Ex Parte Paetow et al

Patent Trial and Appeal Board

Nov 15, 2013

12152876 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/152,876 05/15/2008 Mario Paetow 209,527 7154
38137 7590 11/15/2013
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
11/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARIO PAETOW and SABINE HEIMERL
____________________

Appeal 2012-001652
Application 12/152,876
Technology Center 3600
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
PATRICK R. SCANLON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001652
Application 12/152,876

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 2-8. App. Br. 4. Claim 1 was canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 8 is independent and reads:
8. A device for shuttering an opening (31) in a
constructional component (30), comprising at least
one sheeting element (11) for closing the opening
(31); and at least one attachment element securable
on the sheeting element (11) for securing the
sheeting element on the constructional component
(30), the attachment element having at least one
expansion band (13, 14) attached to the sheeting
element (11) and expandable for securing the
sheeting element on the constructional component
(30), and a locking element (15) having a through-
opening (16) and spaced from the sheeting element
(11); and a complementary locking element (17)
extending through the through-opening (16) in the
locking element (15), the locking element (15)
being displaceable along the complementary
locking element (17) for reducing a distance
between the locking element (15) and the sheeting
element (11), whereby the expansion band (13, 14)
expands, securing the sheeting element (1) on the
constructional component (30).

REJECTIONS
Claims 2-6 and 8 are rejected under 35 U.S.C. § 102(e) as anticipated
by Ferrara (US 2007/0107329 A1; published May 17, 2007).
Appeal 2012-001652
Application 12/152,876

3
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ferrara and Pena (US 6,161,605; issued Dec. 19, 2000).

ANALYSIS
Claims 2-6 and 8
Claim 8 calls for “the locking element (15) being displaceable along
the complementary locking element (17) for reducing a distance between the
locking element (15) and the sheeting element (11), whereby the expansion
band (13, 14) expands, securing the sheeting element (1) on the
constructional component (30).” Emphasis added. The Examiner found that
Ferrara discloses the claimed device including at least one “expansion band
(38, 70, 24, 40, and 72)” attached to the sheeting 12 and “capable of
expansion to secure the sheeting to a construction component.” Ans. 4-5.
The Examiner also found that Ferrara discloses a locking element 66 and
complimentary locking element 58, and that “[t]he locking element [is]
displaceable along the complimentary element to reduce a distance between
the locking element and the sheeting.” Ans. 5.
Appellants contend, inter alia, that Ferrara does not disclose that the
expansion band expands when the locking member is displaced along the
complementary locking element to reduce a distance between the locking
element and the sheeting element. App. Br. 10. Appellants contend that
expansion of the assembly shown in Figure 3 of Ferrara occurs before the
sheeting 12 is attached. Id. (citing Ferrara, para. [0035]).
In response, the Examiner stated:
Appellant seems to be arguing that the “whereby”
clause is tied to the functional language discussing
the displacement of the locking element.
However, when reading the claim as a whole, it is
Appeal 2012-001652
Application 12/152,876

4
clear that the whereby clause stands alone. The
comma between the “for reducing ... element (11)”
language and the “whereby” clause serves to
separate the two ideas. This is a reasonable
interpretation of the claim language upon reading
the claim as a whole.
Ans. 7-8 (emphasis added). The Examiner also stated “Ferrara is not
required by the claims as written to teach a band that expands in response to
the displacement of the locking element.” Id. at 8 (emphasis added).
Accordingly, the Examiner has given weight to the “whereby” clause, but
has interpreted this clause to not be tied to the immediately-preceding
limitation reciting “the locking element (15) . . . and the sheeting element
(11).”
In contrast, Appellants contend that the claimed “‘whereby’ clause
describes a function performed by displacement of the locking element.”
Reply Br. 4. Thus, Appellants’ contention is that the function recited in the
“whereby” clause is tied to, and not a separate idea from, the displacement
of the locking element along the complimentary locking element. We agree.
The Patent and Trademark Office “determines the scope of claims not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (citation omitted). The Examiner’s claim
construction appears to be based solely on the claim language.
The Specification includes disclosure that supports Appellants’
construction of the “whereby” clause. In particular, the Specification states
“a distance between the locking element and the sheeting element along the
complementary locking element being reduceable for expanding the
Appeal 2012-001652
Application 12/152,876

5
expansion band to secure the sheeting element on the constructional
component.” Spec. 3, ll. 8-11 (emphasis added). The Specification also
states “[w]ith the inventive shuttering device, the expansion band expands
outwardly upon reduction of the distance between the locking element and
the sheeting element, toward the inner wall of the opening, with the device
being secured on the constructional component frictionally or
forcelockingly.” Spec. 3, ll. 12-15 (emphasis added). The Specification
further states:
In Fig. 3, the complementary locking element 17 is
passed through the through-opening 16 in the
locking element 15, whereby the distance A
between the sheeting element 11 and the locking
element 15 is reduced. Thereby, the expansion
bands 13, 14 expand radially outwardly and
toward the sheeting element 11, with regard to the
projection of the locking element 15.
Spec. 8, ll. 6-10; fig. 3 (emphasis added). Each of these passages supports
Appellants’ claim construction that the function recited in the “whereby”
clause provides a further limitation on the displacement of the locking
element along the complimentary locking element.
We disagree with the Examiner’s reasoning that the comma directly
preceding the term “whereby” “separate[s] the two ideas” such that the
whereby clause stands alone. The Examiner did not identify any disclosure
in the Specification, or any other evidence, supporting this construction.
Thus, we construe the “whereby” clause in conjunction with the
immediately-preceding limitation reciting “the locking element (15) . . . and
the sheeting element (11)” as requiring that displacement of the locking
element along the complimentary locking element causes the expansion
band to expand. In other words, the “whereby” clause describes a function
Appeal 2012-001652
Application 12/152,876

6
performed by this displacement of the locking element along the
complimentary locking element. This construction is consistent with the
Specification. In contrast, the Examiner’s construction is not consistent with
the Specification, and thus, unreasonable.
The Examiner did not make a finding that Ferrara’s expansion band
expands when there is displacement of the locking element. Rather, the
Examiner reasoned that Ferrara is not required by claim 8 to disclose that the
expansion band expands in response to displacement of the locking element.
We disagree. While the Examiner correctly determined that Ferrara is not
required to disclose this claimed function,1 the Examiner did not make a
finding that Ferrara’s device necessarily (inherently) performs, or is capable
of performing, this function. Thus, the Examiner did not establish that
Ferrara discloses every limitation of claim 8. Therefore, we do not sustain
the rejection of claim 8, or its dependent claims 2-6.
Claim 7
The Examiner’s application of Pena for the rejection of claim 7 (Ans.
6) does not cure the deficiencies of the rejection of claim 8, discussed supra.
Thus, we do not sustain the rejection of claim 7.

1 See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“[T]he absence
of a disclosure relating to function does not defeat the Board’s finding of
anticipation. It is well settled that the recitation of a new intended use for an
old product does not make a claim to that old product patentable.”) (Citation
omitted).
Appeal 2012-001652
Application 12/152,876

7
DECISION
The Examiner's decision rejecting claims 2-8 is REVERSED.

REVERSED

Vsh/rvb