13694393 (P.T.A.B. May. 10, 2016)

Ex Parte Sareyka

Patent Trial and Appeal BoardMay 10, 2016

13694393 (P.T.A.B. May. 10, 2016)

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. 13/694,393 11/27/2012 Brett W. Sareyka 1207 6302 2057 7590 05/11/2016 EUGENE CHOVANES JACKSON AND CHOVANES SUITE 319 ONE BALA PLAZA BALA CYNWYD, PA 19004 EXAMINER A, PHI DIEU TRAN ART UNIT PAPER NUMBER 3633 MAIL DATE DELIVERY MODE 05/11/2016 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 BRETT W. SAREYKA ____________ Appeal 2014-003609 Application 13/694,393 Technology Center 3600 ____________ Before CYNTHIA L. MURPHY, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–5. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellant identifies the real party in interest as “Worthington Armstrong Venture.” (Appeal Br. 3.) Appeal 2014-003609 Application 13/694,393 2 STATEMENT OF THE CASE The Appellant’s invention relates to “connectors for the metal beams that form the grids in [] suspended ceilings.” (Spec. 1, lines 8–11.) Illustrative Claim2 1. In a saddle connector capable of being secured to a steel bulb of a steel beam in a grid of a suspended ceiling, wherein the steel bulb extends along the top of the steel beam, the improvement comprising: (a) a saddle connector with an inverted channel comprising an opposing first and opposing second side wall, (b) a first clear surface area on the first opposing side wall and a first tooth in the second opposing side wall that is opposite the first clear surface area, (c) the first clear surface area being capable of forming a support for a first jaw of a pair of manually operated pliers to force the first tooth in the second opposing side wall into the steel bulb by a force from a second jaw of the pair of manually operated pliers, with the first tooth piercing the steel bulb, wherein when inserted the first tooth creates a second clear surface area on the second opposing side wall, (d) a second tooth in the first opposing side wall that is opposite the second clear surface area such that the first tooth and the second tooth are staggered along the opposing first and opposing second side walls, wherein the first and second tooth are each formed of hardened metal, and (e) the second clear surface area is capable of forming a support for the first jaw of the pair of manually operated pliers to force the second tooth in the first opposing side wall into the steel bulb by a force from the second jaw of the manually operated pliers, the second tooth piercing the steel bulb. 2 This illustrative claim is quoted from the Claims Appendix (“Claims App.”) set forth on pages 15–16 of the Appeal Brief. Appeal 2014-003609 Application 13/694,393 3 Rejection The Examiner rejects claims 1–5 under 35 U.S.C. § 102(b) as anticipated by Kreidt (US 6,101,780, issued August 15, 2000). ANALYSIS Independent claim 1 requires a “first [] side wall,” a “second [] side wall,” a “first tooth” in the second side wall, and a “second tooth” in the first side wall. (Claims App.) The Examiner finds that Kreidt discloses a bracket comprising a first side wall (plate 11), a second side wall (plate 13), and teeth (anchors 50) in each side wall. (See Final Action 2.) Kreidt’s Figure 2, reproduced below with annotations, shows a bracket comprising plates 11 and 13. This annotated version of Kreidt’s Figure 2 shows that each of the illustrated plates 11/13 has an upper middle anchor 50, a lower lefthand anchor 50, and a lower righthand anchor 50. (See also Kreidt, Fig. 1.) In other words, Appeal 2014-003609 Application 13/694,393 4 Kreidt discloses a pair of upper middle anchors 50, a pair of lower lefthand anchors 50, and a pair of lower righthand anchors 50. According to the Appellant, “[t[he points are directly opposite one another.” (Appeal Br. 13). Independent claim 1 also requires the first tooth and the second tooth to be “staggered along” the first and second side walls. (Claims App.) The Examiner finds that Kreidt discloses a first tooth and a second tooth staggered in this manner. (See Final Action 2–3.) The Examiner explains that, in Kreidt, a middle tooth on one side wall (e.g., upper middle anchor 50 on plate 13) is staggered from a lower tooth on the other side wall (e.g., lower lefthand anchor 50 on plate 11). (See Answer 4; see also annotated drawing above.) Independent claim 1 additionally requires a “first clear surface” on the first side wall and a “second clear surface” on the second side wall. (Claims App.) The Examiner finds that Kreidt’s plates 11 and 13 have such clear surface areas (see Final Action 2); and the Examiner explains that these clear surface areas are “the areas around the teeth” (Answer 4). Independent claim 1 further requires the first tooth be “opposite the first clear surface area” on the first side wall; and requires the second tooth be “opposite the second clear area” on the second side wall. (Claims App.) The Examiner finds that Kreidt’s first tooth and Kreidt’s second tooth are arranged relative to the recited clear surface areas as required by independent claim 1. (See Final Action 2.) We are persuaded by the Appellant’s position that the Examiner does not sufficiently support this finding. (See Appeal Br. 13.) As indicated above, the Examiner considers an anchor 50 on one plate (e.g., upper middle anchor 50 on plate 13) to be Kreidt’s first tooth and a Appeal 2014-003609 Application 13/694,393 5 staggered anchor 50 on the other plate (e.g., lower lefthand anchor 50 on plate 11) to be Kreidt’s second tooth. (See Answer 4.) As also indicated above, the Examiner considers “the areas around the teeth” to the clear surface areas on Kreidt’s plates 11 and 13. (Id.) However, Kreidt’s first tooth (e.g., upper middle anchor 50 on plate 13) is “opposite,” another tooth on the opposing side wall (e.g., upper middle anchor 50 on plate 11), not an “area around the teeth.” (See annotated drawing above.) Likewise, Kreidt’s second tooth (e.g., lower lefthand anchor 50 on plate 11) is “opposite” another tooth on the opposing side wall (e.g., lower lefthand anchor 50 on plate 13), not an “area around the teeth.” (Id.) As such, the Examiner does not adequately explain how Kreidt discloses a first tooth and a second tooth arranged relative to clear surface areas as required by independent claim 1. The Examiner fails, therefore, to establish a prima facie case of anticipation.3 Thus, we do not sustain the Examiner’s rejection of independent claim 1, and claims 2–5 depending therefrom, under 35 U.S.C. § 102(b) as anticipated by Kreidt. DECISION We REVERSE the Examiner’s rejection of claims 1–5. REVERSED 3 “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).