Ex Parte Lugo

Patent Trial and Appeal Board

Sep 28, 2012

11472968 (P.T.A.B. Sep. 28, 2012)

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.
11/472,968 06/22/2006 Milagros Lugo MML 06090 6708
82357 7590 09/28/2012
James Ray & Associates Intellectual Property, LLC
4268 Northern Pike Rd
Monroeville, PA 15146
EXAMINER
FULTON, KRISTINA ROSE
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
09/28/2012 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 MILAGROS LUGO
____________________

Appeal 2010-009301
Application 11/472,968
Technology Center 3600
____________________

Before: KEN B. BARRETT, BENJAMIN D. M. WOOD, and
RICHARD E. RICE, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009301
Application 11/472,968

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1, 2 and 4-10. Claim 3 has been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to an apparatus for assisting in opening and
closing the door latch on a trailer of a tractor trailer combination. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. An apparatus for assisting in at least one of opening and
closing a door latch attached to at least one door of a trailer,
said apparatus comprising:
(a) an elongated tubular member having each of a first
predetermined length and a first predetermined shape;
(b) a single elbow portion connected at a first end thereof to
a predetermined end of said elenogated tubular type member;
(c) an oval shaped substantially hollow portion having a
second predetermined length connected at a first end thereof to
a second end of said elbow portion for receiving an end of said
door latch at a second end thereof; and
(d) each of said elongated tubular member and said offset
portion and said oval shaped substantially hollow portion are
formed from a predetermined material.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ortega US 2007/0096473 A1 May 3, 2007
Appeal 2010-009301
Application 11/472,968

3

REJECTIONS
Claims 1, 2 and 4-10 stand rejected under 35 U.S.C §102(e) as being
anticipated by Ortega. Ans. 4.
ANALYSIS
Appellant argues claims 1, 2 and 4-10 as a group. We select claim 1
as representative, with the remaining claims in the group standing or falling
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 recites an apparatus comprising, inter alia, a “single elbow
portion.” Appellant argues that Ortega’s apparatus has two elbow portions
instead of the claimed single elbow portion. App. Br. 8. However, we agree
with the Examiner (Final Rej. 3) that regardless of any additional elbows
that Ortega’s apparatus may have, it still falls within the scope of claim 1
and its “single elbow” limitation. Appellant’s claims use the open-ended
transition word “comprising” between the preamble and the main body of
the claim, which signals that the claim is presumptively open-ended and
does not exclude additional unrecited elements. Gillette Co. v. Energizer
Holdings, Inc., 405 F.3d 1367, 1371 (Fed. Cir. 2005). While it is true that
the open-ended nature of “comprising” is not unlimited, the Federal Circuit
has held that even in the context of infringement litigation – where claim
terms are not given their broadest reasonable interpretation – a claim that
recites a specific number of elements will be limited to that number only
when the addition of an element “eliminates an inherent feature of the
claim.” SunTiger, Inc. v. Scientific research Funding Group, 189 F.3d 1327,
1336 (Fed. Cir. 1999). We have found nothing in the record that suggests
Appeal 2010-009301
Application 11/472,968

4
that an additional elbow would eliminate an inherent feature of the claimed
invention.
For the reasons stated above, we sustain the Examiner’s rejection of
the appealed claims as anticipated by Ortega.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2 and 4-
10 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

mls