Ex Parte Malina et al

Patent Trial and Appeal Board

Jul 28, 2017

14549675 (P.T.A.B. Jul. 28, 2017)

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.
14/549,675 11/21/2014 Ronnie Malina MALI.001 1036
39863 7590
SONNABENDLAW
600 PROSPECT AVE
BROOKLYN, NY 11215
EXAMINER
DAVIS, CASSANDRA HOPE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
j sonnabend @ sonnabendlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONNIE MALINA and ERIC MALINA
Appeal 2016-006307
Application 14/549,6751
Technology Center 3600
Before KRISTEN L. DROESCH, SCOTT B. HOWARD, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 11—16, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real parties in interest are the named
inventors, Ronnie and Eric Malina, and Keystone Global LLC. App. Br. 3.
Appeal 2016-006307
Application 14/549,675
INVENTION
Appellants’ application relates to a license plate frame vehicle
protector. Abstract. Claim 11 is illustrative of the appealed subject matter
and reads as follows:
11. A license plate frame vehicle protector, comprising:
a) a body having a front face, a flexible back wall, a top
edge, side edges, and a bottom edge;
b) a housing formed in the body for receiving a license
plate; and
c) an opening formed in the body in communication with
the housing wherein the flexible back wall is more flexible than
the front face.
REJECTIONS
Claims 11 and 12 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Dowd (US 2011/0247248 Al; published Oct. 13, 2011).
Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Dowd and Leskiewicz et al. (US
1,611,465; issued Dec. 21, 1926) (“Leskiewicz”).
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Dowd, Leskiewicz, and Me Kenzie
(US 6,385,876 Bl; issued May 14, 2002).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
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Appeal 2016-006307
Application 14/549,675
conclusions reached by the Examiner. We highlight the following additional
points.
In rejecting claim 11, the Examiner found that Dowd discloses all of
the recited limitations in claim 11. Final Act. 2—3. In so doing, the
Examiner found that Dowd discloses a rear backing member that has a
number of holes to facilitate stretching of the frame for mounting to the plate
and, as seen in figure 10 of Dowd, the front wall is significantly thicker than
the back wall. Final Act. 2. The Examiner found that the reduced thickness
of the back wall/backing member and the holes inherently cause the backing
member to be more flexible that the front face. Id.
Appellants contend the Examiner erred because the cited portions of
Dowd do not disclose the limitation “wherein the flexible back wall is more
flexible than the front face,” recited in claim 11. App. Br. 5—7. Appellants
argue that, because Dowd expressly discloses that the entire frame structure
stretches to accommodate a license plate, Dowd inherently teaches that the
backing member is not more flexible than the front face. Id.; Reply Br. 2—3
(citing Dowd Tflf 75, 96). Appellants also argue that Dowd does not teach
that any front-face structure is non-deformable. Reply Br. 2—3.
We are not persuaded the Examiner erred. A prior art reference may
anticipate when the claim limitations not expressly found in that reference
are nonetheless inherent in it. “Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (citation omitted).
Here, the Examiner’s technical reasoning supports the finding of
inherency that the “the flexible back wall is more flexible than the front
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Application 14/549,675
face” in a manner that necessarily flows from the teachings of the applied
prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (“In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art.”). Appellants have not presented sufficient persuasive
argument or objective evidence showing that the prior art products do not
necessarily possess the characteristics of the claimed product. For example,
Appellants have not persuasively addressed the Examiner’s findings related
to the relative thickness of the front and back walls or the effects of the holes
in the rear backing member on the flexibility of the backing member
compared to the front face. See App. Br. 6—8.
Accordingly, we sustain the 35 U.S.C. § 102(a)(1) rejection of
independent claim 11, as well as the 35 U.S.C. § 102(a)(1) rejection of claim
12, which Appellants argue is patentable for similar reasons. App. Br. 8.
We also sustain the 35 U.S.C. § 103 rejections of dependent claims 13—16,
for which Appellants make no additional, substantive arguments for
patentability. Id.
DECISION
We affirm the decision of the Examiner rejecting claims 11—16.
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
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