Ex Parte Wong et al

Board of Patent Appeals and Interferences

May 9, 2012

11099815 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LENNY WONG and LESLIE B. HENDRICKSON
____________

Appeal 2010-003873
Application 11/099,815
Technology Center 3600
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Before LINDA E. HORNER, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-11 and 21-29 under 35 U.S.C. § 102(b) as being anticipated by Jolly (US
4,468,889; iss. Sep. 4, 1984).1 App. Br. 4, 9.2 Claims 12-20 are cancelled.
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.

1 The Examiner also rejected claims 1-11 and 21-29 for obviousness-type
double patenting based on claims 1-12 of US 6,141,913, claims 1-15 of US
6,672,009 B1, and claims 1-20 of US 6,938,373 B2. Final rej. 2-3; Ans. 4-5.
Appellants have not appealed those rejections. See App. Br. 9.
2 Refers to Appeal Brief filed Aug. 10, 2009.
Appeal 2010-003873
Application 11/099,815

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THE INVENTION
Claim 1 illustrates the claimed subject matter on appeal:
1. A window assembly comprising:
a window frame;
a balance tube extending from a first end to a second end,
the balance tube having a latch track therein, the track
extending along at least a portion of a length of the balance
tube;
a sash including a window latch, the sash movable
relative to the window frame; and
the latch track adapted to receive the window latch
therein, the window latch slidable along the latch track and
along at least a portion of the length of the balance tube.

ANALYSIS
Claims 1-11 and 21-29 as anticipated by Jolly
Appellants present arguments for independent claims 1, 6, 7, and 25.
App. Br. 11-13. Dependent claims 2-5, 8-11, 21-24, and 26-29 stand or fall
with their respective independent claims. The Examiner found that Jolly
discloses a window assembly with a window frame 11, a balance tube 13, 15
extending from a first end to a second end, and a latch track formed by the
inner surface of tube 15 and extending along at least a portion of the length
of the balance tube for receiving a window latch 39. Ans. 3-4 (illustrating
findings on figs. 5 and 6 of Jolly), 6 (Jolly discloses claimed balance tube).
Appellants argue that Jolly does not disclose a balance tube extending
from a first end to a second end because Jolly identifies element 13 as a
channel (col. 2, ll. 26-27) and element 15 as an inner chamber (col. 2, line
30). App. Br. 11-12. This argument is not persuasive. Although a reference
must disclose every element of a claimed invention, the reference need not
satisfy an ipsissimis verbis test to anticipate. In re Gleave, 530 F.3d 1331,
Appeal 2010-003873
Application 11/099,815

3
1334 (Fed. Cir. 2009). The Examiner’s finding that Jolly’s channel 13 and
inner chamber 15 of window frame 11 correspond to the claimed balance
tube having a track is consistent with the claim language and Appellants’
Specification, which discloses that “balance tube 46 . . . defines an
elongated trough or track 48 in an inwardly facing surface 50 of the window
frame 52” and “[t]he balance tube 46, in the case of the present invention,
includes, defined therein, an elongated trough 48 which faces inwardly.”
Spec. 11, l. 22 – 12, l. 1 and 12, ll. 5-7; fig. 1. Jolly’s channel 13 extends
from a first end to a second end and has a latch track (inner chamber 15)
therein and extending along its length to receive a window latch 39, as
claimed. Col. 3, ll. 14-22; figs. 5-10; see Ans. 4, 6.
Appellants also argue that “balance tube” is a term of art that refers to
a device used with a counterbalance system. App. Br. 12-13. Appellants
assert that Jolly’s window assembly does not use a counterbalance system;
therefore Jolly’s assembly does not include a balance tube. App. Br. 12. In
support of their position, Appellants cite to the Declaration of Mr. Krahn
who declares that the term “balance tube” is known as something in which a
balancing mechanism is mounted. Krahn Decl. ¶ 13. Mr. Krahn also
declares that a person skilled in the art would not conclude that Jolly has a
balance tube nor a latch track within the balance tube. Krahn Decl. ¶ 14.
Mr. Krahn further declares that Jolly does not disclose a balance tube or a
mechanism for balancing the sash. Krahn Dec. ¶ 16.
We are not persuaded by these arguments or Mr. Krahn’s Declaration
because neither Appellants nor Mr. Krahn explain how the claimed balance
tube differs from Jolly’s channel. Although persons skilled in the art may
understand a balance tube “as something in which the balancing mechanism
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Application 11/099,815

4
is mounted,” the claims call for the balance tube to extend from a first end to
a second end and to have a latch track therein that extends along the balance
tube. The Examiner’s findings that Jolly discloses the features of a balance
tube that Appellants claimed are supported by a preponderance of evidence,
and Appellants and Mr. Krahn have not shown error in those findings. See
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (unclaimed features cannot be
relied upon for patentability). Appellants disclose that in double hung
window applications, balance tube 46 employs mechanisms that deter
undesirable, unintended slamming of a sash (Spec. 12, ll. 1-4); however,
claims 1, 6, 7, and 25 do not recite such mechanisms or features of a balance
tube that distinguish over Jolly. We cannot read unclaimed features from the
Specification into the claims or limit the claims to particular embodiments if
the claim language is broader. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
875 (Fed. Cir. 2004).
Appellants further contend that the Examiner did not give patentable
weight to the limitation “the latch track adapted to receive the window latch
therein” in claim 1. App. Br. 13. We disagree because the Examiner found
that Jolly is capable of performing this function. Ans. 6. The Examiner had
a reasonable basis for finding that Jolly discloses a latch track (inner surface
of chamber 15) that receives a window latch 39. Ans. 4 (illustrating findings
on Figs. 5 and 6 of Jolly). Appellants have not persuaded us of error in the
Examiner’s findings or shown that Jolly does not possess this feature. See In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (when an examiner has a
sound basis to believe that a functional feature is an inherent characteristic
of the prior art, the burden shifts to appellant to show that it does not).
Appeal 2010-003873
Application 11/099,815

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Accordingly, we sustain the rejection of claims 1-11 and 21-29.
DECISION
The rejection of claims 1-11 and 21-29 under 35 U.S.C. § 102(b) as
being anticipated by Jolly is 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)(1)(iv).
AFFIRMED

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