Ex Parte Serlachius

Patent Trial and Appeal Board

Mar 25, 2016

12935915 (P.T.A.B. Mar. 25, 2016)

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.
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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.
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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).
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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.
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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.
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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.
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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