Ex Parte Thompson

Patent Trial and Appeal Board

Aug 18, 2017

13676845 (P.T.A.B. Aug. 18, 2017)

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.
13/676,845 11/14/2012 John Thompson JR. 1652 JT 01 CIP 6694
75207 7590
Gearhart Law LLC
41 River Road
Suite 1A
Summit, NJ 07901
EXAMINER
SINGH, AMIT K
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/18/2017 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 JOHN THOMPSON, JR.
Appeal 2015-003287
Application 13/676,845
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and LEE L. STEPINA,
Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Thompson, Jr. (“Appellant”)1 appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1 and 3—15 in this application.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM and designate the affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 The Appeal Brief identifies Appellant as the real party in interest. Appeal
Br. 1.
Appeal 2015-003287
Application 13/676,845
CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1 illustratively recites:
1. An article of manufacture, comprising:
a mat having a top surface, a bottom surface, a plurality of
side surfaces, a length, and a width, wherein the length and the
width are sized to cover a roof of an automobile and wherein the
mat has a continuous heating coil disposed therein and wherein
the mat is secured to the roof,
a power cord connected to the heating coil;
a temperature gauge connected to the power cord;
an inverter connected to the power cord; and
an adaptor connected to the power cord, wherein
the adaptor is connected to a power source
providing direct current,
the inverter converts direct current from the power
source to alternating current,
and the temperature gauge measures ambient
temperature and controls the flow of current from the
power source to the heating coil.
Appeal Br. 10 (Claims App.) (emphasis added).
Claim 12, for present purposes, is identical to claim 1 except that
claim 12 specifies “a plurality offasteners'’'’ which “secure the mat to a
vehicle roof.” Id. at 12 (emphasis added).
REJECTIONS ON APPEAL
Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, for
indefiniteness.
Claims 1 and 3—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Doomsbosch (US 6,696,674 Bl, iss. Feb. 24, 2004) and
Caterina (US 2009/0302023 Al, pub. Dec. 10, 2009).
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Application 13/676,845
ANALYSIS
A. Indefiniteness (Claim 7)
The Examiner determined claim 7 is indefinite in reciting a
“connector links to a substantially similar mat.” Final Act. 4 (emphasis
added to pertinent claim terms). The Examiner concluded “[t]he term
‘substantially’ in claim 7 is a relative term which renders the claim
indefinite,” particularly as to “the dimensions of the ‘similar mat.’” Id.
Appellant does not address the indefmiteness rejection of claim 7. See
Appeal Br. & Reply Br. We, therefore, summarily sustain that rejection.
See 37 C.F.R. § 41.37(c)(l)(iv); In re Baxter Inti, Inc., 678 F.3d 1357, 1362
(2012) (argument waived when not timely presented in briefing to the
Board, absent exceptional circumstances); MPEP § 1215.03 (9th Ed., Rev.
07.2015. Nov. 2015) (“An appellant may, of course, choose not to present
arguments or rely upon particular evidence as to certain claim rejections;
however, such arguments and evidence are waived for purposes of the
appeal and the Board may summarily sustain any grounds of rejections not
argued.”).
B. Obviousness over Doornsbosch and Caterina
(Claims 1 and 3—15)
Independent Claims 1 and 12
In rejecting claims 1 and 12, the Examiner found Doomsbosch’s
Figure 1 discloses ice melting system 10 comprising a mat sized to cover an
automobile roof. Final Act. 5 (claim 1), 8 (claim 12). The Examiner
determined the Doornsbosch system 10 has heating coil 12 and power
cord 24, but lacks the limitations reciting a temperature gauge, an inverter,
and an adaptor. Id. at 5—6 (claim 1), 8—9 (claim 12). The Examiner found
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Application 13/676,845
Caterina discloses a temperature gauge, an inverter, and an adaptor, all as
recited in claims 1 and 12. Id. at 6 (claim 1), 9—10 (claim 12). The
Examiner determined it would have been obvious to utilize, in the
Doomsbosch system 10, the temperature controller, inverter, and adaptor of
Caterina, “to provide a controlled warmth for objects stored on a surface.”
Id. at 10.
Appellant does not dispute the aspects of the Examiner’s rejection in
relation to the temperature controller, inverter, and adaptor. See Appeal
Br. 7—9; Reply Br. 3—8. Instead, Appellant focuses on the mat securement in
claim 1 (Reply Br. 3—6) and the mat fasteners in claim 12 (Appeal Br. 7—9;
Reply Br. 6—7).
Concerning the claim 1 limitation “the mat is secured to the roof,” the
Examiner found the Doomsbosch mat “is secured to the roof (see ice
melting system 10, FIG. 1),” and did not rely on Catarina in connection with
the claimed securement. Final Act. 5—6. Appellant argues the Doomsbosch
mat is not “secured” as claimed, because it is simply “positioned over an
automobile” as “a loose mat.” Reply Br. 3^4.
We agree with Appellant that a preponderance of the evidence does
not support the Examiner’s finding that the Doomsbosch mat is secured to
an automobile roof. The Examiner cited only Figure 1 of Doomsbosch as
disclosing the claimed securement. Final Act. 5. Figure 1 of Doomsbosch,
however, does not disclose the mat being secured to the automobile roof; it
simply shows the mat laying on top of the automobile roof. See, e.g.,
Doomsbosch 1:18—21 (“A need was felt for a deicing blanket that could be
placed upon the ice and snow to melt it and that would have a soft surface so
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Application 13/676,845
that the vehicle would not be scratched.”) (emphases added). Thus, we do
not sustain the rejection of claim 1 as articulated by the Examiner.
Concerning the claim 12 limitation of “a plurality of fasteners” which
“secure the mat to a vehicle roof,” the Examiner determined Doomsbosch
does not disclose securing with “fasteners,” but found Caterina’s Figure 4
discloses fasteners 132. Final Act. 8—9. The Examiner determined:
The feature “fasteners attach the mat to racks disposed on a
vehicle roof’ is obvious because ordinary cars can have racks
and the mat of Doomsbosch is useful for cars with or without
racks, and is placed on, covered on, or equivalently “held” on,
the car in FIG. 1 of Doomsbosch. Further, Caterina teaches
frames 138 (FIG. 4) reading on a rack.
Id. at 9. In this regard, we note claim 12 requires only that “the fasteners
secure the mat to” the roof, and does not specify securing the mat to a rack
on the roof. Indeed, no claim on appeal specifies a fastener to secure the mat
to a rack. Claim 4, which depends from claim 1, is the only claim to specify
a rack or racks on the roof, but claim 4 does not require any fasteners.
Appellant argues the Examiner “appears to contradict himself’ in
firstly concluding Doomsbosch discloses a mat to be held on a car with or
without racks, and secondly relying on Caterina as “teach[ing] frames
reading on a rack.” Appeal Br. 7. Appellant explains: “If it is indeed the
case” that the Doomsbosch mat can be held on cars with or without racks,
“then there is no motivation to combine” Doomsbosch and Caterina as
proposed by the Examiner. Id. at 7—8; Reply Br. 7. In particular, Appellant
contends a person of ordinary skill in the art would have no reason to seek
the teachings of Caterina to secure the mat to the roof, because Doomsbosch
already supplies that function. Appeal Br. 8; Reply Br. 7.
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Application 13/676,845
Appellant also argues the Examiner’s proposed combination of
Doomsbosch and Caterina “renders the present invention inoperable.”
Appeal Br. 8. Appellant points out that Caterina’s rectangular-shaped
frames 138, upon which the Examiner relies for teaching a rack, are
disposed internally along the perimeter of each wall 104, 106, 108, and 110,
“thereby creating a substantially rigid, planar element.” Id.', see Caterina,
Fig. 4. Appellant contrasts such a rigid planar element with the article of
claim 12, which Appellant asserts “attaches to the rack of a car and exists
wholly outside the confines of the car rack,” enabling the article “to be
pliable and conform to the contours of an automobile roof and secure to the
roof or rack.” Appeal Br. 8. Appellant contends the rigid, planar frame of
Catarina “would invariably leave gaps between the heating element and the
surface of the automobile,” “defeat[ing] the central purpose of the present
invention, rendering the present invention inoperational” for various reasons.
Id. at 8—9.
Appellant, finally, argues claims 1 and 12 must be interpreted such
that the mat remains in position on the vehicle roof while the vehicle is in
motion. Reply Br. 5—6. Appellant relies on the statement in the
Specification that “[s]ince the mat 10 may continue to melt ice and snow
while the vehicle is moving, it is important that the mat 10 is securely
fastened to the roof 110” with fasteners 170. Id. (quoting Spec. 9:1—3).
According to Appellant, the claimed invention thereby solves a problem not
recognized in Doomsbosch or Caterina, by “provid[ing] for complete
retardation of the buildup of snow and/or ice on a vehicle” without having to
“periodically” apply the mat. Id. at 5.
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Application 13/676,845
We determine claims 1 and 12 are both unpatentable as having been
obvious over Doomsbosch and Caterina. As discussed above, we agree with
Appellant’s argument that the Doomsbosch mat is simply laid on top of the
vehicle roof, rather than being secured to the roof. However, a person of
ordinary skill in the art would have appreciated the benefits of affirmatively
securing the Doomsbosch mat to the vehicle roof, to prevent the mat from
being blown off by the wind, or otherwise sliding off the vehicle as the snow
and ice melt to create a wet, slippery environment. See, e.g.,
Doomsbosch, 1:18—21, 5:1—9. Caterina, meanwhile, discloses several
different kinds of fasteners for securing a warming apparatus comprising an
encased heating coil such as the Doomsbosch mat, including: grommets to
receive bungee cords, zip ties, rope, string, or wires; straps attached to a
cover layer and clipped together; and hook and loop fasteners such as
Velcro®. Catarina 31—32, 42-46, 89, 92; Doomsbosch, 2:33^40. A
person of ordinary skill in the art would have appreciated such fasteners
could be used to secure the Doomsbosch mat, illustrated in Figure 1 of
Doomsbosch, to a vehicle roof.
Concerning the alleged inoperability of the combination of
Doomsbosch and Caterina, we agree with the Examiner that the test for
obviousness is not whether Caterina’s features may be bodily incorporated
into the stmcture of Doomsbosch, but rather is what the combined teachings
of the references would have suggested. Ans. 10—11 (citing In re Keller,
642 F.2d 413 (CCPA 1981)). In that regard, a person of ordinary skill in the
art could have readily used Caterina’s fasteners to secure the Doomsbosch
mat on a vehicle roof, without sacrificing the flexibility of the Doomsbosch
mat which allows it to conform to the shape of the vehicle. See
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Application 13/676,845
Doomsbosch, Fig. 1; see also Catarina ]Hf 46, 52 (warming apparatus may be
“somewhat flexible” to permit rolling or wrapping around an object). See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“Common sense
teaches, however, that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle.”).
Finally, Appellant’s construction of claims 1 and 12 to require the mat
to remain in position on the vehicle roof while the vehicle is in motion is not
consistent with the broadest reasonable construction of the claims in light of
Appellant’s Specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (during examination, pending claims are given
their broadest reasonable construction consistent with the Specification).
Appellant’s Specification discloses that the claimed article “can be installed
on top of the vehicle and remain in place throughout the winter,” or it can
alternatively “be stored within the trunk of a vehicle when not in use.”
Spec. 5:4—6. It further indicates: “The mat 10 is preferably a vehicle
accessory and may be rolled up or folded and stored in the trunk until
needed, or permanently installed on the vehicle 100, or installed for the
duration of the winter season.” Id. at 13:16—18. It also refers to fasteners as
being “especially preferred when the present invention is attached to the
vehicle 100 and when the vehicle 100 is moving.” Id. at 8:23—9:1. We
decline to read into the “secured” limitation of claim 1, or the “fastener”
limitation of claim 12, the requirement that the securement must be strong
enough to persist when the car is moving, when Appellant’s Specification
discloses the claimed article may be removed and stored in the trunk until
needed, rather than being installed for the duration of the winter season.
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Application 13/676,845
For the foregoing reasons, we sustain the rejection of claims 1 and 12
as having been obvious over Doomsbosch and Caterina. We denominate
our affirmance as a NEW GROUND OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b), because our analysis relies upon reasoning the Examiner did not
express in the rejection, especially in connection with claim 1.
Dependent Claims 3—11 and 13—15
Appellant does not argue for the patentability of dependent claims 3,
5—11, and 13—15 separately from independent claims 1 and 12. See Appeal
Br. 7—9; Reply Br. 2—7. Therefore, we sustain the rejection of claims 3,
5—11, and 13—15 as having been obvious over Doomsbosch and Caterina, for
the reasons provided above. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues for the patentability of dependent claim 4 separately
from its parent independent claim 1, based on the same arguments presented
for the patentability of independent claim 12. See Appeal Br. 7—9; Reply
Br. 6—7. We sustain the rejection of claim 4 as having been obvious over
Doomsbosch and Caterina, for the reasons provided above. The
Doomsbosch mat as illustrated in its Figure 1 will be “affixed to” roof racks
on the vehicle, as required by claim 4, if such racks are present, by virtue of
being held against the roof of the vehicle and secured by fasteners.
DECISION
The Examiner’s decision to reject claims 1 and 3—15 is affirmed.
For the reasons discussed above, we designate our affirmance as a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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Application 13/676,845
Section 41.50(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. . . .
37 C.F.R. § 41.50(b)(l)-(2). 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).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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