Ex Parte SerlachiusDownload PDFPatent Trial and Appeal BoardMar 25, 201612935915 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/935,915 95002 7590 Seppo Laine Oy ltamerenkatu 3 A Helsinki, FI00180 FINLAND FILING DATE FIRST NAMED INVENTOR 10/01/2010 Jar! Fredrik Serlachius 03/28/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SERLA 1 US 8512 EXAMINER A VILA, STEPHEN P ART UNIT PAPER NUMBER 3617 MAILDATE DELIVERY MODE 03/28/2016 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 JARL FREDRIK SERLACHIUS Appeal2013-008416 Application 12/935,915 1 Technology Center 3600 Before NINAL. MEDLOCK, BART A. GERSTENBLITH, and CYNTHIA L. MURPHY, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jarl Fredrik Serlachius ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and reproduced below. 1 Appellant identifies Mr. Jarl Fredrik Serlachius as the real party in interest. Appeal Br. 2. 1 Appeal2013-008416 Application 12/935,915 1. A non-threadable mooring compensator comprising; - a resilient stretchable frame, - at least two parallel, bendable longitudinal end elements mounted onto and extending from the frame, - wherein the end elements are joined together with a thicker end stopper, and the end elements, when at rest, form an accessible opening meant to be manually opened further into an opening sufficient for a boat rope loop, and - wherein the end elements, when under stress or when pulled, are capable of closing by themselves tightly around the boat rope loop. Appeal Br. 14, Claims App. Rejection Appellant seeks review of the following rejection: Claims 1-9 are rejected under 35 U.S.C. § 102(b) as anticipated by Zemitis (US 5,205,803, iss. Apr. 27, 1993). SUMMARY OF DECISION \Ve 1A..FFIR1\1-IN-P 1A..R T. ANALYSIS The Examiner finds that each and every element of the claims is disclosed by Zemitis. Final Act. 2. In particular, the Examiner finds: Zemitis discloses the claimed structure (note Figure 5, in particular) including a non-threaded mooring compensator with a resilient stretchable frame 26, 28, at least two parallel, bendable longitudinal end elements 62, 64 (in the form of nylon ropes which are capable of enduring pulling and torque loading), the end elements being joined together with a thicker end stopper 18A of soft, resilient material. 2 Appeal2013-008416 Application 12/935,915 Id. Additionally, the Examiner finds that "the parallel end element of nylon rope and being elastically held to the stretchable frame are capable of being manually opened to accept a rope and to close about the rope." Id. Claims 1, 3, 5, and 92 Appellant raises several arguments in response to this rejection. We address each. First, Appellant asserts that the Examiner erred by "equat[ing] the rope 12 of Zemitis to the 'stretchable frame' of claim 1 and bight 18A to the 'thicker end stopper' of claim 1" because bight 18A is a bend in rope 12, and, therefore rope 12 "can be either the 'stretchable frame' or 'the thicker end stopper', but not both." Appeal Br. 9. Additionally, Appellant contends that rope 12 is "not a 'resilient stretchable frame' as while the rope in a bungee cord may return to its original length after stretching it will not necessarily be resilient and return to its original form, e.g. shape." Id. In response to Appellant's argument, the Examiner explains that Zemitis discloses the structural features of apparatus claim 1; reiterating the application of the reference to the claim as reflected in the final rejection. Ans. 3. We agree with the Examiner that Zemitis discloses the structural elements of the apparatus claim 1. With respect to Appellant's first argument, the rejection did not rely upon Zemitis's rope 12 as disclosing the stretchable frame and thicker end stopper elements of the claim; rather, the Examiner pointed to Zemitis's straps, elements 26 and 28, as disclosing the 2 Appellant includes separate headings for each claim and asserts that although dependent claims 3, 5, and 9 include additional limitations, they are grouped with claim 1 "[f]or purposes of this appeal." Appeal Br. 11-12. We select claim 1 as representative. Accordingly, claims 3, 5, and 9 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 3 Appeal2013-008416 Application 12/935,915 resilient stretchable frame. See Final Act. 9; Ans. 3--4. Thus, Appellant's argument is not persuasive. Second, Appellant asserts that Zemitis discloses a permanent connection between a strap and a cord, including "a shroud 40A covering the opening and sewn to the strap 70 making it impossible for a rope to be placed through the equated 'two parallel end elements 62 and 64' cited by the Examiner." Appeal Br. 9. Appellant contends that these elements prevent Zemitis' s disclosure from "meeting the limitations of and functioning in a manner in accordance with the claims." Id. In response to Appellant's argument, the Examiner explains the following: With respect to the intended use of manually opening the end elements to accept a boat rope and to tightly close around a rope, it is noted that intended use defines no structure. Additionally, the parallel end elements are capable of being manually opened to a size sufficient for a boat rope. Ans. 3. As shown above, claim 1 recites "wherein the end elements are joined together with a thicker end stopper, and the end elements, when at rest, form an accessible opening meant to be manually opened further into an opening sufficient for a boat rope loop." We agree with the Examiner's application of Zemitis and explanation as to how Zemitis discloses this functional aspect of the claim. Thus, Appellant's argument is not persuasive. Third, Appellant raises what may be considered a non-analogous art argument, asserting that the Examiner maintained an anticipation rejection "based on wholly removing the functionality and disregarding the description of a non-analogous bungee cord connection." Appeal Br. 10. 4 Appeal2013-008416 Application 12/935,915 In the context of a reference relied upon for an anticipation rejection, the issue is not whether Zemitis is in the same field of endeavor or directed to same problem to which Appellant's invention is directed. State Contracting & Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003) ("The question of whether a reference is analogous art is irrelevant to whether that reference anticipates." (internal citation and quotation omitted)). Rather, the issue is whether Zemitis discloses each and every element of the claims. See id. Thus, Appellant's argument is not persuasive. Accordingly, we sustain the Examiner's rejection of claims 1, 3, 5, and 9. Claims 2, 5, 6, and 8 Appellant asserts that the Examiner finds that nylon ropes 62 and 64 of Zemitis disclose the end elements recited in the claim, but the Examiner has not shown that nylon ropes are inherently a non-stretching material. Appeal Br. 10. Appellant contends that "[n]ylon ropes are not inherently a non-stretching material as well as being not typically a non-stretching material." Id. In response to Appellant's argument, the Examiner states: "Note that the nylon ropes 62, are inherently non-stretchable. Note that Appellant has provided no evidence as showing that nylon ropes cannot be non-stretchable." Ans. 4. 3 When relying on inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the 3 The rejection does not address expressly this element of claim 2. See Final Act. 2-3. 5 Appeal2013-008416 Application 12/935,915 allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 1 7 USPQ2d 1461, 1464 (BP AI 1990). Here, the Examiner has done neither. The Examiner asserts, without any support, that nylon ropes are inherently non-stretchable. Additionally, the Examiner finds that Appellant has not proven the opposite, stating that Appellant has not provided evidence to show that nylon ropes cannot be non-stretchable. The issue isn't whether nylon ropes cannot be non- stretchable. The issue is whether nylon ropes are necessarily non- stretchable. The Examiner has not provided a basis in fact and/or technical reasoning to support that finding. Accordingly, we do not sustain the rejection of claim 2 and claims 5, 6, and 8, which depend therefrom. 4 Claims 4 and 75 Claim 4 recites that "the end stopper is made of rubber or related soft, resilient material, onto which the end elements are tightly anchored by vulcanization." Appeal Br. 14; Claims App. Appellant contends that; although the Examiner equates Zemitis' s bight 18A as the recited end stopper, the Examiner "fails to point out where in Zemitis the end elements 4 Although Appellant chose not to group claims 5, 6, and 8 with claim 2 (Appeal Br. 11-12), claims 5, 6, and 8 depend, directly or indirectly, from claim 2 and, thus, the Examiner's failure to show that Zemitis discloses each and every element of claim 2 necessitates finding that Zemitis fails to disclose each and every element of the dependent claims. 5 Appellant argues claims 4 and 7 as a group. Appeal Br. 11-12. We select claim 4 as representative. Accordingly, claim 7 stands or falls with claim 4. See 37 C.F.R. § 41.37(c)(l)(iv). Additionally, we note that claim 7 depends from claim 3, which Appellant grouped with claim 1. Appeal Br. 11. Thus, our findings with respect to claims 1 and 3 also apply to our consideration of claim 7. 6 Appeal2013-008416 Application 12/935,915 are tightly anchored by vulcanization to the soft resilient material of the alleged thicker end stopper." Id. In response to Appellant's argument, the Examiner explains that the method of anchoring by vulcanization was given little weight in the final rejection because the method steps were not shown to limit the structure of the apparatus claim. Ans. 5. Appellant does not argue that the recitation "onto which the end elements are tightly anchored by vulcanization" is a product-by-process claim element or that the product is imparted with a distinctive structural characteristic by the vulcanization process such that it is distinguishable from that of Zemitis. Thus, Appellant's argument is not persuasive. Accordingly, we sustain the rejection of claims 4 and 7. DECISION We affirm the Examiner's decision rejecting claims 1, 3, 4, 7, and 9. We reverse the Examiner's decision rejecting claims 2, 5, 6, and 8. 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)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation