Ex Parte Lin

Patent Trial and Appeal Board

May 1, 2015

12184287 (P.T.A.B. May. 1, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/184,287 08/01/2008 Tzong Fu Lin 080430 7091
7590 05/04/2015
Buchanan Ingersoll & Rooney PC
One Oxford Centre
20th Floor
301 Grant Street
Pittsburgh, PA 15219-1410
EXAMINER
MITCHELL, KATHERINE W
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
05/04/2015 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 TZONG FU LIN
____________

Appeal 2011-010005
Application 12/184,2871
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–10 and 12–15 under 35 U.S.C. § 103(a) as
unpatentable over Cheng (US 2004/0154758 A1, pub. Aug. 12, 2004) and
Asseo (US 3,403,427, iss. Oct. 1, 1968). An oral hearing was held on April
28, 2015. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 According to the Appellant, “[t]he real party in interest is WholeSpace
Industries, INO, which is also referred to as Whole Space Industries, LTD.”
Appeal Br. 1.
Appeal 2011-010005
Application 12/184,287

2
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A window covering comprising:
a first rail, the first rail having a first end and a second
end opposite the first end;
window covering material adjacent the first rail, the
window covering material moveable from a retracted position
to an extended position;
at least one lift cord extending through the window
covering material to the headrail;
a plurality of pulleys positioned adjacent the first rail;
at least one lift system adjacent the first rail,
at least one lift system cord extending from the at least
one lift system, the at least one lift system cord configured to
extend away from the at least one lift system along a path
defined by at least one of the plurality of pulleys when the
window covering material is extended away from the first rail
to the extended position and configured to be retracted toward
the at least one lift system along the path when the window
covering material is retracted from the extended position
to the retracted position; and
a deformable connector attached to the at least one lift
system cord and to the at least one lift cord, the at least one
connector sized and configured to deform such that the
connector has a size and shape sufficient for the at least one lift
system cord, connector and a portion of the at least one lift cord
to pass over at least one of the plurality of pulleys during
movement along the path; and the connector assuming a curved
shape as the connector passes over the at least one of the
plurality of pulleys.

ANALYSIS
The Examiner finds that Cheng substantially discloses the window
covering as required by claim 1. Ans. 4–5. Notably, the Examiner finds that
Cheng’s common connection or junction 22 corresponds to the claimed
Appeal 2011-010005
Application 12/184,287

3
connector and Cheng’s rotors 50–53 correspond to the claimed plurality of
pulleys. Id. The Examiner also finds Cheng fails to teach a deformable
connector. Id at 5. To remedy this deficiency with regard to claim 1, the
Examiner turns to Asseo’s teaching of an endless loop 15, which is made of
a resilient material and couples two end portions 11, 13 together. See id. at
5, 10–12, Asseo, col. 1, ll. 54–61, col. 2, ll. 14–20, Figs. 1–3. Accordingly,
the Examiner relies on Cheng’s junction 22, as modified by Asseo’s
teaching, to result in the following recitation of claim 1:
. . . connector sized and configured to deform such that the
connector has a size and shape sufficient for the at least one lift
system cord, connector and a portion of the at least one lift cord
to pass over at least one of the plurality of pulleys during
movement along the path . . . .
Appeal Br. 15, Claims App. (emphasis added).
Notably, the Examiner has construed the claimed phrase “configured
to” in the aforementioned recitation of claim 1 to mean “capable of.” See
Ans. 10. However, the term “capable of” is broader than the phrase
“configured to,” which is more akin to “designed to.” See Aspex Eyewear,
Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)
(citations omitted). In other words, it is possible for a hypothetical structure
to be capable of deforming such that the structure has a size and shape
sufficient for the structure to pass over a pulley and the structure not be
configured to deform such that the structure has a size and shape sufficient
for the structure to pass over a pulley.
Further, the Examiner is required to support by a preponderance of the
evidence that Cheng’s junction 22, as modified by Asseo’s teaching, results
in a connector configured to, i.e., designed to, deform such that the
Appeal 2011-010005
Application 12/184,287

4
connector has a size and shape sufficient for the connector to pass over a
pulley. See Appeal Br. 9–12, Reply Br. 2–3. Cheng describes that rotors
50–53 “serve to entrain the primary lines 20 and 21 in back and forth
relation collecting those lines as seen in FIGS. 3 and 4, so as to enable the
junction 22 to travel between rotor 50 and the line 24 winding member 34,
as the shade or blind is moved up and down.” Cheng, para. 51 (emphasis
omitted). Moreover, the Examiner does not explain how Cheng’s disclosure
evidences that junction 22 is configured to, i.e., designed to, pass over a
pulley, e.g., rotors 50–53. The Examiner only finds that junction 22 is
“capable of moving around several of the rotors” (Ans. 11; see also Ans. 10,
12–15). As such, the Appellant’s contention that Cheng’s junction 22, as
modified by Asseo’s teaching, fails to result in a connector configured to
deform such that the connector has a size and shape sufficient for the
connector to pass over a pulley is persuasive. See Appeal Br. 9–10; see also
id. at 11–12, Reply Br. 2–3.
Thus, the Examiner’s rejection of independent claim 1, and its
dependent claims, as unpatentable over Cheng and Asseo is not sustained.

DECISION
We REVERSE the rejection of claims 1–10 and 12–15.

REVERSED

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