re
Antor Media Corp., 689 F.3d at 1289. As further discussed above, the
Declaration provided by Appellant does not specifically comment on Cronin
or Skvorecz, and aside from comments on the number of sales of
Appellant’s product, provides primarily second-hand information from un-
named sources. Therefore, the Declaration carries little evidentiary weight.
Although Appellant also provides extensive attorney argument regarding an
alleged failure of the cited references to enable the v-shaped edge
deformations extending in different directions, Appellant provides no
persuasive evidence rebutting the presumption of enablement. Accordingly,
we are not persuaded the Examiner erred in relying on a combination of
Cronin and Skvorecz for the recited v-shaped deformations, and we sustain
the rejection of claim 85.
Appellant argues the features discussed above, but argues all the
claims together (referring to Appellant’s “inventions”) as generally related to
these features. Br. 2, 16, 17, 20–22, 24– 26, 28, and 29. Specifically,
Appellant lists all the rejected claims and then makes arguments for the
above-noted features. Id. In light our discussion above, we affirm the
Examiner’s rejection of claims 42 and 85 and also affirm the rejection of
claims 75, 76, 81-84, and 86–88 for the same reasons.
DECISION
Although we have carefully considered all of Appellant’s arguments
and the presented evidence, we are not persuaded that the positions taken by
the Examiner with respect to claims 42, 75, 76, and 81-88 are in error. This
being the case, the Examiner’s rejection of claims 42, 75, 76, and 81-88 as
unpatentable over Cronin and Skvorecz is affirmed.
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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

Ssc