Ex Parte Fullick

Patent Trial and Appeal Board

Mar 21, 2013

10637359 (P.T.A.B. Mar. 21, 2013)

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.
10/637,359 08/07/2003 INV001Ken Fullick HILP0030 3497
7590 03/22/2013
Lawrence J. Chapa
1220 St. William Drive
Libertyville, IL 60048
EXAMINER
REDMAN, JERRY E
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
03/22/2013 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 KEN FULLICK
____________________

Appeal 2011-007292
Application 10/637,359
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEVEN D.A. MCCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Ken Fullick (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-4, 6-16, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter.1
1. A latch mechanism adapted for being coupled to a window
sash, which travels within a window frame, said latch
mechanism comprising:
a main housing adapted for being coupled above a top
surface of a top rail of the window sash, the main housing
having a sidewall including one or more sidewall sections
which extends around at least a portion of the main housing and
defines an interior space, the interior space being adapted to
reside substantially above the top surface of the top rail at a
point having a height consistent with a portion of the top
surface of the top rail corresponding to a top edge of one of a
front facing and a back facing of the top rail, the interior space
includes an opening in said sidewall at one end of said housing,
said sidewall forming a channel within the interior space having
an end that coincides with said opening, wherein at least a
portion of at least one of the sidewall sections which is
substantially parallel to the direction of travel of the bolt
extends down from a top surface of the main housing of the
latch mechanism and is adapted to extend below the top surface
of the top rail of the window sash along at least a portion of an
external surface of the corresponding one of the front facing
and the back facing of the top rail associated with the top edge

1 Claim 19, which is the only other independent claim, is directed to a
window assembly comprising at least a top and bottom sash and one or more
latch mechanisms as claimed in claim 1 coupled to the top rail of at least one
of the top sash and the bottom sash.
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Application 10/637,359

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substantially above which the interior space of the main
housing is adapted to reside;
a bolt substantially located within said housing and
traveling along said channel, said bolt having a first end which
is adapted for extending through the opening of said housing
and extending into a side jamb of the window frame; and
a tension device coupled to the bolt and the main housing
for biasing the bolt toward a position where the bolt extends at
least partially through the opening.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Schultz
Dallaire
US 5,139,291
US 5,274,955
Aug. 18, 1992
Jan. 4, 1994
Rejections
Appellant requests our review of the following rejections by the
Examiner:
I. claims 1, 4, 6-16, 19 and 20 under 35 U.S.C. § 102(b) as
anticipated by Dallaire; and
II. claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Dallaire and Schultz.
OPINION
As pointed out by Appellant (App. Br. 6), claims 1 and 19 define a
height reference, namely the “height consistent with a portion of the top
surface of the top rail corresponding to a top edge of one of a front facing
and a back facing of the top rail” substantially above which the interior
space defined by one or more sidewall sections of the main housing of the
latch mechanism resides (claim 19), or is adapted to reside (claim 1).
Dallaire’s meeting rail 42 is provided with downwardly extending
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projections (locking tabs 42A, 42B) which extend the full length of the
meeting rail and engage longitudinal slots 43 in the window sash profile 31.
Figs. 2A, 10A; col. 6, ll. 57-59. Thus, any interior space defined by any
sidewalls of Dallaire’s meeting rail 42 resides entirely below the height of
the top surface of the top rail of the sash corresponding to a top edge of both
the front facing and the back facing.
Consequently, Dallaire’s window assembly does not satisfy the
requirement in claim 19 that the interior space reside “substantially above
the top surface of the top rail at a point having a height consistent with a
portion of the top surface of the top rail corresponding to a top edge of one
of a front facing and a back facing of the top rail.”2 We therefore do not
sustain the Examiner’s rejection of claim 19 and its dependent claim 20.
The Examiner correctly appreciates that claim 1 is directed to the
latch mechanism only, and not to a window assembly comprising a latch
mechanism coupled to a window sash.3 However, as highlighted on pages 5
and 6 of the Examiner’s Answer, the Examiner simply ignores the phrases
beginning with “adapted” in reading claim 1 on Dallaire’s latch mechanism.
See Reply Br. 1-3. This is improper. All words in a claim must be
considered in judging the patentability of that claim against the prior art. In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
As discussed supra in addressing the rejection of claim 19, Dallaire’s
meeting rail 42 is coupled to a window sash by engagement of locking tabs
42A, 42B in longitudinal slots 43 in the window sash profile 31. Thus, any
interior space defined by any sidewalls of Dallaire’s meeting rail 42 resides

2 The Examiner does not make any findings directed to this limitation.
3 Compare claim 1 with claim 19.
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entirely below the height of the top surface of the top rail corresponding to a
top edge of both the front facing and the back facing. Stated differently, any
interior space defined by any sidewalls of Dallaire’s meeting rail 42 is not
adapted to reside substantially above the height of the top surface of the top
rail corresponding to a top edge of one of the front facing and the back
facing of Dallaire’s sash profile 31. Dallaire therefore does not evidence
that Dallaire’s meeting rail has sidewalls that define an interior space
adapted to reside substantially above the height of a top surface of a top rail
corresponding to a top edge of one of a front facing and a back facing of the
top rail of a window sash to which the meeting rail is adapted to be coupled,
as called for in claim 1.
The Examiner does not articulate any findings or technical reasoning
to explain how Dallaire’s meeting rail 42 is adapted for coupling to a
window sash in such a manner that an interior space defined by any
sidewalls of the meeting rail is adapted to reside substantially above the
height of the top surface of the top rail corresponding to a top edge of one of
the front facing and the back facing of the top rail of the window sash.
Consequently, the Examiner fails to establish a prima facie case of
anticipation of the subject matter of claim 1.4
We therefore do not sustain the rejection of claim 1 and its
dependent claims 4 and 6-16.

4 See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (shifting the
burden to the applicant to show that the prior art is not capable of
performing the claimed function only after the examiner establishes a
reasonable basis that the prior art has such capability).
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We also do not sustain the rejection of dependent claims 2 and 3 as
unpatentable over Dallaire and Schultz, which suffers the same deficiency as
the rejection of claim 1.
DECISION
The Examiner’s decision rejecting claims 1-4, 6-16, 19, and 20 is
reversed.
REVERSED

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