Ex Parte Ong

Patent Trial and Appeal Board

Feb 27, 2017

13279272 (P.T.A.B. Feb. 27, 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.
13/279,272 10/22/2011 Rosalind Ong Ong_protectiveguard 7382
38617 7590
John D. Tran
Rhema Law Group, P.C.
1 Park Plaza, Suite 600
Irvine, CA 92614
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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 dt @ rhemalaw .com
ipdocket@rhemalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSALIND ONG
Appeal 2015-002714
Application 13/279,2721
Technology Center 3700
Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rosalind Ong (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 1—20 as
being unpatentable over Muskalla (US 6,429,408 B2, iss. Aug. 6, 2002) and
Boyden (US 2009/0065307 Al, pub. Mar. 12, 2009). We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is the sole inventor,
Rosalind Ong. Appeal Br. 3 (filed Sept. 17, 2014).
Appeal 2015-002714
Application 13/279,272
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention relates to “a protective guard used on the
perimeter of items that are exposed to extreme and/or high
temperatures.” Spec. 1,11. 5—6.
Claims 1, 9, and 15 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A protective guard device for an item exposed to
extreme and/or high temperatures comprising:
a one-piece body having an inside groove with a first
planar surface extending from a distal tip of a top portion
toward a side portion and a second planar surface extending
from a distal tip of a bottom portion toward the side portion;
and
wherein:
said one piece body is configured to continuously
contact the item with the first planar surface and second
planar surface from the distal tip of the top portion and
from the distal tip of the bottom portion up to a beveled
edge of the item; and
said one-piece body comprising of an elastomeric
pliable material.
ANALYSIS
The Examiner finds that
Muskalla . . . teaches a protective guard device for an item an
item exposed to extreme and/or high temperatures comprising:
a one-piece body . . . having an inside groove with a first
planar surface extending from a distal tip of a top portion
toward a side portion (shown) and a second planar surface
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Appeal 2015-002714
Application 13/279,272
extending from a distal tip of a bottom portion toward the side
portion (shown).
Final Act. 2 (transmitted May 27, 2014) (citing Muskalla, Fig. 4). The
Examiner’s annotated Figure 4 of Muskalla is shown below:
The Examiner’s annotated Figure 4 of Muskalla shows protective guard 20
having first and second planar surfaces for supporting bowl 10. Id. at 3.
Appellant argues that “because bowl 10 is spherically curved . . .
flange 23 must have curved (not planar) surfaces in contact with the
spherical curve of the bowl 10.” Appeal Br. 12. Appellant further contends
that even “if the inner surface of the flange 23 has any planar surface, the
spherical curved bowl 10 would only tangentially contact the planar portion
of the flange 23 as the spherical bowl 10 curves away from any planar
surface.” Id.
In response, the Examiner “note[s] that the definition of the term
‘planar’, per Merriam-Webster is 1: of, relating to, or lying in a plane;
2: two-dimensional in quality.” Ans. 4 (transmitted Oct. 24, 2014).
Thus, according to the Examiner, “[t]he first and second planar surfaces
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Appeal 2015-002714
Application 13/279,272
shown in the cross section of Fig. 4 above are shown lying in a plane
as two-dimensional surfaces.” Id.
Muskalla discloses edge surround 20 positioned onto bowl edge 12 of
spherical bowl 10. See Muskalla, col. 3,11. 2-4, 59—60, Fig. 4. As
Muskalla’s bowl 10 is spherical, we agree with Appellant that the top and
bottom surfaces 23, 35 of the groove of edge surround 20 that contact inner
surface 11 of spherical bowl 10 will likewise be spherical, and not planar, as
called for by each of independent claims 1, 9, and 15. See Appeal Br. 12.
Appellant is also correct in that even if the top and bottom surfaces 23, 35 of
the groove of edge surround 20 constitute planar surfaces, the contact
between a planar surface and spherical bowl 10 would not be continuous, as
required by each of independent claims 1 and 15. See Reply Br. 4 (filed
Dec. 23, 2014).
Although we appreciate the Examiner’s position that when viewing
Muskalla’s cross-sectional view in Figure 4 the locations where the
Examiner’s arrows point as the claimed first and second planar surfaces may
appear as planar to the naked eye, such an interpretation is in contrast with
Muskalla’s express teaching that bowl 10 has a spherical surface. As noted
supra, because bowl 10 has a spherical surface, top and bottom surfaces 23,
35 of the groove of edge surround 20 that contact inner surface 11 of
spherical bowl 10 likewise will be spherical in order to provide continuous
contact between bowl 10 and edge surround 20.
Lastly, the Examiner does not adequately explain why the claims in
the instant application do not require “a first surface lying entirely in a
first plane and a second surface lying entirely in a second, different
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Appeal 2015-002714
Application 13/279,272
plane.” Ans. 4. As the claimed first and second planar surfaces extend
from a distal tip of top and bottom portions, respectively, towards a side
portion, this means that the claimed first and second planar surfaces are in
separate planes, that is, the planes of the top and bottom portions,
respectively, of the claimed groove.
The Examiner’s use of the disclosure of Boyd does not remedy the
deficiency of Muskalla as discussed supra. See Final Act. 3^4.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a) of
claims 1—20 as unpatentable over Muskalla and Boyden.
SUMMARY
The Examiner’s decision to reject claims 1—20 is reversed.
REVERSED
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