Ex Parte Tickner

Patent Trial and Appeal Board

Sep 27, 2012

11339363 (P.T.A.B. Sep. 27, 2012)

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.
11/339,363 01/25/2006 Jerold Tickner 13682.105163 6281
20786 7590 09/27/2012
KING & SPALDING
1180 PEACHTREE STREET , NE
ATLANTA, GA 30309-3521
EXAMINER
GRAMLING, SEAN P
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
09/27/2012 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 JEROLD TICKNER
____________________

Appeal 2010-005371
Application 11/339,363
Technology Center 2800
____________________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals from the Examiner’s rejection of claims 1-12, 32,
35, and 37-39. Claims 13-31, 33, 34, 36, and 40-44 have been canceled.
(Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-005371
Application 11/339,363

2
Representative Claim
1. A lighting apparatus, comprising:
a door;
a chassis coupling member extending along a length of
the door, wherein the chassis coupling member comprises an
arcuate distal end comprising a first end and a second end, the
first end abutting the chassis coupling member and the second
end comprising a terminating point;
a coupling channel defined by the chassis coupling
member; and
a stop member extending from the terminating point of
the second end of the arcuate distal end in a substantially
orthogonal direction.

Rejections on Appeal
1. The Examiner rejects claims 1-3, 5-12, 32, 35, and 37-39 under
35 U.S.C. § 102(b) as being anticipated by U.S. Patent No. 3,663,990, issued
May 23, 1972 (“Shane”).
2. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Shane.

ISSUE
Does the Examiner err in finding that Shane discloses “a
chassis coupling member . . . wherein the chassis coupling member
comprises an arcuate distal end comprising a first end and a second
end, the first end abutting the chassis coupling member and the second
end comprising a terminating point” as recited in Appellant’s claim 1
Appeal 2010-005371
Application 11/339,363

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(and the commensurate limitations of claims 32 and 35) and “a stop
member extending from the terminating point of the second end of the
arcuate distal end in a substantially orthogonal direction” as recited in
Appellant’s claim 1?

ANALYSIS
We agree with Appellant that portions of Shane identified by the
Examiner do not explicitly disclose the disputed features of claim 1 (Br. 12-
16) or claim 32 (Br. 16-18). Specifically, we agree with Appellant that
Shane fails to disclose the recited arcuate distal end comprising first and
second ends – that is the first end abutting the chassis coupling member and
the second end comprising a terminating point (Br. 12-16).
Claim 1 also requires “a stop member extending from the terminating
point of the second end of the arcuate distal end in a substantially orthogonal
direction” (claim 1). Therefore, the “second end” must terminate (define an
end point) and also define an orthogonal protrusion – the “stop member.”
As pointed out by the Examiner, Shane describes an arcuate distal end (Fig.
3, element 40), one end of which abuts (abutting – i.e.,
joining/touching/bordering) a chassis coupling member (flared edge (Fig. 6,
element 34) comprising the straight back portion (Fig. 3, element 36)) and
the other end comprising a terminating point (see Fig. 3; Ans. 3, 9-10).
Also, Shane describes a stop member (Fig. 3, element 38) extending from
one end of the arcuate distal end (Ans. 3-4, 9-10).
We, however, cannot agree with the Examiner’s interpretation of
Shane, which follows:
Appeal 2010-005371
Application 11/339,363

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[T]he first end of the arcuate distal end 40 (the first end being
designated by Examiner as the free end of arcuate distal end 40
which is farthest from stop member 38, see particularly Figure
4) is “abutting” the chassis coupling member because it abuts a
part of the chassis coupling member, specifically the arcuate
distal end 40 . . . .
(Ans. 9.)
Finally, Examiner submits that the second end of the
arcuate distal end 40 (the second end being designated by
Examiner as the end of arcuate distal end 40 which is adjacent
stop member 38) comprises a terminating point (the terminating
point is immediately before the point where stop member 38
protrudes, see particularly Figure 3). Therefore Shane clearly
discloses a stop member 38 extending from the terminating
point of the second end of the arcuate distal end in a
substantially orthogonal direction (see Figures 3-5).
(Ans. 10.)
In particular, we view as unreasonable the Examiner’s interpretation
that: (1) “the first end of the arcuate distal end . . . being . . . the free end of
arcuate distal end 40 which is farthest from stop member 38 . . . is ‘abutting’
the chassis coupling member because it [is] a part of the chassis coupling
member” (Ans. 9 (emphasis added)) and (2) “the second end of the arcuate
distal end 40 . . . being . . . the end of arcuate distal end 40 which is adjacent
stop member 38 . . . comprises a terminating point [which] is immediately
before the point where stop member 38 protrudes” (Ans. 10 (emphasis
added)). We find a structural portion abutting or joining another structural
portion, as recited in the claim, is demonstrably distinguishable from two
structural portions integrated with each other, as the Examiner apparently
suggests – that is, the free end of element 40, which the Examiner submits as
abutting the chassis coupling member (the straight back portion (Shane, Fig.
3, element 36)), is actually the farthest point from the rest of the chassis
Appeal 2010-005371
Application 11/339,363

5
coupling member/straight back portion. We also find that we cannot
determine where Shane’s chassis coupling member/straight back portion and
arcuate distal end, as interpreted by the Examiner, end or begin – in other
words, the area designated by the Examiner as a terminating point does not
terminate anything.
Consequently, we are constrained by the record before us to conclude
that Shane fails to disclose the recited features of Appellant’s claim 1, and
the rejection of claim 1 fails to establish a prima facie case of anticipation.
Appellant’s independent claims 32 and 35 include limitations of
commensurate limitations, and dependent claims 2-12 depend on and stand
with claim 1. Accordingly, we reverse the Examiner’s anticipation rejection
of claims 1-3, 5-12, 32, 35, and 37-39.
Appellant’s claim 4, rejected under 35 U.S.C. § 103, also depends on
and stands with claim 1. Accordingly, we also reverse the Examiner’s
obviousness rejection of claim 4.

CONCLUSION OF LAW
Appellant has shown that the Examiner erred in rejecting claims 1-3,
5-12, 32, 35, and 37-39 under 35 U.S.C. § 102(b) and claim 4 under 35
U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejections of claims 1-12, 32, 35, and 37-
39.
REVERSED
peb