11132239 (B.P.A.I. Jun. 11, 2012)

Ex Parte Pickett

Board of Patent Appeals and InterferencesJun 11, 2012

11132239 (B.P.A.I. Jun. 11, 2012)

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. 11/132,239 05/19/2005 Thomas C. Pickett 6265 5880 6858 7590 06/12/2012 BREINER & BREINER, L.L.C. 115 NORTH HENRY STREET ALEXANDRIA, VA 22314 EXAMINER SKURDAL, COREY NELSON ART UNIT PAPER NUMBER 3782 MAIL DATE DELIVERY MODE 06/12/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte THOMAS C. PICKETT ____________________ Appeal 2010-003301 Application 11/132,239 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is a response to a Request for Rehearing. Requests for Rehearing are limited to matters overlooked or misapprehended by the Panel in rendering the original decision. See 37 C.F.R. § 41.52. Appeal 2010-003301 Application 11/132,239 2 OPINION Appellant contends, in affirming the Examiner’s rejection of claims 1- 6 and 9-16, we have misconstrued certain claim limitations. [I]n claims 1 and 15, applicant claims that the “holding member is constructed and arranged to hold and carry a sports or activity equipment in a plane substantially different than said adapter.” The language “constructed and arranged” is structural language as it requires that the holding member have a certain structure .... Similarly, claims 10 and 11 require that the “carrying apparatus is adapted to affix to a bicycle” in a certain configuration. The language “adapted to affix” is structural language and is not merely functional language or an intended use. Request at 3. To begin, we disagree with Appellant’s characterization of the reference. According to Appellant, Perry’s carrier-shelf is incapable of carrying “any item” when in the closed, non-use position. Request at 5-6. However, Perry’s disclosure that the carrier shelf may be folded up in an out of use position (col. 1, ll. 31-34) refers to use of the carrier shelf as a luggage carrier. The fact that the shelf is incapable of holding and carrying luggage in such position does not demonstrate that it is incapable of holding and carrying a sports or activity equipment. Nor do we agree with Appellant’s claim construction. The limitations quoted above clearly define the claimed structure by what it does, “hold and carry a sports or activity equipment” or the manner in which it will be used “to affix to a bicycle,” as opposed to what it is. We never contended that this functional language does not define a certain structure. Contra Request at 3, 5. Only that, since the claims are directed to an apparatus, as opposed to the Appeal 2010-003301 Application 11/132,239 3 method of use, the structure encompassed by the functional language is that which is capable of performing the acts or functions following the phrases “constructed and arranged to” or “adapted to.” See e.g., In re Ludtke, 441 F. 2d 660, 664 (CCPA 1971). These phrases, having little structural meaning themselves, support this construction. Contra Request at 3. Ultimately, it is the structure defined by the function or use, and not the function or use itself, upon which the patentability of an apparatus must be judged. See, e.g., In re Gardiner, 171 F.2d 313, 316 (CCPA 1948). While we do read claims in light of the Specification (Request at 3), we do not read limitations from the Specification into the claims. It is up to Appellant to draft claims that avoid the prior art, and, by reciting limitations that define only what the claimed apparatus does, Appellant’s claims broadly encompass any prior art that can do the same, regardless of whether that capability is recognized in the prior art. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003); See also Request at 5-6 (noting that Perry did not teach use in the particular manner described by the Examiner). Where, as here, the Examiner has established, by presenting sufficient evidence and technical reasoning, a sound basis for the belief that a structure disclosed in the prior art must inherently possesses a particular characteristic, the burden shifts to Appellant to explain, with argument or evidence, why that is not necessarily the case. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)). Appellant has not done so. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1349 (Fed. Cir. 2010), cited by Appellant (Request at 3) does not conflict with our holding. Firstly, in Power-One the issue was indefiniteness—an issue never raised here. Id. at 1348-50. Secondly, the term in question was “‘POL Appeal 2010-003301 Application 11/132,239 4 [point-of-load] regulator.’” Id. The court only considered the term “‘adapted to’” as it appeared in the district court’s claim construction, not as it appeared in the claim itself. Id. at 1348. In any case, the Court ultimately interpreted “‘adapted to’” in a manner similar to our construction discussed above—requiring a structure “capable of” performing certain functions. Id. (“the phrase ‘adapted to power a portion of the devices on the board,’ when read in conjunction with the intrinsic record, makes clear that a [point-of- load] regulator is one that is capable of delivering power, at the appropriate intensity, to one or more loads on the circuit board.”)(Emphasis added.) To be clear, we never suggested that any modification of Perry was required to anticipate the claims at issue. Contra Request 2, 6. Perry’s disclosure enables one of ordinary skill in the art to make and use the claimed apparatus. “As long as the reference discloses all of the claim limitations and enables the ‘subject matter that falls within the scope of the claims at issue,’ the reference anticipates.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)(citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d at 1380-81). The particular manner in which the claimed apparatus is used is not essential to meeting this requirement. Id. at 1335-36. For purposes of the Examiner’s alternate analysis, the Examiner does not take the position that Perry’s adapter and clamp are not in the same plane. Contra Request at 7; Ans. 4. Appellant contends the interpretation advanced by the Examiner and affirmed by the Board was not correct when the claims are read in view of the Specification. Request at 7. However, the Appellant does not point to any language in the claims or Specification to demonstrate that the plane the adapter is in must be construed so narrowly as to require that plane to be substantially the same as that of Perry’s shelf in the open position. See Opinion at 4. Appellant’s remaining arguments Appeal 2010-003301 Application 11/132,239 5 concerning the functional limitations of claims 1, 15, 10, and 11 (Request at 8) are unpersuasive for reasons similar to those discussed above. For the forgoing reasons, Appellant failed to convince us that any matter has been misapprehended or overlooked in rendering of our original Decision. Reconsideration has been granted to the extent that we reconsidered our previous decision. It is denied with respect to making any changes thereto. DECISION The rejections of claims 1-6 and 9-16 remain affirmed. 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). DENIED hh