Ex Parte Perry

Board of Patent Appeals and Interferences

Sep 25, 2009

11138090 (B.P.A.I. Sep. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GEORGE PERRY, JR.
__________

Appeal 2009-008101
Application 11/138,090
Technology Center 3600
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Decided: September 25, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 4-11, 14-18, and 21, directed to a windproof umbrella. We have
jurisdiction under 35 U.S.C. § 6(b).

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STATEMENT OF THE CASE
Claims 1 and 4 are representative of the subject matter on appeal:
1. A windproof umbrella comprising:
a central shaft;
a plurality of ribs extending from said central shaft;
a plurality of rib stays connected to said plurality of ribs;
a canopy connected to said plurality of ribs;
wherein each of said plurality of ribs further comprises a hollow base
rib and a telescoping rib, further wherein a first end of each hollow base rib
is connected to said central shaft and a first end of each telescoping rib is
connected to said canopy;
a plurality of means for applying a force inside each said hollow base
rib, wherein each said means is connected at a first end to said central shaft
and each said means is connected at a second end to a second end of each
telescoping rib so as to allow each said means to move within each said
hollow base rib, wherein the second end of each telescoping rib is contained
within a second end of each said hollow base so as to allow said second end
of each said telescoping rib to move within each said hollow base rib; and
further wherein each said means contains tension so that it provides
opposing force when the second end of each telescoping rib is pulled by the
connection of said first end of each said telescoping rib connected to said
canopy.

4. The windproof umbrella of claim 1, wherein said means for applying
a force is a spring.

The Examiner rejected the claims as follows:
• Claims 1 and 4 under 35 U.S.C. § 102(b) as anticipated by Steiner
(US Patent 5,564,453, issued October 15, 1996).

• Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Steiner.

• Claims 5-8 under 35 U.S.C. § 103(a) as unpatentable over Steiner and
Chen (US Patent 6,502,592 B2, issued January 7, 2003).

• Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Steiner and
Chen.
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• Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Steiner and Sato (US Patent 3,672,382, issued June 27, 1972).

• Claims 11 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Steiner and Khalil (US Patent 1,723,044, issued August 6, 1929).

We affirm.
ANTICIPATION
Issue
The issue raised by this rejection is whether Appellant has established
that the Examiner erred in finding that Steiner describes an umbrella with
compound telescoping ribs connecting a central shaft and canopy, and means
for applying a tension force that provides an opposing force when the
telescoping ribs are pulled by their connections to the canopy.
Findings of Fact
FF1 Claim 1 is directed to a windproof umbrella with compound
ribs, each compound rib comprising a hollow base rib connected to the
central shaft of the umbrella, and a telescoping rib connected to the canopy
of the umbrella, with a means for applying a tension force (e.g., a spring)
inside each base rib that provides an opposing force when the telescoping rib
is pulled by its connection to the canopy.
FF2 According to the Specification, an umbrella “generally has its
weakest point at an area somewhere near the midpoint of the rib” but a
telescoping rib “provides a structure that is much stronger than non-
telescoping configurations. The spring portion helps to ensure that the
telescoping action takes place, and the tension of the canopy helps to retain
the telescoping portion of the rib in place” (Spec. 7).
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FF3 Figure 1 of the Specification, reproduced in part below,
illustrates an embodiment that meets the limitations of claim 1:

Figure 1 “is a side view of the umbrella frame of the present invention”
(Spec. 6), and shows a “canopy 7, supported by a plurality of ribs 4. The
ribs may include a base rib 5, and a telescoping rib 6. The ribs are
connected to the central shaft 2 at the base rib 5” (id. at 6-7). “[T]he internal
portion of ribs 4 . . . may include a spring 10” (id. at 7).
FF4 Steiner describes an umbrella with a canopy supported on
“longitudinally displaceable, interengaging bar elements” that “can provide
different shielding surface sizes” (Steiner, Abstract).
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FF5 Figure 32, reproduced below, is a cross-section through the
upper region of Steiner’s umbrella:

Figure 32 is a cross-sectional view of the upper part of Steiner’s umbrella,
showing “inner and outer bar elements 4, 5, which are displaceably guided
on one another . . . [and] comprise interengaging profile bars. The reciprocal
engagement, e.g, takes place in the form of a T cross-section with a
surrounding T-shaped hollow cross-section and a T-shaped engagement
part” (Steiner, col. 3, ll. 57-64).
FF6 According to Steiner, “the rearward movement of the bar
element 5 and therefore also the rearward movement, opposite to the
spreading open movement, of the support bar elements 23, 24 [shown in
Figures 1 and 2, or support bar element 50, shown in Figure 32] is facilitated
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by a tension spring 52, which is fixed between the head side ends of the bar
elements 4, 5” (Steiner, col. 6, ll. 52-56).
FF7 The Examiner finds that radial inner bar element 4 of Steiner’s
umbrella comprises a hollow base rib connected to a mast or central shaft 3;
radial outer bar element 5 (or 5") comprises a telescoping rib connected to
flat element 17 that forms the canopy of the umbrella; and that elements 4
and 5 (or 5") have a telescoping relationship (Ans. 3).
FF8 The Examiner finds that tension spring 52 of Steiner’s umbrella
is connected at one end to the central shaft, and at the other end to radial bar
element 5 (or 5") (Ans. 3), and “provid[es] opposing force to the outward
movement of the telescoping rib” (id. at 7). The Examiner finds
As telescoping rib 5" is pulled outward (away from the central
shaft of the umbrella), tension spring 52 will continue to be
elongated . . . and at a point along the path, the spring must
provide a tension force to resist the outward movement of the
telescoping rib. The tension spring would therefore resist
outward movement of the telescoping rib, whether from
someone pulling on it, the weight of the rib itself, or for
example, if the rib were extended by the wind blowing
underneath the canopy.

(Id.)
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
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account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
The Examiner rejected claims 1 and 4 as anticipated by Steiner (Ans.
3). According to the Examiner, radial inner bar element 4 of Steiner’s
umbrella comprises a hollow base rib connected to a central shaft; radial
outer bar element 5 (or 5") comprises a telescoping rib connected to flat
element 17 that forms the canopy of the umbrella; elements 4 and 5 (or 5")
have a telescoping relationship (FF7); and tension spring 52 of Steiner’s
umbrella is connected at one end to the central shaft, and at the other end to
radial bar element 5 (or 5"), and “provid[es] opposing force to the outward
movement of the telescoping rib” (FF8).
Appellant contends that “Steiner clearly fails to disclose an umbrella
containing: 1) telescoping ribs which are connected to 2) a means for
applying . . . a designed opposing force, when the opposite end of the
telescoping rib is pulled by its connection to the umbrella canopy . . . which
provides resistance when natural forces such as wind are applied” (App. Br.
10).1 Appellant contends that
[T]he tension springs disclosed in Steiner merely oppose the
sliding motion of the extendible bars that form the canopy;
whereas, in the instant invention, the tension springs are
designed to provide a force that is parallel to the canopy itself
and therefore, cannot oppose any force directed underneath the
canopy such as wind. Thus the tension springs disclosed in
Steiner in actuality reflect a functionability proximately

1 As the Appeal Brief is not paginated; we have designated the page headed
“REAL PARTY IN INTEREST” as page 1.
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opposite to that of the instant invention, since as seen in
operation, if the umbrella disclosed by Steiner is exposed to the
element of wind underneath the canopy, the tension springs
cannot oppose the upward motion of the canopy since said
springs only provide an opposing force to the extension of the
canopy itself.

(Id. at 10-11.)
If we understand Appellant’s argument, it is that the tension springs in
Steiner’s umbrella will not oppose the force of wind pushing up on the
canopy, i.e., wind pushing in a direction roughly perpendicular to the
longitudinal axis of the ribs connecting the central shaft and the canopy.
This argument is not persuasive. Claims 1 and 4 simply require
“means for applying a force,” e.g., a spring, connected at one end to the
central shaft of the umbrella, and at the other end to the innermost end of the
telescoping rib, wherein the means “contains tension so that it provides
opposing force when the second end of each telescoping rib is pulled by the
connection of said first end of each said telescoping rib connected to said
canopy” (FF1). Steiner’s tension spring 52 is connected to the central shaft
at one end, and to outer bar element 5 at the other end (FF5-FF8), and as
noted by Appellant, will “provide an opposing force to the extension of the
canopy itself” (App. Br. 11). In other words, Steiner’s tension spring will
provide an opposing force when the end of outer bar element 5 is extended,
for example, to enlarge the canopy. This is all that the claims require. There
is nothing in the claims that requires that the spring oppose a force that is
not-coaxial with the ribs.
Moreover, since Appellant has not identified a structural difference
between the claimed umbrella and Steiner’s umbrella, we see no basis for
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the assertion that Steiner’s tension spring cannot oppose an upward motion
of the canopy.
Conclusions of Law
Appellant has not established that the Examiner erred in finding that
Steiner describes an umbrella with compound telescoping ribs connecting a
central shaft and canopy, and means for applying a tension force that
provides an opposing force when the telescoping ribs are pulled by their
connections to the canopy.
Accordingly, the rejection of claim 1 and 4 as anticipated by Steiner is
affirmed.
OBVIOUSNESS
The Examiner rejected claim 21 as unpatentable over Steiner; claims
5-8 and 15 as unpatentable over Steiner and Chen; claims 9 and 10 as
unpatentable over Steiner and Sato; and claims 11 and 14 as unpatentable
over Steiner and Kahlil. Each rejection addresses various limitations of the
claims not disclosed by Steiner.
In response to each of these rejections, Appellant contends that none
of the cited references, alone or in combination, teach the key element “an
umbrella containing telescoping ribs connected to means for applying a
force, wherein said means provides opposing force when the opposite end of
the telescoping rib is pulled by its connection to the umbrella canopy” (App.
Br. 13, 17, 21), and that all of the rejected claims “are nonobvious since
these claims are dependent upon and incorporate the nonobvious umbrella of
claim 1” (id. at 14, 18).
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Appellant’s arguments are not persuasive for the same reasons
discussed above in connection with the anticipation rejection. Accordingly,
the obviousness rejections of the claims are affirmed as well.

SUMMARY
• The rejection of claims 1 and 4 under 35 U.S.C. § 102(b) as
anticipated by Steiner is affirmed.

• The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Steiner is affirmed.

• The rejection of claims 5-8 under 35 U.S.C. § 103(a) as unpatentable
over Steiner and Chen is affirmed.

• The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Steiner and Chen is affirmed.

• The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Steiner and Sato is affirmed.

• The rejection of claims 11 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Steiner and Khalil is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

dm

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