Ex Parte Turner

Board of Patent Appeals and Interferences

Mar 31, 2003

09616503 (B.P.A.I. Mar. 31, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEAN A. TURNER
__________
Appeal No. 2002-1591
Application 09/616,503
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 35 through 40, 42, 44 through 55, 57 and 59
through 72, all of the claims remaining in this application.
Claims 1 through 34, 41, 43, 56 and 58 have been canceled.
Appellant’s invention is directed a window shutter system
and method for assembling such a window shutter system.
Independent claims 35, 50, 67 and 72 are representative of the
Application subject matter on appeal and a copy of those claims
can be found in Appendix A of appellant’s brief.
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The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Turner ‘858 5,307,858 May 3, 1994
Richter et al. (Richter) 5,722,477 Mar. 3, 1998
Claims 35 through 40, 42, 44 through 55, 57 and 59 through
72 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Richter.
Claims 48 and 65 additionally stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Turner ‘858 in view of
Richter.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding those rejections, we make reference to the final
rejection (Paper No. 7, mailed May 10, 2001) and examiner's
answer (Paper No. 14, mailed January 18, 2002) for the reasoning
in support of the rejections, and to appellant’s brief (Paper No.
13, filed November 20, 2001) and reply brief (Paper No. 15, filed
February 15, 2002) for the arguments thereagainst.
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Application No.09/616,503
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OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
As a preliminary matter, we note that appellant in both the
brief and reply brief has requested entry of the amendment after
final filed July 17, 2001 (Paper No. 8) and urged that the
changes in such amendment be considered on appeal. The examiner
refused entry of the above-noted amendment in an advisory action
mailed August 1, 2001 (Paper No. 9). The non-entry of amendments
during prosecution of an application before the examiner relates
to petitionable subject matter under 37 CFR § 1.181, and is not
an appealable issue. Under 35 U.S.C. § 134 and 37 CFR § 1.191
appeals may be taken from the decision of the primary examiner to
reject claims. This Board does not and is not empowered to
exercise general supervisory authority over the Examining Corps.
See, for example, In re Hengehold, 440 F.2d 1395, 1404, 169 USPQ
473 (CCPA 1971) and In re Mindick, 371 F.2d 892, 894, 152 USPQ
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Application No.09/616,503
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566, 568 (CCPA 1967). Accordingly, we make no further comment
regarding the amendment that was refused entry by the examiner.
Turning to the examiner’s rejection of claims 35 through 40,
42, 44 through 55, 57 and 59 through 72 under 35 U.S.C. § 103(a)
as being unpatentable over Richter (final rejection, pages 2-3),
we note that the examiner has determined that Richter discloses
all of the elements of appellant’s claims on appeal except for
“the hinge, the connector being made of plastic, and the steps of
the method claim in the order recited.” To account for these
differences, the examiner urges that 1) “it is inherent that the
joint 155 [Fig. 11] permits pivotal movement between the frame
members due to the materials and structures involved;” 2) it
would have been obvious to form the connectors (9) of Richter of
plastic because such “would most efficiently accomplish the goals
of the device;” and 3) with regard to the two steps of method
claim 67, “such would have been the obvious method of assembling
the Richter et al device.”
Unlike appellant’s claimed window shutter system, Richter
addresses a connector assembly arrangement for connecting plastic
pipe sections (2) together in a locked arrangement to define
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interconnected frames (3) that can support panels (4) and wherein
a plurality of panels/frames can be joined together to form an
enclosure or room divider (col. 1, lines 21-25). See, for
example, Figures 1A-1C. The examiner has not addressed the fact
that appellant’s claimed subject matter (e.g., independent claims
35, 50 and 72) is directed to a window shutter system, while the
Richter patent addresses frames or panels for a room divider. As
for the examiner’s contention that the double claw clip (155) of
Richter is readable as a “hinge” because it permits pivotal
movement between adjacent frame members, we would generally
agree. However, what the examiner has failed to account for in
claim 35 on appeal is the further limitation that such “hinge” is
structurally and functionally “operable to connect one of the
elongate members to a window frame.” In appellant’s window
shutter system it is the elements (120), (216), (118) and (218)
which define a hinge operable to connect one of the elongate
members (126a) to a window frame member (110).
In the pipe connector assembly and room divider of Richter,
the double claw clip (155), seen best in Figure 11, is described
as holding two parallel pieces of pipe together and being used to
stabilize and join one panel to an adjacent panel (col. 7, lines
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40-47). Such double claw clips (un-numbered) appear to be shown
in Figures 1 and 2 of Richter adjacent the connector fitting
assemblies (5) at the upper and lower corners of adjacent frames
(3). As urged by appellant in both the brief and reply brief, it
is immediately apparent that the double claw clip (155) of
Richter is not a “hinge” which is “operable to connect one of the
elongate members to a window frame,” as required in claim 35 on
appeal. Moreover, we agree with appellant that it would not have
been obvious to modify the double claw clip (155) to do so. For
those reasons, we will not sustain the examiner’s rejection of
claim 35 under 35 U.S.C. § 103(a) based on Richter. It follows
that the examiner’s rejection of claims 36 through 40, 42 and 44
through 49, which depend from claim 35, will also not be
sustained.
Appellant’s independent claim 50 requires “at least one
hinge operable to couple an elongate member to a window frame”
and “at least one joint operable to hingedly connect the
plurality of frames.” Even if we were to agree with the examiner
that the double claw clips (155) of Richter provide a hinge or
joint operable to hingedly connect the plurality of frames
together, we remain of the view expressed above in our treatment
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of claim 35, that the double claw clip does not define or provide
a “hinge operable to couple an elongate member to a window frame”
and that it would not have been obvious to modify the double claw
clip (155) to do so. Accordingly, the examiner’s rejection of
claim 50 under 35 U.S.C. § 103(a) based on Richter will not be
sustained. The examiner’s rejection of claims 51 through 55, 57
and 59 through 66, which depend from claim 50, will also not be
sustained.
As for independent claim 72, this claim defines a window
shutter system that includes “at least one wall mount operable to
couple the elongate members and the couplers to a surface.”
Again, it appears that the examiner has determined that the
double claw clip (155) of Richter constitutes such a “wall
mount.” For the reasons generally expressed above, we do not
agree that the double claw clip (155) would have been viewed by
one of ordinary skill in the art as a “wall mount operable to
couple the elongate members and the couplers to a surface.” Nor
has the examiner provided any explanation of exactly how the
double claw clip of Richter is structurally and functionally
capable of any such mounting/coupling of the elongate members to
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a surface. Accordingly, the examiner’s rejection of claim 72
under 35 U.S.C. § 103(a) based on Richter will not be sustained.
Method claim 67 is directed to a method for assembling a
window shutter system wherein a plurality of elongate members and
couplers are joined together to define at least one frame. The
claim then sets forth the step of “attaching at least one hinge
to the frame for mounting the shutter system to a window.” While
the examiner has urged that appellant’s method represents nothing
more than “the obvious method of assembling the Richter et al
device,” we do not agree. In the first place, we again point out
that Richter is directed to panels or frames assembled together
to define a room divider, not a window shutter system, and that
the examiner has never addressed this difference. Moreover,
since Richter is concerned with a room divider, not a window
shutter system, it follows that there is nothing in Richter which
teaches or suggests “attaching at least one hinge to the frame
for mounting the shutter system to a window.” Again we find that
the examiner has failed to establish a prima facie case of
obviousness, and for that reason, will not sustain the rejection
of claim 67 under 35 U.S.C. § 103(a). It follows that the
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examiner’s rejection of dependent claims 68 through 71 will also
not be sustained.
With regard to the examiner’s alternative rejection of
dependent claims 48 and 65 under 35 U.S.C. § 103(a) as being
unpatentable over Turner ‘858 in view of Richter, the examiner
has determined that it would have been obvious to modify the
window shutter system of Turner ‘858 “whereby his couplers are
replaced with the couplers of Richter et al since the Richter et
al couplers permit adjustability of the angles between the
elongate members, thereby expanding the design capabilities of
the system” (final rejection, page 3). Like appellant, we find
no basis in the combined teachings of Turner ‘858 and Richter for
modifying the window shutter system of Turner ‘858 in the manner
urged by the examiner. In that regard, we are of the view that
the examiner is using the hindsight benefit of appellant’s own
disclosure to pick and choose elements from the applied
references, and then selectively combine the chosen disparate
elements in an attempt to reconstruct appellant’s claimed subject
matter. However, as our court of review indicated in In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780 (Fed. Cir. 1992), it
is impermissible to use the claimed invention as an instruction
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manual or "template" in attempting to piece together isolated
disclosures and teachings of the prior art so that the claimed
invention is rendered obvious.
Moreover, even if such a substitution of coupling components
were to be made, we do not see how this combination would result
in the particular subject matter which is claimed by appellant in
claims 48 and 65. Nor has the examiner provided any explanation
of how one would arrive at the specific subject matter defined in
claims 48 and 65 on appeal. Claims 48 and 65 are directed to a
“hinge” of the type set forth in claim 1 or claim 50 on appeal as
being operable to connect or couple an elongate member of a
window shutter system to a window frame, and defines that hinge
as further including “a hinge post and a wall mount.” The
examiner has simply not addressed the express limitations of
dependent claims 48 and 65 specifically. Accordingly, we find
that the examiner has not established a prima facie case of
obviousness, and for that reason, will not sustain the rejection
of claims 48 and 65 under 35 U.S.C. § 103(a) based on the
combined teachings of Turner ‘858 and Richter.
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In view of the foregoing, the examiner's decision rejecting
claims 35 through 40, 42, 44 through 55, 57 and 59 through 72 of
the present patent application under 35 U.S.C. § 103(a) is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
CHARLES E. FRANKFORT )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/kis
Appeal No. 2002-1591
Application No.09/616,503
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ROBERT M. CHIAVIELLO, JR. ESQ.
BAKER & BOTTS, L.L.P.
2001 ROSS AVENUE
DALLAS, TX 75201-2980