Ex Parte Staser et al

Patent Trial and Appeal Board

Apr 19, 2016

12783332 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121783,332 05/19/2010 Brian H. Staser
23413 7590 04/21/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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.
ICS-027 6470
EXAMINER
REDMAN, JERRY E
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN H. STASER and CHRISTOPHER L. FAILLE
Appeal2014-000693
Application 12/783,332
Technology Center 3600
Before: CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to a carrier supported pull-cup. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Claiml.
A door bracket for mounting guide rails of a window lift
assembly, the bracket comprising:
a lateral support portion, the lateral support portion
defining an opening for receipt of a pull cup therein;
Appeal2014-000693
Application 12/783,332
a pair of structural arm members extending away from the
lateral support portion, wherein the pair of structural arm
members are integrally molded with the lateral support portion;
and
a bottom mount extending between the pair of structural
arm members.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Staser
Nakajima
US 7 ,246,465 B2
US 8,065,837 B2
REJECTION
July 24, 2007
Nov. 29, 2011
In the Final Rejection, the Examiner relied on Staser, Nakajima, and
Figure 1 of Appellants' disclosure, which the Examiner determined depicted
admitted prior art. Final Act. 3-5. In the Examiner's Answer, the Examiner
indicated the Examiner no longer was relying on any aspect of Appellants'
disclosure as a basis to reject the claims. Ans. 4. The Examiner did not make
any alternate findings or provide any reasoning to substitute for the aspects
of the rejection in the Final Office Action for which the Examiner relied on
Appellants' disclosure. Whether we consider as before us the rejection as set
for in the Final Office Action or the rejection as set forth in the Answer does
not change the outcome of this appeal.
OPINION
The independent claims before us, claims 1 and 19, respectively recite
a "lateral support portion" or "lateral support wall portions," "defining an
opening for receipt of a pull cup therein." The Examiner, for the first time in
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Appeal2014-000693
Application 12/783,332
the Answer, identifies the specific structure in Nakajima that the Examiner
regards as satisfying this limitation-the openings in supporting projections
5A---C and boss portion 9. Ans. 7 (annotating Nakajima Figure 6). First,
because the Specification (p. 1) draws an express distinction between "pull
grips," like those ofNakajima, and "pull cups" as recited in claims 1 and 19;
and second, because there is no indication that any of the openings pointed
to by the Examiner could function to "for receipt a pull cup therein"
(emphasis added); none of the openings in supporting projections 5A---C or
in boss portion 9 are reasonably regarded as "an opening for receipt of a pull
cup therein." As the Examiner's rejection is predicated on an unreasonable
claim construction, we do not sustain it.
Normally objections regarding drawings and matters of form are
outside our jurisdiction. However, where Examiner's objections "relate, at
least indirectly, to matters involving the rejection of claims" (In re
Hengehold, 440 F.2d 1395, 1404 (CCPA 1971)), are "determinative of the
rejection," or "require[] the exercise of technical skill and legal judgment in
order to evaluate the facts presented, interpret the requirements of [United
States Code Title 35 and United States Code of Federal Regulations Title
3 7] and weigh the facts against those requirements ... [, an Examiner's
decision may be] an 'adverse decision' as to be properly reviewable by the
Board of Appeals under 35 U.S.C. § [6] 1." In re Searles, 422 F.2d 431, 434--
435 (CCPA 1970).
As best as we can understand, regarding the Examiner's objection for
"referring to two elements with a single numeral" (Final Act. 2), the
1 Formerly § 7
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Appeal2014-000693
Application 12/783,332
Examiner is objecting to the use of alternative nomenclature to describe a
particular element, e.g., "bottom mount or support portion 14" and "lateral
mount or lateral support portion 16." As the term "bottom mount" is used in
the claims, the understanding of this phrase and the corresponding structure
in the Specification relates to the rejections before us for review. We are
unaware of any legal or regulatory requirement prohibiting describing a
particular element using alternative nomenclature and therefore reverse this
objection.
As Appellants sought review of a rejection relying on an alleged
admission of prior art, the Examiner's requirement to label Figure 1 as prior
art also relates to a rejection. MPEP § 2129 (citations omitted) states:
A statement by an applicant in the specification or made during
prosecution identifying the work of another as "prior art" is an
admission which can be relied upon for both anticipation and
obviousness determinations, regardless of whether the admitted
prior art would otherwise qualify as prior art under the statutory
categories of 35 U.S.C. 102. However, even if labeled as "prior
art," the work of the same inventive entity may not be considered
prior art against the claims unless it falls under one of the
statutory categories.
The language in the Specification, "FIG. 1 illustrates a bracket 10 for
a bottom mounted pull cup while FIGS. 2-5 illustrate a bracket 12 in
accordance with an exemplary 25 embodiment of the present invention" may
suggest that Appellants do not consider the subject matter depicted in Figure
1 to be exemplary of the claimed invention. However, without more, this
does not necessarily mean that Appellants acknowledge that the subject
matter illustrated in Figure 1 constitutes "prior art" in accordance with the
standards discussed above. Accordingly, we also reverse this objection.
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Appeal2014-000693
Application 12/783,332
DECISION
The Examiner's rejection and objections are reversed.
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).
REVERSED
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