Ex Parte Lin

Patent Trial and Appeal Board

Feb 29, 2016

12720050 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121720,050 03/09/2010
23464 7590 03/02/2016
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Tzong-Fu Lin
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.
100100 8303
EXAMINER
RAMSEY, JEREMY C
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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 TZONG-FU LIN
Appeal2013-009465
Application 12/720,050
Technology Center 3600
Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
22. An oral hearing was conducted on February 18, 2016. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter NEW GROUNDS OF REJECTION.
Appeal2013-009465
Application 12/720,050
The claims are directed to a window covering. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A window covering comprising:
a first rail;
window covering material positioned adjacent to the first
rail, the window covering material moveable from a retracted
position to an extended position, the window covering
material having a top edge and a lower edge below the top
edge, a front side and a rear side opposite the front side;
a liner positioned adjacent to the rear side of the window
covering material, the liner moveable from a retracted position
to an extended position, the liner having at least one pocket,
each at least one pocket defining a channel within the liner;
and
a first lift cord extending from the first rail to a position
adjacent to the bottom edge of the window covering material,
a portion of the first lift cord extending through the channel of
at least one pocket; and
a second lift cord extending from the first rail to a
position adjacent to the bottom edge of the window covering
material; a portion of the second lift cord extending through
the channel of at least one pocket.
REJECTIONS
Claims 1, 2, 6, 7, 11, 13-15 stand rejected under 35 U.S.C. § 102 (a)
as being anticipated by Anthony (WO 2010/021841 Al, pub. Feb. 25, 2010).
Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony applied to claim 1 and further in view of Yang
(US 5,862,850, iss. Jan. 26, 1999).
Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony applied to claims 1 and 7 and further in view of
Palmer (US 6,662,845 Bl, iss. Dec. 16, 2003).
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Appeal2013-009465
Application 12/720,050
Claims 16, 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony in view of Yang.
Claims 18, 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony and Yang applied to claim 1 7 and further in view
of Palmer.
Claims 12 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony.
Claims 21, 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anthony applied to claim 20 and further in view of
Palmer.
OPINION
Claims 1-19
A central point of contention in this appeal involves the meaning of
the phrase "each at least one pocket defining a channel within the liner"
recited in independent claim 1 and independent claim 16. App. Br. 8, 1 O;
see also Reply Br. 1-3. The Examiner has interpreted Anthony's sheath 82
to include a pocket defining a channel. That issue aside, Appellant disputes
the reasonableness of the Examiner's construction of the term "within" to
include the location of Anthony's sheath, which lies within the boundary of
a normal projection of the plane of Anthony's sheet 30 (i.e., above as viewed
in Figures 18 and 19), but outside the sheath itself. See Ans. 4--5.
"The words used in the claims are interpreted in light of the intrinsic
evidence of record, including the written description, the drawings, and the
prosecution history, if in evidence." Teleflex, Inc. v. Ficosa North America
Corp., 299 F.3d 1313, 1324--25 (Fed. Cir. 2002) (citation omitted); accord
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Appeal2013-009465
Application 12/720,050
Toro Co. v. White Consol. Industries, Inc., 199 F.3d 1295, 1301 (Fed. Cir.
1999) ("The claim [] is not construed in a lexicographic vacuum, but in the
context of the [S]pecification and drawings.") (citation omitted). Perhaps,
when read in isolation, the Appellant's proposed construction of the term
within is more reasonable. However, a difficulty in determining the proper
meaning of the term "within" arises because Appellant asks us to construe
the meaning of the term in a manner that would effectively exclude the
embodiment depicted in Figure 5 which depicts the channels defined by
pockets 21, 22 as residing above (as viewed in Figure 5) the liner 9 itself.
Claim interpretation excluding the preferred embodiment is rarely, if ever,
correct. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1996).
Appellant admitted in oral argument that Figure 5 is incorrect and
inconsistent with the actual invention. See Oral Hearing Transcript at __ .
Although Appellant may be able to amend Figure 5 in further prosecution so
as to be consistent with the invention and support Appellant's proposed
claim construction, 1 at this point the acknowledged error introduces an
ambiguity as to the broadest reasonable construction of "within" so as to
render the claim scope indefinite. Accordingly, pursuant to 37 C.F.R.
§ 41.50(b ), we reject claims 1 and 16, and those claims depending therefrom
under 35 U.S.C. § 112, second paragraph. Because the subject matter
encompassed by claims 1 and 16 cannot be reasonably understood without
resort to speculation, we do not render a final decision on the merits of the
1 We also note that 37 C.F.R. § 1.83(a) requires that "[t]he drawing in a
nonprovisional application must show every feature of the invention
specified in the claims." See MPEP § 608.02(d).
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Appeal2013-009465
Application 12/720,050
prior-art rejections of those claims and their dependents at this time. We
instead reverse the prior-art rejections because a prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.
See In re Steele, 305 F.2d 859, 862 (CCPA 1962); see also In re Wilson, 424
F.2d 1382, 1385 (CCP A 1970). Whether Appellant's remaining disclosure
suffices to support the proposed amendment to Figure 5 is not an issue that
is before us.
Claims 20-22
Independent claim 20 requires "the liner having a pair of spaced apart
pockets defined by opposite edges of the liner being folded back over the
liner, each lift cord of the lift cords passing through one of the pair of
pockets." The Examiner acknowledges Anthony does not disclose using the
liner itself to form the recited pockets. The Examiner reasons:
The [E]xaminer takes Official Notice that it is old and
well known to sew pockets into curtains and it would have been
obvious to one having ordinary skill in the art to sew the pocket
into the liner. Sewing it into the liner would provide greater
strength and resistance to tearing or separation
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to form the
pockets by folding back opposite edges of the liner, instead of
using a separate pocket as taught by Anthony et al '841 since it
has been held that forming in one piece an article which has
formerly been formed in two pieces and put together involves
only routine skill in the art. Howard v. Detroit Stove Works,
150 U.S. 164 (1993). Forming the pocket out the fabric of the
liner would provide a simple and cheap means of making the
pockets.
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Appeal2013-009465
Application 12/720,050
Final Act. 6-7. The Examiner also "cited US Patent 7,654,299 to Leblanc et
al in the Final Rejection (FR 9: 7-9) to disclose the sewing of pockets into
. " A 8 curtams. ns. .
We agree with Appellant that forming a pocket with Anthony's sheet
material 30 involves more than simply forming "in one piece an article
which has formerly been formed in two pieces." App. Br. 22. We also
agree that Leblanc, while teaching pockets 42 formed in liner 3 8 to
accommodate battens 50, has nothing to do with arranging the pockets so as
to accommodate a lift cord. App. Br. 21-22. Thus, considering the
combined teachings of Anthony and LeBlanc as a whole, we agree with
Appellant that the Examiner has not persuasively established the claimed
subject matter would have been obvious to one skilled in the art without the
benefit of hindsight. App. Br. 23-25. "The invention must be viewed not
after the blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
made." Sensonics Inc. v. Aerosonic Corp., 81F.3d1566, 1570 (Fed. Cir.
1996) (citation omitted). Accordingly, we reverse the Examiner's rejections
of claims 20-22.
DECISION
The Examiner's prior-art rejections are reversed.
Claims 1-19 are rejected under 35 U.S.C. § 112, second paragraph.
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the NEW GROUNDS OF
REJECTION to avoid termination of the appeal as to the rejected claims:
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Appeal2013-009465
Application 12/720,050
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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