Ex Parte Martin

Patent Trial and Appeal Board

Dec 21, 2012

11850571 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GARRET MARTIN
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Appeal 2010-011106
Application 11/850,571
Technology Center 3600
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Before: JOHN C. KERINS, BRETT C. MARTIN,
and ANNETTE R. REIMERS, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011106
Application 11/850,571
2
STATEMENT OF CASE
Garret Martin (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

THE INVENTION
Appellant’s claims are directed generally to a pocket door for a boat.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A sliding door assembly for a boat, the assembly
comprising:
a transom portion of a boat whereby the transom has an
exterior portion having a first sliding door and whereby the
transom has a housing, the exterior portion having an opening
large enough for a person to walk through;
the first sliding door slides into and out from the opening
into the housing contained within the transom whereby the first
sliding door has at least a detent; and
a traveler and a guide provided to be used as a sliding
mechanism, each positioned on one of the door and the
housing, the traveler and guide cooperating and having
tolerances that restrict side to side movement of a distal edge of
the door under normal operating conditions to no more than 5
cm and further wherein the guide comprises a track and rollers,
and the traveler comprises a foot disposed to travel between
opposite rollers.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dimmitt
Gilchrist
US 3,136,538
US 3,979,872
Jun. 9, 1964
Sep. 14, 1976
Appeal 2010-011106
Application 11/850,571
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Obrecht
Verbeek
US 4,304,071
US 5,675,946
Dec. 8, 1981
Oct. 14, 1997

THE REJECTIONS ON APPEAL
Claims 1-6, 8-14, and 16-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dimmitt and Obrecht. Ans. 4.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dimmitt, Obrecht, and Gilchrist. Ans. 5.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dimmitt, Obrecht, and Verbeek. Ans. 5.

ANALYSIS
Rejection over Dimmitt and Obrecht
Each of the Examiner’s rejections is based upon the finding that the
term “transom” has a generalized meaning in the door art and that certain
phrases in claim 1 do not carry patentable weight. The Examiner states that
“the definition of a transom is not limited to ‘just a boat’ and Dimmitt et al.
clearly disclose a transom” and submits support for this in the definition of
transom as being “a horizontal crosspiece over a door or between a door and
a window above it.” Ans. 6 (citing thefreedictionary.com). The Examiner
further finds that the terms “‘for a boat’ and ‘of a boat’ are not considered
positive recitations requiring boat structures.” Ans. 7.
The Examiner’s finding regarding the term “transom” is not incorrect,
but it is incomplete. Using the same source1, we note that there is a specific
nautical definition of the term “transom,” which is actually quite different
from the generalized definition cited by the Examiner:

1 http://www.thefreedictionary.com/transom (last visited Dec. 18, 2012).
Appeal 2010-011106
Application 11/850,571
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a. Any of several transverse beams affixed to the sternpost of a
wooden ship and forming part of the stern.
b. The aftermost transverse structural member in a steel ship,
including the floor, frame, and beam assembly at the sternpost.
c. The stern of a square-sterned boat when it is a structural
member.
Had Appellant simply recited a transom without reference to a boat, the
Examiner might have reasonably given the term its broad interpretation in
applying the cited art. Such is not the case here, however, because
Appellant not only amended the preamble of the claim to refer to a boat, but
also specifically clarified that the transom portion being claimed was “of a
boat.” Given that there is a specific nautical definition for the term transom
and that Appellant’s Specification goes so far as to define transom as “a
transverse panel forming the aft end of a boat’s hull,” we do not find it
proper to ignore Appellant’s clear intent to claim a door within the context
of a boat transom. Spec. 1, l. 17. “All words in a claim must be considered
in judging patentability of that claim against the prior art.” In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970); see also MPEP 2143.03.
As Appellant argues, “[n]owhere in Dimmitt et al. or Orbrecht et al.
are any reference to either a boat or the transom portion of a boat.” App. Br.
6 (emphasis removed). Accordingly, we conclude that the Examiner erred in
seemingly ignoring the phrases “of a boat” and “for a boat” in claim 1 and
choosing to apply art that, while arguably related to door aspects of
Appellant’s claims, does not address the “transom portion of a boat” aspect
specifically recited in claim 1. As such we cannot sustain the Examiner’s
rejection of claim 1. Because claims 2-6, 8-14, and 16-18 each depend from
claim 1, we likewise cannot sustain the rejection of these claims.
Appeal 2010-011106
Application 11/850,571
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Rejections over Dimmitt and Obrecht in Combination with Either of
Gilchrist or Verbeek
Because neither of Gilchrist or Verbeek supplies the deficiencies of
the rejection over Dimmitt and Obrecht relating to the boat aspects of claim
1, we cannot sustain the rejection of either of claims 7 or 15 for the same
reasons as stated above with respect to claim 1.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1-18.

REVERSED

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