Thomas Callahan et al.

Patent Trials and Appeals Board

Apr 26, 2021

2020006060 (P.T.A.B. Apr. 26, 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.
14/978,777 12/22/2015 Thomas Callahan CAO0001.US 7481
41863 7590 04/26/2021
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
04/26/2021 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):
mbrady@taylorip.com
patent@taylorip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS CALLAHAN and PATRICK CALLAHAN
____________

Appeal 2020-006060
Application 14/978,7771
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–5, 8–12, and 21–27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cover
Care, LLC. (Appeal Br. 3.)
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Application 14/978,777

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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to fence materials, and, more
particularly, to mesh fence materials.” (Spec. ¶ 2.) Appellant’s “invention
provides a fencing material with a border material that is bonded to a mesh
material.” (Id. ¶ 7.)
Claims 1 and 8 are the sole independent claims on appeal. Claim 1 is
illustrative. It recites (some paragraphing added):
1. A fencing material, comprising:
a border material comprising a first polymer and having
an interior surface, and said border material is a uniform, folded
border material; and
a mesh material
having a front and a back,
a portion of at least one of said front and said back
being bonded to said interior surface of said border
material such that said interior surface of said border
material is thermally bonded and pressed into said mesh
material,
wherein said mesh material is sandwiched in said
folded border material, and said folded border material is
folded in half,
one half of said folded border material being bonded
to said front of said mesh material and the other half of
said folded border material being bonded to said back of
said mesh material.

REJECTIONS
Claims 1, 3, 4, 8, 10, 11, 23, 24, and 27 are rejected under 35 U.S.C.
§ 103 as unpatentable in view of Andrews (US 3,347,527, iss.
Oct. 17, 1967), Johnson (US 2,659,958, iss. Nov. 24, 1953), and Brigham
(US 265,302, iss. Oct. 3, 1882).
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Claims 2, 5, 9, 12, 21, 22, 25, and 26 are rejected under 35 U.S.C.
§ 103 as unpatentable in view of Andrews, Johnson, Brigham, and Seas
(US 2006/0060831 A1, pub. Mar. 23, 2006).

ANALYSIS
Claims 1, 3, 4, 8, 10, 11, 23, and 27
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that “Andrews disclose[s] a fencing material wherein portions of said
front and said back of said mesh material are bonded to said interior surface
of said border material by a separate binder or adhesive disposed
therebetween; instead of being directly thermally bonded to said interior
surface of said border material.” (Final Action 2–3.) The Examiner also
finds that “Johnson teaches a mesh material 5 wherein portions of a front
and a back of said mesh material are directly thermally bonded to an interior
surface of a border material 6 such that said interior surface of said border
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material is thermally bonded and pressed into said mesh material.” (Id. at 3;
see also Johnson, col. 1, l. 35–col. 2, l. 8.)
The Examiner also finds that even if
Johnson fails to explicitly disclose that the single strip is folded
around the edge of the mesh material to cover the front and back
of the material, Brigham teaches a mesh material A wherein
portions of a front and a back of said mesh material are directly
thermally bonded to an interior surface of a border material B
such that said interior surface of said border material is thermally
bonded and pressed into said mesh material.

(Id. at 4; see also id. at 5, Brigham, ll. 27–62.)
Appellant argues that Johnson and Brigham are not analogous art.
Specifically, Appellant argues that Andrews “is directed towards snow
fences. Johnson and Brigham, on the other hand, are directed to
significantly different fields of endeavor that are unrelated to fences.”
(Appeal Br. 12.) Appellant also argues that
the Office has not established that either Johnson or Brigham is
reasonably pertinent to the problem faced by the inventor. . . .
[T]he problem faced by the inventor of the present application
was to provide a fencing material that was less prone to coming
apart under the conditions encountered by fencing material
formed using stitches, e.g., sun weathering.

(Id. at 13.)
“The pertinence of the reference as a source of solution to the
inventor’s problem must be recognizable with the foresight of a person of
ordinary skill, not with the hindsight of the inventor’s successful
achievement.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355,
1359 (Fed. Cir. 2014). In making a finding regarding whether a reference is
analogous art, we look to the analogous-art test.
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The analogous-art test requires that the Board show that a
reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.Cir.1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill
in the art. Id. (“[I]t is necessary to consider ‘the reality of the
circumstances,’—in other words, common sense—in deciding in
which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.
1979))).

In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). “Whether a prior art
reference is ‘analogous’ is a question of fact.” Innovention Toys, LLC v.
MGS Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
With regard to the field of endeavor, the Examiner agrees that
Johnson and Brigham are “within different fields of endeavor than fencing.”
(Answer 9.) However, with regard to the problem with which the inventors
were concerned, the Examiner finds that Johnson and Brigham “pertain to
mesh material-border material connections in general and implicitly disclose
the advantageousness and applicability of such connections within other
fields of art having structurally and/or functionally similar mesh material-
border material connections.” (Id.)
Although deterioration of the stitching attaching border material to
mesh fencing material may have provided the impetus for the invention
recited in claim 1 (see Spec. ¶ 5), the problem with which the inventors were
concerned was attaching a border material to a mesh material. This is
reflected in the claim language. Claim 1 only refers to “fencing material” in
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the preamble. The limitations in the body of claim 1 refer to “a border
material” and “a mesh material” rather than a fence or fencing material.
This is reflective of the problem with which the inventors were concerned
and what the inventors actually invented, i.e., although the intended use of
the mesh material was as fencing, the problem being addressed was
attaching a border material to a mesh material.
Even if we agreed with Appellant that the problem with which the
inventors were concerned was attaching border material to mesh fencing
material, Appellant does not persuasively argue why one seeking to solve
the problem of attaching border material to mesh fencing material would not
consider references relating to attaching border material to mesh material
reasonably pertinent to the problem. Nor does Appellant persuasively argue
that the Examiner erred in finding that Johnson and Brigham are related to
attaching border material to mesh material. (See Final Action 3–5.)
We are not persuaded that the Examiner erred in finding Johnson and
Brigham to be analogous art or that the Examiner erred in rejecting claim 1.
Claims 3, 4, 8, 10, 11, 23, and 27 are not separately argued and fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Claim 24
Claim 24 recites: “The fence according to claim 8, wherein said
fencing material is connected to at least one of said fencing poles by a
joining plate.”
Appellant argues that “the combined art of the references fail[s] to
disclose or teach a joining plate that fastens the fencing material to the
facing pole, as recited in claim 24.” (Appeal Br. 15.)
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Andrews discloses “[a] snow fence member formed of wire mesh
laminated between strips of material with vertical end clamps grasping the
fence member for attachment to supporting posts.” (Andrews, col. 1, ll. 10–
12.) The Examiner finds that “Andrews discloses a fence wherein said
fencing material 13 is connected to at least one of said fencing poles 11 by a
joining plate 15 (Figure 1).” (Final Action 5; see also Andrews col. 3,
ll. 16–22.) Appellant does not persuasively argue why the Examiner’s
finding is in error.

Claims 2, 9, 21, 22, 25, and 26
Appellant argues that the rejection of dependent claims 2, 9, 21, 22,
25, and 26 was improper for the same reasons that the rejection of
independent claims 1 and 8 was improper. (Appeal Br. 14.) As discussed
above, we are not persuaded that claims 1 and 8 were improperly rejected.
Therefore, we are also not persuaded that claims 2, 9, 21, 22, 25, and 26
were improperly rejected.

Claims 5 and 12
Claim 5 recites: “the fencing material according to claim 4, wherein
said mesh material is one of a polyvinyl chloride material and a vinyl coated
material.” Claim 12 depends indirectly from claim 8 and contains similar
language.
The Examiner finds:
Seas teaches a fencing material wherein a mesh
material 130 is made of a polyvinyl chloride or vinyl-coated
cloth material; the polyvinyl chloride or vinyl-coated cloth
material providing for a water-proof and weather-resistant
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fencing material (paragraph [0012]). Accordingly, it would have
been obvious to one having ordinary skill in the art at the time
the invention was made to modify the fencing material disclosed
by Andrews wherein the mesh material is made of a polyvinyl
chloride or vinyl-coated cloth material, as taught by Seas, in
order to provide for a water-proof and weather-resistant fencing
material.

(Final Action 6.)
Appellant argues “that one skilled in the art would not reasonably
believe that the polyvinyl chloride (PVC) material taught by Seas is suitable
for use as the mesh material of Andrews.” (Appeal Br. 15.) Specifically,
Appellant argues that
Andrews states, “[t]he wire mesh 13 also prevents undue wear
and tear of the flexible strips [14] since they are not permitted to
flutter in the wind.” (Emphasis added). In this sense, forming
the fence of Andrews from metal wire, such as chicken wire,
makes sense because metal chicken wire is flexible enough to
fold but rigid enough to resist fluttering in wind. The Office has
not provided any evidence that the PVC polymer of Seas is
sufficiently rigid to resist fluttering due to wind; rather, Andrews
appears to teach that this is not the case because the wire mesh 13
is credited with preventing the polymer strips 14 from fluttering
in the wind.

(Id.)
Andrews discloses a fence
generally compris[ing] an easily erectable structure having at
least a pair of spaced ground engaging fence posts 11 between
which is interconnected the novel fence section 12 which
partially comprises a base portion of wire mesh fencing 13 of the
type which is generally known as “chicken wire.” This type of
mesh fencing is normally formed from a plurality of interwoven
metallic wires so formed that the resulting structure comprises a
plurality of interconnected hexagonal figures. While the present
embodiment is described as a particular type of wire mesh
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fencing 13, it should be noted that any suitable flexible fencing
may be utilized.

(Andrews, col. 2, ll. 12–24 (italicized emphasis added).) Andrews also
discloses flexible strips
of such material as polyvinyl-chloride plastic, paper or cloth
laminated to the wire mesh 13 by suitable binders to serve the
multiple purpose of stiffening the flexible strips 14 and stiffening
the wire mesh 13. . . . The wire mesh 13 also prevents undue
wear and tear of the flexible strips 13 [sic, 14] since they are not
permitted to flutter in the wind as is common to fencing which
utilizes a construction without the reenforcing qualities of the
present invention.

(Id. at col. 2, ll. 45–57.)
Seas discloses “privacy panels that may be used individually or in
combinations to establish privacy for a portion of an open enclosure.” (Seas
¶ 1.) Seas discloses mounting the privacy panels on a portion of a safety
fence exposed to view. (Id. ¶ 11.) In particular, Seas discloses that “[t]he
panel is attached to the safety fence with a length of rope, bungee cords,
shower hooks or the like through eyelets” in the panel. (Id. ¶ 12.) Seas
discloses that the privacy panels may be made of “poly-vinyl chloride
(PVC).” (Id.)
We agree with the Examiner that Andrews discloses that “any suitable
flexible fencing may be utilized.” (Andrews, col. 2, ll. 23–24.) In other
words, we agree that Andrews discloses that the fencing is not limited to
chicken wire-type mesh fencing. However, the portion of Seas relied on by
the Examiner relates to privacy panels mounted to a safety fence, i.e., the
disclosed fencing is the safety fence, not the privacy panels. The portion of
Seas relied on does not disclose that the privacy panels are, of themselves,
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flexible fencing, rather than merely panels that can be attached to fencing.
Therefore, we agree that the Examiner erred in rejecting claims 5 and 12.

CONCLUSION
The Examiner’s rejections of claims 1–4, 8–11, and 21–27 under
35 U.S.C. § 103 are affirmed.
The Examiner’s rejection of claims 5 and 12 under 35 U.S.C. § 103 is
reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 8,
10, 11, 23,
24, 27
103 Andrews, Johnson,
Brigham
1, 3, 4, 8, 10,
11, 23, 24,
27

2, 5, 9, 12,
21, 22, 25,
26
103 Andrews, Johnson,
Brigham, Seas
2, 9, 21, 22,
25, 26
5, 12
Overall
Outcome
1–4, 8–11,
21–27
5, 12
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-IN-PART