Ex Parte Mafi et alDownload PDFPatent Trial and Appeal BoardNov 13, 201710387444 (P.T.A.B. Nov. 13, 2017) Copy Citation 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. 10/387,444 03/14/2003 Masoud Mafi 6.0003.1 9655 103968 7590 Ryan Alley IP (General Docket) P.O. Box 87 Alexandria, VA 22313 11/15/2017 EXAMINER YUEN, JESSICA JIPING ART UNIT PAPER NUMBER 3743 NOTIFICATION DATE DELIVERY MODE 11/15/2017 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): office @ alleylegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASOUD MAFI and FABIAN BORTOLOTTO Appeal 2015-006867 Application 10/387,444 Technology Center 3700 Before STEFAN STAICOVICI, HYUN J. JUNG, and GEORGE R. HOSKINS, Administrative Patent Judges. JUNG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Masoud Mafi and Fabian Bortolotto (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 20—38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants identify the real parties-in-interest as the inventors, Masoud Mafi and Fabian Bortolotto. App. Br. 1. Appeal 2015-006867 Application 10/387,444 CLAIMED SUBJECT MATTER Claims 20 and 33 are independent. Claim 20 is reproduced below: 20. An easily-removable cover for protecting an outdoor article, the cover comprising: a flexible, waterproof material shaped to be placed over the article such that the flexible material includes an inside facing the article and an outside facing the outdoors, wherein the flexible material includes two opposite sides; a first vent handle on one of the two sides; and a second vent handle on another of the two sides such that the first and second vent handles oppose one another on the flexible material so that a person can grasp both vent handles each with one hand and lift the cover by both vent handles, wherein the first and the second vent handles each include, a base attached to the material, wherein the base defines an opening permitting fluid communication between the inside and the outside of the material, and; a cap attached to the base about the opening and extending downward such that all free edges of the cap are entirely vertically below a lowest vertical edge of the opening, wherein the cap and the base define a channel that permits the fluid communication and that provides space for a human hand to grip the cap with fingers extending into the channel entirely vertically below the lowest vertical edge of the opening. PROCEDURAL HISTORY The application before us on appeal was the subject of prior Appeal 2011-001219, in which a Decision was rendered on May 31, 2013, affirming the Examiner’s rejections before the Board at that time. Since the date of that prior Decision, the Appellants have amended the claims in the application. 2 Appeal 2015-006867 Application 10/387,444 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Herman US 2,839,986 June 24, 1958 Knight US 3,013,483 Dec. 19, 1961 Jamot US 3,892,169 July 1, 1975 Yeh US 4,972,892 Nov. 27, 1990 Walker US 4,993,675 Feb. 19, 1991 Kettelson US 5,135,275 Aug. 4, 1992 Johnson US 5,368,055 Nov. 29, 1994 Mazzarelli US 5,673,961 Oct. 7, 1997 Rutler US 6,461,235 B2 Oct. 8, 2002 REJECTIONS The Appellants seek our review of the rejections of: claims 22, 23, 29, and 33—38 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement; claims 20, 21, and 24 under 35 U.S.C. § 102(b) as anticipated by Mazzarelli; claims 20, 21, and 24 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli and Jamot; claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli and Walker or Kettelson; claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, and Walker or Kettelson; claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Walker or Kettelson, and Herman; claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, Walker or Kettelson, and Herman; 3 Appeal 2015-006867 Application 10/387,444 claims 22, 23, and 29 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli and Knight; claims 22, 23, and 29 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, and Knight; claim 30 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli and Johnson; claim 30 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, and Johnson; claim 31 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli and Yeh; claim 31 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, and Yeh; claim 32 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Johnson, and Rutler; claim 32 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, Johnson, and Rutler; and claims 33—38 under 35 U.S.C. § 103(a) as unpatentable over Mazzarelli, Jamot, Walker or Kettelson, and Knight. ANALYSIS Written Description Rejection The Examiner determines that “a flow constrictor extending from the base in a horizontal orientation perpendicular to the vertical orientation” of claim 22, “wherein the flow constrictor is solid and the channel includes no grating” of claim 22, “the flow constrictor and base are solid and continuous and the channel includes no grating” of claim 29, a flow constrictor 4 Appeal 2015-006867 Application 10/387,444 extending “only at a termination point in the channel along a lower edge of the opening” of claim 33, a flow constrictor extending “only from the base and only horizontally” of claim 34, vent handles positioned “only vertically on the material” of claim 36, and a “termination point is beyond one-third of the length of the channel along the cap toward the opening to allow fingers to extend along the channel” of claim 38, constitute new matter not supported by the original disclosure. Final Action 4. Claim 23 depends from claim 22; claim 35 depends from claim 34; and claim 37 depends from claim 36. The Examiner states that the “originally filed disclosure is silent with respect to these newly added claimed features.” Id. The Appellants argue that the Examiner does not present evidence or explain why these limitations find no support in the original application. App. Br. 11. The Appellants contend that Figure 4 and paragraphs [00024], [00050], [00060], [00066], and [00069] provide adequate written description support for the limitations of claims 22, 29, 33, 34, 36, and 38. Id. at 12—14. The Appellants’ arguments are persuasive for “a flow constrictor extending from the base in a horizontal orientation perpendicular to the vertical orientation,” as recited by claim 22; “wherein the flow constrictor is solid and the channel includes no grating,” as recited by claim 22; and “the flow constrictor and base are solid and continuous and the channel includes no grating,” as recited by claim 29. We agree with the Appellants that Figure 4 shows (1) that flow constrictor 50 is generally perpendicular to inner face 44 of base plate 14 and (2) that flow constrictor 50 and base plate 14 are shown as being the same solid material. See App. Br. 13—14. Paragraph 50 of the Specification also states that “fluid flow constrictor or lip 50 extends outwardly from base plate 14.” At least Figure 4 and 5 Appeal 2015-006867 Application 10/387,444 paragraph 50 reasonably convey to one of ordinary skill in the art that the Applicants had possession of the claimed subject matter as of the filing date of the instant application. The Appellants’ cites, however, to the Specification do not indicate that a flow constrictor can extend “only at a termination point in the channel along a lower edge of the opening,” as required by claim 33 (emphasis added), or “only from the base and only horizontally,” as required by claim 34 (emphasis added). The cited portions of the Specification support a flow constrictor extending at a termination point in the channel, from the base, or horizontally, but the cited portions do not reasonably convey that the flow constrictor only extends at the termination point, from the base, or horizontally. See Spec, 50, 66, Fig. 4; App. Br. 12—14 (citing id.). In particular, the cross-sectional view of Figure 4 does not provide enough detail of the overall structure to indicate that, for example, flow constrictor 50 is the only flow constrictor. The cited portions of the Specification also do not indicate that vent handles can be positioned “only vertically on the material,” as required by claim 36 (emphasis added). Although the relied upon portions of the Specification indicate that the vent handles can be positioned vertically on the material, they do not reasonably convey that the vent handles are only vertically on the material. See Spec. Tflf 60, 69, Fig. 4; App. Br. 12—13 (citing id.). The cited portions further do not indicate that a “termination point is beyond one-third of the length of the channel along the cap toward the opening to allow fingers to extend along the channel,” as required by claim 38. The cited portions indicate flow constrictor 50 can “restrict air flow” and “grip 32 allows a user to place his or her fingers within lower aperture 6 Appeal 2015-006867 Application 10/387,444 28 to grasp the vented baffle.” See Spec. Tflf 50, 60, Fig. 4; App. Br. 13—14 (citing id.); Reply 4 (citing Spec., Fig. 4). Paragraphs 50 and 60 do not reasonably convey that the position of the flow constrictor affects whether fingers are allowed to extend along the channel, and Figure 4 does not show any fingers extending along the channel so that it would reasonably convey that the termination point affects whether fingers can extend along the channel. For the reasons above, we do not sustain the Examiner’s rejection of claims 22, 23, and 29 under 35 U.S.C. § 112, first paragraph for failing to comply with the written description requirement. However, the Examiner’s rejection of claims 33—38 under 35 U.S.C. § 112, first paragraph, is sustained. Anticipation Rejection The Appellants argue that Mazzarelli does not disclose “a cap attached to the base about the opening and extending downward such that all free edges of the cap are entirely vertically below a lowest vertical edge of the opening.” App. Br. 16—17. The Appellants contend that Mazzarelli does not disclose clearly that its edges can extend below its aperture 26. Id. at 16 (citing Mazzarelli, 3:12—40, Figs. 1, 2, 5); see also Reply 5—6. The Appellants state that Mazzarelli’s vent 28 “could have free edges extending vertically below the aperture 26 if removed and repositioned.” App. Br. 16 (citing Mazzarelli, Figs. 3, 4). Mazzarelli states that “[a]s best seen in FIGS. 3 and 4, each vent 28 is disposed over an exhaust aperture 26 in the cover 10.” Mazzarelli, 2:66—67. Figure 4 shows that vent 28 has a body portion 32 that extends entirely over aperture 26 and terminates at open end 36 that is entirely past aperture 26. 7 Appeal 2015-006867 Application 10/387,444 See also id. at 3:9—11 (“exhaust aperture 26 desirably conforms to the vent 28 which is secured thereover”), 3:15—16 (“vent 28 is sewn . . . about the exhaust aperture 26”). Thus, the Appellants do not persuade us that Mazzarelli does not disclose open end 36 extending past its aperture 26. The Examiner also finds that the “cover of Mazzarelli is capable of being positioned such that the cap extending downward all free edges of the cap are entirely vertically below a lowest vertical edge of the opening.” Final Action 6. The Appellants argue that Mazzarelli never discloses reconfiguring its vents 28 so that all free edges would be entirely vertically below a lowest vertical edge of an opening to prevent moisture ingress and permit use as a handle. App. Br. 17. The Appellants assert that the vents 28 are substantially horizontal to create airflow when moving. Id. 17 (citing Mazzarelli, 3:23—40, Fig. 3). In the portion of Mazzarelli cited by the Appellants, it states “[i]n the preferred embodiment, the longitudinal axis of the elongated vent 28 is oriented at an angle of between 30 degrees and 60 degrees to the longitudinal axis of the cover 10.” Mazzarelli, 3:26—29. Mazzarelli, thus, discloses that its vents 28 are not limited to being substantially horizontal as asserted by the Appellants. Moreover, the Appellants do not explain why the quoted portion above would exclude a “cap . . . extending downward such that all free edges of the cap are entirely vertically below a lowest vertical edge of the opening,” as recited by claim 20. The Appellants further argue that Mazzarelli is silent about a human hand gripping vents 28, using vents 28 to manipulate its cover, and any structure that would permit a hand “to grip the cap with fingers extending 8 Appeal 2015-006867 Application 10/387,444 into the channel entirely vertically below the lowest vertical edge of the opening.” App. Br. 18. The Appellants assert that vents 28 would prevent such gripping. Id. The Appellants’ arguments are unpersuasive because the Examiner finds that cap 32 and base 30 “define a channel 38 . . . that provides space (at 48, see Figs. 3 4) for a human hand to grip the cap with fingers extending into the channel 38” and “two opposite surfaces are different sides of the material in substantially vertical positions (see Figs. 1—2).” Final Action 5. The Appellants do not explain why channel 38 of Mazzarelli’s vent 28 would fail to provide enough space for gripping with fingers extending into channel 38, as determined by the Examiner. The Appellants rely on attorney argument that channel 38 does not have enough space for gripping. See App. Br. 18 (arguing vents 28 of Mazzarelli cannot be gripped by human hand); Reply 7 (arguing the claimed vent handles appear larger than vents 28 of Mazzarelli). Furthermore, apparatus claims must distinguish over prior art apparatus by the structure defined by the claims, and not by a process or function performed by the apparatus. A prior art apparatus having the same structure as a claimed apparatus renders a claimed apparatus unpatentable under § 102 as long as it is capable of performing the claimed process or function. See In re Yanush, All F.2d 958, 959 (CCPA 1973). The Appellants state that the rejections of claims 21 and 24, which depend from claim 20, “must be equally reversed for including the same subject matter absent from Mazzarelli.” For the reasons stated above, a preponderance of the evidence supports the Examiner’s findings that Mazzarelli discloses the limitations of claim 20 which are challenged by the 9 Appeal 2015-006867 Application 10/387,444 Appellants. Therefore, we sustain the rejection of claims 20, 21, and 24 under 35 U.S.C. § 102(a) as anticipated by Mazzarelli. Obviousness Rejections of Independent Claims 20 and 33 The Appellants argue that the combination of Mazzarelli and Jamot does not account for the “cap attached to the base about the opening and extending downward such that all free edges of the cap are entirely vertically below a lowest vertical edge of the opening,” as recited by claim 20. App. Br. 20. The Appellants contend that Jamot teaches “edges that cut back above the hole/opening” and “lacks a cap with free edges all entirely below a bottom of an opening.” Id. (citing Jamot, 1:43—45, 2:48—59, Fig. 4); see also Reply 8—9 (asserting that the Examiner does not address this argument). The argument is not persuasive because it is not commensurate with the Examiner’s rejection as the Examiner relies on Jamot to modify the vent handles of Mazzarelli into the vertical position, not to modify the shape of Mazzarelli’s vent handles. See Final Action 6 (Examiner finding that Mazzarelli can be positioned “such that the cap extending downward all free edges of the cap are entirely vertically below a lowest vertical edge of the opening); see also Ans. 10 (stating “there is no stmctural difference between claim 20 and the Mazzarelli patent”). The Appellants also contend that one of ordinary skill in the art would not modify Mazzarelli in view of Jamot because “both Mazzarelli and Jamot teach extremely shallow or purposefully co-terminating vent caps and holes and state nothing about preventing precipitation inflow,” and “rain could still enter through the purposeful shallow termination of the caps.” App. Br. 20— 21; see also Reply 10 (arguing similarly). The Appellants, however, do not cite any portion of Mazzarelli and Jamot that indicates they teach shallow or 10 Appeal 2015-006867 Application 10/387,444 co-terminating vents, or that the Examiner’s proposed modification can allow rain to enter. See App. Br. 20 (citing Jamot, 1:43—45, 2:48—59, Fig. 4). The Appellants instead cite portions of Jamot that state an object of its invention is “to provide a vent constmction having a fully rotatably adjustable weather shielding air scoop” and describe a “weather protective air scoop 22.” Jamot 1:44^45, 2:48. Jamot, at least, provides some indication about preventing precipitation flow, and thus, does not support the Appellants’ position. The Appellants further contend that moving Mazzarelli’s vents 28 to the vertical position would prevent air from being sucked out of the cover, which contradicts the operating principle of Mazzarelli. App. Br. 21 (citing Mazzarelli, 2:1—5, 3:30-51); see also Reply 10 (presenting similar arguments). The argument is not persuasive. The Appellants rely on attorney argument that repositioning Mazzarelli’s vents 28 to the “vertical position” would prevent air from being sucked out of the cover. Also, the Appellants cite a portion of Mazzarelli that states “[i]n the preferred embodiment, the longitudinal axis of the elongated vent 28 is oriented at an angle of between 30 degrees and 60 degrees to the longitudinal axis of the cover 10.” Mazzarelli, 3:26—29 (emphasis added). The Appellants provide insufficient argument and evidence that the Examiner’s proposed repositioning of Mazzarelli’s vent 28 would not result in a “cap . . . extending downward such that all free edges of the cap are entirely vertically below a lowest vertical edge of the opening,” as recited by claim 20. Mazzarelli prefers orienting the longitudinal axis of vent 28 at an angle of between 30 degrees and 60 degrees to the longitudinal axis of cover 10, but does not limit its vents 28 to only those orientations. See id.', see also id. at 11 Appeal 2015-006867 Application 10/387,444 3:51—55 (stating “the vent 28 may have alternate configurations ... to permit relatively smooth air flow thereover to similarly create negative pressure and induce air to exhaust from the exhaust aperture 26”). Insufficient argument and evidence has been presented that vents 28 of Mazzarelli cannot be oriented in the manner required by claim 20 and still operate in accordance with the principles of Mazzarelli. Specifically, the Appellants do not explain why repositioning Mazzarelli’s vents 28 to the “vertical position” would not allow a stream of air to pass vertically over vent 28 and create a negative air pressure region near open end 36 so as to induce air to exhaust from under cover 10. See Mazzarelli 3:31—36, Fig. 3. The Appellants also argue that claims 20 and 33 require fingers of a human hand to grip the cap of the vent, but none of the cited references “discuss anything about human hands or grips in connection with a vent.” App. Br. 22; see also Reply 10-11 (arguing these claims require sizing to fit a human hand). The Appellants acknowledge that “Walker and Kettelson discuss human fingers and accommodating grips” but argue that these references, “if anything, suggest simply adding a distinct handle to the cover of Mazzarelli.” Id. Claim 20 recites first and second vent handles that each include a base and a cap wherein “the cap and the base define a channel. . . that provides space for a human hand to grip the cap with fingers extending into the channel.” The Examiner finds that vent 28 of Mazzarelli constitutes the vent handles of claim 20. See Final Action 5 (citing Mazzarelli, Figs. 1—2). The Examiner also finds that base portion 30, body portion 32, and passage portion 38 of vent 28 teach respectively the required base, cap, and channel that provides space for a human hand to grip. See id. (citing Mazzarelli, 12 Appeal 2015-006867 Application 10/387,444 Figs. 3—4, item 48). Further, for claim 20, as the Examiner does not propose modifying Mazzarelli in view of Walker or Kettelson, the Appellants’ arguments are not relevant. Claim 33 recites that the “cap includes a plurality of concavities opening to the channel and extending parallel to the channel for a human hand to grip the cap with fingers extending along the channel in the concavities.” The Examiner finds that both Walker and Kettelson teach a finger holder with a grip portion having concavities sized to accommodate fingers. Final Action 16 (citing Walker, 3:15—18; Kettelson, 3:13—15, Fig. 5). The Examiner reasons that it would have been obvious to a person of ordinary skill in the art to “modify the grip portion of the removable cover structure of Mazzarelli to provide the grip surface of Mazzarelli with several concavities as taught by Walker or Kettelson in order to accommodate the user’s fingers and therefore to facilitate the gripping by the user.” Id. The Examiner, thus, finds that Walker and Kettelson teach holders with grips, and, hence, proposes modifying the grip portion of Mazzarelli’s vent handles 28 to have the required concavities. Id. The Appellants assert that Walker and Kettelson “suggest simply adding a distinct handle to the cover.” App. Br. 22. The Appellants’ argument does not address the Examiner’s proposed modification in view of Walker or Kettelson and therefore, fails to show error in the Examiner’s rejection. The Appellants contend that the Examiner does not address the recitation of a flow constrictor that extends “only at a termination point in the channel along a lower edge of the opening” of claim 33. App. Br. 19; see also Reply 9 (arguing similarly). The Examiner’s rejection, however, states that “[a]s to the claimed termination point... it would have been an 13 Appeal 2015-006867 Application 10/387,444 obvious matter of design choice to locate the termination point at any desired length in order to obtain a predictable result, since such a modification would have involved a mere change in the size of a component.” See Final Action 17; see also Ans. 9; In re Dailey, 357 F.2d 669, 672—73 (CCPA 1966) (A change of shape does not make a product nonobvious where the claimed shape is not of functional significance and accomplishes the same purpose as the prior art shape). The Appellants do not persuade us that the Examiner failed to address this limitation of claim 33. Obviousness Rejections of Claims 21—32 and 34—38 As for the remaining unpatentability rejections based on Mazzarelli in combination with at least one of Jamot, Walker, Kettelson, Herman, Knight, Johnson, Yeh, and Rutler, the Appellants contend that “these references cannot anticipate or render obvious claims 20 and 33” and thus, the “rejections to claims 21—32 and 34—38 must similarly be reversed due to dependency.” App. Br. 23; Reply 11. For the reasons discussed above, the Examiner’s rejections of independent claims 20 and 33 are sustained. Therefore, we likewise sustain the rejections of claims 21—32 and 34—38, which depend from claim 20 or 33. DECISION For the above reasons, the Examiner’s rejections of claims 20—38 are 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)(l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation