Ex Parte Roth

Patent Trial and Appeal Board

Oct 14, 2015

12004172 (P.T.A.B. Oct. 14, 2015)

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.
12/004,172 12/19/2007 Charles J. Roth 1201/003 9642
58957 7590 10/14/2015
THE LAW OFFICES OF DONNA L. ANGOTTI
140 BROADWAY
SUITE 4600
NEW YORK, NY 10005
EXAMINER
EBNER, KATY MEYER
ART UNIT PAPER NUMBER
3618
MAIL DATE DELIVERY MODE
10/14/2015 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 CHARLES J. ROTH
____________

Appeal 2013-0092681, 2
Application 12/004,172
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellant, “the . . . invention relates to jogging stroller
accessories generally, and specifically to a shield for an infant or young
child on an outing in otherwise uncomfortable climate conditions.” Spec. 1,

1 Our decision references Appellant’s Specification (“Spec.,” Dec. 19,
2007), Appeal Brief (“Appeal Br.,” filed Mar. 8, 2013), and Reply Brief
(“Reply Br.,” filed July 11, 2013), as well as the Final Office Action (“Final
Action,” mailed Jan. 24, 2012) and the Examiner’s Answer (“Answer,”
mailed May 8, 2013).
2 Appellant states that “[t]he real party in interest is Charles J. Roth.”
Appeal Br. 7.
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ll. 2–3. We reproduce below independent claim 1, as representative of the
appealed claims.
1. A shield for a jogging stroller, comprising:
a frame assembly;
a semi-rigid substantially see-through material,
said material not subject to wrinkles or creasing,
said material compressed to fit in said frame assembly,
the compressed fit creating a geometric arch in said material
even when said shield is not on said jogging stroller;
said shield maintaining an arched shape and said frame
assembly providing a stable arched structure even when said
shield is not on said jogging stroller.
Appeal Br., Claims App.
REJECTION AND PRIOR ART
The Examiner rejects claims 1–30 under 35 U.S.C. § 103(a) as
unpatentable over Ledakis (US 5,758,889, iss. June 2, 1998) and McGregor
(US 7,150,499 B2, iss. Dec. 19, 2006). See Final Action 4–6.

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ANALYSIS3
Independent claims 1, 4, 18, 20, 27, and 29, and dependent claims 5–
17, 21–26, and 30
Independent claim 1 recites:
[a] material compressed to fit in [a] frame assembly, the
compressed fit creating a geometric arch in said material even
when said shield is not on said jogging stroller;
said shield maintaining an arched shape and said frame
assembly providing a stable arched structure even when said
shield is not on said jogging stroller.
Appeal Br., Claims App. Independent claims 4, 18, 20, 27, and 29 recite
similar limitations. See id. The Examiner finds that “Ledakis does not
disclose a frame which maintains the material in said arched shape when the
shield is removed from the stroller.” Final Action 4. The Examiner
determines, however, that “[i]t would have been obvious to one of ordinary
skill . . . to modify the cover disclosed by Ledakis to have a frame which
maintains the material in its in-use position, as taught by McGregor.” Id.
at 4–5.
Appellant argues that McGregor is inoperable for the reasons the
Examiner relies on McGregor, and submits a Declaration from George G.
Gorbatenko supporting the argument. See Appeal Br. 29–31; see also
Declaration of George G. Gorbatenko (“Decl., filed Nov. 2, 2011) 3–4. The
Declaration states, in relevant part:
10. I built a cover substantially in accordance with the
McGregor Patent, U.S. Patent No. 7,150,499. A band of spring

3 We note that Appellant’s remarks on pages 40–51 of the Appeal Brief, and
pages 37–43 of the Reply Brief, do not appear to attempt to establish
persuasively that there is an erroneous finding of fact or conclusion of law
on which the Examiner bases any claim rejection. Thus, we do not reverse
any of the rejections based on these remarks.
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steel band was formed in approximately a 20” diameter circle.
A rectangular cross section was measured 0.696” width by
0.115” thick. It was riveted together to form a continuous
circle. The cross section is consistent with the following
portions of the McGregor Patent: Figures 9, 10[,] and 19,
column 8, line 3 disclosing a “flat spring steel wire”, and
column 12, lines 39[–]42 disclosing a flat flexible member of
blue tempered spring steel material.
11. The cover has only a single stand alone shape as
shown in Fig. 1 attached. Fig. 1 shows a substantially planar
shape with no arch. The cover resumed this planar shape even
after being collapsed and released numerous times.
. . .
17. Based upon my experiment in making a cover
substantially in conformance with the McGregor Patent, it is
my professional opinion that the McGregor Patent disclosure is
inoperable in its disclosure of an arched shape of Fig. 13 as a
natural deployed configuration and a state to which the cover
returns when securing forces are released.
Decl. ¶¶ 10–11, 17 (emphasis added).
The Court of Appeals for the Federal Circuit addressed the issue of
whether enablement is a requirement for a reference cited in an obviousness
rejection and determined the following:
While a reference must enable someone to practice the
invention in order to anticipate under § 102(b), a non-enabling
reference may qualify as prior art for the purpose of
determining obviousness under § 103. Reading & Bates
Constr. Co. v. Baker Energy Resources Corp., 748 F.2d 645,
652, 223 USPQ 1168, 1173 (Fed.Cir. 1984) (reference that
lacks enabling disclosure is not anticipating, but “itself may
qualify as a prior art reference under § 103, but only for what is
disclosed in it” (emphasis in original)); see Beckman
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551,
13 USPQ2d 1301, 1304 (Fed.Cir. 1989) (“[e]ven if a reference
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discloses an inoperative device, it is prior art for all that it
teaches”).
Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.
1991).
In this case, however, Appellant persuades us that McGregor is
inoperable for the reasons the Examiner relies on McGregor; i.e., to teach a
frame that provides, with a shield, an arched shaped structure when the
frame is removed from a stroller. Thus, there is no teaching that discloses
the above-discussed claim limitation. We do not agree with the Examiner
that the Declaration is deficient or may be discounted. See Answer 3–6.
Based on the foregoing, we do not sustain the rejection of independent
claims 1, 4, 18, 20, 27, and 29. We also do not sustain the rejection of
claims 5–17, 21–26, and 30 depending from the independent claims.

Independent claims 2, 19, and 28 and dependent claim 3
We have reviewed Appellant’s arguments and the Examiner’s
rejection of independent claim 2 and dependent claim 3. Inasmuch as we are
not persuaded of error by any of Appellant’s arguments, we sustain the
rejection of claims 2 and 3.
Independent claim 2 recites, in its entirety, “[a] shield for a jogging
stroller, comprising: a semi-rigid substantially see-through material, said
material not subject to wrinkles or creasing, wherein said shield substantially
seals an occupant space from outdoor conditions.” Appeal Br., Claims App.
Appellant’s main argument is “Ledakis[’s] wind screen does not seal ‘an
occupant space from outdoor conditions.’” Id. at 36. The Examiner’s
determination that “[m]erely extending the shield so that the shield
‘substantially seals’ an occupant space, as taught by McGregor, would be
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obvious to one of ordinary skill in the art in order to further protect an
occupant” is supported by a preponderance of the evidence. Answer 12.
Appellant’s further arguments of Examiner error are not persuasive. See
Appeal Br. 36–39; see Answer 12–13.
Appellant’s further arguments regarding claims 19 and 28 are not
persuasive. Appellant argues claims 19 and 28 together, and we choose 28
for our review, but claim 28 does not require “a geometric arch that adds to
resistance to external forces with a semi-rigid sheet assembly.” Appeal
Br. 38. Notwithstanding our determination that the rejection of the claims is
not in error, we note that claim 19 requires that the material, and not the arch
“add[] to resistance to external forces” (id. at Claims App.). Ledakis’s wind
screen material adds resistance to external forces as compared to a frame
without any screen material, thereby meeting the requirements of the claim. 
Based on the foregoing, we sustain the rejection of independent
claims 19 and 28.
DECISION
We AFFIRM the Examiner’s rejection of claims 2, 3, 19, and 28.
We REVERSE the Examiner’s rejection of claims 1, 4–18, 20–27, 29,
and 30.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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