Ex Parte SHERIDAN

Patent Trial and Appeal Board

Sep 24, 2018

14695878 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/695,878 04/24/2015
26291 7590 09/26/2018
PATTERSON & SHERIDAN L.L.P. NJ Office
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Richard SHERIDAN
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.
PHNX/0007USC1 4244
EXAMINER
HWU,DAVISD
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
09/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Ktaboada@pattersonsheridan.com
psdocketing@pattersonsheridan.com
P AIR_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD SHERIDAN
Appeal2018-001781
Application 14/695,878
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-001781
Application 14/695,878
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter new grounds of rejection.
THE INVENTION
Appellant's claims are directed generally "to a freestanding landscape
waterfall, and more specifically, a modular freestanding landscape
waterfall." Spec. ,r 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A freestanding landscape waterfall assembly comprising:
a pergola configured to provide overhead shade to an area;
and
a freestanding landscape waterfall suspended by the
pergola above the area.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Counts
Bradford
us 5,915,132
US 6,913,204 Bl
REJECTIONS
The Examiner made the following rejections:
June 22, 1999
July 5, 2005
Claims 1-16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Counts and Bradford. Ans. 2.
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Application 14/695,878
ANALYSIS
Appellant first argues that the Examiner erred in finding that Counts
teaches the claimed pergola. See, e.g., Reply Br. 2. Counts teaches a
portable photography studio comprising a number of support structures to
form a frame upon which lights, and the like, may be mounted for use in
taking photographs. Essentially, Appellant's argument is that the materials
used, metal trusses, are not the same as those used in typical backyard
pergolas and so, the overall structure cannot be considered a pergola. We
disagree. In one embodiment, Counts teaches an eight-sided structure
similar to that of a gazebo. We see no basis for saying that simply because
the gazebo of Figure 1 is made of metal trusses, it is not a gazebo. Likewise
the embodiment of Figure 13 has the same basic structure of various vertical
support legs supporting a frame of horizontal cross pieces that, other than
material, has the same configuration as a pergola. Accordingly, we are not
persuaded that the Examiner erred in considering Counts to teach a pergola
as claimed.
We do, however, agree with Appellant that the Examiner's finding
that Bradford teaches a suspendable waterfall is in error. Bradford
specifically teaches that the waterfall is intended to be mounted to a deck.
Col. 4, 11. 13-15. Nowhere does Bradford teach that the waterfall is intended
to be mounted anywhere except to the ground. The Examiner's sole basis
for asserting that Bradford's waterfall is suspendable is that Bradford
teaches that the waterfall is constructed of facia boards 30. Although not
explained by the Examiner, we assume that the Examiner is asserting that
these facia boards could then be mounted to the frame in Counts. Facia
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Appeal2018-001781
Application 14/695,878
boards, however, are normally understood as boards on a house that are both
decorative and in some cases allow for other items to be mounted to them.
They are not, in and of themselves, indicative of being a structure allowing
mounting to something else. Furthermore, although Counts discloses using
its frame to photograph a waterfall, Appellant is correct that Counts nowhere
teaches that the waterfall is to be mounted to the frame and merely discloses
that the set could include a waterfall, presumably on the ground. Reply Br.
5. Accordingly, we do not sustain the Examiner's rejection.
Although we reverse the Examiner's rejection, we also note that a
simple search of the phrase "pergola mounted waterfall" returned numerous
videos showing exactly that, waterfalls mounted on pergolas. One such
video entitled, "Build an impressive water feature, waterfall, water fountain
or rain curtain" is dated July 6, 2009 and depicts at least two water
features/waterfalls suspended from pergolas. 1,2 This video is sufficient to
anticipate the extremely broad language of each of independent claims 1, 2,
and 9. We leave it to the Examiner to deal specifically with the dependent
claims.
We also reject the claims under 35 U.S.C. § 112(b) as indefinite due
to the conflicting recitation of a "freestanding" waterfall that is "suspended"
from a pergola. The term "freestanding" implies that the waterfall supports
itself and is not mounted to or suspended from another structure.
1 https://www.youtube.com/watch?v=XgLQ4gHHb8g (last visited
September 17, 2018).
2 Another video dated prior to the effective filing date, but not more than a
year prior shows a similar structure. "Side view of beautiful rain waterfall
from pergola," https://www.youtube.com/watch?v=49JK7M-5IjA, April 30,
2014 (last visited September 17, 2018).
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Appeal2018-001781
Application 14/695,878
Furthermore, Appellant's Figures show a separate catch basin for the
waterfall, which would not support the waterfall mechanism above and is
therefore not freestanding in itself. Given these conflicting terms, we
conclude that one of ordinary skill in the art would not understand the
structural arrangement required by the term "freestanding" as used in the
claims when that same "freestanding" structure is somehow also
"suspended."
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-16.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b) (2011). 37 C.F.R. § 4I.50(b) provides "[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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Appeal2018-001781
Application 14/695,878
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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