Ex parte Melton

Board of Patent Appeals and Interferences

Nov 26, 1999

08804410 (B.P.A.I. Nov. 26, 1999)

Application for patent filed February 21, 1997. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEVE W. MELTON
____________
Appeal No. 1999-0614
Application No. 08/804,4101
____________
ON BRIEF
____________
Before STAAB, McQUADE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 5 and 7, which are all of the
claims pending in this application.
We REVERSE.
Appeal No. 1999-0614 Page 2
Application No. 08/804,410
BACKGROUND
The appellant's invention relates to an apparatus for
converting the appearance of an existing chain link fence into
the appearance of a wood planked fence. An understanding of
the invention can be derived from a reading of exemplary claim
7, which appears in the opinion section of this decision.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Nugent et al. (Nugent) 3,913,889 Oct. 21, 1975
Veenstra 4,582,284 Apr. 15, 1986
Vise 5,556,080 Sep. 17,
1996
The following rejections are before us for review.
1. Claims 7 and 2 through 4 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Vise in view of Nugent.
2. Claims 7, 4 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nugent in view of Veenstra.
Reference is made to the brief (Paper No. 7) and
supplemental brief (Paper No. 9) and the final rejection
(Paper No. 5) and answer (Paper No. 10) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Appeal No. 1999-0614 Page 3
Application No. 08/804,410
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Claim 7, the only independent claim on appeal, reads as
follows:
An apparatus for converting the appearance of an
existing chain link fence into a wood appearing
planked fence comprising in combination:
an existing chain link fence having opened
spaces between adjacent links of the fence, said
chain link fence forming a plank support system;
a plurality of vertically disposed spaced
plastic fence planks adapted to be mounted on said
plank support system, each of said fence planks have
upper slanted surface edges and vertical outer
surfaces that simulate the appearance of a wooden
fence in both surface grain and color;
at least two mounting members for each of said
planks, each of said mounting members having larger
Appeal No. 1999-0614 Page 4
Application No. 08/804,410
cross sectional outer sections and smaller cross
sectional inner sections, said inner sections being
capable of being inserted into the opened spaces
between adjacent links of the existing chain link
plank support system; and
fastener means for mounting said mounting
members to said planks and the support system when
said mounting members inner sections are inserted
into the opened spaces formed between chain links
whereby said planks are held to existing support
system by the mounting members and fasteners means.
Turning first to the examiner's rejection of claims 7 and
2 through 4 as being unpatentable over Vise in view of Nugent,
the examiner's findings regarding the disclosure of Vise are
set forth on page 2 of the final rejection. The examiner's
position is that Vise discloses the invention as recited in
claim 7 except for the fence planks being formed of plastic
and having "upper slanted surface edges and vertical outer
surfaces that simulate the appearance of a wooden fence in
both surface grain and color" (see final rejection, page 2).
The examiner asserts, however, that it would have been obvious
"to modify the fence planks of Vise by forming them from
plastic, as taught by Nugent et al., in order to reduce the
overall weight of the fence assembly" (final rejection, page
3). The appellant's brief does not challenge this assertion
by the examiner.
Appeal No. 1999-0614 Page 5
Application No. 08/804,410
With regard to the slanted surface edges and vertical
outer surfaces that simulate the appearance of a wooden fence
in both surface grain and color, the examiner takes the
position that "since no engineering advantages have been
disclosed for forming the fence planks as having slanted
surface edges and vertical outer surfaces that simulate the
appearance of a wooden fence in both surface grain and color,
it would have been a mere design choice" (final rejection,
page 3). The examiner further asserts that:
since no engineering advantages have been set forth
in the specification for forming the components as
claimed, and since various other configurations
would appear to work equally as well, the subject
matter in question cannot be given patentable weight
and is considered a matter of design choice. It
should be noted that the limitations stated in
independent claim 7, "vertical outer surfaces that
simulate the appearance of a wooden fence in both
grain and color" do not specifically state any
dimensions or shapes, in fact, the examiner takes
the position that the definition of the appearance
of a wooden fence is undefined and could incorporate
an infinite number of shapes, colors, and designs
(i.e., a sanded, smooth, grainless cut, with black
paint versus a wooden cut with bark still attached).
Therefore, the reference of Vise can be considered
as having a [sic] vertical outer surfaces that
simulate the appearance of a wooden fence in both
grain and color [answer, page 4].
Appeal No. 1999-0614 Page 6
Application No. 08/804,410
Initially, with regard to the claimed "vertical outer
surfaces that simulate the appearance of a wooden fence in
both surface grain and color," while such language may
encompass a variety of surfaces and colors, we do not find
tenable the examiner's position that the foraminous expanded
metal panels (24) of Vise can be considered as having vertical
outer surfaces that simulate the appearance of a wooden fence
in both grain and color.
The appellant argues that the purpose of the appellant's
invention is to convert the appearance of an existing chain
link fence into the appearance of a wooden plank fence and
that neither Vise nor Nugent teaches such a conversion. The
appellant contends that, contrary to the assertions of the
examiner, the appellant's claimed structure does have a
defined purpose (to simulate the appearance of a wooden fence
plank) and, thus, "cannot merely be ignored if not found in
the art or disregarded under the disguise of design choice"
(brief, page 9). We agree with the appellant.
Vise discloses a fence system including a frame or
support structure (22), which, as shown in Figure 6, includes
existing chain link material (70), and foraminous panels (24)
Appeal No. 1999-0614 Page 7
Application No. 08/804,410
made of expanded metal, or other foraminous panel material, to
be mounted to the existing chain link material by means of a
bracket (72) having an aperture (75) therein for passage of a
fastener (46) therethrough and a nut (57) for securing the
bracket against the chain link material (see Figures 7 and 8).
The panels (24), when mounted on the chain link fence
structure as disclosed, provide a deterrent to intrusion which
overcomes many of the disadvantages of conventional chain link
material as a deterrent to climbing and unraveling or cutting
of the material discussed in column 1, line 39, to column 2,
line 52. The foraminous structure of the panels, comprising
integral strands (38) and spaced bonds (40) forming cell
apertures (42), helps prevent penetration because it is almost
impossible, within a practical period of time, to cut or torch
a sufficiently large hole through a panel (24), as explained
in column 9, lines 40 to 54.
The Vise fence system is directed solely to providing an
impenetrable barrier to provide improved security for existing
chain link fencing; Vise is not at all concerned with
converting the appearance of an existing chain link fence into
the appearance of a wood planked fence, as recited in the
Appeal No. 1999-0614 Page 8
Application No. 08/804,410
preamble of claim 7. Moreover, from our viewpoint, the Vise
fence system is not capable, without modification, of
effecting such a conversion, as the panels (24) of Vise do not
give the fence an appearance which could reasonably be
considered "a wood appearing planked fence" as claimed.
Claim 7 further recites two features of the planks which
distinguish the planks of the appellant's invention from the
panels (24) of Vise to achieve the function set forth in the
preamble and help further define what the appellant means by
"a wood appearing planked fence." Specifically, the claim
requires that the planks be provided with "upper slanted
surface edges and vertical outer surfaces that simulate the
appearance of a wooden fence in both surface grain and color."
In determining that modification of the Vise panels to
have upper slanted surface edges and vertical outer surfaces
as claimed would have been obvious, the examiner, in effect,
dismisses these features as mere design considerations solving
no stated problem. It is readily apparent from the claims on
appeal, from the appellant's specification (page 1) and from
the appellant's brief (page 9) that the claimed shape and
surface of the planks serve to fulfill the stated objective of
Appeal No. 1999-0614 Page 9
Application No. 08/804,410
simulating a wooden plank fence by providing an appearance of
what is very well known for wooden fence planks in order to
improve the appearance of an existing chain link fence.
Accordingly, we agree with the appellant that it is
inappropriate in this case to dismiss these features as mere
matters of design choice.
We have reviewed the teachings of both Vise and Nugent
and we find therein no suggestion to modify the panels of Vise
so as to comprise the claimed features. While the shape and
surface grain of the Vise panels perhaps could have been
modified as proposed by the examiner, it is not apparent to us
why one of ordinary skill in the art would have been motivated
to make such a modification to these foraminous panels. The
mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art
suggested the desirability of the modification. See In re
Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
While we acknowledge the examiner's reference (answer,
page 4) to the appellant's statement, on page 9 of the brief,
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Application No. 08/804,410
that slanting of the upper surfaces of wooden planks is known,
we do not find such knowledge suggestive of the modification
of the Vise panels, which are not wooden planks.
For the foregoing reasons, we are constrained to reverse
the examiner's rejection of claims 7 and 2 through 4 under 35
U.S.C. § 103 as being unpatentable over Vise in view of
Nugent.
Turning now to the examiner's rejection of claims 7, 4
and 5 under 35 U.S.C. § 103 as being unpatentable over Nugent
in view of Veenstra, we note that Nugent discloses a snow
fence comprising a plurality of vertically extending light-
weight plastic slats (4, 5 or 30) secured to a support
structure comprising upper and lower cables and wire mesh (1)
extended between support posts by fastening devices such as
staples and adhesives. Veenstra discloses a hanger bracket
adapted for securement to a chain link fence for hanging a
garment or other article (column 1, lines 6 to 8). The
bracket comprises a cruciform base (3), a hook (5) and a
proximal portion (4) which extends rearwardly from the hook to
the base for supporting the hook thereon. The base comprises
four extended arms (6,7,8,9) of varying widths and lengths as
Appeal No. 1999-0614 Page 11
Application No. 08/804,410
shown in Figures 1 and 3, such that, in use, the arms (6,8)
extend behind an upper and lower protruding link of one of the
diamond-shaped holes of a chain link fence (1) and the
remaining two arms (7,9) extend in front of the remaining
upper and lower inwardly recessed links within the same
diamond-shaped hole. The bracket disclosed by Veenstra is
reusable and pocket-sized (column 3, lines 9 to 19).
It is the examiner's position that it would have been
obvious to one of ordinary skill in the art at the time of the
appellant's invention to replace the Nugent mounting members
(i.e., the staple or adhesive) with the bracket disclosed by
Veenstra "in order to releasably secure the planks to the
fence". Further, according to the examiner, modification of
the slats of Nugent to provide upper slanted surface edges and
vertical outer surfaces simulating the appearance of a wooden
fence in both surface grain and color would have been a mere
design choice, as "no engineering advantages have been
disclosed" for forming the fence planks as claimed (final
rejection, page 4).
We agree with the appellant, for the reasons stated on
pages 11 and 12 of the brief, that the combined teachings of
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Application No. 08/804,410
Nugent and Veenstra would not have suggested to one of
ordinary skill in the art the use of the brackets disclosed
therein for mounting the Nugent slats to a chain link fence.
Accordingly, we shall not sustain the examiner's 35
U.S.C. § 103 rejection of claims 7, 4 and 5.
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Application No. 08/804,410
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2 through 5 and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0614 Page 14
Application No. 08/804,410
JOSEPH H MCGLYNN
6111 SADDLE HORN DR
FAIRFAX, VA 22030
JDB/ki