Ex Parte ThumDownload PDFPatent Trial and Appeal BoardJun 24, 201511372434 (P.T.A.B. Jun. 24, 2015) Copy Citation 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. 11/372,434 03/09/2006 Larry A. Thum MSH-373 6122 8131 7590 06/24/2015 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER LE, TAN ART UNIT PAPER NUMBER 3632 MAIL DATE DELIVERY MODE 06/24/2015 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 LARRY A. THUM ____________________ Appeal 2013-007235 Application 11/372,434 Technology Center 3600 ____________________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JAMES J. MAYBERRY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 3560. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a peg board bar. Claim 35, reproduced below, is illustrative of the claimed subject matter: 35. A solid unitary peg board bar comprising: a front surface and a back surface; said front surface containing therein a plurality of hanger openings therethrough; Appeal 2013-007235 Application 11/372,434 2 said hanger openings being spaced equidistantly from one another; said hanger openings consisting of an intersecting vertical slot and a horizontal slot forming a right angle; said front surface containing a plurality of attachment openings therethrough. Br.,1 Claims App. REJECTIONS2 Claims 35, 53, 55, and 57 are rejected under 35 U.S.C. § 102(b) as being anticipated by Rockwell (U.S. Patent No. 1 ,657,939). Final Act. 3. Claims 35, 53, 55, and 57 are rejected under 35 U.S.C. § 102(b) as being anticipated by Fassinger (U.S. Patent No. 1 ,775,391). Final Act. 34. Claims 3652, 54, 56, 5860 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rockewell, or Fassinger. Final Act. 4. OPINION Appellant contends that “[t]here are at least three dissimilarities between Rockwell and the remaining claims of the instant invention.” Br. 5. We understand the first dissimilarity pointed out by Appellant to be the presence of additional features in Rockwell that are not recited in the claim: “that the device of claim 35 does not have depending raised outside edges.” Br. 5. As the transitional phrase “comprising” permits the presence of 1 The Appeal Brief is not paginated. Therefore, all reference to a page number refers to a page of the Appeal Brief as if the pages were numbered consecutively starting with the first page. 2 The Examiner expressly withdrew the § 102(b) rejection of claims 35, 53, 55, and 57 over Gregory. Ans. 7. We presume the Examiner intended to also withdraw the § 103(a) rejection over Gregory alone (Final Act. 4). Appeal 2013-007235 Application 11/372,434 3 additional elements, the presence of depending raised outside edges in Rockwell does not demonstrate that the anticipation rejection is in error. See MPEP § 2111.03. The second dissimilarity alleged by Appellant is that “[t]he openings of Rockwell form right angles, but the angles are in the wrong positions.” Br. 5. We understand this argument to refer to the difference in the location of the vertical-horizontal intersection of the lines forming a “T” as opposed to that of the lines forming an “L.” The Examiner correctly points out that “while it is appropriate to use the specification to determine what applicant intends a term to mean, a limitation from the specification cannot be read into a claim that does not impose that limitation. Limitations appearing in [the] specification but not recited in the claim are not read into the claim.” Ans. 8 (citations omitted). Here, the only independent claim specifies “hanger openings consisting of an intersecting vertical slot and a horizontal slot forming a right angle,” and does not specify where they intersect, only that they do. We believe the third dissimilarity alleged by Appellant (“the block of this device, sets flush against the surface to which it is to be attached” (Br. 5)) suffers from the same flaw as the second in that Appellant is arguing a feature that is not recited in the claims. Accordingly, we sustain the § 102(b) rejection based on Rockwell, and the §§ 102(b) and 103(a) rejections of the dependent claims which are not separately argued. See 37 C.F.R. § 41.37(c)(1)(iv). Insofar as the § 102(b) rejection based on Fassinger is concerned, we are unable to discern exactly what the Examiner considers to form the “intersecting vertical slot and a horizontal slot forming a right angle” (Ans. Appeal 2013-007235 Application 11/372,434 4 4). The Examiner provides an annotated version of Fassinger’s Figure 2. Ans. 13. However, the horizontal slot and vertical slot are not sufficiently identified to inform us as to the basis of the rejection. The Examiner acknowledged that the recited openings are introduced into the claim using the closed-ended term “consisting of.” So the hanger openings must include “an intersecting vertical slot and a horizontal slot forming a right angle” (Br. 3) and nothing more. In comparison to Rockwell, for example, Fassinger’s openings appear to contain additional structure. We acknowledge that, according to the language of the claim, the recited “slots” do not necessarily have to take any particular shape. However, in order for us to conduct a meaningful review and for Appellant to have a fair opportunity to respond, we must be apprised of how the Examiner considers the claim terms to be met by the prior art without resort to speculation. In re Stepan Co., 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation “to provide prior notice to the applicant of all ‘matters of fact and law asserted’ prior to an appeal hearing before the Board” (citation omitted)). Accordingly, as each rejection premised on Fassinger suffers from this flaw, we do not sustain these rejections. DECISION The Examiner’s rejection of claims 35, 53, 55, and 57 under 35 U.S.C. § 102(b) as being anticipated by Rockwell is affirmed. The Examiner’s rejection of claims 35, 53, 55, and 57 under 35 U.S.C. § 102(b) as being anticipated by Fassinger is reversed. The Examiner’s rejection of claims 3652, 54, 56, 5860 under 35 U.S.C. § 103(a) as being unpatentable over Rockewell is affirmed. Appeal 2013-007235 Application 11/372,434 5 The Examiner’s rejection of claims 3652, 54, 56, 5860 under under 35 U.S.C. § 103(a) as being unpatentable over Fassinger is 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)(1)(iv). AFFIRMED3 llw 3 The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. 37 C.F.R. § 41.50(a). Copy with citationCopy as parenthetical citation