Kenneth Fullick

Patent Trials and Appeals Board

Feb 18, 2021

2020004044 (P.T.A.B. Feb. 18, 2021)

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.
15/147,675 05/05/2016 Kenneth Fullick HILP0060 (HIL-151610) 3179
162815 7590 02/18/2021
Loppnow & Chapa
P.O. Box 7588
Libertyville, IL 60048
EXAMINER
HIJAZ, OMAR F
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
02/18/2021 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):
docketing@loppchap.com
lchapa@loppchap.com
mloppnow@loppchap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH FULLICK
Appeal 2020-004044
Application 15/147,675
Technology Center 3600
Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s Final Action rejecting claims 1–8, and 10. See Final Act. 1.
Claims 9 and 11–16 have been canceled, and claims 17–26 have been
withdrawn from consideration. Appeal Br., Claims App. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as the inventor, Ken Fullick.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a muntin clip for coupling a muntin bar to a
window sash.2 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A muntin clip adapted for coupling a muntin bar to a window
sash, the muntin bar being a tubular member with one or more
open ends and a sidewall extending around the open end, the
sidewall of the tubular member having a front and a back and
two oppositely facing and spaced apart sides coupled between
the front and the back, the muntin clip comprising:
a base adapted for attaching to the window sash;
a body, which extends from the base, and is adapted in a
direction of insertion to extend into one of the open ends of the
tubular member of the muntin bar for coupling thereto; and
one or more protruding elements, where each of the one or
more protruding elements are coupled to the body at a
respective point of coupling, the one or more protruding
elements each extend from the respective point of coupling in a
direction of extension that includes a component that is
perpendicular to the direction of insertion of the body into the
tubular member, and each of the one or more protruding
elements being adapted for separately flexing, so as to
alternatively extend from the respective point of coupling in at
least opposite directions; and
wherein when the muntin clip moves in a direction relative
to the tubular member, including the muntin clip alternatively
being inserted and extracted relative to the tubular member, the
one or more protruding elements of the muntin clip engage the
sidewall of the tubular member and have an amount of
flexibility where each of the one or more protruding elements is
caused to flex, so that the direction of extension further includes
an additional component that extends in a direction that is
substantially opposite the direction of the movement of the

2 A “muntin,” in the context of the claims at issue, is a bar that may be
sandwiched between two panes of glass to give the appearance of dividing
the glass into smaller panes. Spec. 1:9–20.
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muntin clip relative to the tubular member including changing
the direction of extension of the protruding elements from the
respective points of coupling as part of a change of the direction
of movement between the direction of insertion and a direction
of extraction of the muntin clip relative to the tubular member,
while the muntin clip is at least partially inserted within the
tubular member and the one or more protruding elements
engage the sidewall of the tubular member.

REFERENCES
Name Reference Date
Scharff US 2005/0102957 A1 May 19, 2005
Simko US 2007/0193148 A1 Aug. 23, 2007
REJECTIONS3
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–8, 10 112(b) Indefiniteness
1–6, 10 102(a)(1) Scharff
7, 8 103 Scharff, Simko
OPINION
Claims 1–8 and 10: Rejected as Indefinite
We have reviewed the Examiner’s reasons for rejecting claims 1–8
and 10 as indefinite, and determine that they are not persuasive. The
Examiner asserts, for example, that it is unclear what the term
“alternatively” in sole independent claim 1 is referring to. Final Act. 3. The
Examiner also asserts that it is unclear how protruding elements can extend
in “opposite directions” when the claims encompass muntin clips with only
one protruding element. Id. at 3–4. Appellant responds that these terms are

3 The Examiner withdrew a rejection of claims 1–8 and 10 under 35 U.S.C.
§ 112(a). Ans. 3.
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reasonably clear when read in “the entirety of the context in which the
phrase is being used” —i.e., the remainder of the claim and the
Specification. Appeal Br. 3–4.
We agree with Appellant. Claim 1 recites that the one or more
protruding elements “alternatively extend . . . in at least opposite directions.”
Appeal Br., Claims App., first page.4 Because, as the Examiner finds,
claim 1 encompasses a muntin clip having only one protruding element, this
term does not require extension in opposite directions at the same time, but
rather under different circumstances. The claim further recites that the
protruding elements extend in a direction opposite of the direction that the
muntin clip moves with respect to the muntin. Id. Thus, “alternatively”
refers to the direction of extension of the one or more protruding elements
when the muntin clip is moving toward the muntin as opposed to the
“alternative” situation when the muntin clip is moving away from the
muntin.
The Examiner next asserts that “‘the direction of the movement of the
muntin clip’ lacks antecedent basis.” Final Act. 4. Appellant correctly
responds that the antecedent basis for this term is “when the muntin clip
moves in a direction relative to the tubular member.” In the Answer the
Examiner asserts that “it remains unclear as to how a direction of movement
is the same as a direction of extension” (Ans. 3), but this response does not
address the actual claim language that the Examiner had found lacked an
antecedent basis: “the direction of the movement [not extension] of the
muntin clip.” Claims App., first page.

4 The pages of the Claims Appendix are not numbered.
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The Examiner also determines that “the recitation ‘a component’ [in
claims 3 and 4] renders the claim[s] indefinite because it is unclear if this is
referring to the same previously recited ‘component’ from claim 1.” Final
Act. 4. Appellant responds that when “a component” is read in the context
of the claim 3 (and by dependency, claim 4) limitation in which it is used, it
is clear that it is not the same as the “component” of claim 1. Again, we
agree. The term “component” does not appear in isolation in the claims.
Claim 1 recites “a component” that is part of the direction of extension of
the one or more protruding elements, whereas “a component” in claim 3 is
part of the direction of extension of a “branch.” Claims App., first and
second pages.
Because we are not persuaded that claims 1–8 and 10 are indefinite,
we decline to sustain this rejection.
Claims 1–6 and 10: Rejected as Anticipated by Scharff
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 7–9. We select claim 1 as representative of the group, and
decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv). In finding that Scharff anticipates claim 1, the Examiner
finds that connector 10 depicted in Scharff Figure 1 corresponds to the
claimed muntin clip adapted for coupling a muntin bar/tubular member to a
window sash, baseplate 12 corresponds to the claimed base, muntin bar tab
15 corresponds to the claimed body that extends from the base, and resilient
fingers 16 correspond to the claimed one or more protruding elements
coupled to the body and extending from the point of coupling in a direction
that includes a component that is perpendicular to the direction of insertion
of the body into the tubular member. Final Act. 6 (citing Scharff, Fig. 1).
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The Examiner further finds that “the protruding elements are capable of
flexing in opposite directions” and “since the protruding elements 16 are
resiliently based [sic, biased] [paragraph 6] they are capable of engaging the
sidewall of a tubular member and flexing in a direction opposite a direction
of movement, when moved or inserted/extracted from a tubular member.”
Id. at 6–7 (citing Scharff ¶¶ 6, 31).
Appellant responds that Scharff teaches “only a general assertion of
elasticity,” which is insufficient to teach the ability to “transition between
different opposite directions of extension relative to the point of coupling,
dependent upon the relative movement of the muntin clip to the muntin bar.”
Appeal Br. 7. According to Appellant, a “general concept of elasticity can
exist without supporting such a feature.” Id. In the Answer, the Examiner
contends that “protruding elements 16 of the muntin clip of Scharff et al.
meet the claim limitation since they are described as being: resilient fingers
to ensure proper placement of the tab within the [tubular] muntin bar,
wherein the tips of the resilient finger engage with the internal surface to
provide a holding force to keep the connector in place within the muntin
bar.” Ans. 4–5 (citing Scharff ¶ 25) (emphasis added). The Examiner
further notes that Scharff discloses that the connector has a “good spring
rate.” Id. at 5 (citing Scharff ¶ 31). Thus, according to the Examiner,
Scharff’s muntin clip “is inherently capable of functioning as claimed, when
inserted within a tubular member.” Id.
We are not persuaded that the Examiner erred in rejecting claim 1 as
anticipated by Scharff. Appellant does not dispute that Scharff discloses all
of the structural limitations of claim 1, but instead contends that Scharff’s
“general assertion of elasticity” is insufficient to disclose the capability of
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the protruding members to extend in a direction opposite to the movement of
the muntin clip relative to the muntin. We disagree. This limitation is a
functional limitation, because it recites how the muntin behaves under
certain circumstances, i.e., flexing to extend in a direction opposite that of
the movement of the muntin clip with respect to the muntin. A patent
applicant is free to recite features of an apparatus either structurally or
functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“[T]here is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). But choosing to
define an element functionally, i.e., by what it does, carries with it a risk. As
our reviewing court has stated:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the [Appellant] to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting Swinehart,
439 F.2d at 213). In Schreiber, the examiner had reason to believe that a
functional limitation was an inherent characteristic of a prior-art structure
because the prior art structure, e.g., had “the same general shape” as the
claimed structure. Id. Here, the Examiner also has a reason to believe that
the functional limitation in question is an inherent characteristic of Scharff’s
muntin clip because it has the same structural elements as the claimed
muntin clip, and its resilient fingers are flexible and “resilient” such that they
can bend when they contact the inside walls of the muntin in which they are
inserted or withdrawn. Scharff ¶¶ 6, 25, 31.
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Because the Examiner has articulated a reason to believe that the
claimed extension of the protruding elements is an inherent feature of
Scharff’s muntin clip, the burden shifts to Appellant to show that Scharff’s
muntin clip does not inherently possess this functionality. Schreiber, 128
F.3d at 1478. Appellant’s assertion that “the general concept of elasticity
can exist without supporting such a feature” (Appeal Br. 7) is insufficient to
make this showing. Appellant does not, for example, provide evidence that
the claim requires a certain degree of flexibility or resilience that Scharff’s
resilient fingers are incapable of providing. We note that claim 1 is broad
and is not limited, for example, to a minimum amount of extension needed
to satisfy the claim limitation.
Because the Examiner has provided a sufficient reason to believe that
the functional limitation deemed missing from Scharff is an inherent feature
of Scharff’s muntin clip, and Appellant has not shown otherwise, we sustain
the Examiner’s rejection of claim 1, as well as claims 2–8 and 10, as
anticipated by Scharff.5
Claims 7 and 8: Rejected as Unpatentable over Scharff and Simko
The Examiner determines that claims 7 and 8, which depend from
claim 1, would have been obvious over Scharff and Simko. Final Act. 10–
11. Appellant does not respond to the substance of this rejection, but rather
argues that it is inconsistent for the Examiner to argue that one of ordinary
skill in the art would have been motivated to combine Scharff and Simko

5 Appellant appears to argue in the Reply Brief that Scharff’s resilient
fingers do not correspond to the claimed protruding members. Reply Br. 4.
This argument had not first been raised in the Appeal Brief, and Appellant
has not shown good cause for the delay. Therefore, we will not consider it.
See 37 C.F.R. § 41.41(b)(2).
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“after the Examiner has required restriction of the claims on the basis that
the connector arts are so different that the claims directed thereto could not
coexist in an application that was directed to muntin bar connectors.”
Appeal Br. 9. Appellant does not, however, provide support for the notion
that the standard by which a restriction is initiated is relevant to whether one
of ordinary skill in the art would have combined references. To the extent
that Appellant contends that the restriction requirement is inappropriate, the
Examiner correctly notes (Ans. 5) that challenges to restrictions are made by
petition rather than appeal to the Board. See MPEP § 1002.02(c) (Item 2,
petitions from a final decision of examiner requiring restriction in patent
applications under 37 C.F.R. § 1.144 and MPEP § 818.01(c)). Accordingly,
that issue is not addressed here.
CONCLUSION
The Examiner’s rejections are decided as follows:
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 10 112, second
paragraph
Indefiniteness 1–8, 10
1–6, 10 102 Scharff 1–6, 10
7, 8 103 Scharff, Simko 7, 8
Overall
Outcome
1–8, 10

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TIME PERIOD FOR RESPONSE
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).

AFFIRMED