Ex Parte DeSalleDownload PDFPatent Trial and Appeal BoardNov 29, 201713922476 (P.T.A.B. Nov. 29, 2017) 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. 13/922,476 06/20/2013 Robert Thomas DeSalle JR. TUP14488 1932 62439 7590 SINORICA, LLC 20251 Century Blvd. Suite 140 Germantown, MD 20874 EXAMINER TOPOLSKI, MAGDALENA ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): SINORICA@GMAIL.COM sinorica@outlook.com pair @ sinorica.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT THOMAS DESALLE JR. Appeal 2016-008087 Application 13/922,476 Technology Center 3600 Before BRETT C. MARTIN, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert Thomas DeSalle Jr. (“Appellant”) seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated October 23, 2015 (“Final Act.”), rejecting claims 1,3,4, 6, 7, and 9 under 35 U.S.C. § 103(a) as unpatentable over Edwards (US 984,363, issued Feb. 14, 1911), Bakowski (US 2007/0079548 Al, published Apr. 12, 2007), and Mills (US 8,745,920 Bl, issued June 10, 2014). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-008087 Application 13/922,476 BACKGROUND The disclosed subject matter “relates to an apparatus that provides shade and moisture entrapment over an area of outdoor vegetation in order to promote vegetation health.” Spec. 1,11. 12—13. Claim 1, the sole independent claim, is reproduced below, with bracketed letters added to identify each clause: 1. A collapsible shade for lawn cultivation comprises: [A] a mesh fabric sheet; [B] a perimeter frame sleeve; [C] a flexible frame; [D] a plurality of stake connection loops; [E] a plurality of stakes; [/*] a fabric side skirt; [G] each of the plurality of stakes comprises an upper extremity, a lower extremity, a middle portion, a first loop attachment location and a second loop attachment location; [H] the mesh fabric sheet being concentrically positioned with the perimeter frame sleeve and the flexible frame; [7] the perimeter frame sleeve being perimetrically attached around the mesh fabric sheet; [./] the flexible frame being positioned within the perimeter frame sleeve, wherein the flexible frame is a continuous flexible rod; [A] the upper extremity and the lower extremity being positioned opposite each other along the plurality of stakes; 2 Appeal 2016-008087 Application 13/922,476 [L] the middle portion being positioned between the upper extremity and the lower extremity; [M] the first loop attachment location being positioned adjacent to the upper extremity; [N] the second loop attachment location being positioned on the middle portion; and [O] the mesh fabric sheet is agricultural mesh. DISCUSSION Appellant argues the patentability of independent claim 1 and does not separately argue claims 3, 4, 6, 7, and 9, which depend from claim 1. Br. 3— 8. Thus, we address claim 1, with claims 3, 4, 6, 7, and 9 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). A. Clause A Claim 1 recites, among other limitations, “a mesh fabric sheet.” Br. 10 (Claims App.). In the Rejection, the Examiner identified element 1 in Edwards as a “fabric sheet.” Final Act. 2 (citing Edwards, Fig. 1). The Examiner stated that “Edwards is silent about mesh fabric material” but stated that it would have been obvious to one of ordinary skill in the art at the time of the invention “to make the shade from mesh fabric material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious choice.” Id. at 3. Appellant argues that, “in Edwards, the alleged element 1 has been disclosed as follows: This cover consists of a top 1 and hanging sides 2 whereby a hollow structure or housing opened at its bottom is formed to 3 Appeal 2016-008087 Application 13/922,476 completely envelop the plant.” Br. 5 (quoting, with emphasis added, Edwards 1,11. 48—51). According to Appellant, “[t]his is no[t] a[] teaching that the alleged top 1 is a fabric sheet.” Id. In addition, Appellant contends that “the limitation mesh has been ignored by the [Ejxaminer.” Id. at 8. According to Appellant, in Edwards, “the alleged element 1 has not been disclosed as a mesh type fabric sheet.” Id. Edwards describes top 1 as part of “canopy or cover B” and, as noted by the Examiner (Ans. 2), Edwards discloses that “canopy or cover B” is “made of muslin or any other suitable fabric.” Edwards 1,11. 45—47. Thus, we are not apprised of error in the Rejection by Appellant’s argument that Edwards does not disclose a “fabric sheet.” We turn now to the requirement that the “fabric sheet” be “mesh.” As an initial matter, we disagree with the argument that the Examiner ignored this requirement in the Final Office Action. See Final Act. 3 (first paragraph). Moreover, in the Answer, the Examiner states that “Mesh (as defined by google) is ‘material made of a network of wire or thread’” and states that “Muslin and other fabric are made from a network of thread and thus constitute a mesh.” Ans. 2. The definition relied on by the Examiner is consistent with the Specification. See, e.g., Spec. 3,11. 24—25, 3,1. 30 — 4, 1. 2 (providing that “[t]he mesh fabric sheet 1 is preferably a woven material that reduces penetration of sunlight and moisture” or “is any other material or fabric that similarly accomplishes the goal of providing a shaded, moist environment to a portion of grass or other vegetation by reducing penetration of sunlight and moisture” (emphasis added)); see also In re Smith Int’l, Inc., 871 F.3d 1375, 1382—83 (Fed. Cir. 2017) (stating that the “broadest reasonable interpretation in light of the specification ... is an interpretation 4 Appeal 2016-008087 Application 13/922,476 that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification’” (quoting In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997)). Although Appellant is correct that Edwards does not explicitly describe “canopy or cover B” as made of “mesh type” fabric (Br. 8), we are not apprised of error in the Examiner’s position that the “muslin or any other suitable fabric” disclosed in Edwards would fall within the scope of the broadest reasonable interpretation of the term “mesh” in clause A. B. Clause B Claim 1 recites, among other limitations, “a perimeter frame sleeve.” Br. 10 (Claims App.). In the Rejection, the Examiner identified element 10 in Edwards regarding this limitation. Final Act. 2 (citing Edwards, Fig. 1). Appellant argues that “element 10 in Edwards ... is different from the claimed perimeter frame sleeve.” Br. 6. In support, Appellant quotes page 1, lines 74 through 81 of Edwards, with emphasis on the language “stitching 10 at a point where the sides join the top.” Id. Appellant states that the Merriam-Webster Dictionary defines “stitching” as “a single loop of thread or yam that is wrapped around an object.” Id. Appellant contends that “[a] thread or yard does not read on a sleeve” and that, “[a]s a result, the element 10 ... in Edwards does not recite the perimeter frame sleeve claimed.” Id. at 7. The Examiner responds that page 1, lines 75 through 80 of Edwards provides: “The cover is fastened to the frame by a row of stitching 10 at a point where the sides join the top, thus forming hems through which the side bars 3 of the frame extend.” Ans. 3. The Examiner states that “[a] sleeve (as defined [b]y Merriam-Webster) is an open-ended flat or tubular 5 Appeal 2016-008087 Application 13/922,476 packaging or cover” and also states that “[t]he hem formed by the stitching 10 of Edwards is a tubular packaging into which the side bars 3 extend, thus constituting a sleeve around the side bars 3.” Id. Appellant’s argument does not address the rejection as articulated. To address the limitation at issue, the Examiner does not rely on stitching 10 itself (as argued by Appellant); rather, the Examiner relies on the structural feature created by stitching 10. See Ans. 3. Here, Appellant’s argument has not demonstrated error in the Examiner’s finding that (for the reasons stated by the Examiner as set forth above) the identified structural feature in Edwards satisfies the limitation at issue. Ans. 3; see also Spec. 4,11. 29-31 (describing a “perimeter frame sleeve” as “a loop or tube of fabric that is perimetrically attached around the mesh fabric sheet 1, creating a roughly circular or teardrop shaped track or tunnel”). C. Clause G Claim 1 recites, among other limitations, that “each of the plurality of stakes comprises ... a first loop attachment location and a second loop attachment location.’ '’ Br. 10 (Claims App.) (emphasis added). In the Rejection, the Examiner found that Bakowski teaches “a plurality of stakes (48); each of the plurality of stakes comprises ... a first loop attachment location (location where top horizontally protruding edge of 48 meets the loop) and a second loop attachment location (location where vertical side of 48 meets the loop).” Final Act. 3; see also Bakowski, Fig. 3 (showing element 48). First, Appellant argues that “the claimed loop attachment location is a specific structure that is able to attach to a specific loop” and argues that 6 Appeal 2016-008087 Application 13/922,476 Bakowski “lacks such specific structure, please see the drawings below.”1 Br. 7 (providing an annotated version of Figure 4 of the Specification). The Examiner responds that the phrase ‘“loop attachment location’ does not recite any specific structure” and that “a loop attachment location is any location where a loop could possibly be attached.” Ans. 3. We are not apprised of error by Appellant’s first argument. Although the Specification describes embodiments in which the “first loop attachment location” and the “second loop attachment location” are structures specifically provided on the “stakes” for attachment to the recited “stake connection loops”: (1) “an aperture traversing through each of the plurality of stakes 5” (Spec. 6,11. 11—13) and (2) “a notch, protrusion or clip, or other appropriate means to properly interface with the perimeter frame sleeve 2 in order to hold the mesh fabric sheet 1 elevated above the ground” {id., 11. 13- lb), when construing a claim term, one should not import narrower definitions for terms based on specific embodiments disclosed in the specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Similarly, as to Appellant’s reliance on Figure 4 of the Specification (Br. 7), “the mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.” Anchor Wall Sys., Inc. v. RockwoodRetaining Walls, Inc., 340 F.3d 1298, 1306-07 (Fed. Cir. 2003). We determine that the phrase “loop attachment location” would include structures specifically provided on the “stakes” for attachment to the “stake connection loops” (in clause D) (see, e.g., Spec., Fig. 4 (elements 54, 55)), but would also include, as noted by the Examiner, 1 Appellant does not provide any figure from Bakowski in the Appeal Brief. 7 Appeal 2016-008087 Application 13/922,476 “any location [along a stake] where a loop could possibly be attached.” Ans. 3. As such, we are not apprised of error in the finding that the identified “stakes”—element 48 in Bakowski—“ha[ve] many locations where loops could possibly be attached.” Id.2 Second, Appellant argues that “the stakes claimed in the present application and the stakes disclosed in Bakowski’s prior art reference are for different functions” because, “[i]n Bakowski, the stakes are . . . flush to the ground and thus holding the product to the ground” whereas “in the present invention, the stakes, through [their] specific structural design as clearly shown in Figure 4, allow the product to hover above the ground.” Br. 7. We decline to import the functions identified by Appellant into clause G, which recites only structural elements. See Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2001) (“An invention claimed in purely structural terms generally resists functional limitation.”) (citing Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (“Where the function is not recited in the claim itself by the patentee, we do not import such a limitation.”) (citations omitted)). Further, to the extent Appellant contends that these functions are implied by the requirements in clauses M and N (relating to the positioning of the “loop attachment locations” within each “stake”), as noted in the Answer, the Examiner relies on Mills (not Bakowski) regarding those limitations. See Ans. 4; Final Act. 4. In addition, for the same reasons discussed above, claim 1 is not 2 Based on the statement of the Rejection regarding clause G (Final Act. 3 (second and third full paragraphs)), we understand the Examiner to have intended to refer to Bakowski rather than Edwards. See Ans. 3 “Edwards has many locations where loops could possibly be attached.” (emphasis added). 8 Appeal 2016-008087 Application 13/922,476 necessarily limited to the embodiment shown in Figure 4 of the Specification, including functions that may be performed by that embodiment. See Anchor Wall, 340 F.3d at 1306-07. For these reasons, we sustain the rejection of independent claim 1. Claims 3, 4, 6, 7, and 9 fall with claim 1. DECISION We affirm the decision to reject claims 1, 3, 4, 6, 7, and 9 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation